Ex Parte Finn et al

Patent Trial and Appeal Board

Feb 8, 2016

12112409 (P.T.A.B. Feb. 8, 2016)

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,
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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
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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.
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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).
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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).
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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.
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msc
AFFIRMED
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