Ex Parte Ancier

Board of Patent Appeals and Interferences

Mar 16, 2010

10437204 (B.P.A.I. Mar. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LELAND J. ANCHIER
____________

Appeal 2009-003701
Application 10/437,204
Technology Center 2100
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Decided: March 17, 2010
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Before LEE E. BARRETT, ST. JOHN COURTENAY III, and
CAROLYN D. THOMAS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-79. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
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STATEMENT OF THE CASE
INVENTION
Appellant's invention relates generally to inducing desired behavior by
a subject with the automatic application of points. (Spec. 1). More
particularly, the invention on appeal associates each of a plurality of desired
behaviors with a corresponding positive point value, and each of a plurality
of undesired behaviors is associated with a corresponding negative point
value. (Spec. 4). “A behavior tracking manager tracks desired and undesired
behaviors performed by a subject over a defined period of time.” (Id.). “The
behavior tracking manager, in a subsequent defined period of time,
automatically allocates consequences to the subject based on the point total
earned during the previous period of time. It is to be understood that a
consequence can be positive (e.g., a reward) or negative (e.g., a
punishment).” (Id.).

ILLUSTRATIVE CLAIM
1. A computer implemented method for inducing
desired physical tasks in a subject, the method
comprising:

associating at least one desired physical task with a
corresponding positive point value;

associating at least one undesired physical task
with a corresponding negative point value;

associating a first point threshold with a plurality
of positive reward based consequences;

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associating a second point threshold with a
plurality of negative punishment based consequences;

tracking desired physical tasks and undesired
physical tasks performed by a subject over a fixed period
of time;

automatically calculating a single point total
based on the desired physical tasks and the undesired
physical tasks performed by the subject during the fixed
period of time; and

after the fixed period of time, automatically
allocating a consequence to the subject based on the
single point total for the fixed period of time, wherein
the consequence is allocated responsive to a relationship
between the single point total and at least one of the first
point threshold and the second point threshold.

(emphasis added).

PRIOR ART
Heller US 2003/0216962 A1 Nov. 20, 2003
Freer US 2004/0230549 A1 Nov. 18, 2004
Cragun US 5,973,683 Oct. 26, 1999

THE REJECTIONS
1. The Examiner rejected claims 1-19, 22-25, 28-44, 46-53, 56-69,
71-74, and 76-79 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Heller and Freer.
2. The Examiner rejected claims 20, 21, 26, 27, 45, 54, 55, 70, and 75
under 35 U.S.C. § 103(a) as unpatentable over the combination of
Heller, Freer, and Cragun.
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CONTENTIONS BY APPELLANT
Appellant contends, inter alia, that “[u]nlike the claimed invention,
which calculates a single point total based on both undesired and desired
physical tasks, Heller ‘evaluates each player’s tally of feedback for each
category’ to determine whether category-specific actions should be taken
regarding the player. See Heller, ¶ [0056]. Hence, Heller maintains multiple
point totals of user feedback in multiple categories rather than calculates a
‘single point total based on the desired physical tasks and the undesired
physical tasks performed by the subject.’” (App. Br. 6, ¶2).

THE EXAMINER’S RESPONSE
The Examiner disagrees, as follows:
It appears appellant is taking an overly narrow interpretation of
the claim language. Although Heller describes more than one
point total (a first point total with a plurality of positive reward
based consequences, including inclusion to highly skilled or
expert level plays, additional game capabilities, discounted
game time, reduced fees for membership, t-shirts, CDs, etc.
(sections [0084] and [0088]), and a second point total
with a plurality of negative punishment based consequences,
including limiting communication, suspending or terminating
access, electronic community assignments (Abstract, sections
[0068], [0078], [0091]), to track desired and undesired behavior
thresholds over scheduled intervals such as a predefined period
of twice a week) (section [0056]) and automatically calculate a
point total based on the behaviors performed by the subject
during the defined/fixed period of time such as twice a week
(section [0056]; feedback tallied/calculated for behaviors with
positive and negative based consequences over a predefined
interval) while automatically allocating consequences to the
subject based on the point total earned during the previous
period of time in a subsequent defined/fixed period of time
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(section [0056]; thresholds are updated and feedback is
evaluated/tallied over a predefined interval to determine if any
action(s) should be taken regarding the player/subject, i.e. credit
and punishment are mete out based on various criteria, e.g. a
user can be suspended from participation upon his/her tallied
negative feedback level exceeding a certain threshold level)),
each of the point totals is a single point total within the
meaning of the claims.

