Ex Parte Bokor et al

Patent Trial and Appeal Board

Feb 5, 2016

12419324 (P.T.A.B. Feb. 5, 2016)

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).
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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
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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
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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.
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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
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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
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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
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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
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