Ex Parte Betzler et al

Board of Patent Appeals and Interferences

Jun 13, 2012

12268471 (B.P.A.I. Jun. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
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Ex parte BOAS BETZLER, 8
SANDRA L. KEARNEY, 9
TANAZ SOWDAGAR, 10
and HAGEN R. WENZEK 11
___________ 12
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Appeal 2011-001746 14
Application 12/268,471 15
Technology Center 3600 16
___________ 17
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 20
JOSEPH A. FISCHETTI, Administrative Patent Judges. 21
FETTING, Administrative Patent Judge. 22
DECISION ON APPEAL 23
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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed May 11, 2010) and the Examiner’s Answer (“Ans.,” mailed July
22, 2010).
Boas Betzler, Sandra L. Kearney, Tanaz Sowdagar, and Hagen R. 2
Wenzek (Appellants) seek review under 35 U.S.C. § 134 (2002) of a final 3
rejection of claims 1-24, the only claims pending in the application on 4
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
The Appellants invented a way of implementing commerce between 7
virtual worlds. (Specification ¶ 0002). 8
An understanding of the invention can be derived from a reading of 9
exemplary claim 1, which is reproduced below [bracketed matter and some 10
paragraphing added]. 11
1. A computer-executable method 12
for implementing a virtual business transaction between 13
a first virtual world implemented on one or more first 14
servers operatively coupled to a network 15
and 16
a second virtual world implemented on one or more 17
second servers operatively coupled to the network, 18
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the method including: 1
[1] providing a searchable electronic catalog, 2
through a clearance vault 3
implemented on one or more third servers operatively 4
coupled to the network, 5
the searchable electronic catalog including one or more 6
items 7
each comprising 8
a virtual good, 9
a virtual service, 10
a real good, 11
or 12
a real service; 13
[2] storing an object representation 14
for each of the items 15
in an identity repository database; 16
[3] establishing a set of transformation algorithms 17
that are customized through a rule set; 18
[4] receiving a request 19
specifying a 20
copying, 21
modifying, 22
or 23
reselling 24
of an item 25
selected from the items in the searchable electronic 26
catalog; 27
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[5] implementing the 1
copying, 2
modifying, 3
or 4
reselling 5
of the item 6
from the first virtual world 7
to the second virtual world 8
using the set of transformation algorithms; 9
and 10
[6] implementing 11
an exchange of virtual currency 12
between 13
the first virtual world 14
and 15
the second virtual world, 16
using the set of transformation algorithms, 17
by directly crediting a first user of the first virtual world 18
offering the item, 19
and 20
by directly charging a second user of the second virtual 21
world purchasing the item. 22
The Examiner relies upon the following prior art: 23
Chuah US 7,249,139 B2 Jul. 24, 2007

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The Examiner relies upon the following prior art in support of the taking 1
of Official Notice: 2
Zarefoss US 2003/0120584 A1 Jun. 26, 2003
Strickland US 2007/0226368 A1 Sep. 27, 2007
Claims 1-24 stand rejected under 35 U.S.C. § 103(a) as unpatentable 3
over Chuah and Official Notice. 4
ISSUES 5
The issues of obviousness turn primarily on whether Chuah describes 6
limitation [6] of implementing an exchange of virtual currency between the 7
first virtual world and the second virtual world, using the set of 8
transformation algorithms, by directly crediting a first user of the first virtual 9
world offering the item, and by directly charging a second user of the second 10
virtual world purchasing the item. 11
FACTS PERTINENT TO THE ISSUES 12
The following enumerated Findings of Fact (FF) are believed to be 13
supported by a preponderance of the evidence. 14
Facts Related to the Prior Art 15
Chuah 16
01. Chuah is directed to providing a secure virtual marketplace for 17
virtual objects and services. Chuah 3:3-5. 18
02. Chuah provides a method for distributing virtual objects. The 19
method includes maintaining a list of virtual objects by 20
maintaining data format information for each of a plurality of 21
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virtual environment systems, the data format information for a 1
virtual environment system specifying a format that data must 2
have to be processable by the virtual environment system. Chuah 3
does so by receiving a request to distribute one or more virtual 4
objects from the list of virtual objects, the request identifying the 5
virtual objects to be distributed and the virtual environment 6
system with which the virtual objects are to interact. Chuah 3:6-7
19. 8
03. A secure virtual marketplace is provided where virtual objects 9
may be securely traded and transferred to the relevant avatars and 10
virtual environments. The marketplace facilitates the 11
instantaneous and automatic transfer of virtual objects so that 12
users do not have to manually exchange virtual objects. Chuah 13
3:24-54. 14
04. Virtual environments, such as virtual worlds, are where the 15
virtual objects finally reside and are consumed. Typically, virtual 16
worlds are generated from software residing on servers connected 17
to networks such as the Internet. These servers will be referred to 18
as virtual world servers. Once a virtual object is purchased in the 19
secure virtual marketplace, it will be distributed to the relevant 20
worlds, so that it is available to the user upon entry to those 21
world(s). Chuah 5:12-20. 22
05. Chuah’s secure virtual marketplace introduces the concept of a 23
global virtual object that can be easily and seamlessly used in 24
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many different, disconnected, localized virtual worlds. Chuah 1
5:31-34. 2
ANALYSIS 3
We are persuaded by the Appellants’ argument that 4
what the Examiner asserts to be “old and well” known 5
(charging purchasers for items and crediting merchants offering 6
the items) is not the same as what is being claimed, which is 7
directly crediting a first user of a first virtual world offering an 8
item and directly charging a second user of a second virtual 9
world purchasing the item 10
(Appeal Br. 12) and that 11
Chuah is directed toward trafficking in the virtual objects 12
themselves (i.e., their instantiations rather than their designs), 13
which is discussed beginning at column 7, lines 8-28. In such 14
transactions, a settlement occurs between a buyer/seller in a 15
virtual and the secure virtual marketplace 114, rather than 16
directly between a buyer in one virtual world and a seller in a 17
second virtual world. 18
(Appeal Br. 13). We have reviewed the portion of Chuah cited by the 19
Examiner (Chuah 9:3-13; 4:45-54) for describing the limitation of 20
implementing an exchange of virtual currency between the first virtual world 21
and the second virtual world using the set of transformation algorithms and 22
are unable to see how that cited portion describes the claimed method of 23
settlement. We have reviewed the remainder of Chuah and are similarly 24
unable to find such a description anywhere else. 25
CONCLUSIONS OF LAW 26
The rejection of claims 1-24 under 35 U.S.C. § 103(a) as unpatentable 27
over Chuah and Official Notice is improper. 28
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DECISION 1
The rejection of claims 1-24 is reversed. 2
REVERSED 3
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mls 10