Ex Parte Alkov et al

Patent Trial and Appeal Board

Jun 24, 2016

12180885 (P.T.A.B. Jun. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/180,885 07/28/2008
46320 7590 06/28/2016
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
Christopher S. Alkov
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.
RSW920080114US1 (400) 1910
EXAMINER
BHATIA,AJAYM
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
06/28/2016 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@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER S. ALKOV, TRAVIS M. GRIGSBY,
RUTHIE D. LYLE, and LISA A. SEACAT
Appeal2014-009564
Application 12/180,885
Technology Center 2100
Before JOSEPH L. DIXON, JOHN P. PINKERTON, and
CARLL. SILVERMAN, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-19, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection within the provisions
of 37 C.F.R. § 41.50(b) (2011).
1 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 2.
Appeal2014-009564
Application 12/180,885
STATEMENT OF THE CASE
Appellants' described and claimed invention generally addresses
deficiencies in the art of virtual world management and provides for
conversation detection in a virtual world. See Spec. i-f 6.
Claim 1 is illustrative and provides as follows (with the disputed
limitation emphasized):
1. A method for conversation management in a virtual
world data processing system, the method comprising:
recording a sequence of statements from different avatars
in a virtual world;
locating a position of each of the avatars in the virtual
world;
computing a temporal proximity of each of the recorded
statements to others of the recorded statements;
grouping selected ones of the recorded statements in the
virtual world if corresponding ones of the avatars are
geographically proximate to one another in the virtual world
and if the selected ones of the statements have occurred within
a threshold temporal proximity of one another; and,
persisting the grouped statements in the virtual world as a
conversation.
Rejection on Appeal
Claims 1-19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Robbins (S. Robbins et al., Second Life for Dummies (Jan.
2008)) and Barsness (US 2007/0005701 Al; published Jan. 4, 2007).
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Appeal2014-009564
Application 12/180,885
ANALYSIS
The dispositive issue raised by Appellants' Briefs is whether Robbins
teaches or suggests the limitation "grouping selected ones of the recorded
statements in the virtual world if corresponding ones of the avatars are
geographically proximate to one another in the virtual world," as recited in
claim 1, and as similarly recited in claims 10 and 11. See App. Br. 7-9;
Reply Br. 5-8.
The Examiner finds Robbins teaches or suggests the disputed
limitation of claim 1. Final Act. 3; Ans. 3--4. In particular, the Examiner
finds Robbins teaches grouping selected ones of the recorded statements if
the corresponding avatars "are geographically proximate to one another"
because Robbins teaches that all avatars have a chat log wherein all received
communications are recorded (citing Robbins, page 5, section 6.3) and each
chat log is based at least on the geographical distances between applicable
avatars involved in sending and receiving the recorded statements. Ans. 3--4
(citing Robbins, page 3, section 6.2; page 5, section 6.3).
Appellants contend Robbins does not teach or suggest the disputed
limitation of clam 1. App. Br. 6; Reply Br. 5-8. Specifically, Appellants
argue Robbins does not teach the concept of grouping because, in Robbins,
all chats are recorded, but the recorded chats are not grouped based on
distance. App. Br. 8; Reply Br. 7. Appellants also argue that, in Robbins,
"the distance [between avatars] determines whether you chat out loud or
shout, but does not determine whether the recorded statements should be
included in a particular 'conversation."' App. Br. 9.
We agree with Appellants' arguments that the Examiner has erred. In
particular, we agree with Appellants' argument that, in Robbins, the distance
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Appeal2014-009564
Application 12/180,885
determines whether you chat out loud or shout because section 6.2 of
Robbins teaches one may chat out loud so "those within 20 meters of you
can 'hear' you," or shout to "[f]olks who are more than 20 meters away."
See App. Br. 9. We also agree with Appellants' argument that, "upon
review of section 6.3 of Robbins, Robbins teaches that one can optionally
log all chat, including IMs, by setting the appropriate preference." Reply Br.
7. Appellants further argue, and we agree, as follows:
But Robbins does not teach or suggest the grouping of chats and
IMs based on distance as Examiner asserts; instead, Robbins
describes that chats, including IMs, are logged into a text
document that can be read later, where only an end of a last IM
is marked. In other words, there is no grouping of selected ones
of the statements in Robbins; Robbins merely records all chat,
including IMs, into a text file and marks a last IM in the log, if
that preference is selected. Further, there is no indication as to
how or if non-IM chat is marked.
Additionally, as indicated above, there is no teaching in
Robbins that the statements are recorded because corresponding
avatars are geographically proximate to one another. In other
words, Robbins records chats, including IMs, if the preference
for logging the chat is selected, regardless of whether
corresponding ones of the avatars are geographically proximate
to one another.
Reply Br. 7-8.
Because Robbins teaches one can optionally log all chats and there is
no teaching in Robbins that statements are recorded because corresponding
avatars are geographically proximate to one another, we agree with
Appellants' argument that Robbins does not teach "grouping selected ones
of the recorded statements in the virtual world if corresponding ones of the
avatars are geographically proximate to one another in the virtual world," as
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Appeal2014-009564
Application 12/180,885
recited in claim 1, and as similarly recited in claims 10 and 11. Thus, we do
not sustain the Examiner's rejection of claims 1, 10, and 11, as well as
dependent claims 2-9 and 12-19.
NEW GROUND OF REJECTON
Pursuant to the provisions of 37 C.F.R. § 41.50(b) (2011), we enter a
new ground of rejection of claims 11-19 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Claim 11 recites, a computer program product comprising a
"computer usable storage medium." Appeal Br. 16 (Claims App.). We first
note that the recited "computer usable storage medium" is not claimed as
non-transitory. Id. Second, we note the Specification does not define
"computer usable storage medium" to exclude signal propagation medium or
transitory medium, but broadly defines the term to include a "propagation
medium." See Spec. i-f 22. Accordingly, we find that the broadest
reasonable interpretation of the term "computer usuable storage medium"
includes transitory propagating signals. See Ex parte Mewherter, 107
USPQ2d 1857, 1862 (PTAB 2013) (precedential in relevant part) (holding
that where a specification does not limit the term "machine readable storage
medium" expressly to exclude signals, carrier waves, and other transitory
media, the term encompasses transitory propagating signals). Furthermore,
by encompassing transitory propagating signals, claim 11, and its dependent
claims 12-19, encompass non-statutory subject matter. See In re Nuijten,
500 F.3d 1346, 1355-57 (Fed. Cir. 2007) (holding that a transitory,
propagating signal is non-statutory per se). Thus, claims 11-19 are rejected
under 35 U.S.C. § 101.
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Appeal2014-009564
Application 12/180,885
DECISION
The Examiner's decision rejecting claims 1-19 is reversed.
A new ground of rejection is entered for claims 11-19.
37 C.F.R. § 41.50(b)
This Decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides that "[a] new ground of
rejection ... shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
exammer ....
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same record ....
REVERSED
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