Ex Parte Miyamoto et al

Patent Trial and Appeal Board

Apr 24, 2015

12256864 (P.T.A.B. Apr. 24, 2015)

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.
12/256,864 10/23/2008 Kohtaroh Miyamoto JP920070088US1 6037
7590 04/24/2015
Anne Vachon Dougherty
3173 Cedar Road
Yorktown Hts, NY 10598
EXAMINER
BYCER, ERIC J
ART UNIT PAPER NUMBER
2173
MAIL DATE DELIVERY MODE
04/24/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KOHTAROH MIYAMOTO and SHUICHI SHIMIZU
____________

Appeal 2012-008130
Application 12/256,864
1

Technology Center 2100
____________

Before MICHAEL P. COLAIANNI, ULRIKE W. JENKS, and
ELIZABETH A. LaVIER, Administrative Patent Judges.

LaVIER, Administrative Patent Judge.

DECISION ON APPEAL

The Examiner finally rejected claims 1–13. Appellants seek reversal
of the Examiner’s rejections, pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
BACKGROUND
The Specification generally relates to controlling display images.
(Spec. 1.) The Specification states that for a user operating an avatar in a
virtual world, “it is difficult for each user to judge a relationship between

1
According to Appellants, the real party in interest is International Business
Machines Corporation. (Br. 2.)
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himself/herself and a different user. A hobby, preference, personality or a
communicable language, for example, is difficult to judge from a virtualized
appearance. . . .” (Spec. 1.) To solve this problem, the Specification
describes a system, method, and program for controlling display images.
(See id. at 1–2.) Claims 1 and 2 are representative:
1. A system for controlling display images of objects,
comprising:
a storage device for storing attribute values of different
displayed users respectively assigned a plurality of objects, the
displayed objects each being displayed in a form modified
according to an operation by the corresponding user;
a calculator for calculating an index value indicating the
intensity of a relationship between a first displayed object
operated by a first user and a second displayed object operated
by a second user, on the basis of the attribute values
respectively corresponding to the first and second displayed
objects; and
a display device for displaying, on a screen of the first user, the
second displayed object distinguishably in terms of the intensity
of the relationship according to the calculated index value.

2. The system according to claim 1, wherein
the displayed object is an avatar,
the storage device stores an attribute value of an avatar of each
of the users, in association with the avatar, and
if an avatar of the second user is included within the visible
range of an avatar of the first user, the display device displays,
on a screen showing the visible range of the avatar of the first
user, the avatar of the second user distinguishably in terms of
the intensity of the relationship according to the calculated
index value.
(Br. 36–37 (Claims App.).)
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REJECTIONS
The Examiner maintains the following rejections on appeal:
1. Claims 1, 2, 4–6, and 9–13 are rejected under 35 U.S.C. § 102(b) as
anticipated by Cheng.
2
(Ans. 5.)
2. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Cheng in view of Horvitz.
3
(Ans. 16.)
3. Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Cheng in view of Miyashita.
4
(Ans. 19.)
DISCUSSION
A. Rejection 1: Claims 1, 2, 4–6, and 9–13
At the outset, we observe that the Examiner provides a thorough
discussion of how Cheng satisfies each of the limitations of claims 1, 2, 4–6,
and 9–13. (See Ans. 5–15, 22–44.) After careful consideration of all the
arguments presented by Appellants, we adopt the Examiner’s position, and
offer the following by way of further explanation.
Cheng generally describes a “priority-based operation of a virtual
environment, the system having a priority component that provides priorities
for avatars and non-avatar objects. . . .” (Cheng Abstract.) Cheng further
teaches the priority component as responsive to selected parameters, which
can include: “(i) objects’ relative positions, (ii) the direction, orientation and
span of sense and focus spaces, (iii) participants’ profiles, (iv) predetermined
parameters as set by developers and/or participants, (v) social parameters,

