Ex Parte Bansi et al

Patent Trial and Appeal Board

Dec 19, 2016

12778884 (P.T.A.B. Dec. 19, 2016)

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.
12/778,884 05/12/2010 Charnjit Singh Bansi 45LY-215905 7347
29484 7590
Novel IP
191 West Second Street
Santa Ana, CA 92701
12/21/2016 EXAMINER
HOEL, MATTHEW D
ART UNIT PAPER NUMBER
3714
NOTIFICATION DATE DELIVERY MODE
12/21/2016 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):
hazim @ no velip. com
sona @ no velip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARNJIT SINGH BANSI and PAUL KERBY
Appeal 2014-006638
Application 12/778,884
Technology Center 3700
Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Chamjit Singh Bansi and Paul Kerby (“Appellants”) seek review
under 35 U.S.C. § 134(a) of the Examiner’s decision, as set forth in the Final
Office Action dated November 19, 2012 (“Final Act.”), rejecting claims
1—33.1 The record includes a transcript of the oral hearing held on
November 15, 2016 (“Tr.”). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants identify Activision Publishing, Inc. as the real party in
interest. Appeal Br. 2.
Appeal 2014-006638
Application 12/778,884
BACKGROUND
The disclosed subject matter “relates to enabling players to interact
within a videogame through asynchronous, competitive challenges that are
based on player performance within the videogame.” Spec. 11. Claims 1,
15, 24, and 30 are independent. Claim 1 is reproduced below:
1. A system configured to enable players to
participate in competitive challenges within a
videogame, the system comprising:
a computing platform comprising one or
more processors, the one or more processors being
configured to execute computer program modules
to provide a first player with a videogame, the
computer program modules comprising:
a first performance monitoring module
configured to quantify performance of a task
by the first player within the videogame by
determining values for a set of performance
metrics characterizing the performance of the
task by the first player;
a first challenge creation module
configured to create, subsequent to
completion of the task by the first player, a
challenge for a second player,
wherein to complete the challenge the
second player must perform the task in
accordance with values dictated by the
challenge for a set of challenge metrics,
wherein challenge metrics correspond
to two or more of the performance metrics
that characterize the performance of the task
by the first player, and
wherein the values dictated by the
challenge for the set of challenge metrics are
based on values for the corresponding
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performance metrics determined by the first
performance monitoring module in
quantifying performance of the task by the
first player; and
a first challenge communication
module configured to initiate transmission of
a challenge invitation associated with the
challenge to a computing platform associated
with the second player, wherein the challenge
invitation is configured such that the values
achieved by the second user with respect to
the set of challenge metrics while performing
the task are implemented to automatically
determine whether the second player has
successfully completed the challenge.
REJECTIONS
1. Claims 1—6, 9, 10, 14, 15, 18, 19, 23—26, and 29-31 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Ostergren (US
2009/0111581 Al, published Apr. 30, 2009) and Youm (US 2010/0160038
Al, published June 24, 2010).2
2. Claims 7, 8, 16, 17, 27, and 28 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ostergren, Youm, and Chudley (US
2005/0277455 Al, published Dec. 15, 2005).
2 Although the Examiner separates the discussion of this Rejection
into two groups of claims, both groups are rejected on the same basis. See
Final Act. 2—8 (claims 1—6, 14, 15, 23—26, 29-31, and 33), 8—9 (claims 9,
10, 18, and 19). Thus, we address these two groups of claims together.
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3. Claims 11—13, 20—22, 32, and 33 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Ostergren, Youm, and Betteridge
(US 2007/0265092 Al, published Nov. 15, 2007).3
DISCUSSION
Rejection 1 — The rejection of claims 1—6, 9, 10, 14, 15, 18,
19, 23—26, and 29—31 under 35 U.S.C. § 103(a)
A. Claims 1, 2, 4, 5, 9, 10, and 14
For the claims in this group, Appellants argue the patentability of
independent claim 1 and do not separately argue the remaining claims,
which depend from claim 1. Appeal Br. 8—11. Thus, we address only claim
1, with the remaining claims standing or falling with claim 1. See 37 C.F.R.
§ 41.37 (c)(l)(iv) (2012). For claim 1, the Examiner relied on various
aspects of Ostergren, but stated that “Ostergren does not specifically disclose
wherein the challenge invitation is configured such that the values achieved
by the second user with respect to the set of challenge metrics while
performing the task are implemented to automatically determine whether the
second player has successfully completed the challenge.” Final Act. 3^4.
