Ex Parte HAMILTON et al

Patent Trials and Appeals Board

Apr 16, 2019

12176590 - (D) (P.T.A.B. Apr. 16, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/176,590 07/21/2008 Rick A. HAMILTON II
46583 7590 04/18/2019
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.
END920070265US 1 2900
EXAMINER
SORKOWITZ, DANIEL M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
04/18/2019 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
lga11augher@rmsc2.com
secretaries@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, BRIAN M. O'CONNELL,
CLIFFORD A. PICKOVER, and KEITH R. WALKER
Appeal2017-008041
Application 12/176,590
Technology Center 3600
Before JEAN R. HOMERE, JON M. JURGOV AN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1--4, 6-16, and 18-29, constituting all claims
currently pending in the application. App. Br. 1. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 International Business Machines Corporation is identified as the real party
in interest. App. Br. 2.
Appeal2017-008041
Application 12/176,590
STATEMENT OF THE CASE
According to Appellants, the claimed subject matter relates to
advertising systems and methods for virtual universes. Spec. ,r 1. Claims 1,
16, 22, and 24 are independent, reciting a method, system, computer
program product, and method, respectively. Claim 1, reproduced below, is
representative of the claimed subject matter:
1. A method implemented in a computer infrastructure
having computer executable code, comprising:
receiving one or more bids for one or more dynamic
product placement advertisements on one or more objects in a
virtual universe (VU);
performing a bid resolution for the one or more received
bids, the one or more bids comprising one or more advertiser
restrictions which restrict the one or more bids from being used
in the performing of the bid resolution for the one or more
objects being viewed by less than a minimum number of
avatars for a minimum period of time and for a number of
potential avatar viewers which is less than a minimum number
of potential avatar viewers in a region of the one or more
objects, and a teleport location universally unique identifier of a
location to be teleported corresponding to a set of positional
coordinates within the VU; and
rendering an object in the VU as a product placement
advertisement by replacing a default texture of the object with a
product placement texture based on the bid resolution, the
object being controllable by one or more avatars in the VU,
wherein the one or more bids further comprises an
additional payment per teleport amount which one or more
advertisers pay for the one or more avatars selecting the object
with the product placement texture and requesting to teleport to
the teleport location universally unique identifier of the location
2
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Application 12/176,590
to be teleported corresponding to the set of positional
coordinates within the VU. 2
REJECTIONS
Claims 1--4, 6-16, and 18-29 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to patent-ineligible subject matter.
Final Act. 2-5.
Claims 1--4, 6, 7, 10-16, 18-20, and 22-28 stand rejected under
35 U.S.C. § I03(a) as being unpatentable over the combination of Gettman
et al. (US 2005/0022139 Al; published Jan. 27, 2005) ("Gettman") and
Maharajh et al. (US 2008/0201225 Al; published Aug. 21, 2008)
("Maharajh"). Final Act. 5-17.
Claim 8 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Gettman, Maharajh, and Amidon et al.
(US 2008/0306817 Al; published Dec. 11, 2008) ("Amidon"). Final Act.
17-19.
Claims 9 and 21 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Gettman, Maharajh, Amidon, and
Pisaris-Henderson et al. (US 2006/0190336 Al; published Aug. 24, 2006)
("Pisaris"). Final Act. 19-23.
Claim 29 stands rejected under 35 U.S.C. § 103 (a) as being
unpatentable over the combination of Gettman, Maharajh, and Singh et al.
2 In the event of further prosecution, the Examiner may want to consider
whether the limitation "wherein the one or more bids further comprises ...
requesting to teleport to the teleport location universally unique identifier of
the location to be teleported corresponding to the set of positional
coordinates within the VU" is deficient under 35 U.S.C. ,r 112.
3
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Application 12/176,590
(US 2006/0247981 Al; published Nov. 2, 2006) ("Singh"). Final Act. 23-
24.
ANALYSIS
35 USC§ 101 Rejections
Independent claims 1, 16, 22, and 24
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk . . . . ").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)).
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If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 ("Memorandum").
