Ex Parte Chodroff et al

Patent Trial and Appeal Board

Apr 16, 2018

12765413 (P.T.A.B. Apr. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121765,413 04/22/2010
37945 7590 04/18/2018
DUKEW. YEE
YEE AND AS SOCIA TES, P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
BENJAMINE. CHODROFF
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.
IN92010000lUS1 9364
EXAMINER
PLUCINSKI, JAMISUE A
ART UNIT PAPER NUMBER
3600
NOTIFICATION DATE DELIVERY MODE
04/18/2018 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):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BENJAMINE. CHODROFF and
PANKAJ S. ZANWAR1
Appeal2016-008387
Application 12/765,413
Technology Center 3600
Before BRADLEY W. BAUMEISTER, JOSEPH P. LENTIVECH, and
DAVID J. CUTITTA II, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-27. App. Br. 5. 2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 Appellants list International Business Machines Corporation as the real
party in interest. Appeal Brief3, filed August 31, 2015 ("App. Br.").
2 Rather than repeat the Examiner's positions and Appellants' arguments in
their entirety, we refer to the above-mentioned Appeal Brief, as well as the
following documents, for their respective details: the Final Action mailed
January 28, 2015 ("Final Act."); the Examiner's Answer mailed February
25, 2016 ("Ans."); and the Reply Brief filed April 21, 2016 ("Reply Br.").
Appeal 2016-008387
Application 12/765,413
STATEMENT OF THE CASE
Appellants describe the present invention as follows:
At least one virtual user[] in a virtual world can be
identified, wherein the at least one virtual user is within a
viewable distance of at least one advertisement display point. A
distance dependent advertising plan can be created for the
advertisement display point that varies based on the distance
between the virtual user and the at least one advertisement
display point. The advertisement plan can contain different
advertising content items for presenting within the advertisement
display point. Different ones of the different advertising content
items are presented in accordance with the advertisement plan
when the virtual user is at different distances from the at least
one advertisement display point. The different advertising
content items can be displayed at the advertising display point in
the virtual world based on the advertising plan.
Abstract.
Independent claim 1 illustrates the claimed invention:
1. A method for advertising for virtual world, the method
compnsmg:
identifying at least one virtual user in a virtual world,
wherein the at least one virtual user is within a viewable distance
of at least one advertisement display point;
creating a distance dependent advertising plan for the
advertisement display point that varies based on the distance
between the virtual user and the at least one advertisement
display point, wherein the advertisement plan contains a plurality
of different advertising content items for presenting within the
advertisement display point, wherein the different advertising
content items to be displayed on the at least one advertisement
display point change based on changes in distance of the user
from the at least one advertisement display point; and
selectively displaying the plurality of different advertising
content items at the advertising display point in the virtual world
based on the advertising plan.
2
Appeal 2016-008387
Application 12/765,413
Claims 1-27 stand rejected under 35 U.S.C. § 101 as being directed to
patent ineligible subject matter. Final Act. 3--4.
Claims 1-3 and 5-27 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Altberg (US 2008/0262910 Al; published Oct. 23, 2008).
Final Act. 5-33.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as obvious over
Altberg and Datta (US 2007 /0079331 Al; published Apr. 5, 2007). Final
Act. 34--38.
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential).
THE PATENT-INELIGIBLE-SUBJECT-MATTER REJECTION
Findings and Contentions
The Examiner determines that "[ c ]laims 1-27 are directed towards the
concept of advertising in a virtual environment," which the Examiner
characterizes as an abstract idea corresponding to a fundamental economic
practice. Final Act. 4. The Examiner additionally determines
The claim( s) does/ do not include additional elements that are
sufficient to amount to "significantly more" than the judicial
exception (i.e.[,] abstract idea) because the claims do not recite
an improvement to another technology or technical field, an
improvement to the functioning of the computer itself, or
meaningful limitations beyond generally linking the use of an
abstract idea to a particular technological environment. It should
be noted the limitations of the current claims are performed by
the generically recited processor. The limitations are merely
instructions to implement the abstract idea on a computer and
3
Appeal 2016-008387
Application 12/765,413
Id.
require no more than a generic computer to perform generic
computer functions that are well-understood, routine and
conventional activities previously known to the industry.
In the Examiner's Answer, the Examiner similarly describes the
inventive concept as "merely displaying advertisements within a virtual
world." Ans. 33, 35. The Examiner reasons "the Appellants are merely
incorporating the real-world method (i.e.[,] advertising to users) into a
virtual world." Id.