The Examiner found, however, that “Youm teaches [a] digital incremental
meter [that] may record one or more occurrences of the game ending
conditions to determine a winner and a loser of the live game play between
the current player and the previous player (par 155).” Id. at 4. According to
the Examiner, “[i]t would have been obvious to a person having ordinary
3 In the Final Office Action, the Examiner addressed claim 33 in the
discussion of part of Rejection 1. See Final Act. 8. In the Answer, the
Examiner stated that “claim 33 was previously mislabeled” and added claim
33 to the list of claims addressed by Rejection 3. Ans. 3.
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skill in the art at the time of the invention to have modified Ostergren in
view of Youm in order to determine the winner of the competition.” Id.
Appellants highlight various limitations in claim 1, including that “the
challenge metrics correspond to two or more of the performance metrics.”
Appeal Br. 11 (certain emphasis omitted). Appellants contend that “both
Ostergren and Youm (alone or in combination) appear to only relate to
messages between users and/or competition between users on a single metric
quantifying performance.” Id. Appellants argue that “[t]he sections of
Ostergren cited in [the] Office Action appear to merely describe a system in
which messages between users are automatically generated.” Id. at 10
(citing Final Act. 3 and Ostergren || 2, 47). Appellants contend that
“paragraph 47 of Ostergren expressly states that all that is sent between the
users are ‘messages that a user would commonly send regarding the game
that he ... is playing’” and that “[t]hese are described as including ‘a user's
score in a given game’, but are not described to include any other metrics
quantifying performance.” Id.
The Examiner responds that “[a] closer read of Ostergren indeed
indicates more than one performance metric” as “Ostergren specifically
states ‘a preformed message may express the number of achievements
earned in a particular game and/or how many points the user has acquired in
a particular game.’” Ans. 4 (quoting, with emphasis added, Ostergren 147).
The Examiner states that “both score and achievement metrics meet the
requirement of at least two performance metrics to be acquired in a
particular game.” Id. The Examiner also states, “Furthermore, Ostergren
illustrates this in Figure 6, which states T earned 3 achievements in
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Geometry Wars worth 20 points’ Here the 3 achievements and 20 point
score are the performance metrics.” Id.
We are not apprised of error in the rejection of claim 1. Appellants do
not address the passage from paragraph 47 of Ostergren relied on by the
Examiner to address the limitation at issue and have not shown error in the
Examiner’s reliance on that passage. As to Appellants’ arguments regarding
Youm (Appeal Br. 10), the Examiner does not rely on Youm to address the
limitation at issue. For these reasons, we sustain the rejection of claim 1.
Claims 2, 4, 5, 9, 10, and 14 fall with claim 1.
B. Claims 15, 18, 19, 23, and 29
Independent claim 15 recites, inter alia,
a challenge access module configured to receive acceptance of
the challenge by the first player, and, responsive to the
acceptance, to provide access to the challenge for the first player
so that the first player can attempt the task within the videogame
so that performance of the task by the first user can be
automatically evaluated in comparison with the values dictated
by the challenge for the set of challenge metrics.
Appeal Br. 26 (Claims App.) (emphasis added). In the rejection, the
Examiner relies on paragraph 44 of Ostergren and paragraph 155 of Youm
to address this limitation. See Final Act. 7.
After highlighting the limitation above (with the emphasis provided
above), Appellants argue that “[t]he claimed invention includes the feature
that a player (e.g., the first player) receiving a challenge can choose to
accept the challenge” and that “[ajccess to the challenge, and assessment of
the player’s performance with respect to the challenge are responsive to
acceptance.” Appeal Br. 12. Appellants contend that “[pjaragraph 44 [of
Ostergren] seems to merely describe a generic messaging service between
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participants in a videogame” and that “[tjhere is no discussion whatsoever of
acceptance of messages, or any actions taken in response to acceptances,
much less acceptances of the challenges recited in claim 15.” Id. According
to Appellants, paragraph 155 of Youm does not address the deficiencies of
Ostergren. Id. at 12—13.