Under that guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
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( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum, 84 Fed. Reg. at 52-57.
USPTO Memorandum, Step 2A, Prong 1
Under the first step in the Alice/Mayo framework, the Examiner
determines the claims are directed to sales and marketing behavior,
specifically, advertising and payments over communications networks and
economic practices in which monetary transactions between people are
managed, which is an abstract idea. Final Act. 3--4.
Appellants argue "the claimed invention recites requesting to teleport
to the teleport location universally unique identifier of a location
corresponding to a set of positional coordinates within the VU, which is
different from just displaying an advertisement in exchange for access to
copyrighted material," so "there is no correspondence between the claimed
invention and Ultramercial." App. Br. 7 (citing Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709 (Fed. Cir. 2014)). Appellants further argue the Examiner
has oversimplified the claims. App. Br. 8.
We are not persuaded by Appellants' arguments and agree with the
Examiner that the claims recite the abstract idea of advertising and
marketing, which are certain methods of organizing human activity. See
Memorandum, 84 Fed. Reg. at 52. Appellants' Specification describes that
on-line virtual universes and environments "provide a wide open arena for
creative and new advertising methods and mechanisms." Spec. ,r 5.
Appellants explain "[ o ]ne form of virtual universe advertising includes the
display of billboards that are rendered on a user's (or client's) screen."
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Spec. ,r 5. Appellants describe the use of product placement, where
marketers use a real commercial product for a cost in fictional or non-
fictional media. Spec. ,r 6. Appellants state that "[ s ]tatic product placement
is placing a product within a virtual universe for purposes of advertising for
a fixed cost, and all viewers of that scene see the same product." Spec. ,r 6.
According to Appellants, "[ c ]urrent methods of static product placement in a
virtual universe do not exploit the mechanisms within a virtual universe to
deliver maximum profitability and flexibility." Spec. ,r 6. Appellants'
invention allows an advertiser to bid for dynamic product placement
advertisements. Spec. ,r 16.
Independent claim 1 recites (1) receiving one or more bids for one or
more dynamic product placement advertisements, (2) performing a bid
resolution for the one or more received bids, and (3) rendering an object in
the VU as a product placement advertisement. App. Br. 43. Claim 1 also
cites that the bids further comprise various information, such as one or more
advertiser restrictions, a teleport location, additional payment per teleport
amount, and request to teleport. App. Br. 43. Claims 16, 22, and 24 recite
similar limitations. App. Br. 46-49. These steps comprise receiving a bid
for an advertisement, performing a bid resolution ( e.g., selecting an
advertisement), and rendering an object in the VU as a product placement
advertisement (e.g., displaying the advertisement). As a whole, the claim
recites a commercial interaction ( advertising or marketing activities), which
falls under the abstract idea of "certain methods of organizing human
activity" under the guidelines in the Memorandum. See Memorandum, 84
Fed. Reg. at 52; see Ultramercial, 772 F.3d at 714 (using advertising as an
exchange or currency is an abstract idea).
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USPTO Memorandum, Step 2A, Prong 2
In determining whether the claims are "directed to" the identified
abstract idea, we next consider whether the claims recite additional elements
that integrate the judicial exception into a practical application. 3 We discern
no additional element ( or combination of elements) recited in the claims that
integrates the judicial exception into a practical application. See
Memorandum, 84 Fed. Reg. at 54--55.
Appellants argue additional elements, such as
performing a bid resolution for the one or more received bids,
the one or more bids comprising one or more advertiser
restrictions which restrict the one or more bids from being used
in the performing of the bid resolution for the one or more
objects being viewed by less than a minimum number of
avatars for a minimum period of time and for a number of
potential avatar viewers which is less than a minimum number
of potential avatar viewers in a region of the one or more
objects, ... is an improvement to the technology and technical
field of virtual universes.
