Ex Parte Gershfang et alDownload PDFPatent Trial and Appeal BoardMar 17, 201712628720 (P.T.A.B. Mar. 17, 2017) 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. 12/628,720 12/01/2009 Igor Y. Gershfang END920090015US1 6470 79980 7590 03/ Keohane & D'Alessandro 1881 Western Avenue Suite 180 Albany, NY 12203 EXAMINER NGUYEN, LE V ART UNIT PAPER NUMBER 2174 NOTIFICATION DATE DELIVERY MODE 03/21/2017 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): drubbone @ kdiplaw. com Docket @ 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 IGOR Y. GERSHFANG, RICK A. HAMILTON II, NEIL A. KATZ, JAMES W. SEAMAN, ADAM R. SNOPEK, and RICHARD YOUNG Appeal 2016-004430 Application 12/628,720 Technology Center 2100 Before CARL W. WHITEHEAD JR., JON M. JURGOVAN, and MICHAEL M. BARRY, Administrative Patent Judges. BARRY, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1—25. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the real party in interest as International Business Machines Corporation. App. Br. 1. Appeal 2016-004430 Application 12/628,720 Introduction Appellants state their claimed invention “relates generally to virtual universes and more specifically to informing users of a virtual universe of real world events.” Spec. 1. Claim 1 is representative: 1. A method for informing users of a virtual universe (VU) of real world events, comprising: receiving, from a real-world emergency notification service, an alert in the VU, the alert alerting to a real world emergency event, the VU including a computer-based virtual environment that a plurality of users access, the plurality of users interacting with the computer-based virtual environment and with others of the plurality of users within the computer- based virtual environment using avatars; identifying a plurality of VU users to which the alert pertains based on a current real world location of each of the plurality of VU users, wherein the current real world location is classified by location hierarchy; and informing all of the plurality of VU users that have been identified and currently have avatars that are online in the VU of the alert using an in-VU indicated preferred alert given within the virtual environment of the VU, the plurality of users located in two or more regions of the VU, wherein VU users who have not been identified are not informed. App. Br. 9 (Claims App’x). References and Rejection Claims 1—25 stand rejected under 35 U.S.C. § 103(a) as unpatentable in view of Dunko et al. (US 2011/0086711 Al; Apr. 14, 2011), Lutnick et al. (US 2010/0211431 Al; Aug. 19, 2010), Chaney et al. (US 2004/0225681 Al; Nov. 11, 2004), and Jerding et al. (US 2008/0046524 Al; Feb. 21, 2008). Final Act. 3—8. 2 Appeal 2016-004430 Application 12/628,720 ISSUE Based on Appellants’ arguments, the issue before us is whether the Examiner errs in rejecting claim 1. See App. Br. 5—8.2 ANALYSIS In arguing the Examiner errs, Appellants contend: the Examiner cites the appearance of a tornado to provide an alert in a passage of Dunko. However, the tornado in Dunko is not a real-world emergency, but rather, at best, a virtual emergency. Further, this tornado of Dunko does not signify to the user the presence of a real-world emergency, but rather is used in Dunko to indicate that a telephone call has been received on the device on which the user is running a game. App. Br. 6. This argument does not persuade us. Appellants’ argument addresses the Examiner’s mapping of the virtual tornado of Dunko (| 43) to claim 1 ’s “alert in the VU,” but it does not address that the Examiner finds that the HTML-based Emergency Alert System messaging of Jerding 9, 25) teaches claim 1 ’s requirement that the alert in the VU is of “from a real- world emergency notification service.” See Final Act. 3—5. One cannot show nonobviousness by attacking references individually when the rejection is based on a combination of references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). The relevant inquiry is whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. Id. Appellants do not persuasively explain how or why the Examiner errs in finding the combination of Dunko and Jerding teaches requirement of 2 Appellants argue that claims 2—25 are patentable for the same reasons as claim 1. 3 Appeal 2016-004430 Application 12/628,720 “receiving, from a real-world emergency notification service, an alert in the VU, the alert alerting to a real world emergency event,” as recited. See Final Act. 3—5. In rejecting claim 1, the Examiner cites Lutnick as teaching the recited requirement for “identifying a plurality of VU users to which the alert pertains based on a current real world location of each of the plurality of VU users.” Final Act. 4 (citing Lutnick || 279, 389). Appellants argue Lutnick teaches “at best, displaying promotions, such as advertisements in a virtual community.” App. Br. 7. Thus, Appellants argue, Lutnick fails to cure the deficiency of Dunko, and their combination fails to teach the requirement of “an alert of a real-world