Disney Enterprises, Inc.

Patent Trials and Appeals Board

Aug 3, 2021

2019006669 (P.T.A.B. Aug. 3, 2021)

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.
14/598,218 01/15/2015 Robert NELSON 45WE-213467 4895
124910 7590 08/03/2021
ESPLIN & ASSOCIATES (Disney)
c/o DISNEY ENTERPRISES, INC.
1665 S Rancho Santa Fe Road, Suite C2
San Marcos, CA 92078
EXAMINER
GARNER, WERNER G
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
08/03/2021 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@esplin.legal
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT NELSON
Appeal 2019-006669
Application 14/598,218
Technology Center 3700
BEFORE SUSAN L. C. MITCHELL, FREDERICK C. LANEY, and
BRENT M. DOUGAL Administrative Patent Judges.
LANEY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s Final rejection (Final Office Action, mailed February 22, 2018,
hereinafter “Final Act.”) of claims 1, 3–6, 8–11, 13–16, and 18–24.2 We
have jurisdiction over the appeal under 35 U.S.C. § 6(b). A hearing was
held on August 20, 2020.
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Disney
Enterprises, Incorporated. Appeal Br. 2.
2 Claims 2, 7, 12, and 17 have been canceled. Appeal Br. 17–20 (Claims
App.).
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CLAIMED SUBJECT MATTER
The claims relate to “[a] system and method for customizing a game
entity that is played in a video game” that may take place in a virtual space.
Abstract. Users may play the video game by controlling a virtual entity that
has an associated physical object, which stores information related to the
entity. Id. The stored information may be used to customize the associated
entity within the virtual world of the video game. Id. And at least some of
the stored information may be written to the physical object using a
read/write platform that is included at a point of purchase computing
platform in the retail location. Id. Claims 1, 11, 23, and 24 are independent
and are substantially similar with regard to the arguments presented by
Appellant of alleged Examiner error. Claim 1 is reproduced below.
1. A system configured to facilitate customization of game
entities played in a video game, the system comprising:
one or more physical processors configured by computer-
readable instructions to:
receive first information stored by a physical
object from a reader that is physically present with and
operatively coupled to a point of purchase computing
platform physically located at a retail location, the physical
object and the first information stored thereon being
associated with a game entity configured to be controlled by
a user in a video game that takes place in a virtual space,
wherein a visual appearance of the physical object
represents the game entity;
receive second information indicating purchase of
a customization for the game entity at the point of purchase
computing platform, the customization being associated with
a parameter value for a parameter of the game entity in the
virtual space, the parameter including a special effects
parameter related to one or both of an attack effect or a
defensive effect for the game entity in the virtual space; and
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effectuate storage of the parameter value
associated with the customization for the game entity in the
video game, such storage facilitating implementation of the
parameter value for the parameter of the game entity in the
virtual space, wherein effectuating the storage of the
parameter value comprises effectuating wireless
transmission of the parameter value by a writer to the
physical object, the writer being physically present with and
operatively coupled to the point of purchase computing
platform.
Appeal Br. 16 (Claims App.).
EVIDENCE
Name Reference Date
Bala US 2014/0274313 A1 Sept. 18, 2014
Elliot US 2012/0289122 A1 Nov. 15, 2012
Pacey US 2015/0024852 A1 Jan. 22, 2015

