eBay Inc.

Patent Trials and Appeals BoardMar 30, 2021

2020004691 (P.T.A.B. Mar. 30, 2021)

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. 14/139,681 12/23/2013 John Patrick Edgar Tobin IP-P2303US1 5526 150039 7590 03/30/2021 FIG. 1 Patents/eBay 116 West Pacific Suite 200 Spokane, WA 99201 EXAMINER BLAISE, MALINA D ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 03/30/2021 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): Fig1Docket@fig1patents.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ Ex parte JOHN PATRICK EDGAR TOBIN _________________ Appeal 2020-004691 Application 14/139,681 Technology Center 3700 ________________ Before JOHN C. KERINS, KEVIN F. TURNER, and WILLIAM A. CAPP, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the Examiner’s Decision rejecting claims 1–33. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 The term “Appellant” is used herein to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies eBay Inc., as the real party in interest. Appeal Br. 1. Appeal 2020-004691 Application 14/139,681 2 CLAIMED SUBJECT MATTER Appellant’s invention relates to a method involving a geo-location quest game. Independent claim 1 is illustrative, and is reproduced below: 1. A method, comprising: registering game participants to play a geo-location quest game including one or more tasks within an environment having a plurality of beacon devices capable of providing location information for registered game participants within the environment; presenting, on user devices of the registered game participants, a prompt to check-in the registered game participants to a game- point location associated with at least one of the plurality of beacon devices to initiate a quest of the geo-location quest game; responsive to a response to the prompt to check-in the registered game participants to the game-point location, receiving, from the at least one beacon device, instructions that initiate the quest by allowing the user devices of the registered game participants to receive quest tasks; presenting, on the user devices of the registered game participants, a description of a first task of the quest; tracking progress of the registered game participants toward completing the first task of a plurality of different tasks of the quest using the user devices; and verifying completion of the first task of the quest by the registered game participants based, in part, on the tracking. REJECTIONS The Examiner rejects: (i) claims 1–4, 9–14, 19–24, and 29–32 under 35 U.S.C. § 103 as being unpatentable over Ackley (US 2008/0039203 A1, published Feb. 14, 2008)) in view of Frederick (US 2013/0262203 A1, published Oct. 3, 2013) and Thomas (US 2015/0141149 A1, published May 21, 2015); Appeal 2020-004691 Application 14/139,681 3 (ii) claims 5, 7, 15, 17, 25, and 27 under 35 U.S.C. § 103 as being unpatentable over Ackley in view of Frederick, Thomas, and Wrappe (US 2008/0280624 A1, published Nov. 13, 2008); (iii) claims 6, 16, and 26 under 35 U.S.C. § 103 as being unpatentable over Ackley in view of Frederick, Thomas, Wrappe, and Peck (US 2014/0155156 A1, published June 5, 2014); (iv) claims 8, 18, and 28 under 35 U.S.C. § 103 as being unpatentable over Ackley in view of Frederick, Thomas, and “Coolest Free Scavenger Hunt Ideas for Adults and Teens,” appearing at http://www.coolest- parties.com/free-scavenger-hunt-ideas.html (retrieved using Wayback Machine, retrieval date undetermined) (hereafter “Scavenger Hunt”); and (v) claim 33 under 35 U.S.C. § 103 as being unpatentable over Ackley in view of Frederick, Thomas, and Bleecher Snyder (US 2015/0094080 A1, published Apr. 2, 2015). ANALYSIS Claims 1–4, 9–14, 19–24, and 29–32--§ 103--Ackley/Frederick/Thomas The Examiner relies on Ackley as teaching several of the steps recited in claim 1, but that Ackley does not disclose presenting “a prompt to check- in the registered game participants to a game-point location associated with at least one of the plurality of beacon devices to initiate a quest of the geo- location quest game,” and then responsive to a response to the prompt, receiving instructions that initiate the quest by allowing user devices of game participants to receive quest tasks. Final Act. 2–3. The Examiner relies on Frederick as teaching these features, as will be discussed infra, and concludes that it would have been obvious to modify Ackley in view of Frederick in order to make the quest game more challenging and intriguing. Appeal 2020-004691 Application 14/139,681 4 Id. at 3–4. The Examiner finds that the combination of Ackley and Frederick does not specifically disclose tracking progress of registered game participants toward completing a first task of a plurality of different tasks, and relies on Thomas to provide this teaching. Id. at 4–5. The Examiner concludes that it would have been obvious to modify the Ackley/Frederick method to include progress tracking in order to apprise users of their progress and to aid in organizing the game. Id. at 5. The Examiner’s findings as to the Frederick disclosure identify Figure 4D, its elements 438, 440, 441, and 442, and paragraphs [0041]–[0043] and [0063]–[0066], as evidencing the presenting of a prompt to check in to a game-point location to initiate a quest of a geo-location game. Final Act. 3. As further explained by the Examiner, paragraph [0063], in particular, discloses a routine