Ex Parte Koster

Patent Trial and Appeal Board

Feb 28, 2017

11898864 (P.T.A.B. Feb. 28, 2017)

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.
11/898,864 09/17/2007 Raph Koster 45WE-213888 4102
94472 7590 03/02/2017
DISNEY ENTERPRISES, INC.
c/o Sheppard Mullin Richter & Hampton LLP
12275 El Camino Real, Suite 200
San Diego, CA 92130-2006
EXAMINER
HUR, ECE
ART UNIT PAPER NUMBER
2172
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 @ sheppardmullin. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAPH KOSTER
Appeal 2014-005126
Application 11/898,8641
Technology Center 2100
Before CARL W. WHITEHEAD JR., J. JOHN LEE, and
SHARON FENICK, Administrative Patent Judges.
FENICK, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1—14 and 20-52. Claims 15—19 and 53—55 are
cancelled. (Appeal Br. 2.) Oral argument was heard on February 3, 2017.
A transcript of the hearing will be placed in the record in due course. We
have jurisdiction under 35 U.S.C. § 6(b)(1).
We affirm.
1 Appellant identifies Disney Enterprises, Inc. as the real party in interest.
(Appeal Br. 2.)
Appeal 2014-005126
Application 11/898,864
Invention
Appellant’s invention relates to providing virtual spaces to users, and
to facilitating the creation or customization of virtual spaces. (Spec. 4—5,
Abstract.)
Exemplary Claim
Claim 1, reproduced below, is exemplary:
1. A system configured to provide a virtual space that is
accessible to a user, wherein a virtual space is a simulated
physical space that has a topography, expresses real-time
interaction by the user, and includes one or more objects
positioned within the topography that are capable of
experiencing locomotion within the topography, the system
comprising:
electronic storage configured to store space records for a
plurality of virtual spaces, wherein the plurality of virtual
spaces have been created by a plurality of users, and wherein
the information in a given space record for a given virtual space
includes information selected by a user that created the given
virtual space, such information comprising:
user-selected topographical information related to
the topography of the given virtual space, the topographical
information for the given virtual space being separate and
discrete from topographical information for others of the
plurality of virtual spaces, and
user-selected manifestation information related to
manifestation of the one or more objects positioned within the
topography and/or unseen forces experienced by the one or
more objects in the virtual space, the manifestation information
for the given virtual space being separate and discrete from
manifestation information for others of the plurality of virtual
spaces;
a server in operative communication with the electronic
storage and a client computing device, the server comprising
one or more processors configured to receive the given space
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record stored in the database related to the given virtual space,
and to instantiate the given virtual space according to the
information in the received space record;
wherein the one or more processors of the server are
further configured to implement the instantiation of the virtual
space to determine a view of the virtual space, to determine
view information that describes the view, and to transmit the
view information to the client computing device so that the
client computing device can assemble the view information and
present the view to the user on the client computing device.
Rejections
The Examiner rejects claims 1—14, 20-31, 33, and 44—52 under
35 U.S.C. § 112, second paragraph, as indefinite. (Final Action 6.)
The Examiner provisionally rejects claims 1—14 and 20—52 on the
ground of nonstatutory obviousness-type double patenting as not patentably
distinct from claims 1—20 of copending application 11/898,863. (Final
Action 6—9.)
The Examiner rejects claims 1—14, 20-31, and 44—51 under 35 U.S.C.
§ 103(a) as unpatentable over Mochizuki et al. (US 6,961,060 Bl; iss. Nov.
1, 2005) (“Mochizuki”) and Fickie et al. (US 2007/0082738 Al; pub. Apr.
12, 2007) (“Fickie”). (Final Action 9-26).
The Examiner rejects claims 32-43 under 35 U.S.C. § 103(a) as
unpatentable over Mochizuki, Fickie, and Wang (US 2006/0265483 Al; pub.
Nov. 23, 2006) (“Wang”). (Final Action 27—29).
The Examiner rejects claim 52 under 35 U.S.C. § 103(a) as
unpatentable over Mochizuki, Fickie, and Woulfe (US 2007/0020603 Al;
pub. Jan. 25, 2007). (Final Action 30).
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Issues
(A) Did the Examiner err in finding that the term “and/or”
renders claims indefinite as failing to define the boundaries
of the subject matter being claimed?
