Ex Parte Massey

Board of Patent Appeals and Interferences

Sep 13, 2011

10003187 (B.P.A.I. Sep. 13, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENT MASSEY
____________

Appeal 2009-006483
Application 10/003,187
Technology Center 2400
____________

Before KRISTEN L. DROESCH, JEFFREY S. SMITH and
ERIC B. CHEN, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) of a final rejection
of claims 1 and 3-6.1 We have jurisdiction under 35 U.S.C. § 6(b). We
REVERSE.
BACKGROUND
Appellant’s invention is related to methods for generating an
interactive digital video for marketing products or services. The interactive
video is customized to a viewer by designing many of the scenes as
alternative scenes that can be automatically selected by control functions of
the video player based upon choices made by the viewer. Spec. ¶¶ 6-9.
Claims 5-6 are rejected under 35 U.S.C. § 102(e) as anticipated by
Green (U.S. Patent No. 6,041,310).
Claims 1, 3 and 4 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Haberman (U.S. Patent Application Publication No.
2002/0013943 A1) and Shiels (U.S. Patent No. 5,737,527).
ISSUE 1
Did the Examiner err in finding that Green describes in response to a
selected one of an alternative decision, presenting in each module that
corresponds to the selected alternative decision, scenes providing
information for attributes not previously presented in an earlier module and
alternative scenes providing information for attributes previously presented
in an earlier module?

1 Claims 2 and 7 have been cancelled.
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ANALYSIS FOR ISSUE 1
Appellant disputes the Examiner’s finding that Green describes
sections (b) and (f) of claim 5. Br. 6-7. For convenience, independent claim
5 is reproduced below (disputed limitations in italics):
A method for presenting an interactive digital video work for
marketing products or services to potential purchasers, wherein
content of the interactive digital video work can be customized
based upon each viewer’s decisions, the method comprising the
steps of:
(a) providing a plurality of potentially viewable scenes to
deliver to a viewer in a plurality of modules, each module
corresponding to a product or service, wherein the
potentially viewable scenes of each such module provide
information about attributes of the product or service;
(b) for attributes which are common to more than one product
or service, producing some of the potentially viewable
scenes to provide comprehensive information about the
attribute and alternative scenes to provide abbreviated
information about the attribute;
(c) delivering some of the potentially viewable scenes to the
viewer as branching points at which alternative decisions
are presented that will determine a scene sequence to be
presented to the viewer;
(d) enabling the viewer to select one of the alternative
decisions;
(e) prompting the viewer to select one of the alternative
decisions; and
(f) in response to the viewer’s selected one of the alternative
decisions presenting to the viewer, in each module that
correspond to the selected alternative decision and that can
be presented in a different order, the scenes providing
comprehensive information for attributes not previously
presented to the viewer in an earlier module and the
alternative scenes providing abbreviated information for
attributes previously presented to the viewer in an earlier
module.

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The Examiner finds that Green’s Selected Vehicle Screen of Fig. 13
corresponds to the claimed plurality of modules with each module
corresponding to a product or service. Ans. 4; see also col. 11, l. 66 to col.
12, l. 3. The Examiner further finds that Green meets the limitations of
sections (b) and (f) based on Green’s a description of: (1) a minimum
number of cars or “products” needed to compile an inventory list (Fig.9A:
120) and if a car does not exactly but can closely match the customers query,
the closely matching cars or products will be added to inventory list (120) in
order to meet the minimum number requirement to make a complete list; and
(2) when a customer selects a car that is an exact match to the customer's
query, the customer is provided with Selected Vehicle Screen (Fig. 13) with
comprehensive scenes regarding the car and which may provide the
customer with more information regarding the transmission, e.g., 4-speed
automatic. Ans. 4, 6 (citing col. 11, l. 8 to col. 12, l. 12); see also Fig. 12.
The Examiner also finds that when a customer later selects a car that only
comes close to matching, after first viewing all the cars that exactly
matched, the customer is provided with the Selected Vehicle Screen (Fig.