in which a user may receive a dynamic notification that may be based on the user’s location, and that the notification may advise the user to complete a task, with examples of a task being to check in at a particular location, or to play a game, as described in Figure 4D. Ans. 16. According to the Examiner, it would be understood from Frederick that a location-based notification may be sent, and “the notification may include checking-in to a particular location. Thus, Frederick discloses a prompt to check-in the registered game participants.” Id. at 16–17. Appellant maintains that triggering a notification (based on location) to complete a task does not correspond to the claim 1 limitation requiring “a prompt to check-in the registered game participants to a game-point location . . . to initiate a quest of the geo-location quest game.” Reply Br. 4. Appellant points out that the Examiner identifies an exemplary task in Frederick as “a prompt to go to the nearest grocery shop,” and asserts that Appeal 2020-004691 Application 14/139,681 5 such a task is not a prompt to check in registered game participants. Id. Appellant’s arguments fail to acknowledge that another exemplary task disclosed in Frederick, and mentioned by the Examiner, is to “check-in at a particular location.” See Ans. 16. Nonetheless, even with the disclosure that the task prompted in Frederick may be to check in at a location, the Examiner has not established how that check-in, which appears to complete and end the task, has the effect of initiating a quest of a geo-location quest game, as claimed, nor the ensuing receiving of quest tasks by registered game participants who have checked-in, as also required. Frederick mentions that an exemplary task may be the playing of a game, but that appears to be an alternative separate and apart from any check-in task. Frederick ¶ 63. The Examiner does not adequately explain how Frederick might be interpreted as disclosing a prompt to check in that results in an initiation of a geo-location quest game, or provide a claim construction analysis better evidencing that Frederick meets the claim limitations. We note briefly that, although Appellant presents arguments as to Thomas not disclosing the tracking of progress of game participants toward completing a first of a plurality of tasks (see App. Br. 10–16; Reply Br. 5– 8), the general teaching of Thomas to track progress toward completion of a quest is seen as buttressing and augmenting the teaching of tracking of progress of plural tasks (stages) already disclosed in Ackley. See, e.g., Ackley ¶ 25. For the reasons discussed above, we do not sustain the rejection of claim 1 as being unpatentable over Ackley, Frederick, and Thomas. Independent claims 11 and 21 are directed to a system and a non-transitory Appeal 2020-004691 Application 14/139,681 6 machine-readable storage medium, respectively, which require a memory or medium having instructions to perform essentially the same steps discussed above relative to the method of claim 1. Accordingly, the rejection is not sustained for those claims as well. Claims 2–4, 9, 10, 12–14, 19, 20, 22–24, and 29–32 each depend from one of claims 1, 11, and 21, and the rejection is also not sustained as to these claims. Claims 5, 7, 15, 17, 25, and 27--§ 103--Ackley/Frederick/Thomas/Wrappe The Examiner does not rely on Wrappe in any manner that remedies the deficiency of the combination of Ackley, Frederick, and Thomas discussed above. The rejection is not sustained. Claims 6, 16, and 26--§ 103--Ackley/Frederick/Thomas/Wrappe/Peck The Examiner does not rely on Wrappe and Peck in any manner that remedies the deficiency of the combination of Ackley, Frederick, and Thomas discussed above. The rejection is not sustained. Claims 8, 18, and 28--§ 103--Ackley/Frederick/Thomas/Scavenger Hunt The Examiner does not rely on Scavenger Hunt in any manner that remedies the deficiency of the combination of Ackley, Frederick, and Thomas discussed above. The rejection is not sustained. Claim 33--§ 103--Ackley/Frederick/Thomas/Bleecher Snyder The Examiner does not rely on Bleecher Snyder in any manner that remedies the deficiency of the combination of Ackley, Frederick, and Thomas discussed above. The rejection is not sustained. Appeal 2020-004691 Application 14/139,681 7 DECISION The rejection of claims 1–4, 9–14, 19–24, and 29–32 as being unpatentable over Ackley, Frederick, and Thomas, is reversed. The rejection of claims 5, 7, 15, 17, 25, and 27 as being unpatentable over Ackley, Frederick, Thomas, and Wrappe, is reversed. The rejection of claims 6, 16, and 26 as being unpatentable over Ackley, Frederick, Thomas, Wrappe, and Peck, is reversed. The rejection of claims 8, 18, and 28 as being unpatentable over Ackley, Frederick, Thomas, and Scavenger Hunt, is reversed. The rejection of claim 33 as being unpatentable over Ackley, Frederick, Thomas, and Bleecher Snyder is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1–4, 9– 14, 19– 24, 29–32 103 Ackley, Frederick, Thomas 1–4, 9– 14, 19– 24, 29–32 5, 7, 15, 17, 25, 27 103 Ackley, Frederick, Thomas, Wrappe 5, 7, 15, 17, 25, 27 6, 16, 26 103 Ackley, Frederick, Thomas, Wrappe, Peck 6, 16, 26 8, 18, 28 103 Ackley, Frederick, 8, 18, 28 Appeal 2020-004691 Application 14/139,681 8 Thomas, Scavenger Hunt 33 103 Ackley, Frederick, Thomas, Bleecher Snyder 33 Overall Outcome 1–33 REVERSED