Ex Parte Chang

Board of Patent Appeals and Interferences

Jan 9, 2012

11052150 (B.P.A.I. Jan. 9, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NELSON LIANG AN CHANG
____________

Appeal 2009-008615
Application 11/052,150
Technology Center 2100

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
JAMES R. HUGHES, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-33. The Appellant appeals
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
A. INVENTION
The invention at issue on appeal concerns a method for constraining a
user's movement in a virtual environment which includes determining a
user's current location in the virtual environment, determining a permitted
zone based on the current location, dividing an area outside the permitted
zone into multiple zones, obtaining an input to move to a new location,
calculating a point within the permitted zone proximate to the new location
based on one or more of the multiple zones, and moving the user to the
proximate point. (Spec. 2).

B. ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows.
1. A method for constraining a user's movement in a
virtual environment, comprising:
determining a user's current location in a virtual
environment;
determining a permitted zone based on said current
location;
dividing an area outside said permitted zone into multiple
zones;
obtaining an input to move to a new location;
calculating a point within said permitted zone proximate
to said new location based on one or more of said multiple
zones; and
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moving said user to said proximate point.

C. REFERENCE
The Examiner relies on the following reference as evidence:

Williams 5,287,446 Feb. 15, 1994

D. REJECTIONS
Claims 1-33 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Williams.

PRINCIPLES OF LAW
35 U.S.C. § 102
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
“Anticipation of a patent claim requires a finding that the claim at issue
‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc., 190 F.3d
1342, 1346 (Fed Cir. 1999) “In other words, if granting patent protection on
the disputed claim would allow the patentee to exclude the public from
practicing the prior art, then that claim is anticipated, regardless of whether
it also covers subject matter not in the prior art.” Id. (citations omitted).
The claims measure the invention. See SRI Int’l v. Matsushita Elec.
Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). "[T]he PTO gives
claims their 'broadest reasonable interpretation.'" In re Bigio, 381 F.3d
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1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed.
Cir. 2000)). "Moreover, limitations are not to be read into the claims from
the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).
Of course, anticipation "is not an 'ipsissimis verbis' test." In re Bond,
910 F.2d 831, 832-33 (Fed. Cir. 1990) (citing Akzo N.V. v. United States Int'l
Trade Comm'n, 808 F.2d 1471, 1479 n.11 (Fed. Cir. 1986)). "An
anticipatory reference . . . need not duplicate word for word what is in the
claims." Standard Havens Prods., Inc., v. Gencor Indus., Inc., 953 F.2d
1360, 1369 (Fed. Cir. 1991).

ANALYSIS

At the outset, we note that the Examiner has withdrawn the
commentary regarding filing date benefit under 35 U.S.C. §120. (Ans. 2-3).
Since the prior art reference to Williams's is prior to any possible priority
date, we need not address this issue/concern.
The Examiner has withdrawn the rejection of claims 19-29 under 35
U.S.C. §101. (Ans. 3).

35 U.S.C. §102
In this decision, we have considered only those arguments actually
made by Appellant. Arguments which Appellant could have made but did
not make in the Brief have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii).
With respect to independent claims 1, 13, 19, and 30, Appellant has
elected that these claims will stand or fall with respect to the arguments set
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forth with respect to independent claim 1. (App. Br. 18). Therefore, we
select independent claim 1 as the representative claim and will address
Appellant’s arguments thereto.
With respect to representative claim 1, Appellant merely repeats the
limitations of independent claim 1 and maintains that the portions of the
Williams reference at columns 2 (and 4) cited by the Examiner in the
statement of the rejection in the final rejection does not teach the invention
as claimed. See 37 C.F.R. § 41.37(c)(vii) (“A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim.”). See also In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) (“we 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.”).
We note that the Examiner's statement of the rejection remains very
similar to that set forth in the final rejection (Ans. 3-6), but the Examiner
further addresses the rejection in the responsive arguments and addresses
figures 1, 3, 5, and 7 of Williams (figures 1, 3, and 7 were cited in the final
rejection at page 9). Appellant elected to not file a reply brief addressing the
Examiner's further clarification of the grounds of rejection. While we note
that figures 1, 3, and 7 are identified in Williams concerning a
"background", "another background," a "third background" (Williams col. 3)
and Williams mentions a "second embodiment" (col. 6) and "third
embodiment" (col. 9), but Appellant has not addressed these portions of
Williams with regards to the Examiner's reliance thereon. Since the various
backgrounds and embodiments have been previously identified by the
Examiner and the Examiner's rejection relies upon the broad discussion in
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the Summary of the Claimed Invention section of Williams, we find the
Examiner's further reliance upon the detailed description corresponding to
the Summary of the Claimed Invention to be reasonable and appropriate.
We find the Examiner's discussion of the teachings of Williams to
evidence anticipation (Ans. 7-10), and we adopt them as our own.
Additionally, we note that the discussion of figures 1 and 3 of Williams
additionally discloses auxiliary avoidance or "freeway" paths 67 (col. 6-7)
and "sticky" paths (col. 8) that further evidence the presence of the steps of
determining, providing, calculating, and moving of independent claim 1.
Therefore, Appellant has not shown error in the Examiner's showing
of anticipation of independent claim 1 and independent claims 13, 19, and
30, and dependent claims 2-12 and 14-18, 20-29, and 31-33 which we group
with representative claim 1.

CONCLUSION
For the aforementioned reasons, Appellant has not shown that the
Examiner erred in rejecting independent claim 1 over Williams.

VII. ORDER
We affirm the anticipation rejection of claims 1-33.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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