We agree with Appellants that the record here does not support the
finding that the prior art discloses a module that is capable, without further
programming, of performing the specific functions recited in response to
“acceptance”—i.e., “to provide access to the challenge for the first player so
that the first player can attempt the task within the videogame so that
performance of the task by the first user can be automatically evaluated in
comparison with the values dictated by the challenge for the set of challenge
metrics.” See Typhoon Touch Tech., Inc. v. Dell, Inc., 659 F.3d 1376, 1380
(Fed. Cir. 2011) (determining that “memory . . . configured to” requires that
the memory “must perform the recited function”). Neither paragraph 44 of
Ostergren nor paragraph 155 of Youm disclose such functions, including, for
example, providing access to the specified “task within the videogame” that
is the subject of the “challenge.” See Appeal Br. 26 (Claim App.) (claim 15
reciting “wherein to complete the challenge the first player must perform a
task in accordance with values dictated by the challenge for a set of
challenge metrics”); Tr. 4,11. 6—13.
The Examiner’s discussion in the Answer (page 5) of Figures 7 and 8
of Ostergren relates to whether Ostergren discloses that a user can accept a
challenge, but does not address the functions required by claim 15 in
response to “acceptance.”
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For these reasons, we do not sustain the rejection of claim 15, or the
rejection of claims 18, 19, 23, and 29, which depend from claim 15.
C. Claims 24 and 25
In the rejection, the Examiner addressed independent claims 1 and 24
together, as summarized above (see supra § A). See Final Act. 3^4.
Appellants highlight the final clause of claim 24 (beginning “initiating
transmission”), and argue that “[njeither Ostergren nor Youm teaches the
transmission of a challenge invitation as recited in claim 24.” Appeal Br.
14—15. According to Appellants, “Ostergren merely teaches conventional
messaging between players, which could include a score achieved during
gameplay.” Id. at 14; see also id. at 15 (“The generic messages described in
Ostergren, at best, include a score obtained by the sender.”).4
The Examiner responds that “Ostergren discloses preformed messages
that a user would commonly send regarding the game that he or she is
playing. These preformed messages may include the number of
achievements that a player earned or a score acquired. The messages also
issue challenges to other players (par 47).” Ans. 5.
We are not apprised of error based on these arguments. Appellants do
not address the disclosure in paragraph 47 of Ostergren relied on by the
Examiner, and have not shown error in the reliance on that passage. As to
Appellants’ arguments regarding Youm (Appeal Br. 14), the Examiner does
not rely on Youm to address the limitation at issue.
4 Appellants also rely on this argument regarding claim 30. See
Appeal Br. 15.
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For these reasons, we sustain the rejection of claim 24. Because
Appellants do not separately argue claim 25 (see Appeal Br. 15), which
depends from claim 24, we also sustain the rejection of claim 25.
D. Claims 30 and 31
Addressing claims 15 and 30 together, the Examiner relied on various
aspects of Ostergren, but stated that “Ostergren does not specifically disclose
that the performance of the task by the first user can be automatically
evaluated in comparison with the values dictated by the challenge for the set
of challenge metrics.” Final Act. 6—7. The Examiner found, however, that
“Youm teaches [a] digital incremental meter may record one or more
occurrences of the game ending conditions to determine a winner and a loser
of the live game play between the current player and the previous player (par
155).” Id. According to the Examiner, “[i]t would have been obvious to a
person having ordinary skill in the art at the time of the invention to have
modified Ostergren in view of Youm in order to determine the winner of the
competition.” Id.
Appellants highlight various limitations in claim 30, which we address
in turn. See Appeal Br. 15. First, as to the “challenge communication
module” limitation,5 Appellants assert that “[t]he Office Action does not
even address th[is] feature[] of claim 30.” Id. at 16. Although the Examiner
does not, in the Final Office Action, explicitly recite this limitation, we
determine that the discussion of the “challenge communication module”
limitation in claim 15 (see Final Act. 6 (bottom)) provided sufficient
5 This limitation requires “a challenge communication module
configured to obtain a challenge invitation for the first player.” Appeal Br.
30 (Claims App.).
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explanation so that Appellants were “properly notified and able to respond.”
Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007), quoted in In re Jung,
637 F.3d 1356, 1362 (Fed. Cir. 2011).
Second, as to the “challenge monitoring module” determining
limitation,6 Appellants assert that “[t]he Office Action does not even address
th[is] feature [] of claim 30” and that “the relied upon portions of the cited
references do not teach or suggest monitoring performance of a player
receiving a challenge.” Appeal Br. 15. Appellants also argue that “[t]he
sections of Ostergren are acknowledged in the Office Action as failing to
teach or suggest any automated assessment of the receiving player’s
performance based on a received challenge” and “[t]he cited sections of
Youm, on the other hand, only describe how a puzzle game can be played
asynchronously between two players.” Id. at 16.
