Nant Holdings IP, LLC

Patent Trials and Appeals Board

Aug 24, 2020

2019005280 (P.T.A.B. Aug. 24, 2020)

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.
15/843,918 12/15/2017 Patrick Soon-Shiong 10077-2003802 3943
157772 7590 08/24/2020
Mauriel Kapouytian Woods LLP
15 W. 26TH STREET
Floor 7
New York, NY 10010
EXAMINER
BOOK, PHYLLIS A
ART UNIT PAPER NUMBER
2454
NOTIFICATION DATE DELIVERY MODE
08/24/2020 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):
docket@mkwllp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________ 

Ex parte PATRICK SOON-SHIONG
________________

Appeal 2019-005280
Application 15/843,918
Technology Center 2400
________________

Before DENISE M. POTHIER, JASON J. CHUNG, and
STEPHEN E. BELISLE, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 23–48.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
INVENTION
The invention relates to collaboration system technologies. Spec. ¶ 2.
Claim 23 is illustrative of the invention and is reproduced below:
23. A collaboration system, comprising:
a collaboration database storing a plurality of
collaboration interface components; and

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Nant Holdings IP, LLC is the
real party in interest. Appeal Br. 2.
2 Claims 1–22 are cancelled. Appeal Br. 17.
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at least one processor configured to control an object
recognition engine communicatively coupled with the
collaboration database, and the object recognition engine being
configured to:
receive sensor data related to a game object via an input
interface;
identify a set of object characteristics from the sensor data;
select the set of collaboration interface components having
the selection criteria satisfied by the object characteristics;
instantiate a collaboration interface comprising a game
instantiated based on the game object from the set of components
on at least a first electronic device; and
configure the first electronic device to generate a first
collaboration command via the instantiated collaboration
interface.
Appeal Br. 17 (Claims Appendix) (emphasis added).

REJECTIONS3
The Examiner rejects claims 23–32, 36, and 40–47 under 35 U.S.C.
§ 103 as being unpatentable over the combination of Rodriguez (US
2011/0134204 A1; published June 9, 2011) and Thomas (US 2013/0079128
A1; published Mar. 28, 2013). Final Act. 2–25.

3 In the event of further prosecution, the Examiner should consider whether
the italicized text in claim 23 above (and similarly recited claims 45–48)
satisfies the definiteness requirement set forth in 35 U.S.C. § 112(b). For
example, there is no antecedence for “the set of components.” Also, claim
23 recites “instantiate a collaboration interface comprising a game
instantiated based on the game object” (emphases added). But because an
instantiation of “a collaboration interface” first occurs, and that is followed
by “a game” (rather than “a collaboration interface”) that was instantiated, it
is unclear whether “a collaboration interface” is synonymous with “a game”
or distinct. Although the Board is authorized to reject claims under 37
C.F.R. § 41.50(b), no inference should be drawn when the Board elects not
to do so. See Manual of Patent Examining Procedure (“MPEP”) § 1213.02
(9th Ed., Rev. 10.2019, June 2020).
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Application 15/843,918

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The Examiner rejects claims 33 and 34 under 35 U.S.C. § 103 as
being unpatentable over the combination of Rodriguez, Thomas, and
Chandrasekaran (US 2010/0169269 A1; published July 1, 2010). Final Act.
25–27.
The Examiner rejects claims 35 and 39 under 35 U.S.C. § 103 as
being unpatentable over the combination of Rodriguez, Thomas, and Arun
(US 2007/0124374 A1; published May 31, 2007). Final Act. 27–29.
The Examiner rejects claim 37 under 35 U.S.C. § 103 as being
unpatentable over the combination of Rodriguez, Thomas, and Fernandez
(US 2004/0260669 A1; published Dec. 23, 2004). Final Act. 30.
The Examiner rejects claim 38 under 35 U.S.C. § 103 as being
unpatentable over the combination of Rodriguez, Thomas, and Mityagin (US
2009/0054123 A1; published Feb. 26, 2009). Final Act. 30–31.
The Examiner rejects claim 48 under 35 U.S.C. § 103 as being
unpatentable over the combination of Rodriguez, Stachniak (US
2013/0326376 A1; published Dec. 5, 2013), and Thomas. Final Act. 31–36.

ANALYSIS
A. Claims 23 and 25–48
The Examiner finds Rodriguez teaches all the limitations recited in
claim 23 except “a game instantiated based on the game object from the set
of components on at least a first electronic device.” Final Act. 2–6; Ans. 4–
7. The Examiner finds Thomas teaches injecting a created game object into
an ongoing computer game, which the Examiner maps to the limitation “a
game instantiated based on the game object from the set of components on at
least a first electronic device” recited in claim 23 (and similarly recited
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claims 45–48). Final Act. 6 (citing Thomas ¶ 88); Ans. 7. The Examiner
concludes a person having ordinary skill in the art at the time of the
invention (hereinafter “PHOSITA”) would have combined Rodriguez’s
collaboration system and Thomas’s injection of created game objects to
increase the functionality of Rodriguez’s collaboration system beyond group
collaboration to the game players within a gaming industry. Final Act. 6;
Ans. 7–9.
Appellant argues Thomas fails to teach “a game instantiated based on
the game object from the set of components on at least a first electronic
device” because Thomas’s game is ongoing. Appeal Br. 7–10 (citing
Thomas ¶ 88; Spec. ¶ 88); Reply Br. 2–4. Appellant argues Thomas teaches
away from the claimed invention because Thomas’s game is ongoing and,
therefore, a PHOSITA would be led in a direction divergent from
Appellant’s path taken. Appeal Br. 10–11. Appellant argues the Examiner
fails to provide adequate motivation to combine because the Examiner’s
motivation is generic (rather than a particular claimed manner to reach the
claimed invention). Id. at 11–14 (citing MPEP § 2141(I)(C); Reply Br. 5–6.
At the outset, Appellant is construing Thomas too narrowly. Thomas
¶ 88. Although paragraph 88 of Thomas uses the word “ongoing,” the
moment a created object is inserted into an ongoing game, there is a new
interface/game (i.e., the old interface/game plus the newly created game
object). Id. Thus, Thomas teaches injecting a created game object into an
ongoing computer game, which teaches the limitation “a game instantiated
based on the game object from the set of components on at least a first
electronic device” recited in claim 23. Id. (cited at Final Act. 6; Ans. 7).
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The independent claims do not contain language that precludes this
reasonable interpretation of Thomas.
We also find Appellant’s teaching away argument unpersuasive.
Appeal Br. 10–11. The Federal Circuit has held that “[a] reference may be
said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.” In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)
(quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). In this case, as
discussed in the preceding paragraph, Thomas does not teach away because
it reasonably teaches the limitation “a game instantiated based on the game
object from the set of components on at least a first electronic device”
recited in claim 23 and does not lead an artisan in a divergent direction from
the claimed invention. Final Act. 6; Ans. 7.
We also find unpersuasive Appellant’s argument that the Examiner
fails to provide adequate motivation to combine because the Examiner’s
motivation is generic. Appeal Br. 11–14 (citing MPEP § 2141(I)(C)); Reply
Br. 5–6. We agree with the Examiner’s rationale that a PHOSITA would
have recognized that combining Rodriguez’s collaboration system and
Thomas’s injection of created game objects would have increased the
functionality of Rodriguez’s collaboration system beyond group
collaboration to the game players within a gaming industry. Final Act. 6;
Ans. 7–9. We, therefore, conclude the Examiner has set forth sufficient
“articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (quoting Kahn, 441 F.3d at 988).
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Accordingly, we sustain the Examiner’s rejections of:
(1) independent claims 23 and 45–48; and (2) dependent claims 25–44 under
35 U.S.C. § 103.
B. Claim 24
The Examiner finds Thomas teaches instantiation. Final Act. 6 (citing
Thomas ¶ 88); Ans. 4–7, 10. The Examiner finds Rodriguez teaches
displaying team members co-located at multiple sites, which the Examiner
maps to the limitation “the construction engine is configured to construct a
plurality of collaboration interfaces to be instantiated.” Final Act. 7 (citing
Rodriguez ¶¶ 25–26); Ans. 9–10.
Appellant argues Rodriguez fails to teach “the construction engine is
configured to construct a plurality of collaboration interfaces to be
instantiated” as claim 24 recites because Rodriguez’s displaying team
members co-located at multiple sites has nothing to do with instantiation.
Appeal Br. 14–15; Reply Br. 6–8.
Regarding Appellant’s first argument, one cannot show
nonobviousness “by attacking references individually” where the rejections
are based on combinations of references. In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA
1981)). In this case, the Examiner relies on Thomas, when combined with
Rodriguez, to teach instantiation. Final Act. 2–6 (citing Thomas ¶ 88); Ans.
4–7, 10. The Examiner also relies on Rodriguez to teach displaying team
members co-located at multiple sites (i.e., displaying each team member at
least suggests instantiation), which teaches or suggests the limitation “the
construction engine is configured to construct a plurality of collaboration
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interfaces to be instantiated,” when combined with Thomas. See Final Act.
6–7 (citing Rodriguez ¶¶ 25–26); Ans. 9–10.
Moreover, Thomas teaches injecting a created game object into an
ongoing computer game (i.e., after the created game object is injected into
the computer game, each of the subsequent picture frames of the game play
is a new instantiated interface), which at least suggests the limitation “the
construction engine is configured to construct a plurality of collaboration
interfaces to be instantiated” recited in claim 23 (and similarly recited claims
45–48). Final Act. 6 (citing Thomas ¶ 88); Ans. 7.
Accordingly, we sustain the Examiner’s rejection of claim 24 under
35 U.S.C. § 103.
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv) (2018).

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CONCLUSION

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
23–32,
36, 40–47
103 Rodriguez,
Thomas
23–32,
36, 40–47

33, 34 103 Rodriguez,
Thomas,
Chandrasekaran
33, 34
35, 39 103 Rodriguez,
Thomas, Arun
35, 39
37 103 Rodriguez,
Thomas,
Fernandez
37
38 103 Rodriguez,
Thomas, Mityagin
38
48 103 Rodriguez,
Stachniak, Thomas
48
Overall
Outcome
23–48