Arn Hyndman et al.

Patent Trials and Appeals Board

Nov 1, 2019

13081070 - (D) (P.T.A.B. Nov. 1, 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.
13/081,070 04/06/2011 Arn HYNDMAN 648.0264 3155
93379 7590 11/01/2019
Setter Roche LLP
14694 Orchard Parkway
Building A, Suite 200
Westminster, CO 80023
EXAMINER
SORKOWITZ, DANIEL M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
11/01/2019 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):
pair_avaya@firsttofile.com
sarah@setterroche.com
uspto@setterroche.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ARN HYNDMAN, NICHOLAS SAURIOL, and
GORDON FREDERICK WALLS
____________
Appeal 2018-008434
Application 13/081,070
Technology Center 3600
____________

Before CARL W. WHITEHEAD JR., MICHAEL J. STRAUSS, and
JAMES B. ARPIN, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–13 and 21–26, all of the pending claims. Final
Act. 2.2 Claims 14–20 are cancelled. Id. We have jurisdiction under
35 U.S.C. § 6(b).

1 “Appellant” here refers to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party-in-interest as Avaya Inc. App. Br. 2.
2 In this Decision, we refer to Appellant’s Appeal Brief (“App. Br.,” filed
March 19, 2018) and Reply Brief (“Reply Br.,” filed August 14, 2018); the
Final Office Action (“Final Act.,” mailed October 17, 2017); the Examiner’s
Answer (“Ans.,” mailed June 14, 2018; and the originally-filed Specification
(“Spec.,” filed April 6, 2011)). Rather than repeat the Examiner’s findings
and determinations and Appellant’s contentions in their entirety, we refer to
these documents.
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We affirm.
STATEMENT OF THE CASE
Appellant’s claimed methods and systems “relate[] to virtual
environments and more specifically to a method and system for providing
advertisements within a three-dimensional virtual environment.” Spec. ¶ 3
(emphasis added). As noted above, claims 1–13 and 21–26 are pending.
Claims 1 and 9 are independent. App. Br. 10 (claim 1), 11 (claim 9) (Claims
App’x). Claims 2–8 and 21–23 depend directly or indirectly from claim 1,
and claims 10–13 and 24–26 depend directly or indirectly from claim 9. Id.
at 10–12.
Claim 9 recites systems performing methods recited in claim 1. Id. at
10, 11. Moreover, Appellant relies on its contentions with respect to claim 1
to overcome the rejections of claim 9. App. Br. 6 (Appellant asserts that
claim 9 is patent eligible for the same reasons that claim 1 is eligible.), 8
(“Independent claim 9 recites limitations similar to those of claim 1 and is
therefore allowable for at least the same reasons.”). Therefore, we focus our
analysis on claim 1. See Accenture Global Servs. GmbH v. Guidewire
Software, Inc., 728 F.3d 1336, 1341 (Fed. Cir. 2013) (“Although [CLS Bank
Int’l v. Alice Corp., 717 F.3d 1269 (Fed. Cir. 2013) (en banc)] issued as a
plurality opinion, in that case a majority of the court held that system claims
that closely track method claims and are grounded by the same meaningful
limitations will generally rise and fall together.” Id. at 1274 n.1
(parenthetical omitted)); Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 226–
227 (2014) (“Put another way, the system claims are no different from the
method claims in substance.”).
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Claims 1 and 3, reproduced below with disputed limitations
emphasized, are representative.
1. A method for placing an advertisement in a virtual
environment, the virtual environment containing a predefined
space to receive the advertisement, the method comprising:
retrieving, by an ad rendering system running on a computing
device, a web-based advertisement from an advertisement
server;
inserting, by the ad rendering system, the web-based
advertisement within a trivial document, the trivial document
including tags derived from the virtual environment;
rendering the trivial document within the predefined space of
the virtual environment; and
displaying the web-based advertisement only when the web-
based advertisement is positioned within a point of view of an
avatar.
Id. at 10 (emphasis added).
3. The method of Claim 2, the virtual environment
containing metadata, the method further comprising translating
the metadata into a searchable web page.
Id. (emphases added).
