Ex Parte Dawson et al

Patent Trial and Appeal Board

Jan 25, 2018

12103472 (P.T.A.B. Jan. 25, 2018)

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.
12/103,472 04/15/2008 Christopher J. Dawson AUS920080103US1 2002
87276 7590 01/29/2018
IBM Endicott- DeLizio Law, PLLC
DeLizio Law
c/o DeLizio Law, PLLC
15201 Mason Road Suite 1000-312
Cypress, TX 77433
EXAMINER
ELCHANTI, TAREK
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
01/29/2018 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):
uspto@deliziolaw.com
u spto2 @ deliziolaw. 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, PAUL A. MOSKOWITZ, and
CLIFFORD A. PICKOVER
Appeal 2016-005560
Application 12/103,472
Technology Center 3600
Before BRADLEY W. BAUMEISTER, JEREMY J. CURCURI, and
AMBER L. HAGY, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-11, 13-22, 25, and 26, which are all of the
pending claims.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants identify International Business Machines Corporation as the
real party in interest. (App. Br. 1.)
2 Claims 12, 23, and 24 have been canceled. (App. Br. 27, 32 (Claims
App’x).)
Appeal 2016-005560
Application 12/103,472
STATEMENT OF THE CASE
Introduction
According to Appellants, “[ejmbodiments of the inventive subject
matter generally relate to the field of virtual universe systems, and, more
particularly, to proximity-based broadcast virtual universe systems.”
(Spec. ^ 1.) Further according to Appellants, “[a] virtual universe (‘VU’) is
a computer-based simulated environment intended for its residents to
traverse, inhabit, and interact through the use of avatars.” (Id. 2.)
According to Appellants’ Specification, the claimed invention
operates in the context of “[pjroximity-based transmission of information,”
which “disseminates relevant information” to consumers through their
avatars in a virtual universe. (Spec. ^ 14.) Businesses in the virtual universe
may use proximity-based transmission of information “to encourage avatars
to move near the designated focal point object within the virtual universe so
that the avatars can be exposed to products and advertisements.” (Id.)
One problem Appellants’ invention purports to address is the issue of
avatar density within a predetermined proximity of a focal point object
causing an overload condition on the server system. (Spec. ^ 14.) To
address that problem, Appellants’ claimed invention causes, in response to a
determined overload condition, “[djynamic spawning of auxiliary focal point
objects,” which “reduces the load on virtual universe host servers and the
corresponding client devices, and thus improves performance of the virtual
universe system.” (Id.)
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Application 12/103,472
Exemplary Claim
Claims 1, 11, 17, and 19 are independent. Claim 1, reproduced below
with the disputed limitations italicized, is exemplary of the claimed subject
matter:
1. A method comprising:
determining, at a server system, that a proximity of a
virtual universe avatar with respect to a designated
focal point object of a virtual universe is within a
first proximity range of the designated focal point
object, wherein said designated focal point object
is associated with information, and in response:
selecting, at the server system, a first of a plurality
of representations of the information based,
at least in part, on said determining that the
proximity of the virtual universe avatar with
respect to the designated focal point object
is within the first proximity range of the
designated focal point object; and
transmitting the first representation of the
information to the virtual universe avatar;
determining, at the server system, that the proximity of
the virtual universe avatar with respect to the
designated focal point object is within a second
proximity range of the designated focal point
object, and in response:
selecting, at the server system, a second of the
plurality of representations of the
information, and
transmitting the second representation of the
information to the virtual universe avatar;
determining whether a loading condition of a hardware
device of the server system has been exceeded,
wherein the hardware device comprises at least
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Application 12/103,472
one of a memory, a processor, and a power
component; and
in response to the loading condition of the hardware
device of the server system being exceeded,
creating an auxiliary focal point object in the
virtual universe having a location that is different
from a location of the designated focal point
object.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hirakawa et al. (“Hirakawa”)
Brush II et al. (“Brush”)
Matsuda
Jacob et al. (“Jacob”)
Amjadi
Altberg et al. (“Altberg”)
Hamilton II et al. (“Hamilton”)
US 5,664,126
US 6,023,270
US 6,981,220 B2
US 2007/0168359 A1
US 2008/0140509 Al
US 2008/0263458 Al
US 2009/0046094 A1
Sept. 2, 1997
Feb. 8, 2000
Dec. 27, 2005
July 19, 2007
June 12, 2008
Oct. 23, 2008
Feb. 19, 2009
REJECTIONS
Claims 1-11, 13-22, 25, and 26 stand rejected under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter. (Final Act. 2—4.)
