Ex Parte Bhogal et alDownload PDFPatent Trial and Appeal BoardAug 22, 201812139297 (P.T.A.B. Aug. 22, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/139,297 06/13/2008 Kulvir S. Bhogal 45092 7590 08/24/2018 HOFFMAN WARNICK LLC 540 Broadway 4th Floor ALBANY, NY 12207 UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. END920070 l 26US 1 1136 EXAMINER PRATT, EHRINLARMONT ART UNIT PAPER NUMBER 3629 NOTIFICATION DATE DELIVERY MODE 08/24/2018 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): PTOCommunications@hoffmanwarnick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KUL VIR S. BHOGAL, RICK A. HAMIL TON II, JENNY S. LI, and CLIFFORD A. PICKOVER Appeal2017-005925 Application 12/139 ,297 1 Technology Center 3600 Before BRUCE T. WIEDER, AMEE A. SHAH, and ROBERT J. SILVERMAN, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner's rejection of claims 1--4, 7, 9-11, 13-16, 18, 20, 21, 23, and 24. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is International Business Machines Corporation. (Appeal Br. 1.) Appeal2017-005925 Application 12/139,297 CLAIMED SUBJECT MATTER Appellants' "invention relates generally to virtual environments and more specifically to facilitating interactive product evaluation and service within a virtual universe." (Spec. ,r 1.) Claims 1, 16, 21, and 24 are the independent claims on appeal. Claim 1 is illustrative. It recites: 1. A method, comprising: providing a virtual universe for residents thereof to inhabit and interact via avatars that are representations of the residents, wherein the inhabiting of the avatars in the virtual universe gives an appearance and sensation to the residents of being present in a place in the virtual universe that is different than their true location, and the interacting of the avatars while inhabiting in the virtual universe takes place over a plurality of sensory channels each providing feedback of sensory data to the residents that is experienced by their avatar, the sensory data including sight, sound, touch, taste, and smell, wherein movements and position of the avatar in the virtual universe provide a perspective on reality in the virtual universe and determine what sensory feedback is given; providing a medium to an avatar that is on-line in the virtual universe to evaluate a virtual universe product created for use in the virtual universe, wherein the virtual universe product to be evaluated resides in an inventory of the avatar or in an inventory of another resident of the virtual universe, each inventory containing a listing of properties and possessions belonging to a resident of the virtual universe that are for use in the virtual universe, wherein each inventory belonging to a resident in the virtual universe is separate and distinct from each other, the virtual universe product in the inventory having an evaluation indicator, generated by an evaluation indicating component embodied in hardware, associated therewith that indicates that an evaluation is desired for the virtual universe product, the evaluation indicator further providing an indication whether the evaluation of the virtual universe product is made publicly available to all residents of the virtual universe or to a 2 Appeal2017-005925 Application 12/139,297 restricted set of residents of the virtual universe that have been preapproved by an owner of the virtual universe product, wherein the evaluation indicator is a visual indicator in the virtual umverse; generating an invitation to the avatar that requests that the avatar evaluate the virtual universe product, wherein the invitation comprises an invitation to teleport to a specified region within the virtual universe to evaluate the virtual product, the specified region having a location that is different from a location in which the avatar receives the invitation to teleport; receiving an evaluation of the virtual universe product from the avatar; and transmitting the evaluation to a third party provider associated with the virtual universe product; and initiating a support session with the avatar by the third party provider, in response to the transmitting of the evaluation, for the virtual universe product that is based on the evaluation, wherein the initiating of the support session includes opening a communication channel with a customer service representative that is associated with the third party provider to obtain answers and assistance with regard to the virtual universe product, wherein the assistance is based on a particular feedback of the evaluation. REJECTIONS Claims 1--4, 7, 9--11, 13-16, 18, 20, 21, 23, and 24 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Claims 1--4, 7, 9--11, 13-16, 18, 20, 21, 23, and 24 are rejected under 35 U.S.C. § 103(a) as unpatentable in view of Sundaresan (US 2007 /0239552 Al, pub. Oct. 11, 2007), Ratnakar (US 2008/0195507 Al, pub. Aug. 14, 2008), and Altberg (US 2008/0263458 Al, pub. Oct. 23, 2008). 