REFERENCES AND REJECTIONS
The Examiner relies upon the following references in rejecting the
pending claims:
Name3 Number Published Filed
Kusumoto US 2005/0216346 A1 Sep. 29, 2005 May 13, 2005

3 All reference citations are to the first named inventor only.
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Altberg US 2008/0262911 A1 Oct. 23, 2008 Apr. 20, 2007
The Examiner rejects claims 1–13 and 21–26 under 35 U.S.C. § 101
as directed to patent ineligible subject matter (Final Act. 2–5, 13) and under
35 U.S.C. § 103 as obvious over the combined teachings of Kusumoto and
Altberg (id. at 5–12, 13–14).4 We review the appealed rejection 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). Arguments not made are waived. See
37 C.F.R. § 41.37(c)(1)(iv). Unless otherwise indicated, we adopt the
Examiner’s findings in the Final Action and the Answer as our own and add
any additional findings of fact for emphasis. For the reasons given below,
we affirm the rejection of the pending claims.
ANALYSIS
I. Patent Ineligible Claims
A. Section 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.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice, 573 U.S. at 216.
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.

4 At places in the Final Office Action, the Examiner misidentifies the
rejected claims. Final Act. 2, 6. However, Appellant acknowledges that
each of the pending claims stands rejected under each rejection. App. Br. 6.
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Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at
219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”). According to the Court, concepts determined to be abstract
ideas and, thus, patent ineligible, include certain methods of organizing
human activity, such as fundamental economic practices (Alice, 573 U.S. at
219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook,
437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson,
409 U.S. 63, 67 (1972)).
In Diamond v. Diehr, the claim at issue recited a mathematical
formula, but the Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diamond v. Diehr, 450 U.S. 175, 187 (1981).
Having said that, the Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. at 191 (citing Benson and Flook). Nevertheless, the
Court noted that “[i]t is now commonplace that an application of a law of
nature or mathematical formula to a known structure or process may well be
deserving of patent protection.” Id. at 187; see also BASCOM Global
Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1352 (Fed.
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Cir. 2016) (Even if the individual components were known, “an inventive
concept can be found in the ordered combination of claim limitations that
transform the abstract idea of filtering content into a particular, practical
application of that abstract idea” (emphasis added).).
If the claim is “directed to” an abstract idea, we next “must examine
the elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
B. Office Patent Eligibility Guidance
In an effort to achieve clarity and consistency in how the Office
applies the Court’s two-part test, the Office published revised guidance on
the application of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).5 In Step One of our analysis, we
look to see whether the claims, as written, fall within one of the four
statutory categories identified in § 101. Id. at 53 (“Examiners should
determine whether a claim satisfies the criteria for subject matter eligibility
by evaluating the claim in accordance with the criteria discussed in MPEP

5 “All USPTO personnel are, as a matter of internal agency management,
expected to follow the guidance.” 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. at 51.
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2106, i.e., whether the claim is to a statutory category (Step 1) and the
Alice/Mayo test for judicial exceptions (Steps 2A and 2B)”).
Under the guidance, we then look to whether the claim recites:
(1) Step 2A – Prong One: 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) Step 2A – Prong Two: additional elements that integrate the
judicial exception into a practical application (see MPEP6
§ 2106.05(a)–(c), (e)–(h)).
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
at 54–55 (“Revised Step 2A”).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is 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 id. at 56 (“Step 2B: If the Claim Is Directed to a Judicial Exception,
Evaluate Whether the Claim Provides an Inventive Concept.”).
C. Step One – Claims Directed to Statutory Categories
Appellant’s independent claim 1 and its associated dependent claims
are directed to methods (i.e., a “process”), and claim 9 and its associated

6 All Manual of Patent Examining Procedure (“MPEP”) citations herein are
to MPEP, Rev. 08.2017, January 2018.
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dependent claims are directed to systems (i.e., a “machine”). App. Br. 10–
12 (Claims App’x). Thus, the pending claims are directed to recognized
statutory categories. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. at 53.
