Philippe Paquet et al.

Patent Trials and Appeals Board

Dec 13, 2019

12927342 - (D) (P.T.A.B. Dec. 13, 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.
12/927,342 11/12/2010 Philippe Paquet 0260289 1946
63649 7590 12/13/2019
DISNEY ENTERPRISES, INC.
C/O FARJAMI & FARJAMI LLP
26522 LA ALAMEDA AVENUE, SUITE 360
MISSION VIEJO, CA 92691
EXAMINER
SYROWIK, MATHEW RICHARD
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
12/13/2019 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@farjami.com
farjamidocketing@yahoo.com
ffarjami@farjami.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PHILIPPE PAQUET
and AMY KALSON
____________

Appeal 2018-004421
Application 12/927,342
Technology Center 3600
____________

Before KALYAN K. DESHPANDE, CHARLES J. BOUDREAU,
and SHARON FENICK, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

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DECISION ON APPEAL
STATEMENT OF CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s
decision to reject claims 1–9 and 11–21, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
INVENTION
Appellant’s invention relates to interactive advertising in electronic games.
Spec. 1:6–7.
Claims 1, 14, and 21 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal:
1. A method for execution by a processor of an electronic gaming
device to provide in-game interactive advertising with an option to
bookmark an advertisement, and a time and a date when a player is
notified of the advertisement, in a bookmark record in a memory of the
electronic gaming device, the method comprising:
determining, by the electronic gaming device, an in-game
position of the player within a predetermined location of an electronic
game environment;

1 This Decision refers to Appellant’s Appeal Brief (“App. Br.,” filed Feb. 1, 2018)
and Reply Brief (“Reply Br.,” filed Mar. 21, 2018), the Examiner’s Non-Final
Office Action (“Non-final Act.,” mailed Nov. 3, 2017) and Answer (“Ans.,”
mailed Mar. 14, 2018), and the original Specification (“Spec.,” filed Nov. 12,
2010).
2 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.
App. Br. 2.
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rendering, on a display of the electronic gaming device, in
response to the determining, the advertisement within the electronic
game environment, the electronic game environment being executed by
the electronic gaming device;
detecting, by the electronic gaming device, when the player
reaches the advertisement;
notifying, by the electronic gaming device, the player of an
option to bookmark the advertisement within the electronic game
environment;
receiving, by the electronic gaming device, a selected option
from the player bookmarking the advertisement;
storing, by the electronic gaming device, the selected option, and
the time and the date when the player is notified of the advertisement,
in the bookmark record in the memory of the electronic gaming device;
and
displaying, on the display, at least one portion of the bookmark
record upon the player leaving the electronic game environment,
wherein the at least one portion of the bookmark record includes a
hypertext link to additional advertising content related to the
advertisement.
Appeal Br. 25–26 (Claims App.).
REFERENCES
Martin et al. (“Martin”) US 2010/0257054 A1 Oct. 7, 2010
Jobs et al. (“Jobs”) US 2009/0265214 A1 Oct. 22, 2009
Lerman et al. (“Lerman”) US 2009/0012867 A1 Jan. 8, 2009
Manzo US 2006/0063587 A1 Mar. 23, 2006
REJECTIONS ON APPEAL
The Examiner rejects claims 1–9 and 11–21 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Non-Final Act. 3–7.
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The Examiner rejects claims 1, 2, 4, 5, 8, and 12–18 under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Martin in view of Jobs. Non-Final
Act. 7–14.
The Examiner rejects claims 3, 6, 11, and 19 under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Martin in view of Jobs and Lerman. Non-
Final Act. 14–16.
The Examiner rejects claims 7, 9, 20, and 21 under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Martin in view of Jobs, Lerman, and Manzo.
Non-Final Act. 16–17.
