Ex Parte Hamilton et al

Patent Trial and Appeal Board

Aug 7, 2017

13893129 (P.T.A.B. Aug. 7, 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.
13/893,129 05/13/2013 Rick A. Hamilton II 45LY-214626 5638
29484 7590
Novel IP
191 West Second Street
Santa Ana, CA 92701
08/09/2017 EXAMINER
FILIPCZYK, MARCIN R
ART UNIT PAPER NUMBER
2158
NOTIFICATION DATE DELIVERY MODE
08/09/2017 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):
hazim @ no velip. com
sona @ no velip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICK A. HAMILTON II, JAMES R. KOZLOSKI,
BRIAN M. O’CONNELL, CLIFFORD A. PICKOVER,
JAMES W. SEAMAN, and KEITH R. WALKER
Appeal 2016-007931
Application 13/893,1291
Technology Center 2100
Before MAHSHID D. SAADAT, KRISTEN L. DROESCH, and
CARL L. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 3—5, 7—9, and 11—14,2 which constitute all the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as Activision Publishing, Inc. Br. 2.
2 Dependent claims 13 and 14 are not included in the statement of the
rejection and the Office Action Summary (Form PTOL-326), however, it is
clear these claims are rejected because claims 13 and 14 are substantively
addressed in the body of the rejection. Br. 1, n. 1; Final Act. 6—7.
Appeal 2016-007931
Application 13/893,129
STATEMENT OF THE CASE
Appellants’ invention relates to a virtual universe wishlist. Abstract;
Spec. 3, 6. Claim 1 is exemplary of the subject matter on appeal
(emphasis added):
1. A method of providing wish-list-based notifications for objects
corresponding to virtual items of a virtual universe, the method being
implemented by a computer system that includes one or more physical
processors executing one or more computer program instructions
which, when executed, perform the method, the method comprising:
detecting, by the computer system, a selection of an object by a
user of a virtual universe, wherein the object corresponds to a virtual
item of the virtual universe, the virtual universe comprises a three-
dimensional computer simulated environment including a plurality of
avatars corresponding to a plurality of users, the user is represented by
an avatar in the virtual universe, and the selection indicates an
affirmative desire by the user for the object;
designating, by the computer system, the object in a wish list
for the user in response to the detection of the selection, wherein the
wish list includes information relating to the object desired by the
user; and
providing, by the computer system, to one or more entities
other than the user or the avatar representing the user, a notification in
response to the designation of the object in the wish list, wherein the
notification provided to the one or more entities comprises: (i) an
indication of the affirmative desire by the user for the object; and (ii)
a mechanism that enables the one or more entities to purchase the
object on behalf of the user.
Br. 13 (Claims Appendix).
2
Appeal 2016-007931
Application 13/893,129
REJECTION3
Claims 1, 3—5, 7—9, and 11—14 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Farmer et al. (US 6,476,830
Bl; iss. Nov. 5, 2002) (“Farmer”), Arora et al. (US 2007/0150368 Al; iss.
June 28, 2007) (“Arora”), and Ruiz-Velasco et al. (US 8,239,769 B2; iss.
Aug. 7, 2012) (“Ruiz”). Final Act. 3—7.
ANAFYSIS
Appellants argue the Examiner errs in finding Farmer teaches the
claim 1 limitation “detecting ... a selection of an object by a user of a
virtual universe” . . . “wherein ‘the selection indicates an affirmative desire
by the user for the object.” Br. 6—7 (emphasis added) (citing Farmer 54:22—
46, Table 65, 56:50-56). According to Appellants, “[t]he mere browsing of
items of a virtual vending machine by an avatar, however, does not indicate
an affirmative desire by the avatar for those items” and “an avatar (or the
corresponding user) would not necessarily desire every vending machine
item that the avatar views.” Br. 7.
Appellants argue the Examiner errs by finding Arora teaches that a
user of a shopping environment may select items of interest to be added to
3 Claim 8 is subject to objection as a system claim depending from a method
claim. Final Act. 2. See footnote 2, supra, regarding dependent claims 13
and 14.
3
Appeal 2016-007931
Application 13/893,129
the user’s favorite list and concluding it would be obvious to modify Farmer
with Arora’s teaching:
With regard to the proposed modification, the Examiner
relies on Farmer’s teaching that an avatar may store virtual items
owned by the avatar in the avatar’s pocket, along with Arora’s
teaching that a user of a shopping environment may select items
of interest to be added to the user’s favorite list. The Examiner
then erroneously concludes that it would be obvious to modify
an avatar’s pocket (in Farmer) so that it can store desired items
in addition to purchased items. This justification is not viable for
the simple reason that it would allow avatars in Farmer’s system
to place items in their pockets that they have not purchased, or
otherwise have no rights to possess. There is no basis in either
Farmer or Arora for allowing avatars in Farmer’s system to
perform such an action, nor has the Examiner provided one.
Further, common sense dictates that users in the real world
should not be able to place items in their pockets that they have
not purchased (when shopping/buying items), and the Examiner
has failed to provide any support for why an avatar in a virtual
world would be able to do the same.
Br. 8.
Appellants also argue the Examiner errs in finding Farmer teaches the
claim 1 limitation “providing ... to one or more entities other than the user
or the avatar representing the user, a notification in response to the
