Ex Parte Bokor et al

Patent Trial and Appeal Board

Oct 20, 2016

12275726 (P.T.A.B. Oct. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/275,726 11/21/2008
44870 7590 10/24/2016
MOORE & VAN ALLEN, PLLC For IBM
P.O. Box 13706
3015 Carrington Mill Boulevard, Suite 400
Research Triangle Park, NC 27709
FIRST NAMED INVENTOR
Brian R. Bokor
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.
RSW920070254US 1-82 2601
EXAMINER
KEATON, SHERROD L
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
10/24/2016 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):
iplaw@mvalaw.com
usptomail@mvalaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN R. BOKOR, ANDREW B. SMITH, and STEVEN K.
SPEICHER
Appeal2015-004692
Application 12/275,726
Technology Center 2100
Before ST. JOHN COURTENAY III, CATHERINE SHIANG, and
JOHN P. PINKERTON, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Invention
The disclosed and claimed invention on appeal:
relates to virtual worlds, such as simulations of the real-world
or real-life, and the like, and more particularly to avatar profile
creation and linking in a virtual world, such as allowing
grouping of avatar attributes, including grouping gestures,
clothing, moods, appearance, accessories, equipment, or other
Appeal2015-004692
Application 12/275,726
avatar attributes, that may be associated with or linked to events
and/or locations in a virtual world.
(Spec. 2, i-f l ).
Representative Claim
1. A method for creating and linking a profile in a virtual
world, comprising:
presenting, by a processor, an interface for creating a
grouping profile for application to a user's avatar in response to the
user's avatar to be transported to one of a particular virtual world
location, event and activity, wherein the grouping profile includes
at least one attribute;
allowing, by the processor, assignment of the at least one
attribute to the grouping profile;
allowing, by the processor, definition of an application
criteria;
. . t. 1· • • • • t. t. . -C:l associatmg tue app11cat1on cntena w1t11 tue groupmg pro111e,
wherein the application criteria is usable to determine if the
grouping profile is applicable to the user's avatar based on the one
of the particular virtual world location, event and activity to which
the user's avatar is to be transported;
receiving, by the processor, one of a virtual world location,
event and activity selected by the user to which the user's avatar is
to be transported;
[L 1] presenting another interface to the user to request
information to determine that the grouping profile to be applied to
the user's avatar matches the selected one of the virtual world
location, event and activity prior to transporting the user's avatar;
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[L2] in response to the user's selection of one of a virtual
world location, event and activity, applying the applicable
grouping profile to the avatar prior to transporting the avatar; and
[L3] allowing the user to review and edit the grouping
profile applied prior to transporting the avatar.
(Contested limitations L 1, L2, and L3 are emphasized).
Rejections 1
1 In the Final Action (2), the Examiner rejected claims 19 and 20 under 35
U.S.C. § 101 as being directed to non-statutory subject matter. Because the
Answer is silent regarding this rejection, the Examiner appears to have
withdrawn the § 101 rejection in response to the entry on appeal of the after-
final amendment, received on July 24, 2014. (See Advisory Act. 1). See 37
C.F.R. § 41.39(a)(l). However, we note the addition of "non-transitory" by
amendment to the "computer usable storage medium" recited in the body of
claim 19 does not cure the problem, because of the open-ended
"comprising" language recited in the preamble of claim 19: "A computer
program product ... comprising:" (Emphasis added). See Genentech, Inc. v.
Chiron Corp, 112 F.3d 495, 501 (Fed. Cir. 1997) ("'Comprising' is a term of
art used in claim language which means that the named elements are
essential, but other elements may be added and still form a construct within
the scope of the claim.")(Emphasis added). We further note the
Specification (i-f 15) describes "a computer program product embodied in
any tangible medium of expression having computer usable program code
embodied in the medium," and thus fails to limit the scope of the "computer
program product" recited in claim 19 to non-transitory forms by a definition
per se, or by providing a clear and unambiguous disclaimer. (Emphasis
added). See also Spec. (i-f 17) ("The computer usable medium may include a
propagated data signal with the computer-usable program code embodied
therewith, either in baseband or as part of a carrier wave."). Therefore, we
conclude the "computer program product ... comprising" language recited
in the preamble of claim 19 does not preclude the inclusion of additional
transitory (non-statutory) storage mediums in the body of the claim, under a
broad but reasonable interpretation. "The four categories together describe
the exclusive reach of patentable subject matter. If a claim covers material
not found in any of the four statutory categories, that claim falls outside the
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Application 12/275,726
A. Claims 1--4, 7, and 11-23 are rejected under 35 U.S.C. § 103(a) as
being obvious over the combined teachings and suggestions of
Blattner et al. (US 2007 /0113181 Al, May 17, 2007), Morse et al.
