Ex Parte Dawson et al

Patent Trial and Appeal Board

Feb 18, 2015

11924743 (P.T.A.B. Feb. 18, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/924,743 10/26/2007 Christopher James Dawson AUS920070547US1 1790
87639 7590 02/18/2015
Robert H. Frantz
P.O. Box 23324
Oklahoma City, OK 73123
EXAMINER
HENRY, THOMAS HAYNES
ART UNIT PAPER NUMBER
3717
MAIL DATE DELIVERY MODE
02/18/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTOPHER JAMES DAWSON,
RICK ALLEN HAMILTON II, CLIFFORD ALAN PICKOVER and
ANNE R. SAND
____________

Appeal 2012-005995
Application 11/924,743
1

Technology Center 3700
____________

Before STEFAN STAICOVICI, MICHAEL L. HOELTER
and THOMAS F. SMEGAL, Administrative Patent Judges.

SMEGAL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Christopher James Dawson et al. (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner’s Final Rejection of claims 1−3, 5−16, 18,
and 20. Claims 4, 17, and 19 have been canceled. Appeal Br. 1. 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.
Appeal 2012-005995
Application 11/924,743

2
CLAIMED SUBJECT MATTER
Claims 1, 16, and 18 are independent. An understanding of the
invention can be derived from a reading of independent claim 1, which is
reproduced below, with emphasis on the disputed claim limitations.
1. A method for customizing a wait state experience for a
user represented by an avatar in a virtual universe, the method
comprising:
during a default context of a virtual universe, detecting
by a server computer that the avatar is entering a wait state for
an event, the default context representing one or more contexts
selected from the group consisting of a business-to-business
meeting, a presentation, a customer service session, an
education session, and a training session;
determining by the server computer one or more wait
state context preferences for the user using artificial
intelligence to infer the wait state context preferences;
selecting by the server computer at least one wait state
content object according to the one or more wait state context
preferences;
creating by the server computer a wait state context in the
virtual universe containing the at least one wait state content
object;
transporting by the server computer the avatar to the wait
state context in the virtual universe thereby allowing the user to
interact with the at least one wait state content object in the wait
state context until the event starts or occurs; and
returning by the server computer the avatar to the default
context responsive to the event starting or occurring.

Appeal Br. 16, Claims App.

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Application 11/924,743

3
REJECTIONS ON APPEAL

The following Examiner’s rejections are before us for review:
1. Claim 16 is rejected under 35 U.S.C. §101 as directed to non-
statutory subject matter;
2. Claims 1−3, 10, 11, 16, and 18 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Lection (US 6,271,843 B1, iss. Aug.
7, 2001) and Gerace (US 5,848,396, iss. Dec. 8, 1998);
3. Claims 5−7 and 20 are rejected under 35 U.S.C. §103(a) over
Lection, Gerace and Lee (US 2001/10029506 A1, publ. Oct. 11,
2001); and
4. Claims 8, 9, and 12−15 as rejected under 35 U.S.C. §103(a) over
Lection, Gerace and Hayashi (US 5,718,632, iss. Feb. 17, 1998).

ANALYSIS
Non-statutory Subject Matter
The Examiner interprets claim 16 as being drawn to a computer
readable medium, i.e., “computer readable, tangible storage devices” that
“typically covers forms of non-transitory tangible media and transitory
propagating signals per se in view of the ordinary and customary meaning of
computer readable media, particularly when the [S]pecification is silent. See
MPEP 2111.01.” Final Act. 2. The Examiner also points out that “[w]hen
the broadest reasonable interpretation of a claim covers a signal per se, the
claim must be rejected under 35 U.S.C. § 101 as covering non-statutory
subject matter. See In re Nuitjen, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007)
(transitory embodiments are not directed to statutory subject matter).” Id.
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Application 11/924,743

