Howard Ganz et al.

Patent Trials and Appeals Board

Sep 12, 2019

13924885 - (D) (P.T.A.B. Sep. 12, 2019)

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.
13/924,885 06/24/2013 Howard Ganz GANZ-42479US3 1098
26206 7590 09/12/2019
Pearne & Gordon LLP
1801 East 9th Street
Suite 1200
Cleveland, OH 44114-3108
EXAMINER
BELOUSOV, ANDREY
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
09/12/2019 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):
patdocket@pearne.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HOWARD GANZ and KARL JOSEPH BORST

Appeal 2018-006030
Application 13/924,885
Technology Center 2100
____________

Before JENNIFER S. BISK, JASON J. CHUNG, and BETH Z. SHAW,
Administrative Patent Judges.

BISK, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to finally reject claims 1–4, 8, 9, 11, 12, 14–17, and 23,
which are all claims pending in the application. Appellant has canceled
claims 5–7, 10, 13, and 18–22. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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 GANZ.
Appeal Br. 2.
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Application 13/924,885

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BACKGROUND2
Appellant’s disclosed embodiments and claimed invention relate to a
website in combination with a commercially purchased toy that allows the
toy user to access a virtual representation of the toy in a “virtual world.”
Spec. ¶ 5. Claim 1, reproduced below, is are illustrative of the subject
matter on appeal:
1. A method for providing a virtual world presentation to a
user, said method comprising the steps of:
registering a first product on a website, using a first
registration code provided with the first product,
wherein, during said registering of the first product,
a successful registration verifies said first
registration code, wherein said first product being a
real world non virtual product;
responsive to said successful registration of the first
product, displaying a virtual replica of the first
product on said website, said virtual replica of the
first product being associated with a user ID;
further responsive to said successful registration of the
first product, granting access to a first subset of
restricted content on said website, said first subset
of restricted content interacting with said virtual
replica of the first product, with said first subset of
restricted content also being associated with said
user ID such that logging in to said website using
said user ID provides access to said first subset of

