Ex Parte Eves et al

Board of Patent Appeals and Interferences

Aug 25, 2010

10143639 (B.P.A.I. Aug. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID A. EVES and RICHARD S. COLE
____________

Appeal 2009-005037
Application 10/143,639
Technology Center 2100
____________

Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and JAY P.
LUCAS, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-005037
Application 10/143,639

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STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-17. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

INVENTION
The Appellants describe the invention at issue on appeal as "a device
for use with entertainment apparatus that adds to the real-world experience
of a user." (Spec. 2.)

ILLUSTRATIVE CLAIM
15. A method of operating a set of devices for providing
a real-world experience comprising:
receiving at a markup language enabled device,
description in the form of an instruction set of a markup
language, wherein the markup language includes a
representation of the physical objects within said environment,
their relationship to the user, and each other; and
adjusting parameters of said device by transmitting
augmentation data of said experience, wherein the device is
further caused to be represented as an object within the
environment.

REJECTIONS
Claims 13 and 14 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
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Claims 1-5 and 8-17 stand rejected under 35 U.S.C. § 102(a) as being
anticipated by USP no. 6,161,126 ("Wies").
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wies and USP no. 6,166,744 ("Jaszlies").
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wies and EP 0508939 ("Gomes dos Santos").

REJECTION OF CLAIMS 10 AND 11 UNDER § 101
The Examiner concludes that "[c]laims 13-14 are . . . directed to non-
statutory subject matter. In particular, the claims fail to place the invention
squarely within one statutory class of invention." (Ans. 3.) The Appellants
argue that "claims 10 and 11 are . . . directed toward statutory subject
matter." (App. Br. 6.)

ISSUE
Therefore, the issue before us is whether the Examiner erred in
concluding that claims 13 and 14 are directed to non-statutory subject
matter.
ANALYSIS
The Examiner concluded that claims 13 and 14 are directed to non-
statutory subject matter. He explained the reasons for his conclusion. (Ans.
3-4). For their part, the Appellants argued, in error, that different claims,
viz., claims 10 and 11, are directed to statutory subject matter. We agree
with the Examiner "that [c]laims 10-11 were not rejected under 35 U.S.C.
101. Thus, Appellant's argument is moot." (Id. at 19.) The Appellants did
not file a Reply Brief. Based on the aforementioned facts and analysis, we
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Application 10/143,639

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conclude pro forma that the Examiner did not err in concluding that
claims 13 and 14 are directed to non-statutory subject matter. In reaching
this conclusion, we have considered only those arguments actually made by
the Appellants. Arguments that they could have made, but did not make, in
the Appeal Brief have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).

REJECTIONS OF CLAIMS 1-17 UNDER § 102(a) and § 103(a)
The Examiner makes the following findings.
Wies Col. 15, Line 6 and Co1.17 Line 10 -> Col. 18 line 5,
discloses the Generic and authored effect of the uses of the
manipulable objects . . . that enable user to feel the forces in a
real-world environment of a falling ball at a physics education
web site by providing a ball image that causes the desired
forces when the pointer is moved in contact with the ball image.
(Ans. 20-21.) The Appellants make the following argument.
With regard to independent claim 1, Appellants respectfully
submit Wes fails to disclose, teach or imply the limitation of
"receiving means for receiving a real-world description in the
form of an instruction set of a markup language, wherein the
markup language includes a representation of the real world
environment and said physical objects within the environment,
their relationship to the user, and each other...", as claimed in
claim 1. Independent claim 15 recites similar limitations.
(App. Br. 7.)

ISSUE
Therefore, the issue before us is whether the Examiner erred in
finding that Wies discloses receiving an instruction set of a markup language
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that represents of the physical objects within a real-world environment, their
relationship to a user, and their relationship to each other.

FINDINGS OF FACT
Wies "relates . . . to human/computer interfaces with force feedback
that can operate over a network." (Col. 1, ll. 28-30.) "'Force feedback'
allows a user to experience or 'feel' tactile sensations as provided through
computational information. Using computer-controlled actuators and
sensors on a force feedback device, a variety of realistic sensations can be
modeled and experienced by the user." (Col. 2, ll. 61-65.)

"The force sensation resulting from this interaction is known herein
as a force effect or an 'effect.'" (Col. 12, ll. 57-59.) "These effects are
applied to web page objects in the most common implementation. Herein,
'web page objects' or 'web objects' are any graphical objects (or regions)
appearing on a web page, such as images, text, buttons, or other standardized
or custom objects." (Id. at ll. 61-65.)

ANALYSIS
"It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim, and that
anticipation is a fact question . . . ." In re King, 801 F.2d 1324, 1326 (Fed.
Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v. Am. Hoist &
Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)). Here, the section of
Wies cited by the Examiner discloses in pertinent part that "authored effects
can enable users . . . to feel the forces of a falling ball at a physics education
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web site by providing a ball image that causes the desired forces when the
pointer is moved in contact with the ball image." (Col. 17, ll. 60-66.)
We are unpersuaded, however, that the explanation teaches a
representation of the physical objects within a real-world environment, their
relationship to a user, and their relationship to each other. The "falling ball"
is a computer-generated graphical image appearing on a web page rather
than a physical object. The "physics education web site" is a collection of
web pages displayed on the screen of a computer rather than a real-world
environment. In the words of the Appellants, "the environment of Wies is a
virtual environment." (App. Br. 7.)
The Examiner does not allege, let alone show, that the addition of
Jaszlies or Gomes dos Santos cures the aforementioned deficiency of Wies.
Based on the aforementioned facts and analysis, we conclude that the
Examiner erred in finding that Wies discloses receiving an instruction set of
a markup language that represents of the physical objects within a real-world
environment, their relationship to a user, and their relationship to each other.

DECISION
We affirm the rejection of claims 13 and 14 under § 101. In contrast,
we reverse the rejections of claims 1-17 under § 102(a) and § 103(a).

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No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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