Christopher J. Dawson et al.

Patent Trials and Appeals Board

Sep 4, 2019

12115706 - (D) (P.T.A.B. Sep. 4, 2019)

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.
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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
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[(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).
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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.
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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
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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
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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,
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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.
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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
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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)
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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
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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
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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.
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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.
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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