Ex Parte Jung et al

Patent Trial and Appeal Board

Dec 23, 2016

11340832 (P.T.A.B. Dec. 23, 2016)

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.
11/340,832 01/26/2006 Edward K.Y. Jung SE1-0702-US 8228
80118 7590 12/28/2016
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
MACASIANO, MARILYN G
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
12/28/2016 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD K.Y. JUNG, ROYCE A. LEVIEN,
ROBERT W. LORD, MARK A. MALAMUD,
and JOHN D. RINALDO JR.
Appeal 2014-009032
Application 11/340,8321
Technology Center 3600
Before MURRIEL E. CRAWFORD, JAMES A. WORTH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 66, and 70—72. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 “The real party in interest on this appeal is Searete, LLC by virtue of
assignments of the inventors recorded at reel/frame 017650/0726 on March
10, 2006. Searete, LLC is wholly owned by Intellectual Ventures
Management LLC.” Appeal Br. 4.
Appeal 2014-009032
Application 11/340,832
ILLUSTRATIVE CLAIM
1. A system comprising:
circuitry configured for obtaining performance
information associated with a real world transaction involving a
credit account created for a real world patron associated with a
virtual world patron of a virtual world; and
circuitry configured for providing a virtual world benefit
to the virtual world patron associated with the real world patron
based on the performance information associated with the real-
world transaction involving the credit account.
REJECTION
Claims 1, 66, and 70-72 are rejected under 35 U.S.C. § 102(b) as
anticipated by Kuwahara (US 2002/0188760 Al, pub. Dec. 12, 2002).
FINDINGS OF FACT
We rely upon and adopt the Examiner’s findings stated in the Final
Office Action at pages 2—3 and the Answer at pages 2—3, except as stated
otherwise in the Analysis below. Additional findings of fact may appear in
the Analysis below.
ANALYSIS
Independent Claim 1
The Appellants contend that the Examiner erred in rejecting
independent claim 1 because the cited portions of Kuwahara do not teach or
suggest the following limitation:
circuitry configured for providing a virtual world benefit
to the virtual world patron associated with the real world patron
based on the performance information associated with the real-
world transaction involving the credit account.
Appeal Br. 7. Specifically, rather than the identified feature, the Appellants
assert that Kuwahara discloses “carrfyingl out a conversation with a
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Application 11/340,832
salesclerk of the store or purchas final the specified goods or items at the
store.” Id. at 15 (citing Kuwahara 147). “[I]n the alternative,” the
Appellants assert that there is no cited evidence of how to modify Kuwahara
to overcome such deficiency. Id. at 7.
To the contrary, as articulated by the Examiner, Kuwahara teaches the
recited limitation, through its disclosure of a role playing game system,
including a server, in which a point value obtained in the virtual world can
be updated on a merchant terminal device in a store in the real world and the
value in the virtual world is updated depending on an event-executed result
in the real world. Answer 2—3 (citing Kuwahara H 7, 32, 35, 59, 62, Figs. 4,
6 (elements si, s9)).
In addition, the Appellants’ alternative argument — to the effect that
there is no cited evidence of how to modify Kuwahara to overcome such
deficiency (see Appeal Br. 7) — is not persuasive of error in the rejection.
The rejection is based upon anticipation and does not involve modifying the
teachings of Kuwahara.
Because the Appellants’ arguments are unpersuasive, the rejection of
claim 1 under 35 U.S.C. § 102(b) is sustained.
Dependent Claim 66
In addition to relying upon the assertion set forth regarding
independent claim 1 (see Appeal Br. 15), the Appellants contend (id. at 16)
that the Examiner erred in rejecting dependent claim 66 because the cited
portions of Kuwahara do not teach or suggest the following limitation:
circuitry configured for creating the credit account for the
real world patron in response to a virtual world charge account
of the virtual world patron satisfying one or more performance
benchmarks.
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Application 11/340,832
Specifically, rather than the identified feature, the Appellants assert that