Claims 1-3, 5-9, 11, 13-22, 25, and 26 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Brush, Amjadi, Altberg, Matsuda,
Hirakawa, and Hamilton. (Final Act. 5-17.)
Claims 4 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Altberg and Jacob. (Final Act. 18-19.)
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Application 12/103,472
ISSUES
1. Whether the Examiner erred in rejecting claims 1-11, 13-22,
25, and 26 under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter.
2. Whether the Examiner erred in finding the combination of
Brush, Amjadi, Altberg, Matsuda, Hirakawa, and Hamilton teaches or
suggests “in response to the loading condition of the hardware device of the
server system being exceeded, creating an auxiliary focal point object in the
virtual universe having a location that is different from a location of the
designated focal point object,” as recited in independent claim 1 and
commensurately recited in independent claims 11, 17, and 19.
ANALYSIS
A. Claim Construction
As an initial matter, before we assess the Examiner’s rejections under
sections 101 and 103, we must determine the scope of the claims. It is well
settled that, during prosecution, the terms of a claim must be given their
broadest reasonable interpretation consistent with Appellants’ Specification,
as they would be interpreted by one of ordinary skill in this art. In re
Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319,
321-22 (Fed. Cir. 1989).
Claim 1 is a method claim that recites several steps, each of which
steps requires “determining” whether a recited condition precedent has been
met, and further recites additional steps to be taken “in response” to each
condition precedent being met. For example, the first of two limitations
principally relied upon by Appellants in arguing against all of the
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Examiner’s rejections of claim 1 recites “determining whether a loading
condition of a hardware device of the server system has been exceeded.”
(App. Br. 22 (Claims App’x).) The second of the two relied-upon
limitations immediately follows the first limitation and recites “in response
to the loading condition of the hardware device of the server system being
exceeded, creating an auxiliary focal point object in the virtual universe
having a location that is different from a location of the designated focal
point object.” {Id. at 23).)
We conclude that claim 1 recites conditional steps that are performed
only “in response” to their respective conditions precedent being met (e.g.,
“a loading condition of a hardware device of the server system [being]
exceeded”), which need not happen. {See Ans. 3.) According to our
precedent, as a matter of claim construction, the broadest reasonable
interpretation of claim 1 encompasses a method in which the conditional
steps are not performed. See Ex parte Schulhauser, Appeal No. 2013-
007847, 2016 WL 6277792, at **3-5 (PTAB Apr. 28, 2016) (precedential).
For example, according to claim 1, unless a loading condition of a
hardware device of the server system is exceeded, the step of “creating an
auxiliary focal point object in the virtual universe having a location that is
different from a location of the designated focal point object” need not be
performed. The same analysis applies to independent claim 11, which also
recites similar “determining” steps with respective conditional “in response”
steps.
Independent claims 17 and 19 also recite limitations similar to the
argued limitation of claim 1 (App. Br. 27-30 (Claims App’x)) and are
argued collectively with claim 1 {id. at 12, 15, 20). Unlike claim 1,
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however, claims 17 and 19 are directed to a “computer program product”
and a “computer system,” respectively, placing them in a different statutory
class from claim 1, i.e., a product or system rather than a process or method
under 35 U.S.C. § 101. The broadest reasonable interpretation of such
product or system claims requires that structure and logic be provided to
perform all recited functions, even those that are conditional. See
Schulhauser, 2016 WL 6277792 at **6-7.
With this construction of the claims in mind, we turn now to the
Examiner’s rejections.
