Ex Parte Hebbar et alDownload PDFPatent Trial and Appeal BoardFeb 28, 201713384642 (P.T.A.B. Feb. 28, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/384,642 04/02/2012 Abdelkrim Hebbar LUTZ 201397US01 6062 48116 7590 03/02/2017 FAY STTARPF/T TTf’F.NT EXAMINER 1228 Euclid Avenue, 5th Floor PATEL, JITESH The Halle Building Cleveland, OH 44115-1843 ART UNIT PAPER NUMBER 2617 NOTIFICATION DATE DELIVERY MODE 03/02/2017 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 @ faysharpe.com ipsnarocp @ nokia. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ABDELKRIM HEBBAR, HAKIM HACID, and ABDERRAHMANE MAARADJI Appeal 2016-002501 Application 13/384,642 Technology Center 2600 Before JOSEPH L. DIXON, SCOTT E. BAIN, and ALEX S. YAP, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-002501 Application 13/384,642 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1 and 3—11. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to an image processing method, avatar display adaptation method and corresponding image processing processor, virtual world server and communication terminal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. Method for processing images in a virtual environment in which a plurality of avatars respectively representing associated users evolve, said image processing method comprising: - an adaptation request is received for the display of the avatars on a terminal of a given user, said request comprising at least one adaptation criterion to distinguish the display of the avatars, wherein the at least one adaptation criterion is a social link criterion between the given user and the users connected to the virtual environment thereby distinguishing the display of the avatars associated with users of the social network of the given user from the display of avatars associated with users who do not belong to the social network; - the data representing the avatars is modified based on said adaptation criterion, and - the modified data for an adapted display of the avatars is sent to the terminal of the given user. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: 2 Appeal 2016-002501 Application 13/384,642 Uramoto US 2009/0144282 A1 June 4, 2009 Nimsetal. US 2009/0144639 A1 June 4, 2009 REJECTIONS The Examiner made the following rejections: Claims 1, 4, and 7—11 are rejected under pre-AIA 35 U.S.C. § 102(b) as being anticipated by Nims. Claims 3,5, and 6 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Nims in view of Uramoto. ANALYSIS Appellants set forth separate arguments for patentability of independent claims 1 and 7—11. Independent claims 7—11 contain commensurate limitations as argued with respect to independent claim 1, but are directed to different embodiments. We address independent claim 1 as the illustrative claim. 35 U.S.C. § 102 “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.” Verdegaal Bros. v. Union Oil Co. of Calif, 814 F.2d 628, 631, (Fed. Cir. 1987). Analysis of whether a claim is patentable over the prior art under 35 U.S.C. § 102 begins with a determination of the scope of the claim. We determine the scope of the claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad, of Sci. Tech. 3 Appeal 2016-002501 Application 13/384,642 Ctr., 367 F.3d 1359 (Fed. Cir. 2004). The properly interpreted claim must then be compared with the prior art. “It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it. Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal quotation marks omitted). With respect to independent claim 1, Appellants contend that the Nims reference does not disclose: at least one adaptation criterion is a social link criterion between the given user and the users connected to the virtual environment thereby distinguishing the display of the avatars associated with users of the social network of the given user from the display of avatars associated with users who do not belong to the social network. (App. Br. 7.) The Examiner finds: “For example, upon a user completing a first workout, a new shirt or pair of shoes may be unlocked (adaptation request) for the avatar”. (Nims, [0050]), “when a new item or selectable feature has been unlocked, a notification maybe displayed (adaptation request received)” Nims, [0059], “One such application, plug in, or the like may relate to comparing the athletic performance (adaptation criterion as a social link between users) of the social network system user to a benchmark or to the athletic performance of other social network system or service members 4 Appeal 2016-002501 Application 13/384,642 ... The benchmark comparison and/or multiple user competition may be visually represented, in particular with the avatar(s) of the user(s)” Nims, fig. 20; [0089], “as illustrated in FIG. 20, an avatar section 2001 may include multiple avatars 2003 that correspond to the user and his or her friends ... The user may also choose which avatars (i.e., which friends) to display in avatar section 2001. The positions and other characteristics of avatars 2003 may automatically update based on live athletic performance (adaptation criterion as a social link between users) data feeds from an athletic performance monitoring site or application linked to avatars 2003 and the social networking site.” Also note fig. 20 depicts, “Friends in Other Networks” which exemplifies avatars of a user's friends who do not belong to the user's social network and which may be displayed.). (Final Act. 3—4.) The Examiner relies upon the avatars who achieve their individual athletic goals and receive awarded prizes that alter the avatars’ appearance upon a user completing an athletic performance goal. (Nims 1 5.) The Examiner further relies upon the user may include in figure 20 multiple avatars which are involved in a current challenge or competition or involve friends (Nims 1 89). Appellants contend: The Examiner notes that the cited passage states: ““avatar section 2001 may display multiple avatars 2003 based on user preference. The user may also choose which avatars (i.e., which friends) to display in avatar section 2001.” Based on this statement, the Examiner goes on to draw the conclusion that “[therefore a user may choose to display friends who are members of his social network as well as friends from other networks who are non-members and be able to view them in a distinguishable manner based on his chosen preference of viewing the various avatars. Thereby distinguishing^ showing member as well as non-members avatars in avatar section 2001.” 