Ex Parte Hamilton et al

Patent Trial and Appeal Board

Aug 8, 2016

12174805 (P.T.A.B. Aug. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/174,805 07/17/2008 Rick A. HAMILTON II
46583 7590 08/10/2016
Roberts Mlotkowski Safran Cole & Calderon, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN, VA 22102-8064
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.
END920070266US 1 9428
EXAMINER
VAN BRAMER, JOHN W
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
08/10/2016 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):
docketing@rmsc2.com
lgallaugher@rmsc2.com
dbeltran@rmsc2.com
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,
CLIFFORD A. PICKOVER, and ANNE R. SAND
Appeal2013-001784
Application 12/174,8051
Technology Center 3600
Before, MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
TARA L. HUTCHINGS, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1-26. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Appellants identify International Business Machines Corp. as the real party
in interest. Appeal Br. 2.
Appeal2013-001784
Application 12/174,805
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A method implemented in a computer infrastructure having computer
executable code, comprising:
generating one or more ad-avatars in a virtual universe (VU);
monitoring information from the VU; and directing the one or more ad-
avatars to perform one or more viral advertisements in the VU based on the
information.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Brush, II 5,884,029 March 16, 1999
The following rejection is before us for review.
Claims 1-26 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Brush.
FINDINGS OF FACT
1. We adopt the Examiner's findings as set forth on pages 2-26 of the
Final Action dated 2/03/2012 and those set forth on pages 2-11 of the
Answer.
2. The Specification defines viral marketing as "a technique that
encourages users to pass along, e.g., a marketing message to create a
'buzz' about a product or service." Spec. i-f 14.
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3. The Examiner found that Brush discloses directing "one or more ad-
avatars to perform one or more viral advertisements in the virtual
universe" finding:
Paragraph [0017] of the Appellants' specification
provides an example of a viral ad as "ad-avatars in locations
and times within the VU," (Virtual Universe) "where the
advertiser believes those ads will be most effective". Paragraph
[0036], indicates that a viral advertisement can be an
advertisement based upon real-time information from
conversations, the environment, or other avatar attributes, the
advertisement can be as esoteric as asking an avatar if they
would be interested in seeing a new dance move learned at a
club. Brush discloses the ability to generate avatars that can
perform various tasks either by having all of the interactions
performed directly by the users of the avatars (Column 4, lines
53-67) or by having the avatar respond to external stimulus
based on a preprogrammed set of responses (Column 5, lines 1-
17). Some of these avatars are ad-avatars (salesperson avatars)
since they interact with customers that enters an establishment
(Column 7, lines 6-43). Therefore, Brush has disclosed
"generating one or more ad-avatars in a virtual universe".
Furthermore, Brush discloses in at least Column 7, lines 6-43
that when an avatar enters the store, his presence is detected and
based upon this detection, the salesperson avatar collects the
outwardly observable characteristics of the potential customer
avatar and uses this information to choose a sales pitch geared
towards the customer avatar. The cited section also discloses
the ability of the salesperson avatar to change this approach
based upon reactions of the customer avatar. Thus, Brush has
disclosed "monitoring information from the virtual universe".
Finally, Brush discloses in Column 8, line 61 through Column
9, line 18 that the ad-avatar performs an advertisement in the
virtual universe based on the monitoring, when it is disclosed
that the salesperson, not having what the customer has asked for
(large, green, plaid, long-sleeve oxford), advertises that they do
have an alternate product (large, blue, plaid, long-sleeve
oxford).
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Application 12/174,805
Thus, the only question is, is the performance of the
advertisement taught by Brush, "one or more viral
advertisements". The appellant specification in paragraph
[0057] discloses that "the ad-avatar control tool queries the ad-
avatar database to retrieve automated ad-avatars and scripts for
a target customer market, the ad-avatar control tool selects one
or more VUs and/or one or more locations in the VUs and
scripts based on the ad-avatar's target customer market, or
audience, and current population of potential customer avatars.
