James Rowe et al.

Patent Trials and Appeals Board

Dec 16, 2019

13848694 - (D) (P.T.A.B. Dec. 16, 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.
13/848,694 03/21/2013 James Rowe 45WE-213482 9581
124910 7590 12/16/2019
ESPLIN & ASSOCIATES
c/o DISNEY ENTERPRISES, INC.
5411 Avenida Encinas
Suite 100
Carlsbad, CA 92008
EXAMINER
CLARKE JR, ROBERT T
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
12/16/2019 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):
docketing@esplin.legal
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JAMES ROWE and TRAVIS NIXON
____________________

Appeal 2017-004225
Application 13/848,694
Technology Center 3700
____________________

Before BRADLEY B. BAYAT, FREDERICK C. LANEY, and
PAUL J. KORNICZKY, Administrative Patent Judges.

LANEY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–18 (entered Nov. 19, 2015, “Final Act.”). We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Disney Enterprises, Inc., as the real
party in interest. Appeal Br. 2.
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THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to creating and updating navigation
maps of a virtual space dynamically in response to non-traversable objects
being relocated in the virtual space. Spec. ¶ 1.
Claims 1 and 10 are independent. Claim 1 is reproduced below and is
illustrative of the claimed subject matter.
1. A computer-implemented method for interactively
updating navigation maps during interactive gameplay in a
virtual space, the method being implemented in a computer
system comprising one or more physical processors and
electronic storage storing machine-readable instructions, the
method comprising:
storing, within the electronic storage, a navigation map of
the virtual space, wherein the navigation map includes
multiple regions, the regions including:
traversable regions that physics of the virtual space
permit characters to traverse, and
non-traversable regions that correspond to non-
traversable objects located in the virtual space through which
traversal by the characters of the virtual space is not permitted
by the physics of the virtual space;
obtaining instructions to modify a location of a first non-
traversable object in the virtual space, wherein the instructions
are obtained via a communications network from a client
computing platform associated with a user of the virtual space
during interactive gameplay by the user in the virtual space;
determining, responsive to the instructed modification, a
set of the non-traversable regions, the set of the non-traversable
regions comprising one or more of the non-traversable regions,
wherein the set of the non-traversable regions includes a first
non-traversable region that corresponds to the modified location
of the first non-traversable object;
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determining, responsive to the instructed modification, a
set of the traversable regions, the set of the traversable regions
comprising one or more of the traversable regions;
defining boundaries for the set of the traversable regions,
wherein individual ones of the boundaries separate adjacent
regions;
determining, responsive to the instructed modification,
which of the defined boundaries of the set of the traversable
regions are traversable boundaries, wherein individual ones of
the traversable boundaries separate adjacent traversable regions;
updating, responsive to the instructed modification, the
navigation map to reflect the determined set of the non-
traversable regions, the determined set of the traversable
regions, and the traversable boundaries; and
querying, on behalf of a non-player character in the
virtual space, the updated navigation map such that the non-
player character traverses traversable regions based on the
updated navigation map subsequent to obtaining the instructed
modification.
REJECTIONS2
References Basis Claims Challenged
§ 101 1–18
Bergelt3 § 102(a)(1) 1, 2, 5, 7, 10, 11, 14, 16
Bergelt and Axelrod4 § 103 3, 4, 12, 13
Bergelt and Minagawa5 § 103 6, 8, 9, 15, 17, 18