B. §101 Rejections
1. Transitory Signals (claims 17 and 18)
We turn first to the Examiner’s second basis of rejection of claims 17
and 18 under 35 U.S.C. § 101. (Final Act. 4.) Independent claim 17 recites
“[a] computer program product. . . comprising: one or more computer-
readable tangible storage devices” and “program instructions, stored on at
least one of the one or more storage devices.” (App. Br. 27-28 (Claims
App’x).) The Examiner rejects claim 17 (and its dependent claim 18) under
35 U.S.C. § 101 as encompassing non-statutory subject matter, and states
this rejection could be overcome if these claims were amended to recite that
the computer medium is a “non-transitory medium.” (Final Act. 4.)
Appellants’ Specification provides no explicit definition of a
“computer-readable tangible storage device.” The Specification does
describe a “machine-readable medium having stored thereon instructions,”
but does not limit that medium to excluding transitory media, which are non-
statutory subject matter. See In reNuijten, 500 F.3d 1346, 1356-57 (Fed.
Cir. 2007). As the Board has held, “those of ordinary skill in the art would
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understand the claim term ‘machine-readable storage medium” would
include signals per se, and where “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.” Ex parte Mewherter, 107
USPQ2d 1857, 1862 (PTAB 2013) (precedential) (citing In reNuijten, 500
F.3d at 1356-57). Similar analysis applies to a “computer-readable tangible
storage device.” See id.
Because Appellants’ Specification does not define the “computer-
readable tangible storage device” to exclude transitory media, we agree with
the Examiner that a reasonable construction of the claim term “computer
readable tangible storage device” and “program instructions,” when viewed
in light of the Specification, can be interpreted as including transitory forms
of memory (e.g., propagating signals), which are unpatentable subject matter
under 35 U.S.C. § 101. See Ex parte Mewherter, 107USPQ2dat 1862. We,
therefore, affirm the Examiner's rejection of claims 17 and 18 on this
ground. We further note that Appellants do not address this ground of
rejection, which also supports our summarily sustaining this rejection. See
Manual of Patent Examining Procedure (MPEP) § 1205.02, 9th ed., Rev. 11,
March 2014 (“If a ground of rejection stated by the examiner is not
addressed in the appellant’s brief, appellant has waived any challenge to that
ground of rejection and the Board may summarily sustain it.”).
2. Patent-ineligible Subject Matter
We turn now to the Examiner’s rejection of all pending claims under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
Patent eligibility is a question of law. Dealertrack, Inc. v. Huber, 674
F.3d 1315, 1333 (Fed. Cir. 2012). The Supreme Court has set forth an
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analytical “framework for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice Corp. v. CLS Bank Int’l, 134 S. Ct.
2347, 2355 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 71-73 (2012)). In the first step, we determine whether the
claims at issue are “directed to” a judicial exception, such as an abstract
idea. Alice, 134 S. Ct. at 2355. If not, the inquiry ends. Thales Visionix Inc.
v. U.S., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfish, LLCv. Microsoft
Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims are determined to
be directed to an abstract idea, then we consider under step two whether the
claims contain an “inventive concept” sufficient to “transform the nature of
the claim into a patent-eligible application.” Alice, 134 S. Ct. at 2355
(quotations and citation omitted).
Noting that the two stages involve “overlapping scrutiny of the
content of the claims,” the Federal Circuit has described “the first-stage
inquiry” as “looking at the ‘focus’ of the claims, their ‘character as a
whole,’” and “the second-stage inquiry (where reached)” as “looking more
precisely at what the claim elements add—specifically, whether, in the
Supreme Court’s terms, they identify an ‘inventive concept’ in the
application of the ineligible matter to which (by assumption at stage two) the
claim is directed.” Electric Power Grp, LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). In considering whether a claim is directed to an
abstract idea, we acknowledge, as did the Court in Mayo, that “all inventions
at some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.” Mayo, 566 U.S. at 71. We, therefore, look
to: (1) whether the claims focus on a specific means or method that
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improves the relevant technology, or (2) are directed to a result or effect that
itself is the abstract idea, in which the claims merely invoke generic
processes and machinery. See Enflsh, 822 F.3d at 1336.
Step One: Whether the Claims Are Directed to a Patent-Ineligible
Concept (Abstract Idea)
Here, in rejecting the pending claims under § 101, the Examiner
analyzes the claims using the Mayo/Alice two-step framework, consistent
with the guidance set forth in the USPTO’s “2014 Interim Guidance on
Patent Subject Matter Eligibility,” 79 Fed. Reg. 74618 (Dec. 16, 2014), in
effect at the time the Final Office Action was mailed. (Final Act. 2—4.)