Although the Examiner does not, in the Final Office Action, explicitly
recite this limitation, we determine that the discussion in the bottom three
paragraphs of page 7 of the Office Action provided sufficient explanation so
that Appellants were “properly notified and able to respond.” Hyatt, 492
F.3d at 1370. Further, we are not apprised of error based on the argument
regarding Youm because Appellants do not address the specific teachings
relied on by the Examiner with respect to this limitation. See Final Act. 7
(discussing Youm 1155).
6 This limitation requires “a challenge monitoring module configured
to determine whether the first player has successfully completed the
challenge based on a comparison of the values for the set of performance
metrics achieved by the first player with the values for the challenge metrics
that are dictated by the challenge.” Appeal Br. 30 (Claims App.).
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Third, as to the “challenge monitoring module” conveying limitation,7
Appellants argue that “the relied upon portions of the cited references do not
teach or suggest. . . conveying to a sending player whether or not the
receiving player has successfully completed the challenge.” Appeal Br. 15;
id. at 16 (“There is no description in the cited sections [of Youm] of
communicating a result of the later performing player’s performance back to
the earlier performing player.”).
The Examiner responds that “the claim requires that the information is
conveyed to the first player, but not specifically how it is communicated.
That is, the winner does not specifically receive a message from the
opposing player.” Ans. 5. The Examiner also finds that “Youm teaches
using an incremental meter to determine and subsequently display the
winner and loser of the game (par 155).” Id. at 5—6.
Appellants reply that “[i]f anything, paragraph 155 of Youm, at best,
teaches communicating a result of the early game to the later performing
player” but it “does not contemplate, whatsoever, conveying the result of the
later game to the early performing player.” Reply Br. 6.
We are not apprised of error here because the language in the
“challenge monitoring module” conveying limitation does not support
Appellants’ arguments. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(rejecting arguments “not based on limitations appearing in the claims”).
The limitation at issue requires “a challenge monitoring module configured
7 This limitation requires “a challenge monitoring module configured
to ..., responsive to the first player successfully completing the challenge,
[] convey to the first player that the challenge has been successfully
completed.” Appeal Br. 30 (Claims App.).
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to , responsive to the first player successfully completing the challenge,
[] convey to the first player that the challenge has been successfully
completed.” Appeal Br. 30 (Claims App.) (emphasis added). Thus, the
limitation does not involve two different players—i.e., one completing the
challenge and another to whom the completion of the challenge is
conveyed—as argued by Appellants. See Appeal Br. 15—16; Reply Br. 6.
Further, Appellants have not shown error in the Examiner’s findings that
Youm teaches “using an incremental meter to determine and subsequently
display the winner and loser of the game.” See Ans. 5—6. We determine that
these findings satisfy the “challenge monitoring module” conveying
limitation, as recited.
For these reasons, we sustain the rejection of claim 30. Because
Appellants do not separately argue claim 31 (see Appeal Br. 16), which
depends from claim 30, we also sustain the rejection of claim 31.
E. Claim 3
Claim 3 recites the system of claim 1, “wherein the computer program
modules further comprise a first challenge criteria module configured to
receive selection by the first player of one or more of the performance
metrics, and, responsive to the received selection, to include challenge
metrics in the challenge that correspond to the selected one or more
performance metrics.” Appeal Br. 23 (Claims App.). In the rejection of
claim 3, the Examiner relied on paragraph 53 of Ostergren. See Final Act. 5.
Appellants argue that “neither of the references teaches the inclusion
of challenge metrics used to assess a receiving user’s performance in a
challenge based on selection by the sending player.” Appeal Br. 16.
Appellants assert that paragraph 53 of Ostergren “merely teaches that users
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can assemble conventional messages that include information regarding, for
example, their scores or achievements within a game.” Id. at 17.
The Examiner responds, “[i]n paragraph 53, Ostergren discloses that a
user selects a preformed message including the user’s achievements, points
and/or score, including the most up-to-date information” and that “this
paragraph [means] that the player selects any combination of the
performance metrics to challenge the second player.” Ans. 6.
The record here supports the finding that Ostergren satisfies claim 3.
In the discussion surrounding paragraph 53, Ostergren demonstrates that the
“preformed message” disclosed in that paragraph is selected from various
preformed messages, each of which is customizable by the user to include
certain information. See Ostergren || 50 (“A user may access the tell-a-
friend option while the user is playing a particular game so that the user may
quickly and easily describe features of that game and/or accomplishments of
the user within that game. Accordingly, in order to customize the generic
preformed messages stored in memory, the preformed messages may include
one or more placeholders for insertion of dynamic information relating to the
game the user is playing when the tell-a-friend option is used.”), 52 (“The
placeholders may be other identifiers which call other dynamic information
from memory for a given game, such as the number of achievements, points,
and/or scores obtained by the user in the game the user is playing.”), 54
(discussing various “preformed messages” 606 in Fig. 6). Thus, we are not
apprised of error based on Appellants’ arguments addressing claim 3.
