Ex Parte Bhogal et al

Patent Trial and Appeal Board

Aug 22, 2018

12139297 (P.T.A.B. Aug. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/139,297 06/13/2008 Kulvir S. Bhogal
45092 7590 08/24/2018
HOFFMAN WARNICK LLC
540 Broadway
4th Floor
ALBANY, NY 12207
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.
END920070 l 26US 1 1136
EXAMINER
PRATT, EHRINLARMONT
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
08/24/2018 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):
PTOCommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KUL VIR S. BHOGAL, RICK A. HAMIL TON II,
JENNY S. LI, and CLIFFORD A. PICKOVER
Appeal2017-005925
Application 12/139 ,297 1
Technology Center 3600
Before BRUCE T. WIEDER, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's rejection of claims 1--4, 7, 9-11, 13-16, 18, 20, 21, 23, and 24.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is International Business
Machines Corporation. (Appeal Br. 1.)
Appeal2017-005925
Application 12/139,297
CLAIMED SUBJECT MATTER
Appellants' "invention relates generally to virtual environments and
more specifically to facilitating interactive product evaluation and service
within a virtual universe." (Spec. ,r 1.)
Claims 1, 16, 21, and 24 are the independent claims on appeal.
Claim 1 is illustrative. It recites:
1. A method, comprising:
providing a virtual universe for residents thereof to inhabit
and interact via avatars that are representations of the residents,
wherein the inhabiting of the avatars in the virtual universe gives
an appearance and sensation to the residents of being present in
a place in the virtual universe that is different than their true
location, and the interacting of the avatars while inhabiting in the
virtual universe takes place over a plurality of sensory channels
each providing feedback of sensory data to the residents that is
experienced by their avatar, the sensory data including sight,
sound, touch, taste, and smell, wherein movements and position
of the avatar in the virtual universe provide a perspective on
reality in the virtual universe and determine what sensory
feedback is given;
providing a medium to an avatar that is on-line in the
virtual universe to evaluate a virtual universe product created for
use in the virtual universe, wherein the virtual universe product
to be evaluated resides in an inventory of the avatar or in an
inventory of another resident of the virtual universe, each
inventory containing a listing of properties and possessions
belonging to a resident of the virtual universe that are for use in
the virtual universe, wherein each inventory belonging to a
resident in the virtual universe is separate and distinct from each
other, the virtual universe product in the inventory having an
evaluation indicator, generated by an evaluation indicating
component embodied in hardware, associated therewith that
indicates that an evaluation is desired for the virtual universe
product, the evaluation indicator further providing an indication
whether the evaluation of the virtual universe product is made
publicly available to all residents of the virtual universe or to a
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restricted set of residents of the virtual universe that have been
preapproved by an owner of the virtual universe product, wherein
the evaluation indicator is a visual indicator in the virtual
umverse;
generating an invitation to the avatar that requests that the
avatar evaluate the virtual universe product, wherein the
invitation comprises an invitation to teleport to a specified region
within the virtual universe to evaluate the virtual product, the
specified region having a location that is different from a location
in which the avatar receives the invitation to teleport;
receiving an evaluation of the virtual universe product
from the avatar; and
transmitting the evaluation to a third party provider
associated with the virtual universe product; and
initiating a support session with the avatar by the third
party provider, in response to the transmitting of the evaluation,
for the virtual universe product that is based on the evaluation,
wherein the initiating of the support session includes opening a
communication channel with a customer service representative
that is associated with the third party provider to obtain answers
and assistance with regard to the virtual universe product,
wherein the assistance is based on a particular feedback of the
evaluation.
REJECTIONS
Claims 1--4, 7, 9--11, 13-16, 18, 20, 21, 23, and 24 are rejected under
35 U.S.C. § 101 as directed to a judicial exception without significantly
more.
Claims 1--4, 7, 9--11, 13-16, 18, 20, 21, 23, and 24 are rejected under
35 U.S.C. § 103(a) as unpatentable in view of Sundaresan
(US 2007 /0239552 Al, pub. Oct. 11, 2007), Ratnakar
(US 2008/0195507 Al, pub. Aug. 14, 2008), and Altberg
(US 2008/0263458 Al, pub. Oct. 23, 2008).