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Applicants first contend that “the Examiner has erred by considering
the claim term ‘one or more computer readable, tangible storage devices’ to
read upon a transitory, propagating signal.” Appeal Br. 7. Appellants also
argue that “it is illogical and unreasonable to consider a signal to be either
‘tangible’ or a ‘device’.” Id. (citing to “The Free Dictionary by Farlex” to
define the terms “signal,” “storage device,” and “tangible”).
Rather than follow the Examiner’s invitation to amend the claim to
cover only statutory embodiments (see id.), Appellants’ argue that the
rejection of claim 16 under 35 U.S.C. §101 is improper because claim 16 is
directed to “[a] computer program product comprising one or more
computer readable, tangible storage devices, [which] unlike a ‘computer
readable medium’ per se, does not [] have a broadest reasonable
interpretation that could include a transitory propagating signal per se.”
Appeal Br. 8.
Although Appellants’ Specification describes various forms of
machine-readable devices, such as floppy disks, CDs, flash drives, and
memory modules (see paras. 54–58 and fig. 4a), nonetheless, the
Specification also describes “another embodiment option (405) of the
present invention” which incorporates “wireless . . . electro-optical, and
optical signaling systems” (see Spec. ¶¶ 59–63 and Fig. 4b). Thus, the
Specification discusses employing non−statutory subject matter such as
signals. Including the terms “tangible” and “device” in claim 16 does not
remedy this issue. Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013)
(precedential). Merely because Appellants have used different terminology,
and the fact that the Specification does not explicitly exclude a “computer-
readable signal” (see Spec. ¶ 59), we find that the phrase “computer-
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Application 11/924,743

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readable, tangible storage devices” does not exclude non-statutory subject
matter, such as, transitory signals.
We thus affirm the Examiner’s rejection of claim 16 under 35 U.S.C.
§101 as covering both non-statutory and statutory subject matter.

Obviousness of claims 1−3, 10, 11, 16, and 18 over Lection and
Gerace
Appellants do not present separate arguments for the patentability of
claims 1−3, 10, 11, 16, and 18 apart from their reliance on claim 1. See
Appeal Br. 8–14, Reply Br. 5−7. Therefore, we select claim 1 as the
representative claim to decide the appeal of the rejection, with claims 2, 3,
10, 11, 16, and 18 standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii) ( 2011) .
We have considered Appellants’ arguments and do not find them
persuasive of error in the Examiner’s rejection of claim 1 as being obvious
over Lection and Gerace. Appellants contend that a user’s virtual taxi ride,
as disclosed by Lection, does not equate to a default context selected from a
Markush group “consisting of a business-to-business meeting, a
presentation, a customer service session, an education session, and a training
session,” as recited by claim 1. See Appeal Br. 8−10. Appellants argue,
inter alia, that because “the supposed default context [in Lection of] [is] a
user’s avatar arriving on a sidewalk at a taxi sign, and clicking the sign to
summon a taxi,” the sign is “not a presentation, such as a virtual PowerPoint
slide show.” Id. at 10.
We are not persuaded by Appellants’ arguments because as the
Examiner correctly finds, Lection’s clicking on a taxi sign “is a presentation
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of a virtual environment” because “[t]he virtual environment is within the
computer and is presented to the user thru the display.” Answer 13. We
give claims “their broadest reasonable interpretation consistent with the
specification” and “in light of the specification as it would be interpreted by
one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004) (citations omitted). It is the Appellants’ burden
to precisely define the invention, not the PTO’s. In re Morris, 127 F.3d
1048, 1056 (Fed. Cir. 1997). Here, Appellants have not pointed to any
lexicographic definition of the term “presentation” in the Specification, or
identified any other disclosure therein, to preclude the Examiner finding that
clicking on a taxi sign (in a virtual universe) is a presentation. Furthermore,
as the Examiner correctly points out, “[A]ppellant’s specification has not
‘defined’ the term presentation as being a power point slide show.” Answer
14.
Appellants also contend that “the Examiner has erroneously equated
statistical regression analysis [of Gerace] with Artificial Intelligence [for
determining wait state context preferences].” See Appeal Br. 8. In
particular, Appellants argue that the claims use “artificial intelligence to
infer the wait state context preferences” by which
Appellant is referring to using the inferential abilities of
artificial intelligence to review some or all of the user's virtual
world inventory, past history of travel in the virtual world, past
conversations in the virtual world, history of purchases in the
virtual world, the amount of money that a user has in the virtual
world, the appearance of the avatar, the avatar's friend list in the
virtual world, and past waiting room preferences, as provided as
example embodiments in the disclosure.

Id. at 11−12.
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While acknowledging that “Lection does not explicitly disclose using
artificial intelligence to determine preferences,” the Examiner finds that
“Gerace teaches determining preferences using artificial intelligence
processes to determine probable wait state content preferences for said user
(Col. 2, lines 16−23; Col. 15, lines 24–44)” and concludes that
It would have been obvious to one of ordinary skill in the art at
the time of the invention to combine the preference
determination of Lection with the artificial intelligence
processes of Gerace to produce predictable results in choosing
content users would find pleasing or interesting.

Answer 6.
Appellants also argue that the recitation of “artificial intelligence”
distinguishes the claims from the Examiner’s reliance on Gerace which
Appellants characterize as “statistics and regression analysis.” See Appeal
Br. 12. Appellants support their argument by citing to extrinsic evidence in
a supplemental Information Disclosure Statement, contending that “those
ordinarily skilled in the art would not consider ‘statistical regression
analysis’, ‘statistics’, and ‘artificial intelligence’ to be the same things.” Id.
at 14.
Appellants rely only upon ¶ [0087] of the Specification to describe the
term “artificial intelligence” as
[T]he information on the preference for a user wait state may be
based on artificial intelligence (“AI”), wherein the VU system
infers that the user is interested in forest locations based on an
analysis of the user’s inventory, past history of travel in the VU,
past conversations in the VU, a user's history of purchases, the
amount of money that a user has in the VU, [etc].

Appeal Br. 3.
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However, we are not persuaded by Appellants’ arguments because the
Examiner is correct in that
[Appellant’s] use of artificial intelligence is that it analyses
statistics. The Gerace reference uses analysis on statistics. In
particular these statistics include “(i) number of times viewed
by a user” (this would be similar to “[sic]past history of travel
in the VU) “(ii) number of times selected for further
information by the user” (similar to past conversations) “(iii)
number of purchases initiated from display of the advertisement
to a user” (similar to history of purchases).

Answer 16.

As such, similar to Appellants’ Specification, Gerace predicts a user’s
preference based on the user’s activity. The Examiner is also correct in that
“Appellant has never shown exactly what the current invention is doing that
the prior art has not done” and thus, correctly concludes that, while
“Appellant is welcome to be his own lexicographer, and this process can be
called Artificial Intelligence or anything else, and the prior art still reads
upon it.” Answer 16–17.
We thus discern no error in the Examiner’s findings and conclusion of
obviousness. For the foregoing reasons, we sustain the Examiner’s rejection
of claims 1−3, 10, 11, 16, and 18 as unpatentable over Lection and Gerace.

Obviousness of claims 5−7 and 20 over Lection, Gerace and Lee and
of claims 8, 9, and 12−15 over Lection, Gerace and Hayashi
While the rejections of claims 5−7 and 20 over Lection, Gerace and
Lee and of claims 8, 9, and 12−15 over Lection, Gerace and Hayashi are
separately listed on page 14 of the Appeal Brief, Appellants have made no
additional substantive arguments in response to these rejections, other than
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to request reversal based on the same reasons we discussed above in
sustaining the rejection of claim 1. Thus we sustain the Examiner’s rejection
of dependent claims 5−9, 12−15 and 20 as being unpatentable for the same
reasons stated above with respect to claim 1.

DECISION
We AFFIRM the Examiner’s decisions to reject claims 1−3, 5−16, 18
and 20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

rvb