Ex Parte Murdock et al

Patent Trial and Appeal Board

Nov 30, 2018

14509314 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/509,314 10/08/2014
63649 7590 12/04/2018
DISNEY ENTERPRISES, INC.
C/0 FARJAMI & FARJAMI LLP
26522 LA ALAMEDA A VENUE, SUITE 360
MISSION VIEJO, CA 92691
FIRST NAMED INVENTOR
Malcolm Murdock
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.
0260404 4067
EXAMINER
AUGUSTINE, NICHOLAS
ART UNIT PAPER NUMBER
2141
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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):
docketing@farj ami. com
farjamidocketing@yahoo.com
ffarj ami @farj ami. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MALCOLM MURDOCK, KIMBERLY PORTER,
RICHARD GINTER, MOHAMMAD POSW AL, and MICHELE WELLS 1
Appeal2018-004874
Application 14/509,314
Technology Center 2100
Before BRADLEY W. BAUMEISTER, JASON V. MORGAN, and
JEREMY J. CURCURI, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1, 2, 4--12, and 14--20. Claims 3 and 13 are canceled.
Appeal Br. 16, 19. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant is the applicant and real party in interest, Disney Enterprises,
Inc. Appeal Br. 2.
Appeal2018-004874
Application 14/509,314
Invention
The Specification discloses the use of beacons for location-based
mobile storytelling. Abstract.
Illustrative Claim (key limitations emphasized)
1. A mobile device comprising:
a memory storing a storytelling software application, the storytelling
software application configured to generate a story that includes a
plurality of segments, each segment of the plurality of segments of the
story being associated with one of a plurality of beacons; and
a processor configured to execute the storytelling software application
to:
receive a first message transmitted from a first beacon of the
plurality of beacons when the mobile device being carried by a
user is at a first location;
determine a first beacon identity of the first beacon using the
first message;
generate a first segment of the plurality of segments of the story
based on the first beacon identity, the first segment of the story
being associated with the first beacon;
play the first segment of the story for the user on the mobile
device;
receive, after playing the first segment of the plurality of
segments of the story, a second message transmitted from a
second beacon of the plurality of beacons when the mobile
device being carried by a user is at a second location;
determine a second beacon identity of the second beacon using
the second message;
generate a second segment of the plurality of segments of the
story based on the second beacon identity, the second segment
of the story being associated with the second beacon; and
play the second segment of the story for the user on the mobile
device.
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Application 14/509,314
Rejection
The Examiner rejects claims 1, 2, 4--12, and 14--20 under
35 U.S.C. § I02(a)(l) as being anticipated by Altieri (US 2004/0193441 Al;
published Sept. 30, 2004). Final Act. 2-6.
FINDINGS OF FACT
Altieri discloses a warehouse having rooms 601 with projection
systems 602 and sensors connected to embedded controllers 603 located in
the walls and floors. Altieri ,r 273.
The sensors are designed to transmit information to the main
system following the user's . . . movement through the rooms.
As the user ... moves through the rooms, the program makes the
walls and floors change with the thematic application. In effect,
the user becomes the avatar and can participate in a unique and
real-world way, in the thematic application.
Id. Altieri discloses that "[t]he sensors are controllers containing the
necessary chipsets and software to monitor movement, and they track the
user's steps, sending the information to the QIE [ quantum imaging
environment] for processing." Id. ,r 286. That is, as the avatar or user "is
moving around the streets and stores in the holographic environment, an
information request is made by the sensor controllers ... to the main
computer system ... which transmits the data to the Business logic via the
WWW." Id. ,r 291. "The data/information is sent back to the client system"
(id.), where a "client may be a PC, a mobile terminal, such as a mobile
computing device, a mobile phone, or a mobile data organizer (PDA)" (id.
,r 107).
Altieri further discloses providing wirelessly connected devices such
as personal computers or personal digital assistants "in the warehouse so that
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Application 14/509,314
the users may connect to the internet or other applications while they walk
through the digital or thematic warehouse. Id. ,r 274.
EXAMINER'S DETERMINATIONS
In rejecting claim 1 for lack of novelty, the Examiner finds that
Altieri's transmissions from sensor to QIEs for processing disclose receiving
messages transmitted from beacons and determining beacon identities using
the messages. Final Act. 3 (citing Altieri ,r,r 273-74, 286,289,291, Figs. 2,
3, 6, and 7); see also Final Act. 7-10. The Examiner alternatively finds
Altieri's QIEs are themselves beacons, and that their transmissions to
devices corresponds to the claimed receiving and determining recitations.
Ans. 6.
The Examiner finds that by providing a user with a wirelessly
connected device such as a personal computer, Altieri discloses playing
segments of a story for the user on a mobile device. Final Act. 3 ( citing
Altieri ,r,r 107, 275).
APPELLANT'S CONTENTIONS
Appellant contends the Examiner erred because the personal
computers provided to users in Altieri merely connect the users "to the
internet or other applications while [the users] walk through the digital or
thematic warehouse." Appeal Br. 11 (citing Altieri ,r 274). Appellant
argues there is "no disclosure or teaching in Altieri that a personal
computer receive(sl a first message transmitted from a first beacon of
the plurality of beacons when the [personal computer] being carried by
a user is at a first location." Appeal Br. 11 (alterations in original).
Appellant also contends "Altieri merely discloses that controllers 603
are programed to communicate with the main computer system 604, and that
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Application 14/509,314
the "program makes the walls and floors change with the thematic
application." Id. Thus, Appellant argues "[t]here is no disclosure in Altieri
that the user's personal computer generates the changes to the floor or the
walls" or "that the user's personal computer plays a story segment or a
change is made to the display of the user's personal computer." Id. at 12.
Appellant also argues that Altieri' s disclosure of a quantum imaging
environment is insufficient to show anticipation because the "QIE is merely
a layer or a module of a virtual platform that interprets content." Reply Br. 3
( citing Altieri Fig. 1 ).
ANALYSIS
Appellant's arguments are persuasive because the Examiner does not
show that Altieri plays segments of a story on a wireless or mobile device,
such as a personal computer, provided to the user in the cited embodiment.
As Appellant notes, Altieri merely discloses "personal computers (PCs,
PDA's or some equivalent device) are provided in the warehouse so that the
users may connect to the internet or other applications while they walk
through the digital or thematic warehouse." Altieri ,r 274 ( emphasis added);
see also Appeal Br. 11.
The Examiner likewise does not show that these personal computers
play segments of a story as part of a storytelling software application that
also receives messages from beacons and determines identities of the
beacons in the manner recited. Rather, the program of Altieri's main system
"makes the walls and floors change" as the user moves through the rooms.
Altieri ,r 273.
Moreover, the Examiner does not take the position that Alteieri' s
"client system"-which receives data or information (id. ,r 291 }-is a
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Application 14/509,314
mobile device that receives such information from first and second beacons
to play first and second segments of a story in the manner recited. Rather,
the Examiner merely finds that in Alteiri "the user/avatar has to move
through ... physically place[d] Zones to experience a defined segment."
Ans. 9 ( citing Alteiri ,r 291 ); see also Final Act. 10. The claimed invention,
however, is not directed merely to a user experiencing different segments
based on movement through a physical space. Rather, the claimed invention
is directed to a single device that plays-rather than a plurality of devices
that play-multiple segments of a story as the user carries the device from
one location to another.
Furthermore, rather than rejecting the claims under 35 U.S.C. § 103
and providing appropriate analysis, the Examiner merely finds that Altieri
anticipates the claimed invention. Final Act. 2---6. Therefore, we are
constrained by the record and agree with Appellant that the Examiner's
findings do not show that Altieri anticipates claim 1.
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 102(a)(l)
rejection of claim 1, and claims 2, 4--12, and 14--20, which contain similar
recitations.
DECISION
We reverse the Examiner's decision rejecting claims 1, 2, 4--12, and
14--20.
REVERSED
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