2 The Examiner has withdrawn the rejections previously asserted under
35 U.S.C. § 112 of claims 7, 9, and 16. See Adv. Act. 2 (entered Mar. 4,
2016); Ans. 2.
3 U.S. Pat. App. Pub. No. 2009/0197686 A1, pub. Aug. 6, 2009 (“Bergelt”).
4 U.S. Pat. App. Pub. No. 2008/0220862 A1, pub. Sept. 11, 2008
(“Axelrod”).
5 U.S. Pat. App. Pub. No. 2007/0200855 A1, pub. Aug. 30, 2007
(“Minagawa”).
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ANALYSIS
I. Section 101 Rejection
The Examiner rejected claims 1–18 under 35 U.S.C. § 101, finding
that the claims are directed to a judicial exception to the statutory categories
of invention, an abstract idea, without reciting significantly more than the
exception. See Final Act. 3–7; Ans. 2–5. In particular, the Examiner finds
that updating navigational maps during interactive gameplay in a virtual
space, as recited in claims 1–18, “can be performed mentally or in a
computer and is similar to the kind of ‘organizing human activity’ at issue in
Alice Corp.” Final Act. 3, 5. The Examiner states, without explanation, that
“[a]lthough the claims are not drawn to the same subject matter, the abstract
idea of updating a navigation map is similar to the abstract ideas of
managing risk (hedging) during consumer transactions (Bilski) mitigating
settlement risk in financial transactions (Alice Corp.), and managing a game
(Planet Bingo).” Id. Identifying each of the recited limitations of claims 1
and 10, the Examiner states, again without explanation, that they “can be
performed by a human using a purely abstract process and presentation via
writing on paper.” Id. at 3–4, 5–6.
The Examiner determines next that the claims do not identify an
inventive concept to transform the nature of the claims into a patent-eligible
application, because the claims do not include additional elements that
amount to significantly more than the abstract idea. See Final Act. 4–5, 6–7;
Ans. 5. The Examiner finds that the claims fail to improve the technical
field because they do not recite how the boundaries of the transferable and
non-transferable regions are set, but “merely relate to gathering data and do
not add any meaningful limits on updating the navigational map.” Final Act.
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4–5, 7. “The described process amounts to no more than a series of abstract
steps for the concept of gathering data related to a modified location of a
non-traversable object, updating a navigation map based on said gathered
data, and using the updated navigation map for directing a non-player
character to navigate a virtual space.” Id. 5, 7. The Examiner considers that
“a generic computer elements . . . perform generic functions that are well-
understood, routine and conventional, such as gathering data, performing
calculations, and outputting a result.” Id.
Appellant argues, “the claims are not directed to concepts of
‘organizing human activity’ but rather a computer implemented method and
system that improve the provision of a networked game by enabling
navigation maps, which are queried by non-player characters of the game, to
be updated when locations of non-traversable objects within the game are
modified.” Appeal Br. 15. Appellant asserts, “claims 1 and 10 are
necessarily rooted in computer technology to overcome a problem
specifically arising in networked gaming and are distinct from the types of
concepts found by the courts to be abstract.” Id. at 13. “The problem [was]
controlling non-player characters within a virtual space so that the non-
player characters behave in a realistic manner (e.g., as if they were being
controlled by actual players),” which traditional approaches addressed by
using higher computational costs to perform collision detection techniques
for individual non-player characters to determine whether a virtual space
terrain was traversable. Id. at 17–18 (citing Spec. 4). According to
Appellant, “[t]he solution includes the recited specific processing and
communication operations to provide a navigation map that is interactively
updated, based on user gameplay, and queried by non-player characters,”
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which is “a more elegant [technique] to [solve] the problem, and facilitates
non-player character control that is realistic without the computational costs
of known techniques.” Id. at 18. Additionally, Appellant contends, “claims
1 and 10 recite functionality that a general purpose computer could not
perform without being reconfigured into a special purpose computer.” Id. at
21.
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has interpreted § 101 to
include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014) (citation omitted).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 75–77 (2012), “for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.” Alice, 573 U.S. at
217. The first step in the analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts.” Id. For
example, abstract ideas include, but are not limited to, fundamental
economic practices, methods of organizing human activities, an idea of
itself, and mathematical formulas or relationships. Id. at 218–20. The
“directed to” inquiry asks not whether “the claims involve a patent-ineligible
concept,” but instead whether, “considered in light of the specification, . . .
‘their character as a whole is directed to excluded subject matter.’” Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (internal
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citations omitted). In that regard, we determine whether the claims “focus
on a specific means or method that improves the relevant technology” or are
“directed to a result or effect that itself is the abstract idea and merely invoke
generic processes and machinery.” McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016).
If, at the first stage of the Alice analysis, we conclude that the claims
are not directed to a patent-ineligible concept, they are considered patent
eligible under § 101 and the inquiry ends. Rapid Litig. Mgmt. Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims “individually
and ‘as an ordered combination’” to determine whether there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78). In
other words, the second step is to “search for an “‘inventive concept’”—i.e.,
an element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (brackets in original) (quoting
Mayo, 566 U.S. at 72–73). The prohibition against patenting an abstract
idea “‘cannot be circumvented by attempting to limit the use of the formula
to a particular technological environment’ or adding ‘insignificant
postsolution activity.’” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010)
(internal citation omitted).
The Patent and Trademark Office (the “Office”) has published revised
guidance on the application of 35 U.S.C. § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
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Guidance”). Under the 2019 Guidance, the Office first looks to whether the
claim recites (1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and (2) additional elements that integrate the judicial exception
into a practical application. See 2019 Guidance 84 Fed. Reg. at 52, 54–55;
see also MPEP § 2106.05(a)–(c), (e)–(h).6
Only if a claim (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, does the Office then
look to whether the claim: (3) adds a specific limitation beyond the judicial
exception that are not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. See 2019 Guidance, 84 Fed.
Reg. at 56. The above framework guides our analysis herein.
The Examiner contends that claims 1 and 10 are directed to
“organizing human activity.” Final Act. 3, 5. Under the 2019 Revised
Guidance, we begin our analysis by first turning to Alice step one (Step 2A
of the 2019 Revised Guidance). Under Step 2A, Prong 1 of the 2019
Revised Guidance, we determine whether the claims recite a judicial
exception. Regarding “certain methods of organizing human activity,”
which the Examiner relies upon here, the 2019 Guidance identifies the
following as markers of such activity: (1) “fundamental economic principles
or practices”; (2) “commercial or legal interactions,” such as “agreements in