We are also not apprised of error based on the arguments regarding
the last limitation of claim 1 or the arguments regarding Youm. See Appeal
Br. 17; Reply Br. 7. Accordingly, we sustain the rejection of claim 3.
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F. Claims 6 and 26
Claim 6 depends from claim 1 and adds, inter alia, “a challenge
access module configured to receive acceptance of the challenge by the
second player, and to provide, responsive to the acceptance, access to the
challenge for the second player so that the second player can attempt the task
within the videogame.” Appeal Br. 23 (Claims App.). Claim 26 depends
from claim 24 and adds, inter alia, the step of “providing, responsive to the
received acceptance, access to the challenge for the second player so that the
second player can attempt the task within the videogame.” Id. at 29. For
each of these limitations, the Examiner relied on “Figure 8, lead line 512” in
Ostergren. See Final Act. 6.
Appellants rely on the arguments set forth above regarding claim 15
(see supra § B) to contend that the prior art does not teach or suggest these
limitations. See Appeal Br. 19 (claim 6), 20 (claim 26).
We agree with Appellants that the record here does not support the
Examiner’s finding that the prior art discloses or suggests the limitations at
issue. As to claim 6, the Examiner has not shown that the prior art discloses
a module that is capable, without further programming, of performing the
specific function recited—i.e., “to provide, responsive to the acceptance,
access to the challenge for the second player so that the second player can
attempt the task within the videogame.” See Typhoon Touch, 659 F.3d at
1380; Tr. 4,11. 6—13. As to claim 26, the Examiner has not shown that the
prior art discloses the similar step, as recited. See Tr. 4,11. 6—13.
As to element 512 of Figure 8 of Ostergren, the Examiner has not
shown that that element, which allows users to download a game
recommended by another user, necessarily provides access such that the
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receiving player can attempt the specific “task within the videogame” that is
the subject of the “challenge” in both claims 6 and 26. See Appeal Br. 22
(Claim App.) (claim 1 reciting “wherein to complete the challenge the
second player must perform the task in accordance with values dictated by
the challenge for a set of challenge metrics”), 28 (claim 24 reciting “creating
a challenge based on performance of the task by the first player”); Tr. 5,
11. 1-13.
We turn now to the Answer. As to claim 6, the Examiner’s discussion
of paragraph 47 of Ostergren does not address the deficiencies set forth
above. See Ans. 6—7. As to claim 26, the Examiner finds that Figures 7 and
8 of Ostergren disclose that “access to the challenge is provided.” Id. at 8.
As discussed above, Figure 8 does not support this finding. In addition,
Figure 7, which discloses a message from another user during play, does not
disclose providing access such that the receiving player can attempt the
specific “task within the videogame” that is the subject of the “challenge.”
For these reasons, we do not sustain the rejection of claims 6 and 26.
Rejections 2 and 3 — The rejections of claims 7, 8, 11—13, 16, 17,
20—22, 27, 28, 32, and 33 under 35 U.S.C. § 103(a)
Claims 7, 8, and 11—13 depend from claim 6. Appeal Br. 24—25
(Claims App.). Claims 16, 17, and 20-22 depend from claim 15. Id. at
26—28. Claims 27 and 28 depend from claim 26. Id. at 29. The Examiner’s
reliance on Chudley (regarding Rejection 2) and Betteridge (regarding
Rejection 3) does not remedy the deficiencies in the combined teachings of
Ostergren and Youm, discussed above (see supra Rejection 1 §§ B (claim
15), F (claims 6 and 26)). Thus, for the same reasons discussed above, we
do not sustain the rejection of claims 7, 8, 11—13, 16, 17, 20—22, 27, and 28.
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Appellants do not separately argue claims 32 and 33, which depend
from claim 30. Appeal Br. 30-31 (Claims App.). Thus, for the reasons
discussed above (see supra Rejection 1 § D), we sustain the rejection of
claims 32 and 33.
DECISION
We AFFIRM the decision to reject claims 1—5, 9, 10, 14, 24, 25, and
30-33. We REVERSE the decision to reject claims 6—8, 11—13, 15—23, and
26-29.
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
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