Nvidia Corporation

Patent Trials and Appeals Board

Jan 3, 2020

15166635 - (D) (P.T.A.B. Jan. 3, 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.
15/166,635 05/27/2016 Bojan Vukojevic 15-SC-0175-US02 8673
102469 7590 01/03/2020
PARKER JUSTISS, P.C./Nvidia
14241 DALLAS PARKWAY
SUITE 620
DALLAS, TX 75254
EXAMINER
GARNER, WERNER G
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
01/03/2020 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@pj-iplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte BOJAN VUKOJEVIC and FRANCK DIARD
__________

Appeal 2019-003338
Application 15/166,635
Technology Center 3700
__________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
LISA M. GUIJT, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 4, 8, 10, 11, and 15–17.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as NVIDIA
Corporation. Appeal Br. 2.
2 Claims 2 and 9 have been canceled. Appeal Br. 4. Claims 5–7, 12–14,
and 18–20 are objected to for depending from a rejected claim and indicated
as being allowable if rewritten in independent form to include all the
limitations of the base claim and any intervening claims. Ans. 11.
Appeal 2019-003338
Application 15/166,635

2
STATEMENT OF THE CASE
Claims 1, 8, and 15 are the independent claims on appeal. Claim 1,
reproduced below with disputed limitations italicized for emphasis, is
exemplary of the subject matter on appeal.
1. A gaming manager, comprising:
a memory; and
a processor configured to
start a video game running remotely, wherein the video
game includes a static video portion and a user interactive video
portion, and
receive the static video portion for local display while the
user interactive video portion is being initialized remotely for
subsequent local game play, wherein the static video portion is
provided from a different source than the user interactive video
portion.

THE REJECTION3
Claims 1, 3, 4, 8, 10, 11, and 15–17 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Chu (US 2004/0148221 A1; published July 29,
2004) and Kadikario (US 2008/0194332 A1; published Aug. 14, 2008).

ANALYSIS
Appellant does not offer arguments in favor of claims 3, 4, 8, 10, 11,
and 15–17 separate from those presented for independent claim 1.

3 The objection of claim 15 for informalities, the rejection of claims 1–20 as
being indefinite, and the rejection of claims 1, 3–8, and 10–20 as being
directed to patent-ineligible subject matter (see Final Act. 2–12) have been
withdrawn. See Advisory Act. dated July 24, 2018; Ans. 11; Appeal Br. 5.
Appeal 2019-003338
Application 15/166,635

3
See Appeal Br. 28–32. We select claim 1 as the representative claim, and
claims 3, 4, 8, 10, 11, and 15–17 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Regarding independent claim 1, the Examiner finds, inter alia, that
Chu discloses a gaming manager comprising a processor configured to start
a video game in which the video game includes a static video portion (i.e.,
“viewing the advertisement”) and a user interactive video portion (i.e., “the
program 185 is a game playing program”). Final Act. 12–13 (citing Chu
¶¶ 9, 38, 40). The Examiner also finds that Chu discloses the processor is
configured to receive the static video portion for local display while the user
interactive video portion is being initialized remotely for subsequent local
game play. Id. at 13 (citing Chu ¶¶ 8, 9, 49). The Examiner acknowledges
that Chu does not disclose that the video game runs remotely. Id. However,
the Examiner finds that Kadikario discloses a video game that runs remotely.
Id. at 14 (citing Kadikario ¶ 45, Fig. 1). The Examiner concludes that it
would have been obvious to modify the gaming manager of Chu with the
video game running remotely as taught by Kadikario so that an Internet
game can be accessed from a remote game server. Id. at 15. The Examiner
explains that “[g]ames can [be] executed by sharing the load between local
computers and one or more remote server” and “[t]his variability allows for
flexibility in providing games.” Ans. 15.
Appellant argues that the Examiner “relies on Chu to teach a video
game that includes a static video portion and a user interactive video
portion,” but “[t]he applied portion of Chu, however, does not teach or
suggest such a video game.” Appeal Br. 28. In support, Appellant argues
that Chu discloses “a program 185 and advertisements wherein the program
Appeal 2019-003338
Application 15/166,635

