Ex Parte Gargi

Board of Patent Appeals and Interferences

Jun 15, 2010

10247221 (B.P.A.I. Jun. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ULLAS GARGI
____________________

Appeal 2009-004856
Application 10/247,221
Technology Center 2100
____________________

Decided: June 15, 2010
____________________

Before: LANCE LEONARD BARRY, THU A. DANG, and
DEBRA K. STEPHENS, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-004856
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Appellant appeals under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1-25 (App. Br. 3)). We have jurisdiction under 35 U.S.C.
§ 6(b) (2008).
We AFFIRM-IN-PART. In particular, we affirm the rejections of
claims 1-8 and 18-25, pro forma reverse the rejections of claims 9-17, and
enter a new ground of rejection with respect to claims 9-17.

Introduction
According to Appellant, the invention relates to a method for
reviewing a virtual 3-D environment (Spec., Abstract). More particularly,
the invention involves recording all virtual activity that takes place in a
persistent 3-D environment, and storing the recording in a central location,
to allow the virtual activity in the persistent virtual 3-D environment to be
replayed (see id.).
STATEMENT OF THE CASE
Exemplary Claim(s)
Claim 1 is an exemplary claim and is reproduced below:
1. A method for reviewing a virtual 3-D environment
comprising:

generating a persistent virtual 3-D environment;

recording virtual activity taking place in said persistent
virtual 3-D environment, including content selected from the
group consisting essentially of JPEG, MPEG, slide, video,
picture, photograph, 2-D model of an external object, and 3-D
model of an external object, introduced by an outside source,
wherein said recording said virtual activity does not require
recording of said persistent 3-D environment;
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storing said recording of said virtual activity in a central
location; and

replaying said virtual activity in said persistent virtual
3-D environment, wherein said replaying may be performed by
remote access.

Prior Art
Toomey
Payne
Namma
US 6,119,147
US 6,167,426
US 6,182,116 B1
Sep. 12, 2000
Dec. 26, 2000
Jan. 30, 2001
Poon
Myers
US 2001/0035976 A1
US 2002/0163577 A1
Nov. 1, 2001
Nov. 7, 2002

Rejections
Claims 1 and 3-6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Toomey and Poon.
Claims 9-13 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Toomey and Myers.
Claims 2 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Toomey, Poon, and Myers.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Toomey, Poon, and Namma.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Toomey, Poon, and Payne.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Toomey, Myers, and Namma.
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Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Toomey, Myers and Payne.
Claims 18-21 and 23-25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Toomey, Myers, Namma and Payne.
Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Toomey, Myers, Namma and Payne and Poon.

GROUPING OF CLAIMS

(1) Appellant argues claims 1 -8 as a group on the basis of claim 1
(App. Br. 8-10, 12). We select independent claim 1 as the representative
claim. We will, therefore, treat claims 2-8 as standing or falling with
representative claim 1.
(2) Appellant argues claims 9-17 as a group on the basis of claim 9
(id. at 11-13). We select independent claim 9 as the representative claim.
We will, therefore, treat claims 10-17 as standing or falling with
representative claim 9.
(3) Appellant argues claims 18-25 as a group on the basis of claim 18
(id. at 14-15). We select independent claim 18 as the representative claim.
We will, therefore, treat claims 19-25 as standing or falling with
representative claim 18.
We accept Appellant’s grouping of the claims. See 37 C.F.R.
§ 41.37(c)(1)(vii).