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Application 12/139,297
ANALYSIS
The § 101 rei ection
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. Section 101, however,
"'contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable."' Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355.
Under the two-step framework, it must first be determined if "the
claims at issue are directed to a patent-ineligible concept." Id. If the claims
are determined to be directed to a patent-ineligible concept, e.g., an abstract
idea, then the second step of the framework is applied to determine if "the
elements of the claim ... contain[] an 'inventive concept' sufficient to
'transform' the claimed abstract idea into a patent-eligible application." Id.
at 2357 (citing Mayo, 566 U.S. at 72-73, 79).
With regard to step one of the Alice framework, the Examiner
determines that the claims are
directed to the abstract idea of:
generating an invitation to the avatar that requests that the
avatar evaluate the virtual product, receiving an evaluation of the
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virtual universe product from the avatar; and transmitting the
evaluation to a third party provider associated with the virtual
universe product which is similar to concepts relating to
managing relationships or transactions found in [ Dealertrack,
Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012)].
(Final Action 2-3, emphasis omitted.)
The Examiner further determines that the claims are
directed to the abstract idea of:
initiating a support session with the avatar by the third
party provider, in response to transmitting the evaluation, for the
virtual universe product that is based on the evaluation, wherein
the initiating of the support session includes a customer service
representative that is associated with the third party provider to
obtain answers and assistance with regard to the virtual universe
product wherein the assistance is based on a particular feedback
of the evaluation is similar to concepts relating to interpersonal
and intrapersonal activities such as marketing and sales activities
or behaviors or managing human mental activity found in
[Gametek LLC v. Zynga, Inc., Nos. CV 13-2546 RS, CV 13-
3089 RS, CV 13-3472 RS, CV 13-3493 RS, 2014 WL 1665090
(N.D. Ca. Apr. 25, 2014), aff'd 597 F. App'x 644 (Fed. Cir.
2015)].
(Id. at 3.)
Appellants argue that Dealertrack and Gametek are distinct from
Appellants' invention and that in both instances, the Examiner has "focused
on a single aspect of the claim." (Appeal Br. 10.)
Under step one of the Alice framework, we "look at the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
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The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that Appellants'
"invention relates generally to virtual environments and more specifically to
facilitating interactive product evaluation and service within a virtual
universe." (Spec. ,r 1.) Claim 1 provides further evidence. Claim 1 recites
"[a] method comprising: providing a virtual universe for residents thereof to
inhabit and interact via avatars," "providing a medium to an avatar that is
on-line in the virtual universe to evaluate a virtual universe product,"
"generating an invitation to the avatar that requests that the avatar evaluate
the virtual universe product," "receiving an evaluation ... from the avatar,"
"transmitting the evaluation to a third party provider," "and initiating a
support session with the avatar by the third party provider."
Although we and the Examiner describe, at different levels of
abstraction, to what the claims are directed, it is recognized that "[a]n
abstract idea can generally be described at different levels of abstraction."
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That
need not and, in this case does not, "impact the patentability analysis." See
id. at 1241.
Here, claim 1 recites providing a world, providing a medium to an
avatar in that world to evaluate a product, inviting the avatar to evaluate the
product, receiving the evaluation, sending the evaluation to a third party, and
initiating a session with the avatar. In short, the claim provides a means for
collecting data, requests data, collects data, and transmits data. The virtual
universe "merely provide[ s] a generic environment in which to carry out the
abstract idea." See In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607,
611 (Fed. Cir. 2016). Thus, we agree with the Examiner that "[t]he fact that
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the invitation and medium (i.e., product evaluation) are limited to a virtual
universe ... is ... merely the environment in which the abstract idea is
practiced." (Answer 6.)