App. Br. 9. Appellants further argue the claimed invention "clearly
improves an existing technological process because the claimed invention
allows for dynamic product placement." App. Br. 10. Appellants further
argue additional elements, such as
the one or more bids further include an additional payment per
teleport amount which one or more advertisers pay for the one
or more avatars selecting the object with the product placement
texture and requesting to teleport to the teleport location
universally unique identifier of the location to be teleported
3 We acknowledge that some of the considerations at Step 2A, Prong Two,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
guidance). For purposes of maintaining consistent treatment within the
Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
guidance). See Memorandum, 84 Fed. Reg. at 55 nn.25, 27-32.
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corresponding to the set of positional coordinates within the
VU, ... are meaningful limitations beyond generally linking
the use of an abstract idea to a particular technological
environment.
App. Br. 9--10; see also App. Br. 11.
We are not persuaded by Appellants' arguments. Appellants describe
the problem as "[ c ]urrent methods of static product placement in a virtual
universe do not exploit the mechanisms within a virtual universe to deliver
maximum profitability and flexibility to both advertisers and those involved
in creation of a virtual universe scene." Spec. ,r 6. However, it is not clear
from Appellants' claims or arguments how this problem is resolved.
Although Appellants argue the "claimed invention allows for dynamic
product placement," which improves the existing technological process, the
claim language does not recite particular features that yields this
improvement. The claim language "performing a bid resolution," provides a
result, with insufficient detail as to how this step is accomplished or how it
results in an improvement. See Intellectual Ventures I LLC v. Capital One
Financial Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017).
As discussed above, Appellants' claims essentially recite ( 1) receiving
bids for advertisements; (2) performing a bid resolution; and (3) rendering
( displaying) an advertisement - routine steps of data collection, analysis,
and display. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1354 (Fed. Cir. 2016) (claims directed to "a process of gathering and
analyzing information of a specified content, then displaying the results, and
not any particular assertedly inventive technology for performing those
functions" are abstract). Additional claim limitations pertaining to the
teleport location, additional payment per teleport amount, and requesting to
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teleport to the teleport location recite the content of the bids, which, as will
be further discussed below, are not entitled to patentable weight. See
Praxair Distribution, Inc. v. Mallinckrodt Hospital Products IP Ltd., 890
F.3d 1024, 1032 (Fed. Cir. 2018).
Appellants do not provide persuasive argument that the additional
claim elements ( e.g., "computer infrastructure," "object definition tool," "bid
placement tool," "placement resolution tool," "invocation/placement tool,"
"remuneration/billing tool") provide anything other than generic computer
functionality. Appellants' Specification supports that the claims recite
merely generic computer components and functionality. E.g., Spec. Fig. 1.
Appellants describe that the "computer infrastructure 12 includes a
computing device 14 that comprises an object definition tool 60, a bid
placement tool 70, a placement resolution tool 75, an invocation/placement
tool 80 and a remuneration/billing tool 90." Spec. ,r 17. Appellants state the
"computing device 14 includes a processor 20, a memory 22A, an
input/output (I/0) interface 24, and a bus 26." Spec. ,r 18; see also Spec.
,r,r 19--20. Appellants further state the "computing device 14 can comprise
any general purpose computing article of manufacture capable of executing
computer program code installed thereon ( e.g., a personal computer, server,
handheld device, etc.)." Spec. ,r 22 ( emphasis added). Moreover,
Appellants state "the program code and hardware can be created using
standard programming and engineering techniques, respectively." Spec.
,r 22. In other words, the claims are directed to the use of the computer
merely as a tool to perform receiving the bids, performing the bid resolution,
and rendering the advertisement, and any improvement is to the process, not
to the functionality of the computer.
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Appellants further argue the claims, like those in DDR Holdings, LLC
v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014),
are necessarily rooted in computer technology in order to
overcome a problem (see paragraph [0006] of the specification,
current methods of static product placement in a virtual
universe do not deliver maximum profitability and flexibility to
both advertisers and those involved in creation of a virtual
universe scene) specifically arising in the realm of computer
networks (i.e., dynamic product placement in a virtual
universe).
App. Br. 10-11. Appellants contend there is "no correspondence in the pre-
computer world." App. Br. 11.