ANALYSIS
Rejection 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, or [a] new and useful
improvement thereof.” 35 U.S.C. § 101. However, the Supreme Court has long
interpreted § 101 to “contain[] an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
In Alice, the Supreme Court reiterated the two-step framework previously set
forth in Mayo Collaborative Servs. v. Prometheus Labs., 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 this analysis is to “determine
whether the claims at issue are directed to one of those patent-ineligible concepts,”
e.g., to an abstract idea. Id. Concepts determined to be abstract ideas include
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certain methods of organizing human activity, such as fundamental economic
practices (id. at 219–20; Bilski v. Kappos, 561 U.S. 593, 611 (2010)); mathematical
formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes
(Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). If it is determined that the claims
are directed to a patent-ineligible concept, the second step of the analysis requires
consideration of 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 78, 79). In other words, the claims must contain an
“inventive concept,” or some element or combination of elements “sufficient to
ensure that the patent in practice amounts to significantly more than a patent upon
the [abstract idea] itself.” Id. at 217–18 (quoting Mayo, 566 U.S. at 72–73).
The PTO recently published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“2019 Guidance”). Under that guidance, we first look 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 fundamental economic practices, or mental processes) (“Step 2A,
Prong 1”); and
(2) additional elements that integrate the judicial exception into a practical
application (see MPEP §§ 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017,
Jan. 2018)) (“Step 2A, Prong 2”).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then (“Step 2B”) look to whether the
claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, and conventional” in the field (see MPEP
§ 2106.05(d)); or
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(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 52–56.
The Examiner determines that the claims are directed to an abstract idea.
Non-Final Act. 3. Specifically, the Examiner finds that the claims are directed to
“storing a bookmark/record of an advertisement for later access by an individual”
and that the claimed subject matter is comparable to concepts found to be abstract
by the courts, including concepts relating to advertising, marketing or sales
activities or behaviors. Id. at 3–4; see Ans. 5–7. According to the Examiner, the
recited step of “determining . . . an in-game position of the player within a
predetermined location of an electronic game environment” is a “me[n]tal task”
that may be performed by a human, “such as by visual inspection/tracking.” Non-
Final Act. 20; Ans. 10.
The Examiner further determines that the claim elements, considered
individually and in combination, do not include additional elements that are
sufficient to amount to significantly more than the abstract idea. Non-Final Act. 4–
5. In particular, the Examiner finds that the claims “do not recite . . . an
improvement to another technology or technical field, an improvement to the
functioning of a computer itself, or meaningful limitations beyond generally
linking the use of an abstract idea to a particular technological environment.” Id.;
see also Ans. 6–7, 9, 11. According to the Examiner, the claim limitations “are
merely instructions to implement the abstract idea on a computer and require no
more than a generic computer to perform generic computer functions that are well-
understood, routine and conventional activities previously known to the industry.”
Non-Final Act. 5; see also Ans. 7–8, 11.
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Appellant argues that the claims are not directed to an abstract idea, but
rather to “a specific and well-defined approach to providing in-game interactive
advertising” that “improves the performance of the electronic gaming device at
least by advantageously enabling the delivery of advertising content to a user
engaged in game play without negatively affecting the user’s involvement in that
game play.” Appeal Br. 12–13. Appellant further argues that the claims recite
meaningful limitations that represent sufficiently inventive concepts to transform
the nature of the claims into a patent-eligible application. Id. at 13. For example,
Appellant argues that independent claim 1 “recites elements transforming the input
received from the player into digital data, which is then stored in the bookmark
record, followed by an additional transformation from the bookmark record into a
display.” Id. at 14. Finally, Appellant argues that the claims do not preempt all
ways of providing in-game interactive advertising to users. Id.; Reply Br. 4.
Step 2A, Prong 1
Under Step 2A, Prong 1 of the 2019 Guidance, we agree with the Examiner
that the claims recite a judicial exception, i.e., an abstract idea. See Non-Final Act.
3. Specifically, we agree with the Examiner that the claims recite a mental
process. See Ans. 10. Additionally, we agree with the Examiner that the claimed
subject matter is comparable to concepts relating to advertising, marketing or sales
activities or behaviors, and thus that the claims recite methods of organizing
human activity, in particular commercial interactions in the form of advertising
activity. See Non-Final Act. 4; Ans. 7.
