Ex Parte Hamilton et al

Patent Trial and Appeal BoardAug 8, 2016

12174805 (P.T.A.B. Aug. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/174,805 07/17/2008 Rick A. HAMILTON II 46583 7590 08/10/2016 Roberts Mlotkowski Safran Cole & Calderon, P.C. Intellectual Property Department P.O. Box 10064 MCLEAN, VA 22102-8064 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 ATTORNEY DOCKET NO. CONFIRMATION NO. END920070266US 1 9428 EXAMINER VAN BRAMER, JOHN W ART UNIT PAPER NUMBER 3622 NOTIFICATION DATE DELIVERY MODE 08/10/2016 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): docketing@rmsc2.com lgallaugher@rmsc2.com dbeltran@rmsc2.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICK A. HAMIL TON II, JENNY S. LI, CLIFFORD A. PICKOVER, and ANNE R. SAND Appeal2013-001784 Application 12/174,8051 Technology Center 3600 Before, MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and TARA L. HUTCHINGS, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. Â§ 134 of the Examiner's final rejection of claims 1-26. We have jurisdiction under 35 U.S.C. Â§ 6(b). SUMMARY OF DECISION We AFFIRM. 1 Appellants identify International Business Machines Corp. as the real party in interest. Appeal Br. 2. Appeal2013-001784 Application 12/174,805 Claim 1 reproduced below, is representative of the subject matter on appeal. 1. A method implemented in a computer infrastructure having computer executable code, comprising: generating one or more ad-avatars in a virtual universe (VU); monitoring information from the VU; and directing the one or more ad- avatars to perform one or more viral advertisements in the VU based on the information. THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Brush, II 5,884,029 March 16, 1999 The following rejection is before us for review. Claims 1-26 are rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Brush. FINDINGS OF FACT 1. We adopt the Examiner's findings as set forth on pages 2-26 of the Final Action dated 2/03/2012 and those set forth on pages 2-11 of the Answer. 2. The Specification defines viral marketing as "a technique that encourages users to pass along, e.g., a marketing message to create a 'buzz' about a product or service." Spec. i-f 14. 2 Appeal2013-001784 Application 12/174,805 3. The Examiner found that Brush discloses directing "one or more ad- avatars to perform one or more viral advertisements in the virtual universe" finding: Paragraph [0017] of the Appellants' specification provides an example of a viral ad as "ad-avatars in locations and times within the VU," (Virtual Universe) "where the advertiser believes those ads will be most effective". Paragraph [0036], indicates that a viral advertisement can be an advertisement based upon real-time information from conversations, the environment, or other avatar attributes, the advertisement can be as esoteric as asking an avatar if they would be interested in seeing a new dance move learned at a club. Brush discloses the ability to generate avatars that can perform various tasks either by having all of the interactions performed directly by the users of the avatars (Column 4, lines 53-67) or by having the avatar respond to external stimulus based on a preprogrammed set of responses (Column 5, lines 1- 17). Some of these avatars are ad-avatars (salesperson avatars) since they interact with customers that enters an establishment (Column 7, lines 6-43). Therefore, Brush has disclosed "generating one or more ad-avatars in a virtual universe". Furthermore, Brush discloses in at least Column 7, lines 6-43 that when an avatar enters the store, his presence is detected and based upon this detection, the salesperson avatar collects the outwardly observable characteristics of the potential customer avatar and uses this information to choose a sales pitch geared towards the customer avatar. The cited section also discloses the ability of the salesperson avatar to change this approach based upon reactions of the customer avatar. Thus, Brush has disclosed "monitoring information from the virtual universe". Finally, Brush discloses in Column 8, line 61 through Column 9, line 18 that the ad-avatar performs an advertisement in the virtual universe based on the monitoring, when it is disclosed that the salesperson, not having what the customer has asked for (large, green, plaid, long-sleeve oxford), advertises that they do have an alternate product (large, blue, plaid, long-sleeve oxford). 3 Appeal2013-001784 Application 12/174,805 Thus, the only question is, is the performance of the advertisement taught by Brush, "one or more viral advertisements". The appellant specification in paragraph [0057] discloses that "the ad-avatar control tool queries the ad- avatar database to retrieve automated ad-avatars and scripts for a target customer market, the ad-avatar control tool selects one or more VUs and/or one or more locations in the VUs and scripts based on the ad-avatar's target customer market, or audience, and current population of potential customer avatars. The ad-avatar control tool places the one or more automated avatars in a location within the virtual universe and load scripts so that the one or more ad-avatars are able to begin e.g. a conversation. The ad-avatar control tool directs one or more ad-avatars to begin the "viral