Ex Parte Cannon et al

Patent Trial and Appeal Board

Dec 3, 2014

12177713 (P.T.A.B. Dec. 3, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ULYSSES L. CANNON, ANGELA RICHARDS JONES,
and RUTHIE D. LYLE
____________________

Appeal 2012-008622
Application 12/177,713
Technology Center 2100
____________________

Before CAROLYN D. THOMAS, TERRENCE W. McMILLIN, and
WILLIAM M. FINK, Administrative Patent Judges.

FINK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1–14. 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. (App. Br. 2.)
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STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ invention relates to virtual world management in
computer networks. (Spec. ¶ 1; Abstract.)2 Specifically, Appellants claim
systems and methods for identifying and translating jargon as used in
communications in a virtual world. (Id. ¶ 7; Abstract.)
Claims on Appeal
Claims 1, 6, and 10 are the independent claims on appeal. Claim 1 is
illustrative of Appellants’ invention and is reproduced below:
1. A method for communication facilitation in a location
within a virtual world, the method comprising:

identifying jargon in a message exchanged in a location
in a virtual world including multiple different locations,
wherein the virtual world provides a computer-based simulated
environment in which participants interact with one another
through three-dimensional visually displayable surrogates
referred to as avatars, and wherein jargon is defined as
terminology common to an organizational culture specific to
the location, but foreign to participants not involved in the
organizational culture;

looking up a glossary entry for the jargon in a dictionary
of jargon for the location in the virtual world; and,

rendering the glossary entry in connection with the
jargon in the message.

2 Our decision refers to Appellants’ Appeal Brief filed January 3, 2012
(“Br.”); the Examiner’s Answer mailed February 17, 2012 (“Ans.”); the
Final Office Action mailed July 7, 2011 (“Final Act.”); and the original
Specification filed July 22, 2008 (“Spec.”).
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Evidence Considered
Borden US 2004/0111479 A1 June 10, 2004
Berstis US 2007/0016625 A1 Jan. 18, 2007
Froseth US 2007/0294129 A1 Dec. 20, 2007
Ardiri US 2008/0209312 A1 Aug. 28, 2008

Applicant Admitted Prior Art (“AAPA”)3

Examiner’s Rejections
Claims 1–3, 6–8, and 10–12 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Borden and the AAPA. (Ans. 5–12.)
Claims 4 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Borden, the AAPA, and Ardiri. (Ans. 13–14.)
Claims 5 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Borden, the AAPA, and Froseth. (Ans. 14–15.)
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Borden, the AAPA, and Berstis. (Ans. 15–16.)

Issue on Appeal
Based on Appellants’ arguments, the issue on appeal is whether the
combination of Borden and AAPA teach or suggest “virtual worlds” and
“jargon” as required by claim 1. (Br. 6–15.)

3 Specifically, the Examiner refers to paragraphs 2–4 in Appellants’
Specification as Applicant Admitted Prior Art. (Final Act. 7–8.)
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ANALYSIS
In rejecting Appellants’ independent claims 1, 6, and 10,4 the
Examiner relies on the combination of Borden and AAPA. (Final Act. 5.)
Appellants dispute the Examiner’s findings and conclusions.
Specifically, Appellants argue the Examiner misconstrued the claim terms
“virtual world” and “jargon” when applying the prior art to the claims. (Br.
8.) Appellants argue that, once properly construed, none of the cited
references disclose these limitations. (Id.)
We are not persuaded. As an initial matter, we agree with Appellants
that the term “virtual world” requires “a computer-based simulated
environment in which participants interact with one another through three-
dimensional visually displayable surrogates referred to as avatars,” (Br. 9),
because the claim specifically recites this limitation (id. at 16 (claim 1)).
Under this construction, Appellants argue the “virtual IM world[]” described
in Borden, and relied upon by the Examiner, is “totally different from the
concept of ‘virtual world’ as used in the Appellants’ claimed invention.”
(Id. at 10.) Because Borden concerns a different subject matter, the
Appellants also argue the Examiner could not have located all the limitations
of the claimed invention. (Id. at 14.)
We disagree. Where a rejection is based on a combination of
references, “one cannot show non-obviousness by attacking references
individually . . . .” In re Keller, 642 F.2d 413, 426 (CCPA 1981). Instead,