(US 5,802,296, Sept 1, 1998), Jolliff et al. (2009/0300525 Al, Dec.
3, 2009), and Narayanan et al. (2009/0158170 Al, June 18, 2009).
B. Claim 5 is rejected under 35 U.S.C. § 103(a) as being obvious over
the combined teachings and suggestions of Blattner, Morse, Jolliff,
Narayanan, and Hildreth (2009/0079813 Al, Mar. 26, 2009).
C. Claims 6 and 8-10 are rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Blattner,
Morse, Jolliff, Narayanan, and Mo et al. (2009/0144173 Al, June
4, 2009).
Grouping of Claims
Based on Appellants' arguments in the Appeal Brief, we decide the
appeal of the claims rejected under rejection A, on the basis of independent
claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). We address rejections Band C,
infra.
plainly expressed scope of§ 101 even if the subject matter is otherwise new
and useful." In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007).
Therefore, in the event of further prosecution of this application, we leave it
to the Examiner to consider a new ground of rejection of claims 19 and 20
under 35 U.S.C. § 101. Although the Board is authorized to reject claims
under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board
elects not to do so. See Manual of Patent Examining Procedure (MPEP) §
1213.02 (9th Ed., Rev. 07.2015, Nov. 2015).
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ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. 2 We disagree with Appellants' arguments, and we adopt as our
own: ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Answer in response to Appellants' arguments. (Ans. 3---6). However, we
highlight and address specific findings and arguments for emphasis in our
analysis below.
Rejection A of Independent Claim 1under35 U.S.C. § 103(a)
Combinability under §103
At the outset, we find unpersuasive Appellants' contention the
Examiner has improperly combined the cited references under 35 U.S.C.
§ 103. (e.g., "a person of ordinary skill in the art would not be motivated to
combine the teachings of Blattner and Morse and such motivation only
comes from Appellant's disclosure, which constitutes impermissible
hindsight." -App. Br. 16). In support, Appellants urge (id.):
While Morse may teach transporting avatars from one virtual
world location to another, there is no teaching or suggestion in
either Blattner or Morse that the assigned personalities for
instant messaging or chat may be applied to the transportation
of avatars in Morse and such suggestion or teaching only comes
from Appellant's disclosure.
(Emphasis added).
As reproduced in the Brief ( 16), the Examiner finds "moving from
one chat or messaging environment to another is a form of transportation."
2 Regarding all contested limitations, we only consider Appellants'
arguments to the extent such arguments are directed to subject matter
actually claimed.
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(Final Act. 15. The Examiner concludes: "The different interactions (i.e.
transporting) within virtual environments are obvious functionalities which
can be incorporated within different systems." (Id.). Although Appellants
urge that "assign[ing] personalities for instant messaging or chat (applied at
the time an instant message is sent, per Blattner) ... is not transporting
between environments" (App. Br. 16.), we note Appellants fail to point to a
definition in the Specification for "transporting" avatars that would preclude
the Examiner's broader interpretation. 3
In reviewing the record, we are of the view that Appellants' invention
is simply a combination of familiar elements performing known functions
(as taught by the cited Blattner, Morse, Jolliff, and Narayanan references)
that would have realized a predictable result. On this record, Appellants
have not shown how the invention claimed would have been more than a
combination of prior art elements according to known methods to yield
predictable results. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007).
Regarding Appellants' allegation of impermissible hindsight
reconstruction (App. Br. 16), the Supreme Court guides: "[r]igid
preventative rules that deny factfinders recourse to common sense ... are
neither necessary under our case law nor consistent with it." KSR 550 U.S.
at 421. Here, we find the Examiner provided sufficient articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness. (e.g., see Final Act. 3---6). Appellants do not point to any
3 Because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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evidence of record that shows combining the references in the manner
proffered by the Examiner (id.) would have been "uniquely challenging or
difficult for one of ordinary skill in the art" or would have "represented an
unobvious step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Nor have Appellants provided objective evidence of secondary
considerations which our reviewing court guides "operates as a beneficial
check on hindsight." Cheese Systems, Inc. v. Tetra Pak Cheese and Powder
Systems, Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
Therefore, on this record, and by a preponderance of the evidence, we
are not persuaded the Examiner erred by improperly combining the
references under 35 U.S.C. § 103.