advertisement" e.g. execute the script. The script for example, may be a combination of words, gestures, and/ or appearances. Thus, it is clear that the specification discloses that a script, that is a combination of words, gestures, and/ or appearances to be a "viral advertisement". The Paragraph [0017] of the appellant's specification provides an example of a viral ad as "ad-avatars in locations and times within the VU," (Virtual Universe) "where the advertiser believes those ads will be most effective". Thus a viral advertisement appears to be an advertisement presented in a specific location and time as a script that the advertiser believes will be effective for presenting the advertisement. The appellant also discloses in paragraph [0036] an example in which a [sic] an ad-avatar monitors its environment and then begins or customizes a viral advertisement merely by detecting a conversation about dance clubs and inquiring whether those potential customers would like to see a dance move learned at dance club XYZ. It is clear that this type of viral advertisement is merely an advertisement for XYZ dance club, just as the "oxford" of Brush is advertised based upon a conversation about a different type of "oxford". Brush clearly discloses these types of "viral advertisement" in at least Column 7, lines 6-43 and Column 8, line 61 through Column 9, line 18. Therefore, the prior art of Brush discloses each and every limitation of claims 1, 17, 23, and 24 as currently written. Ans. 4---6. 4 Appeal2013-001784 Application 12/174,805 4. Brush discloses "[i]n FIG. 7B, the customer walks into the department store (703) tripping the sensor. The salesperson avatar is instantiated and approaches the customer avatar (705), to within his four foot preprogrammed radius, saying, 'Hello, may I help you?' (707)." Brush, Col. 8, 11. 61---65. 5. Brush discloses The salesperson avatar will collect the outwardly observable characteristics of the potential customer avatar and pursue a course of action based on the conclusions drawn from the outwardly observable characteristics. In this example, the salesperson detects that the potential customer is an older middle-class male customer. This can be deduced from clothing choice, hair color or any other physical traits. Based on the salesperson avatar's programming, it will approach the potential customer avatar with a predetermined sales pitch for older males. Brush, Col. 7, ll.12-22. ANALYSIS 35 U.S.C. Â§ 102 REJECTION Appellants' arguments against each of independent claims 1, 1 7, 23, and 24 are based on perceived deficiencies of Brush. Inasmuch as Appellants raise the same issues with respect to each of these independent claims, we discuss them together, addressing each of Appellants' arguments in tum. Appellants argue, However, contrary to the claimed invention, Brush says nothing about encouraging users to spread a marketing message to other users about a product or service. Instead, the salesperson avatar interacts with a customer avatar to sell items in a virtual store. For instance, in response to the customer 5 Appeal2013-001784 Application 12/174,805 avatar's question, the salesperson avatar may provide a price. However, providing pricing information about items in a store cannot reasonably be considered encouraging a user to pass along a marketing message about a product or service. Instead, the pricing information is part of an offer to sell an item to a particular customer avatar. (Brush, col. 8, lines 33-55.) (Appeal Br. 6, emphasis omitted). The Examiner however found, inter alia, Brush discloses in Column 8, line 61 through Column 9, line 18 that the ad-avatar performs an advertisement in the virtual universe based on the monitoring, when it is disclosed that the salesperson, not having what the customer has asked for (large, green, plaid, long-sleeve oxford), advertises that they do have an alternate product (large, blue, plaid, long-sleeve oxford) . . . .. The ad-avatar control tool directs one or more ad-avatars to begin the "viral advertisement" e.g. execute the script. The script for example, may be a combination of words, gestures, and/or appearances. Thus, it is clear that the specification discloses that a script, that is a combination of words, gestures, and/ or appearances to be a "viral advertisement". (FF. 2). We agree with the Examiner. As found supra, the Examiner found that Brush discloses in Column 8, line 61 through Column 9, line 18 that the ad-avatar performs an advertisement in the virtual universe based on the monitoring. (FF. 4, 5). Appellants dispute the content of what the sales avatar says is not a viral advertisement. (Appeal Br. 5-9.) The claim requires directing one or more ad-avatars to perform one or more viral advertisements in the VU based on the monitoring information. The 6 Appeal2013-001784 Application 12/174,805 Specification defines viral marketing as "a technique that encourages users to pass along, e.g., a marketing message to create a 'buzz' about a product or service." (FF. 2). Thus, the claim requires that the content of the advertisement encourage users to pass along, e.g., a marketing message, to create a "buzz" about a product or service. (FF. 2). We find that the sales avatar in Brush does this. That is, we find that the sales avatar's response