(B) Did the Examiner err in finding that the combination of
Mochizuki and Fickie teaches or suggests, “space records
for a plurality of virtual spaces . . . created by a plurality of
users,” where “information in a given space record for a
given virtual space” comprises “user-selected topographical
information” and “user-selected manifestation information,”
as recited in claim 1?
(C) Did the Examiner err in finding that the combination of
Mochizuki and Fickie teaches or suggests, “view
information including] individual markup elements of a
markup language that corresponds to objects in [a] view” of
a virtual space, as recited in claim 20?
(D) Did the Examiner err in finding that Wang is analogous art
in the rejection of claim 32?
(E) Did the Examiner err in finding that Woulfe teaches a
device “further configured to receive selections from the
user of refinements to one or more of the templates,” as
recited in claim 52?
ANALYSIS
As an initial matter, we note that Appellant does not argue the double
patenting rejection. (Appeal Br. 10 n.l.) Thus, we summarily affirm the
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double patenting rejection of claims 1—14 and 20-52. See Manual of Patent
Examining Procedure (MPEP) § 1205.02, 9th ed., Rev. 11, 2013 (Nov.
2015) (“If a ground of rejection stated by the examiner is not addressed in
the appellant’s brief, appellant has waived any challenge to that ground of
rejection and the Board may summarily sustain it”).
(A) Rejections under 35 U.S.C. § 112, second paragraph
Claim 1 recites, “user-selected manifestation information related to
manifestation of the one or more objects positioned within the topography
and/or unseen forces experienced by the one or more objects in the virtual
space.” With respect to the use of the term “and/or” in this claim, the
Examiner finds that the use of the term renders the claim indefinite, and that
“this is not typically and commonly used for [cjlaim language.” (Final
Action 2—3, 6.) Appellant argues that the use of “and/or” does not make the
scope of the claims unclear, and that one of ordinary skill in the art would
give this term its plain meaning. (Appeal Br. 10—11.)
“[Cjlaims must have a clear and definite meaning when construed in
light of the complete patent document.” Miles Labs., Inc. v. Shandon Inc.,
997 F.2d 870, 874—75 (Fed. Cir. 1993) (citation omitted.) The test for
definiteness under 35 U.S.C. § 112, second paragraph requires that claims be
“cast in clear — as opposed to ambiguous, vague, indefinite — terms.” In re
Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014).
We agree with the Appellant (Appeal Br. 10-11; Reply Br. 4) that the
term “and/or” is well known as having a plain meaning of “inclusive or,”
that one skilled in the art would understand what is claimed, and, thus, that
the use of this claim term does not render the scope of the claims unclear.
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Accordingly, we do not sustain the Examiner’s indefiniteness
rejection of claim 1, or of claims 2—14, 20-31, 33, and 44—52, rejected on
the same basis by the Examiner and argued on the same basis by Appellant.
(B) Obviousness Rejection — Claim 1
“space records, ” “plurality of virtual spaces, ” “user-selected
topographical information ” and “user-selected manifestation information ”
Claim 1 recites “space records for a plurality of virtual spaces . . .
created by a plurality of users,” where “information in a given space record
for a given virtual space” comprises “user-selected topographical
information” and “user-selected manifestation information.”
The Examiner finds that the combination of Mochizuki and Fickie
teaches or suggests the limitations of claim 1, including teaching or
suggesting space records for a plurality of virtual spaces created by a
plurality of users, including user-selected topographical information and
user-selected manifestation information. (Final Action 9—12; Answer 4—5.)
Specifically, the Examiner finds virtual space topographical and
manifestation information to be taught by Mochizuki. (Final Action at 10;
Answer 5.) The Examiner notes that while a plurality of virtual spaces are
not disclosed in Mochizuki, the combination of Fickie’s teaching of a
plurality of virtual environments with Mochizuki’s teachings regarding
virtual spaces with the claimed information teach or suggest the disputed
limitations. (Final Action at 11—12.)
While Appellant addresses the Examiner’s findings with respect to
Fickie, Appellant only asserts with respect to the Examiner’s findings with
respect to Mochizuki that Mochizuki contains “no teaching [in the cited
portions] of storing space records for a plurality of virtual spaces.” (Id. at
17.) Appellant concludes that, “[t]here is no teaching in any of these
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portions of Fickie of user selected features for the creation of a virtual space
such as ‘user-selected topographical information’ or ‘user-selected
manifestation information.’” (Id. at 18.)