D. Two-Part Alice/Mayo Test
1. Independent Claims 1 and 9
a. Step 2A, Prong One – Claims Recite Abstract Idea
Applying the first part of the Alice/Mayo analysis (Step 2A), “the
Examiner determines claim 1 is “directed to a method for providing
advertising, a fundamental economic practice.” Ans. 4. (citations omitted);
see Final Act. 3, 13. Claim 1 broadly recites the limitations of (1) retrieving
an advertisement from storage (“retrieving, by an ad rendering system
running on a computing device, a web-based advertisement from an
advertisement server”); (2) inserting the advertisement onto a 2D surface,
e.g., an appropriate scene element7 (“inserting, by the ad rendering system,

7 For example, the advertisement may be included in a 2D surface that is
adapted and relates to the context of the 3D environment. Spec. ¶ 29 (“The
advertisement document is placed within a trivial HTML document, i.e., a
basic document with very little content and few tags. In one embodiment,
the trivial HTML document is enhanced with tags derived from a 3D
environment in order to provide proper context for the advertisement server.
In this fashion, the advertisement content retrieved from the advertisement
server is adapted and relates to the context of the 3D environment.”), ¶ 30
(“The HTML advertisement document, which represents a 2D surface in the
3D environment, is rendered by interactive 3D ad renderer 21.”); ¶ 36 (“One
or more 2D banner advertisements 50 are placed within region 48 in the
manner discussed above. The 2D advertisement may be projected on the
screen such that it appears on, for example, a 3D billboard within the virtual
3D image 48.”).
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the web-based advertisement within a trivial document, the trivial document
including tags derived from the virtual environment”); (3) placing the 2D
surface at a predetermined location (“rendering the trivial document within
the predefined space of the virtual environment”); and (4) displaying the
advertisement to the potential customer when the customer is in a position to
see the advertisement (“displaying the web-based advertisement only when
the web-based advertisement is positioned within a point of view of an
avatar”). App. Br. 10 (Claims App’x); see Final Act. 3. The Examiner
concludes:
The claimed invention also is conceptually similar to the abstract
idea of the collection, analysis and display of available
information in a particular field, which was identified as an
abstract idea in [Electric Power Grp., LLC v. Alstrom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016) (“collecting information,
analyzing it, and displaying certain results of the collection and
analysis”)]. The claimed invention collects information
regarding advertising, analyzes the information to display
available ads to a user. The claimed invention also is
conceptually similar to the abstract idea of customizing
information presented to a user based on what is known about
the user, identified as such in [Affinity Labs of Texas, LLC v.
Amazon.com Inc., 838 F.3d 1266, 1272 (Fed. Cir. 2016) (“[The
patent] claims the general concept of streaming user-selected
content to a portable device. The addition of basic user
customization features to the interface does not alter the abstract
nature of the claims and does not add an inventive component
that renders the claims patentable.”)].
Final Act. 3; see also Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1319
(Fed. Cir. 2019) (citing Electric Power Grp. with approval). As evidenced
by the analysis above, claim 1 is broad in its scope and does not
meaningfully limit the abstract idea, particularly, how the advertisements are
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retrieved, inserted, rendered, and displayed. See Affinity Labs, 838 F.3d at
1272; Electric Power Grp., 830 F.3d at 1353.
Claim 1’s limitations, under their broadest reasonable interpretation,
recite providing customized or targeted advertisements, such that an
intended recipient can see the advertisement, which are fundamental
economic practices and “commercial . . . interactions (including . . . sales
activities or behaviors . . .); [and] manag[e] personal behavior or
relationships or interactions between people[, e.g., buyers and sellers,]
(including . . . following rules or instructions).” 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. at 52. Such practices and
interactions fall within the broader category of “[c]ertain methods of
organizing human activity.” Final Act. 3; Ans. 4; see 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. at 52; see also Spec. ¶ 9
(“Therefore, what is needed is an efficient technique for providing effective
advertising content within an interactive 3D virtual environment.”). Thus,
we determine that the rejected claims recite an abstract idea, namely
“[c]ertain methods of organizing human activity.”
b. Step 2A, Prong Two – Abstract Ideas Not Integrated Into
Practical Application
The Examiner finds:
Advertisement placement should be considered a business
solution to a business problem, not a technical solution, or a new
GUI. The advertising disclosed in the specification uses existing
generic technology, with no improvement claimed. Claims
directed towards finding a better placed ad should be considered
an improvement to a sales and marketing act or behavior. The
instant specification in paragraph 41, clearly teaches generic
[components]: The present invention can be realized in
hardware, software, or a combination of hardware and software.