For example, independent claim 1 recites “determining, by the electronic
gaming device, an in-game position of the player within a predetermined location
of an electronic game environment” and “detecting, by the electronic gaming
device, when the player reaches the advertisement.” Under their broadest
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reasonable interpretation, these “determining” and “detecting” limitations cover
performance of the limitations in the mind (as do corresponding limitations in
independent claims 14 and 21), but for the recitation of generic components. That
is, other than the “processor” and “electronic gaming device” recited as performing
the recited steps, nothing in the claims precludes those steps from being performed
in the human mind. For example, but for the recitation of the “processor” and
“electronic gaming device,” the claims encompass mentally determining an in-
game position of the player within a predetermined location of an electronic game
environment and mentally detecting when the player reaches the advertisement, for
example by visual observation. Thus, these limitations recite mental processes,
and thus an abstract idea.
Claim 1 further recites “rendering, on a display of the electronic gaming
device, in response to the determining, the advertisement within the electronic
game environment, the electronic game environment being executed by the
electronic gaming device” and “notifying, by the electronic gaming device, the
player of an option to bookmark the advertisement within the electronic game
environment.” In reciting “rendering . . . the advertisement within the electronic
gaming environment” and “notifying . . . the player of an option to bookmark the
advertisement within the electronic game environment,” the claim recites
commercial interactions in the form of advertising activity (as do independent
claims 14 and 21 with corresponding limitations). Thus, these limitations recite
certain methods of organizing human activity. Indeed, claims 1, 14, and 21 as a
whole recite a method of organizing human activity in that the claimed invention is
a method of providing in-game advertising with an option for the user to bookmark
an advertisement, which is a commercial interaction in the form of advertising
activity. See, e.g., claim 1 (preamble); Spec. 5:2–3, 6:6–11; Appeal Br. 12
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(Appellant describes claims as directed to “providing in-game interactive
advertising”).
Accordingly, the claims recite mental processes and methods of organizing
human activity as identified in the 2019 Guidance and, thus, an abstract idea.
Step 2A, Prong 2
Under Step 2A, Prong 2 of the 2019 Guidance, we next look to whether the
claims recite additional elements that integrate the abstract idea into a practical
application. We determine that they do not. For example, claim 1 additionally
recites “receiving, by the electronic gaming device, a selected option from the
player bookmarking the advertisement,” “storing, by the electronic gaming device,
the selected option, and the time and the date when the player is notified of the
advertisement, in the bookmark record in the memory of the electronic gaming
device,” and “displaying, on the display, at least one portion of the bookmark
record upon the player leaving the electronic game environment.” These
“receiving,” “storing,” and “displaying” steps are recited at a high level of
generality (i.e., as general means of gathering, storing, and displaying the
bookmark data) and amount to insignificant extra-solution activity. See 2019
Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(g).
We further agree with the Examiner that the claims merely recite generic
computer components. See Non-Final Act. 5. For example, claim 1’s recited
“processor,” “electronic gaming device,” “memory,” and “display” are recited at a
high level of generality, i.e., as generic components performing generic computer
functions of computer processing and receiving, storing, and displaying data.
These generic limitations merely apply the abstract idea using generic computer
components and indicate a field of use or technological environment (i.e.,
electronic gaming) for the advertising activity. See 2019 Guidance at 55; MPEP
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§§ 2106.05(f), (h). The claim limitations do not include any particular machine
that is integral to the claim. See 2019 Guidance at 55; MPEP § 2106.05(b).
Although Appellant argues that the claimed invention “improves the
performance of the electronic gaming device at least by advantageously enabling
the delivery of advertising content to a user engaged in game play without
negatively affecting the user’s involvement in that game play” (Appeal Br. 12–13),
we agree with the Examiner that the claims do not recite a technological
improvement in addition to the abstract idea. See Non-Final Act. 4–5; Ans. 7, 9,
11. For example, the claims “do not require an arguably inventive set of
components or methods, such as measurement devices or techniques, that would
generate new data. They do not invoke any assertedly inventive programming.”