Appellants acknowledge that conventional advertising uses fixed
billboards-both in the real world and the virtual world-to present
advertisements to passing potential customers. App. Br. 12. Appellants also
acknowledge that "[ s Jome advertisement spaces rotate an advertisement on a
timer." Id. (citing Spec. i-f 3). Appellants argue, inter alia, though,
[The claims] require[] a distance dependent advertising
plan for an advertising display point that varies based on a
distance between a virtual user and at least one advertising
display point. This is a significant and meaningful limitation of
the claims, which is beyond the "general idea of advertising in a
virtual environment[," as reasoned by the Examiner.] Further,
the claims include the meaningful limitation of displaying
different advertising content at the advertising display point
based on changes of the distance that the virtual user is from the
advertising display point. This is clearly a meaningful limitation
that is beyond the general concept of "advertising in a virtual
environment.["]
App. Br. 34.
According to Appellants, no known virtual advertising previously
included the technological improvement of a distance dependent advertising
innovation. Reply Br. 23-24. Appellants also argue
4
Appeal 2016-008387
Application 12/765,413
a virtual environment (Per DDR HOLDINGS) is by definition an
artificially created environment that requires computing
equipment for implementation. It is not an abstract idea - in the
context defined by Alice/CLS Bank because it did not exist
outside a computing space "for decades[,]" as was asserted to be
the case for the abstract concept of hedging. For the reasons
stated above, the first prong fails-and the 101 rejection should
be withdrawn as a result.
App. Br. 33.
Principles of Law
In determining whether the claims set forth patent eligible subject
matter under 35 U.S.C. § 101, we first must determine whether the claims at
issue are directed to laws of nature, natural phenomena, or abstract ideas.
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714 (Fed. Cir. 2014). In
considering whether a claim is directed to an abstract idea, we acknowledge,
as did the Supreme Court, that "all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or abstract
ideas." Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
71 (2012). We, therefore, look to whether the claims focus on a specific
means or method that improves the relevant technology or are instead
directed to a result or effect that itself is the abstract idea and merely invoke
generic processes and machinery. See Enfzsh, LLC v. Microsoft Corp., 822
F.3d 1327, 1336 (Fed. Cir. 2016).
If the claims are directed to an abstract idea, we then must consider
whether the claim contains an element or a combination of elements that is
sufficient to transform the nature of the claim into a patent-eligible
application. Ultramercial, 772 F .3d at 714; Alice Corp. Pty. Ltd. v. CLS
Bank Int'!., 134 S. Ct. 2347, 2355 (2014).
5
Appeal 2016-008387
Application 12/765,413
In applying step two of the Alice analysis, we must
"determine whether the claims do significantly more than simply
describe [the] abstract method" and thus transform the abstract
idea into patentable subject matter. We look to see whether there
are any "additional features" in the claims that constitute an
"inventive concept," thereby rendering the claims eligible for
patenting even if they are directed to an abstract idea. Those
"additional features" must be more than "well-understood,
routine, conventional activity."
Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328 (Fed.
Cir. 2017) (citations omitted).
"[C]laims [that] merely require generic computer implementation[]
fail to transform [an] abstract idea into a patent-eligible invention." Id. (first
and fourth alterations in original) (quoting Alice, 134 S. Ct. at 2357).
Analysis
Appellants' arguments are only partially persuasive. In determining
that the claims are directed to an abstract idea, the Examiner characterizes
the claimed invention too generally because the Examiner did not take into
account the distance-based dynamic aspect of the advertising. The Examiner
also characterizes the claimed invention too narrowly by interpreting the
abstract idea as encompassing advertising in the virtual world. The claimed
invention is more accurately characterized as being directed to displaying
different advertising content at an advertising display point based on
changes of the distance that the content viewer is from the advertising
display point.
Even when the invention is properly characterized in this manner,
though, the claimed invention still is reasonably characterized as being
directed to an abstract idea. This is because such distance-based dynamic
advertising can be practiced by a human holding up a first paper or
6
Appeal 2016-008387
Application 12/765,413
cardboard sign when a content viewer is at a first distance and holding up a
second sign with a different message or font size when a content viewer is at
a second distance. As such, the claimed abstract idea entails a method of
organizing human activity (see MPEP § 2106.04(a)(2) Part (II)), and more
particularly, a concept relating to advertising, marketing, and sales activities
or behaviors. See FEBRUARY 2018: ELIGIBILITY QUICK REFERENCE SHEET
IDENTIFYING ABSTRACT IDEAS (PART 1) (available at
https://www.uspto.gov/sites/default/files/documents/ieg-qrs.pdt).
We further determine under the second prong of the Alice inquiry that
implementing this abstract idea with computers in a virtual network fails to
transform the abstract idea into a patent-eligible invention. Alice, at 2357.
Appellants do not provide sufficient evidence that the abstract idea is
implemented in a manner that improves the virtual universe computing. The
invention instead appears to implement the invention using generic computer
components in their conventional manner. Appellants even acknowledge
that advertising with (albeit fixed) billboards in the virtual world was
conventional. App. Br. 12.