2
U.S. Patent No. US 6,329,986 B1, issued Dec. 11, 2001.
3
U.S. Patent Application Pub. No. US 2002/0161862 A1, published Oct. 31,
2002.
4
U.S. Patent No. 6,057,856, issued May 2, 2000.
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(vi) economic models and (vii) combinations of these and other selected
parameters.” (Id.)
1. Claims 1, 12, and 13
Appellants argue claims 1, 12, and 13 together. (See Br. 10–18.) We
thus treat claim 1 as representative of these claims. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
Appellants argue that Cheng fails to teach “storing attribute values of
different users,” (Br. 13), “calculating an index value indicating an intensity
of relationship between an object of a first user and an object of a second
user based on the stored attribute values for each user,” (id. at 15), and
“displaying, on a screen of the first user, the second displayed object
distinguishably in terms of the intensity of the relationship according to the
calculated index value,” (id. at 16). In essence, each of these arguments
relies on the same alleged deficiency of Cheng, i.e. according to Appellants,
Cheng establishes base priorities on the relative positioning of
the first and second avatars or objects (distance and angle, Col.
10, lines 53-63), whereas the present invention uses
predetermined attribute values for display objects of respective
users to determine an intensity of a relationship between the
users and to display the relationship accordingly.
(Id. at 12.)
We are unpersuaded by Appellants’ arguments, as they read Cheng
too narrowly. The Examiner correctly observes that although “Appellants
focus on the illustrative example described by Cheng, which describe[s]
Priority in terms of gaze cones and attention spaces,” Cheng’s disclosure is
broader. (Ans. 24.) For example, Cheng’s user profiles include “priority
component[s],” (Cheng col. 10, l. 6), which may be based on various
parameters, including but not limited to a user’s “likes, dislikes, hobbies,
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and personalities.” (Ans. 24 (quoting Cheng col. 9, ll. 28–31).) In
addition, Cheng describes creating a “similarity measure” in which users can
“instruct the system to compute a measure of interest similarity between
themselves and other objects resident in the applicable attention space.
This similarity measure preferably is employed to alter base priority
numbers.” (Id. at 26 (quoting Cheng, col. 22, ll. 47–56).) The parameters
used to create the similarity measure can be “‘personal’ to a particular user.”
(Id.) Further, the Examiner finds that Cheng discloses rendering avatars
based on the priority component, both in terms of what to render and the
rendering detail. (Id. at 28 (citing Cheng col. 10, ll. 8–10, 27–32).)
As we are unconvinced by Appellants’ arguments that the Examiner
erred in rejecting claim 1 as anticipated by Cheng, we affirm the Examiner’s
rejection. Accordingly, we affirm the Examiner’s rejection of claims 12 and
13.
2. Claim 2
Claim 2 depends from claim 1 and recites, inter alia, that “the
displayed object is an avatar. . . .” (Claims App.) Appellants do not dispute
that Cheng discloses display of avatars, but rather assert that Cheng fails to
teach “the claim feature of the storage storing an attribute value of an avatar
of each of the users in associat[ion] with the avatar,” (Br. 19), and “the
claim feature whereby the display device displays, on a screen showing the
visible range of the avatar of the first user, the avatar of the second user
distinguishably in terms of the intensity of the relationship according to the
calculated index value,” (Br. 20). These arguments largely recapitulate
those which we have already found to be unpersuasive as to claim 1
regarding attribute and index values; further, we agree with the Examiner
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that Cheng teaches storing parameters associated with users, i.e., parameters,
used to calculate the priority component. (See Ans. 30.)
Appellants further characterize the Examiner’s position as relying on
Cheng’s system as “capable of storing,” under the premise that “[c]learly an
anticipation rejection cannot be based on what the Examiner concludes the
memory is ‘capable of’.” (Br. 19.) First, as described above we agree with
the Examiner that Cheng stores attribute values. Further, however, we note
that the language regarding the “storage device” in claim 2 is functional, not
structural (“the storage device stores an attribute value of an avatar of each
of the users, in association with the avatar . . .” (Claims App.)). See In re
Schreiber, 128 F.3d 1473, 1478-79 (Fed. Cir. 1997) (to satisfy functional
limitations in apparatus claim, the prior art apparatus must be capable of
performing the claimed function).
We thus affirm the Examiner’s rejection of claim 2.
3. Claim 4
Claim 4 depends from claim 2, and further recites that “the attribute
value represents an activity record of each avatar; and the calculator
calculates the index value indicating that the relationship is stronger, in a
case where the activity record of both the first avatar of the first user and the
second avatar of the second user include a larger number of common activity
records than a case where the activity record of both the first avatar and the
second avatar include a smaller number of common activity records.”
(Claims App.)
First, Appellants again critique the Examiner’s reliance on what the
Examiner finds Cheng to be “capable of,” (Br. 22), which we rejected above
with respect to claim 2. Further, Appellants assert that Cheng fails to teach
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that “an attribute value represents an activity record of each avatar,” (id.),
