Kuato Games (UK) Limited

Patent Trials and Appeals Board

Dec 1, 2021

2021001816 (P.T.A.B. Dec. 1, 2021)

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.
14/612,129 02/02/2015 David Miller 070152-5001-US 2306
24341 7590 12/01/2021
Morgan, Lewis & Bockius LLP (PA)
1400 Page Mill Road
Palo Alto, CA 94304-1124
EXAMINER
MYHR, JUSTIN L
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
12/01/2021 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):
padocketingdepartment@morganlewis.com
vskliba@morganlewis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID MILLER, MARK HORNEFF, CHRIS LIU,
SCOTT LAMB, and KRIS TURVEY
Appeal 2021-001816
Application 14/612,129
Technology Center 3700
Before CHARLES N. GREENHUT, ANNETTE R. REIMERS, and
CARL M. DEFRANCO, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4–25 and 27. See Non-Final Act.
1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Kuato Games (UK)
Limited. Appeal Br. 4.
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Application 14/612,129
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CLAIMED SUBJECT MATTER
The claims are directed to systems and methods for dynamically
creating personalized storybooks based on user interactions within a virtual
environment. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method for creating storybooks corresponding to user
interactions with a virtual game environment, comprising:
at a computing device having one or more processors and
memory storing one or more programs configured for execution
by the one or more processors:
in a game play mode of operation:
receiving user input to control actions of a virtual character
within the virtual game environment;
recording, without user input in the game play mode of
operation, a temporal sequence of events from the virtual game
environment, wherein:
each event of the sequence of events represents an
interaction of the virtual character with the virtual game
environment; and
each event includes a respective image and respective text
describing the respective event;
in a book creation mode of operation, performed after
completion of the game play mode:
presenting to the user a sequence of simulated pages
corresponding to the sequence of events, wherein each simulated
page of the sequence of simulated pages includes at least a
portion of the respective recorded image for a respective event
and includes at least a portion of the respective text describing
the respective event;
for at least a subset of the simulated pages, receiving user
input to modify at least a portion of the respective text; and
generating a file that includes the sequence of simulated
pages as modified by the user.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Meyers US 2004/0143852 A1 July 22, 2004
Pearce US 2009/0209335 A1 Aug. 20, 2009
Hope US 2010/0203970 A1 Aug. 12, 2010
Schwarz US 2011/0107217 A1 May 5, 2011
Bucchieri US 2013/0268828 A1 Oct. 10, 2013