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Any kind of computing system, or other apparatus adapted for
carrying out the methods described herein, is suited to perform
the functions described herein. (paragraph 42) typical
combination of hardware and software could be a specialized or
general purpose computer system. Therefore, and [sic] the
claims do not move beyond a general link of the use of an
abstract idea to a particular technological environment.8
Ans. 3 (emphasis added).
Appellant contends:
The limitations of claims 1-13 and 21-26 are directed to
statutory subject matter, as claims 1-13 and 21-26 are
inextricably tied to systems required for presenting
advertisements in a virtual environment. The limitations recited
therein serve no purpose outside of a virtual environment and,
therefore, cannot merely be considered an abstract idea
implemented on conventional computing components.
Specifically, the limitations set forth requirements for how the
invention displays advertisements in a virtual environment (i.e.
rendered within a predefined space and displayed only when
within a point of view of an avatar). Removing the virtual
environment from the situation (and the systems necessary to
produce the virtual environment) defeats the entire purpose of
claims 1-13 and 21-26’s requirements for how advertisements
are displayed in that virtual environment.
App. Br. 6. Thus, Appellant contends that it is because the advertisements
are presented in a virtual environment that the abstract idea is “inextricably
tied” to virtual reality systems.

8 We acknowledge that some of the considerations at Step 2A, Prong Two,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
guidance). For purposes of maintaining consistent treatment within the
Office, we evaluate those considerations under first part of the Alice/Mayo
analysis (Step 2A of the Office guidance). See 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. at 55 n.25, 27–32.
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Nevertheless, the claims do not recite the particular technology
employed in the recited methods and systems, except in the most general
terms. Specifically, claim 1 recites that the steps are performed “in a virtual
environment” and “by an ad rendering system running on a computing
device.” App. Br. 10 (Claims App’x). Further, the Specification makes
clear that the recited methods and systems “can be realized in hardware,
software, or a combination of hardware and software. Any kind of
computing system, or other apparatus adapted for carrying out the methods
described herein, is suited to perform the functions described herein.” Spec.
¶ 41; see id. ¶ 42 (“A typical combination of hardware and software could be
a specialized or general purpose computer system having one or more
processing elements and a computer program stored on a storage medium
that, when loaded and executed, controls the computer system such that it
carries out the methods described herein.” (emphasis added)), ¶ 43
(“Computer program or application in the present context means any
expression, in any language, code or notation, of a set of instructions
intended to cause a system having an information processing capability to
perform a particular function either directly or after either or both of the
following a) conversion to another language, code or notation;
b) reproduction in a different material form.”). The Examiner concludes,
“the claims do not move beyond a general link of the use of an abstract idea
to a particular technological environment.” Ans. 3. We agree.
Referring to a related patent, Appellant further asserts:
The limited set of data being displayed in a specific manner is
analogous to the advertisement in the claims of the present
application also being displayed in a specific manner. That is,
rather than the present claim limitations simply displaying the
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advertisement somewhere in the virtual environment, as may be
done using conventional methods, the advertisement is displayed
only when the advertisement is positioned within a point of view
of an avatar.
Reply Br. 2 (emphasis added). However, we are not persuaded that this
suggests a technical problem or its solution. Instead, as the Examiner notes:
The claimed element, “displaying the web-based advertisement
only when the web-based advertisement is positioned within a
point of view of an avatar”, describes how advertising is viewed
in the real or any old world, displaying the advertisement only
when the advertisement is positioned within a point of view of
the viewer. A viewer can only read an advertisement when it is
within point of view. Even a newspaper or print advertisements
is only visible when in the point of view of the reader.
