Ex Parte Dawson et al

Patent Trial and Appeal Board

Aug 25, 2016

11679449 (P.T.A.B. Aug. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111679,449 02/27/2007 Christopher J. Dawson
45092 7590 08/29/2016
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.
END920070040US 1 3576
EXAMINER
SORKOWITZ, DANIEL M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
08/29/2016 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):
PTOCommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER J. DAWSON, RICK A. HAMILTON II,
BRIAN M. O'CONNELL, CLIFFORD A. PICKOVER, and
KEITH R. WALKER
Appeal2014-008209 1
Application 11/679,4492
Technology Center 3600
Before JOSEPH A. FISCHETTI, JAMES A. WORTH, and
AMEE A. SHAH, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 4-13, 16-24, and 27-36. We have jurisdiction under
35 U.S.C. §§ 134 and 6(b ).
We REVERSE.
1 Our decision refers to the Appellants' Appeal Brief ("Appeal Br.," filed
Mar. 14, 2014) and Reply Brief ("Reply Br.," filed July 22, 2014), and the
Examiner's Final Office Action ("Final Act.," mailed Oct. 17, 2013) and
Answer ("Ans.," mailed May 22, 2014).
2 According to Appellants, the real party in interest is International
Business Machines Corporation (Appeal Br. 1 ).
Appeal2014-008209
Application 11/679,449
Introduction
Appellants' disclosure relates to "virtual advertising, and more
specifically relates to a virtual universe in which unsolicited advertisements
are embodied in automated avatars." (Spec. i-f 1 ).
Claims 1, 13, 24, and 3 6 are the independent claims on appeal. Claim
1, reproduced below, is illustrative of the subject matter on appeal:
1. A computer system for delivering advertisements
to user avatars in a virtual universe, the computer system
compnsmg:
at least one processing unit;
memory operably associated with the at least one
processing unit;
an avatar advertising system storable in memory
and executable by the at least one processing unit, the avatar
advertising system comprising:
a targeting system for targeting a user avatar for
delivery of advertising content by an advertisement avatar,
wherein the targeting system permits the user avatar to cancel
the targeting of the user avatar with delivery of future
advertising content in response to the user avatar expressing a
desire that discourages further delivery of advertising content;
a movement system for defining how the
advertisement avatar is to move within the virtual universe;
an advertisement delivery system for defining how
the advertisement avatar is to deliver the advertising content to
the user avatar; and
a teaming system for introducing a plurality of
advertisement avatars into the virtual universe to deliver
advertising content to the user avatar in a coordinated manner,
wherein use of the plurality of advertisement avatars to deliver
advertising content to the user avatar is based on calculating a
probability of success that the use of the plurality of
advertisement avatars will have in generating a sale with the
user avatar, wherein the calculating of the probability of success
that the use of the plurality of advertisement avatars will have
in generating a sale with the user avatar is based on matching
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Application 11/679,449
preferences of the user avatar with a database of behaviors,
wherein the teaming system causes the user avatar to be
approached by the plurality of advertisement avatars in a
synchronous manner or an asynchronous manner in response to
determining that the probability of success is favorable, wherein
in the synchronous manner the plurality of advertisement
avatars approach the user avatar at the same time, while in the
asynchronous manner the plurality of advertisement avatars
approach the user avatar at different times, and wherein the
synchronous manner is initiated upon failure of a previous
advertisement avatar to obtain a sale and the asynchronous
manner is initiated at scheduled visits.
(Appeal Br., Claims App.)
Rejection on Appeal
The Examiner maintains, and Appellants appeal, the following
rejection:
Claims 1, 4--13, 16-24, and 27-36 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Glazer (US 2007/0179867 Al, pub.
Aug. 2, 2007), Martin (US 6,338,066 Bl, iss. Jan. 8, 2002), and Kusumoto
(US 2005/0216346 Al, pub. Sept. 29, 2005).
ANALYSIS
Independent claim 1 and its dependent claims
The Examiner relies on the disclosure in Glazer that an avatar who is
receiving advertisements in one store may go into another store to meet the
"cancelling" limitation, as recited in independent claim 1, i.e.,
a targeting system for targeting a user avatar for delivery of
advertising content by an advertisement avatar, wherein the
targeting system permits the user avatar to cancel the targeting
of the user avatar with delivery of future advertising content in
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Application 11/679,449
response to the user avatar expressing a desire that discourages
further delivery of advertising content
(Ans. 3, 9 (citing Glazer i-fi-131-34, 71-73 & Fig. 5, item 120)). Appellants
assert that going into another store does not constitute permitting a user to
cancel the targeting of advertisements, as recited, because the avatar would
remain subject to advertisements if the avatar passed by the storefront of the
store again (Appeal Br. 13-14).
We are persuaded by Appellants' argument for two reasons. First, it is
not clear that Glazer's Figure 5, 120 (entering another store front) as cited by
the Examiner (Ans. 9-10) necessarily cancels the ads, at least because Glazer
does not specifically disclose as such, and leaving a store is not generally
considering cancelling. Second, even under the Examiner's interpretation of
"cancel" as including leaving a store (see, e.g., Ans. 9-10; Final Act. 5), the
claim limitation relates to cancelling the future delivery of advertisements,
i.e., "cancel the targeting of the user avatar with delivery of future
advert1smg content." We agree with Appellants inasmuch as leaving the
store prevents the present delivery of advertisements, but does not prevent
the future delivery of advertisements (or targeting of a user avatar) if the
shopper passes by the same store again. (See Glazer i-fi-1 30-31 (discussing
avatar navigation and storefront advertisements in the virtual mall)). As
such, we do not find Glazer to disclose the recited "cancel" limitation.
We, therefore, do not sustain the Examiner's rejection under 35 U.S.C.
§ 103 (a) of independent claim 1 and its dependent claims.
Independent claims 13, 24, and 36 and their dependent claims
Independent claims 13, 24, and 36 contain similar language and
requirements as independent claim 1. We do not sustain the Examiner's
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Application 11/679,449
rejection under 35 U.S.C. § 103(a) of independent claims 13, 24, and 36, and
their dependent claims, for similar reasons as for independent claim 1.
DECISION
The Examiner's decision to reject claims 1, 4--13, 16-24, and 27-36
under 35 U.S.C. § 103(a) is reversed.
REVERSED
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