(Ans. 22-23, emphasis added).

REPLY BRIEF
Appellant responds, as follows:

Although [the] Examiner admits that Heller uses multiple
point totals to determine if actions should be taken regarding
rewarding or punishing a user, [the] Examiner alleges that each
of the multiple point totals in Heller is ‘a single point total
within the meaning of the claims.’ See Examiner's Answer,
page 23. This construction of the claim language is incorrect
and has no basis in the claim language.
It is clear from the claim language of ‘a single point total
based on the desired physical tasks and the undesired physical
tasks performed by the subject during the fixed period of time,’
that a single point total includes both desired and undesired
physical tasks performed during a fixed time interval. Each of
the point totals disclosed in Heller includes only positive
feedback or only includes negative feedback, so that no point
total in Heller is ‘based on the desired physical tasks and the
undesired physical tasks performed by the subject.’ (emphasis
added).

(Reply Br. 2-3).
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ISSUE
Based upon our review of the administrative record, we have
determined that the following issue is dispositive in this appeal:
Under § 103, would the combination of Heller and Freer
have taught or suggested “automatically calculating a
single point total based on the desired physical tasks and
the undesired physical tasks performed by the subject
during the fixed period of time”? (Claim 1).

PRINCIPLES OF LAW
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 417.

FINDINGS OF FACT
1. Heller teaches that “[f]or example, all feedback may be tallied over a
predefined interval, such as twice a week, after which, a batch process
can be applied to evaluate each player's tally of feedback for each
category to determine if any action(s) should be taken regarding the
player.” (Para. [0056]).
2. Heller teaches that “[a]t a decision step 554, the server determines
whether the received feedback is a voice (communication) complaint .
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. . . If the received feedback is a voice complaint, the server updates a
tally of voice complaints at a step 556.” (Para. [0068]).
3. Heller teaches that “[a]t a decision step 584, the server determines
whether the received feedback is a nickname complaint. . . . If the
received feedback is a nickname complaint, the server updates a tally
of nickname complaints at a step 586.” (Para. [0078]).
4. Heller teaches that “[a]t a decision step 610, the server determines
whether the received feedback is a compliment regarding the selected
player's game play performance. . . . If the received feedback was a
good play compliment, the server updates a tally of good play
compliments for the selected player, at a step 612.” (Para. [0084]).
5. Heller teaches that “[a]llowing submitters to submit feedback for
themselves provides a comparative system that enables players to
gauge how the submitters see themselves versus how others in the
community see them.” (Para. [0089]).
6. Heller teaches that “feedback may be weighted according to a
category of conduct within which the feedback falls. Thus, a threshold
may be exceeded and action may be taken more quickly when only a
few reports of a particularly egregious conduct are received in a
category.” (Para. [0091]).