REJECTION
Claims 1, 3–6, 8–11, 13–16, and 18–24 are rejected under 35 U.S.C.
§ 103(a) as obvious over Bala, Elliot, and Pacey.
OPINION
Appellant argues for patentability of claims 1, 3–6, 8–11, 13–16, and
18–24 together as a group. Appeal Br. 6–14. We select claim 1 as
representative of this group, and claims 3–6, 8–11, 13–16, and 18–24 stand
or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant argues that the Examiner’s determination that claim 1
would have been obvious in view of Bala, Elliot, and Pacey is flawed
because Elliot is non-analogous art that is outside the scope of prior art
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available for consideration in a proper obviousness analysis. Appeal Br. 6–
11. Although Appellant also contends that the Examiner improperly used
hindsight (id. at 12 (“there would be no reason one of ordinary skill in the art
would look to the diverse field of Elliott absent hindsight.”)), this argument
likewise depends on Elliot being non-analogous art. Id. at 12–14. Notably,
if Elliot is analogous art, Appellant has not directly challenged any of the
findings and reasoning made by the Examiner to support the determination
that claim 1 would have been obvious in view of Bala, Elliot, and Pacey.
See generally id. at 6–14. Therefore, the dispositive issue in this Appeal is
whether Elliot is analogous art.
Determining Elliot is analogous art depends on “whether [Elliot] is
from the same field of endeavor [as Appellant’s claimed invention],
regardless of the problem addressed,” and “if [Elliot] is not within the field
of the inventor’s endeavor, whether the reference still is reasonably pertinent
to the particular problem with which [Appellant] is involved.” Scientific
Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014)
(citing In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992)). The Examiner
finds, “Elliott is, in addition to being in the field of applicant’s endeavor,
also reasonably pertinent to the particular problem with which the applicant
was concerned.” Final Act. 33.
In particular, the Examiner finds Elliot discloses subject matter
directed to “systems and methods allowing for the customization of a toy by
transferring sound or other data,” which is in the same field as Appellant’s
invention––“customizing game entities.” Ans. 34–35. The Examiner finds
additionally that Elliot addresses customizing a toy at the point-of-sale,
which is reasonably pertinent to a problem involved with the present
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invention, such as “how to provide customizations to a game entity within a
virtual space.” Id. at 36–37.
Appellant argues that “Elliott is outside the field of the inventor’s
endeavor because . . . . [t]he inventor’s field of endeavor (for all claims)
relates to customizing game entities played by users in a video game by
storing, at a retail location, customization information on physical object
associated with the game entities.” Appeal Br. 8 (citing Spec. Title, ¶ 1). As
support, Appellant describes the Specification as disclosing a point-of-sale
device that can communicate with a physical object to store customized data
in the object, which may be automatically implemented in a virtual space
when the physical object is present. Id. (citing Spec. ¶¶ 4, 22).
For example, a customization may include one or more of an
upgrade for an existing parameter of a game entity (e.g., an
upgraded or new parameter value for the parameter), an
enhancement of a game entity (e.g., a parameter value for a
parameter not usually associated with the game entity in the
virtual space), a customization of the virtual space in which a
game entity is to be played (e.g., a change in a simulated
topography of the virtual space), and/or an introduction of new
content into the virtual space in which a game entity is to be
played (e.g., a new level, mission, environment, virtual item
and/or good, non-player character, and/or other new content).
Id.
Appellant argues Elliot “clearly states the field of the invention as
systems and methods for the recording of sounds, via a self-service kiosk, on
a local storage device which is included in a toy.” Appeal Br. 8 (citing Elliot
¶¶ 2, 3. 17). The local storage device in Elliot, according to Appellant, “is
configured to be placed in the toy, such as a plush toy, such that playback of
the sounds will be perceived as coming from the toy.” Id. at 9. Appellant
identifies that, in one embodiment, Elliot describes that the local storage
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device can be used to establish a customized identity for the toy. Id. (citing
Elliot ¶ 122). Additionally, Appellant notes Elliot describes that an
interactive environment may allow more direct interaction with a toy by
including “a transmitter which is capable of utilizing free memory on the
local storage device (109) to download additional sound or functionality to
the toy.” Id. (citing Elliot ¶ 125). This shows, according to Appellant, that
“the kiosk of Elliott at best is configured to transmit, for storage on a local
storage device, audio recordings (either recorded by a user or retrieved from
an interactive environment) or customer/toy identification information.” Id.
Therefore, Appellant concludes, in contrast to the field of endeavor of the
invention in this case, which “relates to customizing game entities in a
virtual space,” “Elliott is related to customization of physical toys with
sounds.” Id.
We are not persuaded of error with the Examiner’s determination that
Elliot is from the same field of endeavor as Appellant’s claimed invention.
As the Examiner correctly finds, “[a]lthough Elliott describes the invention
in terms of ‘sound,’ it is certainly not limited to sound.” Ans. 35 (citing
Elliot ¶ 54). The Examiner persuasively shows that Elliot’s explanation of
the “other data” demonstrates that it may include customization data for
game entities played by users in a video game by storing, at a retail location,
customization information on a physical object associated with the game
entities. In particular, Elliot states,
The storage of data on the local storage device (109) can allow
for the local storage device (109) to serve to identify the toy,
including its owner and various information with which the
final consumer has provided the toy, for example, a name.
When the chip is therefore presented to a cradle (113) or other
device capable of communicating with it, this data may be
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retrieved to provide for an improved interactive experience.
For example, the company providing the toy may provide an
online computerized environment or social network where an
owner of the toy can interact with other consumers and with
computer games and simulations using the toy. In such an
environment, the presence of the toy can be detected, the data
can be loaded to the interactive environment, and this can
provide for improved interactivity of the toy within the
interactive environment and a more seamless integration of the
toy with the environment.
Elliot ¶ 122. In addition, Elliot states,
Systems and methods which allow for the self-service selection
and recording of local storage devices which can be provided as
part of a larger object such as a toy. Specifically, the systems
and methods discussed herein generally comprise self-service
kiosks or other related systems whereby a final consumer, who
is engaged in the manufacture or creation of a personalized or
semi-personalized toy, can provide for transfer of sound or
other data to a local storage device which will be incorporated
into the toy in an on-demand fashion.
Elliot, Abstract. In view of the foregoing, we find the evidence from Elliot
supports sufficiently the Examiner’s determination that Elliot is in the same
field of endeavor of customizing game entities in a virtual space as
Appellant’s invention.
In addition, we are not persuaded the Examiner erred in determining
that Elliot is reasonably pertinent to the particular problem with which
Appellant is involved. The Examiner notes that Appellant describes the
invention as addressing a number of problems: “(1) how to provide
customizations to a game entity within a virtual space;” “(2) how to do so
while utilizing a physical object that is detectable by a computing platform
via a reader that is operatively coupled to or included in the computing
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platform;” and “(3) how to store information to the physical object within a
retail location and outside of a gameplay environment.” Ans. 36 (citing
Appeal Br. 10). The Examiner finds Elliot is reasonably pertinent to the first
problem because it involves providing a toy with customized data to enable
“an online computerized environment or social network where an owner of
the toy can interact with other consumers and with computer games and
simulations using the toy.” Id. (citing Elliot ¶ 122). The Examiner finds
Elliot is reasonably pertinent to the second problem because it involves
providing a “kiosk that may be used prior to ultimate purchase of the
customized toy but may also be provided as an additional feature for
customization after purchase either as a further feature, or for additional
charge,” and “the kiosk includes a reader or other component which is
designed to identify a specific toy with which a local storage device is or
will be associated.” Id. at 36–37 (citing Elliot ¶¶ 55, 62). Lastly, the
Examiner finds Elliot is reasonably pertinent to the third problem because it
involves a kiosk that “is generally designed to be used in conjunction with a
store whereby customization of toys is available.” Id. at 37 (citing Elliot
¶ 55).
In view of the foregoing, we are persuaded the Examiner correctly
determined Elliot is analogous art that may be properly relied upon in an
obviousness analysis of the claimed invention. Therefore, we sustain the
Examiner’s rejection of claims 1, 3–6, 8–11, 13–16, and 18–24 under 35
U.S.C. § 103(a) as being obvious in view of Bala, Elliot, and Pacey.
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DECISION SUMMARY
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–6, 8–
11, 13–16,
18–24

103(a)
Bala, Elliot, Pacey 1, 3–6, 8–11,
13–16, 18–24

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)(1)(iv).
AFFIRMED