3 Appeal2017-005925 Application 12/139,297 ANALYSIS The § 101 rei ection "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." 35 U.S.C. § 101. Section 101, however, "'contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable."' Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). Alice applies a two-step framework, earlier set out in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice, 134 S. Ct. at 2355. Under the two-step framework, it must first be determined if "the claims at issue are directed to a patent-ineligible concept." Id. If the claims are determined to be directed to a patent-ineligible concept, e.g., an abstract idea, then the second step of the framework is applied to determine if "the elements of the claim ... contain[] an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent-eligible application." Id. at 2357 (citing Mayo, 566 U.S. at 72-73, 79). With regard to step one of the Alice framework, the Examiner determines that the claims are directed to the abstract idea of: generating an invitation to the avatar that requests that the avatar evaluate the virtual product, receiving an evaluation of the 4 Appeal2017-005925 Application 12/139,297 virtual universe product from the avatar; and transmitting the evaluation to a third party provider associated with the virtual universe product which is similar to concepts relating to managing relationships or transactions found in [ Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012)]. (Final Action 2-3, emphasis omitted.) The Examiner further determines that the claims are directed to the abstract idea of: initiating a support session with the avatar by the third party provider, in response to transmitting the evaluation, for the virtual universe product that is based on the evaluation, wherein the initiating of the support session includes a customer service representative that is associated with the third party provider to obtain answers and assistance with regard to the virtual universe product wherein the assistance is based on a particular feedback of the evaluation is similar to concepts relating to interpersonal and intrapersonal activities such as marketing and sales activities or behaviors or managing human mental activity found in [Gametek LLC v. Zynga, Inc., Nos. CV 13-2546 RS, CV 13- 3089 RS, CV 13-3472 RS, CV 13-3493 RS, 2014 WL 1665090 (N.D. Ca. Apr. 25, 2014), aff'd 597 F. App'x 644 (Fed. Cir. 2015)]. (Id. at 3.) Appellants argue that Dealertrack and Gametek are distinct from Appellants' invention and that in both instances, the Examiner has "focused on a single aspect of the claim." (Appeal Br. 10.) Under step one of the Alice framework, we "look at the 'focus of the claimed advance over the prior art' to determine if the claim's 'character as a whole' is directed to excluded subject matter." Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). 5 Appeal2017-005925 Application 12/139,297 The Specification provides evidence as to what the claimed invention is directed. In this case, the Specification discloses that Appellants' "invention relates generally to virtual environments and more specifically to facilitating interactive product evaluation and service within a virtual universe." (Spec. ,r 1.) Claim 1 provides further evidence. Claim 1 recites "[a] method comprising: providing a virtual universe for residents thereof to inhabit and interact via avatars," "providing a medium to an avatar that is on-line in the virtual universe to evaluate a virtual universe product," "generating an invitation to the avatar that requests that the avatar evaluate the virtual universe product," "receiving an evaluation ... from the avatar," "transmitting the evaluation to a third party provider," "and initiating a support session with the avatar by the third party provider." Although we and the Examiner describe, at different levels of abstraction, to what the claims are directed, it is recognized that "[a]n abstract idea can generally be described at different levels of abstraction." Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does not, "impact the patentability analysis." See id. at 1241. Here, claim 1 recites providing a world, providing a medium to an avatar in that world to evaluate a product, inviting the avatar to evaluate the product, receiving the evaluation, sending the evaluation to a third party, and initiating a session with the avatar. In short, the claim provides a means for collecting data, requests data, collects data, and transmits data. The virtual universe "merely provide[ s] a generic environment in which to carry out the abstract idea." See In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016). Thus, we agree with the Examiner that "[t]he fact that 6 Appeal2017-005925 Application 12/139,297 the invitation and medium (i.e., product evaluation) are limited to a virtual universe ... is ... merely the environment in which the abstract idea is practiced." (Answer 6.) As in Alice, we