As in Alice, we need not labor to delimit the precise contours of the
"abstract ideas" category in this case. It is enough to recognize that there is
no meaningful distinction in the level of abstraction between the concept of
"collecting information, including when limited to particular content (which
does not change it character as information)," "analyzing information by
steps people go through in their minds," and "presenting the results," in
Elec. Power Grp., LLC, 830 F.3d at 1353-54, and the concept of providing a
means for collecting information, requesting the information, collecting the
information, and sending the information, at issue here. Both are squarely
within the realm of "abstract ideas" as the Court has used that term. See
Alice, 134 S. Ct. at 2357.
Moreover, we agree with the Examiner's determination that the claims
are similar to those in Dealertrack because Dealertrack teaches "receiving
data from one source (such as the request), selectively forwarding the data
(such as receiving an evaluation), and forwarding reply data to the first
source (such as transmitting the evaluation to a third party provider)."
(Answer 5.) The Examiner also determines that, with regard to the claim
step of "initiating a ... session with the avatar," Gametek teaches that this is
"simply appending conventional steps (such as post marketing and sales
activities) applied to the abstract idea." (Id. at 7.) As in Electric Power
Group, "[h Jere, the claims are clearly focused on the combination of those
abstract-idea processes." Elec. Power Grp., LLC, 830 F.3d at 1354.
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Appellants also argue that "the Examiner has not looked at the full
claims." (Appeal Br. 10.) We do not find this argument persuasive. As
discussed above, under step one of the Alice framework, we "look at the
'focus of the claimed advance over the prior art' to determine if the claim's
'character as a whole' is directed to excluded subject matter." Affinity Labs
of Texas, LLC, 838 F.3d at 1257. Here the Examiner has looked at the focus
of the claims. (See Final Action 2--4.) That the Examiner has determined
that the claims are directed to two abstract ideas (id. at 2-3), does not
persuade us of error. See RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F .3d
1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea ... to another
abstract idea ... does not render the claim non-abstract.")
In view of the above, we agree with the Examiner that claim 1 is
directed to an abstract idea.
Step two of the Alice framework has been described "as a search for
an' "inventive concept" '-i.e., an element or combination of elements that
is 'sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept] itself."' Alice, 134 S. Ct.
at 2355 (quoting Mayo, 566 U.S. at 72-73).
The Examiner determines that "[t]he additional element(s) of 'a
communication channel' and 'an evaluation indicating component embodied
in hardware' includes generic computer( s) performing generic computer
functions. See Spec [,I 0042, 0048]." (Final Action 4, emphasis omitted.)
The Examiner also determines that "[ t ]he providing steps represent
insignificant pre-solution activity" and that the "recitation of the 'evaluation
indicator' is simply a field of use that ... does not add a meaningful limit on
the abstract idea." (Id. at 5.) Thus, the Examiner determines that
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"[ c ]onsidering the additional elements both individually and as a
combination, the claim as a whole does not amount to significantly more
than the abstract idea itself." (Id. at 6.)
Appellants disagree and argue that the
claims must be seen as reciting additional elements that amount
to significantly more than the judicial exception. Appellants'
claims comprise highly detailed implementations of the "Virtual
Universe Product Evaluation Tool 53" as supported by
Appellants' specification and are so long that it is cumbersome
to reproduce them in this argument. . . . But in summary,
"providing a virtual universe ... " includes significant elements
for establishing the technical environment of a virtual world.
"[P]roviding a medium to an avatar ... " includes not only the
technical details of the "evaluation indicator", but the more
general technical considerations of inventory data management
for residents of a virtual world. "[G]enerating an invitation to an
avatar ... " includes significant details of the role of virtual regions
and avatar transport in a specific method. And, "initiating a
support session with an avatar ... " provides significant details on
structuring virtual roles and interactions beyond a mere
conceptual framework.
(Appeal Br. 11.) In short, "Appellants maintain that the claims presented are
sufficiently detailed and technical to amount to a significant improvement in
the virtual universe arts." (Reply Br. 4.) We disagree.
For example, with regard to Appellants' argument that the claim
limitation "'providing a virtual universe ... ' includes significant elements for
establishing the technical environment of a virtual world" (Appeal Br. 11 ),
claim 1 does not recite "how the desired result is achieved." See Elec.