We also are unpersuaded by Appellants' argument that no known
virtual advertising previously included the technological improvement of a
distance dependent advertising innovation. Reply Br. 23-24. This argument
conflates the inquiry of whether the idea was previously known with the
separate inquiry of whether the invention is directed to an abstract idea. The
former inquiry pertains to whether the invention is patentable under
35 U.S.C. §§ 102 and 103. The latter inquiry pertains to whether the
invention is patent eligible under § 101.
7
Appeal 2016-008387
Application 12/765,413
Accordingly, Appellants have not persuaded us of error in the
Examiner's ultimate determination that claim 1 is directed to a patent
ineligible abstract idea. Nor do Appellants persuade us that those dependent
claims that were separately argued (see App. Br. 34--35) add any meaningful
limitations that would constitute significantly more than an abstract idea:
Appellants separately argue that "[ c ]laim 2 includes meaningful
limitations of computing a group distance in addition to a user's distance,
where the advertising plan is based on both the user's distance and the
computed group distance." Id. This argument is unpersuasive because
taking into account additional viewers when determining which of plural
signs to display, also is a determination that can be made by a human
holding plural signs. As such, the additional limitations of claim 2 merely
make the abstract idea of claim 1 more complex, but no less abstract.
Appellants separately argue that "[ c ]laim 4 includes meaningful
limitations of extracting a charge rate from the advertising plan, which is
based on the distance of the user from the advertising point, which is a
meaningful limitation distinct from the abstract idea." Id. at 35. This
argument is unpersuasive because determining the rate to charge for
advertising constitutes a concept relating to agreements between people or
performance of financial transactions. See FEBRUARY 2018: ELIGIBILITY
QUICK REFERENCE SHEET IDENTIFYING ABSTRACT IDEAS (PART 1 ),
"FUNDAMENTAL ECONOMIC PRACTICES" Manual of Patent
Examining Procedure, MPEP § 2106.04(a)(2) Part (I). As such, the
additional limitations of claim 4, together with the limitations of claim 1,
may constitute a combination of abstract ideas, but this combination of
abstract ideas is no less abstract.
8
Appeal 2016-008387
Application 12/765,413
Appellants separately argue that "[ c ]laim 9 includes a meaningful
limitation that the advertising plan includes different display types of a slide,
banner, and video." App. Br. 35. This argument is unpersuasive because
using conventional computer display means to display an advertising
message does not add significantly more to the abstract idea of claim 1.
Appellants separately argue that "[ c ]laim 10 changes display types
based on distance." Id. This argument is unpersuasive because this
invention also has a real world analog that can be performed by a human
holding signs or objects. For example, a person could hold up a large sign
for potential customers that are far away and alternatively pass out a
brochure to potential customers who are in close proximity. Furthermore,
the decision to first use one conventional type of computer display according
to its conventional manner of use and subsequently use another type of
conventional computer display in a conventional manner does not add
significantly more to the abstract idea.
Appellants separately argue that "[ c ]laim 12 defines how a group
distance is an aver[age] or weighted average." Id. This argument is
unpersuasive because this additional limitation, like the limitations of
claim 2, merely make the abstract idea of claim 1 more complex, but no less
abstract.
Appellants separately argue that "[ c ]laim 14 requires viewable
distance rules, rotation time rules, and group distance rules." Id. This
argument is unpersuasive because additionally printing out the rules or
guidelines that govern the sign-holding decision-making process also can be
performed by a human with pencil and paper. As such, the human analog is
not less abstract. Furthermore, extracting and applying these viewing rules
9
Appeal 2016-008387
Application 12/765,413
in a virtual universe merely entails using computers to perform ordinary
display functions in a conventional manner. Performing the method of
claim 14, then, as well as the method of claim 3 from which the former
claim depends, does not add significantly more to the abstract idea of
claim 1.
For the foregoing reasons, we sustain the Examiner's rejection of
claims 1-27 under 35 U.S.C. § 101.
THE PATENT ABILITY REJECTIONS
Claims 1, 5, 8, 11, 12, 14, and 17
Appellants argue that the Final Rejection is very vague, ambiguous
and challenging to discern because the Rejection cites almost fifty different
paragraphs of Altberg, paragraphs that provide disjointed teaching. App.
Br. 11; see also id. at 17-18. Appellants contend that such broad citing of
the reference effectively constitutes citation of the entirety of Altberg.
We point out that our reviewing court has set forth the standard for
determining the sufficiency of an Examiner's rejection:
[T]he PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
"notify[ing] the applicant ... [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application."
That section "is violated when a rejection is so uninformative that
it prevents the applicant from recognizing and seeking to counter
the grounds for rejection."
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (citations omitted)
(alterations in original). Appellants' additional arguments regarding the
anticipation rejection (App. Br. 12-27), discussed below, indicate that
10
Appeal 2016-008387
Application 12/765,413
Appellants understand the rejection at least sufficiently enough for the
requirements of§ 132 to be satisfied.
Furthermore, the authority of the Board under 35 U.S.C. § 6 is limited
to reviewing adverse decisions of patent examiners. If Appellants believe
the rejection needs to be clarified, petitions to the Director are available
under 3 7 C.F .R. § 1.181 to require an examiner to clarify an official action
in accordance with 37 C.F.R. § 1.104. "[P]etitionable matters should be
addressed before an appeal reaches the Board." Ex Parte Frye, 94 USPQ2d
1072, 1078 (BP AI 2010).
Turning to the substance of the rejection, Appellants argue the
Examiner erred in finding Altberg anticipates claim 1. App. Br. 18-20.
According to Appellants, the Examiner erred in relying on paragraph 7 5 of
Altberg to teach the claim language
creating a distance dependent advertising plan for the
advertisement display point that varies based on the distance
between the virtual user and the at least one advertisement
display point, wherein the advertisement plan contains a plurality
of different advertising content items for presenting within the
advertisement display point, wherein the different advertising
content items to be displayed on the at least one advertisement
display point change based on changes in distance of the user
from the at least one advertisement display point,
as well as the claim language "selectively displaying the plurality of
different advertising content items at the advertising display point in
the virtual world based on the advertising plan." App. Br. 18 (citing
claim 1 ).
Appellants argue that paragraph 7 5 merely discloses changing
the advertising content on a virtual bulletin board "during a prior
[period] of time," and that the advertising content can change per
11
Appeal 2016-008387
Application 12/765,413
events, such as "when an avatar passes by the board, or when an event
around the board changes." Id. at 19, 20 (citing Altberg i-f 75).
Appellants argue that, at best, this disclosure may set forth a mere
possibility that the content can change based upon distance, but that
such a possibility is insufficient to constitute the explicit or inherent
disclosure necessary for supporting an anticipation rejection. App.
Br. 19.
We agree that paragraph 7 5 of Altberg, alone, does not support
an anticipation rejection, but the Examiner relies upon more than
paragraph 75 in rejecting claim 1. For example, the Examiner
additionally cites, inter alia, to paragraphs 69--80 and 95-110 of
Altberg as disclosing the disputed distance-based dynamic
advertising. Final Act. 6. These passages of Altberg include the
following disclosure:
In one embodiment, a virtual object can sense (see or
listen) the surrounding conditions and present advertisements
that may be of interest to the nearby avatars. For example, a
virtual world may be configured to broadcast public
conversations of avatars to nearby objects and/or avatars (e.g., in
voice and/or text). Thus, a virtual object can be configured to
listen to, or observe, the conversations of nearby avatars,
determine topics of interest to the avatars, and present relevant
advertisements.
In one embodiment, the set of nearby avatars are
determined based on a distance in the virtual world. Since the
avatars may move dynamically in the virtual world, the avatars
in the listening range of the virtual object may change
dynamically as the positions of the avatars in the virtual world
are changed continuously.
12
Appeal 2016-008387
Application 12/765,413
In one example, the virtual bulletin board (103) includes
an image of a real bulletin board with an image layer dynamically
overlaid on an advertisement surface of the real bulletin board;
while the real bulletin board may show a static advertisement,
the image layer overlaid on the real bulletin board can be used to
show a dynamic advertisement which can change over time, or
based on the circumstance near the bulletin board in the virtual
world.
Altberg i-fi-178, 79, 95 (emphasis added).
These passages indicate that the virtual bulletin board displays a
default advertisement. Altberg i195. This default advertisement
dynamically changes when avatars move within a predetermined distance.
Id. i-fi-1 78, 79. As such, the cited passages of Altberg disclose the disputed
claim language.
Altberg additionally teaches that the advertising can change
dynamically based upon an avatar touching or interacting with the bulletin
board of the virtual world. Altberg i-f 100. Touching the bulletin board
requires reducing the distance from the avatar to the bulletin board to zero.
This passage, too, then, discloses the recited distance-based dynamic
advertising limitations of claim 1. It is irrelevant that this aspect requires
functionality specifically based upon touching, as opposed to being based
merely on distance. Claim 1 does not preclude creating an advertising plan
and displaying advertising content in a manner that additionally is dependent
on touch, as well as distance.
For the foregoing reasons, Appellants have not persuaded us of error
in the anticipation rejection of independent claim 1. Accordingly, we sustain
the anticipation rejection of that claim, as well as claims 5, 8, 11, 12, 14, and
17, for which Appellants either set forth similar arguments or do not provide
separate substantive arguments. See App. Br. 24--29.
13
Appeal 2016-008387
Application 12/765,413
Claims 2 and 18
Claim 2 reads as follows:
2. The method as claimed in claim 1, further comprising:
computing the user's distance to the advertising display
point; and
searching for the advertisement plan based on the user's
distance from the advertisement display point.
Appellants argue that the claim language is not taught by Alt berg's
disclosure of paragraphs 75, 80, and 95. App. Br. 20-22. This argument is
unpersuasive because it does not address Altberg's additional teachings,
such as those discussed in the preceding section in relation to claim 1.
Accordingly, we sustain the anticipation rejection of claim 2, as well
as claim 18, which is not argued separately. See App. Br. 29.
Claim 3
Claim 3 reads as follows:
3. The method as claimed in claim 1, further comprising:
extracting a set of predefined rules for the user's distance
from the advertisement plan;
applying the set of predefined rules on the one or more
advertising content items for the advertisement display point.
Appellants argue that the claim language is not taught by Altberg' s
disclosure of paragraphs 75, 80, and 95. App. Br. 22-23. This argument is
unpersuasive because it does not address Altberg's additional teachings,
such as those discussed in relation to claim 1.
Claims 4 and 19
Claim 4 reads as follows:
4. The method as claimed in claims 1, further comprising:
extracting a charge rate from the advertisement plan for
the one or more advertising content items for the advertisement
14
Appeal 2016-008387
Application 12/765,413
display point, wherein the charge rate is based on the distance of
the user from the advertisement display point; and
updating charge accounts of an advertising sponsor of the
one or more advertising content items with the charge rate and
the set of predefined rules.
The Examiner finds that Altberg generally teaches extracting a charge
rate for advertisements and updating charge accounts, as recited in claim 4
(Final Act. 34--36 (citing Altberg i-fi-f 16, 62, 63, 311, 420-23)), but does not
teach that the charge rate is based on the distance of the user from the
advertisement display point (id. at 35). The Examiner finds that "Datta
teaches a system in which advertisements are presented to game users within
their virtual environment[, and c ]ertain objects within the video game are
tagged for advertisement delivery." Final Act. 36. The Examiner more
specifically finds that whether the system registers an avatar's view or
"impression" of the advertisement, and therefore whether the system charges
the advertiser for the advertisement placement, depends on both whether the
avatar has an unobstructed view of the advertisement and how far away the
avatar is from the advertisement. Id. at 36-37 (citing Datta i1i172-74, 80,
105-23). The Examiner further concludes that it would have been obvious
to implement a distance-dependent pricing scheme for Altberg's system. Id.
at 38.
Appellants first argue that the cited teachings of Datta fail to
overcome the deficiencies of Altberg because the teachings do not teach
charging a rate depending on distance from a display point. App. Br. 23.
This argument is unpersuasive because Datta does teach that an
advertising impression is generated when the avatar is within an impression
area that is defined by a specified surface vector/distance 1040, as well as by
15
Appeal 2016-008387
Application 12/765,413
a pair of viewing angles 8i, E>r. Datta i-fi-f 111, 115; Figs. 9, 10. Because a
charge occurs when the avatar is within the specified surface vector/distance
and no charge occurs when the avatar is beyond this distance, Datta
reasonably can be interpreted as teaching a distance-based charge rate, as
claimed.
Appellants next argue that the Examiner's "stated motivation 'obvious
to try' fails [because t ]here are an unlimited number of ways to advertise,
where there is no explicit list that one of ordinary skill would repetitively
try. The motivation is a nonce motivation that fails to satisfy the 'obvious to
try' rational under KSR." App. Br. 23 (emphasis added). Appellants
additionally argue that "the motivation fails to consider the differences
between the references, which per Altberg require a real-time
communication linked to a reference." Id.
Appellants' arguments are unpersuasive. Regardless of the merits of
the Examiner's obvious-to-try rationale, the Examiner additionally provides
the following reasoning: "Altberg already teaches that viewable distance
from the user's avatar and advertisement display location is a deciding factor
on delivering the ad impression." Final Act. 37. We understand the
Examiner to be additionally relying on Datta for the straightforward
proposition that it would have been obvious to charge for the advertising in
Altberg's system when the avatar is close enough for an advertisement to be
displayed, and to not charge when the avatar is too distant for an
advertisement to be displayed.
Accordingly, we sustain the obviousness rejection of claim 4, as well
as the anticipation rejection of claim 19, which Appellants do not argue
separately from claims 3 and 4. See App. Br. 29.
16
Appeal 2016-008387
Application 12/765,413
Claim 6
Claim 6 reads as follows:
6. The method as claimed in claim 1, wherein the advertising
display point is a fixed relative region of space in the virtual
world within which the different advertising content items are
displayed.