need not labor to delimit the precise contours of the "abstract ideas" category in this case. It is enough to recognize that there is no meaningful distinction in the level of abstraction between the concept of "collecting information, including when limited to particular content (which does not change it character as information)," "analyzing information by steps people go through in their minds," and "presenting the results," in Elec. Power Grp., LLC, 830 F.3d at 1353-54, and the concept of providing a means for collecting information, requesting the information, collecting the information, and sending the information, at issue here. Both are squarely within the realm of "abstract ideas" as the Court has used that term. See Alice, 134 S. Ct. at 2357. Moreover, we agree with the Examiner's determination that the claims are similar to those in Dealertrack because Dealertrack teaches "receiving data from one source (such as the request), selectively forwarding the data (such as receiving an evaluation), and forwarding reply data to the first source (such as transmitting the evaluation to a third party provider)." (Answer 5.) The Examiner also determines that, with regard to the claim step of "initiating a ... session with the avatar," Gametek teaches that this is "simply appending conventional steps (such as post marketing and sales activities) applied to the abstract idea." (Id. at 7.) As in Electric Power Group, "[h Jere, the claims are clearly focused on the combination of those abstract-idea processes." Elec. Power Grp., LLC, 830 F.3d at 1354. 7 Appeal2017-005925 Application 12/139,297 Appellants also argue that "the Examiner has not looked at the full claims." (Appeal Br. 10.) We do not find this argument persuasive. As discussed above, under step one of the Alice framework, we "look at the 'focus of the claimed advance over the prior art' to determine if the claim's 'character as a whole' is directed to excluded subject matter." Affinity Labs of Texas, LLC, 838 F.3d at 1257. Here the Examiner has looked at the focus of the claims. (See Final Action 2--4.) That the Examiner has determined that the claims are directed to two abstract ideas (id. at 2-3), does not persuade us of error. See RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F .3d 1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea ... to another abstract idea ... does not render the claim non-abstract.") In view of the above, we agree with the Examiner that claim 1 is directed to an abstract idea. Step two of the Alice framework has been described "as a search for an' "inventive concept" '-i.e., an element or combination of elements that is 'sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself."' Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 72-73). The Examiner determines that "[t]he additional element(s) of 'a communication channel' and 'an evaluation indicating component embodied in hardware' includes generic computer( s) performing generic computer functions. See Spec [,I 0042, 0048]." (Final Action 4, emphasis omitted.) The Examiner also determines that "[ t ]he providing steps represent insignificant pre-solution activity" and that the "recitation of the 'evaluation indicator' is simply a field of use that ... does not add a meaningful limit on the abstract idea." (Id. at 5.) Thus, the Examiner determines that 8 Appeal2017-005925 Application 12/139,297 "[ c ]onsidering the additional elements both individually and as a combination, the claim as a whole does not amount to significantly more than the abstract idea itself." (Id. at 6.) Appellants disagree and argue that the claims must be seen as reciting additional elements that amount to significantly more than the judicial exception. Appellants' claims comprise highly detailed implementations of the "Virtual Universe Product Evaluation Tool 53" as supported by Appellants' specification and are so long that it is cumbersome to reproduce them in this argument. . . . But in summary, "providing a virtual universe ... " includes significant elements for establishing the technical environment of a virtual world. "[P]roviding a medium to an avatar ... " includes not only the technical details of the "evaluation indicator", but the more general technical considerations of inventory data management for residents of a virtual world. "[G]enerating an invitation to an avatar ... " includes significant details of the role of virtual regions and avatar transport in a specific method. And, "initiating a support session with an avatar ... " provides significant details on structuring virtual roles and interactions beyond a mere conceptual framework. (Appeal Br. 11.) In short, "Appellants maintain that the claims presented are sufficiently detailed and technical to amount to a significant improvement in the virtual universe arts." (Reply Br. 4.) We disagree. For example, with regard to Appellants' argument that the claim limitation "'providing a virtual universe ... ' includes significant elements for establishing the technical environment of a virtual world" (Appeal Br. 11 ), claim 1 does not recite "how the desired result is achieved." See Elec. Power Grp. LLC, 830 F.3d at 1355. Nor does claim 1 "require any nonconventional computer, network, or display components, or even a 'non- conventional and non-generic arrangement of known, conventional pieces."' 