Ex Parte Nims et al

Patent Trial and Appeal Board

Sep 29, 2016

12476724 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/476,724 0610212009
11333 7590 10/03/2016
Banner & Witcoff, Ltd.
Attorneys for client 215127 & 315127
10 South Wacker Drive
Suite 3000
Chicago, IL 60606
FIRST NAMED INVENTOR
Jason Nims
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.
215127.01422/09-0483 5986
EXAMINER
DURKIN, JAMES T
ART UNIT PAPER NUMBER
2173
NOTIFICATION DATE DELIVERY MODE
10/03/2016 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
following e-mail address( es):
PT0-11333@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON NIMS, ROBER TO T AGLIABUE, and
DANIELLE M. QUATROCHI
Appeal2015-005378
Application 12/476,724
Technology Center 2100
Before ERIC S. FRAHM, NATHAN A. ENGELS, and
CARLL. SILVERMAN, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-8, 10-19, 21-28, and 30-32. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
Appeal2015-005378
Application 12/476,724
ILLUSTRATIVE CLAIM
Claims 1, 12, 23, and 32 are independent claims. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method for creating an avatar representing a level of
athletic activity of a user, the method comprising:
receiving, at a computing device, user specifications for
creating the avatar representing an amount of athletic activity
performed by the user;
determining, by the computing device, a set of one or more
selectable avatar customization options based on the amount of
athletic activity performed by the user;
providing the set of one or more avatar customization
options to the user;
determining, by the computing device, a frequency of a
type of athletic activity previously performed by the user; and
based on the determined frequency of the type of athletic
activity previously performed by the user:
selecting a type of activity for the avatar to perform,
wherein different frequencies of the type of athletic
activity previously performed by the user correspond to
different respective types of activity for the avatar to
perform and wherein the selected type of activity is
different from the type of athletic activity previously
performed by the user; and
animating the avatar to perform the selected type of
activity.
THE REJECTIONS
Claims 1-8, 11-19, 22-28, and 32 stand finally rejected under 35
U.S.C. § 103(a) as being unpatentable in view of the combination of
Goldman et al. (US 2005/0143174 Al, pub. June 30, 2005), Gilley et al. (US
2008/0077620 Al, pub. Mar. 27, 2008), Jolliff et al. (US 2009/0300525 Al,
pub. Dec. 3, 2009), and Nihtila (US 2005/0101845 Al, pub. May 12, 2005).
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Application 12/476,724
Claims 10, 21, and 30 stand finally rejected under 35 U.S.C. § 103(a)
as being unpatentable in view of the combination of Goldman, Gilley,
Jolliff, Nihtila, and Blattner et al. (US 2004/0179038 Al, pub. Sept. 16,
2004).
Claim 31 stands finally rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of the combination of Goldman, Gilley, Jolliff, Nihtila,
and Dugan (US 2007/0197274 Al, pub. Aug. 23, 2007).
ANALYSIS
We have reviewed the Examiner's rejections in light of each of
Appellants' arguments and the evidence of record. We disagree with
Appellants that the Examiner erred. We highlight certain of Appellants'
arguments and certain of the Examiner's findings and conclusions in the
following analysis primarily for emphasis.
Appellants' Specification states that an avatar is a graphical two-
dimensional or three-dimensional representation of a user. Spec. ,-r 3.
Appellants state "claim 1 is directed to selecting an activity for an avatar to
perform based on the.frequency of an activity previously performed by the
user, the selected activity being different from the type of activity previously
performed by the user." App Br. 11. As an example, Appellants state:
if a user is walking frequently, the avatar may be animated to
perform running or jumping activity (e.g., to indicate the
frequency of the workout). Alternatively, ifthe user occasionally
goes for a run, the avatar may be animated as playing a video
game (e.g., to indicate the infrequent exercise of the user).
App. Br. 11 (emphasis added).
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Application 12/476,724
In concluding that independent claims 1, 12, 23, and 32 would have
been obvious at the time of Appellants' invention, the Examiner cites
Goldman's teachings regarding a role-playing game with customizable
avatars (Final Act. 6-7, 13-14 (citing Goldman Figs. 2, 4---6, i-fi-126, 101,
118, 120-122, 163, 166-169, 244, 245)); Gilley's teachings of an exercise-
tracking system with a user interface that depicts a user's exercise history
(Final Act. 7-8, 14--16 (citing Gilley Figs. 21, 23A, 23B, i-fi-f 105, 108, 110,
127, 152, 169, 170)); Jolliffs teachings of an avatar that changes to
represent the amount of athletic activity performed by a user (Final Act. 9,
16-17 (citing Jolliff Figs. 1, 3, i-fi-163, 64, 67, 149)); and Nihtila's teachings
of changing the appearance of an avatar based on a physiological data
collected from a user (Final Act. 10, 17-18 (citing Nihtila Fig. 3, i-fi-132-36,
39, 41, 42)).
Appellants argue the Examiner erred in the rejection of claim 1
because none of the cited references teaches or suggests at least "selecting a
type of activity for an avatar to perform that is (a) 'different from the type of