4
185 is suspended while for [sic] viewing of the advertisement” and “[t]hus,
the cited portions of Chu do not teach or suggest a video game that includes
the program 185 and the advertisements but instead teaches a separate
program 185 and separate advertisements.” Id.; see also Reply Br. 2
(arguing that Chu’s “advertisement is a component that is added to the video
game and not a part of the original video game”).
Appellant’s argument is unpersuasive. As discussed infra, Claim 1
does not preclude a static video portion of a video game from being added to
the video game, nor are we persuaded that Chu’s advertisements are not
disclosed, in Chu, as being a portion of a video game.
Chu discloses an “advertisement as an add-on game component” (Chu
¶ 10 (emphasis added)) in which “a remote server [is] configured to store
and serve at least one add-on component (id. at ¶ 8). See also Chu Fig. 1
(illustrating remote server 110 stores add-on component 115A). Thus, Chu
discloses a static video portion originating from source remote server 110.
Chu further discloses that a “program 185 may be any type of computer
program, including any of games, . . . .” Id. at ¶ 36; see also id. at ¶ 38
(“program 185 is a game playing program”). The “remote server stores an
add-on component 115A that is configured to be uploaded and installed in a
program 185 on a user computer 180.” Id. at ¶ 35 (emphasis added).
“[A]dd-on component 115A has been served to user computer 180, installed
by API 190, and is shown residing within program 185 as add-on component
115B.” Id. at ¶ 35; see also id. at Fig. 1. As such, from these passages Chu
discloses a video game (i.e., program 185) that includes a static video
portion (i.e., advertisement or add-on component 115A/115B) and a user
interactive video portion (i.e., program 185 that is a game) in which the
Appeal 2019-003338
Application 15/166,635

5
static video portion is provided from a different source (i.e., remote server
110) than that of the user interactive video portion (i.e., user computer 180
in which program 185 resides). See id. at Fig. 1.
Appellant contends that “[t]he Final Action recognizes that Chu fails
to explicitly disclose wherein the video game runs remotely,” “Kadikario is
cited to purportedly cure this deficiency,” and “Appellant respectfully
traverses.” Appeal Br. 29.
“Attorney’s argument in a brief cannot take the place of evidence.”
In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Here, Appellant does not
provide evidence nor explain why Kadikario does not disclose a video game
that runs remotely.
Appellant points out that Chu discloses its advertisements “appear
within an online video game” and “placing advertisements within an online
video game as part of the game experience or during idle load, wait, and
pause screens.” Appeal Br. 29 (emphasis omitted) (quoting Chu Abstr., ¶ 7).
Appellant notes that the term “for” is defined as “with the object or purpose
of.” Id. at 30 (citing dictionary.com). As such, Appellant contends that Chu
does not disclose “the user interactive video portion is being initialized
remotely for subsequent local execution as variously claimed.” Id.
These contentions are unpersuasive. “Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references []. [The reference] must
be read, not in isolation, but for what it fairly teaches in combination with
the prior art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986).
Appeal 2019-003338
Application 15/166,635

6
As an initial matter, we note that claim 1 recites “receive the static
video portion for local display while the user interactive video portion is
being initialized remotely for subsequent local game play.” Appeal Br. 34
(Claims App.; emphasis added). The Specification discloses that “the
remote initialization process includes warming up an encoder, setting up the
environment to run the game and finding a starting point of the game based
on where the user left off previously playing the game.” Spec. ¶ 20
(emphasis added). We thus construe the term “being initialized” as having
an encoder that is being warmed up, an environment that is being set up to
run a game, or finding where the user left off previously playing a game.
As Appellant recognizes, Chu discloses “placing advertisements
within an online video game as part of the game experience or during idle
load, wait, and pause screens” such that its advertisements “appear within
an online video game.” See Chu ¶ 7, Abstr. (emphasis added); Appeal Br.
29. Chu also discloses “advertisement screens may be displayed during idle
load time that typically occurs when the game is loading into memory.” Id.
at ¶ 49 (emphasis added). Thus, Chu discloses receiving a static video
portion (i.e., advertisement) for local display (i.e., “within an online video
game”) while the user interactive video portion (i.e., online video game) is at
“idle load, wait, and pause screens,” “during idle load time,” or “when the
game is loading into memory.” The term “load” is defined as “to become
loaded into a computer memory.”4 As such, Chu discloses receiving a static
video portion for local display while a user interactive video portion’s

4 https://www.merriam-webster.com/dictionary/load (last accessed
December 11, 2019).

Appeal 2019-003338
Application 15/166,635

7
encoder is being warmed up, a user interactive video portion’s environment
is being set up to run a video game, or finding where the user left off
previously playing a game. In other words, Chu discloses “receiv[ing] the
static video portion for local display while the user interactive video portion
is being initialized [] for subsequent local game play” as claimed.
As noted above, the Examiner acknowledges that Chu does not
disclose the video game running remotely and relies on Kadikario for
disclosing this missing claim limitation. See Final Act. 13–14. Thus, to the
extent that Appellant is arguing that Chu does not disclose the “remote”
limitation, such argument fails to address the rejection. Alternatively, we
note that although the claim 1 recites “initialized remotely,” the claim does
not recite what location initialization is remote from, i.e., a frame of
reference to ascertain the term “remotely.” The Examiner finds that Chu
discloses “a program hosted on a user computer, wherein the server is
remotely located from the user computer [0009]).” Final Act. 13. Because
Chu’s program 185 comprises a video game which is remotely located from
remote server 110 (see Chu Fig. 1), Chu discloses a user interactive video
portion that is initialized remotely for subsequent local game play with
respect to a server. As such, Appellant does not apprise us of Examiner
error.
Appellant contends that “it would change the principle of operation of
Chu, which is directed to ‘appear within an online video game’ (see
abstract.) to instead have start a video game running remotely” because
claim 1 recites “wherein the video game includes a static video portion and a
user interactive video portion and receive the static video portion for local
display while the user interactive video portion is being initialized remotely
Appeal 2019-003338
Application 15/166,635

8
for subsequent local game play.” Appeal Br. 30. According to Appellant,
“[t]his constraint on timing, and the alternative between the static and
dynamic, would hinder Chu in his primary purpose of providing
advertisement within the video game, as opposed to either having for
remotely [or] for subsequent local execution.” Id. at 30–31; see also Reply
Br. 4.
We are not persuaded. These contentions ignore Chu’s disclosure of
“interactive advertisements, sponsorships, and placements that appear . . .
during idle load, wait, and pause screens,” i.e., displaying advertisement as
the user interactive video portion is being initialized for subsequent local
game as explained above, which is as an alternative to “appear[ing] within
an online video game.” See Chu Abstr; see also id. at ¶ 49. Moreover,
Appellant does not provide evidence or persuasive argument explaining why
Chu’s advertisement cannot be viewed both when the video game is being
initialized or after the video game is initialized. See Chu Abstr. (emphasis
added) (disclosing “or during idle load, . . .”).
In the Reply Brief, Appellant argues that by adding the teaching of
Kadikario, Chu’s principle of operation would change because Chu does not
initialize its video game while displaying the advertisement but instead, Chu
suspends the interactive portion, i.e., the video game. Reply Br. 4.
This argument is unpersuasive for the reasons discussed supra,
namely that Chu discloses advertisement and sponsorships that appear
“during idle load.” Further, we note that in view of the disclosure at
paragraph 20 of the Specification that the “initialization process” includes
the scenario of “finding a starting point of the game based on where the user
left off previously playing the game,” claim 1 thus does not preclude
Appeal 2019-003338
Application 15/166,635

