Ex Parte Shuster

Board of Patent Appeals and Interferences

Feb 19, 2009

09837852 (B.P.A.I. Feb. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRIAN MARK SHUSTER
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Appeal 2008-4520
Application 09/837,852
Technology Center 3600
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Decided:1 February 20, 2009
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-4520
Application 09/837,852

STATEMENT OF THE CASE
Brian Marl Shuster (Appellant) seeks our review under 35 U.S.C. §
134 of the final rejection of claims 1-3, 5-12, and 14-17. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART.2

THE INVENTION
The claimed invention relates to the electronic commerce of virtual
property.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for managing virtual properties that
exist solely in a virtual form within a computer
network and that have no physical counterparts,
comprising:
providing virtual properties configured for use in a
computer game operable in a memory of a game
server, said virtual properties existing solely in
virtual form within a computer network;
assigning ownership of the virtual properties to a
plurality of property owners participating in the
computer game, said ownership configured
through said computer game such that said
property owners are permitted to use said virtual
properties in said computer game but are not

2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Nov. 20, 2007) and Reply Brief (“Reply Br.,” filed Apr. 21,
2008), and the Examiner’s Answer (“Answer,” mailed Feb. 21, 2008).
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permitted to possess a digital copy of any of said
virtual properties;
maintaining an inventory of said virtual properties
in a centralized database accessible by said
property owners via a network connection;
allowing said property owners to transfer
ownership of their respective virtual properties via
said network connection; and
maintaining updated records regarding ownership
of said virtual properties in said centralized
database.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Johnson US 6,591,250 B1 Jul. 8, 2003

The following rejection is before us for review:
1. Claims 1-3, 5-12, and 14-17 are rejected under 35 U.S.C. §102(e) as
being anticipated by Johnson.

ISSUES OF LAW
The issue before us is whether the Appellant has shown that the
Examiner erred in rejecting claims 1-3, 5-12, and 14-17 under 35 U.S.C.
§102(e) as being anticipated by Johnson. Specifically, with respect to claims
1 and 9, the issue is whether Johnson expressly or inherently describes
“assigning ownership of the virtual properties to a plurality of property
owners participating in the computer game, said ownership configured
through said computer game such that said property owners are permitted to
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use said virtual properties in said computer game but are not permitted to
possess a digital copy of any of said virtual properties” (claim 1). With
respect to claims 7 and 16, the issue is whether Johnson expressly or
inherently describes “allowing said property owners to transfer ownership
comprises allowing at least one of said property owners to win one of said
virtual properties from another property owner in the course of a
game”(claim 7).

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. Johnson relates to a system and method for managing virtual
property.
2. At col. 1, ll. 46-48, in describing prior systems for managing
virtual property, Johnson discloses:
There are conventional systems which allow
a user to perform secure electronic transactions
between distributed computer systems.
3. In the next paragraph, at col. 1, ll. 59-67, Johnson discloses:
Such a system can be prohibitively
expensive when the system supports a large
number of digitally-signed digital objects because
each of the digital objects are stored on the system.
In particular, the objects are stored in their entirety
at the centralized server such that the items cannot
be forged because they are not transmitted to
clients over the network. Thus, the server would
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require a large storage system and would require a
high-performance computer system to track all of
the objects.
4. At col. 7, l. 9, Johnson discloses the use of game servers:
The system may also include providers 103
that define virtual property types and the context in
which they have value. Providers may be for
example, game servers ... .
5. At col. 9, ll. 18-19, Johnson discloses rules as part of a virtual
property item indicating privileges extended to owners:
BinaryData 515 may include images, programs,
software objects, multimedia data, or the like.
BinaryData 515 may also contain rules indicating
the privileges extended to the owner 102.

