Ex Parte Os et al

Patent Trial and Appeal Board

Mar 29, 2017

12886510 (P.T.A.B. Mar. 29, 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.
12/886,510 09/20/2010 Marcel van Os 4860P9127US2 1702
45217 7590 03/29/2017
APPLE INC./BSTZ
BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP
1279 OAKMEAD PARKWAY
SUNNYVALE, CA 94085-4040
EXAMINER
LIDDLE, JAY TRENT
ART UNIT PAPER NUMBER
3716
MAIL DATE DELIVERY MODE
03/29/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARCEL VAN OS and MIKE LAMPELL
Appeal 2015-0053251
Application 12/886,5102
Technology Center 3700
Before MURRIEL E. CRAWFORD, BRADLEY B. BAYAT, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1—
23. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision considers Appellants’ Appeal Brief (“Appeal Br.,” filed
June 17, 2014) and Reply Brief (“Reply Br.,” filed Sept. 16, 2014), as well
as the Examiner’s Final Office Action (“Final Act.,” mailed Jan. 17, 2014)
and Answer (“Ans.,” mailed July 16, 2014).
2 Appellants identify Apple Inc. as the real party in interest. Appeal Br. 3.
Appeal 2015-005325
Application 12/886,510
CLAIMED SUBJECT MATTER
The claimed invention relates to “systems and methods that provide a
game center having player specific achievement data for gaming
applications.” Spec. 13. Claims 1,7, 13, 17, and 21 are the independent
claims on appeal. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A computer-implemented method comprising:
receiving, with a system, a selection of an achievement
option of a game; and
generating, with the system, data to present to a graphical
user interface on the system in response to the selection, the data
indicative of achievement data that includes a list of
achievements and completion status of achievements associated
with a user for the game, wherein each achievement in the list of
achievements includes progress information without an
achievement icon when the achievement has not been completed
and this progress information for each achievement is replaced
with an achievement icon when the achievement is completed by
the user, wherein the progress information indicates a percentage
of completion for each achievement when the achievement has
not been completed.
REJECTIONS
Claims 1, 2, 4—8, and 10-23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kilgore (US 2007/0173327 Al, pub. July 26, 2007).
Claims 3 and 9 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Kilgore and Machida (US 2007/0154077 Al, pub. July 5, 2007).
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Appeal 2015-005325
Application 12/886,510
ANALYSIS
Obviousness over Kilgore
Independent claims 1, 7, 13, 17, and 21 and dependent claims 2, 4, 6, 8, 10,
12. 14-16. 18-20. 22. and 23
Appellants do not persuade us of error in the Examiner’s rejection of
independent claim 1 because Appellants’ arguments do not address the
actual rejection.
Independent claim 1 recites “progress information without an
achievement icon when the achievement has not been completed.”
Appeal Br., Claims App. To teach the claimed “achievement icon,” the
Examiner relies on Kilgore’s star tier level indicator 1250a, which is only
present after a user completes all the tiers for an achievement. Ans. 2 (citing
Kilgore 1 63, Fig. 12A).
Instead of addressing the Examiner’s finding that Kilgore’s star tier
level indicator 1250a teaches the claimed “achievement icon,” Appellants
propose a different rejection that relies on achievement stamp 1220a, 1230a,
which is displayed with respective tier level indicator 1240a, 1250a before
the respective tier level indicator becomes a star indicating that the
achievement has been completed. Appeal Br. 13—14; Reply Br. 4 (citing
Kilgore 62—64, Figs. 12A, 12B). Appellants’ argument is misguided.
The relevant inquiry is not whether the Examiner should have relied on
achievement stamp 1220a, 1230a in favor of star tier level indicator 1250a,
but rather whether the Examiner’s interpretation of “achievement icon” to
encompass Kilgore’s star tier level indicator is reasonable and consistent
with Appellants’ Specification. Said differently, the fact that Kilgore’s
achievement stamp may also fall within the broadest reasonable
interpretation of “achievement icon” does not show error in the Examiner’s
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Application 12/886,510
finding that Kilgore’s star tier level indicator teaches the achievement icon.
Absent any argument or evidence addressing the Examiner’s interpretation
of “achievement icon,” we see no error in the Examiner’s determination that
when the claim term “achievement icon” is given its broadest reasonable
interpretation, it includes Kilgore’s star tier level indicator.
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 1. Appellants rely on the same arguments as independent
claim 1 in contesting the rejection of independent claims 7, 13, 17, and 21
and dependent claims 2, 4, 6, 8, 10, 12, 14—16, 18—20, 22, and 23.
Appeal Br. 14. For the same reasons as independent claim 1, we, therefore,
sustain the rejection of these claims.
Claims 5 and 11
In regard to claim 5, Appellants argue that Kilgore’s teachings of a
friends list and a side-by-side comparison of achievements for two different
players do not disclose the claimed subject matter because Kilgore fails to
teach a relationship or connection between these features. Appeal Br. 15;
Reply Br. 5. Additionally, Appellants point out that claim 5 depends from
independent claim 1 and argue that Kilgore provides no disclosure of how a
user switches from the user interface of Figure 10 showing a side-by-side
comparison of player achievements to the user interfaces shown in
Figures 12A or 12B or how these user interfaces relate to a friends list.
Appeal Br. 16.
We are not persuaded of error because the Examiner is not relying on
the express disclosures of Kilgore to teach that the players shown in the side-
