Ex Parte Bancel et al

Patent Trial and Appeal Board

Mar 7, 2017

13681751 (P.T.A.B. Mar. 7, 2017)

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.
13/681,751 11/20/2012 Chris Bancel 45NK-218456 9905
133759 7590 03/09/2017
Sheppard Mullin Richter & Hampton LLP
12275 El Camino Real, Suite 200
San Diego, CA 92130
EXAMINER
PIERCE, WILLIAM M
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
03/09/2017 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):
dmipdocketing@ sheppardmullin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRIS BANCEL, RICH ALLEN,
and JONATHAN AVERY
Appeal 2016-005064
Application 13/681,751
Technology Center 3700
Before JILL D. HILL, JAMES J. MAYBERRY, and SEAN P. O’HANLON,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Chris Bancel et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s non-final decision rejecting claims 32—59 and 63.
Appellants’ representative presented oral argument on February 23, 2017.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-005064
Application 13/681,751
BACKGROUND
Independent claims 32 and 41 are pending. Independent claim 32,
reproduced below, illustrates the claimed invention.
32. A method implemented in a data processing system
having a programmed computer for enabling a plurality of
players to compete, over a plurality of time-limited rounds of a
gameplay session, in a puzzle-based game comprising a
plurality of puzzle components each comprising a plurality of
puzzle elements, each puzzle component having a respective
predefined solution, the method comprising:
providing, by the data processing system, at least one
puzzle component to each player, wherein at least one first
puzzle component provided to a first player playing against a
second player comprises a plurality of puzzle elements that are
common to at least one second puzzle component provided to
the second player;
enabling, by the data processing system, each player to
place a wager during at least one round;
enabling, by the data processing system, each player to
interact with their corresponding at least one puzzle component
to select a particular at least one corresponding predefined
solution determination path and to progress toward
determination of the corresponding predefined solution by
solving at least a portion of said plurality of puzzle elements;
determining, by the data processing system in accordance
with the at least one predefined scoring rule, for each round, a
puzzle solution score for each player that placed a wager during
said at least one round; and
determining, by the data processing system at a
conclusion of a last round of the gameplay session, a total
session score for each player based on the puzzle solution score
for each round.
REJECTIONS
Claims 32—59 and 63 stand rejected on the ground of non-statutory
double patenting. Non-Final Act. 4.
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Claims 32—59 and 63 stand rejected under 35U.S.C. § 101 as directed
to non-statutory subject matter. Non-Final Act. 4.
Claims 32—59 and 63 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Samberg (US 6,572,111 Bl; iss. June 3, 2003) and
GameColony.com. Non-Final Act. 14.
OPINION
Double Patenting
Appellants do not refute the double patenting rejection in the Appeal
Brief. Appeal Br. 2 n. 1. We therefore summarily sustain the double
patenting rejection.
Prior Art
The Examiner finds that Samberg discloses, inter alia, puzzle
components for a first player that are common to puzzle components for at
least a second player. Non-Final Act. 14. The Examiner finds that
Samberg’s Gin Rummy hand is such a puzzle component. Id. The
Examiner further finds that the hands are “common” because the Gin
Rummy hands are “identical.” Id. at 16.
Appellants argue that the Examiner’s finding is in error, because Gin
Rummy hands are not puzzle components with common elements. Appeal
Br. 20. According to Appellants, a first player playing against a second
player in Samberg “is not provided with a plurality of cards that are common
with cards provided to the [second] player,” because the first and second
players are dealt cards from the same deck such that they “necessarily
cannot share cards in common.” Id. (emphasis omitted).
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The Examiner responds that the term “common” is being construed to
mean the same, and therefore “[t]he mere fact that both players are given
cards is enough [] to describe both the first and second puzzle components as
‘common.’” Ans. 9. The Examiner considers all playing cards to be
“common.” Id.
We agree with Appellants that the Examiner’s finding is in error.
Appellants’ Specification defines the term “puzzle” as “‘a question, problem
or contrivance,”’ and lists a number of exemplary puzzles that differ from
card games. Spec 4—5. Given Appellants’ definition of the term “puzzle,”
and use of the term in Appellants’ Specification, we are not persuaded that a
hand of Gin Rummy is a puzzle component. The Examiner has not
explained how a hand of playing cards can be considered a question,
problem, or contrivance.
We therefore do not sustain the rejection of the claims as unpatentable
over Samberg and GameColony.com.
Non-Statutory Subject Matter
The Examiner determines that the pending claims are “directed to
nothing more than an abstract idea in the rules for playing a game.” Non-
Final Act 6. The Examiner additionally determines that: (1) there is no
sufficient transformation under the machine-or-transformation test “as the
[puzzles] and players remain the same after performing the steps in the
claimed invention;” and (2) the claimed “data processing system” is not a
particular apparatus because the game can be played without the use of the
data processing system. Id.
Appellants argue that their claims recite patent-eligible subject matter
because they recite additionally elements beyond an abstract idea and, in
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accordance with the machine-or-transformation test, they are “tied to a
particular machine or apparatus” and “recite transformation of a particular
article into a different state or thing.” Appeal Br. 7.
Identification of the Abstract Idea
In Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347 (2014), the