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. See In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller,
642 F.2d 413, 425 (CCPA 1981)). As discussed supra, the Examiner relied
upon Mochizuki to teach or suggest virtual space topographical and
manifestation information, and Fickie to teach space records for a plurality
of virtual spaces. (Final Action 9—12; Answer 5.)
Therefore, we are not persuaded by Appellant’s arguments of error in
the Examiner’s rejection of claim 1. We sustain the obviousness rejection of
claim 1 and claims 2—14, not argued separately with particularity.
Additionally, claims 44-48 are argued on the substantially the same
basis (Appeal Br. 21), and we similarly sustain the Examiner’s obviousness
rejection of these claims.
While Appellant refers to additional features in arguments regarding
claims 49—52 (Appeal Br. 22), claim 3 (id. at 27—28), claim 10 (id. at 29),
claim 23 (id. at 29—30), claim 45 (id. at 31), and claim 46 (id.), these
arguments do not present arguments specifically identifying error in the
Examiner’s findings; each consisting of a recitation of the claim language
followed by a conclusory statement that the feature is not disclosed in the
cited prior art. Such conclusory arguments are not persuasive of error. We
are not persuaded of error in the obviousness rejection of these claims, and
we sustain the obviousness rejection of claims 3, 10, 23, 45, 46, and 49—52.
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(C) Obviousness Rejection — Claim 20
“individual markup elements of a markup language ”
Claim 20, inter alia, recites “a view module . . . [which] generates
view information that describes [a] view [of the virtual space], wherein the
view information includes individual markup elements of a markup language
that correspond to objects in the view.” The Examiner finds that Mochizuki
discloses the use of a markup language for view information through its
discussion of VRML 2.0 which “defines shape data . . . and a method of
specifying the motion of a rigid body” and that “VRML is referred to as
Virtual Reality Modeling Language, Virtual Reality Markup Language,
[and] describes virtual objects.” (final Action 3—4.)
Appellant argues that:
It is true that the Virtual Reality Modeling Language, in
its infancy, was referred to by some as the Virtual Reality
Markup Language. However, during this period of time, the
Virtual Reality Modeling Language did not support motion of
objects within a virtual space. At the time that the Virtual Reality
Modeling Language was standardized, thereafter being revised
to facilitate motion, the name was also standardized as the
Virtual Reality Modeling Language because the language is not
a markup language.
(Appeal Br. 20.)
No evidence is cited in the Appeal Brief for the contention that
VRML is not a markup language and, thus, Appellant’s arguments are mere
attorney argument. We do not find them persuasive of error with respect to
the question of whether Mochizuki discloses a markup language with
markup elements. Meitzner v. Mindick, 549 L.2d 775, 782 (CCPA 1977)
(attorney argument “cannot take the place of evidence lacking in the
record”). While Appellant includes in the Reply Brief a reference to a
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reference handbook in which a statement is made that “VRML is not... a
‘markup language like HTML’” (Reply Br. 8), this evidence, presented for
the first time in the Reply Brief and based on a reference from an
Information Disclosure Statement filed contemporaneously with the Reply
Brief, is not timely. A reply brief should not contain new evidence, and any
new factual or legal arguments to rebut Examiner rejections that could have
been made in the principal appeal brief are waived. 37 C.F.R. § 41.41(b)(1)
(2012); Ex parte Nakashima, 93 USPQ2d 1834, 1837 (BPAI 2010)
(informative).
While no limiting definition is present in the Specification, it provides
that “the term ‘markup language’ may include a language used to
communicate information between components via markup elements,”
where a markup element is, “a discrete unit of information that includes both
content and attributes associated with the content.” (Spec. 118; see also id.
6, 8, 30.) The Examiner finds that Mochizuki’s VRML 2.0 “defines
shape data” for virtual reality objects and specifies motion (an attribute) of
those objects, and that VRML is a markup language. (Final Action 12—13.)
We find unpersuasive Appellant’s conclusory argument that VRML is not a
markup language, and find no sufficient basis has been presented to question
the underlying findings of the Examiner with respect to VRML 2.0 as
teaching or suggesting the disputed elements of claim 20.