Ans. 5. We agree with the Examiner that “[a]dvertisement placement should
be considered a business solution to a business problem, not a technical
solution, or a new GUI. The advertising disclosed in the specification uses
existing generic technology, with no improvement claimed.” Ans. 3; Final
Act. 13; see Spec. ¶ 5 (“In the business context, advertisers have realized the
enormous potential benefits of placing advertisements within the virtual
environment.” (emphasis added)). The methods of claim 1 merely invoke
(and the systems of claim 9 merely recite) generic hardware and generic data
storage, retrieval, and display techniques, and the recited methods are not
linked to any particular machine (MPEP § 2106.05(b)) and merely apply
generic computer hardware and software to perform to facilitate the solution
to an advertising problem (MPEP § 2106.05(f)). See Final Act. 4 (“The
claim recites the additional limitation of a computing device connected to a
web server for an avatar in a virtual environment, generic computer
components recited as performing generic computer functions that are well-
understood, routine and conventional activities amount to no more than
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implementing the abstract idea with a computerized system.”); see also Ans.
3–4 (“There is no actual improvement made to this virtual world
environment, nor to the actual machine involved in implementing the
inventive concept. In fact, the Appellant is merely incorporating a real-
world method (i.e. advertising to users) into a virtual world.”); see 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 55 n.27,
30.
In view of Appellant’s claim recitations and Specification and
consistent with the Examiner’s determinations, we are persuaded the
rejected claims do not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP § 2106.05(a)–(c), (e)–(h); see Final Act. 3–4, 13; Ans. 3–4.
Thus, we conclude that the rejected claims do not integrate the judicial
exception into a practical application and that the claims are directed to an
abstract idea.
c. Step 2B – Not Significantly More Than the Abstract Idea
Because we find that the claims are directed to an abstract idea and do
not integrate that abstract idea into a practical application, we now consider
whether the claims include additional limitations, such that the claims
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amount to significantly more than the abstract idea. Applying second part of
the Alice/Mayo test, the Examiner concludes:
The claim recites the additional limitation of a computing device
connected to a web server for an avatar in a virtual environment,
generic computer components recited as performing generic
computer functions that are well-understood, routine and
conventional activities amount to no more than implementing the
abstract idea with a computerized system. The use of generic
computer components to transmit information through an
unspecified interface does not impose any meaningful limit on
the computer implementation of the abstract idea. Thus, taken
alone, the additional elements do not amount to significantly
more than the above-identified judicial exception (the abstract
idea). Looking at the limitations as an ordered combination adds
nothing that is not already present when looking at the elements
taken individually. There is no indication that the combination
of elements improves the functioning of a computer or improves
any other technology. Their collective functions merely provide
conventional computer implementation.
Final Act. 4; Ans. 3–4; see, e.g., Spec. ¶¶ 41–43. Appellant does not
contend persuasively to the contrary. App. Br. 6; Reply Br. 2–3. We agree
with the Examiner that claims 1 and 9 recite generic computer components
performing generic computer functions, which, considered individually or as
an ordered combination, are well-understood, routine, and conventional, and
that these claims do not recite “significantly more” than the identified
abstract idea. See Final Act. 3.
On this record, we agree with the Examiner that independent claim 1,
as well as independent claim 9 (see Final Act. 5), is directed to an abstract
idea and fails to recite significantly more than the identified abstract idea.
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Thus, we are not persuaded that the Examiner erred in determining that these
claims are patent ineligible, and we sustain that rejection.
2. Dependent Claims 2–8, 10–13, and 21–26
The Examiner determines that dependent claims 2–8, 10–13, and 21–
26 also are directed to an abstract idea and fail to recite significantly more
than the identified abstract idea. See Final Act. 2–5, 13; Ans. 3–4.
Appellant does not challenge the patent ineligibility rejection of the
dependent claims separately. App. Br. 5; Reply Br. 2–3. Therefore, we also
sustain the patent ineligibility rejection of the dependent claims.
II. Obviousness Over Kusumoto and Altberg
A. Independent Claims 1 and 9
As noted above, the Examiner rejects independent claims 1 and 9 as
obvious over the combined teachings of Kusumoto and Altberg. Final
Act. 6–7. The Examiner determines that Kusumoto teaches or suggests most
of the limitations of claims 1 and 9, but the Examiner acknowledges that
Kusumoto does not appear to disclose explicitly, “displaying the web-based
advertisement only when the web-based advertisement is positioned within a
point of view of an avatar.” Id. at 7 (quoting App. Br. 10 (Claims App’x)).