4Appellants’ arguments are directed at the limitations of claim 1. (Br. 7
(noting “claims 6 and 10 . . . recite similar operative portions”).)
Accordingly, we focus on claim 1 in our review. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
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the test is what the combination “would have suggested to those of ordinary
skill in the art.” Id. at 425.
Here, the Examiner relies not only on Borden, but on the combination
of Borden and AAPA as teaching or suggesting the virtual world limitation,
as recited in the claims. (Ans. 16–18.) Specifically, the Examiner finds
Borden to disclose virtual worlds in the form of virtual chat rooms, because
“they only exist virtually and are computer-simulated environments through
which users can interact with one another and use and create/exchange[]
objects.” (Id. at 17–18 (citing Borden ¶ 18, Fig. 1).) We agree. The cited
portion of Borden specifically refers to “virtual IM worlds” when describing
computer chat rooms. (Borden ¶ 18.) Thus, Borden discloses a virtual
world as it is generally understood in the art.5
The Examiner further finds the AAPA discloses that virtual worlds
can “provide a computer-based simulated environment in which participants
interact with one another through three-dimensional visually displayable
surrogates referred to as avatars.” (Id. at 18 (citing Spec. ¶ 4).)
Appellants’ Specification (the AAPA) describes virtual worlds as having
evolved to this point from earlier “multi-user dungeon and virtual reality”
implementations. (Spec. ¶ 4.) Accordingly, the Examiner’s conclusion that
the combination of Borden’s “virtual IM worlds” in view of the AAPA’s “3-
D virtual worlds,” teaches virtual worlds as required by the claims is
reasonable.

5 Consistent with this finding, we note a dictionary definition of “virtual
world” includes chat rooms as an example. See Microsoft Computer
Dictionary 555 (5th ed. 2002) (“[V]irtual world n. . . . Multiuser dungeons
(MUDs), talkers, and chat rooms are often considered virtual worlds.”).
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Similarly, with respect to the claim term “jargon,” we agree with
Appellants that here it is limited to “terminology common to an
organizational culture specific to the location, but foreign to participants not
involved in the organizational culture” (Br. 10), because the claims
specifically recite that limitation (id. at 16 (claim 1)). Appellants contend
the “circumlocutions” and “code words” in Borden, relied upon by the
Examiner, are not jargon as claimed because they are not “location specific.”
(Id. at 10.)
However, the Examiner points out:
“a virtual chat room” is [an] “organizational culture” and “code
words” used by chat room participants are “jargon” specific to
the location (i.e., a particular chat room) but foreign to
participants not involved in the chat room (i.e., the
organizational culture) as Borden teaches . . . .
(Ans. 19 (citing Borden ¶¶ 36–37).) Thus, the Examiner finds Borden
discloses jargon, as recited in the claim. Appellants dispute this finding,
arguing that chat rooms are not locations as the claim requires because “a
location within a virtual world simulates a real world location where as a
‘virtual chat room’ does not. Further, Borden also does not teach that the
‘code words’ are chat room specific.” (Br. 14.)
We disagree on both counts. The claim language does not require a
location within a virtual world to “simulate[] a real world location.” In the
context of virtual worlds, which can include “multi-user dungeon[s]” and
other simulated environments (Spec. ¶ 4), we agree with the Examiner’s
finding that a virtual chat room is a location within a virtual world.
Moreover, we disagree that Borden does not teach that “code words”
are chat-room specific. For example, according to the cited portions of
Borden:
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Chaperone 140 can learn behavior rules that can be used as
indicators of certain chat room behavior rule violations . . . .
This [learning] could, for example, catch circumlocutions
which may be utilized by chat participants shrewd enough to
“fly under the radar” and continually change their vocabulary,
but not their intent or meaning.
Alternatively, detection of possible “code words” can be
sent in a report generated by Chaperone 140 to a designated
party to determine if the “code word” or phrase should be
included in a new chat rule.
(Borden ¶¶ 36–37) (emphases added); see also Ans. 19.) Therefore,
consistent with the Examiner’s finding, the discussion of circumlocutions
and code words in Borden is made in the context of learning chat-room
specific behavior rules. Accordingly, we agree Borden teaches jargon as
required by the claims.
Because we are not persuaded that the teachings of Borden and AAPA
do not fall within the scope of the claims, we sustain the Examiner’s
rejections of independent claims 1, 6, and 10. With respect to dependent
claims 2, 3, 7, 8, 11, and 12, also rejected over Borden and the AAPA,
Appellants make no separate patentability arguments. Therefore, we sustain
the rejections of these claims as well. See 37 C.F.R. § 41.37(c)(1)(vii)
(2011). With respect to dependent claims 4, 5, 9, 13, and 14, Appellants
represent that these claims rise or fall with the independent claims from
which they depend. (Br. 15.) Accordingly, we sustain the rejections of
these claims as well.

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DECISION
We affirm the Examiner’s final rejection of claims 1–14.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1) (iv).

AFFIRMED

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