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ISSUE 1
35 U.S.C. § 103(a): claims 1-8
Appellant argues his invention is not obvious over Toomey and Poon
because “Toomey et al. does not teach or render obvious the claimed feature
[of] ‘recording virtual activity taking place in said persistent virtual 3-D
environment, including content selected from the group consisting
essentially of JPEG, MPEG, slide, video, picture, photograph, 2-D model of
an external object, and 3-D model of an external object, introduced by an
outside source, wherein said recording said virtual activity does not require
recording of said persistent 3-D environment; storing said recording of said
virtual activity in a central location; and replaying said virtual activity in
said persistent virtual 3-D environment, wherein said replaying may be
performed by remote access’” (App. Br. 8).
Appellant argues Toomey “teaches that the documents ‘appear next to
the virtual environment 1000’ … and not in said persistent virtual 3-D
environment[,] as recited in Claim 1” (id.). Thus, Appellant contends it can
be inferred, from Toomey, that video would also appear next to the virtual
environment 1000, and not in said persistent virtual 3-D environment (App.
Br. 8-9, emphasis original). Lastly, Appellant also adds that a “changing of
an avatar’s expression” is not analogous with a scene change (App. Br. 15).
The Examiner finds that Toomey’s graphical user interface/display
120, which includes the graphical user interface 1170 and virtual
environment 1000, corresponds to the virtual 3-D environment (Ans. 27).
Further, the Examiner finds the graphical user interface 1170 displays
content introduced by an outside source (e.g., browsers, soundclips, video
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clips, and external documents) that may be loaded in the virtual environment
(id.).
Alternatively, the Examiner finds the virtual environment 1000 of
Toomey, corresponds to the “virtual 3-D environment” and thus, the
graphical user interface window 1170 is used to display objects associated
with the meeting that would take up too much space to display within the
actual virtual environment (id.). The Examiner also finds Toomey teaches
displaying recorded activity from the meeting, for example, dialogue that
takes place in the virtual environment 1000 (id.).
Further, the Examiner finds Appellants argue the non-recited
limitation that the content appears in the persistent virtual 3-D environment
(id.). The Examiner finds “only the introduction of the content by an outside
source takes place within the virtual 3-D environment” (Ans. 27-28).
Additionally, the Examiner finds Toomey teaches (1) that auxiliary
documents are introduced into the meeting and (2) meeting participants can
interact with the meeting via text inputs, audio commands, and whiteboard
markings (Ans. 28). The Examiner also finds that the content introduced in
Toomey, while in the virtual 3-D environment, is recorded (id.)

Issue 1: Has the Examiner erred in finding the prior art teaches or
suggests “recording virtual activity taking place in said persistent virtual 3-D
environment, including content selected from the group consisting
essentially of JPEG, MPEG, slide, video, picture, photograph, 2-D model of
an external object, and 3-D model of an external object, introduced by an
outside source” as recited in claim 1?

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FINDINGS OF FACT (FF)
Toomey
(1) Figures 8-11 depict a virtual environment 1000 (e.g., a picture
of a meeting room), on a graphical user interface/display 120 (col. 11, ll. 1-
3). The virtual environment allows participants to gather interacting via
avatars (col. 1, ll. 55-56 and col. 2, ll. 45-49). Users communicate within a
meeting by typing text into an input area (col. 11, ll. 30-32). If the text is
dialogue, it will appear as speech in the form of a cartoon bubble 1005,
which is adjacent to the corresponding avatar 1100 or 1120, as shown in Fig.
11. (col. 11, ll. 32-37). After a meeting has been recorded that included
avatars 100 and 1120, new participants may revisit the earlier portion of the
meeting which included the previously recorded avatars 1100 and 1120 (col.
11, ll. 45-50). Thus, the avatars 1100 and 1120 are shown using the
recorded appearance and “[e]ach line of the dialogue typed in the earlier
meeting is replayed.” (col. 12, ll. 1-3 and 24-35; see also Fig. 11).