However, the Examiner determines that Altberg teaches presenting an
advertisement “in the virtual reality world based on a view point of the
avatar in the virtual reality world.” Id. (citing Altberg ¶ 566). The
Examiner concludes that a person of ordinary skill in the art would have had
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reason to combine the teachings of Kusumoto and Altberg to achieve the
methods and systems recited in claims 1 and 9, respectively. Id.
Appellant contends that the Examiner improperly relies on Altberg’s
generic teachings to teach or suggest the more specific limitations of claims
1 and 9. App. Br. 7. In particular, Appellant contends:
Altberg does not provide any further detail regarding what is
meant by “based on a view point of the avatar in the virtual reality
world.” Without such additional details, it is impossible to
conclude that the above teaching of Altberg discloses that a web-
based advertisement is displayed only when the web-based
advertisement is positioned within a point of view of an avatar,
as required by claim 1. . . . The response to arguments does not
provide any further explanation as to how the generic “based on
a viewpoint of the avatar” language in any way describes the
specific limitations of claim 1, as already discussed above. Since
Altberg mentions models of virtual objects in the same sentence
as the “based on a view point of the avatar” language, Altberg’s
teachings could simply mean that Altberg uses the view point of
the avatar to determine where to place an advertisement on those
objects.
Id.; Reply Br. 3–4.
We find these contentions unpersuasive because Altberg discloses:
In one embodiment, the virtual reality world includes a
three dimensional model of a plurality of virtual objects; and the
advertisement is presented in the virtual reality world based on a
view point of the avatar in the virtual reality world.
Altberg ¶ 566 (emphasis added); see id., Fig. 1 (depicting avatar 101 passing
in front of advertisement 103). Altberg further explains that a user may be
represented by an avatar (id. ¶ 70), and, “[s]ince the user sees the virtual
world from the point of view selected by the user, the user can have an
unique experience of the virtual world, which is typically different from the
experiences of others” (id. ¶ 74). Referring to Altberg’s Figure 1, “the
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virtual bulletin board may be configured to update the content periodically
as the avatar (101) passing [sic] by the virtual bulletin board.” Id. ¶ 75; see
id. ¶ 77 (Virtual objects, such as virtual bulletin boards, virtual newspapers,
or virtual televisions, can be created in the virtual world to display the
advertisements.), ¶ 78 (“a virtual object can be configured to listen to, or
observe, the conversations of nearby avatars, determine topics of interest to
the avatars, and present relevant advertisements.”). Thus, because Altberg
discloses providing a unique experience to the user via its avatar and
presenting the advertisement in the virtual reality world based on a view
point of the avatar in the virtual reality world, we are persuaded that a person
of ordinary skill in the art would understand Altberg’s teachings to
encompass “displaying the web-based advertisement only when the web-
based advertisement is positioned within a point of view of an avatar.” See
Ans. 5. Consequently, we also are persuaded that the Examiner
demonstrates that the combined teachings of Kusumoto and Altberg render
independent claims 1 and 9 obvious.
B. Dependent Claims 2–8, 10–13, and 21–26
The Examiner determines that dependent claims 2–7, 10–12, and 21–
26 also are obvious over the combined teachings of Kusumoto and Altberg.
See Final Act. 7–12; Ans. 5–6. Appellant does not challenge separately the
obviousness rejection of claims 2, 4–7, 11, 12, and 21–26. See Reply Br. 4–
5 (“While separately allowable over the art of record, the Appellant refrains
from discussing the remaining dependent claims in view of their dependence
on otherwise allowable independent claims.”). For the reasons given above,
we are persuaded that the Examiner demonstrates that independent claims 1
and 9 are obvious over the combined teachings of Kusumoto and Altberg,
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and we also sustain the obviousness rejection of claims 2, 4–7, 11, 12, and
21–26.