The Examiner finds that Altberg discloses that "virtual bulletin boards
can be part of virtual landscape and avatars can continuously move in and
around and past bulletin boards." Final Act. 11. Appellants acknowledge
that Altberg "does teach virtual bulletin boards being presented in the virtual
world." Appellants argue, though, that Altberg contains "[ n Jo mention ...
of these virtual bulletin boards being the [claimed] reference. No reference
of computing a distance between the advertising display point and the virtual
user exists." App. Br. 11.
Appellants' arguments are unpersuasive because, as found by the
Examiner, Altberg does teach fixed advertising display points. See, e.g.,
Altberg i-fi-1515-37 (discussing virtual objects 1007 that are configured to
collect information from an avatar 101 and provide communication with a
controller 1005). "[T]he virtual object (1007) may present a public visual
prompt, such as a text message [or] a dialog box ... to avatars with[ in] a
predetermined distance of the virtual object." Id. i1520. The virtual object
1007 may have "a visible representation in the virtual world and occup[y] a
finite 3D space in the virtual world. Id. i1534.
Accordingly, we sustain the anticipation rejection of claim 6.
17
Appeal 2016-008387
Application 12/765,413
Claim 7
Claim 7 reads as follows:
7. The method as claimed in claim 1, wherein the
advertisement plan includes a plurality of different advertising
sponsors, each associated with a different one of the different
advertising content items, wherein each of the different
advertising sponsors pays a fee for having the corresponding
advertising content item selectively presented upon the
advertising display point of the virtual world.
Appellants argue "[t]he fact that advertiser[]s pay a fee in Altberg is
standard for advertisement. There is no 'advertisement plan' inherent in
Altberg that includes a plurality of different advertising sponsors per the
claimed limitation."
This argument is not persuasive. Altberg discloses, for example, that
advertisements can be used for different categories of products (e.g., hotels
and car rentals), which reasonably indicates different advertisers:
In one embodiment, the system uses one or more pre-
determined rules to select the advertisements based on one or
more parameters derived specific[ally] from the context. The
parameters may be explicitly specified by the customer (e.g., via
an [Interactive Voice Response] tree), or implicitly derived from
the communications received from the customer. For example,
when the customer asks for a specific hotel, the system can
implicitly derive the economic level based on the mentioned
hotel (e.g., using a look up table that pre-categorize the economic
level of known hotels); and the economic level determined based
on the hotel can be applied to the selection of rental car
advertisements in cross selling, or the selection of hotel
advertisements in pitch switching.
Altberg i-f 363.
Accordingly, we sustain the anticipation rejection of claim 7.
18
Appeal 2016-008387
Application 12/765,413
Claim 9
Claim 9 reads as follows:
9. The method as claimed in claim 1, wherein the advertising
plan includes display types for the user's distance for the
advertising content, and the display types include at least one of
slides, banners, and videos.
Appellants argue that Altberg does not expressly or inherently
mention an advertising plan that includes display types for the user's
distance in the portions of Altberg referenced by the Examiner. App. Br. 25.
Appellants' argument is unpersuasive. Altberg discloses that the
system can present a reference to the user for contacting an advertiser.
Altberg i-fi-f l 08---09. Altberg expressly states that the reference can be
presented via various forms, such as virtual bulletin boards and banners.
Altberg i-f 110. Furthermore, if the banner is created so that the user can read
the content, then that display, by definition, constitutes a display type for the
user's distance.
Accordingly, we sustain the anticipation rejection of claim 9.
Claim 10
Claim 10 reads as follows:
10. The method as claimed in claim 1, wherein the advertising
plan includes display types for the at least one virtual user's
distance from the advertising display point, and the advertising
plan includes a set of rules for the at least one virtual user for
distance from the different advertising content items, and the
advertising plan includes rotation time rules for the different
advertising content items based on the viewable distance of the
at least one virtual user.
19
Appeal 2016-008387
Application 12/765,413
Appellants argue that Altberg does not teach a set of rules for rotation
times for different content based on viewable distance of virtual users to an
advertising point are present in an advertising plan of Altberg. App. Br. 26.
We understand the Examiner's position to be that Altberg discloses
advertisements are dynamically overlaid onto a bulletin board when an
avatar is within a specified distance, and that Altberg further discloses that
within this period of the Avatar being nearby, the advertisements
additionally can be rotated as the Avatar walks by the bulletin board. Final
Act. 14--15. Appellants do not set forth persuasive arguments for why such
functionality fails to disclose or suggest the disputed claim language.
Accordingly, we sustain the anticipation rejection of claim 10.
