Ex Parte Merrifield

Patent Trial and Appeal Board

Mar 27, 2018

12927642 (P.T.A.B. Mar. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/927,642 11/19/2010
63649 7590 03/29/2018
DISNEY ENTERPRISES, INC.
C/O FARJAMI & FARJAMI LLP
26522 LA ALAMEDA A VENUE, SUITE 360
MISSION VIEJO, CA 92691
FIRST NAMED INVENTOR
Lane Merrifield
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.
0260280 4680
EXAMINER
SMITH, BENJAMIN J
ART UNIT PAPER NUMBER
2144
NOTIFICATION DATE DELIVERY MODE
03/29/2018 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@farj ami. com
farjamidocketing@yahoo.com
ffarj ami @farj ami. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LANE MERRIFIELD 1
Appeal2017-009256
Application 12/92 7, 64 2
Technology Center 2100
Before ERIC S. FRAHM, JAMES W. DEJMEK, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 2, 6-12, and 16-20, which are all the claims pending
in this application. Claims 3-5 and 13-15 were canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Disney Enterprises, Inc.
App. Br. 2.
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Application 12/927 ,642
STATEMENT OF THE CASE
Introduction
Appellant's application relates to generating a plot of a digital print.
Abstract. In particular, the plot is generated by polling users for input
regarding micro events and selecting plot scenarios based on the user input.
Id. Claim 1 illustrates the appealed subject matter and reads as follows:
1. A method for generating a plot of a digital book, said
method comprising:
presenting a micro event of the digital book to a plurality
of users, including a first user and a second user, the digital
book having a plurality of micro events, each micro event
having a plurality of outcomes, wherein each micro event
corresponds to an interactive event of said plot of the digital
book;
polling for a first input from the first user for said micro
event while presenting said micro event;
polling for a second input from the second user for said
micro event while presenting said micro event, wherein a
second location corresponding to the second user is different
than a first location corresponding to the first user;
determining an outcome of said micro event based on the
first input and the second input;
selecting a scenario from a scenario map based on the
outcome of said micro event;
generating a book storyline for said digital book based on
said scenario selected from said scenario map, wherein said
book storyline including the first location and the second
location; and
presenting said generated book storyline for said digital
book on a display for each of the plurality of users.
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The Examiner's Rejections2
Claims 1, 2, 6, 10-12, 16, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Massey (US 2002/0053089 Al; May 2, 2002),
Reich (US 2007/0162328 Al; July 12, 2007), and Rosenberg (US
2007/0190494 Al; August 16, 2007). Final Act. 4-7. 3
Claims 1, 2, 10-12, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Massey, Davis et al. (US 2010/0205628 Al; Aug. 12,
2010), and Evans et al. (US 2010/0146398 Al; June 10, 2010). Final Act.
8-11.
Claims 7-9 and 17-19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Massey, Reich, Rosenberg, and Muller et al. (US
2009/0132441 Al; May 21, 2009). Final Act. 11-13.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
contentions that the Examiner has erred. We disagree with Appellant's
contentions. Except as noted below, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the Final Action from which this
2 In the Final Office Action, claims 1 and 11 are rejected under 35 U.S.C.
§ l 12(a) or pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement. See Final Act. 3. However, the
Examiner withdrew this rejection in the Answer. See Ans. 3.
3 The Examiner's rejection in the Final Action does not include claims 6 and
16 in the rejection heading. See Final Act. 4. However, the rejection
includes a substantive explanation of the teachings of Rosenberg for claims
6 and 16. See id. at 10-11. Appellant has not argued any prejudice has
occurred as a result of this discrepancy. Accordingly, we will treat the
failure to include claims 6 and 16 in the rejection heading as a harmless
typographical error and consider these claims rejected according to the
stated rationale.
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Application 12/927 ,642
appeal is taken; and (2) the reasons set forth by the Examiner in the
Examiner's Answer in response to Appellant's Appeal Brief. We concur
with the Examiner's conclusions. We highlight the following additional
points.
Massey, Reich, and Rosenberg
Appellant argues the Examiner erred in rejecting claim 1 as
unpatentable over Massey, Reich, and Rosenberg. App. Br. 9-13; Reply Br.
