Ex parte Browning

• Decision Date: 20 June 2007
• Docket Number: Application 09/159,509,Appeal 2007-0700
• Parties: Ex parte DAN D. BROWNING, ETHAN D. JOFFE, and JARON Z. LANIER Patent 5, 559, 995 Technology Center 2100
• Court: Patent Trial and Appeal Board

Ex parte DAN D. BROWNING, ETHAN D. JOFFE, and JARON Z. LANIER Patent 5, 559, 995 Technology Center 2100

Appeal 2007-0700

Application 09/159, 509^[1]

United States Patent and Trademark Office, Patent Trial and Appeal Board

June 20, 2007

This Opinion is Not binding Precedent of the Board

Before FRED E. MCKELVEY, Senior Administrative Patent Judge, and HOWARD B. BLANKENSHIP and ALLEN R. MACDONALD, Administrative Patent Judges.

DECISION ON APPEAL

MACDONALD, Administrative Patent Judge.

AFFIRMED-IN-PART

The decision of the Examiner rejecting claims 10-43, 46-55 58-66, 97-104 and 106-108 is affirmed. The decision of the Examiner rejecting claims 44-45, 67-68 and 84-94 is reversed.

The following opinions follow: (1) a majority opinion authored by Judge MacDonald, joined by Senior Judge McKelvey, (2) a concurring opinion by Senior Judge McKelvey, and (3) an opinion concurring-in-part and dissenting-in-part authored by Judge Blankenship. Judge Blankenship would reverse the Examiner's rejection of all claims.

MacDONALD Administrative Patent Judge.

I. STATEMENT OF CASE

1. Appellants appeal under 35 U.S.C. § 134 from a final rejection of reissue claims 1-46, 48-94, and 97-108 entered April 10, 2001. We have jurisdiction under 35 U.S.C. § 6(b).

2. The Examiner has withdrawn the rejection of claims 1-9, 56-57, 69-83, and 105. (Supplemental Answer 3:1-2).

3. Claims 10-46, 48-55, 58-68, 84-94, 97-104, and 106-108 remain on appeal before us.^[2]

4. Independent claims 10 and 84 under appeal reads as follows:

10. A method for creating a data base representing a virtual world, the method comprising:

receiving a plurality of polygon representations of virtual objects;

selecting first and second virtual objects from said plurality of polygon representations of virtual objects;

grouping the first and second virtual objects into a three-dimensional grouped object;

assigning a grouping hierarchy for the first and second virtual objects, wherein the second virtual object is assigned as the child of the first virtual object; and

calculating an orientation and position of the child object relative to the first virtual object.

84. A computer program for creating a virtual world data base, wherein said computer program is embodied on computer-readable media and comprises instructions configured to:

read polygon representations of a plurality of virtual objects, including a first virtual object, a second virtual object, and a third virtual object;

select the first virtual object and the second virtual object from said plurality of virtual objects;

assign attributes to the first and second virtual objects;

group said first and second virtual objects into a grouped object, wherein said first and second virtual objects intersect;

represent the grouped object by at least one of the following:

a three-dimensional and rotatable wireframe object, and

a three-dimensional and rotatable polygon object;

assign a grouping hierarchy to the first and second virtual objects, wherein the second virtual object is assigned as the child of the first virtual object; and

calculate an orientation and position of the child object relative to the first virtual object.

5. A copy of Appellants' reissue claims 11-46, 48-55, 58-68, 85-94, 97-104, and 106-108 is set forth in the Claim Appendix of Appellants' Brief.

6. The Examiner rejected reissue claims 10-46, 48-55, 58-68, 84-94, 97-104, and 106-108 under 35 U.S.C. § 251 as being an improper recapture of surrendered subject matter (Supplemental Answer 2-12).

7. Claims 1-9, 56-57, 69-83, and 105 are not rejected.

II. ISSUES

The sole issue before the Board is whether Appellants have established that the Examiner erred in rejecting claims 10-46, 48-55, 58-68, 84-94, 97-104, and 106-108 under 35 U.S.C. § 251 based on recapture.

III. FINDINGS OF FACT

The following findings of fact are supported by a preponderance of the evidence.

A. The Invention

1. Appellants invented (U.S. Patent 5, 559, 995, Abstract):

A method and apparatus for creating virtual worlds wherein a user may begin with a database containing a limited pictorial representation of a desired virtual world and then edit the database to specify the remaining data needed to create the actual virtual world. In one embodiment of the present invention, a database containing a limited pictorial representation of a virtual world is communicated to a receiving unit, and a grouping unit collects various descriptions of the pictorial representation into selected groups. An attribute assigning unit then assigns attributes to the groups. The attributes may include group hierarchy, constraints of motion, color, texture or other features. The modified database is then communicated to a data coupling unit which couples real world data to the groups. Finally, a rendering unit renders the virtual world which looks and functions according to the specified attributes and the real world data.

B. Prosecution history of the original application

2. The patent sought to be reissued is based on Application 07/939, 834, filed September 2, 1992 (which we refer to as the "original application" even though it is the second application in the sequence), as a continuation of Application 07/621, 474, filed November 30, 1990, now abandoned.

3. As filed, the original application contained claims 1-7 including representative independent claim 1 which is reproduced below:

1. An apparatus for creating a virtual world data base, comprising:

receiving means for receiving a pictorial representation of the virtual world; and

grouping means, coupled to the receiving means, for grouping descriptions of the pictorial representation into selected groups.

4. On June 2, 1994, Appellants filed a Preliminary Amendment adding claims 8-10. 5. On March 15, 1995, the Examiner entered a Non-Final Office Action ("Non-Final Action").

6. Claims 1-10 were rejected on various grounds.

7. The prior art relied upon by the Examiner in rejecting the claims was:

Wexelblat

US 5, 021, 976

Jun. 4, 1991

Richburg

US 5, 159, 687

Oct. 27, 1992

8. Claims 1-7 were rejected under 35 U.S.C. § 102(e) as being anticipated by or, in the alternative, under 35 U.S.C. § 103 as being unpatentable over Wexelblat (which is prior art under 35 U.S.C. § 102(e)).

9. Claims 8-10 were rejected under 35 U.S.C. § 103 as being unpatentable over Wexelblat and Richburg (which is prior art under 35 U.S.C. § 102(e)).

10. On September 15, 1995, Appellants filed a first Amendment ("the First Amendment") responding to the Examiner's Non-Final Action.

11. The First Amendment similarly amended independent claims 1, 7 and 8. Claim 10 was canceled. Amended claim 1 is reproduced below (matter underlined added by the First Amendment):

1. An apparatus for creating a virtual world data base comprising:

receiving means for receiving a pictorial representation of objects in the virtual world; and

grouping means, coupled to the receiving means, for grouping descriptions of the pictorial representation of objects in the virtual world into selected groups of at least one of wireframe objects and polygon objects.

12. After entry of the First Amendment, the application claims were 1-9.

13. In the First Amendment, Appellants presented arguments with respect to the patentability of amended claims 1, 7, and 8.

14. Appellants' amendments and/or arguments (see below) addressed at least the following limitations of Appellants' amended claim 1:

(1) pictorial representation of objects in the virtual world;

(2) at least one of wireframe objects and polygon objects; and

(3) at least one of wireframe and polygon-based [virtual world];

Limitations (1) and (2) were added to claims 1 and 7 by the First Amendment.

Limitation (3) was added to the "virtual world" found in original claim 8.

15. In the First Amendment at page 6, last three lines, Appellants argued the following:

[Wexelblat's information handling] differs greatly from "a pictorial representation of objects in the virtual world" which are grouped into "at least one of wireframe objects and polygon objects".

The argument directly above addressed Finding of Fact 14 limitations (1) and (2) found in Appellants' amended claims 1 and 7.

16. In the First Amendment at page 9, Appellants further argued the following:

[Wexelblat] is directed towards the editing of information contained within a cyberspace, as opposed to virtual worlds drawn using wirefame objects and polygon objects.

The argument directly above addressed Finding of Fact 14 limitation (3) found in Appellants' amended claim 8.

17. On December 31, 1995, the Examiner entered a Final Office Action ("Final Action").

18. Amended claims 1-9 were rejected on various grounds.

19. Claims 1-7 were again rejected under 35 U.S.C. § 102(e) as being anticipated by or, in the alternative, under 35 U.S.C. § 103 as being unpatentable over Wexelblat (which is prior art under 35 U.S.C. § 102(e)).

20. Claims 8-9 were again rejected under 35 U.S.C. § 103 as being unpatentable over Wexelblat and Richburg (which is prior art under 35 U.S.C. § 102(e)).

21. On March 4, 1996, the Examiner conducted an interview with Appellants' representative. The Examiner entered an Interview Summary into the record stating:

Examiner and applicant's representative discussed their interpretations of the breadth of Wexelblat's teachings.

22. On April 2, 1996, Appellants filed a Second Amendment ("the Second Amendment") responding to the Examiner's Final Office Action.

23. The Second Amendment similarly and extensively amended independent claims 1 and 7. Dependent claims 2 and 3 were also amended, claims 8 and 9 were canceled, and new dependent claims 11 and 12 were added. Amended claim 1 is reproduced below (matter underlined...