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016). That
is, the claims do not reflect an improvement in computer functionality itself, or to
any other technology or technical field. See 2019 Guidance, 84 Fed. Reg. at 55;
MPEP § 2106.05(a).
Thus, even in combination, these additional limitations do not integrate the
abstract idea into a practical application because they do not impose any
meaningful limits on practicing the abstract idea.
Accordingly, we agree with the Examiner that the claims are directed to an
abstract idea.
Step 2B
Under Step 2B of the 2019 Guidance, we agree with the Examiner that there
are no specific limitations beyond the judicial exception, i.e., the abstract idea, that
are not well-understood, routine, and conventional in the field. See Non-Final
Act. 5–6; Ans. 8–11. For example, claim 1 additionally recites “wherein the at
least one portion of the bookmark record includes a hypertext link to additional
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advertising content related to the advertisement.” Notwithstanding Appellant’s
argument that the hypertext link “allow[s] the user to interact with the displayed
record to access additional advertising content related to the advertisement selected
in the electronic game environment” (App. Br. 14), the “hypertext link” limitation
simply appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the abstract idea. See,
e.g., Jobs ¶¶ 34, 48 (teaching advertisement with “embedded link” to advertiser’s
web site); Lerman ¶ 28 (listing “hyperlinks” as one of several forms of digital
advertising content).
Reevaluating the extra-solution activity of “receiving, by the electronic
gaming device, a selected option from the player bookmarking the advertisement,”
“storing, by the electronic gaming device, the selected option, and the time and the
date when the player is notified of the advertisement, in the bookmark record in the
memory of the electronic gaming device,” and “displaying, on the display, at least
one portion of the bookmark record upon the player leaving the electronic game
environment” (see 2019 Guidance, 84 Fed. Reg. at 56 (stating that a conclusion
under Step 2A that an additional element is insignificant extra-solution activity
should be reevaluated in Step 2B)), we find nothing unconventional in these steps
of gathering, storing, and displaying the bookmark data. Appellant argues that
claim 1 is “sufficiently transformative” because it “recites elements transforming
the input received from the player into digital data, which is then stored in the
bookmark record, followed by an additional transformation from the bookmark
record into a display” (Appeal Br. 14), yet these extra-solution steps require no
more than generic computer components performing generic functions (i.e.,
gathering, storing, and displaying data) that are well-understood, routine, and
conventional activities previously known to the industry. As discussed above
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under Step 2A, Prong 2, the recited “processor,” “electronic gaming device,”
“memory,” and “display” in claim 1 amount to no more than mere instructions to
apply the abstract idea using generic computer components. Mere instructions to
apply an abstract idea on a generic computer do not provide an inventive concept.
Alice, 573 U.S. at 223–24.
Although Appellant argues that claim 1 recites “meaningful limitations that
represent sufficiently inventive concepts” (Appeal Br. 13), Appellant has not
shown that the claims on appeal add any specific limitation beyond the judicial
exception that is not “well-understood, routine, and conventional” in the field. See
MPEP § 2106.05(d). Appellant also provides no evidence of how the ordered
combination is unconventional or amounts to significantly more than an abstract
idea.
Appellant further argues that the claims do not preempt all ways of
providing in-game interactive advertising to users. Appeal Br. 14; Reply Br. 4.
This argument is unavailing. As noted by the Examiner, the absence of complete
preemption is not dispositive. Ans. 11–12; see, e.g., Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (“While preemption may
signal patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility.”); Ultramercial, Inc. v. Hulu, LLC, 722 F.3d
1335, 1346 (Fed. Cir. 2013) (“[T]he Supreme Court has stated that, even if a claim
does not wholly pre-empt an abstract idea, it still will not be limited meaningfully
if it contains only insignificant or token pre- or post-solution activity—such as
identifying a relevant audience, a category of use, field of use, or technological
environment.”) (citations omitted), vacated and remanded, WildTangent, Inc. v.
Ultramercial, LLC, 573 U.S. 942 (2014) (remanding for further consideration in
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light of Alice). Thus, even if the claims do not preempt the abstract idea, that alone
is insufficient to render the claims patent-eligible.
