Ex Parte AmaitisDownload PDFPatent Trial and Appeal BoardJan 22, 201814157884 (P.T.A.B. Jan. 22, 2018) Copy Citation 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. 14/157,884 01/17/2014 Lee Amaitis 10-2290-Cl 4691 63710 7590 INNOVATION DIVISION CANTOR FITZGERALD, L.P. 110 EAST 59TH STREET (6TH FLOOR) NEW YORK, NY 10022 EXAMINER YOO, JASSONH ART UNIT PAPER NUMBER 3717 NOTIFICATION DATE DELIVERY MODE 01/24/2018 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): patentdocketing @ cantor.com lkoro vich @ c antor. com phowe @ cantor.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LEE AMAITIS Appeal 2017-0040221 Application 14/157,8842 Technology Center 3700 Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and KENNETH G. SCHOPFER, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35U.S.C. § 134 from the rejection of claims 1—14 and 17. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Our decision references the Appeal Brief (“Appeal Br.,” filed Sept. 8, 2016) and Reply Brief (“Reply Br.,” filed Jan. 4, 2017), and the Examiner’ Answer (“Ans.,” mailed Nov. 4, 2016) and Final Office Action (“Final Act.,” mailed Aug. 5, 2015). 2 According to Appellant, the real party in interest is CFPH, L.P. Appeal Br. 3. Appeal 2017-004022 Application 14/157,884 BACKGROUND The Specification relates to “Amusement Devices and Games Involving Elimination of Game Elements.” Spec., Title. REPRESENTATIVE CLAIM Claim 1 is representative of the appealed claims and recites: 1. An apparatus comprising: a computing device; and a non-transitory computer readable medium having stored thereon a set of instructions that when executed by the computing device cause the apparatus to: receive, from a player in a game, a selection of a first plurality of numbers from a first set of numbers; eliminate a second plurality of numbers from the first set of numbers, in which eliminating the second plurality of numbers from the first set of numbers results in a second set of numbers that are the numbers remaining from the first set of numbers after the elimination of the second plurality of numbers; based on the second set of numbers including one or more of the first plurality of numbers, offer the player a first incentive to end the game; receive an indication that the player rejected the incentive; in response to the player rejecting the incentive, eliminate a third plurality of numbers from the second set of numbers, in which eliminating the third plurality of numbers from the second set of numbers results in a third set of numbers that are the numbers remaining from the second set of numbers after the elimination of the third plurality of numbers; and based at least in part on the third set of numbers including one or more of the first plurality of numbers, award the player a second incentive for winning the game. Appeal Br. 9. 2 Appeal 2017-004022 Application 14/157,884 REJECTIONS 1. The Examiner rejects claims 1—4 and 17 on the ground of nonstatutory double patenting as being unpatentable over claims 1—29 of U.S. Patent No. 8,632,387. 2. The Examiner rejects claims 1—14 and 17 under 35 U.S.C. § 101 as directed to no ineligible subject matter. DISCUSSION Double Patenting Appellant does not address the double patenting rejection in either the Appeal Brief or the Reply Brief. See Appeal Br. 3—7; Reply Br. 2—5. Thus, we summarily sustain the rejection. Ineligible Subject Matter Under 35 U.S.C. § 101, a patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” The Supreme Court has “long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Assn for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). The Supreme Court in Alice reiterated the two-step framework, set forth previously in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1300 (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, 134 S. Ct. at 2355. This framework applies to method and apparatus claims. Id. 3 Appeal 2017-004022 Application 14/157,884 at 2352, 2360. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. at 2355 (emphasis added) (citing Mayo, 132 S. Ct. at 1296—97). If so, the second step is to consider the elements of the claims “individually and ‘as an ordered combination”’ to determine whether the additional elements “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1297, 1298). 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. (alteration in original) (quoting Mayo, 132 S. Ct. at 1294). The Court acknowledged in Mayo, that “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Mayo, 132 S. Ct. at 1293. We, therefore, look to whether the claims focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea, and merely invoke generic processes and machinery. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). We agree with and adopt the Examiner’s findings and conclusions with respect to this rejection. See Final Act. 3—8; Ans. 4—13. As discussed below, we are not persuaded of error by Appellant’s arguments. Initially, we find unpersuasive Appellant’s argument that the Examiner has not established a prima facie showing that the claims are directed to an abstract idea or that the Examiner failed to make a prima facie showing that the claims are not directed to significantly more than the abstract idea. Appeal Br. 6; see also Reply Br. 2—\. In rejecting the pending 4 Appeal 2017-004022 Application 14/157,884 claims under § 101, the Examiner analyzes the claims using the Mayo/Alice two-step framework and clearly articulates the reasons why the claims are not statutory under § 101. See Final Act. 4—7; Ans. 4—13. Specifically, the Examiner looks to the language of the claims and notifies Appellant that the claims are directed to the abstract idea of “managing a game”, which we agree, is a mental exercise of managing a set of rules. Final Act. 4; Ans. 4, 10. And the Examiner finds that the claims are similar to those found abstract in Alice', Bilski v. Kappos, 130 S. Ct. 3218 (2010); Planet Bingo, LLC v. VKGS LLC, 576 Fed. Appx. 1005 (Fed. Cir. 2014); and In re Smith, 815 F.3d 816 (Fed. Ci. 2016). Ans. at 10. The Examiner further finds that the elements of the claim individually relate to management of particular portions of a game that are performed on a generic computer and/or may be performed mentally and that the claims when considered as a whole do not add anything more than when the limitations are considered individually. See Ans. 6—8. Still further, the Examiner finds that the use of a computer is not integral to the claimed invention and does not facilitate the process in a way that a person making calculations or computations could not because each of the claim limitations can be implemented by a person without a computer. Furthermore, the claims are not directed to an improvement to a specific technology. Ans. 11-12. Further, to the extent that Appellant argues that the Examiner has not provided sufficient evidence to support a prima facie case of ineligibility, we are aware of no controlling authority that requires the Office to provide “evidence,” and particularly “substantial evidence,” to support a determination that a claim is directed to an abstract idea. See Alice, 134 S. Ct. at 2355—57. Instead, the Federal Circuit has held that the USPTO carries 5 Appeal 2017-004022 Application 14/157,884 its procedural burden of establishing a prima facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for rejection, “together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.” See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Here we find that the Examiner has set forth the statutory basis of the rejection in a sufficiently articulate and informative manner as to meet the notice requirement of § 132 as to why the claims are patent-ineligible. Id.', see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 “is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection”). Appellant does not contend that the Examiner’s § 101 rejection was not understood, and we find that Appellant’s understanding is manifested in Appellant’s responses set forth in the Appeal Brief and Reply Brief. Appellant also argues that “the claims clearly do not preempt the alleged abstract idea”, because the alleged abstract idea “could still be performed by others without infringing these claims.” Reply Br. 3. However, preemption is not a separate test for eligibility and is inherently addressed within the Alice framework. See 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.” Id. Next, Appellant argues that the Examiner has improperly characterized the abstract idea as a method of organizing human activity, which was not identified as a category of abstract ideas in Alice. We 6 Appeal 2017-004022 Application 14/157,884 disagree. We note that “[a]n abstract idea can generally be described at different levels of abstraction” without impacting the patentability analysis. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016). Here, the claims may be said to be both directed to a method of organizing human activity and, at a different level of abstraction, to a method of managing a game. Thus, even if it were improper to categorize the claims as direct to a method of organizing human activity, we would not be persuaded that that indicates the claims are any less abstract. Appellant also asserts that the Examiner’s comparison to In re Smith and Planet Bingo are misplaced because the claims “present a new or original set of game inputs.” Reply Br. 3^4. We disagree and find the present claims squarely within the realm of those found ineligible in In re Smith. In that case, the Federal Circuit found that claims directed to conducting a wagering game are similar to other fundamental economic practices found abstract by the Supreme Court, i.e. similar to the method of exchanging financial obligations in Alice and similar to the method of risk hedging in Bilski. Smith, 815 F.3d at 818—819. We see no meaningful distinction between the claims here and the claims in Smith in that regard, and Appellant does not apprise us of any. Appellant asserts that the claims include an “original set of game inputs,” which are allegedly akin to “a new or original deck of cards” as discussed in Smith. Reply Br. 4. However, taking claim 1 as an example, the only game inputs that may be analogous to a deck of cards are a first and second plurality of numbers. We are not persuaded that such sets of numbers amount to any new and original piece of gaming equipment that would elevate the claims to eligibility. 