Heatherly, Christopher W.

Patent Trials and Appeals Board

Jul 22, 2020

2019004126 (P.T.A.B. Jul. 22, 2020)

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.
12/893,370 09/29/2010 Christopher W. Heatherly 45WE-213935 3993
124910 7590 07/22/2020
ESPLIN & ASSOCIATES
c/o DISNEY ENTERPRISES, INC.
5411 Avenida Encinas
Suite 100
Carlsbad, CA 92008
EXAMINER
EVANS, KIMBERLY L
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
07/22/2020 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):
cpearsall@esplin.legal
docketing@esplin.legal
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTOPHER W. HEATHERLY
____________

Appeal 2019-004126
Application 12/893,370
Technology Center 3600
____________

Before CAROLYN D. THOMAS, ADAM J. PYONIN, and
PHILLIP A. BENNETT, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge THOMAS.

Opinion Dissenting filed by Administrative Patent Judge PYONIN.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6 and 8–23. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b). A telephonic Oral Hearing was held
on July 7, 2020.
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Disney
Enterprises, Inc. Appeal Br. 2.
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The present invention relates generally to providing a software benefit
associated with a consumer object to a consumer. See Spec., Abstract.
Claim 1 is illustrative:
1. A method of authenticating purchase of consumer
objects and rewarding users for purchase of the consumer objects
based on user-captured images of the consumer objects, the method
being implemented in a computer system including one or more
physical processors and storage media storing machine-readable
instructions, the method comprising:
receiving, at the one or more physical processors, image
information captured by a camera, the image information
corresponding to one or more images captured by the camera;
identifying, by the one or more physical processors, a
consumer object from the image information based on the consumer
object being portrayed in a first image, the consumer object
embodying a physical appearance of a virtual object of a virtual
world, the identification being based on a comparison of the received
image information with at least one stored image of the consumer
object;
determining, by the one or more physical processors, a
software benefit to provide to a user of the consumer object, the
software benefit being a reward for purchase of the consumer object;
and
responsive to the identification of the consumer object
and determination of the software benefit, providing, by the one or
more physical processors, the software benefit to the user as the
reward for purchase of the consumer object, the software benefit
comprising unlocking the virtual object within the virtual world.

Appellant appeals the following rejection:2
Claims 1–6 and 8–23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sloan (US 0105769 A1, May 19, 2005) and Ganz (US
2005/0192864 A1, Sept. 1, 2005).

2 The Examiner withdrew the rejection of claims 1–6 and 8–23 under
35 U.S.C. § 101. See Ans. 3.
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We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