Accordingly, considering the claim elements individually and as an ordered
combination, we agree with the Examiner that there are no meaningful claim
limitations that represent sufficiently inventive concepts to transform the nature of
the claims into a patent-eligible application of the abstract idea.
For the foregoing reasons, we sustain the Examiner’s rejection under
35 U.S.C. § 101 of independent claim 1, as well as independent claims 14 and 21
having commensurate limitations and dependent claims 2–9, 11–13, and 15–20,
which are not separately argued.
Rejection Under 35 U.S.C. § 103(a)
Claims 1–5, 7–9, 11–16, and 18–21
The Examiner finds that Martin teaches the following limitations as recited
in independent claim 1 and similarly recited in independent claims 14 and 21:
determining, by the electronic gaming device, an in-game
position of the player within a predetermined location of an electronic
game environment;
rendering, on a display of the electronic gaming device, in
response to the determining, the advertisement within the electronic
game environment, the electronic game environment being executed by
the electronic gaming device;
Non-Final Act. 8; see also id. at 12–13, 17. Specifically, the Examiner finds that
Martin “discloses rendering an advertisement in response to determining an
in-game player position,” i.e., in response to a player entering or approaching a
“trigger area.” Ans. 13 (citing Martin ¶¶ 65–66).
Appellant argues that Martin fails to teach these limitations, particularly that
Martin does not teach “the electronic gaming device render[ing] an advertisement
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in response to a determination of the player’s in-game position performed by that
same electronic gaming device.” Appeal Br. 18 (emphasis omitted). According to
Appellant, “in Martin, the rendering of advertising content is performed by a
gaming device based on tracking of player progress by game servers, but is not
performed in response to tracking of player’s in-game position determined by the
electronic gaming device itself.” Reply Br. 4 (emphasis omitted) (citing Martin
¶ 65).
We agree with the Examiner that Martin teaches or suggests “determining,
by the electronic gaming device, an in-game position of the player” and
“rendering, . . . in response to the determining, the advertisement” as claimed.
Martin states that “[t]he game can select which ad to display dynamically (via an
auction)” (Martin ¶ 65) and that the “auction for a set of billboards is run when a
player enters their trigger area” (id. ¶ 66). That is, the game displays an
advertisement based on an auction when a player enters the trigger area. We find
this to at least suggest to one of ordinary skill in the art that the electronic gaming
device displays an advertisement in response to the electronic gaming device
determining an in-game position of the player, i.e., determining that a player enters
the trigger area.
Although Appellant points to Martin’s statement that “[a]ccurate statistics
about players’ in-game activities can be maintained by game servers in order to
track players’ progress,” Martin’s disclosure indicates that the game servers
maintain the statistics to track players’ progress and “to get a picture of the type of
player” for targeted advertising. Id. ¶ 65; see Appeal Br. 17. To the extent that
Appellant argues game servers determine the player’s in-game position in Martin,
we do not construe “statistics about players’ in-game activities” or “players’
progress” to be synonymous with the “in-game position of the player.” Martin’s
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disclosure does not preclude the electronic gaming device from determining the in-
game position of the player, for example, from data provided by the game servers
or otherwise, e.g., for display purposes. We agree with the Examiner that such a
determination by the electronic gaming device is taught or suggested in Martin.
Accordingly, we are not persuaded that the Examiner erred in relying on
Martin for the “determining” and “rendering” limitations in independent claims 1,
14, and 21.
For the foregoing reasons, we sustain the Examiner’s rejection of
independent claims 1, 14, and 21, and dependent claims 2–5, 7–9, 11–13, 15, 16,
and 18–20 not argued separately, under 35 U.S.C. § 103(a).
Dependent Claim 6
Claim 6 depends from independent claim 1 and recites “wherein the
notifying comprises instructing the player to perform a required action to
bookmark the advertisement.” The Examiner relies on Martin’s teaching of “the
player perform[ing] a required action to bookmark the advertisement,” as well as
Lerman’s teaching of “instructing the player to perform the required action.” Non-
Final Act. 15 (citing Martin ¶ 65 (“Players can, for example, bookmark ads by
‘shooting’ at them.”); Lerman ¶¶ 51 (“interaction prompts”), 61 (“instructions on
how to interact with the advertisement”)); see also Ans. 16–17.
Appellant argues that “Lerman merely teaches providing instructions to a
player for viewing an advertisement,” not bookmarking the advertisement. Appeal
Br. 21 (emphasis omitted).
We find Appellant’s argument unpersuasive, as Appellant attacks the
Lerman reference individually whereas the Examiner’s rejection is based on both
Martin and Lerman. One cannot show nonobviousness by attacking references
individually where the rejection is based upon a combination of references. In re
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Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see Ans. 6–11. The test for
obviousness is what the combined teachings of the references would have
suggested to one of ordinary skill in the art. In re Keller, 642 F.2d 413, 425
(CCPA 1981). We agree with the Examiner that “instructing the player to perform
a required action to bookmark the advertisement” would have been obvious in
view of a combination of Martin’s teaching of a required action to bookmark the
advertisement (i.e., shooting at ads) with Lerman’s teaching of instructing the
player to perform a required action (i.e., prompts or instructions on how to interact
with an advertisement). See Non-Final Act. 15; Ans. 16–17; Martin ¶ 65; Lerman
¶¶ 51, 61.
Accordingly, we sustain the Examiner’s rejection of dependent claim 6
under 35 U.S.C. § 103(a).
Dependent Claim 17
Claim 17 depends from independent claim 14 and recites “wherein the
electronic game environment comprises an augmented reality environment.” The
Examiner relies on Martin for this limitation. Non-Final Act. 13 (citing Martin
¶ 65). Specifically, the Examiner interprets the recited “augmented reality
environment” to encompass the “virtual” environment taught by Martin. Ans. 14–
16; see Martin ¶ 65.
Appellant argues that “Martin merely teaches a virtual game environment,
and fails to disclose, teach, or suggest the elements that distinguish an augmented
reality environment, as understood in the art, from a merely virtual video game
environment.” Appeal Br. 19.
We agree with Appellant that the term “augmented reality” has a specific
meaning different than Martin’s “virtual” environment, and that a person with
ordinary skill in the art would have understood the differences between
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“augmented reality” and a “virtual” environment. The plain and ordinary meaning
of “augmented reality” is “technology that superimposes a computer-generated
image on a user’s view of the real world, thus providing a composite view.”3
Martin does not teach superimposing a computer-generated image onto a real-
world view. Although the Examiner acknowledges that an “augmented reality”
involves “the combination of real world and computer generated data,” we find
that the Examiner’s characterization of Martin’s “players, monsters, billboards,
etc.” as computer-generated data and “keywords, shots fired, etc.” as real-world
data, combined to create an augmented reality environment, is strained. See Ans.
14–15 (citing U.S. Patent Publ’n No. 2008/0163379 A1 ¶ 38 (published July 3,
2008); Martin ¶ 65).
For the foregoing reasons, we do not sustain the Examiner’s rejection of
dependent claim 17 under 35 U.S.C. § 103(a).

3 See Augmented reality, en.oxforddictionaries.com,
https://en.oxforddictionaries.com/definition/augmented_reality (last visited
Nov. 25, 2019).
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CONCLUSION
Because we have affirmed at least one ground of rejection with respect to
each claim on appeal, the Examiner’s rejection of claims 1–9 and 11–21 is
affirmed. See 37 C.F.R. § 41.50(a)(1).
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

Claims
Rejected 35 U.S.C. § Basis Affirmed Reversed
1–9, 11–21 101 Eligibility 1–9, 11–21
1, 2, 4, 5, 8,
12–18
103(a) Martin, Jobs 1, 2, 4, 5, 8,
12–16, 18
17
3, 6, 11, 19 103(a) Martin, Jobs,
Lerman
3, 6, 11, 19
7, 9, 20, 21 103(a) Martin, Jobs,
Lerman, Manzo
7, 9, 20, 21
Overall
Outcome
1–9, 11–21