PRINCIPLES OF LAW
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
ANALYSIS
The Appellant argued claims 1 and 9, and 7 and 16, as separate
groups. We select claims 1 and 7, respectively, as the representative claims
for these two groups. Claims 2, 3, 5, 6, 8-12, 14, 15, and 17, all of which
depend on claim 1, stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii)
(2007).
Claims 1 and 9
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The Appellant argues that “[f]irst, no showing has been made that
Johnson discloses a system in which possession of digital properties is not
permitted. Furthermore, this feature cannot be inherent in Johnson, which
expressly teaches that digital copies or properties used in a game are
maintained on owner computer systems.” App. Br. 7 (emphasis original).
See also Reply Br. 5-6.
We do not find this argument persuasive as to error in the rejection.
The Examiner did make a showing that Johnson discloses “assigning
ownership of the virtual properties to a plurality of property owners
participating in the computer game, said ownership configured through said
computer game such that said property owners are permitted to use said
virtual properties in said computer game but are not permitted to possess a
digital copy of any of said virtual properties” (claim 1). See Answer 4.
Regarding the Appellant’s contention that the claim limitation of
“assigning ownership of the virtual properties to a plurality of property
owners participating in the computer game, said ownership configured
through said computer game such that said property owners are permitted to
use said virtual properties in said computer game but are not permitted to
possess a digital copy of any of said virtual properties” (claim 1) is not
capable of being inherent to Johnson because it expressly teaches that digital
copies or properties used in a game are maintained on owner computer
systems, we first observe the Examiner appears to have relied on disclosure
that the virtual properties are stored on a central computer “and not
transmitted to the client over the network” (Answer 5). Thus, the
Appellant’s premise underlying the contention that the Examiner relied on
teachings in Johnson with respect to maintaining digital copies on owner
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computer systems is inaccurate. Moreover, it does not follow that digital
copies or virtual properties used in a game that are maintained on owner
computer systems necessarily permit property owners to possess a digital
copy or virtual property. Simply because a digital copy may be downloaded
to a user’s computer does not mean the user is permitted to possess the
downloaded digital copy. This is reflected in Johnson, which discloses that
rules may be attached to a virtual property item being transferred from
provider to property owner. These rules may “indicat[e] the privileges
extended to the owner.” FF 5. One of ordinary skill in the art reading this
disclosure would understand such privileges as including, as is common,
limits to the user’s possession of the software.
The Appellant also argues that “Johnson discloses no embodiments or
prior art operative to store digital property centrally, in which the properties
are “virtual properties configured for use in a computer game,” as claims 1
and 9 require.” App. Br. 8. See also Reply Br. 6. The Examiner took the
position that Johnson describes an embodiment whereby the digital copies
may be stored centrally and that nothing in Johnson teaches away from using
that embodiment. Answer 4-8. The Appellant responded by arguing that the
embodiment relied upon by the Examiner was directed to financial
transactions and not games and that Johnson further fails to support the
Examiner’s view that Johnson seeks to improve the system of financial
transactions by distributing storage requirements. App. Br. 9 and Reply Br.
6.
We have carefully read Johnson. A prima facie case of anticipation is
established when there is no difference between the claimed invention and
the reference disclosure, as viewed by a person of ordinary skill in the field
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of the invention. Scripps Clinic & Research Found. v. Genentech Inc., 927
F.2d 1565, 1576 (Fed. Cir. 1991). We find that, on balance, the Examiner’s
position comports with the view one of ordinary skill in the art would have
of Johnson. As the Examiner has indicated (Answer 5-6), Johnson describes
an embodiment whereby the digital copies may be stored centrally. Johnson
does in fact describe storing digital objects on a centralized server, although
Johnson does go on to explain that storing digital objects on a centralized
server “would require a large storage system and would require a high-
performance computer system to track all of the objects.” FF 3. Albeit
Johnson explains that there are disadvantages, nevertheless one of ordinary
skill in the art reading Johnson would view it as teaching the use of a
centralized server. As the Examiner correctly explained (Answer 6-8),
notwithstanding that Johnson discloses detriments to the use of a centralized
server, it teaches it all the same.
As to the Appellant’s contention that the disclosure describing a
centralized server is directed to financial transactions, not games, we find it
unpersuasive because the disclosure is not in fact narrowly directed to
financial transactions. The passage at col. 13, ll. 59-67 which describes the
use of a centralized storage is a paragraph that makes no mention of
financial transactions. FF 3. The preceding paragraph does discuss financial
transactions but they are there discussed simply as examples of digital
objects that may be used in “conventional systems which allow a user to
perform secure electronic transactions between distributed computer
systems”. FF 2. Accordingly, one of ordinary skill in the art reading
Johnson would not take the Appellant’s narrow view but rather would view
the disclosure of using a centralized server as describing its use for any type
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of digital object. Given Johnson’s disclosure of game servers (FF 4), one
would further expect digital game objects to be included.
We have addressed all the Appellant’s arguments. Having found
them unpersuasive as to error in the rejection, we sustain the rejection. We
reach the same conclusion as to claims 2, 3, 5, 6, 8-12, 14, 15, and 17, which
stand or fall with claim 1.