REJECTIONS
Claims 1, 2, 4–7, 9–13, 15–20, 22–25, and 27 are rejected under 35
U.S.C. § 103 as being unpatentable over Pearce and Schwarz and Hope.
Non-Final Act. 3.
Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable over
Pearce, Schwarz, and Hope and Bucchieri. Non-Final Act. 16.
Claims 14 and 21 is/are rejected under 35 U.S.C. § 103 as being
unpatentable over Pearce, Schwarz, Hope and Meyers. Final Act. 17.
OPINION
Claims 1, 2, 4–8, 10–12, 14, 16–20, 22–25
Independent claim 1 is representative of this group under 37
C.F.R. § 41.37(c)(1)(iv).
The Examiner correctly determined Pearce to disclose the basic
subject matter claimed albeit creating a blog in place of a storybook. Non-
Final Act. 3–5. The Examiner found Schwarz to demonstrate that electronic
storybooks were well known and had many benefits in the gaming arts. Non-
Final Act. 5. The Examiner found Hope to demonstrate that it was known to
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record gameplay data in a storybook. Non-Final Act. 5. The Examiner’s
findings in this regard are uncontroverted.
In reaching the conclusion of obviousness regarding the subject matter
of claim 1 the Examiner stated:
it would have been obvious to one of ordinary skill in the art at
the time of filing to have combined the teachings of Pearce with
Schwarz and Hope, since Pearce is modifiable to use a plurality
of formats to present the user character's story including the well-
known format of a book comprising pages, as shown by Schwarz,
which is a familiar and friendly method of presenting a story
including a story for games for older audiences, as shown by
Hope, in order to record progress and achievements for later
reading.
Non-Final Act. 5.
Appellant takes issue with what Appellant perceives to be an
inappropriate standard on which the Examiner based the conclusion of
obviousness:
Whether or not Pearce is theoretically “modifiable” is not
relevant to § 103 analysis because the Examiner has not
identified any portion of any of the references that teaches
actually modifying Pearce. Indeed, if “modifiable” were the
standard for § 103 analysis, there would be very few patentable
inventions.
Appeal Br. 15.
Although a reference being “modifiable” does not, without more,
necessarily demonstrate obviousness, there is nothing wrong with the
Examiner’s comment to that effect so long as the Examiner’s explanation is
coupled with a persuasive reason for making the proposed combination
supported by a rational underpinning. It is recognized that, as stated in KSR
Int'l Co. v. Teleflex, Inc. (550 U.S. 398, 418 (2007)), “a patent composed of
several elements is not proved obvious merely by demonstrating that each of
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its elements was, independently, known in the prior art”. Rather, the decision
maker must also show “whether there was an apparent reason to combine the
known elements in the fashion claimed.” Id. (citing In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)). In the case before us, the Examiner has clearly
done so.
Appellant’s arguments focus entirely on the Examiner’s perhaps
imprecise word choice of “modifiable” without providing any arguments
relating to the substance of the reasons why the Examiner actually concluded
that combining the prior art teachings would have been obvious. In
particular, as the Examiner reiterates in the Answer, the Examiner relied on
Hope and Hope’s stated benefits of recording gameplay in storybook form as
the articulated motivation for combining the teachings of Pearce and
Schwarz:
see Hope regarding the use of a book, comic book (which would
be a plurality of pages with pictures and text), or an ebook
(paragraph [0008] of Hope) in order to allow for the presentation
of a story of a player's play of the game (paragraph [0006] of
Hope) in order to allow for easier review. See “However, after
completion of the videogame, the user's interaction with the
game (and any story presented in the game) is complete. Further,
the user may be unable to directly access the saved game file to
view any data recorded throughout the game. Even if the user is
able to access the saved game file, the recorded data may be
difficult to relate to the game and/or the story, and may be
recorded in a format unrecognizable to the user.” paragraph
[0006] of Hope as showing that there is a benefit known in the
art to present a playback in a story mode, such as a book or comic
book, in order to allow for a format that is more easy to relate or
be recognized by a user. Specifically that audiences are more
familiar with stories presented in a book or comic book format
instead of merely as saved data or list of accomplishments.
Therefore examiner contends that the prior art both shows that
story books are a friendly means to present a story, see Schwarz,
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and that there is a motivation in the art to present previous game
play in a story mode, such as a book or comic book, see Hope, in
order to provide a more easily recognizable and relatable means
for a user reviewing the prior game play. Therefore examiner
maintains that the motivation is proper . . .
Ans. 4–5.
To this detailed articulation of the reasons supporting the Examiner’s
proposed combination, Appellant responds only to state:
“Modifiable” is not the standard for obviousness rejections, and
“modifiable” is the Examiner’s only argument. For this reason
alone, all of the pending claims are patentable.
Reply Br. 8.
Modifiable may not be the ultimate standard for determining
obviousness, but it is clear on the record before us that the Examiner’s
reasoning reproduced above goes far beyond that mere capacity and the
substance of the Examiner’s position with regard to the reasons it would
have been obvious to combine the reference teachings stands uncontroverted
on the record before us. As the stated motivation to combine reference
teachings is extracted directly from Hope, we see nothing gleaned only
through Appellant’s disclosure. Appeal Br. 16. As analogous art does not
appear to be argued by Appellant, it is unclear why the case law cited
regarding the particular problem prong of the analogous art test (Appeal Br.
16) is relevant here.
For the forgoing reasons we sustain the Examiner’s rejection of claim
1 and the rejections of those claims argued therewith.

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Claim 9
Appellant argues that Schwarz does not teach or disclose the recited
“simulated page [that] includes two or more of the plurality of images.”
Appeal Br. 17. The Examiner points out that Pearce (Figure 9), not Schwarz,
was cited for this subject matter. Ans. 6; Non-Final Act. 7. The Examiner
additionally characterizes the number of pictures per page as an “obvious
design choice.” Ans. 6.
Appellant responds only to this latter position of the Examiner
indicating that the number of pictures per page involves complex data
storage and user interface changes. Reply Br. 9. If this is the case, we think it
incumbent upon Appellant to point out where in the Specification Appellant
contributed to the public knowledge by solving such problems. In contrast,
in this respect, the Specification only appears to state: “[i]n some
implementations, a first event has a plurality of images and the
corresponding simulated page includes (548) two or more of the multiple
images 262” and provides a block diagram with no more detail than that.
Spec. para. 76; Fig. 5C. As patent disclosures are written for those skilled in
the art, there is nothing wrong with omitting that which is known. However,
it is entirely inconsistent with the basic quid pro quo of the patent grant to on
the one hand assert the claimed subject matter is very complex and difficult
to achieve while at the same time failing to provide any disclosure as to how
one arrives at that subject matter. The absence of disclosure with regard to
this subject matter here evinces one of two things: either the Examiner is
correct that this amounts to a mere design choice or Appellant’s disclosure is
inadequate.
In any case, Appellant never provides any response to the Examiner’s
repeated reliance on Figure 9 of Pearce, which clearly illustrates two images
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on the same page. If there were technical challenges associated with doing
this, it would appear Pearce overcame them. We are not apprised of any
technical challenges or distinctions to be made by the relocation of said
images to the page of an electronic storybook as opposed to a blog. Again,
the Examiner’s position here stands uncontroverted.

Claim 13
In the Non-Final Action, the Examiner relied on a combination of
references to meet the requirements of Claim 13. According to the
Examiner, Pearce provides two distinct types of text with 164 illustrated in
Figure 9 being the “text describing the respective event” and title text 162
being a “caption” distinct therefrom. Final Act. 10–11. Appellant appears to
acknowledge the Examiner’s findings in this regard (Reply Br. 9) but does
not appear to rebut them.
It is recognized that, according to Appellant’s Specification, in
addition to a “caption” associated with the event (Spec. para. 48), there may
be a “caption” associated specifically with an image (Spec. paras. 34, 66).
However, no such requirement appears in claim 13. To the extent Appellant
is implicitly arguing otherwise, Appellant is reminded that limitations not
appearing in the claims cannot be relied upon for patentability (In re Self,
671 F.2d 1344, 1348 (CCPA 1982)) and limitations from the Specification
are not imported into the claim absent a clear definition or disclaimer (In re
American Academy of Science Tech Center, 367 F.3d 1359, 1369 (Fed. Cir.
2004)).
The Examiner points out that Pearce also contains a general disclosure
that text can be both “system-generated” (Non-Final Act. 4, 10 (citing
Pearce paras. 5–6, 66 (“automatic text”)) and editable by receiving a “user
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input” (Id. (“user editing”; “edit screen”); Fig. 8). Although the portions of
Pearce cited by the Examiner regarding automatic editable text do not
expressly indicate that the two textual examples in the implementation
depicted in Figure 9 of Pearce cited by the Examiner are automatically
generated and editable, this seems implicit, or at least reasonably suggested
by, reading cited paragraphs 66 and 76 in combination with, and in the
context of, the description associated with Figure 8 of Pearce. The Examiner
further cites to Hope because Hope provides a much more detailed
description along with several examples of how text may be automatically
generated and discusses the benefits of doing so. Final Act. 6–7 (citing Hope
paras. 52–54, 56, 58, and 68–71).
Appellant’s argument does not address the title text regarded by the
Examiner as the distinct caption for purposes of claim 13. Appellant’s
argument regarding Hope merely points out that Hope lacks subject matter
Pearce was cited for. Appeal Br. 18. Appellant argues “[n]one of the cited
portions of the references teaches or suggests a system-generated caption
that is subsequently modified by a user.” Reply Br. 9. However, this
argument does not address the Examiner’s proposed combination as
described above. Unlike anticipation, a conclusion of obviousness does not
require the claimed invention, or some subcombination thereof, to be
expressly suggested in any one or all of the references: the question is
whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of the references.
See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Again, the Examiner’s
position here is essentially uncontroverted.

