Ex Parte Bokor et alDownload PDFPatent Trial and Appeal BoardFeb 5, 201612419324 (P.T.A.B. Feb. 5, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/419,324 0410712009 44870 7590 02/09/2016 MOORE & VAN ALLEN, PLLC For IBM P.O. Box 13706 3015 Carrington Mill Boulevard, Suite 400 Research Triangle Park, NC 27709 FIRST NAMED INVENTOR Brian Ronald Bokor 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. RS\V920080314US1_108 1380 EXAMINER WILDER, ANDREW H ART UNIT PAPER NUMBER 3627 NOTIFICATION DATE DELIVERY MODE 02/09/2016 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): iplaw@mvalaw.com usptomail@mvalaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN RONALD BOKOR, ANDREW BRYAN SMITH, PETER FREDERICK HAGGAR, DANIEL EDWARD HOUSE, and WILLIAM BRUCE NICOL II Appeal2013-007823 1 Application 12/419,3242 Technology Center 3600 Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and TARA L. HUTCHINGS, Administrative Patent Judges. HUTCHINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. 1 Our decision references Appellants' Appeal Brief ("Appeal Br.," filed Feb. 27, 2013) and Reply Brief ("Reply Br.," filed May 29, 2013), and the Examiner's Answer ("Ans.," mailed Apr. 24, 2013) and Final Rejection ("Final Act.," mailed Jan. 10, 2013). 2 Appellants identify International Business Machines Corporation as the real party in interest. Appeal Br. 1. Appeal2013-007823 Application 12/419,324 CLAIMED INVENTION Appellants' claimed invention "relate [ s] to virtual world simulations of the real-world or real-life ... , and more particularly[,] to a system and method for mapping at least one real world item to a virtual world." Spec. ,-r 1. Claim 1, reproduced below with added bracketed annotations, is representative of the subject matter on appeal: 1. A computer implemented method for mappmg transactions between a real world and a virtual world, compnsmg: [(a)] receiving information associated with a real world item at a virtual business object (VBO) controller on a computer system; [ (b)] receiving information associated with a user at the VBO controller; [(c)] generating by the VBO controller a VBO comprising the information associated with the real world item in response to receiving by the VBO controller a decision by the user to buy the real \'l/orld item; [(d)] generating by the VBO controller a VBO light comprising the information associated with the real world item in response to receiving at the VBO controller a decision by the user not to buy the real world item; and [(e)] transmitting one of the VBO and the VBO light to a VBO inventory database associated with the user based on the user's information. REJECTIONS Claims 1-13 and 15-25 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Chuah (US 2003/0014423 Al, pub. Jan. 16, 2003) and Chung (US 2010/0082456 Al, pub. Apr. 1, 2010). 2 Appeal2013-007823 Application 12/419,324 Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Chuah, Chung, and Van Luchene (US 2007/0087822 Al, pub. Apr. 19, 2007). ANALYSIS Independent claim 1 and dependent claims 2-13 We are persuaded by Appellants' argument that the Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 103(a) because Chuah does not disclose or suggest limitation ( c ), as recited in claim 1. Appeal Brief 7- 9; Reply Br. 2-3. The Examiner maintains that the rejection is proper and relies on Figure 8 and paragraphs 58---60 of Chuah as disclosing limitation ( c ). Final Act. 4. Chuah discloses obtaining virtual objects from real world objects. Chuah, i-f 59. A unique identification (ID), such as a barcode, is attached to the real world object. Id. The ID is stored within a secure marketplace, and each ID is associated with a corresponding virtual object identification number. Id. After a user purchases a real world object with an ID, the user may retrieve its associated virtual object by scanning the ID and sending it to the secure virtual marketplace 114. Id. Fig. 8, i-fi-159---60. User Account Storage and Retrieval 120 retrieves the associated virtual object from Asset and Storage Retrieval system 116, and updates the user's account with the newly received virtual object. Id. i-f 60. And the secure virtual marketplace 114 returns the results to the user. Id. We agree with Appellants that retrieving a virtual object by scanning, as disclosed by Chuah, does not disclose or suggest limitation ( c ), as recited in claim 1, at least because Chuah retrieves the virtual object in response to a 3 Appeal2013-007823 Application 12/419,324 scan by the user sometime after the user purchases the real world item, not in response to a decision by the user to buy the real world item. See Appeal Br. 7-8. In response, the Examiner explains that Chuah at paragraphs 59---60 describes that a user may scan a barcode on a real world object to retrieve its associated virtual object when the user "obtains" a real world object, irrespective of purchase. See Ans. 3. The Examiner interprets the word "obtain" used in paragraph 59 of Chuah as evidence that Chuah requires a user to physically obtain-not legally obtain (e.g., by purchase)-the real world object before scanning. But we agree with Appellants (see Reply Br. 2-3) that the Examiner's interpretation is not reasonably supported by the Chuah reference when read in context. Instead, Chuah describes a system in which ownership of a virtual object that is associated with a real world object is related to ownership of the real world object. See, e.g., Chuah i-f 59 (attaching a unique identifier to a real world object associated with a virtual object), i-f 60 (scanning the unique identifier on the real world object to retrieve the corresponding virtual object after purchasing the real world item), claim 26 (changing ownership information of a virtual object associated with a real world object involves the scanned unique identification from the real world object and an identification of the new owner). Moreover, even assuming for the sake of argument that Chuah does disclose that scanning can take place so long as the user can physically obtain the real world object, as the Examiner maintains, then a scanned ID received by Chuah's virtual marketplace necessarily would be independent of a decision by the user to buy the real world item. Thus, Chuah 4 Appeal2013-007823 Application 12/419,324 nonetheless would fail to disclose or suggest a decision by the user to buy the real world item, as recited in claim 1. The Examiner takes the following position on the term "decision": Appellant[ s] [are] continually arguing a limitation that is so broad it could constitute performing an action in response to simply a thought in a user's brain. A ["]decision["] is nothing more than an abstract idea. . . . The user [of Chuah] could have easily obtained the real world object, ... scan[ ned] the object in response to the decision to buy the real world object[,] and then [purchased] the real world item. Ans. 3--4. But we agree with Appellants that a thought in a user's brain cannot be received by a VBO controller and, thus, does not meet the language recited in limitation ( c ). Reply Br. 2. We also are persuaded by Appellants' argument that the Examiner erred in rejecting independent claim 1under35 U.S.C. § 103(a) because the combination of Chuah and Chung does not disclose or suggest limitation ( d), as recited in claim 1. Appeal Br. 9-11; Reply Br. 4--5. In rejecting claim 1, the Examiner acknowledges that Chuah fails to teach limitation ( d). Final Act. 4. But the Examiner determines that Chuah describes maintaining a different inventory of temporarily lost or missing virtual objects. Id. at 5. And the Examiner reasons that because Chuah discloses limitation ( c) that: it would have been ["]obvious to try["-] choosing from a finite number of identified, predictable solutions[] with a reasonable expectation of success [-] to have additionally maintained a different inventory of virtual objects ([i.e., "]VBO light["]) based on a decision to perform the opposite of the taught feature of generating virtual objects based on a decision to buy ([i.e., "]a decision by the user not to buy["])[,] as taught by Chuah. 5 Appeal2013-007823 Application 12/419,324 Final Act. 4--5. In other words, the Examiner's analysis with respect to limitation ( d) is fundamentally flawed, at least because it is based on the same deficiency described above with reference to limitation ( c ). In addition, a proper finding of obviousness based on an "obvious to try" rationale requires, inter alia, a showing that, at the time Appellants' invention was filed, ( 1) there was a recognized problem and a design need or market pressure to solve the problem; (2) there was a finite number of identified, predictable solutions; and (3) one of ordinary skill would have had good reason to pursue the known options within his or her technical grasp, with a reasonable expectation of success. KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007). The Examiner presumably mentions Chuah's lost or missing items in support of a recognized problem or design need or market pressure to support the "obvious to try" rationale. Final Act. 5. Chuah at paragraph 46 discloses that virtual objects may be lost, stolen, or destroyed while traveling within a virtual world. A user's inventory of virtual objects at logout are compared with the user's inventory of virtual objects at the preceding login to determine whether objects were gained or lost, and lost or missing objects are retrieved using their identification. Chuah, i-f 4 7. But we agree with Appellants that the Examiner does not provide the requisite findings to support an "obvious to try" rationale as applied to claim 1. Appeal Br. 10-11 and Reply Br. 4. Instead, Examiner makes an impermissible conclusory statement that it would have been obvious to try "based on a decision to perform the opposite of the taught feature of generating virtual objects based on a decision to buy." Final Act. 5. For example, we fail to see, and the Examiner does not explain, how Chuah' s 6 Appeal2013-007823 Application 12/419,324 disclosure of retrieving lost objects discloses or suggests a recognized problem or design need, let alone one in which limitation ( d), as recited in claim 1, would be one of a finite number of identifiable, predictable solutions. Notably, neither the lost or missing items nor their retrieval have any correlation to a decision by the user regarding whether to buy a real world item. The Examiner further cites Chung as "provid[ing] more motivation for the ["obvious to try"] rationale described above [with respect to limitation ( d)]." Id. at 5---6 (citing Chung, i-fi-126, 31-34, and 36). The Examiner finds that Chung at paragraph 34 teaches limitations ( c) and ( d) of claim 1. Id. at 5---6. And the Examiner concludes that one of ordinary skill in the art at the time the invention was made would have recognized "the adaption of creating widgets/VBOs based on whether or not a user has purchased a real world item (i.e.[, "]VBO["]) or not purchased a real world item (i.e.[, "]VBO light["])[,] as taught by Chung[,] to the method and system for generating virtual business objects (VBOs) for users in response to a user's decision to purchase real world items[,] as taught by Chuah[,] for the predicted result of improved virtual inventory systems and methods." We disagree that Chung helps provide motivation for the obvious to try rationale articulated by the Examiner. Chung discloses, with reference to Figure 7, a storefront 700, used in e-commerce transactions and accessed via a web browser, having sales widgets 710, 720, and 740 arranged in the storefront. Chung i-fi-f 19, 34. Sales widgets include a carousel, rack, shelf, or other mechanism for displaying items for sale within the store. Id. i133, Fig. 7. Sales widgets 710 and 720 are identified as purchased by the storefront owner, and 7 Appeal2013-007823 Application 12/419,324 sales widget 7 40 is identified as unpurchased by the storefront owner. Id. i-f 34. A management dashboard permits a storefront owner to edit a storefront to view the storefront as it currently exists (i.e., with the paid-for sales widgets 710, 720) and/or with unpaid-for widget 740. Id. In this way, the storefront owner may experiment with the placement, sizing and style of the unpaid-for widget 740 before committing to its purchase. Id. We fail to see how presenting store owners with purchased and unpurchased sales widgets to arrange in an electronic storefront, as disclosed by Chung, discloses or suggests limitations ( c) and ( d), as recited in claim 1. We agree with Appellants that Chung's sales widgets are virtual objects that are generated and stored prior to any decision by a store owner to purchase the widgets, and not generated in response to any decision to buy or not buy a real world item. Appeal Br. 9. Additionally, Chung's invention lies exclusively in the field of e- commerce. See, e.g., Chung, Abstract, i-fi-12-8. Thus, the store owner in Chung does not consider buying a real world item, let alone generating either a VBO or a VBO light based on the outcome of that decision, as required by claim 1. Rather, Chung's store owner considers whether to buy the virtual object itself (i.e., a sales widget, such as a virtual shelf) for displaying other virtual objects, such as items for sale, within thee- commerce environment. Chung, i-f 33, Fig. 7. On this record, the Examiner has failed to establish a prima facie case ofunpatentability. Therefore, we do not sustain the Examiner's rejection of independent claim 1under35 U.S.C. § 103(a). For the same reasons, we also do not sustain the rejection of dependent claims 2-13, 15, and 16. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are 8 Appeal2013-007823 Application 12/419,324 nonobvious if the independent claims from which they depend are nonobvious"). Dependent claim 14 Claim 14 ultimately depends from independent claim 1. The Examiner's rejection of claim 14 based on Van Luchene, in combination with Chuah and Chung, does not cure the deficiency in the Examiner's rejection of claim 1. Therefore, we do not sustain the Examiner's rejection of claim 14 under 35 U.S.C. § 103(a). Independent claims 17 and 21, and dependent claims 18-20 and 22-25 Independent claims 17 and 21 include language substantially similar to the language of claim 1. Therefore, we do not sustain the Examiner's rejection under 35 U.S.C. § 103(a) of independent claims 17 and 21, and claims 18-20 and 22-25 that depend from the independent claims, for the same reasons set forth above with respect to claim 1. DECISION The Examiner's rejections of claims 1-25 under 35 U.S.C. § 103(a) are reversed. REVERSED Ssc 9 Copy with citationCopy as parenthetical citation