Ex Parte Foote et al

Patent Trial and Appeal Board

Sep 28, 2016

12622133 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/622,133 11/19/2009 Kevin Avon Foote
26409 7590 09/30/2016
The Gache Law Firm, P,C,
4943 Cashatt Drive
BIRMINGHAM, AL 35244
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.
GLRCG008C 3777
EXAMINER
OFORI-AWUAH,MAAME
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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):
russ@gachelaw.com
russgache@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN AVON FOOTE and ROBERT ALLEN CARR
Appeal2014-007069
Application 12/622,133 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and ANTON W.
PETTING, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
An oral hearing was held on September 13, 2016.
STATEMENT OF THE CASE
Kevin Avon Foote, et al. (Appellants) seek our review under 3 5
U.S.C. § 134 of the final rejection of claims 1-29. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We REVERSE.
1 The Appellants identify Fast Health Corporation as the real party in
interest. App. Br. 3.
Appeal2014-007069
Application 12/622,133
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
Claim 1. A system for tethering a plurality of avatars in an
internet forum website, comprising:
a. a first avatar association to a first user accessing
said internet forum website held in a database,
wherein said first avatar association connects said
first user to an avatar image portraying a selected
aspect of said first user;
b. a second avatar association to said first user,
wherein said second avatar association connects
said first user to an avatar image portraying an
image associated with a third party representative
of a quality or characteristic of said first user; and,
c. a webserver for generating web pages for said
internet forum website, wherein said webserver
further includes means for displaying
communicative messages in chronological posting
order, and wherein each said message posting
includes a user perceivable boundary surrounding
each said posting; and,
d. said webserver including means for generating a
webpage on said internet forum website responsive
to a remote user's request, wherein said webpage
generating means is adapted to deliver a webpage
displaying at least two avatars graphically bound
to a single posting by said first user on said
internet forum, and wherein said generating means
delivers said avatars responsive to said first and
second avatar associations.
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Appeal2014-007069
Application 12/622,133
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Gilliam
Trout
Randall
Goel
US 2008/0147501 Al
US 2009/0276459 Al
US 2010/0064007 Al
US 2010/0332330 Al
The following rejections are before us for review:
June 19, 2008
Nov. 5, 2009
Mar. 11, 2010
Dec. 30, 2010
1. Claims 1-9, 12, 17-22, 28 and 29 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Trout, Randall, and Gilliam.
2. Claims 10 and 11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Trout, Randall, Gilliam and Goel.
3. Claims 13-16 and 23-27 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Trout and Randall. 2
ISSUES
Did the Examiner err is rejecting claims 1-9, 12, 17-22, 28 and 29
under 35 U.S.C. § 103(a) as being unpatentable over Trout, Randall, and
Gilliam?
Did the Examiner err is rejecting claims 10 and 11under35 U.S.C.
§ 103(a) as being unpatentable over Trout, Randall, Gilliam and Goel?
Did the Examiner err is rejecting claims 13-16 and 23-27 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Trout and Randall?
2 The Final Rejection included rejections under 35 U.S.C. § 112, first and
second paragraphs. These were withdrawn. See Advisory Action, mailed
Aug. 28, 2013.
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Appeal2014-007069
Application 12/622,133
FINDINGS OF FACT
We rely on the Examiner's factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
The rejection of claims 1-9, 12, 17-22, 28 and 29 under 35U.S.C.§103(a)
as being unpatentable over Trout, Randall, and Gilliam.
The rejection of claims 10and11under35 U.S.C. § 103(a) as being
unpatentable over Trout, Randall, Gilliam and Goel.
The rejection of claims 13-16 and 23-27 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Trout and Randall.
The main argument is that Trout fails to disclose at least a second
avatar association as all the claims require. See, e.g., App. Br. 15 ("Trout
does not disclose a second avatar association."). We agree.
The Examiner's position is that said second avatar is shown in
paragraphs 58 and 65 of Trout. See Final Act. 6.
There appears to be no dispute that Trout mentions an avatar. See
para. 56 ("user information 110 may include a name and/or an alias, a
representative image (e.g., a photographic image and/or avatar)"). See also
para. 93. Accordingly, Trout discloses a first avatar.
There is also no dispute that Trout discloses an additional "brand
profile" or "brand object." See paras. 58 and 65. The dispute is over
whether this satisfies the second avatar association as claimed.
The fact that Trout uses the terms "brand profile" or "brand object"
rather than "avatar," given the earlier disclosure of an "avatar," would
suggest to one of ordinary skill in the art that Trout would have the terms
"brand profile" or "brand object" interpreted to mean, generically,
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Appeal2014-007069
Application 12/622,133
something that functions to advertise rather than to serve to evoke a
recognitive effect in a consumer.
The Specification defines an avatar as "a graphical image that
represents a user on a social networking site which typically projects a