Kuwahara discloses “allowing a player to bring point value out from the
virtual world to the real world.” Id. at 17 (citing Kuwahara 159). “[I]n
the alternative,” the Appellants assert that there is no cited evidence of how
to modify Kuwahara to overcome such deficiency. Id. at 16.
As discussed above, the Appellants’ argument on behalf of claim 1 is
unpersuasive, such that reliance on that argument (as to claim 66) is also
unpersuasive. In addition, as articulated by the Examiner, Kuwahara teaches
the recited limitation, through its disclosure of an integrated circuit card
storing game-play information in which a role-playing game system is
configured so that the point value obtained in the virtual world can be
updated on a merchant terminal at a store in the real world, and the point
value in the virtual world is updated based upon an event-executed result of
the player in the real world. Answer 3 (citing Kuwahara ]Hf 7, 24, 25, 32, 35,
39-42, 59).
Furthermore, the Appellants’ alternative argument — to the effect that
there is no cited evidence of how to modify Kuwahara to overcome such
deficiency (see Appeal Br. 7) — is not persuasive of error in the rejection.
The rejection is based upon anticipation and does not involve modifying the
teachings of Kuwahara.
Because the Appellants’ arguments are unpersuasive, the rejection of
claim 66 under 35 U.S.C. § 102(b) is sustained.
Dependent Claim 70
In addition to relying upon the assertion set forth regarding
independent claim 1 (see Appeal Br. 15), the Appellants contend (id. at 18—
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Application 11/340,832
19) that the Examiner erred in rejecting dependent claim 70 because the
cited portions of Kuwahara do not teach or suggest:
circuitry configured for obtaining performance
information associated with a real world transaction involving a
hybrid credit account created for a real world patron associated
with a virtual world patron of a virtual world, the hybrid credit
account usable for one or more transactions in the virtual world
requiring repayment in fictional world money and for one or
more transactions in the real-world requiring repayment in real
world money.
Specifically, rather than the identified features, the Appellants assert that
Kuwahara discloses “allowing a player to bring point value out from the
virtual world to the real world.” Id. at 20 (citing Kuwahara 159). “[I]n
the alternative,” the Appellants assert that there is no cited evidence of how
to modify Kuwahara to overcome such deficiency. Id. at 18.
As discussed above, the Appellants’ argument on behalf of claim 1 is
unpersuasive, such that reliance on that argument (as to claim 70) is also
unpersuasive.
The Examiner’s position is that Kuwahara teaches the recited
limitation, through its disclosure of an integrated circuit card that stores
game-play information, wherein activities in the real world (such as a
purchase at a merchant terminal) updates the point value associate with the
card for the virtual world game. Answer 4 (citing Kuwahara 7, 24, 25,
35, 59, 62, Fig. 6 (elements si, s9)).
However, the Examiner does not identify any disclosure in Kuwahara
of claim 70’s “hybrid credit account” that is “usable for one or more
transactions in the virtual world requiring repayment in fictional world
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Application 11/340,832
money and for one or more transactions in the real-world requiring
repayment in real world money.”
Accordingly, the Appellants’ argument is persuasive of error, such
that the rejection of claim 70 under 35 U.S.C. § 102(b) is not sustained.
Dependent Claims 71 and 72
Each of claims 71 and 72 depends from claim 70. Appeal Br. 32—33
(Claims App.).
As to dependent claims 71 and 72, the Appellants rely upon the
assertions set forth regarding independent claim 1. See Appeal Br. 15.
Although the rejection of claim 1 is sustained, as discussed above, the
Examiner’s decision to reject claims 71 and 72, under 35 U.S.C. § 102(b), is
not sustained, for the reasons provided above regarding the rejection of base
claim 70.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1 and 66 under
35 U.S.C. § 102(b).
We REVERSE the Examiner’s decision rejecting claims 70—72 under
35 U.S.C. § 102(b).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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