Addressing the first step, the Examiner determines that claims 1-11, 13-22,
25, and 26 are “directed towards determining the proximity of the avatar
with respect to the designated focal point object within the virtual universe
world[,] which is considered to be an abstract idea inasmuch as such activity
is considered both a method of organizing human activity [and] a
fundamental economic practice.” (Final Act. 2, 20.) In particular, the
Examiner finds the claims are directed to the abstract idea of
“enabling/disabling the redemption of offers based on the user’s mobile
device location itself.” {Id. at 21.)
Appellants first take issue with the applied scope of the concept of
“abstract ideas.” In particular, Appellants argue that the Court in Alice did
not say all methods of organizing human activity are abstract ideas, and thus
insist that whether a claim is directed to a method of organizing human
activity is not determinative of whether the claim is abstract. (App. Br. 10.)
We agree with Appellants that the Court did not suggest in Alice that
all methods of organizing human activities are directed to an abstract idea,
but we disagree that only “hedging and intermediate[d] settlement” are
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within the scope of the “methods of organizing human activity” category of
patent-ineligible abstract ideas, as Appellants suggest. (See id. at 10.) We
similarly disagree with Appellants’ premise that only “concepts that are
fundamental and essential to science, technology, or modem commerce” fall
within the scope of patent-ineligible abstract ideas. (See App. Br. 11-12.)
We further note that the Federal Circuit has repeatedly confirmed
since Alice that the category of abstract ideas embraces “fundamental
economic practice[s] long prevalent in our system of commerce,” including
“longstanding commercial practice[s]” and “method[s] of organizing human
activity,” even where those ideas are implemented using computer
technology. E.g., Intellectual Ventures ILLC v. Symantec Corp., 838 F.3d
1307, 1313 (Fed. Cir. 2016) (agreeing with the district court’s conclusion
that customizing web page content and budgeting using a communication
medium is an abstract idea); Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1348 (Fed. Cir. 2015) (agreeing with the district court’s
conclusion that the claims recited the abstract idea of “retaining information
in the navigation of online forms”).
As the Examiner finds, Appellants’ claims are directed to
“enabling/disabling the redemption of offers based on the user’s mobile
device location itself.” (Final Act. 21.) In particular, Appellants’ claims
recite presentation of certain information to a consumer through a virtual
universe avatar depending on whether the avatar is within a certain
proximity of a designated focal point in the virtual universe. (App. Br. 22
(Claim’s App’x).) Stated otherwise, Appellants’ claims are directed to the
fundamental economic practice of targeting information (e.g.,
advertisements) to nearby consumers (represented in the virtual universe by
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avatars), a concept illustrated in Appellants’ Figure 1A. (See also
Spec. ^ 14.) As such, Appellants’ claims are similar to claims that have
been determined by courts to be directed to abstract ideas. See Intellectual
Ventures ILLC v. Capital One Bank, 792 F.3d 1363, 1369-70 (Fed. Cir.
2015) (finding the practice of tailoring advertising to individual customers to
be a “fundamental. . . practice long prevalent in our system”); see also
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714-15 (Fed. Cir. 2014)
(finding “showing an advertisement before delivering free content” to be an
abstract idea).
Thus, at step one of the analysis, we are not persuaded that the
Examiner erred in determining that the claims are directed to patent-
ineligible subject matter—that is, to an abstract idea.
Step Two: Whether Additional Elements Transform The Idea Into
Patent-Eligible Subject Matter
Having found that the claims are directed to an abstract idea, the
Examiner also finds “[t]he claims do not include additional elements that are
sufficient to amount to significantly more than the judicial exception
because the claims merely amount to the application or instructions to apply
the abstract idea.” (Final Act. 2.) In particular, the Examiner finds:
The claims merely amount[] to the application or
instructions to apply the abstract idea (i.e. enabling objects based
on the avatars location) on a computer, and is considered to
amount to nothing more than requiring a generic computer
system (e.g. a computer product/readable medium comprising a
generic element such as a user interface and an application for
performing the steps of the [cjlaimed invention) to merely carry
out the abstract idea itself. As such, the claims, when considered
as a whole, are nothing more than the instruction to implement
the abstract idea in a particular, albeit well-understood, routine
and conventional technological environment.
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(Id. at 21.)
Appellants argue the Examiner’s findings are in error because the
Examiner overlooks that the claims “represent one or more improvements to
the technical field of hardware devices of servers hosting a virtual universe.”
(App. Br. 12.) Specifically, Appellants contend the claims “represent one or
more improvements to the technical field of server technology,” because
they recite “creating an auxiliary focal point object in the virtual universe
based on a loading condition of a hardware device of the server system being
exceeded.” (Id.) According to Appellants, this recitation is a meaningful
limitation that amounts to “significantly more” than the alleged abstract idea.
(Id. at 12-13.)
We agree with Appellants that the recitation of creating an auxiliary
focal point object in the virtual universe in response to a loading condition of
a hardware device of the server system being exceeded represents a
technological improvement to the functioning of a server network. In
particular, it addresses the technological challenge of balancing loading
conditions on a server system underlying a computer-centric virtual
universe. (App. Br. 12.) As such, this claimed solution is necessarily rooted
in computer technology, similar to the additional elements in DDR Holdings,
LLCv. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
As we have concluded above, however, the recitation in the method
claims (independent claims 1 and 11 and respective dependent claims) of
“creating an auxiliary focal point object” is a conditional limitation that need
not be performed if the condition precedent (“a loading condition of the
hardware device . . . has been exceeded”) is not satisfied. Therefore, as the
Examiner correctly determined, this recitation need not be considered in
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assessing whether these claims are patent-eligible subject matter. (Ans. 3.)
We, therefore, are unpersuaded of error in the Examiner’s determination that
the method claims do not contain additional elements that transform them
into patent-eligible subject matter. Rather, we agree with the Examiner that
the method claims, properly construed at least in those situations in which a
loading condition has not been exceeded, require only implementing the
recited abstract idea through the use of a generic computer system in a
“routine and conventional technological environment.” (Final Act. 21.)
We reach a different conclusion, however, as to product / system
claims 17-20, which—as we also note above—require the conditional
functionality to be present in the program instructions. See Schulhauser,
2016 WL 6277792, at **6-7. As to those claims, we are persuaded that they
do contain additional elements that transform them into patent-eligible
subject matter.
For the foregoing reasons, we sustain the Examiner’s 35 U.S.C. § 101
rejections of method claims 1-11, 13-16, 21, 22, 25, and 26 as being
directed to patent-ineligible subject matter. As to claims 17-20, we reverse
the § 101 rejection (but, as noted supra, we maintain the separate § 101
rejection of claims 17 and 18 as encompassing transitory media).
B. §103 Rejection
1. Claims 1 11, 13 16, 21, 22, 25, and 26
The Examiner finds the combination of Brush, Amjadi, Altberg,
Matsuda, Hirakawa, and Hamilton teaches or suggests the limitations of
independent claims 1 and 11. (Final Act. 5-6, 9-11.) In arguing that the
Examiner’s findings are in error, Appellants focus on the recitation in those
claims of “determining whether a loading condition of a hardware device . . .
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has been exceeded,” and “in response . . . creating an auxiliary focal point
object in the virtual universe.” (App. Br. 15-20.)
With regard to the disputed limitation, the Examiner relies on
Hirakawa and Hamilton, finding that Hirakawa teaches “determining
whether a loading condition of a hardware device of the server system has
been exceeded” (Final Act. 6 (citing Hirakawa 11:42-58)) and also finding
Hamilton teaches “in response . . . creating an auxiliary focal point object in
the virtual universe . . .” (id. (citing Hamilton 88).)3
With regard to method claims 1-11, 13-16, 21, 22, 25, and 26, we are
not persuaded of Examiner error in the rejection under § 103. As noted
supra, the broadest reasonable interpretation of independent claims 1 and 11
(and the respective dependent claims) includes situations that fail to satisfy
the recited conditions precedent, and, in those situations, the disputed
conditional method step is not performed. See Schulhauser, 2016 WL
6277792, at **3-6 (concluding that the broadest reasonable interpretation of
a claim encompassed situations in which conditional method steps “need not
be reached”). Because the broadest reasonable interpretation of the method
claims does not require performing, inter alia, the conditional “creating an
auxiliary focal point object” step at issue, the Examiner is not required to
present evidence of the obviousness of this step. See Schulhauser, 2016 WL
6277792, at *4 (“The Examiner did not need to present evidence of the
3 The Examiner’s Final Action contains an apparent typographical error in
referring to “Hirakawa” for this finding, instead of “Hamilton.” (Final Act.
