Ex Parte Finn et alDownload PDFPatent Trial and Appeal BoardFeb 8, 201612112409 (P.T.A.B. Feb. 8, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/112,409 04/30/2008 45092 7590 HOFFMAN WARNICK LLC 540 Broadway 4th Floor ALBANY, NY 12207 02/10/2016 FIRST NAMED INVENTOR Peter G. Finn 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. END920070056US 1 9167 EXAMINER WONG, WILLIAM ART UNIT PAPER NUMBER 2141 NOTIFICATION DATE DELIVERY MODE 02/10/2016 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 PETER G. FINN, RICK A. HAMILTON II, NEIL A. KATZ, and JAMES W. SEAMAN Appeal2013-008669 Application 12/112,409 Technology Center 2100 Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal2013-008669 Application 12/112,409 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Illustrative Claims Claims 13 and 25 are illustrative of the disclosed and claimed invention, and are reproduced below with emphasis added to the disputed portion of the claim: 13. A system for providing customer service hierarchies within a virtual universe, comprising, a computer system that performs a method, comprising: receiving a customer need request from an avatar in a virtual store in a virtual world regarding a product located in the virtual store; presenting at least one of: a virtual interactive menu, and a web page; and receiving an indication from a customer of whether the presenting satisfied the customer need request, making a determination, based on the indication, as to whether the presenting satisfied the customer need request and providing a customer service representative avatar for the customer need request based on a determination that the presenting did not satisfy the customer need request, 2 Appeal2013-008669 Application 12/112,409 wherein the customer service representative avatar is only displayed in cases in which the presenting is performed and it is determined that the presenting did not satisfy the customer need request. 25. A method for deploying an application for providing customer service hierarchies within a virtual universe, compnsmg: providing a computer infrastructure that operates to: receive a customer need request from an avatar in a virtual store in a virtual world regarding a product located in the virtual store; upon the receiving, present at least one of: a virtual interactive menu, and a web page; and receive an indication from a customer of whether the presenting satisfied the customer need request, making a determination, based on the indication, as to whether the presenting satisfied the customer need request and providing a customer service representative avatar for the customer need request based on a determination that the presenting did not satisfj; the customer need request, wherein the customer service representative avatar is only displayed in cases in which the presenting is performed and it is determined that the presenting did not satisfj; the customer need request. REJECTIONS (1) The Examiner rejected claims 13-17 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Final Act. 2-3; Ans. 2. The 3 Appeal2013-008669 Application 12/112,409 Examiner determined that claims 13-1 7 fail to recite a statutory process because claims 13-17 recite software per se that is not one of the four categories of statutory inventions. Id. (2) The Examiner rejected claims 1-25 under 35 U.S.C. § 103(a) as unpatentable over Altieri et al (US 2004/0193441 Al; published Sept. 30, 2004) and Burgin et al (US 2002/0145628 Al; published Oct. 10, 2002). 1 Final Act. 5-10; Ans. 2-7. Issues on Appeal Based on Appellants' arguments in the Appeal Brief (App. Br. 5---6) and the Reply Brief (Reply Br. 1-5), the following two issues are presented on appeal: (1) Did the Examiner err in rejecting claims 13-17 under 35 U.S.C. § 101 as being directed to non-statutory subject matter because the system recited in claims 13-1 7 is limited to software per se, which does not fall in one of the statutory categories; and (2) Did the Examiner err in rejecting claims 1-25 as being unpatentable under 35 U.S.C. § 103(a) as being obvious over the combination of Altieri and Burgin because the combination fails to teach or suggest "providing a customer service representative avatar for the customer need request based on a determination that the presenting did not satisfy the customer need request, wherein the customer service representative avatar is 1 Independent claims 1, 13, 18, and 25 each recite similar features regarding deploying a customer service avatar based on a determination that a presenting of information did not satisfy a customer need request. We select claim 25 as representative of the group of claims 1-25 rejected for obviousness over the combination of Altieri and Burgin. 