ANALYSIS
Issue: Did the Examiner err in using Sloan as prior art, because Sloan
is non-analogous art?
“Whether a reference in the prior art is ‘analogous’ is a fact question.”
In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citing Panduit Corp. v.
Dennison Mfg. Co., 810 F.2d 1561, 1568 n.9 (Fed. Cir. 1987)). There are
two separate tests for answering the question: (1) whether the art is from the
same field of endeavor, regardless of the problem addressed; and (2) if the
reference is not within the inventors’ endeavor, whether the reference is
reasonably pertinent to the particular problem with which the inventors are
involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “A reference
is reasonably pertinent if, even though it may be in a different field from that
of the inventor’s endeavor, it is one which, because of the matter with which
it deals, logically would have commended itself to an inventor’s attention in
considering his problem.” In re Icon Health and Fitness, Inc., 496 F.3d
1374, 1379–80 (Fed. Cir. 2007) (citations and quotations omitted).
Here, Appellant contends that “Sloan is non-analogous art to
Appellant’s claimed invention” (Appeal Br. 25), because “Sloan does not
relate to the relevant field of endeavor . . . [i.e.,] providing a software benefit
when a consumer object is recognized in an image.” Id. Appellant further
contends that “Sloan, by contrast, clearly states the field of endeavor as . . .
[providing] a physical output according to an external visual input.” Id.
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Appellant further contends that “Sloan is not reasonably pertinent to
the particular problem(s) with which Appellant was involved[,] . . . for
example, how to verify purchase of consumer objects, how to efficiently and
accurately provide a software benefit to consumers . . . , and what the
software benefit should be.” Appeal Br. 26. Appellant contends that Sloan
“is directed to how to provide more intelligent interactions between a toy, a
user, and its environment. Sloan does not address software-related benefits.”
Id. (citations omitted). As a result, Appellant concludes that “Sloan cannot
be properly considered in an obviousness analysis.” Id.
Finally, Appellant points out, and we agree, the Examiner “is
completely silent to the elements of the two-step test . . . The Answer fails to
establish . . . that Sloan is within the same field of endeavor . . . and/or that
Sloan is reasonably pertinent to the particular problem(s).” See Reply Br. 4.
The field of endeavor test “requires the PTO to determine the
appropriate field of endeavor by reference to explanations of the invention’s
subject matter in the patent application, including the embodiments,
function, and structure of the claimed invention.” In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004) (citation omitted).
Here, the Examiner fails to expressly state any facts showing a
determination of Appellant’s field of endeavor, nor does the Examiner cite
any evidence in Appellant’s Specification supporting a conclusion that
Appellant’s field of endeavor is the same as Sloan. See id. at 1326 (“[T]he
PTO must show adequate support for its findings on the scope of the field of
endeavor in the application’s written description and claims, including the
structure and function of the invention.”). In other words, the Examiner fails
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to sufficiently address the “field of endeavor” portion of the analogous art
test.
We note that the “Field” section of Appellant’s Specification states
that “the present invention relates to systems and methods wherein a
software benefit may be provided to a consumer[] . . . when a consumer
object is recognized in an image.” Spec. 1:3–5. Similarly, the “DETAILED
DESCRIPTION” likewise states that “Applicants have recognized that there
is a need for methods . . . to efficiently and accurately provide a software
benefit to a consumer who has purchased a consumer object.” Spec. 1:14–
16.
In describing the prior art upon which the invention improves, the
Specification discusses that “a company may wish to provide a consumer
with a benefit . . . a unique alphanumeric registration code may be provided
on the object . . . The consumer can enter the code . . . Such an approach,
however, can be awkward and confusing for consumers. . . . [because] it
may be difficult to accurately enter a lengthy registration code.” Spec. 1:7–
15.
To the extent that the Examiner’s use of Sloan is based on a
determination that it is within Appellant’s field of endeavor, the Examiner
fails to provide adequate support for that conclusion. Here, the Examiner
merely notes that the “Examiner uses Sloan to teach an interactive device for
capturing an image and comparing the captured image with images stored in
a database.” Ans. 5 (citing Sloan ¶¶ 5, 11, 28, 29). However, the Examiner
fails to explicitly state what Appellant’s field of endeavor is and/or whether
Sloan shares the same field of endeavor. See generally Ans.
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Likewise, the Examiner fails to make any findings in support of a
determination that Sloan is analogous art under the second test. “A
reference is reasonably pertinent if . . . it is one which, because of the matter
with which it deals, logically would have commended itself to an inventor’s
attention in considering his problem.” Klein, 647 F.3d at 1348 (quoting In
re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). See also In re Oetiker, 977 F.2d
1443, 1447 (Fed. Cir. 1992) (“[I]t is necessary to consider “the reality of the
circumstances’ . . . -- in other words, common sense -- in deciding which
fields a person of ordinary skill would reasonably be expected to look for a
solution to the problem facing the inventor.”).
Here, contrary to the Dissent’s finding (see Dissent 2), the Examiner
does not identify the problem with which Appellant is involved, nor explain
how Sloan is pertinent to that problem. Stated differently, the Examiner
fails to provide any meaningful analysis regarding whether Sloan is
reasonably pertinent to the particular problem with which the inventors are
involved. We are therefore left to speculate as to the Examiner’s position,
which we shall not do in this first instance on appeal.
Appellant, however, notes that the problem includes “how to verify
purchase of consumer objects, how to efficiently and accurately provide a
software benefit to consumers who may be relatively young who have
purchased a consumer object, and what the software benefit should be.”
Appeal Br. 26 (citing Spec. 2:1–7; 3:14–28; 4:1–5). We agree with
Appellant that the Specification indicates that the problem is how to
efficiently and accurately provide a software benefit, i.e., a computer based
benefit, to a consumer who has purchased a consumer object, without the
need to enter a lengthy code. Even if Appellant’s statements can be seen as
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“unduly narrow” as argued by the Dissent (see Dissent 1), this does not erase
the fact that the Examiner fails to identify any problem and/or explain how
Sloan is pertinent to that problem. See generally Ans.
Specifically, in reviewing the record, we note that the Examiner’s
Answer offers an insufficient rebuttal to Appellant’s arguments regarding
the two-part non-analogous art test. This circumstance leads us to determine
that because the arguments under review are unrebutted, they are therefore
persuasive. It follows that we will not sustain the rejection under 103(a).
Because we agree with Appellant that the Examiner has not met the
burden of establishing that Sloan constitutes analogous art (see Reply Br. 4),
we are constrained by the record before us to reverse the rejection of claims
1–6 and 8–23 as being obvious in view of at least Sloan. Since we agree
with at least one of the arguments advanced by Appellant, we need not reach
the merits of Appellant’s other arguments.
Accordingly, we reverse the Examiner’s rejection of claim 1–6 and 8–
23.

CONCLUSION
Appellant has demonstrated that the Examiner erred in rejecting
claims 1–6 and 8–23 as being unpatentable under 35 U.S.C. § 103(a) over
Sloan and Ganz.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8–23 103 Sloan, Ganz 1–6, 8–23

REVERSED

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTOPHER W. HEATHERLY
____________

Appeal 2019-004126
Application 12/893,370
Technology Center 3600
____________

Before CAROLYN D. THOMAS, ADAM J. PYONIN, and
PHILLIP A. BENNETT, Administrative Patent Judges.

PYONIN, Administrative Patent Judge, dissenting.