2 Throughout this Decision we have considered the Specification filed June
24, 2013 (“Spec.”), the Final Office Action mailed February 21, 2017
(“Final Act.”), the Appeal Brief filed November 21, 2017 (“Appeal Br.”),
the Examiner’s Answer mailed March 21, 2018 (“Ans.”), and the Reply
Brief filed May 21, 2018 (“Reply Br.”).
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restricted content and said virtual replica of the first
product to allow said interacting;
registering a second product on said website, using a
second registration code provided with the second
product, wherein the second registration code is
different from the first registration code, wherein
the second product is provided with an additional
registration code, wherein, during said registering
of the second product, a successful registration
verifies said second registration code, wherein said
second product being a real world non virtual
product that is an accessory to said first product, and
wherein said second product being a real world non
virtual product;
responsive to registering the second product, displaying a
virtual replica of the second product on said
website, said virtual replica of the second product
also being associated with said user ID, wherein
said virtual replica of the first product interacts with
said virtual replica of the second product on said
website;
providing the additional registration code to said website;
and
responsive to providing the additional registration code,
granting access to a subset of restricted content on
said website, said subset of restricted content being
associated with said user ID such that logging in to
said website using said user ID also provides access
to said subset of restricted content, wherein said
subset of restricted content interacts with one or
both of said virtual replica of the first product and
said virtual replica of the second product.
Appeal Br. 15 (Claims App.).
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REJECTION
Claims 1–4, 8, 9, 11, 12, 14–17, and 23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of US 2005/0192864
A1, published Sept. 1, 2005 (“Ganz”) and US 2005/0250415 A1, published
Nov. 10, 2005 (“Barthold”). Final Act. 2–11.
ANALYSIS
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).
To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv).
We have considered all of Appellant’s arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Rejection of Claims Under 35 U.S.C. § 103
Appellant argues that the Examiner has failed to show the references
teach or suggest two limitations, the first applies to all independent claims
(claims 1, 8, 11, 17, and 23) and the second applies to independent claims 1,
11, and 23. Appeal Br. 11–13; Reply Br. 2–5. Appellant does not make
separate arguments for dependent claims 2–4, 9, 12, 14–16, and 23. Appeal
Br. 14. As permitted by 37 C.F.R. § 41.37, we decide the Appeal for the
rejection for each of claims 1–4, 8, 9, 11, 12, 14–17, and 23 based on claim
1. See 37 C.F.R. § 41.37(c)(1)(iv).
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The additional code limitation
The Examiner relies on a combination of Ganz and Barthold for
teaching, “wherein the second product is provided with an additional
registration code” (the “additional code limitation”). Final Act. 4–5 (citing
Ganz Fig. 7, ¶¶ 58–64, 102, 167; Barthold ¶¶ 45, 47); Ans. 3–4 (citing
Barthold ¶¶ 67, 94, 210–215).
Appellant argues that the relied upon references do not teach the
additional code limitation. Appeal Br. 11–12; Reply Br. 2–4. Specifically,
Appellant asserts that, “Barthold merely describes a single code per
product.” Appeal Br. 11 (citing Barthold ¶ 43). According to Appellant,
Barthold’s reference to “bonus content codes” does not refer to an additional
code for the disclosed vehicle, but “merely relates to the type of content
unlocked by the code” and “[n]owhere does Barthold describe that a single
product has multiple codes” as required by the claim language. Id. at 11–12.
In response, the Examiner explains that Barthold teaches “a singular
vehicle having [a] plurality of codes” that “may also be etched unto wheels
of the vehicle” or onto other parts of the vehicle. Ans. 3–4 (quoting
Barthold ¶¶ 45, 67, 94). In addition, the Examiner states that “Barthold
further teaches that a number of cards 1018 may each include one or more
codes.” Id. at 4 (quoting Barthold ¶ 210).
Appellant argues that “in each instance identified by the examiner, the
reference describes general properties of codes, products, and how the codes
may be applied to the products,” but “Barthold never actually identifies that
multiple codes may be linked to a single product.” Reply Br. 2.
Appellant does not persuade us of error in the Examiner’s finding that
the combination of Ganz and Barthold teaches or suggests the additional
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code limitation. We agree with the Examiner that Ganz teaches providing
access to restricted content allowing for interaction with virtual replicas of
multiple products based on codes associated with multiple products. Ganz
¶¶ 12, 58–64. And we agree with the Examiner that Barthold teaches a
single product including multiple codes. Barthold ¶¶ 34, 67, 94, 210–215.
Moreover, we agree with the Examiner that, “it would have been obvious to
one of ordinary skill in the art at the time the invention was made to modify
the teachings of Ganz with that of Barthold so as to provide further
customization or interaction with the toy for the user” by linking more than
one code to a specific product. Final Act. 5.
For these reasons, we agree with the Examiner that a person of skill in
the art would understand that the additional code limitation would have been
obvious over the combined disclosures of Ganz and Barthold.
The accessory limitation
The Examiner relies on Ganz for teaching, “wherein said second
product being a real world non virtual product that is an accessory to said
first product” (the “accessory limitation”). Final Act. 4 (citing Ganz ¶ 8);
Ans. 4–5 (citing Ganz Figs. 9, 10B, ¶¶ 6–11).
Appellant argues that Ganz does not teach the accessory limitation
because “the mere fact that it is known to have real accessories and
separately to have virtual accessories in no way suggests that the real
accessories and virtual accessories should be related by providing a code for
registering the real accessory for use in a virtual world.” Appeal Br. 13;
Reply Br. 4.
Ganz explicitly states that “a virtual world could be used to maintain
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the relationship between the toy owner and the toy manufacturer . . .
allowing new toys, accessories, and services of the manufacturer, retailer, or
other provider to be offered to the toy owner” and it would be beneficial to
“creat[e] such a virtual world to take advantage of such marketing
potential.” Ganz ¶¶ 8, 11 (emphasis added); see also ¶¶ 66 (describing
accessories such as virtual furniture, cash, etc.) 6–11 (listing benefits of
linking toy purchases with a virtual world). These statements at least
suggest the accessory limitation. Moreover, we agree with the Examiner
that it would have been obvious to one of ordinary skill in the art to modify
the explicit statements of Ganz to include accessory products with further
registration codes in order to achieve the described benefits.
For these reasons, we agree with the Examiner that a person of skill in
the art would understand that the accessory limitation would have been
obvious over the disclosures of Ganz.
DECISION
We affirm the Examiner’s rejection of claims 1–4, 8, 9, 11, 12, 14–17,
and 23 under 35 U.S.C. § 103.
CONCLUSION
Claims
Rejected
Basis  Affirmed Reversed
1–4, 8, 9, 11, 12, 14–
17, and 23
§ 103 over Ganz
and Barthold 
1–4, 8, 9, 11, 12, 14–
17, and 23

Overall Outcome 1–4, 8, 9, 11, 12, 14–
17, and 23

Appeal 2018-006030
Application 13/924,885

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FINALITY AND RESPONSE
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).

AFFIRMED