Ex Parte Hamilton et al

Patent Trial and Appeal Board

Sep 1, 2016

12500678 (P.T.A.B. Sep. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/500,678 07/10/2009
87173 7590
Greg Goshorn, P,C,
9600 Escarpment Blvd.
Suite 745-9
Austin, TX 78749
09/01/2016
FIRST NAMED INVENTOR
Rick A. Hamilton II
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.
AUS920070791US1 2823
EXAMINER
AUGUSTINE, NICHOLAS
ART UNIT PAPER NUMBER
2141
MAILDATE DELIVERY MODE
09/01/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICK A. HAMIL TON II JENNY S. LI, ANNE R. SAND, and
JAMES W. SEAMAN
Appeal2015-005341
Application 12/500,678
Technology Center 2100
Before CATHERINE SHIANG, LINZY T. McCARTNEY, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20, which constitute all of the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 3.
Appeal2015-005341
Application 12/500,678
THE INVENTION
The disclosed and claimed invention is directed to using real time
location information for user authorization in virtual environments.
Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for controlling an avatar in a virtual
environment, comprising:
receiving a request from an avatar in a virtual environment
to access a first virtual location;
associating the avatar to a user;
determining a physical location corresponding to the user;
generating an entry status parameter, based upon a
relationship between the physical location and the first virtual
location that indicates whether or not the avatar is permitted to
access the first virtual location, wherein the first virtual location
is not a representation of the physical location;
allowing the avatar to access the first virtual location if the
entry status parameter indicates that the avatar is permitted to
access the first virtual location; and
denying the avatar access to the first virtual location if the
entry status parameter indicates that the avatar is not permitted
to access the first virtual location.
REFERENCE
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Riley US 2009/0307611 Al Dec. 10, 2009
(filed June 9, 2008)
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Application 12/500,678
REJECTION
Claims 1-20 stand rejected under pre-AIA 35 U.S.C. § 102(e) as
being anticipated by Riley. Final Act. 5-10.2
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellants.
We are not persuaded by Appellants' arguments regarding claims 1-3 and
5-7.
Claims 1, 2, and 5-7
Appellants argue Riley does not disclose "denying the avatar access to
the first virtual location if the entry status parameter indicates that the avatar
is not permitted to access the first virtual location," as recited in claim 1.
App. Br. 7-8; Reply Br. 2-5. Appellants' argument focuses on whether
Riley discloses denying entry if the entry status parameter-which is "based
upon a relationship between the physical location and the first virtual
location"-"indicates that the avatar is not permitted to access the first
virtual location," as recited in claim 1. Id.
Specifically, Appellants argue "Riley is directed to a system in which
a virtual world is correlated to a 'physical analogue,"' so there is always a
2 In the Final Office Action, the Examiner also rejected claims 1, 8, and 15
under pre-AIA 35 U.S.C. § 112, paragraph 1. Final Act. 2--4. The Examiner
withdrew the rejection in the Advisory Action after Appellants amended the
claims. Adv. Act. 2.
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Application 12/500,678
correlation of a physical location and the virtual location. App. Br. 8. As a
result, "Riley does not explicitly describe denying a user access to a
particular virtual world based upon the user's physical location" as recited in
claim 1. App. Br. 7 (emphasis omitted). Stated differently:
As explained above, Riley's virtual content is determined by the
physical location following a determination that a user is
authorized to access the virtual content. Therefore, there is no
suggestion of denying access to a particular virtual location
based upon an entry status parameter. In other words, the
physical location of a user is used to correlate a particular virtual
content available. Denying a user access to a virtual content
based upon physical location is simply not discussed.
Reply Br. 4--5.
The Examiner finds Riley discloses a user accessing virtual space at a
location that does not correspond to their actual location. Ans. 3--4, 7-8
(citing Riley i-f 77). The Examiner further finds Riley discloses "denying the
avatar access to the first virtual location if the entry status parameter
indicates that the avatar is not permitted to access the first virtual location."
Ans. 9 (citing Riley i-f 74); see also Final Act. 6-7.
During examination, claims are given their broadest reasonable
interpretation consistent with the specification. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). "Construing claims broadly
during prosecution is not unfair to the applicant ... because the applicant
has the opportunity to amend the claims to obtain more precise claim
coverage." Id.
Here, claim 1 is directed to a method for controlling an avatar in a
virtual world, where the method includes several steps that only need to be
performed if a certain condition precedent is met. See App. Br. 11 (Claims
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Application 12/500,678
App.). For example, claim 1 recites, in pertinent part: "denying the avatar
access to the first virtual location if the entry status parameter indicates that
the avatar is not permitted to access the first virtual location." Id. (emphasis
added). Due to the "if' clause, the step need not be performed when the
entry status does not indicate "that the avatar is not permitted to access the
first virtual location." See id. In other words, if the conditions allowing
access always occur, then the denying step never takes place.
In claim construction, "the name of the game is the claim." In re
Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (quoting Giles Sutherland
Rich, Extent of Protection and Interpretation of Claims-American
Perspectives, 21 Int'l Rev. Indus. Prop. & Copyright L. 497, 499 (1990)).
Based on the claim limitations as written, the broadest reasonable
interpretation of claim 1 encompasses an instance in which the method ends
without the denying step every occurring. Thus, the broadest reasonable
interpretation of the claim encompasses a method where only the steps of
"receiving a request ... ," "associating the avatar ... ," "determining a
physical location ... ,""generating an entry status parameter ... ,"and
"allowing ... "are performed. The Examiner determines that the prior art
would have rendered unpatentable this method covered by claim 1 and
Appellants have not challenged any of the findings or conclusions that
support that determination. Accordingly, we do not find Appellants'