Nevertheless, Appellant challenges separately the obviousness
rejection of claims 3 and 10, which depend from independent claims 1 and 9,
respectively. Each of claims 3 and 10 recites that “the virtual environment
contains metadata [and] the 3D engine translates the metadata into a
searchable web page.” App. Br. 10 (claim 3), 11 (claim 10) (Claims App’x)
(emphases added). Referring to Figure 2, the Specification explains that:
Virtual environment server 16 extracts any 3D context data, i.e.,
metadata, within the 3D environment, at step S34. The process
of extracting data from the virtual environment can take place on
virtual world client 20 or virtual environment server 16.
Rendering the HTML document containing the metadata can be
performed on virtual world client 20 to preserve client specifics,
i.e., language, IP address, location, and time of day.
Metadata can be extracted from intrinsic properties of the
3D environment in a number of ways. The metadata can include
volume names, e.g., room names, texture and object names such
as labels and resource file names, and document file name and
content, e.g., from a PowerPoint® document displayed in the
environment. Using metadata from the environment that is
within a reasonable proximity of the advertisement location is
another way that relevant metadata can be extracted from the 3D
environment. For example, metadata contained in the virtual
“room” that the advertisement is in can be used to populate the
HTML document that contains the advertisement. Having the
HTML document sufficiently populated with metadata ensures
that the advertising server supplies advertisements that are
relevant to the context of the region of 3D environment where the
advertisement is to be placed.
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Spec. ¶¶ 31–32 (emphases added); see id. ¶ 29 (describing a “trivial HTML
document”), ¶ 33 (describing additional metadata information).
The Examiner asserts that Kusumoto discloses that the virtual
environment contains metadata (Final Act. 8 (citing Kusumoto ¶¶ 77, 78))
and that the metadata is translated into a searchable web page (id. (citing
Kusumoto ¶¶ 61, 100–102)). In particular, Kusumoto teaches “transferring
aspects of the virtual world to another medium” (Kusumoto ¶ 61) and that
users may select advertisements presented on a webpage (id. ¶¶ 92, 100–
102).
Appellant contends, however, “while Kusumoto may disclose that
relational data is searched, Kusumoto does not disclose the translation of the
relational data into a web page, much less a searchable web page.” App.
Br. 8. In particular, Appellant contends that Kusumoto’s paragraphs 92 and
100–102 state that user participants select advertisements for display. “This
selection has nothing to do with metadata of any kind much less the
translation of metadata into a searchable web page, as required by claim 3.”
Reply Br. 4. We agree. Kusumoto discusses neither the use of metadata—
as defined in the Specification—in the virtual environment nor its translation
into a searchable web page, and the Examiner does not assert that Altberg
remedies this deficiency in Kusumoto. Thus, the Examiner fails to
demonstrate that Kusumoto teaches or suggests the limitations of claims 3
and 10, and we are persuaded that the Examiner erred in rejecting claims 3
and 10 as obvious over the combined teachings of Kusumoto and Altberg.
We do not sustain the Examiner’s obviousness rejection of claims 3 and 10,
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nor the obviousness rejection of claims 8 and 13, which depend directly
from claims 3 and 10, respectively.
DECISIONS
1. The Examiner did not err in rejecting claims 1–13 and 21–26 under
35 U.S.C. § 101, as directed to patent-ineligible subject matter.
2. The Examiner did not err in rejecting claims 1, 2, 4–7, 9, 11, 12, and
21–26 under 35 U.S.C. § 103, as obvious over the combined teachings
of Kusumoto and Altberg.
3. The Examiner erred in rejecting claims 3, 8, 10, and 13 under 35
U.S.C. § 103, as obvious over the combined teachings of Kusumoto
and Altberg.
4. Thus, on this record, claims 1–13 and 21–26 are not patentable.
CONCLUSION
Because we affirm the rejection of each of the claims on at least one
ground, we affirm the Examiner’s rejection of claims 1–13 and 21–26.
Claims Rejected 35 U.S.C. § Basis Affirmed Reversed
1–13 and 21–26 101 Eligibility 1–13 and 21–26
1–13 and 21–26 103 Kusumoto
and Altberg
1, 2, 4–7, 9, 11,
12, and 21–26
3, 8, 10,
and 13
Overall Outcome 1–13 and 21–26
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED