Shawn C. Wright et al.

Patent Trials and Appeals Board

Feb 21, 2020

13186666 - (D) (P.T.A.B. Feb. 21, 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.
13/186,666 07/20/2011 SHAWN C. WRIGHT 333205.02/162734 4773
45809 7590 02/21/2020
SHOOK, HARDY & BACON L.L.P.
(MICROSOFT TECHNOLOGY LICENSING, LLC)
INTELLECTUAL PROPERTY DEPARTMENT
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
EXAMINER
PATEL, SHIVANG I
ART UNIT PAPER NUMBER
2618
NOTIFICATION DATE DELIVERY MODE
02/21/2020 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
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PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHAWN C. WRIGHT, JEFFREY JESUS EVERTT,
JUSTIN AVRAM CLARK, CHRISTOPHER HARLEY WILLOUGHBY,
MIKE SCAVEZZE, MICHAEL A. SPALDING, KEVIN GEISNER,
and DANIEL L. OSBORN
________________

Appeal 2018-008852
Application 13/186,666
Technology Center 2600
____________

Before JUSTIN L. BUSCH, MATTHEW J. McNEILL, and
JASON M. REPKO, Administrative Patent Judges.

McNEILL, Administrative Patent Judge.

DECISION ON APPEAL

Appellant0F1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1‒7, 9‒11, 13‒17, 19, and 20, which are all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

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
MICROSOFT TECHNOLOGY LICENSING, LLC, which is a subsidiary of
MICROSOFT CORPORATION. Appeal Br. 3.
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Application 13/186,666

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STATEMENT OF THE CASE
Introduction
Appellant’s application relates to generating a virtual representation of
a real-world object, where the representation includes a number of
characteristics of the virtual representation and attributes based on those
characteristics. Spec. ¶¶ 2‒4. Claim 1 illustrates the appealed subject matter
and reads as follows:
1. One or more computer-readable media having computer-
executable instructions embodied thereon that, when executed,
perform operations comprising:
digitizing a real-world object to generate a virtual
representation of the real-world object in a virtual space;
analyzing the virtual representation to automatically detect
a first characteristic exhibited by the virtual representation;
determining a non-visual attribute to add to the virtual
representation based on the first characteristic using a
predetermined mapping schema mapping the nonvisual attribute
to the first characteristic; and
providing the virtual representation with the non-visual
attribute in the virtual space, the non-visual aspect controlling
interactions of the virtual representation with other virtual
objects in the virtual space.
The Examiner’s Rejection1F2
Claims 1‒7, 9‒11, 13‒17, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kim (US 2012/0041971 A1; Feb. 16,

2 In the Final Action, the Examiner rejected claims 1‒7, 9‒11, 13‒17, 19,
and 20 under 35 U.S.C. § 112(a) as failing to comply with the written
description requirement. Final Act. 6‒7. The Examiner also rejected claims
1‒7, 9‒11, 13‒17, 19, and 20 under 35 U.S.C. § 112(a) as failing to enable
the full scope of the claims. Final Act. 7‒8. However, the Examiner
withdrew these rejections in the Answer. Ans. 2. Accordingly, these
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Application 13/186,666

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2012) and Ogasawara (US 2012/0257787 A1; Oct. 11, 2012). Final Act. 8‒
26.

ANALYSIS
The Examiner finds the combination of Kim and Ogasawara teaches
or suggests “providing the virtual representation with the non-visual attribute
in the virtual space, the non-visual aspect controlling interactions of the
virtual representation with other virtual objects in the virtual space.”
See Final Act. 9 (citing Kim ¶ 46); Ans. 4.
Appellant argues the Examiner erred because the combination of
references does not teach or suggest this limitation. Appeal Br. 10‒12;
Reply Br. 4‒5. In particular, Appellant argues the Examiner fails to point to
any specific disclosure in Kim that teaches or suggests this limitation.
Reply Br. 5. Appellant also argues the Examiner fails to provide any
rationale why Kim’s metadata, which the Examiner finds corresponds to the
claimed “non-visual attribute,” teaches or suggests the recited “controlling
interactions of the virtual representation with other virtual objects in the
virtual space.” Id.
Appellant has persuaded us of Examiner error. The Examiner has not
adequately identified where or how the references teach the “providing”
step. Kim teaches using filter information to detect objects of interest in an
image. Kim ¶ 46. If an object of interest is detected using the filter
information, the system compares the object recognition information to
stored reference characteristic information to identify the object of interest.

rejections are not before us.
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Application 13/186,666

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Id. ¶ 49. After identifying the object, the system searches for metadata
related to the object. Id. ¶ 52. This metadata may be output to the user. Id.
The Examiner finds Kim’s metadata corresponds to the claimed “non-visual
attribute” and Kim’s reference characteristic information corresponds to the
claimed “characteristic.” Ans. 4. The Examiner finds that Kim teaches
“controlling interactions of the virtual representation with other virtual
objects in the virtual space” as recited in claim 1 “because Kim discloses all
other limitations.” Id. We disagree.
The Examiner has failed to sufficiently establish that Kim and
Ogasawara, alone or in combination, teach or suggest “providing the virtual
representation with the non-visual attribute in the virtual space, the non-
visual aspect controlling interactions of the virtual representation with other
virtual objects in the virtual space.” Even if we were to agree with the
Examiner’s finding that Kim’s metadata corresponds to the claimed “non-
visual attribute,” the Examiner has failed to cite any portion of Kim as
teaching metadata that “control[s] interactions of the virtual representation
with other virtual objects in the virtual space” as recited in claim 1. We
agree with Appellant that the Examiner has erred because all words in a
claim must be considered in judging the obviousness of the claimed subject
matter. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
For these reasons, we do not sustain the Examiner’s obviousness
rejection of independent claim 1.2F3 We also do not sustain the obviousness
rejection of independent claims 10 and 17, which recite commensurate
subject matter, or dependent claims 2‒7, 9, 11, 13‒16, 19, and 20.

3 Because we agree with at least one of the dispositive arguments advanced
by Appellant, we need not reach the merits of Appellant’s other arguments.
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CONCLUSION
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1‒7, 9‒11,
13‒17, 19, 20
103(a) Kim, Ogasawara 1‒7, 9‒11,
13‒17, 19, 20

REVERSED