Ex Parte AMSTERDAM et alDownload PDFPatent Trial and Appeal BoardFeb 25, 201612331650 (P.T.A.B. Feb. 25, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/331,650 12/10/2008 Jeffrey D. AMSTERDAM 46583 7590 02/29/2016 ROBERTS MLOTKOWSKI SAFRAN & COLE, P.C. Intellectual Property Department P.O. Box 10064 MCLEAN, VA 22102-8064 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. END920070456US 1 2982 EXAMINER TRAPANESE, WILLIAM C ART UNIT PAPER NUMBER 2171 NOTIFICATION DATE DELIVERY MODE 02/29/2016 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@rmsclaw.com lgallaugher@rmsclaw.com dbeltran@rmsclaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEFFREY D. AMSTERDAM, RICK A. HAMIL TON II, BRIAN M. O'CONNELL, and KEITH R. WALKER Appeal2014-003328 Application 12/331,650 Technology Center 2100 Before CAROLYN D. THOMAS, JESSICA C. KAISER, and JOHN R. KENNY, Administrative Patent Judges. KAISER, 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, 4--14, and 16-30, all of the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 According to Appellants, the real party in interest is International Business Machines Corporation. (App. Br. 2.) Appeal2014-003328 Application 12/331,650 EXEMPLARY CLAIMS Claims 1 and 30 are illustrative of the invention, and are reproduced below: 1. An audio modification system comprising hardware and software, the system comprising: a component configured to allow one or more audio modification algorithms to be selected for a speaking avatar; a component configured to determine whether characteristics of the speaking avatar are to be used for an audio modification, the determination comprising: creating a sampling of a real voice of a user of the speaking avatar; comparing the sampling to the characteristics of the speaking avatar; when the sampling does not match the characteristics of the speaking avatar, then selecting the characteristics of the speaking avatar for the audio modification of the real voice of the user; and when the sampling does match the characteristics of the speaking avatar, then selecting the real voice of the user for voice audio from the speaking avatar; a component configured to identify characteristics of a receiving avatar comprising first characteristics of the receiving avatar and second characteristics of the speaking avatar that are identified by the user of the receiving avatar; a component configured to identify one or more inventory items that are in use by the speaking avatar or the receiving avatar; and a component configured to modify an audio communication in a virtual universe based on the determination of whether the characteristics of the speaking avatar are to be used for the audio modification, the characteristics of the receiving avatar, and at least one of the one or more audio modification algorithms and the one or more inventory items. 2 Appeal2014-003328 Application 12/331,650 30. The system of claim 1, wherein: the identifying the one or more inventory items comprises: determining whether one or more inventory items are in use by the speaking avatar, and determining whether one or more inventory items are possessed by the speaking avatar but not in use by the speaking avatar; determining whether one or more inventory items are in use by the receiving avatar, and determining whether one or more inventory items are possessed by the receiving avatar but not in use by the receiving avatar; a component configured to modify an audio communication in a virtual universe based on the determination of whether the characteristics of the speaking avatar are to be used for the audio modification, the characteristics of the receiving avatar, the one or more audio modification algorithms, the one or more inventory items in use by the speaking avatar, the one or more inventory items possessed by the speaking avatar, the one or more inventory items in use by the receiving avatar, and the one or more inventOf'J items possessed by the receiving avatar; the system further comprising a component to: notify the receiving avatar that the audio communication has been modified, the notify comprising identifying the specific modifications applied to the audio communication to the user of the receiving avatar; and removing one or more of the specific modifications based on input received from the user of the receiving avatar; and the removing the one or more of the specific modifications comprises applying one or more functionally opposite modifications to the audio communication. 3 Appeal2014-003328 Application 12/331,650 REJECTIONS AT ISSUE The Examiner has rejected claims 1 and 4 under 35 U.S.C. § 103(a) as being unpatentable over Jacob (US 2007101683 59 A 1; published July 19, 2007), Nickell (US 2009/0253512 Al; published Oct. 8, 2009), Marks (US 2007 /0260984 Al; published Nov. 8, 2007), and Matsumoto (US 5,889,223; issued Mar. 30, 1999). (Final Act. 2-8.) The Examiner has rejected claims 6, 8-11, 13, and 30 under 35 U.S.C. § 103(a) as being unpatentable over Jacob, Nickell, Marks, Matsumoto, and Danieli (US 2005/0075885 Al; published Apr. 7, 2005). (Final Act. 17-31.) The Examiner has rejected claims 5, 7, 12, 20-27, and 29 under 35 U.S.C. § 103(a) as being unpatentable over Jacob, Nickell, Marks, and Matsumoto in combination with additional references. (Final Act. 8-16, 32- 34, 45-55, 58---62.) The Examiner has rejected claims 14, 16-19, and 28 under 35 U.S.C. § 103(a) as being unpatentable over Jacob, Nickell, and Matsumoto in combination with additional references. (Final Act. 34--45, 55-58.) ANALYSIS Claim 1 We have reviewed the Examiner's rejection of claim 1 in light of Appellants' arguments that the Examiner has erred. We disagree with Appellants' conclusions. In so far as they relate to issues raised in this appeal as to claim 1, we adopt as our own the findings and reasons set forth by the Examiner in the Final Action from which the appeal is taken and the reasons set forth in the Examiner's Answer in response to Appellants' 4 Appeal2014-003328 Application 12/331,650 Appeal Brief (see Ans. 3---6). We highlight and address specific findings and arguments for emphasis as follows. Appellants argue the combination of Matsumoto and Jacob does not teach or suggest "when the sampling does match the characteristics of the speaking avatar, then selecting the real voice of the user for voice audio from the speaking avatar," as recited in claim 1. (App. Br. 7-12; Reply Br. 2-5.) In particular, Appellants argue "any combination of Jacob and Matsumoto would result in an audio modification being applied to the user's real voice because the whole purpose of Jacob's