13) and is provided with abbreviated scenes since the selected car may not
include all of the same features as a previously viewed car that exactly
matched the customer’s query. Ans. 4-6 (citing Figs. 12A, 13).
Appellant argues that Green cannot display to a viewer scenes for
attributes not previously presented and alternative scenes for attributes
previously presented. App. Br. 7. Appellant further argues that Green
describes that when a viewer chooses a selected vehicle from the Selected
Inventory Screen (Fig. 12A:120), the system presents a next screen (Fig. 13)
containing information about various attributes of the selected vehicle, but
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that information about the attributes is never varied or abbreviated based on
whether the viewer had looked at the same or similar vehicle earlier. App.
Br. 7-8.
As an initial matter, we note that the Examiner gives patentable
weight to the terms “comprehensive” and “abbreviated” used in the context
of the information provided in the scenes. However, these limitations
merely describe the content of the information presented; the information
content does not affect the function of presenting the scenes and alternative
scenes. Furthermore, the description of information as either comprehensive
or abbreviated is subjective and based on a viewer’s perception of the
information, and is therefore only significant to the viewer, and not to any
method step or structural limitation recited in claim 5. Accordingly,
“comprehensive” and “abbreviated” constitute non-functional descriptive
material and are not entitled to patentable weight. See In re Ngai, 367 F.3d
1336, 1338-39 (Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d 1381, 1385
(Fed. Cir. 1983). See also Ex parte Nehls, 88 USPQ2d 1883, 1887-90
(BPAI 2008) (precedential).
In any event, even attributing no patentable weight to the non-
functional descriptive material, we agree with Appellant that Green does not
describe the limitations of sections (b) and (f). App. Br. 7-8. The Examiner
does not direct us to, and we cannot find, where Green describes presenting,
in each Selected Vehicle Screen (Fig. 13) (i.e., in each module) that
corresponds to a vehicle selected from the Selected Inventory Screen 120
(Fig. 12A) (i.e., the selected alternative decision) scenes providing
information for attributes not previously presented in an earlier Selected
Vehicle Screen (i.e., earlier module) and alternative scenes providing
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information for attributes previously presented in an earlier Selected Vehicle
Screen. Instead, Green’s Selected Vehicle Screen (Fig. 13) is presented
when the customer selects a vehicle from Selected Inventory Screen 120
(Fig. 12A). Col. 11, l. 38 to col. 12, l. 1, Table 9. The scenes providing
information for the attributes in the Selected Vehicle Screen (Fig. 13) (i.e.,
module) depend on which vehicle is selected from the Selected Inventory
Screen 120 (Fig. 12A). Green does not describe presenting scenes providing
information for the attributes and alternative scenes providing information
for the attributes in the Selected Vehicle Screen (Fig. 13) (i.e., module)
dependent on whether the attributes have or have not been previously
presented in an earlier Selected Vehicle Screen (i.e., module).
The possibility that the Selected Vehicle Screen (Fig. 13) for a second
selected closely matching vehicle may present different attribute information
from the attribute information presented in the Selected Vehicle Screen for a
first selected exactly matching vehicle is insufficient to show that Green
describes the disputed claim limitations. “Inherency . . . 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 omitted). It is also
possible that a customer could select a first vehicle from the Selected
Inventory Screen 120 (Fig. 12A) and be presented with a first Selected
Vehicle Screen (Fig. 13) presenting attribute information for the first
selected vehicle and thereafter the customer could select the same first
vehicle from the Selected Inventory Screen 120 and be presented with the
same first Selected Vehicle Screen presenting the same attribute information
as that which was previously presented. Furthermore, the scenario explained
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by the Examiner does not meet the limitations of the claim because it
describes presenting in one module (i.e., a first Selected Vehicle Screen
corresponding to the selection of an exactly matching vehicle) scenes
providing information for attributes not previously presented in an earlier
module and presenting in another module (i.e., a second Selected Vehicle
Screen of Fig. 13 corresponding to the selection of a closely matching
vehicle) scenes providing information for attributes previously presented in
an earlier module; not in each module.