I respectfully disagree with the majority opinion in reversing the
rejection of the pending claims. Based on the record before us, I see no error
in the Examiner’s reliance on Sloan.
In the present case, the Examiner has correctly identified Sloan as
pertinent prior art. In contrast, I believe Appellant has unduly narrowed the
analogous art tests. See Appeal Br. 25, 26; Unwired Planet, LLC v. Google
Inc., 841 F.3d 995, 1001 (Fed. Cir. 2016) (“The field of endeavor of a patent
is not limited to the specific point of novelty, the narrowest possible
conception of the field, or the particular focus within a given field.”); cf. In
re Paulsen, 30 F.3d 1475, 1481 (Fed. Cir. 1994) (“This argument rests on
too narrow a view of what prior art is pertinent to the invention here.”); KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 424 (2007) (Warning against
“consider[ing] the [obviousness] issue too narrowly by, by, in effect, asking
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whether a pedal designer writing on a blank slate would have chosen both
Asano and a modular sensor similar to the ones used in the Chevrolet
truckline and disclosed in the ‘068 patent.”). Sloan should not be excluded
from the prior art when determining patentability of the present claims.
Particularly, Sloan is a “‘reasonably pertinent’ reference . . . that an
ordinarily skilled artisan would reasonably have consulted in seeking a
solution to the problem that the inventor was attempting to solve.” Airbus
S.A.S. v. Firepass Corp., 941 F.3d 1374, 1382 (Fed. Cir. 2019). I disagree
with Appellant’s contention that the invention’s problem is limited to
“provid[ing] a software benefit.” Appeal Br. 26. Rather, Appellant’s
invention attempts to solve the problem of a “time consuming and error
prone process” for “identif[ying] a discrete toy (or other item)” (i.e.,
complex data input)3, by using “a recognition engine of [a] portable
computer [that] may recognize the consumer object [] within the image
information generated by the camera.” Spec. 3:25–4:15. The nature of any
benefit (e.g., software based) attached to a consumer object is immaterial to
the inventors’ stated problem of first identifying the object. And Sloan,
teaching data input using image recognition, would logically would have
commended itself to an inventor’s attention in solving this problem. See
Sloan ¶ 5.
The Examiner has presented findings sufficient to support the
rejection. The Examiner finds Sloan is reasonably pertinent to the inventors’
stated problem, because Sloan “teach[es] an interactive device for capturing
an image and comparing the captured image with images stored in a

3 The Specification explains that prior methods of object identification relied
on manually “enter[ing] a lengthy registration code” into a computer. Spec.
1:15.
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database.” Ans. 5; Sloan ¶ 11 (“Intelligent interaction with a visual
environment is also valuable in other applications such as security, education
and consumer products”). Stated another way4, Sloan’s image input and
recognition teachings are reasonably pertinent to Appellant’s problem of
error-prone data entry. See Sloan ¶ 5 (“Image Understanding (‘IU’) is
comprised of methods, implementations and applications that let computers
to process digital image data for the purpose of simulating the interaction of
humans with a visual environment.”), ¶ 12 (“the invention is a toy that
receives inputs from an environment and provides a corresponding response
either generally or user-specific.”), ¶¶ 28–29 (“There are at least two image
inputs” for “identification, characterization, categorization, classification and
other use of the image.”). I am unpersuaded by Appellant’s argument that
an artisan of ordinary skill, at the time of invention, would not consider
Sloan’s Image Understanding when building a system to identify a particular
consumer object, as claimed. See Appeal Br. 25.
Based on the foregoing, I agree with the Examiner that one of
ordinary skill, at the time of the invention, would look to Sloan to solve the
problem of identifying an object without resorting to complicated manual
data entry. See Ans. 5, 7. For at least this reason, I find the Examiner’s
reliance on Sloan to be reasonable.5

4 Although the Examiner’s “opinions in the present appeal[] are not a model
of clarity,” I find the Examiner’s “path may reasonably be discerned.” In re
Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012) (citations
removed).
5 Separately, I find both the present application and Sloan are in the same
field of endeavor of electronic interactions with consumer goods. See Spec.
3:14–16 (“Applicants have recognized that there is a need . . . [to] efficiently
and accurately provide a software benefit to a consumer who has purchased
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Respectfully, I would sustain the Examiner’s obviousness rejection of
the claims.6

a consumer object.”); Sloan ¶ 11 (“[I]t is desirable to provide a system and
method to enable a toy to interact more intelligently with its environment, in
which the toy is not constrained to interact with only pre-defined images and
image classes.”).
6 In the event of further prosecution, the Examiner may wish to consider
whether the disclosure provides written description support for the claimed
“the identification being based on a comparison of the received image
information with at least one stored image of the consumer object.” I note
the Specification does not provide algorithms for image recognition, and is
silent with respect to a comparison. See Examining Computer-Implemented
Functional Claim Limitations for Compliance With 35 U.S.C. 112, 84 Fed.
Reg. 57, 61 (Jan. 7, 2019) (“When examining computer implemented,
software-related claims, examiners should determine whether the
specification discloses the computer and the algorithm(s) that achieve the
claimed function in sufficient detail that one of ordinary skill in the art can
reasonably conclude that the inventor possessed the claimed subject matter
at the time of filing.”).