desired characteristic of that individual, depending upon the projection
wishes of the user" (Specification, 2:21-23, emphasis added). Furthermore,
[ s ]uch an avatar may be a static image, or an animated image.
Avatars typically will be presented adjacent to postings and
other types of communications deposited on a social
networking site by the user, such as for example a message
board. This avatar association provides a mechanism for
viewers to quickly identify the source of a particular posted
communication, and/or make replies thereto.
However, while the targeting of users traversing social
networking sites with advertisements has become
commonplace, the association of a particular user's avatar with
indicia of a particular goods manufacturer or service provider
has not ))et occi1rred. Tlie ability) to cross link or "tether" an
indicia of a company with a social networking site user could
result in an additional proliferation of recognition of that
company's indicia, such as the company's trademarks or service
marks, through additional presentation "impressions." Such
tethering has the potential to rapidly create additional goodwill
for the manufacturer or service provider seeking to expand their
company's recognition within the genre of users frequenting
social networking sites.
Therefore, what is needed is a system and method for
associating a selected indicia of a company with the avatar of a
social networking site user such that a linking or tethering of
the two can be achieved across one or more social network
sites.
Specification 3: 1-17 (emphasis added).
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Appeal2014-007069
Application 12/622,133
As may be understood, an avatar would most likely
display a graphical image that is already known by the general
consuming public. Avatars serve a different function than
advertising. While an advertisement may convey some desirable
characteristic of a product or service offered by a particular
entity, an avatar principally serves to evoke a recognitive effect
in a consumer who has already been exposed to indicia
associated with the goods or services offered by the advertising
sponsor.
Specification 8: 11-16 (emphasis added).
Accordingly, the second avatar association as used in the claims
broadly covers advertisements per se. In light of the Specification, a second
avatar association is reasonably broadly construed as limited to such an
image that, while representing a user, is associated with a particular subject.
The claims further limit the second avatar association to the context of
social networking sites. In independent claim 1, the "second avatar
association connects said first user to an avatar image portraying an image
associated with a third party representative of a quality or characteristic of
said first user [which is] ... graphically bound to a single posting by said
user on said internet forum." In independent claim 13, there is
[a second] avatar image portraying an image associated
with an advertising sponsor advertising on said internet forum
website, wherein said second association means is
representative of a quality or characteristic of said first user
[which is] ... adjacent to each said message posting of said
first user on said internet form website.
In indepedent claim 1 7, the method requires
associating a second avatar to said first user and saving
said second association in a database, wherein said second
avatar represents a quality or characteristic of said first user; ...
and,
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Appeal2014-007069
Application 12/622,133
transmitting an internet forum webpage to said remote
requesting PC wherein said webpage displays said at least two
avatars each contained in a user perceivable boundary and
positioned next to each other within the maximum graphical
size diameter of any displayed avatar.
And, lastly, independent claim 23 calls for a
social networking website server, comprising means for
delivering a hyper media social networking webpage having a
plurality of message postings, each posting having a user
perceived boundary, and at least three avatars displayed
adjacent to each said message posting, ... wherein one of said
avatars portrays a user, another of said avatars displays an
indicia associated with a third party representative of a quality
or characteristic of said first user; and said third avatar displays
an indicia associated with a third party advertising on said
social networking site.
Given the discussion in the Specification and the context in which the
claimed subject matter uses it, we are not persuaded that the "brand profile"
or "brand object" that Trout describes in paragraphs 58 and 65 meets the
second avatar association as claimed.
Accordingly, because Trout does not disclose a second avatar
association as reasonably broadly construed in light of the Specification and
as claimed, the cited prior art combination would not lead one of ordinary
skill to the subject matter as claimed. For that reason the rejections are not
sustained.
CONCLUSIONS
The rejection of claims 1-9, 12, 17-22, 28 and 29 under 35 U.S.C.
§ 103(a) as being unpatentable over Trout, Randall, and Gilliam is reversed.
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Appeal2014-007069
Application 12/622,133
The rejection of claims 10 and 11under35 U.S.C. § 103(a) as being
unpatentable over Trout, Randall, Gilliam and Goel is reversed.
The rejection of claims 13-16 and 23-27 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Trout and Randall is reversed.
DECISION
The decision of the Examiner to reject claims 1-29 is reversed.
REVERSED
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