arguments persuasive. See Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI
2010) (precedential) ("If an appellant fails to present arguments on a
particular issue- or, more broadly, on a particular rejection-the Board
will not, as a general matter, unilaterally review those uncontested aspects of
the rejection").
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A proper interpretation of claim language, under the broadest
reasonable interpretation of a claim during prosecution, must construe the
claim language in a way that at least encompasses the broadest interpretation
of the claim language for purposes of infringement. "[I]t is axiomatic that
that which would literally infringe if later anticipates if earlier." Bristol-
Myers Squibb Co. v. Ben Venue Labs, Inc., 246 F.3d 1368, 1378 (Fed. Cir.
2001 ). Based on the manner in which claim 1 is written, based on the
unchallenged findings of the Examiner, Riley would literally infringe claim
1 by virtue of its performance of all of the steps besides the denying step.
See, e.g., Applera Corp. v. Illumina, Inc., 375 Fed.Appx. 12, 21 (Fed. Cir.
2010) (unpublished) (affirming a district court's interpretation of a method
claim as including a step that need not be practiced if the condition for
practicing the step is not met); Cybersettle, Inc. v. Nat 'l Arbitration Forum,
Inc., 243 Fed.Appx. 603, 607 (Fed. Cir. 2007) (unpublished) ("It is of course
true that method steps may be contingent. If the condition for performing a
contingent step is not satisfied, the performance recited by the step need not
be carried out in order for the claimed method to be performed"). For the
reasons provided supra, we agree with the Examiner's determination that
Riley anticipates claim 1.
According! y, we sustain the Examiner's rejection of claim 1, along
with claims 2 and 5-7, which are not argued separately. See App. Br. 9.
Claim 8-20
With regard to claims 8 and 15, Appellants rely on the same
arguments discussed above regarding claim 1. See App. Br. 7-8; Reply Br.
2-5. However, unlike claim 1, independent claims 8 and 15 are not method
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Application 12/500,678
claims. We, therefore, must determine whether or not the Examiner erred in
finding the prior art discloses "denying the avatar access to the first virtual
location if the entry status parameter indicates that the avatar is not
permitted to access the first virtual location" where the entry status
parameter is "based upon a relationship between the physical location and
the first virtual location that indicates whether or not the avatar is permitted
to access the first virtual location," as recited in claims 8 and 15. App. Br.
13, 15-16 (Claims App.).
"To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently." In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). The absence of a single
limitation---even if that limitation would be obvious from the cited
reference-negates anticipation. Id.
We are persuaded by Appellants' arguments as the Examiner has not
identified sufficient evidence or provided sufficient explanation as to how
Riley discloses denying the avatar access based on the claimed entry status
parameter as recited in claim 1. Riley discloses various factors that can be
used to deny access-such as "a predetermined skill level (e.g., earned
through gameplay), invited users, paying users, and/or other sets of users."
Riley i-f 74. However, Riley does not disclose an entry status perimeter that
is "based upon a relationship between the physical location and the first
virtual location that indicates whether or not the avatar is permitted to access
the first virtual location." See id.
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Accordingly, we are constrained on this record to reverse the
Examiner's rejection of claims 8 and 15, along with the rejection of
dependent claims 9-14 and 16-20.3
Claim 3
Appellants argue the Examiner erred in finding Riley discloses that
"the specified interaction is control of a real-world device via an interface in
the virtual world," as recited in claim 3. App. Br. 9. According to
Appellants, "[a]lthough Riley may suggest real-world devices that collect
information related to a user's physical location, there is no indication that
these are controlled 'via an interface in the virtual world."' App. Br. 9.
The Examiner finds Riley teaches "[t]he method of claim 2, wherein
the specified interaction is control of a real-world device via an interface in
the virtual world (par. 72)." Final Act. 9.
Appellants merely quote or summarize the claim language and make a
naked assertion that the prior art does not teach the limitation. That is
insufficient to raise an argument that that Examiner erred. See In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) (Rule 41.37 requires "more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art."); see also 37 C.F.R. § 41.37(c)(l)(iv) ("A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim."). Because Appellants have
not identified any specific errors in the Examiner's findings, "the Board will
3 Because we find this argument dispositive, we do not address the separate
arguments directed to claims 10, 11, 17, and 18.
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not, as a general matter, unilaterally review those uncontested aspects of the
rejection." Frye, 94 USPQ2d at 1075.
Accordingly, we affirm the Examiner's rejection of claim 3.
Claim 4
Appellants argue the Examiner erred in finding Riley discloses
"determining a physical location corresponding to a second user," as recited
in claim 4. Specifically, Appellants argue the cited sections of Riley do not
mention a second user. Id.
The Examiner finds Riley discloses "determining a physical location
corresponding to a second user, wherein the generating the entry status
parameter also takes into account a physical location corresponding to the
second user." Final Act. 9 (citing Riley i-fi-15, 19, 32).
We are persuaded by Appellants' arguments, as the Examiner has not
identified sufficient evidence or provided sufficient explanation as to how
Riley discloses "determining a physical location corresponding to a second
user," as recited in claim 4. We have reviewed the sections of Riley cited by
the Examiner and there is no discussion of a second user.
Accordingly, we are constrained on this record to reverse the
Examiner's rejection of claim 4.
DECISION
For the above reasons, we affirm the Examiner's decision rejecting
claims 1-3 and 5-7.
For the above reasons, we reverse the Examiner's decision rejecting
claims 4 and 8-20.
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Application 12/500,678
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).
AFFIRMED-IN-PART
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