Ex Parte 7,677,948 B2 et al

Patent Trial and Appeal Board

Oct 30, 2012

95001341 (P.T.A.B. Oct. 30, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,341 04/20/2010 7,677,948 B2 GANZ-36219US23 6099
26206 7590 10/30/2012
Pearne & Gordon LLP
1801 East 9th Street
Suite 1200
Cleveland, OH 44114-3108
EXAMINER
KISS, ERIC B
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
10/30/2012 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
____________

HASBRO, INC.
Requester and Appellant

v.

GANZ
Patent Owner and Respondent
____________

Appeal 2012-009496
Reexamination Control 95/001,341
Patent 7,677,948 B2
Technology Center 3900
____________

Before HOWARD B. BLANKENSHIP, KEVIN F. TURNER, and
STEPHEN C. SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON APPEAL
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Third Party Requester and Appellant Hasbro, Inc. appeals under 35
U.S.C. §§ 134(c) and 315(b) the Examiner’s decision not to reject claims 1-
31 and 33-68. We have jurisdiction under 35 U.S.C. §§ 134(c) and 315(b).

STATEMENT OF THE CASE
This proceeding arose from a request by Hasbro, Inc. for an inter
partes reexamination of U.S. Patent 7,677,948 B2, titled “System and
Method for Toy Adoption and Marketing,” and issued to Howard Ganz on
March 16, 2010 (the ‘948 patent).
The ‘948 patent describes a system and method for toy adoption and
marketing (col. 1, ll. 35-36).

Claim 1 reads as follows:
1. A method for providing a virtual world presentation comprising
the computer implemented steps of:
creating a user account on a website by receiving a user ID from a
user computer;
subsequent to said creating, accessing said user account by receiving
said user ID;
registering a first product on the website responsive to
receiving a first registration code;
linking the first product with said user account on the website;
responsive to registering the first product, displaying a first virtual
representation of the first product on said website, said first virtual
representation of the first product being linked to said user account such that
subsequent access to said user account provides access to said first virtual
representation of the first product based on said receiving said user ID
without receiving said first registration code again;
subsequent to registering the first product, registering a second
product on said website responsive to receiving a second registration code
different than the first registration code;
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linking the second product with said user account on the website;
responsive to registering the second product, displaying a second
virtual representation of the second product on said website, said second
virtual representation of the second product being different than said first
virtual representation, such that subsequent access to said user account by
receiving said user ID provides access to both said first virtual representation
of the first product and said second virtual representation of the second
product based on receiving said user ID and without any additional receiving
of either said first access code and/or said second access code; and
providing a control interface for allowing a user provided access via
said user ID to select one of said first virtual representation and said second
virtual representation for control, wherein said control interface provides the
user an option to switch control from the selected one of said first virtual
representation and said second virtual representation to the other of said first
virtual representation and said second virtual representation,
wherein said user owns the first virtual representation of the first
product, and also owns the second virtual representation of the second
product both made accessible via said user ID such that subsequent access to
said user account provides access to both said first virtual representation and
said second virtual representation without subsequent re-entry of either said
first registration code and/or said second registration code.

Appellant disputes the Examiner’s confirmation of the patentability of
the following claims over the following proposed rejections:
Claims 1, 5-7, 14-16, 20-22, 29, 33-36, and 42 under § 103(a) as
unpatentable over U.S. Patent No. 6,910,186 B2, June 21, 2005 (“Kim”) and
U.S. Patent No. 7,478,047 B2, January 13, 2009 (“Loyall”).
Claims 2-4, 8-13, 17-19, 23-28, 30, 31, 36-41, and 43-68 under §
103(a) as unpatentable over Kim, Loyall, and Electronic Arts, Inc., “The
Sims,” User’s Guide, 2000 (“Sims Booklet”).

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ISSUE

Did the Examiner err in refusing to reject claims 1-31 and 33-68?

