Ex Parte Khan

Patent Trial and Appeal Board

Mar 13, 2017

12904053 (P.T.A.B. Mar. 13, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/904,053 10/13/2010 Mohammed Khan 114514-023UTL 5146
15816 7590
Procopio - SCEA
525 B Street
Suite 2200
San Diego, CA 92101
03/15/2017 EXAMINER
LIM, SENG HENG
ART UNIT PAPER NUMBER
3717
NOTIFICATION DATE DELIVERY MODE
03/15/2017 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):
docketing @ procopio .com
scea_patent_docket@Playstation.Sony.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MOHAMMED KHAN
Appeal 2015-005719
Application 12/904,053
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1—3, 5, 6, 8—10, 12, 13, 15—17, 19, and 20. App. Br. 2.
Claims 4, 7, 11, 14, 18, and 21 have been canceled. App. Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW
GROUND OF REJECTION pursuant to our authority under 37 C.F.R.
§ 41.50(b).
Appeal 2015-005719
Application 12/904,053
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to online games, and more
specifically, to processes for recommending friends based on habits for
playing such online games.” Spec. 1:6—8. Claims 1, 8, and 15 are
independent. Independent claim 1 is illustrative of the claims on appeal and
is reproduced below:
1. A computer-implemented method of recommending
game-playing friends or buddies to a particular online game
player, the method comprising:
receiving and storing on a storage unit at least one of
playing habits, behaviors, and preferences of online game
players;
selecting from the storage unit by a processor a subset of
the online game players matching a set number of criteria of the
at least one of playing habits, behaviors, and preferences that are
similar or complementary to the particular online game player,
wherein selecting a subset of the online game players
includes selecting online game players currently in an online
game with the particular online game player;
recommending the subset of the online game players
selected as matching a set number of criteria as game-playing
friends or buddies,
wherein matching a set number of criteria is determined
by keeping a match count and the match count exceeding a
predetermined number;
generating a social graph showing how the selected subset
of the online game players are related to the particular game
player through a current or existing friends of the particular
online game player; and
presenting the social graph to the particular online game
player,
wherein presenting the social graph increase the likelihood
of the particular online game player accepting the recommended
subset of the online game players as online friends or buddies.
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Appeal 2015-005719
Application 12/904,053
REFERENCES RELIED ON BY THE EXAMINER
Davies
Craine
US 2008/0318655 A1 Dec. 25, 2008
US 8,388,446 B1 Mar. 5, 2013
THE REJECTIONS ON APPEAL
Claims 1—3, 5, 6, 8—10, 12, 13, 15—17, 19, and 20 are rejected under
35 U.S.C. § 103(a) as unpatentable over Davies and Craine.
Independent claim 1 recites a method comprising, inter alia, the steps
of “generating a social graph showing how the selected subset of the online
game players are related to the particular game player through a current or
existing friends of the particular online game player” and “presenting the
social graph to the particular online game player.” App. Br. 13 (Claims
App.). Similarly, independent claim 15 recites a non-transitory tangible
storage medium causing a computer to “generate a social graph showing
how the selected subset of the online game players are related to the
particular online game player through a current or existing friends of the
particular game player” and “present the social graph to the particular online
game player.”1 App. Br. 15—16 (Claims App.).
The Examiner primarily relies on Davies for disclosing the limitations
of claims 1 and 15, except that the Examiner relies on Craine for teaching
1 Independent claim 8 does not include such generating and displaying
limitations. Instead, claim 8 recites, “a social graph generated to show how
the selected subset of the online game players are related to the particular
game player through a current or existing friends of the particular game
player.” Claim 8 is addressed separately infra.
ANALYSIS
The rejection of claims 1—3, 5, 6, 15—17, 19, and 20
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Appeal 2015-005719
Application 12/904,053
the aforementioned generating and presenting a social graph limitations.
Final Act. 3, 4, 7, 8 (citing Craine 2:50—58, 3:10—18, 6:42-44).
Regarding claim 1, Appellant contends that each of the cited passages
from Craine relied on by the Examiner “merely describe the social graph in
terms of the player’s relationship to other players,” but “does not disclose
generating and presenting the social graph to the player.”2 App. Br. 9—10.
The Examiner responds:
When the player chooses to only play with other players within
a first degree of friendship, the list of potential players or social
graph presented to the player inherently generates andpresent[s]
a social graph showing how the selected subset of the online
game players are related to the particular game player through a
current or existing friends of the particular online game player
which is by a first degree of separation of the player's current or
existing friends.
Ans. 3 (emphasis added).
Appellant replies:
Applicant respectfully notes that while the degrees of separation
may be a factor in generating a “social graph,” there is no
suggestion or indication in either Davies or Craine that such
material can be combined to show, i.e., display or “present,”
“how the recommended ‘strangers’ are related to the player
through the current/existing friends.” The suggested
combination of Davies and Craine may lend itself to selection of
buddies in a list; however Davies and Craine either alone or in
combination fail to disclose “generating” or “presenting the
social graph,” as claimed.
Reply Br. 4—5.
2 Appellant also states that independent claim 15 “recite[s] similar
limitations as those recited in claim 1, and should be allowable over the
combination of Davies and Craine as well.” App. Br. 11.
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Appeal 2015-005719
Application 12/904,053
As noted by Appellant, the passages relied on by the Examiner
describe Craine’s social graph in terms of the player’s relationship to other
players. App. Br. 9-10 (discussing Craine 2:50—58, 3:10—18, 6:42-44).
However, as per Appellant, Craine is silent as to presenting the social graph
to the particular game player as recited in claims 1 and 15. App. Br. 9-10.
That is, Craine does not teach, suggest, or illustrate how the selected subset
of online game players is presented to the particular game player in a manner
that shows how they are related as recited. Moreover, the Examiner does not
explain through fact or technical reasoning how Craine “inherently” presents
such a social graph to the game player. Ans. 3. When relying on the theory
of inherency, the Examiner has the initial burden of providing a basis in fact
and/or technical reasoning to reasonably support the determination that the
allegedly inherent characteristic reasonably flows from the teachings of the
applied prior art. See In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986).
Indeed, the fact that a certain result or characteristic may occur or be present
in the prior art is not sufficient to establish the inherency of that result or
characteristic. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). As
indicated supra, Craine is silent on this point.3
3 The Examiner also finds, “the term social graph is broad, it can be
interpreted to be any form of buddy list in a messenger or social site.” Ans.
2. Appellant, on the other hand, responds, “the term ‘graph’ conveys more
than just a ‘list,’ both in the plain meaning of the word and when considered
in view of the Specification.” Reply Br. 4; see also App. Br. 8 (both
referencing Spec. 6:9-7:2). A review of this passage in Appellant’s
Specification buttresses Appellant’s contention that “the ‘social graph’ of
claim 1 cannot reasonably be construed as ‘any form of buddy list,’ as
maintained by the Examiner,” and because “the Examiner has taken an
impermissibly broad interpretation of claim 1 in view [of] Appellant’s
specification.” Reply Br. 3^4.
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Appeal 2015-005719
Application 12/904,053
For the foregoing reasons, the Examiner’s rejection lacks rational
underpinning. Accordingly, and based on the record presented, we do not
sustain the Examiner’s rejection of independent claims 1 and 15 and, by
extension, dependent claims 2, 3, 5, 6, 16, 17, 19, and 20.
New Ground of Rejection
As indicated supra, independent claim 8 concludes with the limitation
“a social graph generated to show how the selected subset of the online
game players are related to the particular game player through a current or
existing friends of the particular game player.” App. Br. 15 (Claims App.).
The claim language “generated to show” is unclear as it is not apparent to
whom or what the graphical relationships are shown. As such, claim 8 is
indefinite for failing to particularly point out and distinctly claim that which
Appellant regards as the invention, i.e., to whom or what the graph is shown
such that the information contained in the graph might be further processed,
acted upon, or available for use.
Accordingly, we enter a New Ground of Rejection of claims 8—10, 12,
and 13 under 35 U.S.C. § 112, second paragraph, for indefiniteness.
Prior Art Rejections of Claims 8—10, 12, and 13
Because claims 8—10, 12, and 13 are indefinite, we are unable to
ascertain just “what the claims do in fact cover.” In re Steele, 305 F.2d 859,
862 (CCPA 1962). As a result, we reverse the prior art rejections of claims
8—10, 12, and 13 as any determination of obviousness would be based on a
speculative assumption as to the meaning of those claims in light of their
indefmiteness. See id. at 863.
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Appeal 2015-005719
Application 12/904,053
DECISION
The Examiner’s prior art rejections of claims 1—3, 5, 6, 8—10, 12, 13,
15—17, 19, and 20 are reversed.
We also enter a New Ground of Rejection with respect to claims 8—
10, 12, and 13 under 35 U.S.C. § 112, second paragraph. This New Ground
of Rejection is entered because it relies on reasons different from and/or
additional to those stated by the Examiner and also to provide Appellant a
fair opportunity to respond. Further, 37 C.F.R. § 41.50(b) provides that, “[a]
new ground of rejection pursuant to this paragraph shall not be considered
final for judicial review.”
Regarding the new ground of rejection, 37 C.F.R. § 41.50(b) also
provides that Appellant must, WITHIN TWO MONTHS, exercise one of the
following options:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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Appeal 2015-005719
Application 12/904,053
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
REVERSED; 37 C.F.R, $ 41.50(b)
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