9
receiving or displaying the static video portion while the interactive portion
is suspended.
Appellant contends that “[t]here would be no motivation to combine a
reference that does not disclose or explicitly teach ‘wherein the video game
runs remotely’ (Chu) with a reference that explicitly states that the source of
the game is not important (Kadikario) to render obvious” claim 1’s
requirement of “start[ing] a video game running remotely, wherein the video
game includes a static video portion and a user interactive video portion and
receive the static video portion for local display while the user interactive
video portion is being initialized remotely for subsequent local game play.’”
Appeal Br. 31; see also Reply Br. 5.
This contention is unpersuasive in that it does not address the
rejection. The Examiner provides motivation for combining the disclosures
of Kadikario and Chu in stating that it would have been obvious to modify
the gaming manager of Chu with the video game running remotely as taught
by Kadikario so that an internet game can be accessed from a remote game
server. Final Act. 15. To the extent that Appellant is arguing that Kadikario
teaches away from a video game running remotely, such argument is not
well-taken. Kadikario does not discredit, criticize, or disparage the claimed
video game from running remotely but instead suggests that “[t]he
interactive game program can itself be downloaded over the Internet or it
can be an Internet game that is accessed from a remote game server.”
Kadikario ¶ 45. Like our appellate reviewing court, “[w]e will not read into
a reference a teaching away from a process where no such language exists.”
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1364 (Fed. Cir. 2006). Moreover, a prior art reference must be
Appeal 2019-003338
Application 15/166,635

10
considered in its entirety, i.e., as a whole, including portions that would lead
away from the claimed invention. See W.L. Gore & Assoc., Inc. v. Garlock,
Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983).
Appellant contends that paragraph 3 of the Specification discloses an
appreciation of the problem of resource provisioning but that “[t]his
appreciation is explicitly unappreciated in either Chu, which does not
disclose that the video game runs remotely, or Kadikaro, a reference that
explicitly states that the source of the game is not important.” Appeal Br.
32.
This argument is unpersuasive. “[L]imitations are not to be read into
the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993). See also In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(“[A]ppellant’s arguments fail from the outset because . . . they are not based
on limitations appearing in the claims.”). Claim 1 does not recite any
limitation concerning resource provisioning. Further, the Examiner
correctly responds that the claimed invention, “as recited, is completely
obvious in light of Chu and Kadikario.” Ans. 15. In other words, the
Examiner’s reasoning for modifying the gaming manager of Chu need not be
the same as Appellant’s reason for having that structure. In re Kahn, 441
F.3d 977, 987–88 (Fed. Cir. 2006). “In determining whether the subject
matter of a patent claim is obvious, neither the particular motivation nor the
avowed purpose of the patentee controls. . . . [A]ny need or problem known
in the field of endeavor at the time of invention and addressed by the patent
can provide a reason for combining the elements in the manner claimed.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419–20 (2007).
Appeal 2019-003338
Application 15/166,635

11
In the Reply Brief, Appellant contends that “the mere possibility that
the advertisement [of Chu] can come from networked computers is not
sufficient to establish that the advertisement does come from the networked
computers” and that “[t]he Examiner must provide a basis in fact or
technical reasoning that the advertisement always comes from the networked
computers.” Reply Br. 3 (emphasis omitted).
Although claim 1 recites that the “processor [is] configured to start a
video game running remotely” and that “the video game includes a static
video portion,” claim 1 does not require the static video portion “comes from
the networked computers.” See Appeal Br. 34 (Claims App.). See Van
Geuns, 988 F.2d at 1184; see also Self, 671 F.2d at 1348. Thus, Appellant
does not apprise us of Examiner error.
Appellant further contends that “even if the advertisement does come
from the networked computers, that alone does not teach that the
advertisement is necessarily initialized remotely.” Reply Br. 3 (emphasis
omitted).
Again, Appellant is arguing limitations that are not claimed.
Although claim 1 recites that “the user interactive video portion is being
initialized remotely,” claim 1 does not require that the static video portion is
initialized remotely. See Appeal Br. 34 (Claims App.).
Thus, for the reasons supra, Appellant’s arguments do not apprise us
of error in the Examiner’s combination of Chu and Kadikario. Accordingly,
we sustain the Examiner’s rejection of claims 1, 3, 4, 8, 10, 11, and 15–17.

Appeal 2019-003338
Application 15/166,635

12
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§ 
Reference(s)/Basis Affirmed Reversed
1, 3, 4, 8, 10,
11, 15–17
103   Chu, Kadikario 1, 3, 4, 8,
10, 11,
15–17

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

AFFIRMED