Ex Parte Dawson et al

Patent Trial and Appeal Board

Nov 25, 2013

11839612 (P.T.A.B. Nov. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTOPHER J. DAWSON,
RICK A. HAMILTON II,
CLIFFORD A. PICKOVER, and
JAMES W. SEAMAN
____________

Appeal 2011-009688
Application 11/839,612
Technology Center 3600
____________

Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Christopher J. Dawson, et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1-29. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

Appeal 2011-009688
Application 11/839,612
2

SUMMARY OF DECISION
We AFFIRM.1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer-implemented method for providing rewards to an
avatar, the method comprising:
viewing, by the avatar in a virtual environment, advertising
content presented within the virtual environment, the advertising
content presented by an entity distinct from the avatar and a user
associated with the avatar; and
providing a reward to the avatar for viewing the advertising
content.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Crutchfield
Kusumoto
Jung

US 2005/0177463 A1
US 2005/0216346 A1
US 2007/0130001 A1

Aug. 11, 2005
Sep. 29, 2005
Jun. 7, 2007
The following rejections are before us for review:
1. Claims 1-5, 7, 9, 10,2 12-19, 22, 23, and 25-29 are rejected under 35
U.S.C. § 102(b) as being anticipated by Kusumoto.

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Feb. 3, 2011) and Reply Brief (“Reply Br.,” filed May 24, 2011),
and the Examiner’s Answer (“Ans.,” mailed Apr. 29, 2011).
Appeal 2011-009688
Application 11/839,612

3
2. Claims 8 and 21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kusumoto and Crutchfield.
3. Claims 6, 11, 20, and 24 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kusumoto and Jung.

ISSUES
Did the Examiner err in rejecting the claims over the cited prior art as
presented the statement of the rejections (supra)?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

ANALYSIS
The rejection of claims 1-5, 7, 9, 10, 12-19, 22, 23, and 25-29 under 35
U.S.C. §102(b) as being anticipated by Kusumoto.
Claim 1
The Appellants argue that the Examiner erred in finding that
Kusumoto anticipates the subject matter of claim 1.

2 Although claim 8 was included in the statement of the rejection as set forth
in the Answer, it was not discussed except in the §103 rejection over
Kusumoto and Crutchfield. Accordingly, we presume it was included
inadvertently.
App
App

in fin
Figu

activ
parti
Coca
para
eal 2011-0
lication 11
The Exa
ding that
re 6 is repr
Accordin
ity in acco
cipant has
-Cola® po
. [0013]. K
FIG. 6 s
which an
virtual w
Cindy, a
09688
/839,612
miner relie
the claime
oduced be
Figure 6
g to Kusu
rdance wi
selected to
ster on th
usumoto a
hows a sc
avatar 63
orld. Th
nd s/he ha

d principa
d subject m
low:
depicts an
moto, “FI
th one emb
put a Nik
e participa
lso states:
reen from
0 is enga
e consum
s selected

4
lly on Fig
atter read
avatar in
G. 6 show
odiment o
e® logo o
nt's wall in

an embod
ged in ani
er has na
to place th
ure 6 of K
on Kusum
a virtual s
s a scene
f the inve
n the parti
a virtual
iment of t
mated acti
med the
e name “C

usumoto a
oto. Ans
pace.
from a virt
ntion, in w
cipant's av
space.” K
he inventi
vity withi
avatar 63
INDY” o

s evidence
. 3-4.
ual
hich a
atar and a
usumoto,
on in
n the
0 as
n her

Appeal 2011-009688
Application 11/839,612

5
body 640. The consumer has also selected to place a Nike logo
on her body 610, and a Coca-Cola poster on the wall
620.
Kusumoto, para. [0068].
As indicated by the Appellants, it is plainly evident from looking at
Figure 6 that the words said to be in Figure 6 by the associated disclosure
(reproduced above) do not match what is on Figure 6. Nevertheless, there is
no dispute that Figure 6 of Kusumoto describes an avatar in a virtual
environment. It is also not being disputed that Kusumoto describes an avatar
in a virtual environment viewing an advertisement.
The dispute is over whether (a) the advertisement a Kusumoto avatar
views is “presented by an entity distinct from the avatar and a user
associated with the avatar” and (b) the Kusumoto avatar is “provid[ed] a
reward ... for viewing the advertising content.”
The Appellants argue that Kusumoto does not describe expressly or
inherently an advertisement “presented by an entity distinct from the avatar
and a user associated with the avatar” (claim 1). App. Br. 6. The Appellants
argue that Kusumoto describes “advertisements are selected for placement
by a consumer, which in this case is the avatar, or alternatively, the user
associated with the avatar.” App. Br. 7.
The argument is unpersuasive as to error in the rejection. Kusumoto
states at paragraph [0069] that the determination of the time and place of
advertisements can be performed by servers. A server would be “an entity
[presenting the advertisement which is] distinct from the avatar and a user
associated with the avatar” (claim 1).
Appeal 2011-009688
Application 11/839,612

6
The Appellants also argue that Kusumoto does not describe expressly
or inherently “providing a reward to the avatar for viewing the advertising
content” (claim 1). App. Br. 7. According to the Appellants, “Kusumoto's
focus is on rewarding avatars for placing advertisements viewed by other
avatars.” App. Br. 7.
Kusumoto fails to contemplate any scenario in which an avatar
(or its associated user) is rewarded except for those avatars (or
users) responsible for placing the advertisement. ... As such,
Kusumoto fails to disclose at least, “ ... providing a reward to
the avatar for viewing the advertising content...” as in
Applicants’ claim 1. (Claim 1)(emphasis added).
App. Br. 8.
The argument is unpersuasive as to error in the rejection. The claim
limitation “ ... providing a reward to the avatar for viewing the advertising
content” reasonably broadly covers clicking on an advertisement. See
Specification, para. [0020]:
In accordance with an embodiment of the present invention, as
depicted in FIG. 1, when an avatar 10 in a virtual environment
12 views (A 1) advertising content 14, the avatar 10 is provided
(A2) with a reward 16. Such viewing can be active or user-
prompted (e.g., by clicking on or otherwise actuating an
advertisement), or may be passive (e.g., by entering a location
where a sponsor's logo or advertisement is located).
Emphasis added. Kusumoto describes rewards from clicking on
advertisements. See Kusumoto, para. [0073]:
In another embodiment of the invention, the size of the award
could increase when the consumer shares aspects of the visual
world (such as scenes or links) with others, when a viewer of
the advertisement connects with other networked information
related to the advertisement (such as “clicking through” from
Appeal 2011-009688
Application 11/839,612

7
the advertisement in a virtual world to an informational web
page elsewhere in the networked environment), or when the
user transfers a scene containing the advertisement to another
medium (such as an email or a printed image).
When, according to Kusumoto, an advertisement is clicked and a consumer
receives a reward, Kusumoto necessarily describes “ ... providing a reward
to the avatar for viewing the advertising content” as that claim limitation is
reasonably broadly construed.
For the foregoing reasons, we are not persuaded that the Examiner
erred in rejecting claim 1 as anticipated by Kusumoto. We reach the same
conclusion as to claims 2-5, 7, 9, 10, and 12-14 which depend on claim 1
and have not been separately argued.

Claim 15
The Appellants (App. Br. 8-9) rely on the same arguments made in
challenging the rejection of claim 1, which we found unpersuasive. For the
same reasons, we are not persuaded that the Examiner erred in rejecting
claim 15 as anticipated by Kusumoto. We reach the same conclusion as to
claims 16-19, 22, 23, 25, 26 and 27 which depend on claim 15 and have not
been separately argued

Claim 28
The Appellants (App. Br. 9) rely on the same arguments made in
challenging the rejection of claim 1, which we found unpersuasive. For the
same reasons, we are not persuaded that the Examiner erred in rejecting
claim 28 as anticipated by Kusumoto.
Appeal 2011-009688
Application 11/839,612

8
We reach the same conclusion as to claim 29 which has not been
separately argued.

The rejection of claims 8 and 21 under 35 U.S.C. § 103(a) as being
unpatentable over Kusumoto and Crutchfield.
The rejection of claims 6, 11, 20, and 24 under 35 U.S.C. §103(a) as being
unpatentable over Kusumoto and Jung.
The Appellants (App. Br. 10-11) rely on the same arguments made in
challenging the anticipation rejection of claim 1, which we found
unpersuasive. For the same reasons, we are not persuaded that the Examiner
erred in rejecting claims 8 and 21 under 35 U.S.C. § 103(a) as being
unpatentable over Kusumoto and Crutchfield; and, claims 6, 11, 20, and 24
under 35 U.S.C. § 103(a) as being unpatentable over Kusumoto and Jung.

CONCLUSIONS
The rejections of claims 1-5, 7, 9, 10, 12-19, 22, 23, and 25-29 under
35 U.S.C. § 102(b) as being anticipated by Kusumoto; claims 8 and 21 under
35 U.S.C. § 103(a) as being unpatentable over Kusumoto and Crutchfield;
and, claims 6, 11, 20, and 24 under 35 U.S.C. § 103(a) as being unpatentable
over Kusumoto and Jung are affirmed.

DECISION
The decision of the Examiner to reject claims 1-29 is affirmed.

AFFIRMED
Appeal 2011-009688
Application 11/839,612

9
mls