6 All references to the MPEP are to Rev. 08.2017 (Jan. 2018).
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the form of contracts,” “marketing or sales activities or behaviors,” and
“business relations”; and (3) “managing personal behavior or relationships
or interactions between people,” such as “social activities, teaching, and
following rules or instructions.” 2019 Guidance, 84 Fed. Reg. at 52.
However, the Examiner has not explained sufficiently why claims 1 and 10
fall properly within the judicial exception of certain methods of organizing
human activity.
In the Answer, the Examiner states,
[the] recited steps [of claims 1 and 10] are similar to the
abstract idea of data recognition and storage at issue in [Content
Extraction & Transmission v. Wells Fargo Bank, N.A., 776 F.3d
1343 (Fed. Cir. 2014)] because both claim sets are directed to
1) collecting data (i.e., storing the claimed regions of the
navigation map and obtaining instructions), 2) recognizing
certain data within the collected data set (i.e., the claimed steps
of determining and defining certain information), and 3) storing
that recognized data in a memory (i.e., the claimed storing and
updating of the maps).
Ans. 3. In Content Extraction, the claims were for “[a] method of
processing information from a diversity of types of hard copy documents,”
which involved nothing more than collecting data from the hard copy
documents, recognizing certain data from the those documents, and storing
the recognized data. 776 F.3d at 1345, 1347. The Federal Circuit found
these to be common functions performed by humans and “banks have, for
some time, reviewed checks, recognized relevant data such as the amount,
account number, and identity of account holder, and stored that information
in their records.” Id. at 1347. The Examiner, however, does not explain
how or why the claims at issue are similar to those recited in Content
Extraction beyond both including generally “collecting data,” “recognizing
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certain data,” and “storing that recognized data.” For these reasons, we are
not persuaded that the Examiner has shown persuasively that the claims
recite an abstract idea.
However, assuming the claims recite an abstract idea, we turn to Step
2A, Prong 2 of the 2019 Revised Guidance, to determine whether the
judicial exception is “integrated into a practical application.” The Federal
Circuit has “cautioned that [we] ‘must be careful to avoid oversimplifying
the claims’ by looking at them generally and failing to account for the
specific requirements of the claims.” McRO, 837 F.3d at 1313. Here, the
claims recite more than simply collecting, recognizing, and storing data.
Claims 1 and 10 specify a specific set of rules to update navigation maps,
which non-player characters query and use while moving around a virtual
space, to reflect non-traversable regions, traversable regions, and traversable
boundaries in response to changes made to the non-traversable object(s) in
the virtual space. Notably, the Specification indicates that the claimed set of
rules provide an improved technique for operating non-player characters in a
virtual space that reduces the need for “collision detection,” which may be
computationally costly for computer resources. See Spec. ¶ 4. Unlike in
Content Extraction, the recited claim steps in this case are not computer
implementations of common functions performed by humans, but processing
steps that are specifically addressing prior inefficiencies with how computers
updated a navigation map in a virtual space during gameplay, and therefore
are an improvement in the functioning of a computer. See MPEP §
2106.05(a). Thus, because claims 1 and 10 integrate the alleged judicial
exception into a practical application, the claims are not directed to subject
matter falling within any of the recognized judicial exceptions.
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As a result, we are persuaded that the Examiner erred in concluding
that the pending claims are judicially-excepted from patentability.
Therefore, we reverse the Examiner’s § 101 rejection of claims 1–18.