The Examiner also presents an alternative position regarding Green’s
description in response to Appellant’s arguments. Ans. 17-18. The
Examiner finds that Green describes the limitations of section (b) by
providing a plurality of potentially viewable scenes (Figs. 12A, 13) in a
plurality of modules (Figs. 7A, 7B, 8A, 8B, 9, 9A) and for attributes that are
common, producing viewable scenes to provide comprehensive information
(Fig. 13) and alternative scenes (Figs. 7-11A) to provide abbreviated
information about the attribute (Fig. 12A). Ans. 17 (citing col. 5, ll. 30-35).
The Examiner asserts that Green meets the limitations of section (f) based on
the choice of different paths based on different decisions (Figs. 7-11A)
resulting in a different module detailing information (Figs. 12A, 13), the
scenes providing comprehensive information for attributes not previously
presented to the viewer in an earlier module (Fig. 13) and the alternative
scenes providing abbreviated information (Fig. 12A) for attributes
previously presented to the viewer in an earlier module (Figs. 7-11A). Ans.
18. The Examiner further explains that Green allows the user to return to the
main menu 110 (Fig. 14), allowing the user to make alternative decisions to
obtain alternate abbreviated information. Ans. 19.
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The Examiner’s alternate position (Ans. 17-19) is equally untenable.
The Examiner does not direct us to, and we cannot find where Green
describes that in response to the customer’s selected one of the alternative
decisions (e.g., vehicle category selections 71-71b, 72-72b, 73-73b, 74 and
75 from Fig. 7, car model selections 82-87 from Fig. 8, transmission
selections 92-99 from Fig. 9, model year selections 130-136 from Fig. 10,
price range selections from Fig. 11), presenting to the customer, in each
module (e.g., transmission selection screen 90 from Fig. 9) that corresponds
to the selected alternative decision (e.g., selection of car model 82-87 from
car selection screen 80 from Fig. 8); the scenes providing information for
attributes not previously presented in an earlier module (e.g., main menu 70,
car selection screen 80) and alternative scenes providing information for
attributes previously presented to the viewer in an earlier module (e.g., main
menu 70, car selection screen 80).
Rather, Green describes presenting to a customer a main menu screen
70 (Figs. 7, 7A) for building a multilevel customer query of the inventory.
Col. 8, ll. 16-20; Table 4. The customer can first select from several vehicle
categories 71-71b, 72-72b, 73-73b, 74 and 75 from main menu 70. Col. 8,
ll. 21-36; Table 4; Fig. 7. Next, the customer is presented with another
screen corresponding to the vehicle category selected by the viewer from the
main menu screen 70 (Figs. 7A, 7B) and an example is provided of a car
selection screen 80 (Fig. 8) corresponding to the selection of “All Cars 71”
from the main menu 70. Col. 8, ll. 56-62; Fig. 7A:701. The exemplary car
selection screen 80 provides additional selections 82-87 to further narrow
the query to a car model (e.g., mid-size, convertible, etc.). Col. 8, l. 66 to
col. 9, l. 15; Figs. 8-8B. Following the car model selection, the query is
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continued (Figs. 8A-8B:801-806) and the customer is presented (Fig. 9A)
with a transmission selection screen 90 (Fig. 9) with selections 92-99. Col.
9, ll. 15-23; Table 5. To further narrow the query, a vehicle model year
selection screen 115 (Fig. 10) providing options 130-136 is presented,
followed by price range selection screens 300, 400 (Figs. 11, 11A). Col. 9,
ll. 46-52, 66-67; col. 10, ll. 1-2; Tables 6-8; Fig. 9A. After completion of
the query (Figs. 4, 12: 46), a Selected Inventory Screen 120 (Figs. 12, 12A)
is generated (Fig. 4: 47) that presents basic information about the vehicle
(e.g., vehicle make, model, year, etc.). Col. 11, ll. 38-44; Table 9. The
customer can select a particular vehicle to see more detailed information in
the Selected Vehicle Screen (Fig. 13) which presents a detailed list of
features specific to the selected vehicle. Col. 11, l. 44 to col. 12, l. 13. From
the Selected Vehicle Screen, the customer can choose to return to the last
screen (i.e., Selected Inventory Screen 120), return to the main menu 70 or
go to a Final Decision Screen 140 (Fig. 14). Table 10. The Final Decision
Screen 140 enables the customer to return to the Selected Inventory Screen
120 or main menu 70. Col. 12, ll. 34-44; Table 11.