designation of the object in the wish list.” Id. According to Appellants, the
‘“view next’” item of Farmer which enables others to watch an avatar
browsing does not constitute “‘providing a notification.’” Id. at 9.
Appellants further argue the Examiner errs in finding the combination of
Farmer, Arora, and Ruiz teaches that the “notification” includes “(ii) a
mechanism that enables the one or more entities to purchase the object on
behalf of the user.” Id. (emphasis omitted).
4
Appeal 2016-007931
Application 13/893,129
The Examiner finds the combination of Farmer, Arora, and Ruiz
teaches the claim 1 limitations. Final Act. 3—5. In particular, the Examiner
finds Farmer teaches much of the virtual universe limitations and relies on
Arora’s teaching of a wishlist and Ruiz’s teaching of a mechanism that
enables the entities to purchase the object on behalf of the user. Id. (citing
Farmer Figs. 1, 2; 54:22—65 and Table 65, 8:33—43; 25:57 to 26:4; Arora
29, 39; Ruiz Fig. 3,11:22—58). The Examiner further finds the term
“affirmative desire” is not defined in the Specification and interprets the
term as “showing desire for an item.” Ans. 2.
Applying this interpretation, the Examiner finds, and we agree,
Farmer teaches showing desire for an item by inquiring about the item and
notifying others about the item. Ans. 2. In particular, Farmer teaches a
selection of options with regard to the item, for example, “walk to,” “view
next item,” “buy this item,” “tell me about,” and/or “adding the item to the
avatars pocket and sending a message to the avatar’s neighbors to have the
avatar place the item/object in his pocket.” Id. at 2—3 (citing Farmer 26:1—3,
cols. 54—56).
Appellants do not present persuasive argument that the claim terms
should be limited to exclude the teachings of Farmer, Arora, and Ruiz and
present no persuasive argument that the Examiner’s findings and claim
interpretations are unreasonable or overbroad. Claim terms in a patent
application are given the broadest reasonable interpretation consistent with
5
Appeal 2016-007931
Application 13/893,129
the specification, as understood by one of ordinary skill in the art. In re
Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).
Regarding Appellants’ argument that the Farmer/Arora modification
is improper, the Examiner finds the modification enables Farmer items being
selected and added to a bag or favorites prior to purchase. Ans. 3 (citing
Farmer 26:1—3). Regarding motivation to combine, the Examiner finds:
the combination of Farmer/Arora works and is logical because it
improves communication between avatars and encourages
trade/bargaining for items in the favorites list (col. 68, lines 50-
60, Farmer). Farmer’s items are selected in Arora’s bag and are
used for economic development (col. 68, lines 50-60, Farmer).
Farmer’s desired items in Arora’s bag read on the claimed
Avatar’s desired object in a wishlist.
Ans. 3 (citing also Final Act. 4).
Regarding “notification,” the Examiner finds, in addition to Farmer’s
“view next” providing to other users desired items, Farmer teaches “adding
an item to the avatar’s pocket and sending a message, to the avatar’s
neighbors to have the avatar place the item/object in his pocket.” Ans. 4
(citing Farmer 26:1—3).
Regarding “a mechanism that enables the one or more entities to
purchase the object on behalf of the user,” the Examiner finds the
Specification provides no definition for “mechanism” and “instead permits
broad interpretation” and is interpreted as “to enable or be capable of.” Ans.
5 (citing Spec. 1 59, “any mechanism”). Similarly, regarding “enables the
one or more entities to purchase the object on behalf of the user,” the
Examiner finds the only relevant portion of supporting disclosure is claim 1,
6
Appeal 2016-007931
Application 13/893,129
which incorporates the limitations of dependent claim 3, now cancelled.
Ans. 5 (citing also claims 7 and 11).
Applying a broad but reasonable interpretation, we agree with the
Examiner’s claim interpretation and finding that Ruiz teaches a mechanism
to purchase an object on behalf of a user in an avatar environment. Ans. 5
(citing Ruiz Fig. 3; 11:22—58). In re Crish, 393 F.3d at 1256.
We agree the combination of the teachings of Farmer, Arora, and Ruiz
teaches the claim 1 limitations. Appellants interpret the teachings of the
cited references unreasonably narrowly.
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F.2d413, 425 (CCPA 1981).
As stated by the Supreme Court, the Examiner’s obviousness rejection
must be based on:
“[Sjome articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness” .... [Hjowever,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
7
Appeal 2016-007931
Application 13/893,129
The Examiner’s findings are reasonable because the skilled artisan
would “be able to fit the teachings of multiple patents together like pieces of
a puzzle” since the skilled artisan is “a person of ordinary creativity, not an
automaton.” KSR, 550 U.S. at 420-21.
On this record, Appellants do not present sufficient or persuasive
evidence that the combination of the cited references was “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, 550 U.S. at 419-21).
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 & Powder Sys.,
Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
In view of the above, we sustain the rejection of claim 1, and
independent claims 5 and 9, which are argued together with claim 1. We
also sustain the rejection of dependent claims 3, 4, 7, 8, and 11—14 as these
claims are not argued separately. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
We affirm the Examiner’s decision rejecting claims 1, 3—5, 7—9, and
11-14.
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)(l)(iv).
AFFIRMED
8