Ex Parte Garbow et al

Patent Trial and Appeal Board

Oct 27, 2014

12045780 (P.T.A.B. Oct. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ZACHARY A. GARBOW, MICHAEL T. KALMBACH, and
BRYAN M. LOGAN
____________

Appeal 2012-004962
Application 12/045,7801
Technology Center 2400
____________

Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
BRADLEY B. BAYAT, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–23, 25 and 26. We have jurisdiction under 35 U.S.C.
§ 6(b).

STATEMENT OF THE DECISION
We AFFIRM and designate a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).2

1The real party in interest, as identified by Appellants, is International
Business Machines Corporation. (App. Br. 3).

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Application 12/045,780

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THE INVENTION
The Appellants’ invention relates to presenting users with a virtual
world including an interface for connecting a primary virtual environment to
a secondary virtual environment (Spec. ¶ 4).
Claim 1, reproduced below, is representative of the subject matter on
appeal (App. Br. 19, Claims Appendix).
1. A method of using multiple servers to divide a virtual world,
comprising:
providing a primary virtual environment hosted on a primary
server system, wherein a plurality of clients are configured to connect
to the primary virtual environment and wherein a presence of a given
client in the primary virtual environment is represented using an
avatar controlled by a user;

providing an interface for connecting the primary virtual
environment to a secondary virtual environment hosted on a
secondary server system;

receiving, from one of the avatars within the first virtual
environment, a request to enter the secondary virtual environment;

transmitting the request from the primary first virtual
environment to the secondary server hosting the secondary virtual
environment; and

upon receiving an indication that the requesting avatar is
authorized to enter the secondary virtual environment, transferring the
presence of the client associated with the requesting avatar from the
primary virtual environment to the secondary virtual environment,
wherein the primary virtual environment and the secondary virtual
environment are integrated from a visual-experience perspective so

2 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed July 5,
2011), Appellants’ Reply Brief (“Reply Br.,” filed Dec. 5, 2011), and the
Examiner’s Answer (“Ans.,” mailed Oct. 5, 2011).
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that virtual objects contained in the primary virtual environment are
visible to the user while the transferred presence of the client is in the
secondary virtual environment.

THE REJECTIONS
The following rejections are before us for review:
1. Claims 1, 3–8, 10, 12–16, 18, 20–23, and 26 are rejected under
35 U.S.C. § 103(a) as unpatentable over Edecker (US 2002/0188678 A1,
pub. Dec. 12, 2002) and Motyl (US 2010/0323785 A1, pub. Dec. 23, 2010).
2. Claims 2, 9, 11, 17, 19, and 25 are rejected as under 35 U.S.C.
§ 103(a) as unpatentable over Edecker, Motyl, and Altberg
(US 2008/0263460 A1, pub. Oct. 23, 2008).

ISSUES
Appellants’ contentions present the following issues:
A. Whether the visual map embodiment of Motyl teaches two
virtual environments integrated in a visual-experience
perspective, as recited in independent claims 1, 10 and 18.
B. Whether the virtual universe embodiment of Motyl teaches two
virtual environments integrated in a visual-experience
perspective, as recited in independent claims 1, 10 and 18.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.3