ANALYSIS
We begin our analysis by broadly, but reasonably, construing the
language of representative claim 1. Based on our review of claim 1, we find
the claimed “content selected from the group consisting essentially of JPEG,
MPEG, slide, video, picture, photograph, 2-D model of an external object,
and 3-D model of an external object” constitutes nonfunctional descriptive
material, as the type of virtual activity (i.e., data) recorded does not affect
implementation of the step of recording.
We note that functional descriptive material consists of data structures
or computer programs which impart functionality when employed as a
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computer component. In contrast, nonfunctional descriptive material refers
to data content that does not exhibit a functional interrelationship with the
substrate and does not affect the way the computing processes are
performed. See MPEP § 2106.01 (“‘Nonfunctional descriptive material’
includes but is not limited to music, literary works, and a compilation or
mere arrangement of data.”).
Thus, the recited “content selected from the group consisting
essentially of JPEG, MPEG, slide, video, picture, photograph, 2-D model of
an external object, and 3-D model of an external object” does not exhibit any
functional interrelationship with implementation of the recording step.
Therefore, we accord no patentable weight in our analysis to the recited
“content selected from the group consisting essentially of JPEG, MPEG,
slide, video, picture, photograph, 2-D model of an external object, and 3-D
model of an external object.” Accordingly, we construe claim 1 to recite
“recording virtual activity taking place in said persistent virtual 3-D
environment, including content introduced by an outside source.”
Further, based on our interpretation of claim 1, we find Toomey
teaches a persistent 3-D environment - a meeting room (FF 1). We further
find Toomey teaches recording the virtual activity in that meeting room, as
Toomey discloses that the activities of avatars 1100 and 1120 can be
replayed including avatars joining, speaking, or changing expression (FF 1).
We also find the text dialogue that appears in the cartoon bubble next to the
corresponding avatar corresponds to text from an outside source, as the text
is input by a user (i.e., source outside of the virtual environment 1000).
Additionally, we find that the text (i.e., content) introduced from of
the user (i.e., outside source) corresponds to virtual activity, as the text
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appears in a cartoon bubble inside of the virtual environment 1000 of
Toomey. Further, we find the text in the cartoon bubble is also recorded, as
Toomey discloses that “[e]ach line of the dialogue [of the avatars] typed in
the earlier meeting is replayed” (FF 1). Accordingly, we find Toomey
teaches or suggests recording virtual activity (i.e., dialogue of avatars) taking
place in said persistent virtual 3-D environment (i.e., virtual environment
1000), including content introduced by an outside source (i.e., text input by a
user to appear in cartoon bubbles in the virtual environment 1000).

ISSUE 2
35 U.S.C. § 103(a): claim 18
Appellant asserts that his invention is not obvious over Toomey,
Myers, Namma, and Payne (App. Br. 14). Specifically, Appellant argues
(1) Toomey “does not teach or render obvious the feature of not archiving
periods of recording of virtual activity in which no activity is taking place”
and (2) Myers is not analogous art (App. Br. 14).
The Examiner finds that Myers is analogous art, as “both Toomey and
Myers are directed towards recording a scene containing event data and
saving the recording on a storage medium” (Ans. 32). The Examiner
additionally finds that Myers teaches that events, such as occurrences of
motion in a scene, may be detected to determine whether any activity is
taking place (id.). Further, the Examiner finds that Myers teaches it would
be desirable to distinguish between portions of a scene in which an event has
occurred and portions of a scene where an event has not occurred, so that the
portions of a scene, where no event has occurred, are deleted and not stored
(id. at 32-33).
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The Examiner also concludes that since Toomey teaches storing a
recorded scene on a storage device, it would have been obvious to one of
ordinary skill in the art at the time of the invention, to include the Myers
method of deleting non-event data in the virtual meeting recordings of
Toomey, as this would have freed up system resources (id. at 33).

Issue 2: Has the Examiner erred in finding the prior art teaches or
suggests that “periods of said recording of virtual activity in which no
activity is taking place are not cataloged?”

FURTHER FINDINGS OF FACT (FF)
Myers
(2) A video recording system is disclosed that “visually monitors a
scene and continuously records images to digital storage” (para. 14, ll. 1-3).
Toomey
(3) Figure 16 of Toomey illustrates a virtual environment 1000 in
which there are no cartoon bubbles, containing dialogue, from the avatars
(Fig. 16).
ANALYSIS
As discussed above in Issue 1, with respect to claim 1, we find
Toomey teaches recording virtual activity (i.e., images) that takes place in
virtual environment 1000 that includes avatars that represent meeting
participants (FF 1). Further, we find it would have been obvious to a skilled
artisan that the very act of recording the virtual activity inherently involves
storing the recording of the virtual activity on a storage medium. Meyers
also involves recording and storing images.
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Thus, we find Toomey and Myers are analogous arts, as both Toomey
and Myers are directed to recording and saving images (FF 2). Further, we
conclude it would have been obvious to one of ordinary skill in the art that
there may be periods when, for example, all the avatars in the virtual
meeting, of Toomey, are inactive (e.g., when the avatars are not
communicating) (FF 3).
Additionally, we agree with the Examiner that it would have been
obvious to one of ordinary skill in the art to apply Myers method of deleting
non-event data to the virtual meeting recordings of Toomey, such that those
periods of said recording of the virtual meeting (i.e. virtual activity) in which
no meeting participation (i.e., activity) is taking place are not stored (i.e.,
cataloged). Thus, we have considered Appellant’s arguments and found
them non-persuasive. Accordingly, we find the Examiner did not err in
finding the prior art suggests that “periods of said recording of virtual
activity in which no activity is taking place are not cataloged,” as recited in
exemplary claim 18.