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Claim 27
The entirety of Appellant’s argument with regard to claim 27 is
reproduced below:
the Examiner agreed that “Pearce does not specifically teach
virtual objects collected by the virtual character.” See Office
Action at page 15. This feature is also not taught by Hope. Hope.
Instead of “virtual objects collected by the virtual character,” as
recited in the claims, Hope discloses an “inventory of the
character (e.g., possessions such as items, weapons, etc.).”
Appeal Br. 19.
The precise distinction Appellant perceives between inventory and
collected objects is not apparent from Appellant’s skeletal argument.
Appellant’s argument in the Reply Brief does not provide any further
clarification in this regard. Reply Br. 10.
To the extent Appellant is attempting to draw a distinction because
items in the inventory of a virtual character may have always been
associated with that character instead of being collected, both Hope any
Pearce make it expressly clear that collected items are contemplated in each
case. Paragraph 44 of Hope describes “inventory” as, for example
“possessions such as items” and a few paragraphs later “items” are described
as things that may be found in the videogame (Hope Para. 50). Ans. 7.
Further, paragraph 33 of Pearce discusses “accumulated goods.” Ans. 7. It is
well-settled that a conclusion of obviousness with regard to the claimed
subject matter does not require evidence employing the claim terminology
ipsissimis verbis. In re Neugebauer, 330 F. 2d 353, 356 n. 4 (CCPA 1964)
(“In the construction of words, not the mere words, but the thing and the
meaning, are to be inquired after.”); In re Skoner, 517 F.2d 947, 950 (CCPA
1975) (“Any other result would permit the allowance of claims drawn to
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unpatentable subject matter merely through the employment of descriptive
language not chosen by the prior art.”). We see no reason why the cited
disclosure fails to meet the claim language.
Claim 21
The Examiner’s position with regard to claim 21 is that Hope records
all the data necessary to recreate a path taken by a virtual character. Final
Act. 19; Ans. 8 (quoting Hope para. 46). This includes recording path
choices within a two or three dimensional virtual world and any data related
to those choices and storing the data in chronological order. Hope para. 46.
We are not apprised of anything more that is necessary to be able to recreate
a path on a map. The Examiner recognizes, however, that although Hope
records data sufficient to do it, Hope does not actually disclose recreating the
path on a map when generating the game’s story and instead cites to Meyers
to demonstrate that it was known in the art to depict a game character in a
virtual world on a map of that world. Final Act. 8 (citing Meyers para. 3).
Appellant’s argument that neither Meyers nor Hope shows a path on a
map (Appeal Br. 19–20) amounts to an attack on the references individually
as opposed to their combined teachings. Again, unlike anticipation, a
conclusion of obviousness does not require the claimed invention, or some
subcombination thereof, to be expressly suggested in any one or all of the
references: the question is whether the claimed subject matter would have
been obvious to those of ordinary skill in the art in light of the combined
teachings of the references. See In re Keller, supra. We agree with the
Examiner’s uncontroverted reasoning and conclusion that it would have
been obvious to display the collected path data of Hope on a map as taught
by Meyers to further aid in documenting the gameplay for later enjoyment
(Final Act. 19).
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CONCLUSION
The Examiner’s rejections are AFFIRMED.

DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–7, 9–
13, 15–20,
22–25, 27
103 Pearce, Schwarz,
Hope
1, 2, 4–7, 9–
13, 15–20,
22–25, 27

8 103 Pearce, Schwarz,
Hope, Bucchieri
8
14, 21 103 Pearce, Schwarz,
Hope, Meyers
14, 21
Overall
Outcome
1, 2, 4–25,
27

RESPONSE
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)(1)(iv).
AFFIRMED