Claims 12 and 13
Claims 12 and 13 read as follows:
12. The method as claimed in claim 1, per the advertising plan
displaying a first of the plurality of different advertising content
items when a distance between the virtual user and the
advertising display point is at a first distance and displaying a
second of the plurality of different advertising content items
when a distance between the virtual user and the advertising
display point is at a second distance.
13. The method as claimed in claim 12, per the advertising
plan displaying a third of the plurality of different advertising
content items when a distance between the virtual user and the
advertising display point is at a third distance.
Appellants' arguments regarding claim 12 are similar to those
addressed in relation to claim 1. App. Br. 27-28. As already noted above,
we find these arguments unpersuasive for the reasons set forth in relation to
claim 1.
20
Appeal 2016-008387
Application 12/765,413
Appellants then argue in relation to claim 13 that "[ n Jo third distance
consistent with the claims defined in an advertising plan is explicitly or
inherently present in the relied upon portions of Altberg." App. Br. 28.
The Examiner premises the rejection of claim 13 on the following
theory:
[Altberg's] avatars can continuously move in and around and
past bulletin boards, avatar considered "nearby" based on
distance (i.e.[,] "viewable distance" as claimed), bulletin board
can display dynamic ads on its overlay based and update the
content periodically as an avatar moves past a bulletin board
(i.e.[,] "distance dependent advertising plan", "different
advertising content items" and "based on changes in distance of
the user ... from the display point" as claimed) as per [0075] et
al., advertisers pay a fee for displaying advertisements in virtual
world according to various fee structures and conditions).
Final Act. 13.
As explained in relation to claim 1, converting from the bulletin
board's initial image to the dynamic overlay image when the avatar
approaches the bulletin board constitutes changing the images based on
transitioning between a first and second distance. However, we disagree
with the Examiner that Altberg's functionality of dynamically changing the
content as the avatar moves past the bulletin board reasonably corresponds
to claim 13 's requirement of displaying a third advertising content item
when a distance between the virtual user and the advertising display point is
at a third distance. The fact that the image may change as the avatar walks
by does not necessarily mean that the rotation is based on distance. It
appears just as possible that the image rotation can be based upon time.
Accordingly, we do not sustain the anticipation rejection of claim 13.
Because the issue is not before us, we do not address the separate question of
21
Appeal 2016-008387
Application 12/765,413
whether it would have been obvious to base the disclosed image rotation
specifically on distance.
Claim 15
Claim 15 reads as follows:
15. The method as claimed in claim 10, wherein viewable
distance rules and the rotation time rules are aggregated,
averaged or combined statistically.
Appellants argue that the cited passages of Altberg do not disclose
this claim language. App. Br. 28.
This argument is unpersuasive. The Examiner explains, and we agree,
that Altberg' s advertisements are dynamically selected for display to nearby
avatars relevant to activities taking place in the vicinity of the display, and
the advertisements are based on circumstances near the bulletin board. Final
Act. 15 (citing Altberg i-fi-175, 80, 95). The Examiner notes that the dynamic
changes to the advertisements can be based on plural avatars moving around,
entering/exiting the specified area. Final Act. 15. Such functionality for
plural avatars reasonably corresponds to aggregating viewable-distance and
time-rotation rules.
Accordingly, we sustain the anticipation rejection of claim 15, as well
as claim 20, which is not argued separately. See App. Br. 29.
Claim 16
Claim 16 reads as follows:
16. The method as claimed in claim 10, wherein viewable
distance rules and the rotation time rules are separately
evaluated.
22
Appeal 2016-008387
Application 12/765,413
The Examiner reasons that Altberg discloses the claimed rules being
separately evaluated because Altberg' s system includes an option of
presenting different content for each avatar. Final Act. 21-22. Appellants
argue that the cited passages of Altberg do not disclose this claim language.
App. Br. 28-29.
The portion of Appellants' Specification that discusses separate
evaluations of the rules (Spec. i-f 33), as well as the surrounding disclosure
(e.g., Spec. i-fi-129-37), appears to indicate that the claim drafters intend
claim 16 to mean that the viewable-distance rules for one or more avatars are
evaluated separately from the rotation-time rules for the same avatar(s). The
Examiner appears, though, to be interpreting claim 16 to mean that the
viewable-distance rules and rotation-time rules for one avatar can be
evaluated separately from the viewable-distance rules and rotation-time rules
for a second avatar. Final Act. 21-22.
Even if we assume the Examiner's alternative interpretation of
claim 16 is reasonable, the Examiner has not established that Altberg teaches
such a limitation. The fact that the advertisement content differs from one
avatar to another does not necessarily mean that viewable-distance rules and
rotation-time rules differ from one avatar to another.
Accordingly, we do no sustain the anticipation rejection of claim 16,
or of claim 21, which contains similar language.