Contested Limitations under 3 5 U.S. C. § 103
Issue: Under 35 U.S.C. § 103(a), did the Examiner err in finding the
cited combination of Blattner, Morse, Jolliff, and Narayanan would have
taught or suggested contested limitations L 1, L2, and L3:
[L 1] presenting another interface to the user to request
information to determine that the grouping profile to be applied to
the user's avatar matches the selected one of the virtual world
location, event and activity prior to transporting the user's avatar;
[L2] in response to the user's selection of one of a virtual
world location, event and activity, applying the applicable
grouping profile to the avatar prior to transporting the avatar; and
[L3] allowing the user to review and edit the grouping
profile applied prior to transporting the avatar[,]
within the meaning of claim 1? 4 (Emphasis added).
4 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997); see also, e.g., Spec. (i-f 54) ("The following
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Contested Limitation Lj of Claim j
Regarding contested limitation L 1, Appellants contend, inter alia, the
Examiner's findings regarding Jolliff (i-f 96) are incorrect at least because
there "may not be a grouping profile associated with every activity." (App.
Br. 12). Appellants point to the Specification (i-f 42), and urge that
"confirming an activity does not mean that a profile is being confirmed."
(App. Br. 12). We decline to read limitations from the Specification into the
claim. 5
At the outset, we consider the Examiner's citation to paragraph 96 of
Jolliff (e.g., "the mobile device 301 may be configured with software
instructions to ask the user [(i.e., 'request information' - claim 1 ),] whether
it has correctly diagnosed the current activity (such as running), or ask the
user to name the current activity."), as further buttressed by paragraph 97 of
Jolliff:
[0097] ... Alternative embodiments may ask the user (such as
by way of a prompt presented on the display) the nature of an
activity in order to learn and associate the recorded sensor and
setting data with the specific activity. Instead of asking the user
to define the nature of the activity, the mobile device 301 may
ask the user to identify a particular avatar to be associated with
the present activity in the future. In this manner, the displayed
avatar may more accurately represent the user's status.
claims are in no way intended to limit the scope of the invention to the
specific embodiments described herein.").
5 "This court has repeatedly 'cautioned against limiting the claimed
invention to preferred embodiments or specific examples in the
specification."' Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346-47
(Fed. Cir. 2015) (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d
1313, 1328 (Fed. Cir. 2002)).
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Given this evidence (Jolliffi1i196, 97), we find contested limitation LI
("presenting another interface to the user to request information to
determine that the grouping profile to be applied to the user's avatar
matches the selected one of the virtual world location, event and activity
prior to transporting the user's avatar") is taught or suggested by Jolliff,
when combined with the teachings and suggestions of the additional cited
references.
We find Jolliff (i-fi-f 96, 97) prompts the user to confirm the profile
matches the virtual world location, 6 as well as teaching the virtual event and
virtual activity. Moreover, by asking "the user to identify a particular avatar
to be associated with the present activity in the future" (Jolliffi-f 97,
emphasis added), we find Jolliff teaches or suggests the contested temporal
aspect of limitation LI: "presenting ... prior to transporting the user's
avatar") (Emphasis added). Further, we find the contested temporal
limitations of claim 1 would merely realize a predictable result if performed
in the sequence claimed. We additionally find Morse teaches transporting
an avatar, within the broadest reasonable interpretation of claim 1. (See
Morse, col. 4, 11. 43--45, "Basic avatars ... can move from locale to an
adjacent locale in the virtual world")
Contested Limitations L2 and L3 of Claim 1
Regarding contested limitation L2 ("in response to the user's
selection of one of a virtual world location, event and activity, applying the
applicable grouping profile to the avatar prior to transporting the avatar"),
and contested limitation L3 ("allowing the user to review and edit the
6 See Jolliff (i-f97) ("For many activities, the GPS sensor location and data
will provide a good indication of the avatar to display.").
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grouping profile applied prior to transporting the avatar[,]" Appellants
again ground their arguments urging patentability principally on the recited
temporal limitations (App. Br. 14--15):
a reference to a "later date" in Narayanan does not meet
Appellant's recitals, which state that (a) "in response to the
user's selection of one of a virtual world location, event and
activity applying the applicable grouping profile to the avatar
prior to transporting the avatar" (emphasis added), and (b)
[sic] "allowing reviewing and editing of the grouping profile of
an avatar that has been applied prior to transporting the
avatar"; Narayanan does not disclose modifying attributes after
a grouping profile has already been applied and prior to
transporting.
However, regarding limitation L2, Narayanan (i-f 25) teaches a
applying a present default profile at a "later date:"
In this way, an avatar otherwise created for a given virtual
environment, such as a social network, may be modified to
include attributes relevant for another given virtual
environment; such as an activity based virtual environment;
when the avatar is utilized at some later date to interact in the
other given virtual environment.
