Ex Parte Amaitis

Patent Trial and Appeal Board

Jul 18, 2018

14058450 (P.T.A.B. Jul. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/058,450 10/21/2013
63710 7590 07/20/2018
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
FIRST NAMED INVENTOR
LeeAmaitis
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
10-2288-Cl 7783
EXAMINER
COBURN, CORBETT B
ART UNIT PAPER NUMBER
3714
NOTIFICATION DATE DELIVERY MODE
07/20/2018 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
lkorovich@cantor.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
Appeal2016-006317
Application 14/058,450
Technology Center 3700
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Lee Amaitis (Appellant) seeks review under 35 U.S.C. § 134 of a final
rejection of claims 26-40 and 42-46, the only claims pending in the
application on appeal. Oral arguments were presented July 10, 2018. We
have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ).
1 Our decision will make reference to the Appellant's Appeal Brief ("App.
Br.," filed October 27, 2015) and Reply Brief ("Reply Br.," filed June 6,
2016), and the Examiner's Answer ("Ans.," mailed April 6, 2016), and Final
Action ("Final Act.," mailed January 27, 2015).
Appeal2016-006317
Application 14/058,450
The Appellant does not describe what is invented, but instead describes
various embodiments, some of which are claimed. Exemplary claim 45 is
reproduced below (bracketed matter and some paragraphing added).
45. A method comprising:
[1] determining, by at least one computer processor, that the
first player is a winner of a first game in a first tier of a plurality
of non-overlapping tiers of game play, in which the first player
is assigned to the first tier;
[2] in response to determining that the first player is a winner of
the first game, assigning, by the at least one computer
processor, the first player to a second of the plurality of tiers of
game play, in which the second tier of game play is higher than
the first tier of game play;
[3] after assigning the first player to the second tier,
determining, by the at least one computer processor, that the
first player is a winner of a second game in the second tier;
[ 4] causing, by the at least one computer processor, a second
player to be assigned to the first tier of game play;
[5] determining, by the at least one computer processor, that the
second player has paid a fee to move from the first tier of game
play to the second tier of game play;
and
[ 6] in response to determining that the second player has paid
the fee, causing, by the at least one computer processor, the
second player to be assigned to the second tier of game play.
The Examiner relies upon the following prior art:
Amaitis US 8,562,401 B2 Oct. 22, 2013
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Claims 26-40 and 42-46 stand rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter.
Claims 1-5 and 7-21 under the judicially created doctrine of obviousness
type double patenting as claiming the patentably indistinguishable subject
matter as another U.S. Patent.
ISSUES
The issues of eligible subject matter tum primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
The issues of obviousness type double patenting tum primarily on
whether the instant claims are patentably distinct from those of a prior
patent.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Amaitis
01. Amaitis claim 23 is:
A method comprising: assigning, by at least one computing
device operatively coupled to at least one server, a first player
to a first tier of game play of a plurality of tiers of game play;
receiving, by the at least one computing device, an indication
that a first player desires to play a first game; determining, by
the at least one computing device, that the first player is a
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winner of the first game, in which the game is against a second
player assigned to the first tier of game play; in response to
determining that the first player is the winner of the first game,
assigning, by the at least one computing device, the first player
to a second tier of game play of the plurality of tiers of game
play, in which the second tier includes a highest tier of the
plurality of tiers; receiving, by the at least one computing
device, an indication that the first player desires to play a
second game; determining, by the at least one computing
device, that there are sufficient players in the second tier ready
to play the second game; in response to determining that there
are sufficient players and in response to receiving the indication
that the first player desires to play the second game, facilitating,
by the at least one computing device, play of the second game
between the first player and a third player assigned to the
second tier of game play; determining, by the at least one
computing device, that the first player is a winner of the second
game; in response to determining that the player is the winner
of the second game, providing, by the at least one computing
device, the player with an award; assigning, by the at least one
computing device, a fourth player to the first tier of game play,
in which the fourth player is assigned to the first tier after the
first player is determined to be the winner; determining, by the
at least one computing device, that the fourth player has paid a
fee to move from the first tier of game play to the second tier of
game play; and in response to determining that the fourth player
has paid the fee, assigning, by the at least one computing
device, the player to the second tier of game play.
Amaitis Claim 23.