to the customer avatar of, "we have a large, blue, plaid, long-sleeve oxford," constitutes a viral statement. This is because we find that the claimed viral advertisement only subjectively requires encouraging others to react in a specified way, and thus, is in essence, intelligible only to the human mind. In other words, that which encourages in the mind of one person to act, cannot be said to be the same as that which encourages in the same thing in the mind of another. As such, we find that the content of a viral advertisement is non-functional descriptive material. "[N]on-functional descriptive material, being useful and intelligible only to the human mind, is given no patentable weight." Ex parte Graf, Appeal 2012-003941, 2013 WL 3873066 at *4 (PTAB July 23, 2013) (non- precedential) (citing In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)), affirmed, In re Graf, 585 Fed. Appx. 1012 (Fed. Cir. 2014) (non- precedential). Appellants also argue that "sales communications do not constitute advertising, when the term 'advertising' is given its ordinary meaning that would be understood by one of ordinary skill in the art." (Appeal Br. 9). But, Appellants cite to a definition of advertising which suggests otherwise stating, "[t]he activity of attracting public attention to a product or business, as by paid announcements in the print, broadcast, or electronic media." Id. We find that the communications by the sales person avatar in Brush as cited 7 Appeal2013-001784 Application 12/174,805 by the Examiner in columns 8-9 is advertising because unique features such as sensing comfort zones and adjusting the sales approach in the context of a sales person computer animation, ultimately attracts attention to the shirt trying to be sold, namely, a large blue plaid long sleeve oxford. Alternatively, we agree with the Examiner that, content aside, the look and feel of the sales experience in Brush is itself a viral advertisement (FF. 3) because an interactive sales presentation by a computer generated sales person could inherently encourage others to watch the script. We also affirm the rejections of dependent claims 2, 4--9, 12-16, and 18-22 since Appellants have not challenged such with any reasonable specificity (see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)). Dependent claim 3. The claim requires "one or more reactive ad-avatars perform a script among themselves without initiating a dialog with one or more potential customer avatars." Appellants argue that, "Brush does not disclose salesperson avatars interacting among themselves. (Appeal Br. 12, emphasis omitted). We are not persuaded by Appellants' argument because the claim allows for "one" ad-avatar to perform the script. This effectively makes the claim requirement satisfied by the talking lone sales person avatar in Brush. (FF. 3). Claims 10 and 26. We are not persuaded by Appellants' argument that in Brush " ... the salesperson avatar is instantiated based on the user's entry to a store and not based on the 'detecting one or more topics related to conversations"', (Appeal Br. 13) because the claim does not require that the salesperson avatar be instantiated based on detecting one or more topics related to 8 Appeal2013-001784 Application 12/174,805 conversations as argued by Appellants. All the claim requires is that the ad avatar be inserted to perform the related script. Brush discloses this feature by tying a script to the ad avatar based on the perceived physical appearance of the avatar customer. (FF. 5). Concerning claim 26 we find that it is inherent that each customized script is correspondingly driven by targeted attributes of a customer stored in a database for retrieval when the customer attributes are detected. Claim 11. We disagree with the Appellants that "Brush is silent with regard to a 'crowd,"' as recited in claim 11. (Appeal Br. 14 ). The Examiner found that Brush discloses a crowd of potential avatar customers at "(Col 5, line 18 through Col 6, line 13; Col 6, line 57 through Col 7, line 50; Col 7, line 56 through Col 8, line 14; Col 8, line 32 through Col 9, line 17) .... " (Final Act. 6). We agree with the Examiner because Brush discloses controllable reactions of the ad avatar to react "if in a small group situation and a third way if in a large group." Brush, Col. 7, 11. 2-3. Claim 25 Appellants' arguments to claim 25 merely recite language which is set forth in claim 25. A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim. 37 C.F.R. Â§ 41.37(c)(l)(iv) (2015). Notwithstanding, as found supra, we find that the claimed aspect of encouraging VU users to pass along marketing messages about the product or the service, constitutes nonfunctional descriptive material in that the subject matter is useful and intelligible only to the human mind. Ex parte Graf, Appeal 2012-003941, 2013 WL 3873066 at *4 (PTAB July 23, 2013) (non-precedential) (citing In 9 Appeal2013-001784 Application 12/174,805 re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)), affirmed, In re Graf, 585 Fed. Appx. 1012 (Fed. Cir. 2014) (non-precedential). CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 1-26 under 35 U.S.C. Â§ 103(a). DECISION The decision of the Examiner to reject claims 1-26 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED. 10