system is to modify the user's voice to match that of user defined characteristics for a virtually displayed character." (App. Br. 9; id. at 10-11.) Appellants further argue that the Examiner's reason for making the modification is insufficient and based on impermissible hindsight reasoning. (Id. at 12-17.) Appellants also argue the proposed modification would render Jacob unsatisfactory for its intended purpose and would not be obvious because it would add complexity to Jacob with no corresponding benefit. (Id.) We are unpersuaded of Examiner error. The Examiner finds, and we agree, Jacob teaches a method for modifying a user's voice to match characteristics of an avatar's voice, such as based on gender. (Ans. 3 (citing Jacob i-f 43, Fig. 5).) The Examiner further finds, and we agree, Matsumoto teaches detecting the gender of a user's voice and if it matches a selected gender, using the user's real voice. (See id. (citing Matsumoto 5:33--47).) The Examiner finds, and we agree, the combination of these teaches or suggests "a system in which a user's voice is modified to match a selected characteristic only if the user's voice does not already contain the specific characteristic." (Id.) The Examiner further provides articulated reasoning 5 Appeal2014-003328 Application 12/331,650 with some rational underpinning for making this combination: namely, to more accurately match the user's voice and to avoid redundant processing when the user's voice already has the desired characteristic. (Id. at 3--4; see also id. at 5 (citing Matsumoto 1:30-34).) Appellants' arguments that "Jacob is simply not interested in ever using the real voice of the user" and Jacob "never describes an instance in which the user'[s] real voice is used without modification" (App. Br. 9) are unpersuasive because they address Jacob individually. In re Keller, 642 F.2d 413, 426 (CCPA 1981) (citation omitted) ("[O]ne cannot show non- obviousness by attacking references individually where ... the rejections are based on combinations of references."). We further disagree with Appellants that "when the teachings of both Jacob and Matsumoto are considered as a whole, the user's real voice will always be modified." (App. Br. 10.) To the extent Appellants argue Jacob teaches away from the Examiner's modification, we observe that to teach away, a reference must actually "criticize, discredit, or otherwise discourage" investigation into the claimed solution. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We discern nothing in Jacob that actually criticizes, discredits, or otherwise discourages modifying its method so that the user's real voice is used if it matches the speaking avatar's characteristics. Jacob's lack of a description of such a modification does not teach away or persuasively show that modification would not have been obvious. We observe that Jacob's teaching of multiple characteristics also does not teach away, as Appellants argue (Reply Br. 3--4). Appellants have not persuasively explained why applying Matsumoto's teaching regarding gender to match other avatar characteristics to the user's real voice would 6 Appeal2014-003328 Application 12/331,650 have been "uniquely challenging or difficult for one of ordinary skill in the art" or "represented an unobvious step over the prior art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Appellants also argue the Examiner's proposed combination would not increase the accuracy of Jacob because Jacob uses different characteristics to modify the avatar's voice. (Reply Br. 4 (citing Jacob i-f 41).) Although Jacob identifies different avatar characteristics that may be modified by a user (Jacob i-f 41, Fig. 5), we agree with the Examiner (Ans. 3--4) that using a user's real voice (rather than a modified voice) ifthe user's voice match those characteristics would have improved accuracy as well as efficiency (in avoiding unnecessary processing). In addition, to the extent Appellants' arguments address a bodily incorporation of Matsumoto into Jacob (see Reply Br. 5---6), we are unpersuaded. "The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference." Keller, 642 F.2d at 425. Rather, "if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Such arguments are not persuasive because the Examiner did not rely on a bodily incorporation. In sum, the Examiner has provided articulated reasoning with some rational underpinning showing it would have been obvious to modify Jacob so that a user's real world voice is used in desirable circumstances, as taught in Matsumoto. (Ans. 3---6.) For the reasons discussed above, Appellants 7 Appeal2014-003328 Application 12/331,650 have not persuaded us of error in the Examiner's decision to reject independent claim 1. Claim 30 Appellants argue Jacob does not teach a determination "as to whether one or more inventory items are possessed by the speaking avatar but not in use by the speaking avatar," and does not teach "modify[ing] an audio communication based on" such a determination. (App. Br. 34--35; see Reply Br. 10-11.) We agree with Appellants. The Examiner finds Jacob teaches an avatar may possess an object, which may be used for communication, such as a two-way radio. (Ans. 7 (citing Jacob i-fi-164, 72).) The Examiner further finds that Jacob teaches an avatar can have a two-way radio and listen to it, which indicates possession of an object without that object being in active use. (Id.) The avatar listening to the radio, however, would be the "receiving avatar" recited in claim 30, whereas the avatar "speaking into the radio" (Jacob i172) would be the "speaking avatar." The Examiner has not shown that Jacob teaches determining whether a speaking avatar has an inventory item in its possession but not in use and modifying an audio communication based on that determination, as argued by Appellants (Reply Br. 11 ). For the reasons discussed above, we are constrained by the record to reverse the Examiner's decision to reject claim 30. Remaining Pending Claims Appellants' arguments regarding the remaining independent claims are substantially similar to their arguments for claim 1, and Appellants do 8 Appeal2014-003328 Application 12/331,650 not argue separate patentability for the remaining dependent claims. (See App. Br. 17-33, 36-46.) According, we sustain the Examiner's rejection of those claims for the reasons discussed above for claim 1. DECISION The Examiner's decision to reject claims 1, 4--14, and 16-29 is affirmed. The Examiner's decision to reject claim 30 is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 9 Copy with citationCopy as parenthetical citation