In other words, and contrary to the Examiner’s position, Green
describes: (1) presenting Selected Vehicle Screen Fig. 13 (i.e., the scenes
providing information for some attributes not previously presented in an
earlier module) in response to a customer’s vehicle selection (i.e., alternative
decision) from the Selected Inventory Screen 120 (Figs. 12, 12A); and (2)
presenting Selected Inventory Screen 120 (i.e., alternative scenes providing
information for attributes previously presented in an earlier module) in
response to a customer’s final selection of one alternative decision (i.e., a
selection from price range selection screens 300, 400) in a series of
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alternative decisions (i.e., selections from main menu 70, car selection
screen 80 and transmission selection screen 90).
For all these reasons, we do not sustain the rejection of claim 5 as
anticipated by Green.
ISSUE 2
Did the Examiner incorrectly find that Green describes recalling
whether a viewer made an alternative decision requesting additional
information regarding the same attribute in an earlier module and if a
decision requesting additional information about the same attribute was
made in a previous module, not prompting the viewer to make the same
decision in a later module?
ANALYSIS FOR ISSUE 2
Appellant disputes the Examiner’s finding that Green describes
sections (b), (c), (g) and (h) of claim 6. Br. 8-10. For convenience,
independent claim 6 is reproduced below (disputed limitations in italics):
A method for presenting an interactive digital video, work for
marketing products or services to potential purchasers, wherein
content of the interactive digital video work can be customized
based upon each viewer's decisions, the method comprising the
steps of:
(a) providing a plurality of potentially viewable scenes to deliver
to a viewer in a plurality of modules, each module
corresponding to a product or service, wherein the potentially
viewable scenes of each such module provide information
about attributes of the product or service;
(b) in at least one module, providing basic scenes which provide
information about an attribute that are presented to the viewer
when the module is viewed, and providing a set of alternative
scenes which are only presented to the viewer in response to
an interactive request by the viewer for additional information;
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(c) presenting to the viewer, at branching points that follow a
basic scene providing information about an attribute,
alternative decisions enabling the viewer to request additional
information about the attribute that determine the next scene
sequence to be presented to the viewer;
(d) enabling the viewer to select one of the alternative decisions;
(e) prompting the viewer to select one of the alternative decisions;
(f) presenting to the viewer in response to the viewer's selected
alternative decision the set of alternative scenes that
correspond to the selected alternative decision;
(g) for attributes which are common to more than one product or
service, recalling whether the viewer made an alternative
decision regarding the same attribute in an earlier viewed
module, and
(h) if the viewer has made an alternative decision requesting
additional information about the same attribute in a previously
viewed module, not prompting the viewer to make the same
decision in a later module.

In regard to sections (b) and (c), the Examiner directs attention to
Figures 7A, 7B, 8A, 8B, 9-11 and 12A of Green and specifically finds that
Green describes allowing a user to choose the type of vehicle such as cars,
trucks, vans, American Cars and American vans and then choosing models
based on that decision. Ans. 7. For sections (g) and (h), the Examiner
directs attention to column 2, lines 54-59, column 9, lines 15-32 and the
same Figures and specifically finds that Green describes that as the customer
adds to the query, the system will not ask the customer again which
transmission is preferred. Ans. 8, 20-21. The Examiner explains that the
user selecting a type of transmission for the car is equivalent to requesting
information related to the attribute for this particular car. Ans. 21.
