Ex Parte Gershfang et al

Patent Trial and Appeal Board

Mar 22, 2018

12628383 (P.T.A.B. Mar. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/628,383 12/01/2009
79980 7590 03/26/2018
Keohane & D'Alessandro
1881 Western Avenue Suite 180
Albany, NY 12203
FIRST NAMED INVENTOR
Igor Y. Gershfang
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.
END9200900l6US1 5826
EXAMINER
SORKOWITZ, DANIEL M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
03/26/2018 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):
drubbone@kdiplaw.com
Docket@Kdiplaw.com
lcronk@kdiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IGOR Y. GERSHF ANG, RICK A. HAMILTON II,
NEIL A. KATZ, JAMES W. SEAMAN, ADAM R. SNOPEK and
RICHARD YOUNG
Appeal2016-006099
Application 12/628,383
Technology Center 3600
Before CARL W. WHITEHEAD JR, BRADLEY W. BAUMEISTER, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants are appealing the final rejection of claims 1--4, 7-13, 16-
20, 23-25, and 27-31under35 U.S.C. § 134(a), which constitute all the
claims pending in this application. Appeal Brief 1. We have jurisdiction
under 35 U.S.C. § 6(b) (2012).
We reverse.
Introduction
The invention is directed to "a method for navigating an avatar into a
proximity and directionality favorable for viewing advertising content in a
Virtual Universe (VU) of a multiplayer online game managed by at least one
server .... " Appeal Brief 2.
Appeal2016-006099
Application 12/628,383
Illustrative Claim
1. A method for navigating an avatar into a proximity
and directionality favorable for viewing advertising content in a
Virtual Universe (VU) of a multiplayer online game managed by
at least one server, the method comprising:
registering, by the at least one server, a visit by the avatar
to a region of the VU that includes a target advertising content;
determining, by the at least one server, a proximity to the
target advertising content by the avatar;
determining, by the at least one server, an avatar
directionality of the avatar with respect to the target advertising
content;
determining, by the at least one server, a time with respect
to which the avatar may be exposed to the target advertising
content in the region;
assigning, by the at least one server, at least one score to
the visit, the proximity, the directionality, and the time;
calculating, by the at least one server, an effectiveness
score based on the at least one score;
evaluating, by the at least one server, an effectiveness of
the target advertising content by comparing the effectiveness
score to a predetermined scale;
automatically constructing, by the at least one server, a
barrier blocking the avatar from moving away from the target
advertising content based on the evaluating, the barrier
comprising a landscape element; and
inducing, by the at least one server, using the barrier, the
avatar to navigate in such a way that the proximity and the avatar
directionality of the avatar favor viewing of the target advertising
content.
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Appeal2016-006099
Application 12/628,383
Rejection on Appeal
Claims 1--4, 7-13, 16-20, 23-25, and 27-31 stand rejected under
35 U.S.C. §101 because the claimed invention is directed to non-statutory
subject matter. Answer 2-3.
ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed October 19, 2015), the Reply Brief (filed
May 31, 2016), the Answer (mailed April 5, 2016) and the Final Rejection
(mailed May 5, 2015) for the respective details.
The U. S. Supreme Court provides a two-step test for determining
whether a claim is directed to patent-eligible subject matter under 35 U.S.C.
§ 101. 1 In the first step, we determine whether the claims are directed to one
or more judicial exceptions (i.e., law of nature, natural phenomenon, and
abstract ideas) to the four statutory categories of invention (i.e., process,
machine, manufacture, and composition of matter). Id. (citations omitted)
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct.
1289, 1296-97 (2012)) ("Mayo"). In the second step, we "consider the
elements of each claim both individually and 'as an ordered combination' to
determine whether the additional elements 'transform the nature of the
claim' into a patent-eligible application." Id. (citing Mayo, 132 S. Ct. at
1297-98). In other words, the second step is to "search for an 'inventive
concept'-i.e., an element or combination of elements that is 'sufficient to
1 Alice Corp. Pty. Ltd. v. CLS Bankint'l, 124 S. Ct. 2347, 2354 (2014).
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Application 12/628,383
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself."' Id. (citing Mayo, 132 S. Ct. at 1294).