PRINCIPLES OF LAW

The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

ANALYSIS

Kim and Loyall (Claims 1, 5-7, 14-16, 20-22, 29, 33-36, and 42)
The Examiner states that the combination of Kim and Loyall fails to
disclose or suggest “creating a user account on a website by receiving a user
ID from a user computer” or “linking the first product with said user account
on the website” (Right of Appeal Notice 6) as recited in claim 1.
Respondent concurs with the Examiner (Respondent Br. 5-6). As Appellant
points out, Kim discloses a user participating in a “graphic chatroom” (col.
18, l. 31) in which the user “must purchase . . . a product prior to use of” an
avatar (col. 18, l. 14-15). While the Examiner and Respondent imply that
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the user of Kim does not have a user account while participating in the
chatroom, neither the Examiner nor Respondent indicate how a user can
participate in a chatroom without using an “account” with an associated
form of identification.
In a chatroom, as would have been understood by one of ordinary skill
in the art, a participating user would communicate with others in the
chatroom and would necessarily be identifiable as a participant in the
chatroom. Without being identifiable as such, the chatroom participant
would be unable to participate in the chatroom because other participants
would be unable to identify the individual as an active participant and would
therefore be unable to communicate with the individual. In other words, an
individual without an “account” associated with some form of user
identification (e.g., a “user ID”) to access the chatroom could not be a
participant in the chatroom. Because Kim discloses that users are
participants in “graphic chatrooms” (e.g., col. 18, l. 31), we disagree with the
Examiner and Respondent that Kim fails to disclose chatroom participants
without an “account” with a “user ID” (which would be needed to
participate in the chatroom).
Kim also discloses that the “organizational avatars may be used . . .
[in] a real-time mode of communication such as America Online Instant
Messenger” (col. 18, l. 66 – col. 19, l. 2), thus further demonstrating that
users with user accounts (such as a user account for “America Online Instant
Messenger”) utilize avatars as described above.
As Appellant also points out, Kim discloses that the user purchases a
product (e.g., a doll), enters a password associated with the purchased
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product, then uses an avatar associated with the purchased product (and
password) while participating in the chatroom (see, e.g., Kim, col. 18, ll. 13-
35). The avatar is associated with the user’s account in Kim because the
user’s access and participation in the chatroom (via the user’s “account” and
associated user identification) is represented by the corresponding avatar
which, in turn, is associated with the purchased product. Hence, the product
(i.e., doll) is linked (i.e., associated) with the user’s account (and
corresponding user identification) through which the user accesses and uses
the chatroom. Neither the Examiner nor Respondent provides an adequate
showing that at least this disclosure of Kim differs from the claimed feature
of “linking the first product with said user account on the website.”
The Examiner also states that the combination of Kim and Loyall fails
to disclose or suggest that “subsequent access to said user account provides
access to said first virtual representation of the first product based on said
receiving said user ID without receiving said first registration code again”
(Right of Appeal Notice 6). We do not find, and the Examiner and
Respondent do not indicate, that Kim or Loyall discloses or suggests
“receiving said first registration code again.” Rather, it appears that neither
Kim nor Loyall disclose or suggest “receiving said first registration code
again.” Instead, Kim discloses that “a user may be required to enter a
password . . . [that] may be available only on purchase of a . . . doll” (col.
18, ll. 21-23) and does not appear to disclose (and Respondent has not
demonstrated that Kim does disclose) that the “password” is ever entered
subsequently.
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We agree with Appellant that the disputed claim feature would have
been obvious to one of ordinary skill in the art. Kim discloses a user
entering a password with the purpose of proving that the user has purchased
the corresponding product1. The level of skill in the art is such that one of
ordinary skill in the art would have understood that presenting such evidence
of purchasing a product would only have been needed once since by the time
a user has already provided proof of purchase, the user is already deemed a
valid purchaser and subsequent submissions of the same evidence would
serve no purpose. Hence, it would have been obvious to one of ordinary skill
in the art not to provide the same proof of purchase after such proof of
purchase was already provided. Indeed, as stated above, Kim does not
disclose that the user enters the password (product registration code) again
emphasizing the point that one of ordinary skill in the art would not engage
in subsequent repeat submissions of the password.
There are a finite number of ways in which to manage providing proof
of purchase of a product. One of ordinary skill in the art would have
understood that the finite number of methods includes either requiring the
user to provide the evidence once or requiring the user to provide the
evidence multiple times or every time. Since providing the evidence
multiple times would have resulted in wasted resources with no advantages,
one of ordinary skill in the art, being “a person of ordinary creativity, not an
automaton” (KSR, 550 U.S. at 421) would have understood that providing
the evidence only once would have sufficed.