Appellants' arguments are not persuasive. In DDR Holdings, the
disputed claims solved an Internet-specific problem (i.e., third-party
merchants luring a host website's visitor traffic away from the host website
in response to clicking on a merchant's advertisement link displayed on the
host site) with an Internet-based solution (i.e., generating a composite web
page displaying product information from the third-party merchant, but
retaining the host website's "look and feel") that was "necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks." DDR Holdings, 773 F.3d at 1257-1258.
That is not the case here. Appellants have not persuasively explained
why static product placement is an Internet-centric problem, only arising in a
virtual universe, as opposed to in the real world. Moreover, as discussed
above, Appellants have not sufficiently explained how the claims purport to
solve this problem. Rather than being "necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks," Appellants' claims merely link the use of the
abstract idea to a virtual reality environment, which is insufficient to
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integrate the abstract idea into a practical application. See, e.g.,
Ultramercial, 772 F.3d at 716; buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1354 (Fed. Cir. 2014).
For these reasons, we are not persuaded of error in the Examiner's
determination that the claims are directed to an abstract idea.
USPTO Memorandum, Step 2B
Turning to step 2 of the Alice/1v1ayo framework, we look to whether
claim 1: (a) adds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field, or (b) simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception. 1\rfemorandum, 84 Fed. Reg. at 56.
The Examiner determines the claims do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because the additional elements, when considered both
individually and as an ordered combination, do not amount to significantly
more than the abstract idea. Final Act. 4. Specifically, the Examiner finds
the additional limitations of a "computer infrastructure" are generic
computer components that perform generic computer functions that are well-
understood, routine, and conventional activities that amount to no more than
implementing the abstract idea with a computerized system. Final Act. 4;
see also Ans. 7.
Appellants argue
the claims do not merely add the words "apply it" ( or an
equivalent) with an abstract idea, or mere instructions to
implement an abstract idea on a computer, or require no more
than a generic computer to perform generic computer functions
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that are well-understood, routine and conventional activities
previously known to the industry.
App. Br. 10.
Appellants argue additional elements, such as "rendering an object in the
VU as a product placement advertisement by replacing a default texture of
the object with a product placement texture based on the bid resolution, the
object being controllable by one or more avatars in the VU," are "more than
just well-understood, routine, and conventional activities." App. Br. 9
( citing Spec. ,r 6). Appellants further argue
an additional payment per teleport amount which one or more
advertisers pay for the one or more avatars selecting the object
with the product placement texture and requesting to teleport to
the teleport location universally unique identifier of the location
to be teleported corresponding to the set of positional
coordinates within the VU, as recited in the claimed invention,
is a non-conventional and non-generic arrangement of elements.
App. Br. 11.
We are not persuaded by Appellants' arguments. As discussed above,
the claims essentially recite (1) receiving bids for advertisements; (2)
performing a bid resolution; and (3) rendering (displaying) an advertisement
- routine steps of data collection, analysis, and display. Thus, even when
viewed as a whole, nothing in the claim adds significantly more (i.e., an
inventive concept) to the abstract idea. Similarly, as set forth above, the
additional elements in the claim amount to no more than mere instn1ctions to
apply the exception using generic computer cornponents, which is
insufficient to provide an inventive concept. Appellants do not direct our
attention to anything in the Specification that indicates the computer
infrastructure and other computer components perform anything other than
well-understood, routine, and conventional functions, such as receiving,
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processing, and storing data. See Elec. Power, 830 F.3d at 1355 ("Nothing
in the claims, understood in light of the specification, requires anything other
than off-the-shelf, conventional computer, network, and display technology
for gathering, sending, and presenting the desired information."); buy!3Af1~',
765 F.3d at 1355 ("That a computer receives and sends the information over
a network-with no further specification-is not even arguably inventive.");
Alice, 573 U.S. at 224--26 (receiving, storing, sending information over
networks insufficient to add an inventive concept).