athletic activity previously performed by the user', or (b) 'based on the
determined frequency of the type of athletic activity previously performed
by the user."' App. Br. 10.
We disagree with Appellants and agree with the Examiner's findings
and conclusions. The prior art evidences, and Appellants acknowledge, that
animated avatars were known at the time of Appellants' invention. See
Spec. i1 3 ("Generally speaking, an avatar may be a graphical two-
dimensional icon or a 3-dimensional model that may represent a user. ... An
avatar may further be animated."). Appellants' Specification further
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Application 12/476,724
describes Appellants' invention as an avatar that can be animated to provide
"visualization" of data:
Simply stated, an embodiment is an avatar or avatar environment
to visualize data within a social network system or service ....
The avatar may further evolve or alter its appearance,
animation, or other visual or audio characteristics in response
to the data or other input. In particular, the avatar of an
embodiment may respond to and provide visualization of athletic
or sports performance data.
Spec. i-f 20 (emphasis added).
We disagree with Appellants' arguments that the cited references
describe animating an avatar based on different data or animating an avatar
with different types of animations. See App. Br. 10-13; Reply Br. 1-5. The
Examiner finds, and we agree, that the combined teachings of the prior art
evidence that the claimed invention would have been a simple substitution of
known elements yielding predictable results. See Final Act. 10-11.
Specifically, the Examiner explains that animating an avatar based on the
frequency of an activity being performed would have been a simple
substitution of one trigger event for another (id.), and the use of one avatar
animation instead of another visual depiction of data also would have been a
simple substitution of known elements (see Final Act. 5). Accord Ans. 4--5.
In addition, we note an invention cannot distinguish the prior art based
on the informational content of a claim element absent a showing that the
information has a new and unobvious functional relationship to the substrate.
In re DiStefano, 808 F.3d. 845, 850 (Fed. Cir. 2015); Ex parte Curry, 84
USPQ2d 1272, 1274 (BPAI 2005) (informative), affd, No. 06-1003 (Fed.
Cir. June 12, 2006) (Rule 36). Here, the type of activity an avatar depicts is
informational content as it is intended to communicate or "visualize" certain
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Application 12/476,724
data. See Jn re DiStefano, 808 F.3d. at 850 ("matter claimed for what it
communicates" is subject to the "printed matter" doctrine). Further, the type
of activity an avatar depicts has no functional relationship to the avatar; the
activity depicted by the avatar is a "selection" or programmed response to an
input or trigger. See Spec. 35 ("The avatar may represent the user in myriad
ways depending on the configuration or purpose of the social networking
system or service .... [T]he avatar may represent the athletic performance
or abilities of the user, or a comparison of the athletic performance or
abilities to other user(s) or benchmark(s)."). As recognized by the
Examiner, an avatar animated to depict or visualize one type of activity is
not patentably different than an avatar animated to depict other types of
activity or data. See Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005)
(informative) (holding a claim element directed to a broadcast of a particular
type of event (a "sporting event") could not distinguish prior art that teaches
equivalent broadcasts of other types of events), ajf'd, 191 F. App'x 959
(Fed. Cir. 2006) (Rule 36). To hold otherwise would allow indefinite
patenting of methods for creating avatars by simple recitations of different
types of animations or visualizations. See King Pharms., Inc. v. Eon Labs,
Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) ("The rationale behind this line of
cases is preventing the indefinite patenting of known products by the simple
inclusion of novel, yet functionally unrelated limitations."); cf Spec. i-f 20
("the avatar of an embodiment may respond to and provide visualization of
athletic or sports performance data"); App. Br. 11 ("there is no teaching or
suggestion in [the cited art] of the selected type of activity (e.g., for the
avatar to perform) being different from the type of athletic activity
previously performed by the user, as recited in claim 1 ").
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Application 12/476,724
Having considered the Examiner's rejection in light of each of
Appellants' arguments and the evidence of record, we disagree with
Appellants and agree with the Examiner that claim 1 would have been
obvious at the time of Appellants' invention. We adopt as our own the
Examiner's findings, conclusions, and reasons and sustain the Examiner's
rejection of claim 1, as well as claims 2-8, 10-19, 21-28, and 30-32 for
which Appellants rely on the same arguments as those advanced for claim 1.
DECISION
We affirm the Examiner's rejection of claims 1-8, 10-19, 21-28, and
30-32.
No time period for taking any subsequent action in connection with
this appeal may be extended. 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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