emergency in a multi-user environment.” Id. Appellants also assert that Lutnick “fails to teach or suggest alerts entirely.” Reply Br. 1. Appellants do not persuade us. An alert is simply “an urgent notice.” See www.merriam-webster.com/dictioiiary/alert (last accessed March 7, 2017). Appellants do not explain why Lutnick’s teaching of providing location-sensitive advertisements to mobile game players do not quality as alerts. See, e.g., Lutnick || 422—23. Furthermore, as discussed supra, the Examiner relies on Jerding for teaching that an alert may be “from a real-world emergency notification service.” See Final Act. 5. Appellants do not convince us the Examiner errs in finding Dunko teaches “an alert in the VU” (Dunko 143), Jerding teaches such an alert may be “from a real-world emergency notification service” (Jerding || 9, 25), and Lutnick teaches such alerts may sent be to a plurality of VU users in a multi-user environment (Lutnick || 279, 389). See Final Act. 3—5. 4 Appeal 2016-004430 Application 12/628,720 Regarding the Examiner’s reliance on Chaney, Appellants argue: neither the passage of Chaney cited by the Office nor any other of the passages in the references cited by the Office teach basing the informing of a user of an alert on whether the user has an avatar that is online in a VU, much less teaching that all such users are informed subject to their current real world location. App. Br. 7. This argument does not persuade us. Beyond simply asserting that nothing in the cited references teaches these requirements, Appellants do not explain how or why the Examiner errs in finding (a) the combination of Dunko and Lutnick teaches “informing all of the plurality of VU users that have been identified and currently have avatars that are online in the VU of the alert” and (b) Lutnick teaches identifying VU users “based on a current real world location of each of the plurality of VU users.” See Final Act. 3^4 (citing Dunko 146, Lutnick || 279, 389). In other words, Appellants’ arguments regarding Chaney are unpersuasive because the Examiner relies on Dunko and Lutnick for those requirements. Appellants further argue “the alert in the passage of Jerding cited by the Office is to a television. To this extent, Jerding fails to even contemplate the existence of a virtual universe, much less providing an alert of a real world emergency to the virtual universe.” App. Br. 7. This is unpersuasive. “A reference must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing and attempting to protect.” EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (emphasis omitted). We note Jerding discusses that its invention applies to multimedia messaging and to a variety of services other than conventional television, including to interactive services. See Jerding 5 Appeal 2016-004430 Application 12/628,720 2—3 (Field of Invention and Background). Appellants do not explain why an ordinarily skilled artisan would not understand the environment for participants of an interactive service, as described by Jerding, as a type of virtual universe. Finally, Appellants argue: With regard to the rejection as a whole, Applicants note that the Office’s rejection of independent claim 1 seeks to combine four different references to support its obviousness rejection. To this extent, Applicants submit that it is unfathomable how the Office can maintain its contention that there is motivation or suggestion in the references themselves or elsewhere to combine such diverse references. This is further accentuated by the fact that each of the references performs a vastly different task in a different environment. Accordingly, Applicants submit that the combinations that underlie the Office’s rejections are flawed. App. Br. 6—7. This argument does not persuade us. Appellants do not point to any evidence to explain why the combination would be “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art.” Leapfrog Enters. Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 418—19 (2007)). Nor have Appellants provided objective evidence of secondary considerations which our reviewing court guides “operates as a beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013). The Examiner’s findings for combining the teachings of the four references are reasonable because the skilled artisan would “be able to fit the teachings of multiple patents together like pieces of a puzzle” because the skilled artisan is “a person of ordinary creativity, not an automaton.” KSR, 6 Appeal 2016-004430 Application 12/628,720 550 U.S. at 420-21. We are persuaded that here, the claimed subject matter exemplifies the principle that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Id. at 416. Accordingly, we sustain the rejection of claim 1. As Appellants do not argue the patentability of claims 2—25 separately from claim 1, we also, accordingly, sustain their rejection. DECISION For the above reasons, we affirm the rejection of claims 1—25. No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation