Disney Enterprises, Inc.Download PDFPatent Trials and Appeals BoardAug 3, 20212019006669 (P.T.A.B. Aug. 3, 2021) 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. 14/598,218 01/15/2015 Robert NELSON 45WE-213467 4895 124910 7590 08/03/2021 ESPLIN & ASSOCIATES (Disney) c/o DISNEY ENTERPRISES, INC. 1665 S Rancho Santa Fe Road, Suite C2 San Marcos, CA 92078 EXAMINER GARNER, WERNER G ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 08/03/2021 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): docketing@esplin.legal PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT NELSON Appeal 2019-006669 Application 14/598,218 Technology Center 3700 BEFORE SUSAN L. C. MITCHELL, FREDERICK C. LANEY, and BRENT M. DOUGAL Administrative Patent Judges. LANEY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s Final rejection (Final Office Action, mailed February 22, 2018, hereinafter “Final Act.”) of claims 1, 3–6, 8–11, 13–16, and 18–24.2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). A hearing was held on August 20, 2020. We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Disney Enterprises, Incorporated. Appeal Br. 2. 2 Claims 2, 7, 12, and 17 have been canceled. Appeal Br. 17–20 (Claims App.). Appeal 2019-006669 Application 14/598,218 2 CLAIMED SUBJECT MATTER The claims relate to “[a] system and method for customizing a game entity that is played in a video game” that may take place in a virtual space. Abstract. Users may play the video game by controlling a virtual entity that has an associated physical object, which stores information related to the entity. Id. The stored information may be used to customize the associated entity within the virtual world of the video game. Id. And at least some of the stored information may be written to the physical object using a read/write platform that is included at a point of purchase computing platform in the retail location. Id. Claims 1, 11, 23, and 24 are independent and are substantially similar with regard to the arguments presented by Appellant of alleged Examiner error. Claim 1 is reproduced below. 1. A system configured to facilitate customization of game entities played in a video game, the system comprising: one or more physical processors configured by computer- readable instructions to: receive first information stored by a physical object from a reader that is physically present with and operatively coupled to a point of purchase computing platform physically located at a retail location, the physical object and the first information stored thereon being associated with a game entity configured to be controlled by a user in a video game that takes place in a virtual space, wherein a visual appearance of the physical object represents the game entity; receive second information indicating purchase of a customization for the game entity at the point of purchase computing platform, the customization being associated with a parameter value for a parameter of the game entity in the virtual space, the parameter including a special effects parameter related to one or both of an attack effect or a defensive effect for the game entity in the virtual space; and Appeal 2019-006669 Application 14/598,218 3 effectuate storage of the parameter value associated with the customization for the game entity in the video game, such storage facilitating implementation of the parameter value for the parameter of the game entity in the virtual space, wherein effectuating the storage of the parameter value comprises effectuating wireless transmission of the parameter value by a writer to the physical object, the writer being physically present with and operatively coupled to the point of purchase computing platform. Appeal Br. 16 (Claims App.). EVIDENCE Name Reference Date Bala US 2014/0274313 A1 Sept. 18, 2014 Elliot US 2012/0289122 A1 Nov. 15, 2012 Pacey US 2015/0024852 A1 Jan. 22, 2015 REJECTION Claims 1, 3–6, 8–11, 13–16, and 18–24 are rejected under 35 U.S.C. § 103(a) as obvious over Bala, Elliot, and Pacey. OPINION Appellant argues for patentability of claims 1, 3–6, 8–11, 13–16, and 18–24 together as a group. Appeal Br. 6–14. We select claim 1 as representative of this group, and claims 3–6, 8–11, 13–16, and 18–24 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant argues that the Examiner’s determination that claim 1 would have been obvious in view of Bala, Elliot, and Pacey is flawed because Elliot is non-analogous art that is outside the scope of prior art Appeal 2019-006669 Application 14/598,218 4 available for consideration in a proper obviousness analysis. Appeal Br. 6– 11. Although Appellant also contends that the Examiner improperly used hindsight (id. at 12 (“there would be no reason one of ordinary skill in the art would look to the diverse field of Elliott absent hindsight.”)), this argument likewise depends on Elliot being non-analogous art. Id. at 12–14. Notably, if Elliot is analogous art, Appellant has not directly challenged any of the findings and reasoning made by the Examiner to support the determination that claim 1 would have been obvious in view of Bala, Elliot, and Pacey. See generally id. at 6–14. Therefore, the dispositive issue in this Appeal is whether Elliot is analogous art. Determining Elliot is analogous art depends on “whether [Elliot] is from the same field of endeavor [as Appellant’s claimed invention], regardless of the problem addressed,” and “if [Elliot] is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which [Appellant] is involved.” Scientific Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014) (citing In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992)). The Examiner finds, “Elliott is, in addition to being in the field of applicant’s endeavor, also reasonably pertinent to the particular problem with which the applicant was concerned.” Final Act. 33. In particular, the Examiner finds Elliot discloses subject matter directed to “systems and methods allowing for the customization of a toy by transferring sound or other data,” which is in the same field as Appellant’s invention––“customizing game entities.” Ans. 34–35. The Examiner finds additionally that Elliot addresses customizing a toy at the point-of-sale, which is reasonably pertinent to a problem involved with the present Appeal 2019-006669 Application 14/598,218 5 invention, such as “how to provide customizations to a game entity within a virtual space.” Id. at 36–37. Appellant argues that “Elliott is outside the field of the inventor’s endeavor because . . . . [t]he inventor’s field of endeavor (for all claims) relates to customizing game entities played by users in a video game by storing, at a retail location, customization information on physical object associated with the game entities.” Appeal Br. 8 (citing Spec. Title, ¶ 1). As support, Appellant describes the Specification as disclosing a point-of-sale device that can communicate with a physical object to store customized data in the object, which may be automatically implemented in a virtual space when the physical object is present. Id. (citing Spec. ¶¶ 4, 22). For example, a customization may include one or more of an upgrade for an existing parameter of a game entity (e.g., an upgraded or new parameter value for the parameter), an enhancement of a game entity (e.g., a parameter value for a parameter not usually associated with the game entity in the virtual space), a customization of the virtual space in which a game entity is to be played (e.g., a change in a simulated topography of the virtual space), and/or an introduction of new content into the virtual space in which a game entity is to be played (e.g., a new level, mission, environment, virtual item and/or good, non-player character, and/or other new content). Id. Appellant argues Elliot “clearly states the field of the invention as systems and methods for the recording of sounds, via a self-service kiosk, on a local storage device which is included in a toy.” Appeal Br. 8 (citing Elliot ¶¶ 2, 3. 17). The local storage device in Elliot, according to Appellant, “is configured to be placed in the toy, such as a plush toy, such that playback of the sounds will be perceived as coming from the toy.” Id. at 9. Appellant identifies that, in one embodiment, Elliot describes that the local storage Appeal 2019-006669 Application 14/598,218 6 device can be used to establish a customized identity for the toy. Id. (citing Elliot ¶ 122). Additionally, Appellant notes Elliot describes that an interactive environment may allow more direct interaction with a toy by including “a transmitter which is capable of utilizing free memory on the local storage device (109) to download additional sound or functionality to the toy.” Id. (citing Elliot ¶ 125). This shows, according to Appellant, that “the kiosk of Elliott at best is configured to transmit, for storage on a local storage device, audio recordings (either recorded by a user or retrieved from an interactive environment) or customer/toy identification information.” Id. Therefore, Appellant concludes, in contrast to the field of endeavor of the invention in this case, which “relates to customizing game entities in a virtual space,” “Elliott is related to customization of physical toys with sounds.” Id. We are not persuaded of error with the Examiner’s determination that Elliot is from the same field of endeavor as Appellant’s claimed invention. As the Examiner correctly finds, “[a]lthough Elliott describes the invention in terms of ‘sound,’ it is certainly not limited to sound.” Ans. 35 (citing Elliot ¶ 54). The Examiner persuasively shows that Elliot’s explanation of the “other data” demonstrates that it may include customization data for game entities played by users in a video game by storing, at a retail location, customization information on a physical object associated with the game entities. In particular, Elliot states, The storage of data on the local storage device (109) can allow for the local storage device (109) to serve to identify the toy, including its owner and various information with which the final consumer has provided the toy, for example, a name. When the chip is therefore presented to a cradle (113) or other device capable of communicating with it, this data may be Appeal 2019-006669 Application 14/598,218 7 retrieved to provide for an improved interactive experience. For example, the company providing the toy may provide an online computerized environment or social network where an owner of the toy can interact with other consumers and with computer games and simulations using the toy. In such an environment, the presence of the toy can be detected, the data can be loaded to the interactive environment, and this can provide for improved interactivity of the toy within the interactive environment and a more seamless integration of the toy with the environment. Elliot ¶ 122. In addition, Elliot states, Systems and methods which allow for the self-service selection and recording of local storage devices which can be provided as part of a larger object such as a toy. Specifically, the systems and methods discussed herein generally comprise self-service kiosks or other related systems whereby a final consumer, who is engaged in the manufacture or creation of a personalized or semi-personalized toy, can provide for transfer of sound or other data to a local storage device which will be incorporated into the toy in an on-demand fashion. Elliot, Abstract. In view of the foregoing, we find the evidence from Elliot supports sufficiently the Examiner’s determination that Elliot is in the same field of endeavor of customizing game entities in a virtual space as Appellant’s invention. In addition, we are not persuaded the Examiner erred in determining that Elliot is reasonably pertinent to the particular problem with which Appellant is involved. The Examiner notes that Appellant describes the invention as addressing a number of problems: “(1) how to provide customizations to a game entity within a virtual space;” “(2) how to do so while utilizing a physical object that is detectable by a computing platform via a reader that is operatively coupled to or included in the computing Appeal 2019-006669 Application 14/598,218 8 platform;” and “(3) how to store information to the physical object within a retail location and outside of a gameplay environment.” Ans. 36 (citing Appeal Br. 10). The Examiner finds Elliot is reasonably pertinent to the first problem because it involves providing a toy with customized data to enable “an online computerized environment or social network where an owner of the toy can interact with other consumers and with computer games and simulations using the toy.” Id. (citing Elliot ¶ 122). The Examiner finds Elliot is reasonably pertinent to the second problem because it involves providing a “kiosk that may be used prior to ultimate purchase of the customized toy but may also be provided as an additional feature for customization after purchase either as a further feature, or for additional charge,” and “the kiosk includes a reader or other component which is designed to identify a specific toy with which a local storage device is or will be associated.” Id. at 36–37 (citing Elliot ¶¶ 55, 62). Lastly, the Examiner finds Elliot is reasonably pertinent to the third problem because it involves a kiosk that “is generally designed to be used in conjunction with a store whereby customization of toys is available.” Id. at 37 (citing Elliot ¶ 55). In view of the foregoing, we are persuaded the Examiner correctly determined Elliot is analogous art that may be properly relied upon in an obviousness analysis of the claimed invention. Therefore, we sustain the Examiner’s rejection of claims 1, 3–6, 8–11, 13–16, and 18–24 under 35 U.S.C. § 103(a) as being obvious in view of Bala, Elliot, and Pacey. Appeal 2019-006669 Application 14/598,218 9 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–6, 8– 11, 13–16, 18–24 103(a) Bala, Elliot, Pacey 1, 3–6, 8–11, 13–16, 18–24 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation