Christopher J. Dawson et al.Download PDFPatent Trials and Appeals BoardSep 4, 201912115706 - (D) (P.T.A.B. Sep. 4, 2019) Copy Citation 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. 12/115,706 05/06/2008 Christopher J. Dawson END920070042US1 5617 79980 7590 09/04/2019 Keohane & D'Alessandro 1881 Western Avenue Suite 180 Albany, NY 12203 EXAMINER SORKOWITZ, DANIEL M ART UNIT PAPER NUMBER 3681 NOTIFICATION DATE DELIVERY MODE 09/04/2019 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@Kdiplaw.com drubbone@kdiplaw.com lcronk@kdiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHRISTOPHER J. DAWSON, RICK A. HAMILTON II, BRIAN M. O’CONNELL, CLIFFORD A. PICKOVER, and KEITH R. WALKER ____________ Appeal 2018-0005541 Application 12/115,7062 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, KENNETH G. SCHOPFER, and TARA L. HUTCHINGS, Administrative Patent Judges. HUTCHINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–5, 7–15, and 17–24. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Our Decision references Appellants’ Appeal Brief (“App. Br.,” filed Apr. 28, 2017) and Reply Brief (“Reply Br.,” filed Oct. 20, 2017), and the Examiner’s Answer (“Ans.,” mailed Aug. 21, 2017) and Final Office Action (“Final Act.,” mailed Nov. 28, 2016). 2 Appellants identify International Business Machines Corporation as the real party in interest. App. Br. 1. Appeal 2018-000554 Application 12/115,706 2 CLAIMED INVENTION Appellants’ claimed invention manages advertising and/or offers for sale of virtual and real goods and services masquerading as computer controlled avatars. Spec. ¶ 2. Claims 1, 11, 18, and 21 are the independent claims on appeal. Claim 1, reproduced below with bracketed notations added, is illustrative of the claimed subject matter: 1. A method in a virtual universe (VU) system, the VU system comprising one or more offering avatars, one or more receiving avatars and a reputation table having offering avatar reputation data listings, the method comprising: [(a)] receiving, using a computer, a message by a receiving avatar from an offering avatar within the VU; [(b)] identifying the offering avatar by parsing the message to find a unique identifier that distinguishes the offering avatar from other avatars within the VU; [(c)] distributing the reputation table from the VU to the receiving avatar via a communications channel; [(d)] examining, using the computer, the reputation table for the unique identifier, wherein each offering avatar reputation data listing of the reputation table includes an offering avatar ad score and an offering avatar ad score threshold that is specified by a user of the receiving avatar, and wherein the offering avatar ad score is the quantification of unwanted solicitations within the VU received from the offering avatar and reported by receiving avatars; [(e)] determining, using the computer, whether the offering avatar is a spam avatar from the one or more offering avatar reputation data listings associated with the offering avatar, wherein the determining is based upon comparing the offering avatar ad score against the offering avatar ad score threshold; [(f)] blocking the receipt of the message by the receiving avatar in response to a determination that the offering avatar is a spam avatar; and Appeal 2018-000554 Application 12/115,706 3 [(g)] storing, using the computer, the unique identifier in a report table, wherein the storing includes a time of incident, a recording of a last n seconds of an interaction between the receiving and the offering avatars, and the message as a text. REJECTIONS Claims 1–5, 7–15, and 17–24 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Claims 1–5, 7–9, 11–15, and 17–24 are rejected under 35 U.S.C. § 103(a) as unpatentable over Wallace (US 2008/0208749 A1, pub. Aug. 28, 2008), Morin (US 2003/0074397 A1, pub. Apr. 17, 2003), and Yee (US 2008/0022384 A1, pub. Jan. 24, 2008). Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over Wallace, Morin, Yee, and Oliver (US 2008/0097946 A1, pub. Apr. 24, 2008). ANALYSIS Patent-Ineligible Subject Matter Appellants argue the pending claims as a group. App. Br. 8–15; see also Reply Br. 1–3. We select independent claim 1 as representative. The remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to include an implicit exception: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). Appeal 2018-000554 Application 12/115,706 4 The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. (citation omitted). If the claims are not directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. at 217–18 (alteration in original). The USPTO recently published revised guidance on the application of § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).3 That guidance revised the USPTO’s examination procedure with respect to the first step of the Mayo/Alice framework such that a claim will generally be considered directed to an abstract idea if (1) the claim recites subject matter falling within one of the following groupings of abstract ideas: (a) mathematical 3 The Revised Guidance is effective as of January 7, 2019, and applies to all applications, and to all patents resulting from applications, filed before, on, or after January 7, 2019. Appeal 2018-000554 Application 12/115,706 5 concepts; (b) certain methods of organizing human activity, e.g., a fundamental economic principle or practice, a commercial or legal interaction; and (c) mental processes (“Step 2A, Prong One”), and (2) the claim does not integrate the abstract idea into a practical application, i.e., apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the clam is more than a drafting effort designed to monopolize the judicial exception (“Step 2A, Prong Two”). See Revised Guidance 54–55. The Revised Guidance references MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h) in describing the considerations that are indicative that an additional element or combination of elements integrates the judicial exception, e.g., the abstract idea, into a practical application. Id. at 55. If the recited judicial exception is integrated into a practical application, as determined under one or more of these MPEP sections, the claim is not “directed to” the judicial exception. Only if the claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application do we then look to whether the claim “[a]dds a specific limitation or combination of limitations” that is not “well-understood, routine, conventional activity in the field” or simply “appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception” (“Step 2B”). Id. at 56. With the legal principles outlined above, and the 2019 Revised Guidance in mind, we turn to the Examiner’s § 101 rejection. In rejecting the pending claims under 35 U.S.C. § 101, the Examiner determined that claim 1 recites steps (a)–(g) for blocking advertisements Appeal 2018-000554 Application 12/115,706 6 from spam avatars, which the Examiner characterized as a commercial interaction, i.e., a method of organizing human activity and, thus, an abstract idea. Final Act. 3–4. The Examiner further determined that the claims do not recite additional elements that are sufficient to amount to significantly more than the judicial exception. Id. at 4. In so doing, the Examiner notified Appellants of the reasons for the rejection under 35 U.S.C. § 101 in a sufficiently articulate and informative manner as to meet the notice requirement of 35 U.S.C. § 132, thereby establishing a prima facie case of patent ineligibility. See In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011) (holding that the USPTO carries its procedural burden of establishing a prima facie case when its rejection satisfies the notice requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for the rejection, “together with such information and references as may be useful in judging of the propriety of continuing the prosecution”). Therefore, we are unpersuaded by Appellants’ argument (App. Br. 9) that the Examiner has not met the burden of establishing a rejection under 35 U.S.C. § 101. Judicial Exception: Step One of the Mayo/Alice Framework; Step 2A, Prong 1 of the 2019 Revised Guidance Appellants’ Specification describes that in a virtual world or universe (“VU”), which is a three-dimensional world or universe created with computer generated imagery and other rendering software, a user can interact within the environment using an avatar. Spec. ¶ 3. The avatar is a fully rendered interactive character that represents a computer user. Id. Avatar-based VU unsolicited personal messaging (“spam”) roam the VU looking to communicate with potential human avatars. Id. ¶ 4. This avatar- based VU spam impedes and, in some cases, blocks a user’s motion in the Appeal 2018-000554 Application 12/115,706 7 VU, making the VU slow and/or unusable. Id. ¶ 5. It also can block another avatar’s line of sight. Id. Appellants’ claim 1 recites a method that includes: “receiving . . . a message . . . from an offering avatar . . . .” (step (a)); “identifying the offering avatar by parsing the message to find a unique identifier that distinguishes the offering avatar from other avatars. . . .” (step (b)); “distributing