2-3. In particular, Appellant argues Massey is directed to structuring scene
sequences for interactive entertainment such that decision alternatives may
be viewed in different orders based on a user's decision. App. Br. 10.
Appellant argues that when a decision is made in Massey, Massey does not
perform "polling for a second input from the second user for said micro
event while presenting said micro event;" "determining an outcome of said
micro event based on the first input and the second input;" or "generating a
book storyline for said digital book based on said scenario selected from said
scenario map, wherein said book storyline including the first location and
the second location," as recited in claim 1. Id.
Appellant further argues Reich is directed to delivering local
advertisements with weather predictions. Id. at 11. Appellant argues
Reich's targeted advertising is an advertising message, not a book storyline.
Id. at 11. Appellant also argues Rosenberg is directed to portable video
gaming and the video game in Rosenberg is not a book storyline. Id. at 12.
Appellant has not persuaded us of Examiner error. The Examiner
finds, and we agree, Massey teaches presenting a story to multiple users in
different locations that work together to control the storyline. Ans. 6-7
(citing Massey i-fi-1 68, 69). The Examiner finds Massey prompts users to
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make a decision related to the story and altering the story based on that
decision. Ans. 6-7 (citing Massey,-r,-r 31-33, 37, 39, 41--43, 47, 52, 53, 58,
59, 64, 71). We agree with the Examiner that these prompts, which are
presented to multiple users in Massey, correspond to the "polling for a first
input" and "polling for a second input" steps in claim 1.
Appellant responds in the Reply Brief that Massey does not teach
presenting the same micro event to multiple users because Massey teaches
that each user controls a different character and the choices or options
presented to the users are specific to those characters. Reply Br. 2 (citing
Massey ,-r,-r 41--43, 68). According to Appellant, claim 1 requires presenting
the same "micro event" to the users and Massey's micro events must be
user-specific, which means that each is different. Id.
Appellant has not persuaded us of Examiner error. First, Appellant
did not raise this issue in its Appeal Brief. See App. Br. 9-11. Instead,
Appellant only offered conclusory argument that when a decision is made in
Massey, Massey does not perform "polling for a second input ... " or
"determining an outcome ... "as recited in claim 1. Accordingly, this
argument has been waived as it was raised for the first time in the Reply
Brief without a showing of good cause. See 37 C.F.R. § 41.41(b)(2) (2012);
see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative) ("[T]he reply brief [is not] an opportunity to make arguments
that could have been made in the principal brief on appeal to rebut the
Examiner's rejections, but were not.").
Second, even if we consider Appellant's argument, we are not
persuaded of Examiner error. Claim 1 recites "presenting a micro event of
the digital book to a plurality of users." Claim 1 further recites "each micro
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event having a plurality of outcomes, wherein each micro event corresponds
to an interactive event of said plot of the digital book." Regarding user
input, claim 1 recites "polling for a first input from the first user for said
micro event while presenting said micro event" and "polling for a second
input from the second user for said micro event while presenting said micro
event."
As a matter of claim construction, we apply the broadest reasonable
interpretation of claim terms, consistent with the specification, as would be
understood by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). Claim 1 does
not limit a "micro event" to an event specific to a single character. Instead,
claim 1 recites that "each micro event corresponds to an interactive event of
said plot of the digital book." The broadest reasonable interpretation of the
term consistent with the Specification includes an event involving two or
more characters. In such an event, each character may influence the
outcome of the event and separate users may be polled for those characters.
Accordingly, Massey's teaching of an interactive story where different users
may control different characters (see Massey i-fi-168-69) teaches "presenting
a micro event of the digital book to a plurality of users" and "polling for a
first input from the first user for said micro event" and "polling for a second
input from the second user for said micro event." Thus, we are not
persuaded of Examiner error.
Appellant's arguments regarding Reich and Rosenberg are also
unpersuasive. Appellant argues Reich is not directed to a book storyline,
instead relating to advertisements. App. Br. 11. Appellant argues
Rosenberg is directed to portable video games, not a book storyline. Id. at
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12. Appellant's argument focuses on the teachings of Reich and Rosenberg,
while failing to consider the teachings of Massey. One cannot show
nonobviousness by attacking references individually when the rejection is
based on a combination of references. In re Merck & Co. Inc., 800 F .2d
1091, 1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d 413, 425 (CCPA
1981 ). The Examiner explained that the combination of Massey, Reich, and
Rosenberg, not Reich or Rosenberg alone, teaches or suggests "generating a
book storyline" as recited in claim 1. See Ans. 11-13. To the extent
Appellant's argument relates to an ordinarily skilled artisan's motivation to
combine the references, the Examiner has articulated sufficient rationale for
combining the references (see Final Act. 6-7) and Appellant has not
persuasively identified any error in that rationale (see App. Br. 11-12). Nor
has Appellant persuasively argued Reich or Rosenberg are non-analogous art
to Massey. See App. Br. 11-12. Accordingly, we are not persuaded of
Examiner error.
For these reasons, we sustain the rejection of independent claim 1 as
unpatentable over Massey, Reich, and Rosenberg. We also sustain the
obviousness rejections of independent claim 11 and dependent claims 2, 6,
10, 12, 16, and 20, for which Appellant does not offer separate arguments.
See App. Br. 13. We also sustain the rejection of claims 7-9 and 17-19 as
unpatentable over Massey, Reich, Rosenberg, and Muller, for which
Appellant offers the same arguments. See App. Br. 17.
Massey, Davis, and Evans
Appellant argues the Examiner erred in rejecting claim 1 as
unpatentable over Massey, Davis, and Evans. App. Br. 13-17; Reply Br. 3.
In particular, Appellant argues Massey does not perform "polling for a
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second input from the second user for said micro event while presenting said
micro event;" "determining an outcome of said micro event based on the
first input and the second input;" or "generating a book storyline for said
digital book based on said scenario selected from said scenario map, wherein
said book storyline including the first location and the second location," as
recited in claim 1 for the same reasons discussed above with respect to the
rejection over Massey, Reich, and Rosenberg. App. Br. 14.
Appellant further argues Davis is directed to cell phones and other
portable devices in connection with media content, and Davis merely
describes how a phone can be used to select content on a screen. Id. at 14-
15. According to Appellant, while Davis teaches choosing content on a
main screen, Davis does not teach or suggest "polling for a second input ... "
as recited in claim 1. Id. at 15.
Regarding Evans, Appellant argues Evans is directed to narration of
customized stories, where the stories are customized for users based on their
personal characteristics and locations. Id. at 16. Appellant argues the oral
narration and its associated script is not a "book storyline for said digital
book" and Evans does not teach or suggest "polling for a second input ... "
as recited in claim 1.
Appellant has not persuaded us of Examiner error. As explained
above with respect to the rejection over Massey, Reich, and Rosenberg, we
agree with the Examiner that Massey teaches "presenting a micro event of
the digital book to a plurality of users" and "polling for a first input from the
first user for said micro event" and "polling for a second input from the
second user for said micro event." Appellant's arguments regarding the
general nature of Davis and Evans (see App. Br. 14-16) are not persuasive
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because they do not directly address any limitation for which the Examiner
cites these references (see Final Act. 8-10).
Regarding the limitations for which the Examiner relies on Davis, we
agree that Davis teaches creating immersive content by encouraging users to
change the plot of a television program using their smartphone. Ans. 13-14
(citing Davis i-fi-1 24, 172-199). Davis further teaches having different users
influence different characters. Ans. 14 (citing Davis i-fi-f 178-1 79).
Appellant's argument that Davis teaches users influencing the plot with their
smartphone, but does not teach polling users for input (see Reply Br. 3) is
unpersuasive because an ordinarily skilled artisan would understand that the
user must be given the opportunity to influence the plot using their
smartphone, for example with an application prompting the user for input.
We agree with the Examiner that this at least suggests "polling for a second
input from the second user for said micro event," as recited in claim 1.
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Massey, Davis, and Evans teaches or suggests the disputed
limitations.
We, therefore, sustain the rejection of independent claim 1 as
unpatentable over Massey, Davis, and Evans. We also sustain the
obviousness rejections of independent claim 11 and dependent claims 2, 10,
12, and 20, for which Appellant does not offer separate arguments. See App.
Br. 17.
DECISION
We affirm the decision of the Examiner rejecting claims 1, 2, 6-12,
and 16-20.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See
37 C.F.R. § 41.50(±)(2016).
AFFIRMED
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