The ad-avatar control tool places the one or more automated
avatars in a location within the virtual universe and load scripts
so that the one or more ad-avatars are able to begin e.g. a
conversation. The ad-avatar control tool directs one or more
ad-avatars to begin the "viral advertisement" e.g. execute the
script. The script for example, may be a combination of words,
gestures, and/ or appearances. Thus, it is clear that the
specification discloses that a script, that is a combination of
words, gestures, and/ or appearances to be a "viral
advertisement". The Paragraph [0017] of the appellant's
specification provides an example of a viral ad as "ad-avatars in
locations and times within the VU," (Virtual Universe) "where
the advertiser believes those ads will be most effective". Thus a
viral advertisement appears to be an advertisement presented in
a specific location and time as a script that the advertiser
believes will be effective for presenting the advertisement. The
appellant also discloses in paragraph [0036] an example in
which a [sic] an ad-avatar monitors its environment and then
begins or customizes a viral advertisement merely by detecting
a conversation about dance clubs and inquiring whether those
potential customers would like to see a dance move learned at
dance club XYZ. It is clear that this type of viral advertisement
is merely an advertisement for XYZ dance club, just as the
"oxford" of Brush is advertised based upon a conversation
about a different type of "oxford". Brush clearly discloses
these types of "viral advertisement" in at least Column 7, lines
6-43 and Column 8, line 61 through Column 9, line 18.
Therefore, the prior art of Brush discloses each and every
limitation of claims 1, 17, 23, and 24 as currently written.
Ans. 4---6.
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Application 12/174,805
4. Brush discloses "[i]n FIG. 7B, the customer walks into the department
store (703) tripping the sensor. The salesperson avatar is instantiated and
approaches the customer avatar (705), to within his four foot
preprogrammed radius, saying, 'Hello, may I help you?' (707)." Brush, Col.
8, 11. 61---65.
5. Brush discloses
The salesperson avatar will collect the outwardly observable
characteristics of the potential customer avatar and pursue a
course of action based on the conclusions drawn from the
outwardly observable characteristics. In this example, the
salesperson detects that the potential customer is an older
middle-class male customer. This can be deduced from
clothing choice, hair color or any other physical traits. Based
on the salesperson avatar's programming, it will approach the
potential customer avatar with a predetermined sales pitch for
older males.
Brush, Col. 7, ll.12-22.
ANALYSIS
35 U.S.C. § 102 REJECTION
Appellants' arguments against each of independent claims 1, 1 7, 23,
and 24 are based on perceived deficiencies of Brush. Inasmuch as
Appellants raise the same issues with respect to each of these independent
claims, we discuss them together, addressing each of Appellants' arguments
in tum.
Appellants argue,
However, contrary to the claimed invention, Brush
says nothing about encouraging users to spread a
marketing message to other users about a product
or service. Instead, the salesperson avatar interacts
with a customer avatar to sell items in a virtual
store. For instance, in response to the customer
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Application 12/174,805
avatar's question, the salesperson avatar may
provide a price. However, providing pricing
information about items in a store cannot
reasonably be considered encouraging a user to
pass along a marketing message about a product or
service. Instead, the pricing information is part of
an offer to sell an item to a particular customer
avatar. (Brush, col. 8, lines 33-55.)
(Appeal Br. 6, emphasis omitted).
The Examiner however found, inter alia,
Brush discloses in Column 8, line 61 through
Column 9, line 18 that the ad-avatar performs an
advertisement in the virtual universe based on the
monitoring, when it is disclosed that the
salesperson, not having what the customer has
asked for (large, green, plaid, long-sleeve oxford),
advertises that they do have an alternate product
(large, blue, plaid, long-sleeve oxford) .
. . .. The ad-avatar control tool directs one or more
ad-avatars to begin the "viral advertisement" e.g.
execute the script. The script for example, may be
a combination of words, gestures, and/or
appearances. Thus, it is clear that the specification
discloses that a script, that is a combination of
words, gestures, and/ or appearances to be a "viral
advertisement".
(FF. 2).
We agree with the Examiner. As found supra, the Examiner found
that Brush discloses in Column 8, line 61 through Column 9, line 18 that the
ad-avatar performs an advertisement in the virtual universe based on the
monitoring. (FF. 4, 5). Appellants dispute the content of what the sales
avatar says is not a viral advertisement. (Appeal Br. 5-9.) The claim
requires directing one or more ad-avatars to perform one or more viral
advertisements in the VU based on the monitoring information. The
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Specification defines viral marketing as "a technique that encourages users
to pass along, e.g., a marketing message to create a 'buzz' about a product or
service." (FF. 2). Thus, the claim requires that the content of the
advertisement encourage users to pass along, e.g., a marketing message, to
create a "buzz" about a product or service. (FF. 2).
We find that the sales avatar in Brush does this. That is, we find that
the sales avatar's response to the customer avatar of, "we have a large, blue,
plaid, long-sleeve oxford," constitutes a viral statement. This is because we
find that the claimed viral advertisement only subjectively requires
encouraging others to react in a specified way, and thus, is in essence,
intelligible only to the human mind. In other words, that which encourages
in the mind of one person to act, cannot be said to be the same as that which
encourages in the same thing in the mind of another. As such, we find that
the content of a viral advertisement is non-functional descriptive material.
"[N]on-functional descriptive material, being useful and intelligible only to
the human mind, is given no patentable weight." Ex parte Graf, Appeal
2012-003941, 2013 WL 3873066 at *4 (PTAB July 23, 2013) (non-
precedential) (citing In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)),
affirmed, In re Graf, 585 Fed. Appx. 1012 (Fed. Cir. 2014) (non-
precedential).
Appellants also argue that "sales communications do not constitute
advertising, when the term 'advertising' is given its ordinary meaning that
would be understood by one of ordinary skill in the art." (Appeal Br. 9).
But, Appellants cite to a definition of advertising which suggests otherwise
stating, "[t]he activity of attracting public attention to a product or business,
as by paid announcements in the print, broadcast, or electronic media." Id.
We find that the communications by the sales person avatar in Brush as cited
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by the Examiner in columns 8-9 is advertising because unique features such
as sensing comfort zones and adjusting the sales approach in the context of a
sales person computer animation, ultimately attracts attention to the shirt
trying to be sold, namely, a large blue plaid long sleeve oxford.
Alternatively, we agree with the Examiner that, content aside, the look
and feel of the sales experience in Brush is itself a viral advertisement
(FF. 3) because an interactive sales presentation by a computer generated
sales person could inherently encourage others to watch the script.
We also affirm the rejections of dependent claims 2, 4--9, 12-16, and
18-22 since Appellants have not challenged such with any reasonable
specificity (see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)).
Dependent claim 3.
The claim requires "one or more reactive ad-avatars perform a script
among themselves without initiating a dialog with one or more potential
customer avatars." Appellants argue that, "Brush does not disclose
salesperson avatars interacting among themselves. (Appeal Br. 12, emphasis
omitted).
We are not persuaded by Appellants' argument because the claim
allows for "one" ad-avatar to perform the script. This effectively makes the
claim requirement satisfied by the talking lone sales person avatar in Brush.
(FF. 3).
Claims 10 and 26.
We are not persuaded by Appellants' argument that in Brush " ... the
salesperson avatar is instantiated based on the user's entry to a store and not
based on the 'detecting one or more topics related to conversations"',
(Appeal Br. 13) because the claim does not require that the salesperson
avatar be instantiated based on detecting one or more topics related to
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conversations as argued by Appellants. All the claim requires is that the ad
avatar be inserted to perform the related script. Brush discloses this feature
by tying a script to the ad avatar based on the perceived physical appearance
of the avatar customer. (FF. 5). Concerning claim 26 we find that it is
inherent that each customized script is correspondingly driven by targeted
attributes of a customer stored in a database for retrieval when the customer
attributes are detected.
Claim 11.
We disagree with the Appellants that "Brush is silent with regard to a
'crowd,"' as recited in claim 11. (Appeal Br. 14 ).
The Examiner found that Brush discloses a crowd of potential avatar
customers at "(Col 5, line 18 through Col 6, line 13; Col 6, line 57 through
Col 7, line 50; Col 7, line 56 through Col 8, line 14; Col 8, line 32 through
Col 9, line 17) .... " (Final Act. 6).
We agree with the Examiner because Brush discloses controllable
reactions of the ad avatar to react "if in a small group situation and a third
way if in a large group." Brush, Col. 7, 11. 2-3.
Claim 25
Appellants' arguments to claim 25 merely recite language which is set
forth in claim 25. A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.
37 C.F.R. § 41.37(c)(l)(iv) (2015). Notwithstanding, as found supra, we
find that the claimed aspect of encouraging VU users to pass along
marketing messages about the product or the service, constitutes
nonfunctional descriptive material in that the subject matter is useful and
intelligible only to the human mind. Ex parte Graf, Appeal 2012-003941,
2013 WL 3873066 at *4 (PTAB July 23, 2013) (non-precedential) (citing In
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re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)), affirmed, In re Graf, 585
Fed. Appx. 1012 (Fed. Cir. 2014) (non-precedential).
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1-26 under
35 U.S.C. § 103(a).
DECISION
The decision of the Examiner to reject claims 1-26 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED.
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