1 “password may be available only on purchase of a . . . doll” – col. 18, ll.
22-23) and “each computer checks . . . if a purchase has occurred” – col. 18,
ll. 18-19.
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In addition, given the level of skill of the art, requiring the user to
provide the evidence only once would have been well within the purview of
one of ordinary skill in the art. When there is a design need or market
pressure to solve a problem and there are a finite number of identified,
predictable solutions, a person of ordinary skill in the art has good reason to
pursue the known options within his or her technical grasp. If this leads to
the anticipated success, it is likely the product not of innovation but of
ordinary skill and common sense (KSR, 550 U.S. at 421).
The Examiner also states that the combination of Kim and Loyall fails
to disclose or suggest “registering a second product” (RAN 8). We agree
with Appellant that it would have been obvious to one of ordinary skill in
the art, given the explicit disclosure of Kim of registering a product and the
level of skill in the art, to have registered a second product. For example,
one of ordinary skill in the art would have understood registering a
purchased product as disclosed by Kim (e.g., entering a password
corresponding to a purchased doll) and would further have understood that
the same procedure could be repeated with a second purchased product.
In fact, as pointed out by Appellant, Loyall discloses “multiple user
avatars” (col. 82, l. 10). Since each product is associated with a
corresponding avatar (as disclosed by Kim), it would have been obvious to
one of ordinary skill in the art that “multiple user avatars” (Loyall) would be
associated with multiple products since each one of the “multiple user
avatars” would each be associated with a product, as Kim discloses. One of
ordinary skill in the art would have known, based on the Kim reference, to
obtain an avatar by registering a corresponding product and, in combination
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with the disclosure of Loyall of “multiple user avatars,” one of ordinary skill
in the art would have also known to obtain “multiple user avatars” by
registering “multiple” products – including “registering a second product” as
recited in claim 1.
The Examiner states that the combination of Kim and Loyall fails to
disclose or suggest “said control interface provides the user an option to
switch control from the selected one of said first virtual representation and
said second virtual representation to the other of said first virtual
representation and said second virtual representation” (RAN 8). However,
as Appellant points out, Loyall discloses “one user interface” (col. 82, l. 8)
and “multiple user avatars” (col. 82, l. 10) where “[e]ach user interface may
also be usable to control more than one avatar” (col. 82, ll. 11-12). In other
words, Loyall discloses a “first virtual representation” (i.e., displaying one
avatar) and a “second virtual representation” (i.e., displaying a second avatar
of the “multiple user avatars”) and a “control interface” (i.e., a user
interface) through which a user switches control between avatars (i.e., each
user interface is usable to control more than one avatar). The Examiner does
not indicate any meaningful differences between the combination of Kim
and Loyall and the disputed claim features.
The Examiner provides similar observations for claim 16.
Regarding claim 16, Respondent further argues that the combination
of Kim and Loyall fails to disclose or suggest “that the user is provided with
specialized content that includes a specialized user area when either a first or
second product is registered” (Respondent Br. 6). While Respondent states
various examples of a “specialized area” disclosed in the ‘948 patent (e.g.,
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“may be a ‘special adventure’ . . . or ‘special room’” or may be “provided to
certain users as a reward” (Respondent Br. 6)), Respondent does not indicate
that the Specification provides a specific definition of the term. In the
absence of such a definition and construing the term broadly but reasonably
in view of the Specification, one of ordinary skill in the art would have
understood a “specialized user area” to include any region or sphere (i.e.,
“area”) that is particularized (i.e., “specialized”) for a user.
As Appellant points out, Kim discloses a user participating in a
chatroom (i.e., a region or “area”) in which a “purchaser of a specific”
product provides a “specific” password (col. 18, ll. 28-29) to utilize a
specific corresponding avatar (e.g., a “corresponding WARRIORS avatar” in
an example disclosed by Kim). In other words, Kim discloses a “user area”
such as a chatroom that is particularized for a user (i.e., “specialized”) since
a specific avatar is associated with the user.
Indeed, even assuming the “specialized area” must include the
specific example proposed by Respondent of a “special room” (Respondent
Br 6), Respondent has not adequately demonstrated or alleged a difference
between a “special” room and a “chat” room as disclosed by Kim.
The Examiner provides similar observations for claim 35 as for claims
1 and 16 but also states that the combination of Kim and Loyall fails to
disclose or suggest “during said registering, accepting input from a remote
user that controls selection of information about said first product that
customizes the first product that will be displayed as a virtual product . . .”
(RAN 13). The Examiner also states that Loyall discloses:
An input is received from a user and the display of the character
is modified based on the user input. A user avatar is displayed
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and characteristic of the user avatar is changed in response to the
input from the user, and modifying the display of the character
based on the user input includes modifying the display of the
character based on the change in the characteristic of the user
avatar.

(RAN 12).

We do not discern any meaningful difference between the claim
feature of accepting input from a user that controls selection of information
about a product that customizes the product displayed as a virtual product
and Loyall’s disclosure of receiving input after which a “user avatar is
displayed and characteristic of the user avatar is changed in response to the
input from the user” (Loyall, col. 3, ll. 6-8). In both cases, an avatar is
displayed with characteristics that are based on input from a user (i.e., a
display of an avatar is “customized” by user input). Also, neither the
Examiner nor Respondent points out any specific differences.
Respondent does not provide additional arguments in support of claim
35 and does not provide additional arguments in support of dependent claims
5-7, 14, 15, 20-22, 29, 33, 34, 36, and 42.

Kim, Loyall, and Sims Booklet (claims 2-4, 8-13, 17-19, 23-28, 30, 31, 36-
41, and 43-68)

Regarding claims 43 and 55, the Examiner provides similar
observations as claims 16 and 35. We disagree with the Examiner for
reasons set forth above.
In addition, with regard to claim 43, the Examiner states that the
combination of Kim, Loyall, and Sims Booklet fails to disclose or suggest
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“during said registering, accepting input from a remote user that controls
selection of a gender of said first product” (RAN 15). Respondent agrees
with the Examiner because, according to Respondent, “[t]he Sims Booklet . .
. does not teach any steps related to creation/using an on-line user account
accessed by a user ID” (Respondent Br. 9). However, as Appellant points
out and as described above, Kim (and Loyall) suggests a user account
accessed by a user ID (i.e., a user participating in a chatroom). Since the
issue being considered is whether the combination of Kim, Loyall, and Sims
Booklet discloses or suggests the claimed invention rather than whether
Sims Booklet in isolation discloses or suggests the claimed invention, we are
not persuaded by Respondent’s assertion that Sims Booklet supposedly fails
to disclose the disputed feature.
With regard to claim 55, the Examiner also states that the combination
of Kim, Loyall, and Sims Booklet fails to disclose or suggest “said control of
said first virtual representation of the first product is prevented for a user
accessing said website using another user account” (RAN 17). Respondent
agrees with the Examiner and further argues that the combination of Kim,
Loyall, and Sims Booklet fails to disclose or suggest this feature with regard
to claim 43 (Respondent Br. 9-10). We disagree with the Examiner and
Respondent.
Appellant argues that “[p]revention of access using another account . .
. is virtually by definition what an account does” (App. Br. 23). We agree
that a user participating in a chatroom using one account (and identified as
the user associated with that account and utilizing an avatar linked to that
account) would be unable to access a separate account that is identified with
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a different user and different corresponding avatar. One of ordinary skill in
the art would have understood that to allow a user to access another user’s
account (and participate in the chatroom as that other user) would result in
confusion in the chatroom as other users would mistakenly identify the user
as someone other than who the user is.
In addition, Kim discloses that a user enters a password associated
with a product as proof of purchase of the product so that the user may
utilize a specialized avatar associated with the purchased product while
conversing in the chatroom. To permit a different user (who may not have
purchased the product) access to the account would result in the other user
utilizing the specialized avatar in the chatroom. This would violate Kim’s
disclosure that only users who have proved that they purchased the product
can utilize the corresponding avatar. We therefore agree with Appellant that
it would have been obvious to one of ordinary skill in the art to have
prevented unauthorized users access to other users’ user accounts (and user
identifiers) at least to ensure that only valid purchasers of products have
access to specialized avatars (as disclosed by Kim) and/or users participating
in chatrooms are correctly identified by other chatroom participants.
Respondent does not provide additional arguments in support of
claims 2-4, 8-13, 17-19, 23-28, 30, 31, 37-41, 44-54, and 56-68.

CONCLUSION
The Examiner erred in refusing to reject claims 1-31 and 33-68.
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DECISION
We reverse the Examiner’s decision not to maintain the rejection of
claims 1, 5-7, 14-16, 20-22, 29, 33-36, and 42 under 35 U.S.C. § 103(a) as
unpatentable over Kim and Loyall and claims 2-4, 8-13, 17-19, 23-28, 30,
31, 36-41, and 43-68 under 35 U.S.C. § 103(a) as unpatentable over Kim,
Loyall, and Sims Booklet.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b) which provides that “[a]ny decision which includes a new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review.” Correspondingly, no portion of the decision is final for
purposes of judicial review. A requester may also request rehearing under
37 C.F.R. § 41.79, if appropriate, however, the Board may elect to defer
issuing any decision on such request for rehearing until such time that a final
decision on appeal has been issued by the Board.
For further guidance on new grounds of rejection, see 37 C.F.R.
§ 41.77(b)-(g). The decision may become final after it has returned to the
Board. 37 C.F.R. § 41.77(f).
37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN
ONE MONTH FROM THE DATE OF THE DECISION, must exercise one
of the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must be
either an amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both.
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(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record. …

Any request to reopen prosecution before the examiner under 37
C.F.R. § 41.77(b)(1) shall be limited in scope to the "claims so rejected."
Accordingly, a request to reopen prosecution is limited to issues raised by
the new ground(s) of rejection entered by the Board. A request to reopen
prosecution that includes issues other than those raised by the new ground(s)
is unlikely to be granted. Furthermore, should the patent owner seek to
substitute claims, there is a presumption that only one substitute claim would
be needed to replace a cancelled claim.
A requester may file comments in reply to a patent owner response.
37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall
be limited in scope to the issues raised by the Board's opinion reflecting its
decision to reject the claims and the patent owner's response under
paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not
permitted as a matter of right. A newly proposed rejection may be
appropriate if it is presented to address an amendment and/or new evidence
properly submitted by the patent owner, and is presented with a brief
explanation as to why the newly proposed rejection is now necessary and
why it could not have been presented earlier.
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for
all patent owner responses and requester comments, is required.
The examiner, after the Board's entry of a patent owner response and
requester comments, will issue a determination under 37 C.F.R. § 41.77(d)
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as to whether the Board's rejection is maintained or has been overcome. The
proceeding will then be returned to the Board together with any comments
and reply submitted by the owner and/or requester under 37 C.F.R.
§ 41.77(e) for reconsideration and issuance of a new decision by the Board
as provided by 37 C.F.R. § 41.77(f).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REVERSED
37 C.F.R. § 41.77(b)

THIRD PARTY REQUESTER:

PERKINS COIE L.L.P.
P.O. BOX 1208
SEATTLE, WA 98111-1208

cu