Power Grp. LLC, 830 F.3d at 1355. Nor does claim 1 "require any
nonconventional computer, network, or display components, or even a 'non-
conventional and non-generic arrangement of known, conventional pieces."'
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Id. Indeed, claim 1 does not recite a computer or a processor. It follows that
because the claim is not focused on how the desired results are achieved,
e.g., how the virtual universe is provided, how the medium is provided to the
avatar, how the invitation to the avatar is generated, how the evaluation is
received, how the evaluation is transmitted, or how the support session is
initiated, the claim does not recite a technological improvement. See
Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328 (Fed.
Cir. 2017).
Moreover, "under the Mayo/Alice framework, a claim directed to a
newly discovered law of nature (or natural phenomenon or abstract idea)
cannot rely on the novelty of that discovery for the inventive concept
necessary for patent eligibility." Genetic Techs. Ltd. v. Merial L.L. C., 818
F.3d 1369, 1376 (Fed. Cir. 2016). Thus, even if the claimed method is
"[g]roundbreaking, innovative, or even brilliant," that is not enough for
patent eligibility. Ass 'nfor Molecular Pathology, 569 U.S. at 591.
In view of the above, we agree with the Examiner that claim 1 is
directed to a judicial exception without significantly more. Claims 2--4, 7,
9-11, 13-16, 18, 20, 21, 23, and 24 are not separately argued and fall with
claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
The § 103 (a) reiection
Claim 1 recites, in relevant part:
the virtual universe product in the inventory having an evaluation
indicator . . . associated therewith that indicates that an
evaluation is desired for the virtual universe product, the
evaluation indicator further providing an indication whether the
evaluation of the virtual universe product is made publicly
available to all residents of the virtual universe or to a restricted
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set of residents of the virtual universe that have been preapproved
by an owner of the virtual universe product.
(Emphasis added.) Independent claims 16, 21, and 24 include similar
language.
The Examiner finds that paragraph 29 of Sundaresan discloses this
limitation, i.e., paragraph 29 "discloses item list creator has the ability to
solicit collaboration, e.g. review among members of the community group."
(Final Action 8; see also Answer 14--15.)
Appellants disagree and argue that Sundaresan "is silent regarding
selectability [ of the evaluation] between public and group." (Appeal Br. 13;
see also Reply Br. 5---6.)
Sundaresan discloses "a method and system for community based
network shopping, according to one embodiment, by creating and sharing a
shopping item list among a defined community." (Sundaresan ,r 1.) In
paragraph 29, Sundaresan further discloses:
Item list application(s) 216 may be used in the network-
based marketplace 112 by a user to create an item list to be shared
within a community group created or designated by the user. The
item list applications 216 may be accessed via a user interface
that allows the user to . . . associate the item list with the
community group. This item list association with the
community group, in an example embodiment, allows the item
list creator the ability to solicit collaboration ( e.g.,
recommendations, review, etc.) among the members of the
community group (e.g., friends and family) to assist the item list
creator in finding and buying a specific gift from a broad request.
We are persuaded of reversible error. The cited portion of Sundaresan
discloses allowing the item list creator to solicit reviews among community
members, i.e., control distribution of the request for an evaluation.
(Sundaresan ,r 29.) But we see no disclosure in paragraph 29 of "providing
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an indication whether the evaluation of the ... product is made publicly
available to all residents ... or to a restricted set of residents," as recited in
claim 1. Nor does the Examiner otherwise determine that it would have
been obvious, in view of Sundaresan and the other cited references, to
provide an indication whether the product evaluation is made publically
available or is restricted.
Therefore, we will reverse the rejection of independent claims 1, 16,
21, and 24, and dependent claims 2--4, 7, 9-11, 13-15, 18, 20, and 23 under
§ 103(a).
DECISION
The Examiner's rejection of claims 1--4, 7, 9-11, 13-16, 18, 20, 21,
23, and 24 under 35 U.S.C. § 101 is affirmed.
The Examiner's rejection of claims 1--4, 7, 9-11, 13-16, 18, 20, 21,
23, and 24 under 35 U.S.C. § 103(a) 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
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