5 Appeal 2016-002501 Application 13/384,642 However, contrary to the Examiner’s assertion, there is simply no such disclosure in Nims. That is, even if a user could select a non-member avatar for display in the avatar section (which is not explicitly disclosed), there is no mention Nims of distinguishing the appearance of non-member avatars from member avatars. As can be seen, the cited paragraph mentions an avatar section in which the user's friends' avatars are displayed, and the positions and other characteristics of may automatically update based on live athletic performance data feeds. Figure 20 shows a selectable menu that reads “Friends in Other Networks.” Nothing in the cited passage suggests that the Friends in Other Networks are displayed in the avatar section, let alone that the appearance of their avatar's display is distinguished from those of friends within the user’s social network. Furthermore, the avatars in the avatar section have their distance adjusted as a function of relative athletic performance, but there is no mention adjusting or distinguishing the appearance of the avatars based on whether they belong to the social network or not. Moreover, there is no description of the Friends in Other Networks tab in the specification of Nims. and thus no suggestion that the user can select avatars of friends not in the user's current network for display in the avatar section. That is, nothing in the cited passage suggests that the avatars of the Friends in Other Networks are displayed in the avatar section, let alone that the appearance of Friends in Other Networks avatar's display is distinguished from those of friends within the user's social network. Moreover, there is no mention of distinguishing avatar displays as a function of whether the user associated with the avatar is a member of the social network or not. Rather, Nims merely updates avatars of friends within the user’s social network as a function of athletic performance. Accordingly, Nims fails to describe each and every feature of the subject claim. (App. Br. 8-9.) Appellants further contend “[rjather, Nims merely updates avatars of friends within the user’s social network as a function of athletic 6 Appeal 2016-002501 Application 13/384,642 performance. Accordingly, Nims fails to describe each and every feature of the subject claim.” (App. Br. 9.) We agree with Appellants. The Examiner generally relies upon the “broadest reasonable interpretation” of a social network in an attempt to stretch the express teachings of the Nims reference. Moreover, the Examiner fmdimaintains “Nims suggests a social network which would include ‘users who have achieved a specific goal’ as described in Nims [0005].” (Ans. 2). We find the Examiner’s finding that the Nims reference “suggests” one of the claim limitations is inappropriate for the Examiner’s anticipation rejection which requires disclosure rather than suggestion of the claimed invention. The Examiner further relies upon page 9 of the Appeal Brief to support the position: Nims [0089] describes that avatars 2003 in avatar section 2001 may include avatars of a user's friends that may be updated based on their respective athletic achievements such that they may distinguishably appear as belonging in the social network “have achieved a goal[.]” (Ans. 3.) We find the Examiner’s finding and conclusion which relies upon page 9 of the Appeal Brief to be misplaced, and we find the record does not support the Examiner’s finding that “avatars of a user’s friends that may be updated based on their respective athletic achievements such that they may distinguishably appear as belonging in the social network ‘have achieved a goal.’” (Ans. 3.) Finally, the Examiner concludes: Therefore Nims, at least based on paragraphs [0089] and [0005] does suggest distinguishing^ displaying avatars based on association with a social network and therefore suggests the claimed feature of the limitation in question, namely, “distinguishing the display of the avatars associated with users 7 Appeal 2016-002501 Application 13/384,642 of the social network of the given user from the display of avatars associated with users who do not belong to the social network.” (Ans. 3) (emphasis added). We find the Examiner is attempting to reconstruct Appellants’ claimed invention from the limited disclosure of the Nims reference and the Examiner’s commentary in the response to argument evidences that the Examiner has not provided a showing of anticipation due to the Examiner’s position that the teachings of the Nims reference “suggests” the claimed feature, but does not necessarily disclose the identical invention. As a result, we cannot sustain the anticipation rejection of independent claim 1. Independent Claims 7—11 Appellants advance similar arguments as set forth with respect to independent claim 1. (App. Br. 10-17; Reply Br. 7—17.) The Examiner presents similar rejections for these other independent claims (Final Act. 7—9) and the Examiner does not present separate findings in the Response to Arguments section of the Examiner’s Answer. The Examiner relies upon the deficient findings advanced with respect to independent claim 1. (Ans. 3—4.) Because we find independent claims 7—11 contain similar limitations addressed above, we similarly find error in the Examiner’s finding of anticipation of claims 7—11. Dependent Claim 4 Appellants do not set forth separate arguments for patentability of dependent claim 4, but the claim will stand with parent independent claim 1. 8 Appeal 2016-002501 Application 13/384,642 Obviousness Appellants contend that claims 3,5, and 6 would not have been obvious over the Nims reference in view of the Uramoto reference. (App. Br. 17—19.) Appellants rely upon the arguments advanced with respect to independent claim 1. Appellants contend that “Uramoto fails to overcome the deficiencies of Nims with regard to independent claim 1.” (App. Br. 17.) The Examiner maintains “the rejections of dependent claims 3, 5-6 which depend directly or indirectly from claim 1 are also maintained accordingly.” (Ans. 4.) We find the Examiner’s stated rejection in the Final Action merely addresses the additional limitations recited in the dependent claims, but does not remedy the deficiency noted above with respect to the Examiner’s anticipation rejection. (Final Act. 9—13.) Consequently, we cannot sustain the Examiner’s obviousness rejection for the same reasons discussed above. CONCLUSIONS The Examiner erred in rejecting claims 1, 4, and 7—11 based upon anticipation under 35 U.S.C. § 102, and the Examiner erred in rejecting claims 3, 5, and 6 based upon obviousness under 35 U.S.C. § 103. DECISION For the above reasons, we reverse the Examiner’s rejections of claims 1 and 3—11. REVERSED 9 Copy with citationCopy as parenthetical citation