Accordingly, Appellants have not adequately explained how the
claims are performed such that they are not routine, conventional functions
of a generic computer. The claims at issue do not require any
nonconventional computer components, or even a "non-conventional and
non-generic arrangement of known, conventional pieces," but merely call for
perforrnance of the claimed infonnation receiving, processing, and
displaying "on a set of generic computer components." Bascom Global
Internet Services, inc. v. AT&TAfohili~y LLC, 827 F.3d 1341, 1349----52 (Fed.
Cir. 2016).
\Ve, therefore, sustain the Examiner's 35 U.S.C. § 101 rejection of
independent clairns 1, 16, 22, and 24.
Dependent claiJns 2----4, 6----15, 18----21, 23, and 25---29
For each of dependent claims 2, 3, 4, 6, 8, 9, 10, 1 L 20, 23, and 25-----
29, Appellants (1) recite the claim language; and (2) assert that by using the
features claimed, the claimed invention is an improvement to another
technology or technical field; and/or (3) assert that it is a meaningful
lirnitation beyond generally 1 inking the use of an abstract idea to a particular
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technological environment; and/or (4) assert that the claim limitation is not a
well-understood, routine, and conventional activity. App. Br. 26----30.
Appellants merely provide condusory statements, and provide no
explanation, argument, or evidence as to why the limitations in these
dependent claims are patent-eligible. "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. § 4I.37(c)(l)(iv). It is well settled
that mere atton1ey's arguments and conclusory statements, which are
unsupported by factual evidence, are entitled to little probative value. in re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De BlaU\'1/e, 736 F.2d
699,705 (Fed. Cir. 1984). Appellants do not present additional arguments
for dependent claims 7, 12-15, 18, and 21. Accordingly, for the same
reasons as set fmih for independent claims 1, 16, 22, and 24, we sustain the
Examiner's 35 U.S.C. § 101 rejection of dependent claims 2----4, 6----15, 18----21,
23, and 25----29.
35 US. C. § 103 Rejections
Claims 1, 16, 22, and 24
Issue: Did the Examiner err in finding the combination of Gettman
and Maharajh teaches or suggests "the one or more bids comprising ... a
teleport location universally unique identifier of a location to be teleported
corresponding to a set of positional coordinates within the VU" and "the one
or more bids further comprises an additional payment per teleport amount
which one or more advertisers pay for the one or more avatars selecting the
object with the product placement texture and requesting to teleport to the
teleport location universally unique identifier of the location to be teleported
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corresponding to the set of positional coordinates within the VU," as recited
in independent claim 1 and commensurately recited in independent claims
16, 22, and 24?
The Examiner finds Gettman teaches or suggests the disputed
limitations. Final Act. 6-7 (citing Gettman ,r,r 18, 44). The Examiner also
finds "the claim does not require any teleportation, only descriptions of bid
contents, and thus should be considered nonfunctional descriptive material
and are not functionally involved in the method ( or structurally
programmed) steps recited." Ans. 3; see also Final Act. 7-8.
With respect to claim 1, Appellants argue "Gettman discloses a
traditional web pay per click, which is different from requesting to teleport
to the teleport location universally unique identifier of the location to be
teleported corresponding to the set of positional coordinates within the VU."
App. Br. 32; see Reply Br. 2. Appellants argue "Maharajh fails to cure the
deficiencies [ofJ Gettman." App. Br. 32. Appellants present substantially
the same arguments for independent claims 16, 22, and 24. App. Br. 32-36.
In the Reply Brief, Appellants argue the disputed limitations are not
nonfunctional descriptive material because they are "not just conveying a
message to a human reader independent of the supporting product." Reply
Br. 3. According to Appellants, "the teleportation and the additional
payment per teleport amount are used in creating the one or more bids."
Reply Br. 3. Appellants further argue "performing the bid resolution
depends on the features of the one or more bids, e.g., the additional payment
per teleport amount and requesting to teleport," so, therefore, "these features
are functionally involved in the method steps of claim 1." Reply Br. 3--4.
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Appellants' arguments are not persuasive. Appellants' Specification
does not explicitly define what it means to "teleport," but describes that "the
participant may initiate a teleport control, e.g., 'click' on the soda can, and
be teleported, e.g., to company ABC's website." Spec. ,r 47; see also Spec.
,r 53 ("[I]f the customer requests a teleport to, e.g., learn more about a
product ... a customer may, e.g., 'click' on an object or otherwise indicate a
desire to be teleported.").
Gettman generally describes a virtual three-dimensional space with a
plurality of display windows for organizing and presenting content to a
viewer. Gettman Abstract. Gettman provides that an auction system may be
used to provide advertising opportunities in the three-dimensional space in
exchange for financial payments. Gettman ,r 18; see also Gettman claim 60
("an auction tool enabling the competitive bidding for transactions relating
to display windows and other objects"). Gettman discloses that a viewer can
tum to face a particular window in order to "inspect more carefully the
content [e.g., an HTML page] displayed there," and may "interact with the
chosen HTML page in the traditional manner, for example by using mouse
clicks on a part of it to access another page of information or to make a
choice such as initiating a purchase from a shopping system represented on
the page." Gettman ,r 44. Given Gettman's disclosure of a user clicking on
an HTML page to access another page of information, we agree that
Gettman teaches or suggests "teleporting."
However, we agree with the Examiner that "the claim does not require
any teleportation." See Ans. 3. Although the claim recites a request to
teleport the unique ID of a location, no actual teleporting is actually
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performed in the claim. Rather, claim 1 recites that the one or more bid
comprises four things:
(1) One or more advertiser restrictions which restrict the one or more
bids from being used in the performing of the bid resolution for the
one or more objects being viewed by less than a minimum number
of avatars for a minimum period of time and for a number of
potential avatar viewers which is less than a minimum number of
potential avatar viewers in a region of the one or more objects;
(2)A teleport location universally unique identifier of a location to be
teleported corresponding to a set of positional coordinates within
the VU;
(3)An additional payment per teleport amount which one or more
advertisers pay for the one or more avatars selecting the object
with the product placement texture; and
( 4) Requesting to teleport to the teleport location universally unique
identifier of the location to be teleported corresponding to the set
of positional coordinates within the VU.
Each of the four claim elements above pertains to the content of the
bid received. Therefore, each of claim elements (1 ), (2), (3), and ( 4), is
directed to printed matter. A claim limitation is directed to printed matter "if
it claims the content of information." DiStefano, 808 F.3d at 848. "Claim
limitations directed to printed matter are not entitled to patentable weight
unless the printed matter is functionally related to the substrate on which the
printed matter is applied." Praxair, 890 F.3d at 1031-32 (citing In re
DiStefano, 808 F.3d 845, 848 (Fed. Cir. 2015); In re Gulack, 703 F.2d 1381,
1385 (Fed. Cir. 1983)).
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If the claim limitation is directed to printed matter, we then ascertain
whether the printed matter is functionally related to its "substrate," and if so,
it is given patentable weight. DiStefano, 808 F .3d at 850. However, if the
printed matter is not functionally related to its "substrate," the printed matter
will not distinguish the invention from the prior art. In re Ngai, 367 F.3d
1336, 1339 (Fed. Cir. 2004). "Claim limitations directed to the content of
information and lacking a requisite functional relationship are not entitled to
patentable weight .... " Praxair, 890 F.3d at 1032. "[T]he printed matter
must be interrelated with the rest of the claim." Id.
Here, only the advertiser restrictions ( element 1 above), which restrict
the one or more bids from being used in the performing of the bid resolution,
are interrelated with the claim, in particular, the performing bid resolution
limitation. 4 The remaining elements (2, 3, and 4 above) comprising the bid
are not explicitly used in the claim, in the performing the bid resolution
limitation or otherwise, and therefore, are not interrelated with the rest of the
claim. Although Appellants argue the "the teleportation and the additional
payment per teleport amount are used in creating the one or more bids,"
(Reply Br. 3), creating the one or more bids is not claimed. Appellants'
arguments that "performing the bid resolution depends on the features of the
one or more bids, e.g., the additional payment per teleport amount and
requesting to teleport," (Reply Br. 3), is likewise unsupported because the
claim language does not recite any limitations as to how the bid resolution is
performed. To that end, we agree with the Examiner that claim elements
4 Appellants have not presented arguments rebutting the Examiner's findings
as to the advertising restrictions limitations.
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(2), (3), and (4) above constitute nonfunctional descriptive material and are,
therefore, not entitled to patentable weight.
Therefore, we find Appellants' arguments unpersuasive as to the
claim limitations "the one or more bids comprising ... a teleport location
universally unique identifier of a location to be teleported corresponding to a
set of positional coordinates within the VU" and "the one or more bids
further comprises an additional payment per teleport amount which one or
more advertisers pay for the one or more avatars selecting the object with the
product placement texture and requesting to teleport to the teleport location
universally unique identifier of the location to be teleported corresponding to
the set of positional coordinates within the VU." Accordingly, we are not
persuaded the Examiner erred in rejecting independent claims 1, 16, 22, and
24 under 35 U.S.C. § 103(a). Appellants do not present additional
arguments for dependent claims 2--4, 10-15, 18-20, 23, and 25-28, so, we,
therefore, sustain the Examiner's 35 U.S.C. § 103(a) rejection of those
claims for the same reasons. App. Br. 38, 40.
Claim 6
Claim 6 recites:
The method of claim 1, wherein the one or more
advertiser restrictions additionally comprise:
a minimum number of avatars viewing the object;
objects in particular locations in the VU;
objects under control of particular avatars;
objects under control of avatars having certain attributes;
and
time of day in the VU.
App. Br. 44. The Examiner finds Gettman teaches or suggests all the
limitations in claim 6 except for "a minimum number of avatars viewing the
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object" and "time of day in the VU," for which the Examiner relies on
Maharajh. Final Act. 12-14 (citing Gettman, claim 31, ,r,r 6, 19, 68;
Maharajh ,r,r 25,241,277). The Examiner further finds "the claim does not
require any actions for the advertiser restrictions, only descriptions of bid
contents, and thus should be considered nonfunctional descriptive material."
Ans. 4; see also Final Act. 7-8.
Appellants contend, inter alia, that Gettman does not teach or
suggests "objects under control of particular avatars" and "objects under
control of avatars having certain attributes." App. Br. 37. The Examiner
relies on paragraphs 68 and 19, respectively, of Gettman to teach or suggest
these disputed limitations. Final Act. 13.
We are persuaded by Appellants' arguments. At the outset, as
discussed above, we disagree with the Examiner that the advertising
restriction limitations are nonfunctional descriptive material because they
are interrelated with the performing bid resolution limitation. Appellants'
Specification describes that a bidder (advertiser) may "restrict their bids to
specific times, locations, or object owners within the VU." Spec. ,r 55.
Further, "[ a ]dditional embodiments may restrict bids to objects that are
under control of specific avatars. For example, an advertiser may not want
their products associated with avatars having particular qualities or attributes
( e.g., avatars having vulgar outfits, younger users)." Spec. ,r 55.
Paragraph 68 of Gettman describes that the "viewers will pass
'through' the windows and the screen will then display a virtual rendering of
the 'inside' of an associated establishment." The Examiner has not
sufficiently explained how this teaches or suggests "objects under control of
particular avatars." We do not understand, and the Examiner has not
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sufficiently explained, how a viewer "passing through" the windows teaches
the viewer has "control" of the window.
Paragraph 19 of Gettman describes the viewer may navigate into a
restricted area of the three-dimensional virtual space for a particular period
of time for financial payment. The Examiner has not sufficiently explained
how this teaches or suggests "objects under control of avatars having certain
attributes."
Accordingly, on this record, we are persuaded the Examiner erred in
rejecting dependent claim 6 under 35 U.S.C. § 103(a), so we, therefore, do
not sustain the rejection.
Claim 7
Claim 7 recites: "The method of claim 1, further comprising storing
the one or more received bids in a bid database." App. Br. 44.
The Examiner relies on Gettman to teach or suggest the limitations of
claim 7. Final Act. 14 ( citing Gettman ,r,r 18, 19). Appellants argue
Gettman does not teach or suggest the limitation. App. Br. 38.
