Ex Parte Harp et al

Patent Trial and Appeal Board

Feb 25, 2016

12851788 (P.T.A.B. Feb. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/851,788 08/06/2010
909 7590 02/29/2016
Pillsbury Winthrop Shaw Pittman, LLP (NV)
PO Box 10500
McLean, VA 22102
FIRST NAMED INVENTOR
Derek Harp
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.
053677-0387188 2452
EXAMINER
PIERCE, DAMON JOSEPH
ART UNIT PAPER NUMBER
3717
NOTIFICATION DATE DELIVERY MODE
02/29/2016 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):
docket_ip@pillsburylaw.com
heather.marthers@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEREK HARP and BENGT GREGORY-BROWN
Appeal2013-009835
Application 12/851,788
Technology Center 3700
Before: JOHN C. KERINS, CHARLES N. GREENHUT, and
ANNETTE R. REIMERS, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
20. An oral hearing was conducted on February 18, 2016. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal2013-009835
Application 12/851,788
The claims are directed to a system and method for providing optional
commitments to players within a videogame. Spec i-f 1. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A system configured to present optional commitments to a
player within the context of a video game, the system comprising:
one or more processors configured to execute computer program
modules, the computer program modules comprising:
a game module configured to generate views of a videogame for
presentation to a player that enable the player to participate in the
video game;
a commitment module configured to manage a set of
commitment criteria associated with a commitment, wherein the
set of commitment criteria comprises an activity criteria that
defines ongoing and/or repeated actions required of a player over
time to fulfill the commitment, a benefit criteria, and a penalty
criteria;
an invitation module configured to generate a commitment
invitation inviting the player to accept the commitment
associated with the set of commitment criteria, the invitation
module being further configured to receive a response to the
commitment invitation from the player;
a benefit module configured such that, responsive to the player
invitation module receiving an acceptance of the commitment
invitation from the player, a benefit corresponding to the benefit
criteria associated with the commitment is provided to the
player within the videogame; and
a performance evaluation module configured to determine
whether ongoing and/or repeated actions of the player over time
within the videogame satisfy the activity criteria associated with
the commitment.
REJECTION
Claims 1-20 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Van Luchene (US 2007/01911104 Al, pub. Aug. 16, 2007).
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Appeal2013-009835
Application 12/851,788
OPINION
The critical shortcoming in the Examiner's anticipation rejection is
that an agreement to confer a benefit upon the occurrence of a particular
event, as is done in the sponsorship agreement of Van Luchene, is not
necessarily a commitment to perform any action to bring about such an
event, as is required by each of the independent claims involved in this
appeal. App. Br. 8-9. The Examiner posits that "a sponsoree has agreed to
complete all of a games' mission," which, in tum, requires the sponsoree to
reach new levels. Ans. 9. However, the Examiner does not point to any
disclosure, express or implied, wherein a sponsoree makes such a
commitment in Van Luchene. As the Examiner looks beyond the Van
Luchene disclosure in order to find anticipation, the Examiner's rejection
cannot be sustained. Verdegaal Bros. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987) (A claim is anticipated only if each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference.)
DECISION
The Examiner's rejection is reversed.
REVERSED
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