ISSUE 3
35 U.S.C. § 103(a): claims 9-17
Claim 9 recites a computer system that includes a processor (App. Br.
18, Claims App’x). Further, claim 9 recites “said processor … comprising:
… archiving said recording of said virtual activity in a central location,
wherein periods of said virtual activity in which no activity is taking place
are not archived” (id.). We find that while a processor may perform an
archiving function, the processor itself is a hardware component, and thus,
cannot be comprised of a function, as a function is not a hardware
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component. Thus, here, it is unclear how the processor comprises the step of
archiving. In view of our inability to discern the elements of claim 9, we are
unable to determine the metes and bounds of the claimed invention as set
forth in claim 9, and claims 10-17 which depend from claim 9.
Accordingly, the prior art rejection of claim 9 cannot be sustained if
the hypothetical person of ordinary skill in the art would have to make
speculative assumptions concerning the meaning of the claim language. See
In re Steele, 305 F.2d 859, 862-863 (CCPA 1962). As a result, a material
issue of claim interpretation is present which must be resolved before the
merits of the Examiner’s and the Appellants’ positions can be properly
considered. Therefore, we pro forma reverse the Examiner’s rejection of the
claims 9-17 under 35 U.S. C. §103(a).

CONCLUSION
Appellant has not shown that the Examiner erred in finding claim 1 is
obvious over Toomey and Poon. Since claims 2-8 depend from
representative and independent claim 1 and were not argued separately,
Appellants have not shown the Examiner erred in rejecting claims 1-8 under
for obviousness over Toomey and Poon.
Appellant has not shown that the Examiner erred in finding claim 18
is obvious over Toomey, Myers, Namma, and Payne. Since claims 19-25
depend either directly or indirectly from representative and independent
claim 18 and were not argued separately, Appellants have not shown the
Examiner erred in rejecting claims 18-25 for obviousness over Toomey,
Myers, Namma, and Payne.
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We are unclear as to the terminology of the claim 9. Thus, we pro
forma reverse the Examiner’s rejections of claims 9-17 for obviousness.

NEW GROUND OF REJECTION
UNDER 37 C.F.R. § 41.50(b).

We are unclear as to the meaning of terminology utilized in
independent claim 9.
35 U.S.C. § 112, second paragraph provides:
The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention.

Thus, we conclude pursuant to 35 U.S.C. § 112, second paragraph,
that claim 9, and claims 10-17 which depend therefrom, are indefinite.

DECISION
The Examiner’s rejections under 35 U.S.C. § 103(a) of claims 1 and
3-6 as being unpatentable over Toomey and Poon; claim 7 for obviousness
over Toomey, Poon, and Namma; and claim 8for obviousness over Toomey,
Poon, and Payne is affirmed.
The Examiner’s rejections under 35 U.S.C. § 103(a) of claims 18-21
and 23-25 as being obvious over Toomey, Myers, Namma, and Payne and
claim 22 for obviouness over Toomey, Myers, Namma and Payne and Poon
is affirmed.
We pro forma reverse the Examiner’s rejections of claims 9-17 under
35 U.S.C. § 103(a) and enter a new ground of rejection for claims 9-17
under 35 U.S.C. § 112, second paragraph.
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This decision contains a new ground of rejection pursuant to 37 CFR
§ 41.50(b). 37 CFR § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, 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 rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the claims
so rejected or new evidence relating to the claims so 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) (2009).

AFFIRMED-IN-PART – 37 C.F.R. § 41.50(b)

Vsh

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