Claims 7 and 16
As to the subject matter of claims 7 and 16, the Examiner relied on
disclosure in Johnson at col. 3, ll. 21-32 as evidence that Johnson “teaches
wherein said step of [“]allowing [said] property owners to transfer
ownership comprises allowing at [least] one of said property owners to win
one of said virtual properties from another property owner in the course of
[a] game.[”(claim 7)]. ” Answer 4. (Claim 16 parallels the language of claim
7 but describes a function of a program operable with a server connected to a
network in a system for managing virtual properties.)
The Appellant argues that Johnson does not disclose every element of
these claims. App. Br. 12 and Reply Br. 7-9.
We have read the passage in Johnson that the Examiner relied upon to
argue that Johnson anticipates the subject matter of claims 7 and 16. We do
not see in this passage an express or inherent teaching of allowing property
owners to transfer ownership by allowing a property owner to win a virtual
property from another property owner in the course of a game. The passage
talks about trades between first and second owners. We see nothing there
that necessarily describes winning a property or transferring ownership of a
property.
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The Examiner argued that the function of “winning” (i.e., claim 7) and
“trading” (Johnson) are the same. Answer 9. The Examiner also appears to
have relied upon and maintained a position taken in a previous Office action
with respect to subject matter for which Official Notice was taken. Answer
8-11. The Examiner does not spell out for what subject matter Official
Notice has been taken or which Office action is relied upon that presents the
Examiner’s position as to the Official Notice. Based on our review of the
record, we note that the Office action of Jul. 16, 2004 applied Official
Notice for the principle that winning in the course of a game amounts to a
transfer of ownership. We presume that is what the Examiner is referring to.
The difficulty with the Examiner’s argument lies in the fact that claims 7 and
16 are currently rejected under §102. In the Office action of Jul. 16, 2004,
claim 7 and 16 were rejected under §103 over Johnson and Official Notice.
But that is not the rejection we have been asked to review. In the context of
the rejection before us, Johnson must expressly or inherently describe all the
elements of the claimed subject matter to anticipate the claimed subject
matter. We do not find that one of ordinary skill in the art would view
Johnson as describing, expressly or inherently, allowing property owners to
transfer ownership by allowing a property owner to win a virtual property
from another property owner in the course of a game. We need not address
the merits of the Official Notice that was taken for the principle that winning
in the course of a game amounts to a transfer or ownership because it clearly
was used to supplement what Johnson fails to describe. “If it is necessary to
reach beyond the boundaries of a single reference to provide missing
disclosure of the claimed invention, the proper ground is not § 102
anticipation, but § 103 obviousness.” Scripps Clinic & Research Found. v.
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Genentech, Inc., 927 F.2d 1565, 1577 (Fed. Cir. 1991). Since we have not
been asked to review the merits of rejecting these claims under §103 over
Johnson and Official Notice, we make no comments as to the merits of such
a rejection.

CONCLUSIONS OF LAW
We conclude that the Appellant has not shown that the Examiner
erred in rejecting claims 1-3, 5, 6, 8-12, 14, 15, and 17 under 35 U.S.C.
§102(e) as being anticipated by Johnson.
We conclude that the Appellant has shown that the Examiner erred in
rejecting claims 7 and 16 under 35 U.S.C. §102(e) as being anticipated by
Johnson

DECISION
The decision of the Examiner to reject claims 1-3, 5-12, and 14-17 is
affirmed-in-part.
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

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AFFIRMED-IN-PART

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