We agree with Appellants. Although paragraph 18 of Gettman refers
to an "auction system inviting financial bids," it does not teach or suggest
"storing the one or more received bids in a bid database." Likewise,
paragraph 19 refers to allowing value services to the viewer in exchange for
financial payments, but does not teach or suggest "storing the one or more
received bids in a bid database."
Accordingly, on this record, we are persuaded the Examiner erred in
rejecting dependent claim 7 under 35 U.S.C. § 103(a), so we, therefore, do
not sustain the rejection. Because claim 8 depends from claim 7, and claim
9 depends from claim 8, we do not sustain the Examiner's 35 U.S.C.
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§ 103(a) rejection of those claims for the same reasons. See App. Br. 39-40,
44--45.
Claim 21
Claim 21 depends from claim 16, and recites, in part "retrieving all of
the one or more received bids for consideration in a bid resolution from a bid
database having advertising keywords that match object keywords." App.
Br. 47.
The Examiner relies on Gettman to teach or suggest the disputed
limitation. Final Act. 21 ( citing Gettman ,r,r 52, 62, 68); Ans. 5---6.
Appellants argue5 Gettman does not teach or suggest the disputed
limitation. App. Br. 39, 40. Rather, Appellants argue Gettman discloses
"that a particular city is designated as a viewer's hometown area and is
populated with the viewer's own favorites or bookmarked HTML pages, or
with pages found from a conventional search" and "that the viewer is unable
to jump directly to a bookmarked or search result location, but must instead
travel along the streets to reach it." App. Br. 39 ( citing Gettman ,r,r 52, 62).
We are persuaded by Appellants' arguments. We do not see, and the
Examiner has not sufficiently explained, how the cited portions of Gettman
teach or suggest "retrieving all of the one or more received bids for
consideration in a bid resolution from a bid database having advertising
keywords that match object keywords." As discussed supra with respect to
claim 7, Gettman does not teach or suggest storing the bids in a bid database.
Moreover, we do not find support in Gettman for the Examiner's findings
that the "ad keywords [are] included in the bid." Ans. 5 (emphasis added).
5 Appellants' arguments are made with respect to the commensurate
limitation in dependent claim 8.
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Accordingly, on this record, we are persuaded the Examiner erred in
rejecting dependent claim 21 under 35 U.S.C. § 103(a), so we, therefore, do
not sustain the rejection.
Claim 29
Claim 29 recites "the method of claim 1, wherein the one or more bids
further comprise a preferred advertiser which is allowed to match another
advertiser's higher bid for the one or more dynamic product placement
advertisements on the one or more objects in the virtual universe."
The Examiner relies on Singh to teach or suggest the disputed
limitation. Final Act. 24 ( citing Singh ,r 221 ); Ans. 6. Appellants argue
Singh does not teach or suggest the disputed limitation, but rather that
"Singh discloses that a current rank is followed by a column entitled bit to
become # 1 907, which is defined as a bid amount needed to become a
highest ranked search listing for the displayed search term" and "that the
search listing data is displayed in tabular format, with each search listing
corresponding to one row in [a] table." App. Br. 41.
We agree with Appellants that the Singh does not teach or suggest the
disputed limitation. However, for the same reasons as discussed above, the
limitation in claim 29 recites nonfunctional descriptive material in that it
merely further describes the content of the bid, and the limitation is not
interrelated with the remaining limitations of the claim in any manner.
Accordingly, the limitation in claim 29 is not entitled to patentable weight.
Accordingly, we sustain the Examiner's rejection of dependent claim
29 under 35 U.S.C. § 103(a).
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DECISION
The Examiner's 35 U.S.C. § 101 rejection of claims 1--4, 6-16, and
18-29 is affirmed.
The Examiner's 35 U.S.C. § 103(a) rejection of claims 1--4, 10-16,
18-20, and 22-29 is affirmed.
The Examiner's 35 U.S.C. § 103(a) rejection of claims 6-9 and 21 is
reversed.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See
37 C.F.R. § 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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