Ex Parte Ruckart et al

Patent Trial and Appeal Board

Aug 15, 2017

13924956 (P.T.A.B. Aug. 15, 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.
13/924,956 06/24/2013 John P. Ruckart 060330CON 1424
(9400-331TSCT)
39072 7590 08/15/2017
AT&T Legal Department - MB
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
LIM, SENG HENG
ART UNIT PAPER NUMBER
3717
MAIL DATE DELIVERY MODE
08/15/2017 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 JOHN P. RUCKART and JEFFREY A. AARON
Appeal 2016-005682
Application 13/924,956
Technology Center 3700
Before JILL D. HILL, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John P. Ruckart and Jeffrey A. Aaron (Appellants) appeal under 35
U.S.C. § 134 from the Examiner’s final decision rejecting claims 1—19. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-005682
Application 13/924,956
BACKGROUND
Claims 1 and 15 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter, with certain limitations italicized.
1. A method of implementing a game, the method
comprising:
providing information regarding a location of a respective
one of a plurality of waypoints to a player of the game via a
processor;
confirming that the player of the game physically arrived
at the respective one of the plurality of waypoints via the
processor, comprising receiving a message from the player
transmitted over a location-capable wireless device, wherein the
message includes information as to a current location of the
location-capable wireless device; and
displaying to the player via the wireless device items in a
virtual cache associated with the respective one of the plurality
of waypoints, wherein the player is allowed to remove a first item
from the virtual cache and deposit the first item in a virtual
depository, and wherein the player is allowed to move a second
item from the virtual cache to another virtual cache associated
with another of the plurality of waypoints to make it more
complicated for other players to acquire the second item,
wherein the virtual cache and the another virtual cache are
accessed through a video game aspect of the game, wherein each
player of the game has their own respective virtual depository,
and wherein each player of the game is competing to complete
their own set of virtual objects.
REJECTIONS
I. Claims 1—9, 11, and 15—18 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Harper (US 2004/0015562 Al, pub. Jan. 22,
2004), Czepluch (US 2003/0069832 Al, pub. Apr. 10, 2003), and
Geocaching Glossary, copyright © 2000-2006 by Groundspeak Inc.,
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accessed at http://www.geocaching.com/about/glossary.aspx (last visited
May 18, 2015). Final Act. 3.
II. Claim 10 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Harper, Czepluch, Geocaching Glossary, and Paulauskas
(US 6,850,837 B2, iss. Feb. 1, 2005). Id. at 12.
III. Claims 12—14 and 19 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Harper, Czepluch, Geocaching Glossary, and Bird (US
2005/0250580 Al, pub. Nov. 10, 2005). Id. at 13.
ANALYSIS
Rejection I
The Examiner finds that Harper discloses, inter alia, a method of
implementing a geocaching game including allowing a player to remove a
first item from a virtual cache and leave a note describing what was taken
from the virtual cache. Final Act. 3—4, Harper 147. Harper does not
contemplate depositing the item removed from the geocache in a virtual
depository (Final Act. 4), but the Examiner finds that Czepluch discloses
storing geocache items from virtual caches into player virtual depositories
(to create virtual inventories) as part of a collection game {id. at 5—6). The
Examiner finds that the combination of Harper and Czepluch, does not
disclose moving an item from one virtual cache to another virtual cache. Id.
at 6—7. The Examiner finds, however, that Geocaching Glossary discloses
“hitchhikers,” which are items placed in one cache and moved to another
cache, which inherently “make[s] it more difficult for another person to
acquire that item.” Id. at 7. The Examiner concludes that applying
“Czepluch’s improvement and technique of virtual inventories for collection
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games to Harper’s base game system yield[s] the predictable result [of
Harper providing] an electronic collection game where multiple items must
be collected to win,” and that applying Geocaching Glossary’s hitchhiker
definition of moving items among caches to Harper would have been
obvious to one skilled in the art because “implementing a movable item
increases the difficulty and provides an interesting twist for finding items in
a scavenger-hunt type of game.” Id. at 6—7.