3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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ANALYSIS
A. Whether the visual map embodiment of Motyl teaches two
virtual environments integrated in a visual-experience
perspective, as recited in independent claims 1, 10 and 18.
Appellants proffer numerous arguments that the Examiner erred in
rejecting independent claims 1, 10 and 18 as being unpatentable over
Edecker and Motyl because Motyl fails to teach the limitation “wherein the
primary virtual environment and the secondary virtual environment are
integrated from a visual-experience perspective so that virtual objects
contained in the primary virtual environment are visible to the user while the
transferred presence of the client is in the secondary virtual environment”
(App. Br. 13–16 and Reply Br. 3–5). In particular, Appellants contend that
“[t]he visual map embodiment of Motyl does not teach two virtual
environments integrated in a visual-experience perspective.” App. Br. 13;
see also id. at 14–15. The Examiner acknowledges that Edecker does not
teach the contested limitation, but finds that Motyl meets this limitation,
citing portions of paragraphs 42, 43, 84 and 85 and contending that “the
claim limitation is broad and does not specify at what level of detail a user,
whose presence is in [the] secondary virtual environment, can see objects in
the primary virtual environment” (Ans. 23; see also id. at 6–7, 22–25).
Appellants reply that the visual map at most encompasses one virtual
environment and cannot teach transferring the presence of the client
associated with the requesting avatar from the primary virtual environment
to the secondary virtual environment (Reply Br. 3–4).
We find the Appellants’ arguments persuasive. For example, in
Figure 1, Motyl shows how some devices (160, 162) can work with a
wagering game system 100 to present wagering game options according to
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two embodiments, a visual map (visual selection environment 101) and a
virtual universe (visual selection environment 103). See Motyl ¶¶ 40–43.
The visual map embodiment utilizes a visualization technique configured to
present information in groupings or clusters that surround a node in multiple
directions and dimensions. Id. at 42. The visual map displays multiple
levels of nodes, wherein the nodes are hierarchical and each level of nodes
represents a topical level connected to the root node by connectors. Id.
Accordingly, we agree with Appellants that Motyl’s “visual map” does not
disclose the contested claim limitation “wherein the primary virtual
environment and the secondary virtual environment are integrated from a
visual-experience perspective so that virtual objects contained in the primary
virtual environment are visible to the user while the transferred presence of
the client is in the secondary virtual environment,” as required by claim 1.
B. Whether the virtual universe embodiment of Motyl teaches two
virtual environments integrated in a visual-experience perspective,
as recited in independent claims 1, 10 and 18.
Although we agree with Appellants that the Examiner did not find
that the visual map of Motyl teaches the contested limitation, we nonetheless
find anew that the virtual universe embodiment (Fig. 1, 103) of Motyl meets
the claim requirement of “wherein the primary virtual environment and the
secondary virtual environment are integrated from a visual-experience
perspective so that virtual objects contained in the primary virtual
environment are visible to the user while the transferred presence of the
client is in the secondary virtual environment,” as explained below. We,
therefore, affirm the Examiner’s rejection of claim 1 as unpatentable under
35 U.S.C. § 103(a) over Edecker in view of Motyl.
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Figure 1 above depicts two wagering game machines (160, 162) displaying
two visual selection environments, a visual map 101 and virtual universe
103 embodiment. To this point, Appellants argue that
[w]alking an avatar into the building labeled “user info” will
display only the sub-topics 120, 121 associated with the “user
info” root node . . . the user sees an upper level information
(i.e., the building or a root node), a selected level of information
(i.e., sub-topic 120), and a lower level of information (i.e., sub-
sub topic 121) that are all associated with the same root
node . . . [but] [i]n no case will the user see sub-topics related to
different root nodes when in a building not representing that
root node
(Br. 16). We do not find Appellants’ argument persuasive because we find
that by walking an avatar 108 into the building labeled “user info” and
transferring from one virtual environment to another, thus seeing upper level
information such as the buildings 114, the virtual universe embodiment of
Motyl discloses that the primary virtual environment (Primary info level
116) and the secondary virtual environment (Secondary info level 118) are
integrated from a visual-experience perspective (side by side as part of the
same display interface of device 162), so that virtual objects contained in the
primary virtual environment (buildings 114) are visible to the user while the
transferred presence of the client is in the secondary virtual environment
(visible to the user while avatar 108 is transferred from Primary to
Secondary info level). In other words, the virtual environments are
juxtaposed and integrated in the display interface as shown above, and upon
entering the building via 115, avatar 108 is transferred to the adjacent virtual
environment 118, while building objects 114 are still visible to the user, as
called for in claim 1.
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In view of the foregoing, we conclude the combination of Edecker and
Motyl would have suggested the subject matter of claim 1 to one of ordinary
skill in the art at the time of Appellants’ invention, and therefore affirm the
Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over Edecker in view of Motyl. Because Appellants have argued
independent claims 1, 10 and 18 as a group and not separately argued the
patentability of the dependent claims, we affirm the rejection of these claims
as well. App. Br. 17. In view of the foregoing, we affirm the Examiner’s
rejection of claims 1–23, 25 and 26 under 35 U.S.C. § 103(a).
Because we relied on additional teachings of Motyl and articulated a
different rationale for the rejection of claims 1–23, 25 and 26 than the
rationale articulated by the Examiner, we designate our affirmance a NEW
GROUND OF REJECTION pursuant to our authority under 37 C.F.R.
§ 41.50(b).
DECISION
For the reasons noted above, the Examiner’s rejection of claims 1–23,
25 and 26 under 35 U.S.C. § 103(a) is affirmed, and the affirmance is
designated a NEW GROUND OF REJECTION.
Section 41.50(b) provides that “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Rather,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION,
Appellants must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal as to the
newly rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so
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rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2010).

AFFIRMED; 37 C.F.R. § 41.50(b)

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