Appellant argues that Green does not disclose a module that has basic
scenes providing information about an attribute of a product or service and a
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set of alternative scenes which are only presented in response to the viewer’s
request for additional information. Br. 8. Appellant also argues that Green
only describes presenting a Selected Inventory Screen (Fig. 12A) that lists
the vehicles matching the user’s search criteria, and provides a prompt to
“TOUCH THE DESCRIPTION OF A CAR TO SEE MORE
INFORMATION” that allows the customer to pull up a detailed Selected
Vehicle Screen (Fig. 13). Br. 9. Appellant further argues that Green does
not provide a description of what happens if a request is made for
information on attributes which are common to more than one vehicle, nor
recalling whether the customer requested the same additional information on
the same attribute in an earlier module, and if so, not prompting the
customer to make the same decision in a later module. Br. 8.
We agree with Appellant. The Examiner does not direct us to and we
cannot find where Green describes that for attributes which are common to
more than one vehicle (e.g., having a transmission or a specific type of
transmission), recalling whether the customer made a decision requesting
additional information regarding the same attribute (e.g., the customer
selecting a type of transmission) in an earlier viewed module and if the
customer has made a decision requesting additional information regarding
the same attribute (e.g., transmission type) in a previously viewed module
not prompting the viewer to make the same decision in a later module.
Instead, Green describes that a customer can select a type of transmission
92-99 (i.e., request for more information) from a transmission selection
screen 90 (i.e., module) (col. 9, ll. 15-23; Table 5; Fig. 9); not any of the
other screens 70, 80, 115, 300, 400 (i.e., modules).
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Even assuming a scenario in which a customer proceeds through the
modules (i.e., main menu screen 70, car selection screen 80, transmission
selection screen 90, model year selection screen 115 and price range
selection screens 300, 400) in a first query process and the customer
subsequently decides to repeat the proceedings through the modules in a
second query process by pressing the return to main menu button 110 from
any of the modules or screens (see Figs. 8-11, 12A-14; Tables 5-11), Green
does not describe recalling the selection regarding the same attribute in an
earlier module (e.g., the selection from transmission selection screen 90
during the first query process) and not prompting the customer to make the
same selection in a later module (i.e., during a second query process).
For all these reasons, we do not sustain the rejection of claim 6 as
anticipated by Green.
ISSUE 3
Did the Examiner incorrectly find that Haberman and Shiels describe
tracking a viewer’s cumulative decisions and imputing a viewer’s
preferences or interests based on the viewer’s decisions?
ANALYSIS FOR ISSUE 3
Appellant disputes the Examiner’s finding that Haberman and Shiels
describe steps (f), (g) and (h) of claim 1. Br. 11. For convenience,
independent claim 1 is reproduced below (disputed limitations in italics):
A method of presenting an interactive digital video work used
for marketing products or services to potential purchaser
viewers that can customize the content presented after
branching points to a particular viewer based upon the viewer's
preferences, the method comprising the steps of:
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(a) providing a plurality of potentially viewable scenes to
deliver information content about products or services to a
viewer;
(b) delivering some of the scenes to the viewer as the
branching points at which alternative decisions are
presented to the viewer that will determine the next scene
sequence to be presented to the viewer;
(c) for each alternative decision at each branching point,
having available to present to the viewer a scene sequence
corresponding to the alternative decision;
(d) enabling the view[er] to select one of the alternative
decisions;
(e) in response to the viewer’s selected one of the alternative
decisions, presenting the scene sequence that corresponds
to the selected decision;
(f) tracking the viewer’s cumulative selected decisions and
imputing that particular viewer’s preferences and interests
based on the viewer’s selected decisions;
(g) producing one or more sets of variation scenes that
introduce the information content that address the different
possible viewer preferences and interests, based on
previous decisions selected from among the alternative
decisions presented prior to the scene sequence, each set
of variation scenes being associated with a scene that is
viewable after the branching points; and
(h) when the viewer is brought to a scene sequence that
contains one of the sets of variation scenes, interspersing
into the scene sequence the variation scene corresponding
to the viewer’s imputed preferences and interests for such
products or services, based on the viewer’s selected one of
the alternative decisions from among the alternative
decisions presented prior to the scene sequence.

The Examiner finds that Haberman is silent with respect to users
making decisions at branching points and relies on Shiels for describing
steps (b) through (h). Ans. 10-12 (citing Shiels col. 2, ll. 9-12; col. 7, ll. 2-
18, 32-41; col. 9, l. 7 to col. 10, l. 3; col. 12, ll. 7-10; Figs. 3, 6, 7). The
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Examiner explains that Shiels describes tracking the viewer’s cumulative
selected decisions since the user can have saved settings. Ans. 23 (citing
col. 9, ll. 7-12). The Examiner further explains that Shiels describes
imputing that particular viewer’s preferences and interests based on the
viewer’s selected decisions because from the saved settings, the preferences
and interests can be credited to the user so that the narrative flow is less
susceptible to discontinuities and the user is allowed to capture scenes and
call up scenes and replace the current scene with a flashback. Ans. 23
(citing col. 2, ll. 9-13; col. 9, l. 7 to col. 10, l. 3; col. 12, ll. 7-10).
Appellant argues that although Shiels describes tracking cumulative
decisions about characters and allowing the viewer to save settings at the
end of an episode and apply them in a later episode, Shiels does not describe
imputing a viewer’s preferences or interests from the decisions. Br. 12.
We agree with Appellant’s arguments. Contrary to the Examiner’s
findings, Shiels does not describe tracking the viewer's cumulative selected
decisions and imputing that particular viewer’s preferences and interests
based on the viewer’s selected decisions. Instead, Shiels describes an
interactive entertainment system that provides an interactive branched video
or animated narrative involving characters and which allows the user to save
preferred system settings on a smart card memory 58. Col. 1, ll. 7-10; col. 4,
ll. 15-22; col. 5, ll. 58-67; col. 6, l. 66 to col. 7, l; col. 9, ll. 7-12; Fig. 5. The
user can also grab or capture information from the narrative using a
character memory 52 and an application memory 50 and later choose to
recall and reintroduce the captured information as a flashback into the
narrative. Col. 9, ll. 13-45, 55-67; col. 10, ll. 1-12; Figs. 5, 9, 10. The
Examiner does not meaningfully explain how the user’s saved preferred
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system settings in the smart card memory 58 are imputed or credited to the
user based on the user’s decisions to capture information from the narrative
and later reintroduce the captured information into the narrative which are
saved in the character memory 52 and application memory 50.
As applied by the Examiner, Haberman does not cure the deficiencies
of Shiels. The Examiner finds that Haberman describes “tracking the
viewer’s cumulative selected decisions based on the viewer’s choices from
viewer specific information [¶¶ 48-49, 60, 63] and imputing that particular
viewer’s preferences and interests based on the viewer's decisions or
determining probable personal preferences of categories of viewers [¶ 63,
Fig. 3:64.]” Ans. 22; see also Ans. 9-10. However, Haberman does not
describe imputing the viewer’s preferences or interests based on the viewer’s
decisions. Instead, Haberman describes personalizing a commercial for a
particular viewer using a set top box (STB) that makes decisions on which
personalized section of a commercial should be shown to a specific viewer
based on user profile information (e.g. demographics) available from a
database. ¶¶ 16, 41, 46, 48. Haberman also describes a personalization
engine that logs activity and viewing information for further customization
by recording which sections or paths have been chosen by the STB. ¶¶ 60,
63, 64, 97. Haberman also suggests the use of a preferences application to
allow user preference settings if there is a need for allowing users to
influence their user profile (¶¶ 60, 63, 64). However, Haberman does not
suggest that the user’s preference settings would be imputed or credited to
the user based on any of the user’s decisions. For all these reasons, we do
not sustain the rejection of claim 1 as obvious over Haberman and Shiels.
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ISSUE 4
Did the Examiner incorrectly find that Haberman and Shiels describe
providing neutral scenes and sets of alternative scenes in each module that
can be presented in a different order?
ANALYSIS FOR ISSUE 4
Appellant disputes the Examiner’s finding that Haberman and Shiels
describe steps (b), (d), (e) and (f) of claim 3. Br. 13. Claim 4, dependent
from claim 3, is not argued separately. For convenience, independent claim
3 is reproduced below (disputed limitations in italics):
A method for presenting an interactive digital video work for
marketing products or services to potential purchasers, wherein
content of the interactive digital video work can be customized
based upon each viewer’s decisions, the method comprising the
steps of:
(a) providing a plurality of potentially viewable scenes to
deliver to a viewer in a plurality of modules, each module
containing potentially viewable scenes about a product or
service;
(b) in at least one of the modules, presenting to the viewer a
set of alternative decisions, each alternative decision
determining an order in which a subsequent module will
be presented;
(c) enabling the viewer to select one of the alternative
decisions;
(d) in each module that can be presented in a different order,
providing neutral scenes in which the content is not
dependant [sic] upon the order in which the module is
viewed, and providing sets of alternative scenes in which
the content is dependant [sic] upon the order in which the
module is viewed;
(e) prompting the viewer to select one of the alternative
decisions that will determine the order of a subsequent
module;
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(f) presenting to the viewer neutral scenes interspersed with
alternative scenes that correspond to the viewer’s selected
one of the alternative decisions and are appropriate to the
relative order in which the subsequent module is
presented.

Regarding section (b), the Examiner finds that Shiels’ description of:
(1) displaying a menu of possible options and asking the user to make a
selection; and (2) the user navigating through the network of possible story
lines or paths to reach one of the four possible endings which effectively
determines the order in which the modules are viewed meets the limitations.
Ans. 14 (citing col. 7, ll. 2-46; Fig. 6). The Examiner finds that the
limitations of section (d) are met by Shiels’ description of common nodes H,
J and K which may appear in the narrative regardless of which path is
chosen at node A (Fig. 6) and alternative scenes W-Z, which are dependent
on the decisions made by the viewer at the previous nodes or modules. Ans.
15 (citing col. 7, ll. 2-46).
Appellant argues that Shiels does not describe modules that can be
presented in a different order nor providing neutral scenes and alternative
scenes in each module that can be presented in a different order. Br. 13-14.
We do not agree with Appellant’s argument that Shiels does not describe
modules that can be presented in a different order. Shiels describes that the
viewer can choose from alternative decisions at nodes A-G and that each
decision determines the order in which a subsequent node (i.e., module) will
be presented. Col. 7, ll. 2-14; Fig. 6. For example, a viewer can reach
ending X by 5 different paths; in one path node H is presented as the third of
five nodes (ABHKX), dependent on the decisions at nodes A and B; in
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another path node H can be presented as the fourth of six nodes (ADEHKX)
dependent on the decisions at nodes A, D and E. See Fig. 6.
However, we agree with Appellant’s argument that Shiels does not
describe providing neutral scenes and alternative scenes in each module that
can be presented in a different order. The Examiner does not direct us to,
and we cannot find, where Shiels describes providing neutral scenes and
alternative scenes in any of the nodes A-H, J or K (i.e., modules). Nor does
the Examiner direct us to, and we cannot find, where Shiels describes
providing neutral scenes in which the content is not dependent on the node
order, and providing sets of alternative scenes in which the content is
dependent on the node order in any of nodes A-H, J or K (i.e., modules). As
applied by the Examiner, Haberman does not remedy the deficiencies of
Shiels. Ans. 14.
For all these reasons, we do not sustain the rejection of claims 3 and 4
as obvious over Haberman and Shiels.
DECISION
We REVERSE the rejection of claims 5-6 under 35 U.S.C. § 102(e) as
anticipated by Green.
We REVERSE the rejection of claims 1, 3 and 4 under
35 U.S.C. § 103(a) as unpatentable over Haberman and Shiels.
REVERSED

msc