II. Section 102 Rejection
The Examiner rejected claims 1, 2, 5, 7, 10, 11, 14, and 16 under
35 U.S.C. § 102, finding that Bergelt discloses each of the limitations for
these claims. Final Act. 1–14. Appellant argues that the Examiner’s
rejection was an error “because Bergelt does not disclose a navigation map
including both traversable regions of a virtual space and non-traversable
regions of the virtual space.” Appeal Br. 24, 29; Reply. Br. 9–10. For the
following reasons, we agree.
Both independent claims 1 and 10 recite an electronic storage having
a navigational map of a virtual space that includes “non-traversable regions
that correspond to non-traversable objects located in the virtual space
through which traversal by the characters of the virtual space is not
permitted by the physics of the virtual space.” Id. at 33, 36 (Claims App.).
The Examiner relies on Bergelt’s description of its “navigational graph” to
show this limitation, which is explained most clearly in the Answer. Ans. 6–
7. Bergelt discloses storing world data of the virtual space that includes
“computer models of objects, textures to apply to those models, and
topography data for the terrain in the virtual space,” as well as a navigational
graph that comprises a graph of nodes (defining locations within the virtual
space) and paths/edges (defining travel vectors between the nodes). Bergelt
¶¶ 25–26. According to the Examiner, the “various nodes and paths
discussed throughout Bergelt comprise a navigation graph which indicate
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where the non-player character may travel.” Final Act. 6 (citing Bergelt ¶
6). Because some nodes may correspond to a “collision point,” the
Examiner finds that Bergelt discloses defining regions that non-player
characters may traverse and regions that they may not traverse. Id. (citing
Bergelt ¶¶ 25–26, 47–48; Fig. 8). The Examiner asserts that the “non-
traversable regions” of claims 1 and 10 “correspond to the objects that
would cause a collision.” Id. (citing Bergelt ¶¶ 26, 39, 48).
Noting paragraph 42 of Bergelt, the Examiner contends, “Bergelt
discloses [that] a shortcut may be found between a character’s current
position and the character’s final target by performing periodic collision
tests to ensure that the final target is always reachable.” Id. The Examiner
“submits that when there is a determination that the final target is all of
sudden not reachable, such a determination would include identifying data
. . . that indicates the current path . . . includes a non-traversable region,
rendering it unreachable.” The Examiner concludes that this shows that
Bergelt discloses an electronic storage having a navigational map of a virtual
space that includes “non-traversable regions that correspond to non-
traversable objects located in the virtual space through which traversal by
the characters of the virtual space is not permitted by the physics of the
virtual space,” as recited by claims 1 and 10. Id. at 6–7. The Examiner’s
evidence supporting this finding, however, is deficient.
Appellant argues persuasively that Bergelt stores only traversable
nodes and paths as part of the navigational graph, and fails to disclose
including non-traversable data. Appeal Br. 29; Reply Br. 9–10. Bergelt
describes a “navigational graph” as being “navigable areas in the game (i.e.,
areas that are obstacle free and have terrain that can be traversed by the
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character).” Bergelt ¶ 27. “A character can move anywhere within the
navigational graph and traverse a defined portion of the world by traveling
from a node across [paths] to other connected nodes and [paths].” Id.
Notably, Bergelt describes “shortcuts” as paths that are taken when a
“character move[s] off of the navigational graph.” Id. (emphasis added).
The Examiner’s reliance on the disclosed collision test to validate a potential
shortcut as being traversable to evidence that Bergelt discloses storing a
navigation map including “non-traversable regions” is misplaced.
This is so because, rather than having saved data establishing non-
traversable regions within the navigational graph, Bergelt discloses using a
collision test to determine whether a path, which is “off of the navigational
graph,” is traversable. For example, discussing Figure 8, Bergelt describes
the system as determining that a “potential shortcut” is “unavailable” only
after performing a reachability test to find the potential path actually collides
with an object. Bergelt ¶ 48. As such, Bergelt does not disclose using the
navigational graph itself to identify whether a selected path is non-
traversable, but instead Bergelt teaches using the world data associated with
the potential path to perform a “reachability test” to evaluate whether the
path is traversable. The Examiner has failed to provide any evidence or
technical reasoning to demonstrate that a skilled artisan would have viewed
this process of checking for potential collisions when considering a potential
shortcut as being a stored non-traversable region that is part of the
navigational graph Bergelt discloses. To the contrary, Bergelt describes
“shortcuts” as being “off of the navigational graph.” Bergelt ¶¶ 27, 40–41,
45.
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Although it may be correct that the stored “world data” of the virtual
space in Bergelt may provide non-traversable information used to perform
these collision tests, the Examiner has not shown persuasively that this data
is part of the navigational graph Bergelt discloses. As a result, a
preponderance of the evidence does not support the Examiner’s finding that
Bergelt discloses a navigational map of a virtual space that includes “non-
traversable regions that correspond to non-traversable objects located in the
virtual space through which traversal by the characters of the virtual space is
not permitted by the physics of the virtual space,” as claims 1 and 10 recite.
Therefore, we do not sustain the Examiner rejection of claims 1 and 10, as
well as claims 2, 5, 7, 11, 14, and 16 depending therefrom, as being
anticipated by Bergelt.