Appellants contend "embodiments of the invention are directed to
virtual universe technology" and therefore "cannot simply be performed as
an abstract idea in one's head." Appeal Brief 6. The Examiner finds:
Independent claim 1 is directed towards a business model
for advertising to force a video game user to view an
advertisement. The claimed virtual universe should be
considered an environment for a video game on a generic
computer network, using conventional technology. No
specialized machinery is disclosed the specification or mandated
in the claims.
Answer 3.
In the instant application, "the plain focus of the claims is on an
improvement to computer functionality itself, not on economic or other tasks
for which a computer is used in its ordinary capacity." Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)2. The claims address
2 "We do not read Alice to broadly hold that all improvements in computer-
related technology are inherently abstract and, therefore, must be considered
at step two. Indeed, some improvements in computer-related technology
when appropriately claimed are undoubtedly not abstract, such as a chip
architecture, an LED display, and the like. Nor do we think that claims
directed to software, as opposed to hardware, are inherently abstract and
therefore only properly analyzed at the second step of the Alice analysis.
Software can make non-abstract improvements to computer technology just
as hardware improvements can, and sometimes the improvements can be
accomplished through either route. We thus see no reason to conclude that
all claims directed to improvements in computer-related technology,
including those directed to software, are abstract and necessarily analyzed at
the second step of Alice, nor do we believe that Alice so directs. Therefore,
we find it relevant to ask whether the claims are directed to an improvement
to computer functionality versus being directed to an abstract idea, even at
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Application 12/628,383
navigating and directing users to advertisements within the virtual universe
for a duration. It is evident that an economic aspect is associated with the
claimed invention, however it is the navigation within the virtual universe
that is the claimed improvement to the computer function and therefore we
find Appellants' arguments persuasive.
DECISION
The Examiner's non-statutory subject matter rejection of claims 1--4,
7-13, 16-20, 23-25, and 27-31 is reversed.
REVERSED
the first step of the Alice analysis.
For that reason, the first step in the Alice inquiry in this case asks whether
the focus of the claims is on the specific asserted improvement in computer
capabilities (i.e., the self-referential table for a computer database) or,
instead, on a process that qualifies as an "abstract idea" for which computers
are invoked merely as a tool. As noted infra, in Bilski and Alice and
virtually all of the computer-related § 101 cases we have issued in light of
those Supreme Court decisions, it was clear that the claims were of the latter
type-requiring that the analysis proceed to the second step of the Alice
inquiry, which asks if nevertheless there is some inventive concept in the
application of the abstract idea. See Alice, 134 S.Ct. at 2355, 2357-59. In
this case, however, the plain focus of the claims is on an improvement to
computer functionality itself, not on economic or other tasks for which a
computer is used in its ordinary capacity."
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IGOR Y. GERSHF ANG, RICK A. HAMIL TON II,
NEIL A. KATZ, JAMES W. SEAMAN, ADAM R. SNOPEK and
RICHARD YOUNG
Appeal2016-006099
Application 12/628,383
Technology Center 3600
Before CARL W. WHITEHEAD JR, BRADLEY W. BAUMEISTER, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
Dissenting Opinion by BAUMEISTER, Administrative Patent Judge.
Appeal2016-006099
Application 12/628,383
DISSENTING OPINION
The Majority determines that the claims recite patent eligible subject
matter because "the plain focus of the claims is on an improvement to
computer functionality itself, not on economic or other tasks for which a
computer is used in its ordinary capacity." Maj. Op. 4 (citing Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)). I respectfully
disagree, and for at least that reason, I would affirm the rejection under
35 U.S.C. § 101.
The invention of Enfish is distinguishable from the present invention.
The invention of Enfish was "directed to an innovative logical model for a
computer database." Enfish, 822 F.3d at 1330. In contrast to prior-art
databases that were based upon a relational model, Enfzsh 's invention was
directed to a self-referential model wherein all information of the database
appears in a single table, and given rows of the table reference other rows of
that same table. Id. at 1332-33.
The Enfish court expressly noted various technological improvements
to the computer functionality that the invention provided:
First, [Enfish's] patents disclose an indexing technique that
allows for faster searching of data than would be possible with
the relational model. Second, the patents teach that the self-
referential model allows for more effective storage of data other
than structured text, such as images and unstructured text.
Finally, the patents teach that the self-referential model allows
more flexibility in configuring the database.
Id. at 1333 (citations omitted and formatting modified).
In contrast, the present Appellants acknowledge that it was known to
provide virtual universes ("VU s") with avatars, as well as to provide
advertising within such virtual universe. Spec. i-f 3. Appellants explain that
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Application 12/628,383
the focus of the invention is on the "vitally important" task of managing the
advertising that was known to be used in these virtual worlds. Spec. i-f 3.
Appellants state that techniques for verifying that advertisements have
been viewed "are particularly of interest to sponsors and advertisers." Id.
i-f 4. Appellants then describe a problem associated with known techniques
for measuring content viewing in virtual universes relative to viewing
advertisements in conventional web pages:
[Measuring content viewing] is not as easily accomplished with
emerging 3D virtual environments, where context is extensive
from the standpoint of a user, and a "location-hit" cannot be
correlated easily to a conventional Internet webpage-hit. Within
a VU environment, a location-hit simply indicates that an avatar
(resident) has accessed a specific region (or associated sub-space
within a region), but given the vastness of these environments,
without further investigation[,] it cannot be determined that the
visiting avatar has or has not viewed desired advertising content . .
many given space.
Spec. ,-r 4.
In light of this problem associated with measuring advertising
viewing, Appellants state that "aspects of this invention are directed towards
determining the effectiveness of advertising a virtual universe." Id. i-f 4. The
balance of the "Summary of the Invention" section of Appellants'
Specification only reiterates that the five aspects of the present invention are
directed to evaluating advertising: "provid[ing] a method for evaluating
advertising effectiveness in a Virtual Universe" (Id. i-f 5), "provid[ing] a
method for evaluating advertising content effectiveness in a Virtual
Universe" (Id. i-f 6), "provid[ing] a computer system for evaluating
advertising content effectiveness in a Virtual Universe" (Id. i-f 7),
"provid[ing] a computer readable medium containing a program product for
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Application 12/628,383
evaluating advertising content effectiveness in a Virtual Universe" (Id. i-f 8),
and "provid[ing] a method for deploying a system for evaluating advertising
content effectiveness in a Virtual Universe" (Id. i-f 9).
Appellants now allege on appeal that their invention is directed to
tangible technology. See Appeal Br. 6 ("Embodiments of the invention
claimed herein are not directed to an abstract idea, but instead to navigation
technology"); id. at 7 ("the present invention improves on previous
technology in virtual universes and navigation therein"). Appellants also
argue that "embodiments of the invention overcome a problem specifically
arising in computing technology, as only in a computerized virtual universe,
could there be an issue as to how to induce an avatar to navigate in such a
way that it views an electronic advertisement in such virtual universe." Id.
at 8.
Appellants' arguments on appeal overlook their admissions that
navigation technology for virtual universes was known already. See, e.g.,
Spec. 1. Appellants do not provide reasonable evidence that constructing
barriers in virtual universes was technologically challenging in any way or
that automatically evaluating the effectiveness of the advertisements
provided any technological improvement either to the virtual universes or to
the operation of the servers in which the virtual universes reside. See
generally Spec.; Appeal Br.; Reply Br. Appellants' invention is better
characterized, then, as one that uses conventional navigation technology to
improve upon the effectiveness of known virtual-universe advertising
techniques.
As such, I agree with the Examiner (e.g., Ans. 3) that the present
invention pertains to the abstract idea of organizing human activities. See
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Application 12/628,383
ABSTRACT ]DEAS (PART 2), "AN IDEA 'OF ITSELF"'-MPEP 2106.04(a)(2)
PART (III) B. Concepts Relating To Advertising, Marketing, & Sales
Activities Or Behaviors (available at
https://www. uspto. gov I sites/ default/files/ docmnents/ieg-qrs. pdt).
Furthermore, the fact that "[ v ]irtual universe technology is inherently
computerized" (Reply Br. 2) does not negate the fact that the invention is
directed to the abstract idea of improving the effectiveness of advertising.
Nor does that fact that VU technology is inherently computerized mean that
the claims as a whole amount to significantly more than that abstract idea.
Appellants present insufficient evidence that the acts of building a barrier in
a virtual universe and evaluating location-hits are, from a technological
standpoint, anything other than well-understood, routine, or conventional
activities. To the contrary, the record indicates that the present invention
merely improves the effectiveness of known virtual-universe advertising
techniques through the use of conventional virtual-universe technology.
Restated, the record indicates that the invention is an improved
advertising idea performed with a computer-not an improvement to the
operation of a computer itself.
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