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ANALYSIS
Independent claim 1
We decide the question of whether the Examiner’s proffered
combination of Heller and Freer would have taught or suggested
“automatically calculating a single point total based on the desired physical
tasks and the undesired physical tasks performed by the subject during the
fixed period of time.” (Claim 1).
After considering the evidence before us, and the respective
arguments on both sides, we conclude that the Examiner’s proffered
combination of Heller and Freer does not render obvious Appellant's
claimed invention. In particular, we find the evidence supports Appellant's
principal argument that “Heller maintains multiple point totals of user
feedback in multiple categories rather than calculates a ‘single point total
based on the desired physical tasks and the undesired physical tasks
performed by the subject.” (App. Br. 6, ¶2, underline added).
We begin our analysis by noting (as argued by Appellant) that the
Examiner has admitted in the record that “Heller describes more than one
point total (a first point total with a plurality of positive reward based
consequences, . . . and a second point total with a plurality of negative
punishment based consequences . . . . (Ans. 22-23, emphasis added).
However, the Examiner further finds that “each of the point totals [in Heller]
is a single point total within the meaning of the claims.” (Ans. 23).
Based upon our review of the record, we agree with Appellant’s
contention that “[the Examiner’s] construction of the claim language is
incorrect and has no basis in the claim language.” (Reply Br. 2). We note
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that the express language of claim 1 requires automatically calculating a
single point total based on the desired physical tasks and the undesired
physical tasks performed by the subject during the fixed period of time.
In contrast, we find that none of the portions of Heller cited by the
Examiner (paragraphs 0056, 0068, 0078, 0084, 0088, and 0091, Ans. 22-23)
teach or suggest a tally (i.e., a single point total) of both desired physical
tasks (behaviors) and the undesired physical tasks performed by the subject
during the fixed period of time. (FF 1-6). We find that a fair reading of
Heller indicates that any feedback tallied over an interval of time is either a
positive (desired) or negative (undesired) category of feedback, and not a
single tally of both. (e.g., see FF 1: Heller teaches that “[f]or example, all
feedback may be tallied over a predefined interval, such as twice a week,
after which, a batch process can be applied to evaluate each player's tally of
feedback for each category to determine if any action(s) should be taken
regarding the player.”).
Based upon our review of Heller, we find no teaching of a single
category that includes both positive (desired) and negative (undesired)
activities (tasks) that are tallied. Moreover, in the rejection of claim 1 (Ans.
4), we observe that the Examiner has conspicuously omitted the word
“single” (i.e., “single point total” as claimed) when mapping the language of
claim 1 to paragraph 0056 of Heller:
automatically calculating a point total based on the behaviors
performed by the subject during the defined/fixed period of
time (section [0056]; feedback is tallied/calculated for
behaviors with positive and negative based consequences over
a predefined interval such as twice a week . . . .
(Ans. 4, underline added, emphasis in original).
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We find no support in the cited portions of Heller for the Examiner’s
finding that “each of the point totals is a single point total within the
meaning of the claims.” (Ans. 23, ¶1). To the contrary, we find the cited
portions of Heller (FF 1-6) support Appellant's contention that “[e]ach of the
point totals disclosed in Heller includes only positive feedback or only
includes negative feedback, so that no point total in Heller is ‘based on the
desired physical tasks and the undesired physical tasks performed by the
subject.’” (emphasis in original). (Reply Br. 2-3).
Because the Examiner has not established, and we do not find, that
Freer overcomes the deficiencies of Heller, we reverse the Examiner’s § 103
rejection of independent claim 1 and independent claims 46, 61, 62, and 72
that each recite commensurate limitations.
Independent claim 45 stands rejected over Heller, Freer, and Cragun
and recites commensurate limitations to those discussed supra regarding
independent claim 1. Because the Examiner has not established, and we do
not find, that Cragun overcomes the deficiencies of Heller and Freer, we also
reverse the Examiner’s § 103 rejection of independent claim 45.
Because we have reversed the Examiner’s rejection of each
independent claim on appeal, we also reverse the Examiner’s rejections of
each dependent claim on appeal.

CONCLUSION
The Examiner’s proffered combination of Heller and Freer (and
Cragun) would not have taught nor fairly suggested “automatically
calculating a single point total based on the desired physical tasks and the
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undesired physical tasks performed by the subject during the fixed period of
time.” (Claim 1; see commensurate limitations recited in each of
independent claims 45, 46, 61, 62, and 72).

ORDER
We reverse the Examiner’s decision rejecting claims 1-79 under 35
U.S.C. § 103(a).

REVERSED

pgc

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