Therefore, we are not persuaded by Appellant’s arguments of error in
the Examiner’s rejection of claim 20. We sustain the obviousness rejection
of claim 20, and of claims 2, 7, and 21—31, not argued separately with
particularity (Appeal Br. 21, 27—28).
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(D) Wang as Analogous Art
The Examiner rejects claims 32-43 as obvious over the combination
of Mochizuki, Fickie, and Wang. (Final Action 27—29.) Appellant argues
that Wang is not analogous art. (Appeal Br. 23—26.)
The two-prong test to define the scope of analogous prior art is (1)
“whether the art is from the same field of endeavor, regardless of the
problem addressed,” and (2) even “if the reference is not within the field of
the inventor's endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved.” In re Klein, 647
F.3d 1343, 1348 (Fed. Cir. 2011) (internal citation omitted). The Examiner
finds that Wang meets the second prong.
The Examiner finds that Wang is reasonably pertinent to the particular
problem with which the inventor is involved. (Final Action 4.) Appellant
argues that the particular problems with which the inventor was involved,
“include, for example, facilitating user access to a plurality of different
virtual spaces and types of virtual spaces without requiring specialized client
applications.” (Appeal Br. 24.) With respect to Wang, Appellant
characterizes Wang as “more concerned with the problem of customizing a
user experience for a plurality of different devices and device capabilities.”
{Id.)
Appellant does not address the actual finding by the Examiner, that
the problem of displaying (virtual device) control information was a
particular problem with which the inventor was involved, and that the Wang
reference was related to this and, thus, reasonably pertinent. (Final Action
4.) No argument presented relates to whether the identified problem was
one with which the inventor was involved, or whether Wang would be
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pertinent to the problem. Instead, Appellant presents a non-exhaustive list
(“include, for example”) of problems with which the inventor was involved,
and describes Wang as “more concerned” with a different problem. (Appeal
Br. 24.)
We are not persuaded by these arguments that the Examiner erred in
finding that the inventor was involved with the problem of displaying virtual
device control information, or that Wang would be reasonably pertinent to
that problem. Therefore, we sustain the obviousness rejection of claims 32—
43.
(E) Obviousness Rejection — Claim 52
The Examiner rejects claim 52 as obvious over the combination of
Mochizuki, Fickie, and Woulfe. (Final Action 30.) Appellant argues that
Woulfe, in combination with Mochizuki and Fickie, does not disclose the
claimed configuration of a graphical user interface to receive selections from
the user of refinements to a template. (Appeal Br. 26—27.) Specifically,
Appellant argues that the cited sections of Woulfe describe only the
availability of templates to users, and, “[tjhere is no teaching in Woulfe of
the users changing, modifying, or refining the templates.” (Id. )
We agree in substance with Appellant. The cited portions of Woulfe
describe the selection of a delivery template corresponding to a virtual
classroom session, and the use of the delivery template with data from the
facilitator and classroom users, thus generating composite output for
classroom participants. (Woulfe Abstract, || 15, 55.) However, Woulfe
does not teach or suggest user selection of “refinements” to a template.2
2 Appellant does not specify which portions of the originally-filed
specification correspond to the “virtual world templates” of claim 51 (as
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Therefore, we find Appellant’s arguments regarding the disputed
limitation to be persuasive. Accordingly, we do not sustain the Examiner’s
obviousness rejection of claim 52.
DECISION
The Examiner’s nonstatutory double patenting rejection of claims 1—
14 and 20—52 is affirmed.
The Examiner’s 35U.S.C. § 112, second paragraph, rejection of
claims 1—14, 20—31, 33, and 44—52 as indefinite is reversed.
The Examiner’s 35 U.S.C. § 103(a) rejection of claims 1—14 and 20—
51 is affirmed.
The Examiner’s 35 U.S.C. § 103(a) rejection of claim 52 is reversed.
Since at least one rejection encompassing all claims on appeal is
affirmed, the decision of the Examiner is affirmed.
Pursuant to 37 C.F.R. § 1.136(a)(l)(iv), no time period for taking any
subsequent action in connection with this appeal may be extended.
AFFIRMED
amended) or where in the specification support for the user refinement of
templates of claim 52 (as amended) may be found. Upon any further
prosecution of this Application, the Examiner may consider whether these
aspects constitute new matter.
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