9 Appeal2017-005925 Application 12/139,297 Id. Indeed, claim 1 does not recite a computer or a processor. It follows that because the claim is not focused on how the desired results are achieved, e.g., how the virtual universe is provided, how the medium is provided to the avatar, how the invitation to the avatar is generated, how the evaluation is received, how the evaluation is transmitted, or how the support session is initiated, the claim does not recite a technological improvement. See Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328 (Fed. Cir. 2017). Moreover, "under the Mayo/Alice framework, a claim directed to a newly discovered law of nature (or natural phenomenon or abstract idea) cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility." Genetic Techs. Ltd. v. Merial L.L. C., 818 F.3d 1369, 1376 (Fed. Cir. 2016). Thus, even if the claimed method is "[g]roundbreaking, innovative, or even brilliant," that is not enough for patent eligibility. Ass 'nfor Molecular Pathology, 569 U.S. at 591. In view of the above, we agree with the Examiner that claim 1 is directed to a judicial exception without significantly more. Claims 2--4, 7, 9-11, 13-16, 18, 20, 21, 23, and 24 are not separately argued and fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv). The § 103 (a) reiection Claim 1 recites, in relevant part: the virtual universe product in the inventory having an evaluation indicator . . . associated therewith that indicates that an evaluation is desired for the virtual universe product, the evaluation indicator further providing an indication whether the evaluation of the virtual universe product is made publicly available to all residents of the virtual universe or to a restricted 10 Appeal2017-005925 Application 12/139,297 set of residents of the virtual universe that have been preapproved by an owner of the virtual universe product. (Emphasis added.) Independent claims 16, 21, and 24 include similar language. The Examiner finds that paragraph 29 of Sundaresan discloses this limitation, i.e., paragraph 29 "discloses item list creator has the ability to solicit collaboration, e.g. review among members of the community group." (Final Action 8; see also Answer 14--15.) Appellants disagree and argue that Sundaresan "is silent regarding selectability [ of the evaluation] between public and group." (Appeal Br. 13; see also Reply Br. 5---6.) Sundaresan discloses "a method and system for community based network shopping, according to one embodiment, by creating and sharing a shopping item list among a defined community." (Sundaresan ,r 1.) In paragraph 29, Sundaresan further discloses: Item list application(s) 216 may be used in the network- based marketplace 112 by a user to create an item list to be shared within a community group created or designated by the user. The item list applications 216 may be accessed via a user interface that allows the user to . . . associate the item list with the community group. This item list association with the community group, in an example embodiment, allows the item list creator the ability to solicit collaboration ( e.g., recommendations, review, etc.) among the members of the community group (e.g., friends and family) to assist the item list creator in finding and buying a specific gift from a broad request. We are persuaded of reversible error. The cited portion of Sundaresan discloses allowing the item list creator to solicit reviews among community members, i.e., control distribution of the request for an evaluation. (Sundaresan ,r 29.) But we see no disclosure in paragraph 29 of "providing 11 Appeal2017-005925 Application 12/139,297 an indication whether the evaluation of the ... product is made publicly available to all residents ... or to a restricted set of residents," as recited in claim 1. Nor does the Examiner otherwise determine that it would have been obvious, in view of Sundaresan and the other cited references, to provide an indication whether the product evaluation is made publically available or is restricted. Therefore, we will reverse the rejection of independent claims 1, 16, 21, and 24, and dependent claims 2--4, 7, 9-11, 13-15, 18, 20, and 23 under § 103(a). DECISION The Examiner's rejection of claims 1--4, 7, 9-11, 13-16, 18, 20, 21, 23, and 24 under 35 U.S.C. § 101 is affirmed. The Examiner's rejection of claims 1--4, 7, 9-11, 13-16, 18, 20, 21, 23, and 24 under 35 U.S.C. § 103(a) is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 12 Copy with citationCopy as parenthetical citation