the reputation table [having offering avatar reputation data listings] . . . to the receiving avatar. . . .” (step (c)); “examining . . . the reputation table for the unique identifier, wherein each offering avatar reputation data listing of the reputation table includes an offering avatar ad score and an offering avatar ad score threshold that is specified by a user of the receiving avatar and wherein the offering avatar ad score is the quantification of unwanted solicitations . . . .” (step (d)); “determining . . . whether the offering avatar is a spam avatar from the one or more offering avatar reputation data listings associated with the offering avatar, wherein the determining is based upon comparing the offering avatar ad score against the offering avatar ad score threshold” (step (e)); “blocking the receipt of the message by the receiving avatar in response to a determination that the offering avatar is a spam avatar” (step (f)); and “storing . . . the unique identifier in a report table, wherein the storing includes a time of incident, a recording of a last n seconds of an interaction between the receiving and the offering avatars, and the message as a text” (step (g)). When given their broadest reasonable interpretation, limitations (a)– (g) recite a set of steps for blocking the receipt of a spam message, i.e., managing interactions between people (including following rules or instruction), which is a certain method of organizing human activity, and, Appeal 2018-000554 Application 12/115,706 8 therefore, an abstract idea. See 2019 Revised Guidance 52. Accordingly, we are not persuaded of Examiner error at Step 2A, Prong 1 of the 2019 Revised Guidance. See App. Br. 10 (asserting that the Examiner overgeneralizes and mischaracterizes the claimed invention). Practical Application: Step One of the Mayo/Alice Framework; Step 2A, Prong 2 of the 2019 Revised Guidance Having concluded that claim 1 recites a judicial exception, i.e., an abstract idea, we next consider whether the claim recites additional elements, considered individually and in combination, that integrate the judicial exception into a practical application. See Revised Guidance 54–55. Here, the additional elements recited in claim 1, beyond the abstract idea, include a “computer” (e.g., limitations (a), (d), (e), (g)), “VU” (e.g., limitations (a)–(d)), and “communications channel” (e.g., limitation (c)), as well as receiving and offering avatars (i.e., personalized graphic files or renderings). The Specification describes these components broadly and at a high level of generality. See, e.g., Spec. ¶¶ 3, 24, 25, 31, 42–47. We find no indication, nor do Appellants direct us to any indication, that the operations recited in claim 1 require specialized computer hardware or other inventive computer components. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.”). At best these elements link the abstract idea to a particular technological environment, i.e. a virtual world. Evaluating claim 1 as a whole, we are not persuaded that the additional elements, considered individually and as an ordered combination, integrate the abstract idea into a practical application. Appeal 2018-000554 Application 12/115,706 9 Appellants argue that the claimed invention improves the function of a server responsible for managing virtual content in the VU, and a set of databases comprising a reputation table and an active avatars database, which the Appellants contend is each a particular machine performing a specialized function. App. Br. 10–11. Yet, as an initial matter, claim 1 recites a reputation table, computer, offering avatar and receiving avatar, and communications channel, but claim 1 does not recite a server or a set of databases comprising an active avatars database. Here, Appellants fail to direct us to any indication in the Specification that claim 1 invokes any specialized computer hardware or special programming (i.e., a particular machine). Seeking to analogize claim 1 to the claims in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), Appellants further argue that claim 1 is directed to “virtual universe technology, which inherently requires specialized machinery.” App. Br. 12–13. Appellants contend that the steps executed by the particular machines “reduce the amount of unwanted communications, allowing the server to process the VU more quickly and efficiently and to provide the user with a more efficient operating experience.” Id. at 13. Yet, there is a fundamental difference between computer functionality improvements, on the one hand, and uses of existing computers as tools to perform a particular task, on the other. Indeed, the Federal Circuit applied this distinction in Enfish in rejecting a § 101 challenge at the step one stage in the Alice analysis because the claims at issue focused on a specific type of data structure, i.e., the self-referential table, designed to improve the way a computer carries out its basic functions Appeal 2018-000554 Application 12/115,706 10 of storing and retrieving data, and not on asserted advances in uses to which existing computer capabilities could be put. Id. at 1335–36. Here, we find no parallel between claim 1 and the claims in Enfish or any comparable aspect in claim 1 that represents “an improvement to computer functionality.” The alleged improvements to which Appellants refer do not concern an improvement to computer capabilities but instead relate to the implementation of various tasks, e.g., determining whether the offering avatar is a spam avatar and blocking the receipt of the message in response to a determination that the offering avatar is a spam avatar. We also are not persuaded by Appellants’ argument that claim 1 resembles the claim at issue in SiRF Technology, Inc. v. International Trade Comm’n., 601 F.3d 1319 (Fed. Cir. 2010). For example, an illustrative claim at issue in SiRF Technology recites a method for calculating an absolute position of a GPS receiver and an absolute time of reception of satellite signals based, in part, on pseudo-ranges that estimate the range of the GPS receiver to a plurality of GPS satellites. SiRF Tech., 601 F.3d at 1331. By more accurately calculating the position of a GPS receiver, the claims at issue improve existing global positioning techniques by improving signal-acquisition sensitivity of the receiver to extend the usefulness of the technology in weak-signal environments. See July 2015 Examples4, 10–13 (discussing USPTO Example 4, which includes hypothetical patent-eligible claims modeled after the patent-eligible claims in SiRF Technology). 4 USPTO’s “Examples: Abstract Ideas” (Jan. 27, 2015), available at https://www.uspto.gov/sites/default/files/documents/abstract_idea_examples .pdf (hereinafter “July 2015 Examples) Appeal 2018-000554 Application 12/115,706 11 Appellants do not identify, and we do not find, any analogous improvement to technology recited in claim 1. We conclude, for the reasons outlined above, that claim 1 recites a method of organizing human activity, i.e., an abstract idea. We are not persuaded that the additional elements are more than generic computer components used to implement the abstract idea, and generally link the abstract idea to a particular technological environment or field of use. For example, we find no indication that one or more additional elements reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field; requires any specialized computer hardware or other inventive computer components, i.e., a particular machine; or effects a transformation or reduction of a particular article to a different state or thing. Therefore, we are not persuaded that the Examiner erred at Step 2A, Prong 2 in determining that the additional elements do not integrate the recited abstract idea into a practical application (Step 2A, Prong Two of the 2019 Revised Guidance). Inventive Concept: Step Two of the Mayo/Alice Framework (Step 2A, Prong 1 of the 2019 Revised Guidance) Having determined under step one of the Mayo/Alice framework that claim 1 is directed to an abstract idea, we next consider under Step 2B of the 2019 Revised Guidance, the second step of the Mayo/Alice framework — whether claim 1 recites additional elements that provide an inventive concept (i.e., whether the additional elements amount to significantly more than the judicial exception itself). Appellants assert that claim 1 is directed to significantly more than the abstract idea, and then recites limitations (a) through (g) of claim 1 in their entirety. Yet, “[a] statement” — such as the Appellants’ — that “merely Appeal 2018-000554 Application 12/115,706 12 points out what a claim recites will not be considered an argument for separate patentability of the claim.” 37 C.F.R. § 41.37(c)(iv). See also In re Jung, 637 F.3d at 1365 (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”) (citing Ex parte Frye, Appeal No. 2009-006013, at 9–10, 2010 WL 889747 (BPAI Feb. 26, 2010) (precedential)). Appellants neither identify the purported additional elements that comprise an inventive concept, nor explain why these elements amount to significantly more than the abstract idea itself. Appellants’ identification of all limitations appearing in claim 1 encompasses limitations that recite the abstract idea and, thus, cannot constitute the additional elements for consideration at Step 2B. As set forth above, the only additional elements that are not part of the abstract idea itself are described as generic computer components (e.g., computer, communications channel, virtual universe). Therefore, we are not persuaded that the Examiner erred in determining that the additional elements recited in claim 1, considered alone and as an ordered combination, do not amount to significantly more than the abstract idea. We are not persuaded of error in the Examiner’s rejection of claim 1 under 35 U.S.C. § 101. Therefore, we sustain the Examiner’s rejection of claim 1, and claims 2–5, 7–15, and 17–24, which fall with claim 1. Obviousness We are persuaded by Appellants’ argument that the Examiner erred in rejecting independent claims 1, 11, 18, and 21 under 35 U.S.C. § 103 because Wallace does not teach or suggest limitation (b), i.e. “identifying the offering avatar by parsing the message to find a unique identifier that distinguishes the offering avatar from other avatars within the VU,” as Appeal 2018-000554 Application 12/115,706 13 recited in claim 1, and similarly recited in claims 11, 18, and 21. App. Br. 17. The Examiner relies on paragraphs 14 and 16 of Wallace for the argued limitations. Final Act. 6. Wallace describes that an activity in a game may involve interaction between real and virtual worlds. Wallace ¶ 10. For example, a transaction may require communication between an in-game character in the virtual world and a person in the real world controlling the character. Id. Wallace provides a method for facilitating a commerce service within such a cross world environment. Id. ¶ 14. In paragraph 14, Wallace describes an identity managing system that verifies a user’s identity for the commerce service. The method includes obtaining an active identity of a first user, receiving a request from the first user for a commerce transaction, and determining a type of the commerce transaction, as well as an item related to the request. Id. An identity of a second user is received as a participant of the commerce transaction, the commerce transaction is facilitated, and the request is stored as history. Paragraph 16 of Wallace describes another embodiment in which a user register’s a proprietary identity to represent the user’s real identity for the financial transaction. However, we find nothing in the cited portions of Wallace that teaches or suggests anything about identifying an offering avatar by parsing the message to find a unique identifier that distinguishes the offering avatar from other avatars within the virtual universe, as required by claim 1, and similarly required by claims 11, 18, and 21. Instead, as Appellants correctly point out (App. Br. 17), Wallace describes receiving an identity for a user, i.e., a real person from the real world. Appeal 2018-000554 Application 12/115,706 14 The Examiner takes the position that Wallace’s user identifier teaches the argued limitation because the real person is represented by a “unique avatar” in the virtual world. Ans. 7. Yet, that an avatar represents a real person and the avatar is unique does not mean that a person’s unique identifier would distinguish an offering avatar from other avatars within the virtual universe, as required by claims 1, 11, 18, and 21. Indeed, Wallace makes clear that a player “may be represented by multiple identities [or avatars] in the same game.” Wallace ¶ 39. In that case, the identity of Wallace’s user would not distinguish one avatar of the user from another avatar in the virtual world controlled by the same user. For at least this reason, we do not sustain the Examiner’s rejection of independent claims 1, 11, 18, and 21, and dependent claims 2–5, 7–9, 12–15, 17, 19, 20, and 22–24 under 35 U.S.C. § 103(a). The Examiner’s rejection of dependent claim 10 under 35 U.S.C. § 103(a) does not cure the deficiencies in the rejection of independent claim 1. See Final Act. 14–16. Therefore, we do not sustain the rejection of claim 10 for the same reasons provided above with respect to independent claim 1. DECISION The Examiner’s rejection of claims 1–5, 7–15, and 17–24 under 35 U.S.C. § 101 is affirmed. The Examiner’s rejections of claims 1–5, 7–15, and 17–24 under 35 U.S.C. § 103(a) are reversed. Appeal 2018-000554 Application 12/115,706 15 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). AFFIRMED Copy with citationCopy as parenthetical citation