Ex Parte Gershfang et al

Patent Trial and Appeal Board

Mar 17, 2017

12628720 (P.T.A.B. Mar. 17, 2017)

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.
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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.
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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.
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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
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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,
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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
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