Ex Parte Thursfield et al

Patent Trial and Appeal Board

Mar 27, 2013

10145640 (P.T.A.B. Mar. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PAUL PHILIP THURSFIELD
and LUCAS JACOBUS FRANCISCUS GEURTS
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Appeal 2011-000587
Application 10/145,640
Technology Center 3700
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Before NEAL E. ABRAMS, BARRY L. GROSSMAN,
and BART A. GERSTENBLITH, Administrative Patent Judges.

ABRAMS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Paul Philip Thursfield et al. (Appellants) seek our review under 35
U.S.C. § 134 from the Examiner’s decision rejecting claims 1-19. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
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THE INVENTION
The claimed invention is directed to a presentation device, a method,
and an input device for enabling a user to interact with the content being
presented on the presentation device, such as a virtual story.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. An interactive system, comprising:
a presentation device for presenting interactive content,
an input device for controlling a presentation parameter
of a content object of the interactive content in accordance with
a known behavior description of said content object,
at least one token representing a content object, the at
least one token storing one of an identification and a full
description of the content object in a digital memory of the
token, said full description comprising at least one of visual and
audio appearance of said content object and a behavior of said
content object responsive to events associated with said content
object,
association means for associating said token with said
input device, and
means for selecting the content object represented by the
token as the content object to be controlled by the input device
in response to said association and transferring said full
description of said content object to said presentation device,
which is adapted to generate a presentation of said content
object in one of a plurality of layers, wherein content objects in
a same one of said plurality of layers interact with each other
and content objects in different layers overlap, wherein the
presentation of said content object is based on whether said
content object is compatible with a current presentation,
wherein if said content object is not compatible with the current
presentation, the presentation device changes the current
presentation to a presentation with which said content object is
compatible.

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THE REJECTION
Claims 1-19 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
OPINION
The sole issue presented to us is the Examiner’s rejection of the
claims as failing to comply with the written description requirement of the
first paragraph of 35 U.S.C. § 112.
Simply stated, Appellants’ invention allows a user to interact with a
current presentation being presented through a presentation device by
introducing into the current presentation a content object that comprises
another layer to overlap with the current presentation. According to the
language in all three independent claims,
wherein the presentation of said content object is based on
whether said content object is compatible with a current
presentation, wherein if said content object is not compatible
with the current presentation, the presentation device changes
the current presentation to a presentation with which said
content object is compatible.
As stated in the rejection, the Examiner “cannot identify” where the
Specification “explicitly teaches ‘the presentation of said content object is
based on whether said content object is compatible with a current
presentation,’” and therefore the claims fail to comply with the written
description requirement of 35 U.S.C. § 112, first paragraph. Ans. 3. The
Examiner further explains
[t]here is no disclosure suggesting that the presentation of said
content object is based on whether said content object is
compatible with a current presentation, wherein if said content
object is not compatible with the current presentation, the
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presentation device changes the current presentation to a
presentation with which said content object is compatible.

Ans. 5.
Appellants argue that support for the language in issue is found in the
Specification on page 4, line 29 to page 5, line 1 (“paragraph [0018]”),
which states
[t]he processor 100 can then check whether the identified object
is already presented on the presentation device 102, showing
autonomous behavior. If not, the identified object is retrieved
from the storage 101 and presented on the presentation device
102. Such presentation need not be immediate, but may be
delayed due to the specific character of the content object. For
example, if the story world currently represents a daytime
image that includes the sun in the sky, and the user is to insert a
moon object, the presentation may first cause the sun to set and
the sky to become dark, before the moon becomes active.
Br. 5-6. The common definition of “compatible” is “capable of existing
together in harmony.”1 With reference to the example set forth in the
Specification, Appellants explain that if the user introduces a “moon object”
into a “daytime image” presentation, since the “moon object” is not
“compatible” with the “daytime image” the presentation device changes the
current presentation by causing the sun to set and the sky to become dark,
thus creating a presentation with which the “moon object” is “compatible.”
Br. 6. The conclusion then advanced by Appellants is “[o]ne of ordinary
skill in the art would have no problem understanding that the description and
example in the Specification at least at paragraph [0018] provide a written
description of the claim recitation ‘the presentation of said content object is

1 See, e.g., Merriam-Webster.com.
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based on whether said contact object is compatible with a current
presentation,’” and therefore the rejection is in error. Br. 6.
Although the term “compatible” is not present in Appellants’
Specification, we are persuaded by Appellants’ argument that the cited
portion of the Specification provides descriptive support for the subject
matter in independent claims 1, 10, and 13 which the Examiner cited in the
rejection. This being the case, the rejection is not sustained.
DECISION
The rejection of claims 1-19 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement, is reversed.

REVERSED

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