(Emphasis added).
Narayanan (i-f 25) also teaches allowing the user to review and edit the
grouping profile applied prior to transporting the avatar (e.g., to a future
second virtual environment), within the meaning of claim 1:
Naturally, a user going through avatar creation may have an
option to reject profile elements provided from any one or more
of the provided profiles. In accordance with the present system,
an avatar created by a user for interaction in a first virtual
environment may be utilized, without further intervention by
the user, in a second virtual environment.
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We find the contested L2 and L3 temporal limitations ("prior to
transporting the avatar") would merely realize a predictable result if
performed in the sequence claimed. (Claim 1). We note the Examiner's
rejection is based on the combined teachings and suggestions of Blattner,
Morse, Jolliff, and Narayanan.
Although Appellants advance a nominal separate argument under a
separate heading for claims 22 and 23 (App. Br. 17-19), we find Appellants
merely reproduce the record, recite the claim language, and assert the
limitations are not taught by the cited references. 7 Because Appellants fail
to advance a separate, substantive argument, dependent claims 22 and 23 fall
with representative claim 1, from which they depend. See "Grouping of
Claims" supra.
For the aforementioned reasons, and based upon a preponderance of
the evidence, we are not persuaded the Examiner erred regarding
representative claim 1. Accordingly, we sustain rejection A of independent
claim 1, and rejection A of the grouped claims (not argued separately),
which fall with claim 1. See "Grouping of Claims" supra.
7 See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art."). Accord Ex parte Belinne, No. 2009-004693, 2009 WL 2477843,
at *4 (BP AI Aug. 10, 2009) ("Informative") ("Appellants' argument ...
repeatedly restates elements of the claim language and simply argues that the
elements are missing from the reference.")
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Rejection B of Dependent Claim 5 under §j 03
Dependent claim 5 recites: "The method of claim 1, wherein allowing
assignment of the at least one attribute to the grouping profile comprises
allowing the user to define a new attribute." The Examiner (Final Act. 11)
finds: "Hildreth discloses allowing the user to provide additional attributes
to the appearance of the avatar based on a user preference (profile)
(Paragraph 43; attributes are provided)." Regarding the Examiner's
additional reliance on the Hildreth reference, Appellants urge (App. Br. 21 ):
Hildreth therefore makes no disclosure, teaching, or suggestion
related to grouping profiles or user-defined new attributes to a
grouping profile, but rather relates only to alteration of specific
features of appearance in general. One of ordinary skill in the
art would not look to Hildreth for combination with the other
cited references. Accordingly, there is no prim a facie
obviousness of Claim 5.
We note paragraph 43 of Hildreth describes, in pertinent part: "The
appearance of the user representation 121 (e.g.; the appearance of the avatar)
may vary based on the identity of the caller, time of day, user preferences, or
other factors." We further note the Examiner relies on, inter alia, the
primary Blattner reference (i-fi-f 125-129) for teaching or suggesting the
contested "grouping profiles or user-defined new attributes to a grouping
profile," as argued by Appellants. (App. Br. 21 ). For example, Blattner (i-f
127) describes online personas associated with one of the avatars. As
discussed above, Narayanan (i-f 25) describes a default profile and attributes.
We emphasize the Examiner's rejection of claim 5 is based on the combined
teachings and suggestions of Blattner, Morse, Jolliff, and Narayanan, and
Hildreth.
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Given the evidence cited by the Examiner (i.e., Hildreth ii 43 ); see
Final Act. 11----12), we find the Exarniner's proffered combination of the
teachings of Blattner, J\1orse, Jolliff: and Narayanan, and Hildreth, would
have realized predictable results such that Appellants' claim 5 would have
been rendered obvious. Because Appellants have not persuaded us the
Examiner erred, we sustain rejection B of claim 5.
Rejection C of Remaining Claims 6 and 8-10 under §103
Appellants do not separately argue the patentability of dependent
claims 6 and 8-10, and, instead rely on the arguments previously presented
for independent claims 1, 17, and 19. (App. Br. 22). For the reasons
discussed above regarding claim 1, we find these arguments unpersuasive.
Accordingly, we sustain the Examiner's rejection C of claims 6 and 8-10 as
being obvious over the cited combination of prior art.
Reply Brief
To the extent Appellants advance new arguments in the Reply Brief
not in response to a shift in the Examiner's position in the Answer, we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner's Answer will not be
considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
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DECISION
We affirm the Examiner's rejections of claims 1-23 under 35 U.S.C.
§ 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(±).
AFFIRMED
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