III. Section 103 Rejections
The Examiner’s rejections of claims 3, 4, 12, and 13 as being
unpatentable under 35 U.S.C. § 103 in view of Bergelt and Axelrod, as well
as claims 6, 8, 9, 15, 17, and 18 as being unpatentable under 35 U.S.C. § 103
in view of Bergelt and Minagawa, each depend on the Examiner’s finding
that Bergelt anticipates independent claims 1 and 10. Therefore, because we
do not sustain the Examiner’s finding that Bergelt discloses each of the
recited limitations of claims 1 and 10, we also do not sustain the Examiner
rejections of claims 3, 4, 6, 8, 9, 12, 13, 15, 17, and 18.

CONCLUSION
The Examiner’s decision rejecting claims 1–18 is reversed.

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DECISION SUMMARY
Claims
Rejected
Basis Affirmed Reversed
1–18 § 101 1–18
1, 2, 5, 7, 10, 11,
14, 16
§ 102 Bergelt 1, 2, 5, 7, 10,
11, 14, 16
3, 4, 12, 13 § 103 Bergelt,
Axelrod
3, 4, 12, 13
6, 8, 9, 15, 17, 18 § 103 Bergelt,
Minagawa
6, 8, 9, 15, 17,
18
Overall Outcome 1–18

REVERSED