4 Appeal2013-008669 Application 12/112,409 only displayed in cases in which the presenting is performed and it is determined that the presenting did not satisfy the customer need request," as recited in representative claim 25? ANALYSIS We have reviewed Appellants' arguments in the Appeal Brief (App. Br. 5---6) and the Reply Brief (Reply Br. 1-5), the Examiner's rejections (Final Act. 2-3 and 5-10; Ans. 2-7), and the Examiner's response to the arguments (Ans. 7-10). Rejection Under 35 U.S. C. § 1012 We conclude that claim 13 as a whole is directed to a method that is not software per se. Appellants' claim 13 explicitly recites a process in which a "computer system" is configured to perform the claimed method (claim 13), which requires more than just software. Appellants' Specification describes a computer system (Spec. i-f 61; see also Fig. 9) as having "one or more processors or processing units 104, a system memory 106, and a bus 108 that couples various system components including the system memory 106 to the processor 104." Therefore, we do not sustain the Examiner's§ 101 rejection of claims 13-17. In view of the foregoing, we agree with Appellants (App. Br. 5; Reply Br. 2--4) that the recited process pertains to tangible elements such as a computer system having at least one processor, memory, and a bus to couple various components. 2 Although only the rejection of claims 13-17 under 35 U.S.C. § 101 is before us on appeal, we encourage the Examiner to examine all the claims for patentability under§ 101 under the guidance of Alice Corp. v. CLS Bank International, 573 U.S._, 134 S. Ct. 2347 (2014) and its progeny. See MPEP § 706.03(a)(II). 5 Appeal2013-008669 Application 12/112,409 Rejection Under 35 U.S.C. § 103 We disagree with Appellants' conclusions as to the obviousness of claims 1-25. With regard to representative independent claim 25, we concur with the conclusions reached by the Examiner, and we adopt as our own ( 1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 5-10; Ans. 2-7), and (2) the reasons set forth by the Examiner in the Examiner's Answer (Ans. 7-10) in response to the Appellants' Appeal Brief (App. Br. 5---6). We highlight and amplify certain teachings and suggestions of the references, as well as certain ones of Appellants' arguments as follows. We note that each reference cited by the Examiner must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references) (citation omitted). The Examiner has shown that Altieri discloses making a determination, based on an indication from the customer, as to whether the customer's need request was fulfilled (e.g., clicking on the return prompt is interpreted as the customer being satisfied with his or her shopping needs (need request)). Altieri i-f 227. Burgin discloses (1) making a determination, based on an indication from a customer, as to whether the customer's need request was satisfied (Burgin i-f 15) and (2) providing a customer service representative avatar for the customer need request, if, and only if, the presenting did not satisfy the customer need request, which is based on a determination (Burgin i-fi-115, 32-33, and 46). 6 Appeal2013-008669 Application 12/112,409 The Examiner has further provided a factual basis and articulated reasoning with a rational underpinning to support the conclusion of obviousness with regard to representative claim 25 (see Final Act. 3-7; Ans. 2--4 and 9-10). See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We agree with the Examiner (Final Act. 3-7; Ans. 2--4 and 9-10) that it would have been obvious to modify the virtual storefront of Altieri with the customer service representative avatar of Burgin to allow a user to quickly and easily access help and to allow a vendor to provide a user with satisfactory customer service. In this light, we cannot agree with Appellants' assertion (App. Br. 5---6; Reply Br. 4--5) that the combination fails to disclose the recited invention. 3 Accordingly, we sustain the Examiner's rejection of representative independent claim 25, as well as claims 1-24 grouped therewith. DECISION (1) The Examiner's rejection of claims 13-17 under 35 U.S.C. § 101 as being directed to non-statutory subject matter is reversed. (2) The Examiner's rejection of claims 1-25 under 35 U.S.C. § 103(a) as being obvious is affirmed. 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). 3 Notably, representative claim 25 simply recites "[a] method for deploying an application for providing customer service hierarchies within a virtual universe, comprising: providing a computer infrastructure .... " Thus, the method merely requires deploying an application by providing a computer infrastructure. 7 Appeal2013-008669 Application 12/112,409 msc AFFIRMED 8 Copy with citationCopy as parenthetical citation