Moving From Cache to Cache
Appellants argue that Harper does not disclose “allowing a visitor of a
mobile site to take an item from a cache associated with that mobile site and
move the item to a cache associated with another mobile site” to add
difficulty for others. Appeal Br. 5. According to Appellants, Harper instead
discloses leaving a note or other message describing the item taken from the
geocache, which would not make the game more difficult for others. Id.
(Harper, 147).
The Examiner responds that the Geocaching Glossary, rather than
Harper, is being relied on for disclosing moving items among virtual caches.
Ans. 2—3. The Examiner further responds that leaving a note makes item
acquisition more difficult, rather than easier, because a player finding the
note that the item has been moved still requires the player “to travel to
another location to search for the needed item.” Id. at 3.
In reply, Appellants argue that Harper does not “inherently possess[]
the capability of allowing a visitor to move an item from one geocache to
another geocache” as part of a video game. Reply Br. 1.
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Application 13/924,956
Appellants’ arguments regarding the disclosure of Harper alone does
not address the combination of references proposed by the Examiner in the
rejection, and is therefore not persuasive. It is the Geocaching Glossary that
the Examiner relies on for disclosing moving items among geocaches. Ans.
3. Czepluch discloses providing a virtual depository that enables such item
movement. Final Act 5—6.
Appellants next argue that “a visitor looking to make it more difficult
for other visitors would simply take an item from a geocache without
leaving a note describing what was taken or where the item is presently
located,” and that leaving a note is “the antithesis of making it complicated
for other visitors to locate an item.” Reply Br. at 2. Although not leaving a
note would increase game complexity more so than leaving a note, the
absence of the item at the expected cache site and requirement to go
elsewhere to acquire the item, as the Examiner contends, makes it more
complicated for other players to acquire the second item than if the item
where at the expected spot. Ans. 3.
Appellants also argue that, because Czepluch transfers items “within
the same game” instead of moving them among games, Czepluch does not
suggest moving an item from one cache to another. Appeal Br. 6—7.
Regarding this argument, the Examiner responds that “Czepluch is only
relied on for the teaching of the gaming aspect,” and that Harper and
Geocaching Glossary suggest moving among caches. Ans. 4—5. Indeed, the
Examiner’s proposed combination of references relies on Czepluch only for
disclosing storing geocache items from virtual caches in player virtual
depositories (to create virtual inventories) as part of a collection game. Final
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Act. 5—6. It is the Geocaching Glossary that the Examiner relies on to
disclose movement of the item to other caches. Id.
Appellants’ arguments regarding the shortcomings of the disclosures
of Harper and Czepluch are not persuasive, because Appellants are attacking
the references individually rather than addressing the references as combined
by the Examiner in the rejection. One cannot show non-obviousness by
attacking references individually where the rejections are based on
combinations of references. In re Keller, 642 F.2d 413 (CCPA 1981); In re
Merck & Co., Inc., 800 F.2d 1091 (Fed. Cir. 1986). Appellants have not
argued or provided evidence supporting an assertion that the Examiner erred
in making findings regarding each of the disclosures of Harper, Czepluch,
and Geocaching Glossary.
Teaching Away and Rendering Inoperable
Appellants argue that (1) because “Czepluch teaches away from”
moving, or removing items, the Examiner is improperly “using Appellants’
application to provide the motivation,” and (2) making it more difficult for
players “would effectively render Czepluch inoperable for its intended
purpose of attracting customers.” These arguments are not persuasive.
Appeal Br. 7—9; Reply Br. 2—3. Regarding teaching away, Czepluch is not
relied on for disclosing, or providing a motivation for, moving items among
caches, and further does not “criticize, discredit, or otherwise discourage”
moving items among caches. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004).
Further, as discussed supra, moving an item from one cache to
another derives from the Examiner’s modification of Harper, discussed
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above, using a known geocaching technique, i.e., hitchhiking, as taught by
Geocaching Glossary, and does not entail a modification of Czepluch. We
are, therefore, not persuaded that the combination of the references is
improper because a modification of Harper by Geocaching Glossary would
render unmodified Czepluch unsuitable for its intended purpose.
Regarding the Examiner’s stated reasons for combining the references
set forth above, we discern no error in the Examiner’s conclusion that
modifying Harper based on the teachings in Czepluch and the Geocaching
Glossary would have been obvious.
Intended use
Appellants argue that the teachings of the references do not suggest
“allowing customers to specifically make it difficult for other customers
playing the game.” Appeal Br. 9.
The Examiner responds that “the claim limitations ‘to make it more
complicated for other players to acquire the second item’ are considered
intended use.” Ans. 4. The Examiner states that the proposed combination
of Harper, Czepluch, and the Geocaching Glossary is capable of making it
more complicated for players to acquire an item. Id.
Appellants reply that making it “more complicated for other players to
acquire the second item” is not “intended use,” because making a virtual
cache “more complicated for other players to acquire is an essence or
fundamental characteristic of the claimed invention.” Reply Br. 3^4 (citing
Vizio, Inc. v. Int’l Trade Comm’n, 605 F.3d 1330 (Fed. Cir. 2010).
Claim 1 is directed to a method for implementing a game. The recited
step of moving a second item among virtual caches to make the game “more
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complicated for other players to acquire the second item” is thus not merely
an intended use for a claimed apparatus. Rather, the effect of making it
more complicated for other players to acquire the second item is explicitly
required by the recited method. However, despite the Examiner’s error in
limiting the weight given to this limitation, as explained above, we agree
with the Examiner’s determination that, although not leaving a note would
increase game complexity more so than leaving a note, the absence of the
item at the expected cache site and requirement to go elsewhere to acquire
the item, as the Examiner contends, makes it more complicated for other
players to acquire the second item than if the item where at the expected
spot. Ans. 3. The Examiner’s error, therefore, does not change our
determination that the rejection is proper.
We have considered all of Appellants’ arguments for the patentability
of claim 1, and are not persuaded of Examiner error. Accordingly, we
sustain the Examiner’s rejection of claim 1 as unpatentable over Harper,
Czepluch, and Geocaching Glossary. Appellants rely on the same
arguments for the patentability of independent claim 15 (Appeal Br. 9), and
for the same reasons discussed regarding the rejection of claim 1, we sustain
the rejection of claim 15 as unpatentable over Harper, Czepluch, and
Geocaching Glossary. Appellants make no additional arguments for claims
2—9, 11, and 16—18 (Appeal Br. 9), all of which depend from either claim 1
or claim 15, and these claims fall with claims 1 and 15.
Rejections II and III
Regarding Rejection II, Appellants make no argument that claim 10
would be patentable over Harper, Czepluch, Geocaching Glossary, and
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Paulauskas, if claim 1 is not patentable over Harper, Czepluch, and
Geocaching Glossary. Regarding Rejection III, Appellants make no
argument that claims 12—14 and 19 would be patentable over Harper,
Czepluch, Geocaching Glossary, and Bird, if claims 1 and 15, respectively,
are not patentable over Harper, Czepluch, and Geocaching Glossary. For the
reasons set forth above, we sustain Rejections II and III.
DECISION
We AFFIRM the rejection of claims 1—9, 11, and 15—18 as
unpatentable over Harper, Czepluch, and Geocaching Glossary.
We AFFIRM the rejection of claim 10 as unpatentable over Harper,
Czepluch, Geocaching Glossary, and Paulauskas.
We AFFIRM the rejection of claims 12—14 and 19 as unpatentable
over Harper, Czepluch, Geocaching Glossary, and Bird.
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.
§ 41.50(f).
AFFIRMED
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