Claims 22-26
Claim 22 is reproduced below, in pertinent part, with emphasis added:
22. A system for distance dependent advertising for [a] virtual
world, the system comprising at least one processor and at least
one memory, wherein the processor is configured for
23
Appeal 2016-008387
Application 12/765,413
creating an advertising plan, wherein the advertisement
plan contains one or more advertising content [items] for the
advertisement display point, the advertisement plan includes the
advertising sponsor for the one or more advertising content, the
advertising plan includes a display distance rule for the one or
more advertising content, and the advertising plan includes rates
for the one of more advertising content for the advertising
sponsor, the advertising plan includes display types the
advertising content dependent upon a distance of each of the
virtual users from the advertisement display point, and the
display types includes at least one of slides or banners or videos
or a form of digital advertising media subject to change
dependent on a computed distance of a least a subset of the
virtual users from the advertisement display point, and the
advertising plan includes rotation time rules for the one or more
advertising content based on the viewable distance of at least a
subset of the virtual users from the advertisement display point;
Appellants argue that the rejection is in error because the Final Action
groups claim 17 and 22 together, even though the claimed limitations are
different. App. Br. 30. Appellants urge that "claim 17 lacks the above
highlighted limitations, which are not properly addressed." Id.
This argument is unpersuasive. Regardless of the Examiner's claim
grouping and regardless whether this language is addressed in the rejection
of claim 1 7, the disputed claim language is substantively identical to that of
claim 10. Appellants provide no persuasive arguments for why the disputed
language of claim 22 should be interpreted any differently than that of
claim 10, which we addressed above.
Accordingly, we sustain the anticipation rejection of claim 22, as well
as that of claims 23-26, which Appellants do not argue separately. App.
Br. 30.
24
Appeal 2016-008387
Application 12/765,413
Claim 27
27. A method for distance dependent advertising in a virtual
world, the method comprising:
identifying users in a virtual world, wherein the users are
in a viewable distance from an advertisement display point, in a
virtual environment;
displaying a plurality of sets of information on the
advertisement display point in accordance with an advertisement
plan, wherein the plurality of sets information includes
advertising content, the advertisement plan including an
advertisement sponsor, and the advertising plan containing a
charge rate for the advertising content for the advertising
sponsor;
computing a distance of each of the users from the
advertisement display point in the virtual environment; and
on determining that each of the users reaches a
predetermined distance from the advertisement display point,
enabling each of the users at respective predetermined distances
from the advertisement display point to view a distinct
advertising content from among the plurality of sets of
information, wherein the advertising content to be displayed on
the advertisement display point changes based on changes in a
user's distance from the advertisement display point.
Appellants argue that the cited portions of Altberg are silent as to an
advertising plan that includes "a plurality of sets of displayed information
that includes 'advertising content, a charge rate for advertising content, and
the like."' App. Br. 30-31. This argument is unpersuasive. Altberg
discusses charging advertisers advertisement fees. See, e.g., Altberg i-fi-f 16,
17, 145.
Appellants argue that the relied upon portions of Altberg fail to
compute a distance from each of the viewers and the advertisement display
point. App. Br. 31. Appellants also argue that Altberg "discuss[ es] content
25
Appeal 2016-008387
Application 12/765,413
that is changed based on semantics (of what is being discussed at a meeting),
but fails to explicitly or inherently teach that advertising content is changed
based on a user's distance from the advertisement display point." Id.
These arguments are unpersuasive. As mentioned above, Altberg
provides dynamic overlays of advertising when an avatar is within a
specified distance. This disclosure also implies that Altberg' s system must,
in some manner, measure the avatar's distance from the advertising point in
order to know when the avatar is within the specified range.
Appellants argue that the cited portions fail to enable users at
predetermined distances to view distinct content from among the different
sets of information. Id. This argument is unpersuasive. As mentioned in
relation to claim 16 (see Final Act. 21-22), Altberg's discloses the
functionality of displaying different advertisements for different avatars.
Alt berg i-f 10 5.
Accordingly we sustain the anticipation rejection of claim 27.
CONCLUSIONS
We sustain the rejection of claims 1-27 under 35 U.S.C. § 101 as
being directed to patent ineligible subject matter.
We sustain the rejection of claims 1-3, 5-12, 14, 15, 17-20, and 22-
27 under 35 U.S.C. § 102(b) as being unpatentable over Altberg.
We sustain the rejection of claims 4 under 35 U.S.C. § 103 as being
unpatentable over Altberg and Datta.
We do not sustain the rejection of claims 13, 16, and 21 under
35 U.S.C. § 102(b) as being unpatentable over Altberg.
26
Appeal 2016-008387
Application 12/765,413
DECISION
The Examiner's decision rejecting claims 1-27 is affirmed.
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 ). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
27