7 Appeal 2017-004022 Application 14/157,884 Appellant argues that the claims amount to significantly more than the abstract idea itself. Reply Br. 4—5. To the extent Appellant argues that the Examiner has not provided evidence with respect to step two of the Alice analysis, we are unpersuaded regarding the requirement for evidence for the reasons discussed above. Further, Appellant indicates that the Examiner has limited the analysis strictly to hardware components with respect to Alice step two, which is against precedent that states that software can be patent eligible. Reply Br. 5. We disagree that the Examiner has limited the analysis as asserted. Rather, the Examiner not only finds that the claims require only generic computing equipment, but also finds that the claims are not directed to an improvement to a specific technology. Ans. 8, 11—12. And the Examiner specifically addresses each limitation of claim 1 in step two of the analysis, showing that each step may be performed not only by generic computer equipment, but also by a human game operator. These findings show that the steps of the claims themselves do not include any particular software improvements, but rather amount to no more than the execution of the abstract idea itself, i.e. each step is itself no more than management of part of a game, without any meaningful or significant technological improvement. For those reasons, we also disagree with Appellant’s argument that the claims here should be found eligible under the guidance of the Federal Circuit set forth in DDR Holdings. See Reply Br. 5 (citing DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, (Fed. Cir. 2014)). In DDR Holdings, 773 F.3d 1245, 1257, the Federal Circuit determined that the claims addressed the problem of retaining website visitors who, if adhering to the routine, conventional functioning of Internet hyperlink protocol, 8 Appeal 2017-004022 Application 14/157,884 would be transported instantly away from a host’s website after clicking on an advertisement and activating a hyperlink. The Federal Circuit, thus, held that the claims were directed to statutory subject matter because they claim a solution “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” Id. The court cautioned that “not all claims purporting to address Internet-centric challenges are eligible for patent,” and noted that in the claims at issue in DDR Holdings, the computer network was not “operating in its normal, expected manner.” Id. at 1258. We see no indication here that the claims are necessarily rooted in computer technology or that they require a computer operating in a manner that is not normal or expected. Rather, as indicated in the Specification, the claimed “computing device,” may be an “appropriately programmed general purpose computer[].” Spec. 1 56. Finally, we are not persuaded by Appellant’s argument that because the Examiner does not provide a rejection of the claims as anticipated or obvious, they “must then add something significantly more than just ‘managing a game.’” Appeal Br. 7. Specifically, we are not persuaded that novelty of any claim or claim limitation is relevant to the question of eligibility. Although the second step in the Alice framework is termed a search for an “inventive concept,” the analysis is not an evaluation of novelty or non-obviousness, but rather, a search for “‘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 [patent-ineligible concept] itself.’” Alice Corp., 134 S. Ct. at 2355. A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90. See also Diamond v. Diehr, 450 U.S. 175, 188—89 9 Appeal 2017-004022 Application 14/157,884 (1981) (“The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within categories of possibly patentable subject matter.”). Based on the foregoing, we are not persuaded of reversible error in the rejection of claim 1. Accordingly, we sustain the rejection of claim 1 as directed to ineligible subject matter. We also sustain the rejection of claims 2—14 and 17 for the same reasons and because Appellant does not provide separate arguments for those claims. CONCLUSION We AFFIRM the rejections of claims 1—14 and 17. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 10 Copy with citationCopy as parenthetical citation