Ex Parte Amidon et al

Patent Trial and Appeal Board

Sep 19, 2012

11768600 (P.T.A.B. Sep. 19, 2012)

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.
11/768,600 06/26/2007 Christopher Amidon 1104-229 3317
74548 7590 09/19/2012
FlashPoint Technology and Withrow & Terranova
100 Regency Forest Drive
Suite 160
Cary, NC 27518
EXAMINER
IOSIF, MARIO CINCINAT
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
09/19/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
___________________

Ex parte CHRISTOPHER AMIDON,
GREGORY M. EVANS, and
RICHARD WALSH1
____________________

Appeal 2011-003822
Application 11/768,600
Technology Center 3600
____________________
Before, ANTON W. FETTING, KEVIN F. TURNER, and
MICHAEL W. KIM, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE2
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 2, 4-20, and 23-32. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Qurio Holdings, Inc., is the real party in interest.
2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed June 8, 2010) and the Examiner’s Answer (“Ans.,” mailed August
30, 2010).
Appeal 2011-003822
Application No. 11/768,600

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THE INVENTION
Appellants’ disclosure relates to an advertising system and method for
targeting advertisements to users in a virtual world environment. (Abs.;
Spec. ¶ [0007].)
Claim 30, reproduced below, is illustrative of the claimed subject
matter:
30. An advertising device comprising:
memory; and
a processor associated with the memory, the processor adapted
to:
determine which devices associated with a plurality of users are
capable of joining a virtual world environment;
invite a user of the plurality of users having a device capable of
joining the virtual world environment to participate in a
collaborative virtual world environment;
render and distribute the collaborative virtual environment to an
invited user;
synchronize an advertisement with the collaborative virtual world
environment; and
execute the advertisement within the collaborative virtual world
environment as the invited user interacts with a media stream,
wherein the advertisement is played to the invited user within
the collaborative virtual world environment and the media
stream is separate from the collaborative virtual world
environment.
(Br., Claims Appendix 21-22.)

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Application No. 11/768,600

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PRIOR ART REJECTIONS
The prior art references relied upon by the Examiner in rejecting the
claims are:
Gupta 6,985,966 B1 Jan. 10, 2006
Robinson 2002/0113820 Al Aug. 22, 2002
Plotnick 2002/0184047 Al Dec. 5, 2002
Rovira 2003/0005439 Al Jan. 2, 2003
Fukushima 2004/0215568 Al Oct. 28, 2004
Kusumoto 2005/0216346 Al Sep. 29, 2005

The Examiner made the following rejections:
Claim 30 rejected under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.
Claims 2, 4, 5, 12, 14, 18, 20, 24, 26, and 30-32 rejected under 35
U.S.C. § 102(b) as being anticipated by Rovira.
Claims 4, 6, 10, 11, 13, 23, 25, and 27-29 rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Rovira and Kusumoto.
Claims 7-9 rejected under 35 U.S.C. § 103(a) as being unpatentable
over Rovira and Robinson.
Claims 15 and 16 rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rovira, Fukushima, and Kusumoto.
Claim 17 rejected under 35 U.S.C. § 103(a) as being unpatentable
over Rovira and Plotnick.
Claim 19 rejected under 35 U.S.C. § 103(a) as being unpatentable
over Rovira and Gupta.
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Application No. 11/768,600

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ISSUES3
Did the Examiner err in asserting that claim 30 fails to comply with
the written description requirement of 35 U.S.C. § 112, first paragraph? The
issue turns on whether the limitation wherein the “media stream is separate
from the collaborative virtual world environment” is adequately described
by the Specification.
Does Rovira disclose the step of “determining which devices
associated with a plurality of users are capable of joining a virtual world
environment,” as generally recited by independent claims 30 and 32 under
35 U.S.C. § 102(b)?

FINDINGS OF FACT
1. Appellants’ Specification states that “advertising environments are
referred to as shared or collaborative ‘virtual world environments’ and ads
are referred to as ‘virtual world advertisements.’ A ‘virtual world
advertisement’ is meant to include any advertisement wherein a virtual
world is rendered and one or more advertisements are placed in and/or
alongside the virtual world.” (¶ [0052].)
2. Appellants’ Specification describes that “virtual world
advertisements may be provided based on data included in a programming
stream. For example, video content may include embedded ad definition
data or other information that directs the computing device to obtain data

3 We have considered in this decision only those arguments that Appellants
actually raised in the Brief. Arguments which Appellants could have made
but chose not to make in the Brief are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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Application No. 11/768,600

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comprising a virtual world advertisement and present the virtual world
advertisement at an appropriate time.” (¶ [0048].)
3. Rovira is directed to a system that enables users to interact with a
three-dimensional user interface comprising a virtual reality media space.
(¶ [0022].)
4. Rovira describes that its Subscriber Television System (STS)
transmits and receives information with the Client Devices 130 in the 3D
Virtual Reality Media Space System 170 over the STS Transmission System
120. (¶ [0022].)
5. In one embodiment, Rovira states that “the Client Device 1130A
receives and interprets information from the STS Transmission System 120
regarding a 3D Virtual Reality Media Space System 170 communication and
in turn transmits user information regarding its user activity to the network.”
(¶ [0022].)

