Ex Parte Dawson et al

Patent Trial and Appeal Board

May 29, 2014

11679453 (P.T.A.B. May. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTOPHER J. DAWSON,
RICK A. HAMILTON, II, CLIFFORD A. PICKOVER,
and JAMES W. SEAMAN
____________

Appeal 2012-001398
Application 11/679,453
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-001398
Application 11/679,453

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-4, 6-11, 13-17, 19-23, 25, and 26. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

BACKGROUND
Appellants’ invention is directed to a method for monitoring the
virtual world user with respect to conduct (Spec. 2).
Claim 1 is illustrative:
1. A method for encouraging a virtual world user to perform
a conduct, the method comprising:
monitoring, with a computer device, the virtual world
user with respect to the conduct, wherein the conduct includes
viewing an advertisement that is external to the virtual world
user broadcasted within a virtual world; and
providing an infrastructural treatment to the virtual world
user based on an amount of the conduct performed by the
virtual world user.

Appellants appeal the following rejections:
Claims 1, 4, 6-11, 13-17, 19-23, 25, and 26 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement requirement.
Claims 1, 4, 6-11, 13-17, 19-23, 25, and 26 under 35 U.S.C. § 112,
second paragraph, as being indefinite.
Claims 1, 4, 6-11, 13-17, 19-23, 25, and 26 under 35 U.S.C. § 102(b)
as being anticipated by Kusumoto (US 2005/0216346 A1; pub. Sep. 29,
2005).

Appeal 2012-001398
Application 11/679,453

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ISSUES
Did the Examiner err in rejecting claims 1, 4, 6-11, 13-17, 19-23, 25,
and 26 under 35 U.S.C. § 112, first paragraph because it is clear from a
reading of the Specification what “providing an infrastructural treatment” is
meant to represent?
Did the Examiner err in rejecting claims 1, 4, 6-11, 13-17 and 19-26
under 35 U.S.C. § 112, second paragraph because the phrase “providing an
infrastructural treatment” to the virtual world user is clear when read in light
of the Specification?
Did the Examiner err in rejecting claim 1 under 35 U.S.C. § 102(b)
because Kusumoto does not disclose monitoring whether a specific user
views a specific external advertisement broadcasted in the virtual world?
Did the Examiner err in rejecting claim 2 under 35 U.S.C. § 102(b)
because Kusumoto does not disclose augmenting a score of a plurality of
advertisement provider-based scores associated with the virtual world based
on the amount of conduct performed by the virtual world user?

FACTUAL FINDINGS
We adopt the Examiner’s findings in regard to the prior art rejections
as our own. Ans. 6, 11-13.
Additional findings of fact may appear in the Analysis that follows.

Appeal 2012-001398
Application 11/679,453

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ANALYSIS
Enablement
Appellants argue that it is clear from a reading of the Specification
what “providing an infrastructural treatment” is meant to represent. The
Examiner has rejected the claims as failing to comply with the enablement
requirement.
The test for compliance with the enablement requirement in the first
paragraph of 35 U.S.C. § 112 is whether the disclosure, as filed, is
sufficiently complete to enable one of ordinary skill in the art to make and
use the claimed invention without undue experimentation. See In re Wands,
858 F.2d 731, 737 (Fed. Cir. 1988). “Enablement is not precluded by the
necessity for some experimentation . . . . However, experimentation needed
to practice the invention must not be undue experimentation. The key word
is “‘undue,’ not ‘experimentation.’” Id. at 736-37. To evaluate whether a
disclosure would require undue experimentation, the Federal Circuit has
adopted the following factors to be considered: (1) the quantity of
experimentation needed to make or use the invention based on the content of
the disclosure; (2) the amount of direction or guidance presented; (3) the
existence of working examples; (4) the nature of the invention; 5) the state
of the prior art; (6) the relative skill of those in the art; (7) the level of
predictability in the art; and (8) the breadth of the claims. See id. at 737.
The examiner's analysis must consider all the evidence related to each of
these factors, and any conclusion of nonenablement must be based on the
evidence as a whole. Id.

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Application 11/679,453

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The Examiner's findings that the term “infrastructural treatment” is
unknown in the technical, business, or virtual world is not sufficient to
establish non-enablement because these findings do not show that the
Examiner's analysis considered all of the evidence as to each of the pertinent
Wands factors. Thus, we do not sustain the Examiner's rejection of claims 1,
4, 6-11, 13-17 and 19-26 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement.

Indefiniteness
We will not sustain the Examiner’s rejection under 35 U.S.C. § 112,
second paragraph because we agree with the Appellants that the disclosure at
paragraph [0026] in the Specification makes it clear that infrastructure
treatment is any treatment provided by the virtual world server 14 with
respect to participation of the user in the virtual world space. The
Specification discloses many types of infrastructure treatment including an
entry into a virtual world space, change in animation speed, the appearance
of clothes on the avatar and the ability to modify the virtual world space.
We note that the test for definiteness under 35 U.S.C. § 112, second
paragraph, is whether “those skilled in the art would understand what is
claimed when the claim is read in light of the specification.” Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)
(citations omitted). In our view, when the words “infrastructure treatment”
is read in light of the Specification a person of ordinary skill in the art would
understand what is claimed.

Appeal 2012-001398
Application 11/679,453

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Anticipation
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that Kusumoto does not disclose monitoring whether a
specific user views a specific external advertisement broadcasted in the
virtual world. Appellants specifically argue that in Kusumoto the user is
rewarded for the avatar wearing the advertisement, not for the viewing of the
advertisement. We agree with the Examiner’s response to this argument
found on page 11 of the Answer. In this regard, we agree that the user does
“view” the avatar wearing the logo or advertisement and that the display on
the avatar of the logo is external to the virtual world user as broadly claimed.
In view of the forgoing, we will sustain the Examiner’s rejection of
claim 1. We will also sustain the rejection as it is directed to claims 3-4,
6-11, 13-17, 19-23, 25, and 26 because the Appellants have not argued the
separate patentability of these claims.
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that Kusumoto does not disclose augmenting a score
of a plurality of advertisement provider-based scores associated with the
virtual world based on the amount of conduct performed by the virtual world
user as recited in claim 2. We agree with the Examiner’s response to this
argument found on pages 12 to 13 of the Answer. Specifically, we agree
with the Examiner, and find that the disclosure in paragraph [0073] of
Kusumoto of increasing the size of the reward for time spent viewing an
advertisement is a disclosure of augmenting a score.
In view of the foregoing, we will sustain the rejection as it is directed
to claim 2.

Appeal 2012-001398
Application 11/679,453

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DECISION
We do not affirm the Examiner’s rejections under 35 U.S.C. § 112,
first and second paragraphs.
We affirm the Examiner’s rejection under 35 U.S.C. § 102(b).
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) (2011).

AFFIRMED

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