by-side comparison are friends. As the Examiner explains, “the users are
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Application 12/886,510
able to see each other’s profiles and thus it would be clear that a user could
select a friend and then do a comparison according to a game title of the
friend based upon the full disclosure that is given by Kilgore).” Final Act. 4;
see also In re Jacoby, 309 F.2d 513, 516 (CCPA 1962) (explaining that
persons skilled in the art “must be presumed to know something” about the
art “apart from what the references disclose.”).
Appellants also argue that Kilgore’s side-by-side comparison of
different players in Figure 10 does not teach the claimed comparison
because the achievements shown in Figure 10 are not completed.
Appeal Br. 15—16; Reply Br. 5. Even if completed achievements are not
expressly disclosed in Figure 10, Appellants’ argument does not apprise us
of error in the Examiner’s rejection. Claim 5 further defines the
achievement data set forth in independent claim 1 to include a comparison of
a user’s score based on achievements completed by the user to a friend’s
score based on completed achievements. The Examiner relies on
Figures 12A and 12B for teaching the achievement data recited in
independent claim 1. Final Act. 3^4. Figures 12A and 12B show a
comparison of scores for the respective achievements of two gamers in a
side-by-side fashion, and the list of achievements includes completed
achievements, as shown, for example by star tier level indicator 1250a.
Kilgore H 62-64, Figs. 12A, 12B.
In view of the foregoing, we sustain the Examiner’s rejection of
claim 5. Appellants rely on the same arguments as claim 5 for claim 11.
Appeal Br. 16. For the same reasons as claim 5, we, therefore, sustain the
rejection of claim 11.
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Application 12/886,510
Obviousness over Kilgore and Machida
In regard to claim 3, Appellants argue that neither Kilgore nor
Machida discloses “the percentage of completion with circular progress
bars,” as recited in the claim. Appeal Br. 16—17; Reply Br. 7. In particular,
Appellants argue that Kilgore’s tier level indicator 1240b, which is shown in
Figure 12B as a rectangular progress bar, fails to teach this limitation.
Appeal Br. 17. Appellants further contend that Machida does not teach this
limitation because Figure 15 of Machida shows a bar graph extending from
left to right in the direction of progress to display a measurement of
cardiomagnetic signals of a patient. Id.', Reply Br. 7.
We are not persuaded of error in the Examiner’s rejection because
Appellants’ arguments are not responsive to the Examiner’s rejection. Not
only is the Examiner relying on the combined teachings of Kilgore and
Machida for this limitation, but Appellants cannot show error by alleging
deficiencies for features on which the Examiner is not relying. Here, the
Examiner finds Kilgore teaches the percentage of completion with progress
bars; the Examiner is not relying on Kilgore for teaching circular progress
bars as alleged by Appellants. See Final Act. 9. Instead, the Examiner finds
in paragraph 102 of Machida that progress bars “may be indicated as a
circle” or circular; but the Examiner is not relying on the information
displayed on the bar graph shown in Figure 15 of Machida, as argued by
Appellants. See Final Act. 9; Ans. 3^4.
In addition, Appellants present several challenges to the Examiner’s
reason for combining the teachings Kilgore and Machida, i.e., to provide an
aesthetically pleasing display. Appeal Br. 17—18; Reply Br. 7. Appellants’
arguments do not apprise us of error in the Examiner’s rationale for the
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Application 12/886,510
combination. Put simply, Kilgore teaches progress bars (Kilgore 64),
shown in Figure 12B as rectangular, and Machida teaches that progress bars
could be different shapes, including circles (Machida 1102). In light of
Machida’s teaching, a person of ordinary skill in the art would understand
that a circular progress bar may serve as a substitute for a rectangular
progress bar. KSRInt’l Co, v. Teleflex Inc., 550 U.S. 398, 416 (2007)
(“[When a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.”)
(citation omitted). Nonetheless, we address Appellants’ specific arguments
for emphasis only.
Appellants assert that Kilgore does not suggest a combination with
Machida and that Machida does not suggest a combination with Kilgore.
Appeal Br. 17; Reply Br. 7. To the extent Appellants are looking for an
explicit motivation, suggestion, or teaching in the art, this rigid test has been
foreclosed by the Supreme Court. KSR, 550 U.S. at 418—19.
Appellants also contend that one of ordinary skill attempting to
produce a more aesthetically pleasing user interface would not look to
Machida’s bar graph. Appeal Br. 18; Reply Br. 7. This contention is not
persuasive because it is attorney argument and not supported by evidence.
See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s
argument in a brief cannot take the place of evidence.”) (citation omitted).
Appellants further assert that it would be impermissible hindsight to
combine Kilgore with Machida. Appeal Br. 18; Reply Br. 7. We disagree
with Appellants. The Examiner has articulated a rationale for the
combination relying on the teachings of Kilgore and Machida as would be
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understood by one of ordinary skill in the art, apart from the teachings of
Appellants’ disclosure.
In view of the foregoing, we sustain the Examiner’s rejection of
claim 3. We sustain the rejection of claim 9 for the same reasons because
Appellants rely on arguments for claim 3. Appeal Br. 18.
DECISION
The Examiner’s decision to reject claims 1—23 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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