ANALYSIS
Claim 30 rejected under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.4
The Examiner rejected claim 30 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement
because the Examiner is unable to find support in Appellant’s Specification
for the limitation wherein the “media stream is separate from the
collaborative virtual world environment.” (Ans. 3-4.) Specifically, the

4 While the Examiner’s rejection under 35 U.S.C. § 112, first paragraph, is
limited to independent claim 30, we note that independent claim 32 shares
the same limitation at issue.
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Examiner asserts that Appellants’ disclosure fails to “justify calling the
feature of presenting streaming programs ‘separate’ as opposed to many
other features that may be present in the context of or be part of a virtual
world application that are not considered separate [sic].” (Ans. 10.)
In response, Appellants contend their Specification discloses that “a
virtual world environment may be rendered for use by a group of users while
all or some of the group is accessing a given media program (e.g., all are
watching a sporting event such as the Super Bowl).” (Br. 10.) More
specifically, Appellants state the Specification discloses that “[t]he state of
the shared virtual world may be persisted throughout the entire Super Bowl
or other designated media programs so that participating users can continue
to interact from one advertisement to the next.” (Br. 10; citing Spec.
¶ [0084].) We find Appellants’ contention to be persuasive.
In making this determination, we find that Appellants’ Specification
describes that video content may be embedded within the virtual world
advertisements which directs the computing device to obtain data
comprising a virtual world advertisement and present the virtual world
advertisement. (FF 2.) Based on the above, we agree with Appellants that
one of ordinary skill in the art would understand that the Specification
adequately provides support for a media stream that is separate, or as
Appellants contend, persists throughout a media program, from the
collaborative virtual world environment, which Appellants’ Specification
describes as one or more advertisements placed in and/or alongside the
virtual world. (FF 1.)
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Thus, we find Appellants’ Specification adequately supports and
sufficiently demonstrates that the inventors had possession of the limitation
wherein the “media stream is separate from the collaborative virtual world
environment.” Accordingly, we determine that the Examiner has failed to
demonstrate that use of the term “separate” in claim 30 is a new concept not
provided in the application’s disclosure, as originally filed, and as such, will
not sustain the Examiner’s rejection of claim 30 under 35 U.S.C. § 112, first
paragraph.

Claims 2, 4, 5, 12, 14, 18, 20, 24, 26, and 30-32 rejected under 35 U.S.C.
§ 102(b) as being anticipated by Rovira.
Independent claims 30 and 32
Appellants argue inter alia that Rovira fails to disclose the step of
“determining which devices associated with a plurality of users are capable
of joining a virtual world environment,” as generally recited by independent
claims 30 and 32. (Br. 12.) While Appellants acknowledge that Rovira’s
system enables users to experience a 3D virtual reality session, Appellants
assert that enabling a 3D virtual reality session does not necessarily disclose
“determining which devices associated with a plurality of users are capable
of joining a virtual world environment,” as presently claimed. (Br. 13-14.)
In response, the Examiner asserts that Rovira’s ability to “‘enable a
3D display’, means that the system of Rovira is making the determination of
recognizing such client devices and presentation system as 3D compatible
rendering devices in the context of the invention.” (Ans. 11.) We cannot
agree.
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While we agree with the Examiner that Rovira renders and distributes
a virtual environment to users, we cannot agree with the Examiner that
Rovira’s system discloses the step of “determining which devices associated
with a plurality of users are capable of joining a virtual world environment,”
as presently claimed. In making this determination, we find that Rovira
discloses a Subscriber Television System (STS) which transmits and
receives information with client devices to enable a 3D virtual reality media
space. (FF 3, 4.) While Rovira does disclose that its client devices transmit
user information regarding user activity back to the STS (FF 5), we do not
find that this bi-directional communication discloses or would necessarily
imply that a determination has been made as to whether users are capable of
joining the virtual world environment, as expressly required by the language
of independent claims 30 and 32. It may well be that the system in Rovira is
making a comparable determination, as found by the Examiner (Ans. 11),
but Rovira fails to disclose the same so that it can anticipate those claims.
Accordingly, we cannot sustain the Examiner rejection of independent
claims 30 and 32 under 35 U.S.C. § 102(b) as anticipated by Rovira. For the
same reason, we cannot sustain the additional rejections of claims 2, 4-20,
23-29, and 31, which depend from claims 30 and 32, respectively.

CONCLUSIONS
We conclude that the Examiner erred in asserting that claim 30 fails to
comply with the written description requirement of 35 U.S.C. § 112, first
paragraph.
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Application No. 11/768,600

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We conclude that Rovira fails to disclose the step of “determining
which devices associated with a plurality of users are capable of joining a
virtual world environment,” as generally recited by independent claims 30
and 32 under 35 U.S.C. § 102(b).

DECISION
We reverse the Examiner’s rejection of claims 2, 4-20, and 23-32.

REVERSED