but offer no analysis in support of this position. As already discussed with
respect to the “attribute value,” we agree with the Examiner that Cheng’s
parameters satisfy this aspect of the claims. Further, as the Examiner notes,
Cheng teaches storing records of activity in the virtual environment, (Ans.
32 (citing Cheng col. 3, l. 56–col.4, l. 8)), and that users’ actions are used to
compute priority (id. at 33 (citing Cheng col. 19, ll. 35–51)). Accordingly,
we find Appellants’ argument unpersuasive.
Second, Appellants argue that Cheng’s comparison of interest lists
between users fails to teach the “calculat[ing]” limitation of claim 4, and
maintain that “the present invention automatically calculates index values
indicating intensity of a relationship,” whereas “Cheng requires user input to
the Set-priority component for modifying priorities.” (Br. 23.) This
argument under-reads Cheng, because Cheng’s system also “continuously
updat[es] the similarity measure based on the profile, which includes the
complete history of actions” of a user. (Ans. 34 (citing Cheng cols. 25–26,
specifically col. 26, ll. 1–24).) Further, we note that neither claim 4 nor the
other claims recites “automatic” calculation of index values. Appellants fail
to point out support in the Specification for reading claim 4 so narrowly, and
we discern no basis for importing such a limitation.
Accordingly, we affirm the Examiner’s rejection of claim 4.
4. Claim 5
Appellants rely on the same arguments for claim 5 as for claim 4.
(See Br. 23–24.) As we affirm the Examiner’s rejection of claim 4, we also
affirm the Examiner’s rejection of claim 5.
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5. Claims 6, 9, and 10
Claims 6 and 9 depend from claim 2; claim 10 depends from claim 9.
Appellants’ arguments for these claims retrace those made with respect to
claim 1, i.e., that Cheng does not teach storing attribute values and/or that
Cheng does not calculate an index value. (See Br. 25–26 (claim 6); id. at
26–27 (claim 9); id. at 28–29 (claim 10).) As we are unpersuaded by these
arguments with respect to claim 1, we likewise are unpersuaded with respect
to these claims. As such, we affirm the Examiner’s rejection of claims 6, 9,
and 10.
B. Rejection 2: Claim 3
Claim 3 recites:
The system according to claim 2, further comprising
a search unit for accessing and searching the storage device, to
find at least one communication means that the first and second
users can use in common, wherein:
the attribute value represents at least one communication means
used by a corresponding avatar, and a score indicating a skill
level of the avatar in using the communication means; and
the calculator reads, from the storage device, the scores
corresponding to each of the communication means, and then
calculates the intensity of the relationship between the first and
second avatars on the basis of the read scores.
(Claims App.)
The Examiner relies on Cheng as applied to claim 2, and also as
disclosing “different methods of communication,” such that “participants
can set a preferred method of communication with other participants” and
wherein “priorities are used to provide communication in enhanced detail for
those objects deemed important by the first user.” (Ans. 17 (citing Cheng
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col. 10, ll. 20–40; col. 23, ll. 46–51).) Further, the Examiner turns to
Horvitz as teaching “a system for determining which one of a plurality of
communication methods or systems is best suited to the present environment
based on a set of attributes.” (Id. (citing Horvitz ¶ 10).) As with Rejection
1, we adopt the Examiner’s thorough findings and conclusions regarding
Rejection 2 (see id. at 16–18, 44–47) in their entirety.
Appellants present no additional arguments regarding Cheng (see Br.
29), but argue that Horvitz does not teach scores indicative of the skill level
of a user in using a communication means as recited in claim 3 (Br. 31). In
contrast, Appellants assert “[t]he present invention actually scores the users’
skills for transmitting and receiving information using a particular
communications means (see: pages 20-21). It is the user-specific monitored
scores that are used for selecting the preferred communication means for
communications between the first and second users.” (Id.)
We are unpersuaded by Appellants’ arguments. We are unconvinced
that the language of claim 3 supports the distinction Appellants draw
between the prior art and the invention. Moreover, we agree with the
Examiner that Cheng’s priority calculation “extends to automatically
determining communication methods to use when communicating with other
users.” (Ans. 45 (citing Cheng col. 10, ll. 20–23, 32–40).) We see no error
in the Examiner’s reliance on the combination of Cheng and Horvitz (see id.
at 47) to teach the limitations of claim 3, and affirm the rejection.
C. Rejection 3: Claims 7 and 8
As to claims 7 and 8, Appellants do not dispute the Examiner’s further
reliance on Miyashita, but rather recapitulate their arguments from claim 1
regarding the alleged failure of the cited art to teach a calculated index value
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determined from stored attribute values. (See Br. 32–34.) As with claim 1,
we find these arguments unpersuasive as to claims 7 and 8, and see no error
in the Examiner’s reliance on Cheng and Miyashita in rejecting claims 7 and
8.
CONCLUSION
The Examiner’s final rejections of claims 1–13 are affirmed for the
reasons of record. No time period for taking any subsequent action in
connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED
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