ANALYSIS
Claims 26-40 and 42-46 rejected under 35 U.S.C. § 1 OJ as directed to non-
statutory subject matter
Method claim 45 recites determining a winner, assigning a player, again
determining a winner, again assigning a player, determining fee payments,
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and again assigning a player. Thus, claim 45 recites receiving, analyzing,
and modifying data. None of the limitations recite implementation details
for any of these steps, but instead recite functional results to be achieved by
any and all possible means. Data retrieval, analysis, and modification are all
generic, conventional data processing operations to the point they are
themselves concepts awaiting implementation details. The sequence of data
reception-analysis-modification is equally generic and conventional. The
ordering of the steps is therefore ordinary and conventional. The remaining
claims merely describe process parameters, with no implementation details.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [] If so, we then ask, "[ w ]hat
else is there in the claims before us? [] To answer that question,
[] consider the elements of each claim both individually and "as
an ordered combination" to determine whether the additional
elements "transform the nature of the claim" into a patent-
eligible application. [The Court] described step two of this
analysis as a 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."
Alice Corp., Pty. Ltd. v CLS Bank Intl., 134 S.Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66 (2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. The Examiner determines the
claims to be directed to a method of playing a game. Final Act. 2.
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Although the Court in Alice made a determination as to what the claims
were directed to, we find that this case's claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 45 does not recite what it is directed to, but the
steps in claim 45 result in assigning players to a game absent any
technological mechanism other than a conventional computer for doing so.
The Specification does not describe what the invention relates to other than
the embodiments so described. The claims describe individual such
embodiments. Thus, all this evidence shows that claim 45 is directed to
assigning players to a game, i.e. game playing. This is consistent with the
Examiner's determination.
It follows from prior Supreme Court cases, and Bilski (Bilski v Kappas,
561 U.S. 593 (2010)) in particular, that the claims at issue here are directed
to an abstract idea. The concept of game playing is a fundamental
recreational practice long prevalent in our system of society. The use of
game playing is also a building block of ingenuity in human entertainment.
Our reviewing court has found rules for games to be abstract ideas. "We
conclude that Applicant's claims, directed to rules for conducting a wagering
game, compare to other 'fundamental economic practice[s]' found abstract
by the Supreme Court." In re Smith, 815 F.3d 816, 818 (Fed Cir 2016).
Thus, game playing, like hedging, is an "abstract idea" beyond the scope of
§ 101. See Alice Corp. Pty. Ltd. at 2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
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recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of game
playing at issue here. Both are squarely within the realm of "abstract ideas"
as the Court has used that term. See Alice Corp. Pty. Ltd. at 2357.
Further, claims involving data collection, analysis, and display, without
more, are directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016) (holding that "collecting information,
analyzing it, and displaying certain results of the collection and analysis" are
"a familiar class of claims 'directed to' a patent ineligible concept"); see
also In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir.
2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94
(Fed. Cir. 2016). Claim 45, unlike the claims found non-abstract in prior
cases, uses generic computer technology to perform data retrieval, analysis,
and modification and does not recite an improvement to a particular
computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims not abstract
because they "focused on a specific asserted improvement in computer
animation"). As such, claim 45 is directed to the abstract idea of receiving,
analyzing, and modifying data.
The remaining claims merely describe process parameters. We conclude
that the claims at issue are directed to a patent-ineligible concept.
The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
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Stating an abstract idea "while adding the words 'apply it'" is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[t]" an abstract
idea "on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
feature[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice Corp. Pty. Ltd., 134 S.Ct. at 2358 ( citations omitted).
"[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice Corp. Pty. Ltd., 134 S.Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for receiving, analyzing, and modifying data amounts to electronic
data query and retrieval----one of the most basic functions of a computer. All
of these computer functions are well-understood, routine, conventional
activities previously known to the industry. See Elec. Power Grp. v. Alstom
S.A., supra. Also see In re Katz Interactive Call Processing Patent
Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011)("Absent a possible
narrower construction of the terms "processing," "receiving," and "storing," .
. . those functions can be achieved by any general purpose computer without
special programming"). In short, each step does no more than require a
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generic computer to perform generic computer functions. As to the data
operated upon, "even if a process of collecting and analyzing information is
'limited to particular content' or a particular 'source,' that limitation does
not make the collection and analysis other than abstract." SAP America Inc.
v. InvestPic LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant's method add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-
modification is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction), Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (sequence of data retrieval, analysis, modification, generation, display,
and transmission), Two-Way Media Ltd. v. Comcast Cable Communications,
LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
controlling, and monitoring). The ordering of the steps is therefore ordinary
and conventional.
Viewed as a whole, Appellant's method claims simply recite the concept
of game playing as performed by a generic computer. To be sure, the claims
recite doing so by advising one to assign game players based on game tier
winners. But this is no more than abstract conceptual advice on the
parameters for such game playing and the generic computer processes
necessary to process those parameters, and do not recite any particular
implementation.
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The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The Specification spells out
different generic equipment2 and parameters that might be applied using this
concept and the particular steps such conventional processing would entail
based on the concept of game playing under different scenarios. They do
not describe any particular improvement in the manner a computer
functions. Instead, the claims at issue amount to nothing significantly more
than an instruction to apply the abstract idea of game playing using some
unspecified, generic computer. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice Corp.
Pty. Ltd. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 101 "in
ways that make patent eligibility 'depend simply on the
draftsman's art.'
Alice Corp. Pty. Ltd. at 2360.
As to Appellant's Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from Final Action 2 and Answer 7-8 and reach
similar legal conclusions. We now tum to the Reply Brief.
2 The Specification describes a general purpose computer. Spec. para. 77.
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We are not persuaded by Appellant's argument that
Each of Applicant's independent claims recites a series of
actions wherein a player is assigned to different tiers of play,
and specifies two different ways to reach the same tier of play,
and recites multiple different games. Nonetheless, the Office
Action provides no analysis of the claim limitations other than
merely quoting the body of a claim and asserting that the claim
generally recites "game rules," and makes no attempt to show
how the specific claim limitations are directed to an abstract
idea. Rather, the Office Action chooses to ignore the claim
limitations and indeed completely mischaracterizes the claims,
thereby resulting in an over generalization that is untethered to
the claim language.
Reply Br. 2-3. The actions Appellant describes are, as we determined supra,
some determination, i.e. decision, followed by an assignment. The method
claim is not even a complete game method, but a method of assigning
players to a game. This is even more abstract than a game itself. Simply
reciting rules for a game or part of a game is an abstraction. See In re Smith,
supra. The claim limitations are specific only in the sense they are specified
with words. The words themselves are broad and of immense scope. Each
determination and assignment is expressed as a function to be performed by
any and all possible means. Indeed, the first 94 Specification paragraphs
describe how little the claims are meant to be tied to any particular
technological implementation.
We are not persuaded by Appellant's argument that the Examiner's
determination of what the claims are drawn to
fails to even recognize that the claims are directed at different
tiers of play for multiple different games. This is because the
Office Action chooses to ignore the claim limitations in
attempting to identify an abstract idea, indeed completely
recharacterizing the claims from a multi-tier multi-game
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hierarchy to a simple "method of playing a game." Simply put,
the Office Action's inaccurate overgeneralization of the claims
never takes the claim limitations into account.
Reply Br. 4. Appellant appears to take issue with not distinguishing game
tiers from games. As a hierarchy is itself an abstract concept, simply
characterizing a game as being of a tiered hierarchy does not aid the
Appellant. "Adding one abstract idea ... to another abstract idea ... does
not render the claim non-abstract." RecogniCorp, LLC v. Nintendo Co.,
Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
We are not persuaded by Appellant's argument that the apparatus claims
recite using computer components and so cannot be done with paper and
pencil. The issue is whether the recited operations could be done with paper
and pencil even though the claims recite using a computer. See Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1368-1369
(Fed. Cir. 2015). The recited limitations of assigning players after making
simple determinations are within the scope of such paper and pencil
operation.
We are not persuaded by Appellant's argument that the remaining claims
recite significantly more. As we determined supra, the remaining claims do
no more than recite various parameters such as fees and payments and are
equally devoid of technological implementation details.
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Claims 26-40 and 42-46 rejected under the judicially created doctrine of
obviousness type double patenting as claiming the patentably
indistinguishable subject matter as another U.S. Patent
A mechanical document comparison of the instant claims with those of
U.S. Patent No. 8,562,401 shows that the instant claims are essentially
similar to those in the patent, but broadened by removing limitations.
Appellant does not contend otherwise. Thus, we agree with the Examiner
that the instant claims are not patently distinguishable from those of the
issued patent.
CONCLUSIONS OF LAW
The rejection of claims 26-40 and 42-46 under 35 U.S.C. § 101 as
directed to non-statutory subject matter is proper.
The rejection of claims 26-40 and 42-46 under the judicially created
doctrine of obviousness type double patenting as claiming the patentably
indistinguishable subject matter as another U.S. Patent is proper.
DECISION
The rejection of claims 26-40 and 42-46 is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
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AFFIRMED
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