6.) This error is apparent in the fact that Hamilton, not Hirakawa, contains
numbered paragraphs and also contains the subject matter discussed by the
Examiner. (See also Ans. 5-6 (quoting Hamilton 88).)
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obviousness of the remaining method steps of claim 1 that are not required
to be performed under a broadest reasonable interpretation of the claim.”).
Appellants do not present additional arguments challenging the
Examiner’s findings regarding the other limitations of the method claims.
We, therefore, are not persuaded of error in the Examiner’s 35 U.S.C.
§ 103(a) rejection of independent claims 1 and 11, and we sustain that
rejection of those claims along with the § 103(a) rejections of their
respective dependent claims, which Appellants argue collectively with the
independent claims. (See App. Br. 20.)
2. Claims 17—20
With regard to claims 17-20, which recite a “computer program
product” (claims 17-18) and a “computer system” (claims 19-20), we are
constrained, on this record, to reverse the Examiner’s § 103(a) rejection. As
noted supra, the disputed limitation of the method claims, which is
commensurately recited in claims 17-20, cannot be disregarded in an
obviousness analysis because the broadest reasonable interpretation of such
product or system claims requires that structure and logic be provided to
perform all recited functions, even those that are conditional. See
Schulhauser, 2016 WL 6277792 at **6-7.
Considering the “auxiliary focal point object” limitation of these
claims, we are persuaded of Examiner error. In particular, the Examiner’s
findings regarding this limitation appear to be premised on a misreading of
the teachings of Hamilton. Contrary to the Examiner’s findings, Hamilton
does not teach or suggest “creating an auxiliary focal point object in the
virtual universe.” (See Ans. 5-6 (citing Hamilton 88).) Rather, the cited
portion of Hamilton discloses creating one or more projected avatars, which
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are copies of an associated avatar that are placed in different locations and
have different attitudes and/or rendering effects applied. (Hamilton 88.)
The Examiner does not make findings to bridge the gap between Hamilton’s
disclosure of creating copies of avatars and the claimed requirement of
creating auxiliary focal point objects.
For the foregoing reasons, we conclude the Examiner erred in finding
the prior art teaches or suggests program instructions to “create an auxiliary
focal point object in the virtual universe having a location that is different
from a location of the designated focal point object,” as recited in
independent claims 17 and 19 and their respective dependent claims. We,
therefore, do not sustain the Examiner’s 35 U.S.C. § 103(a) rejection of
claims 17-20.
CONCLUSION
In summary:
Claims
Rejected
Basis Referenee(s) Claims
Affirmed
Claims
Reversed
1-11, 13-
22, 25, and
26
§101
(abstract
idea)
N/A 1-11, 13-16,
21,22, 25, and
26
17-20
17 and 18 § 101
(transitory
signals)
N/A 17 and 18 none
1-3, 5-9,
11, 13-22,
25, and 26
§ 103(a) Brush, Amjadi,
Altberg,
Matsuda,
Hirakawa, and
Hamilton
1-3, 5-9, 11,
13-16,21,22,
25, and 26
17-20
4 and 10 § 103(a) Altberg and
Jacob
4 and 10 None
Summary 1-11, 13-18,
21,22,25, and
26
19 and 20
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DECISION
The Examiner’s 35 U.S.C. § 101 rejections of claims 1-11, 13-18, 21,
22, 25, and 26 are affirmed.
The Examiner’s 35 U.S.C. § 101 rejection of claims 19 and 20 is
reversed.
The Examiner’s 35 U.S.C. § 103(a) rejections of claims 1-11, 13-16,
21, 22, 25, and 26 are affirmed.
The Examiner’s 35 U.S.C. § 103(a) rejection of claims 17-20 is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
18