Supreme Court set forth an analytical “framework for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.” Id. at 2355 (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-
97 (2012)). The first step in the analysis is to “determine whether the claims
at issue are directed to one of those patent-ineligible concepts,” such as an
abstract idea. Id.
Appellants argue that the Examiner failed to identify an abstract idea
that is recited by the claims. Appeal Br. 14—15. The Examiner responds that
the abstract idea was identified as rules for playing a game. Ans. 7.
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider 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, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 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. (brackets in original) (quoting Mayo, 132 S.
Ct. at 1294).
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Turning to the first step of the Alice inquiry, we agree with the
Examiner that the pending claims are directed to a patent-ineligible abstract
concept of rules for playing a game. Ans. 7. The steps recited in
Appellants’ claims, including providing a puzzle, enabling a wager, enabling
interaction with the puzzle, and determining a score, are abstract processes
of displaying, collecting, and analyzing information of a specific content.
Information as such is an intangible. See Microsoft Corp. v. AT&T Corp.,
550 U.S. 437, 451 n.12 (2007). Information display, collection, and
analysis, even when limited to particular content, is within the realm of
abstract ideas. See, e.g., Internet Patents Corp. v. Active Network, Inc., 790
F.3d 1343, 1349 (Fed. Cir. 2015); Digitech Image Techs., LLC v. Elecs.for
Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); and CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011).
As recognized by the Federal Circuit in Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 715—16 (Fed. Cir. 2014), Bilski’s machine-or-
transformation test can provide a useful clue in the second step of the Alice
framework. Under the machine-or-transformation test, a claimed process is
patent-eligible under § 101 if: (1) it is tied to a particular machine or
apparatus; or (2) it transforms a particular article into a different state or
thing. See Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008).
Particular Apparatus
Regarding the machine-or-transformation test, Appellants contend
that the Examiner erred in requiring that a “particular apparatus” under the
machine-or-transformation test be essential to playing the game, and that the
claimed data processing system is essential to play of the claimed game.
Appeal Br. 8. According to Appellants, Bilski held that an apparatus
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satisfies the machine-or-transformation test when “(1) use of the data
processing system imposes meaningful limits on the claim’s scope, and (2)
the involvement of the data processing system in the claimed process is not
merely insignificant extra-solution activity.” Id. (citing In re Bilski, 545
F.3d at 966). Appellants appear to allege that the recited data processing
system imposes meaningful limits on the claims’ scope because it is recited
in each of the method steps of the claim, such that the steps of the claimed
method are performed by the data processing system. Id. at 9. Appellants
further contend that involvement of the data processing system “is not
merely insignificant extra-solution activity,” and that the claimed invention
“is not merely a game played on a data processing system,” because (1) the
claimed data processing system “is related to” software programs executed
thereon (e.g., multi-player software gaming applications), (2) can include
“mobile phones, personal computers, etc.,” and (3) can be integrated into
various social networking platforms. Id. at 10 (citing Spec. 15, 16).
Appellants further contend that the claimed data processing system is
a particular machine because “a generic computer programmed with specific
programming instructions transforms the generic computer into a special
purpose computer.” Appeal Br. 15—16 (citing In reAlappat, 33 F.3d 1526,
1543 (Fed. Cir. 1994)); Reply Br. 2.
The Examiner disagrees, arguing that Appellants have not explained
how the data processing system, recited throughout the claims, is essential to
play of the game. Ans. 2-4 (citing Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 716-17 (Fed. Cir. 2014)).
The Examiner has the better argument. Limiting the abstract concept
of rules and steps for playing a game to implementation on a known data
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processing system does not make the abstract concept patent-eligible under
35 U.S.C. § 101. As recognized by the Supreme Court, “the mere recitation
of a generic computer cannot transform a patent ineligible abstract idea into
a patent-eligible invention.” See Alice, 134 S. Ct. at 2358 (concluding
claims “simply instructing] the practitioner to implement the abstract idea
of intermediated settlement on a generic computer” not patent eligible); see
also Ultramercial, 772 F.3d at 715—16 (providing that claims merely reciting
abstract idea of using advertising as currency as applied to particular
technological environment of the Internet not patent eligible); and Accenture
Global Servs., GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1344-45
(Fed. Cir. 2013) (providing that claims reciting “generalized software
components arranged to [generate insurance-policy-related tasks based on
rules to be completed upon the occurrence of an event] on a computer” is not
patent eligible).
Transformation
Appellants also argue that the claimed invention involves a
transformation of data because the puzzle component(s) that are provided by
the data processing system are “modified (by the data processing system)
based on player interaction with the puzzle component.” Appeal Br. 11.
Appellants further contend that this the transformation of data “is not merely
insignificant extra-solution activity . . . because the claimed invention relates
to allowing a player to interact with his puzzle component in order to
progress toward completion of a solution to compete with other players and
win associated wagers.” Id. at 12; Reply Br. 3.
The Examiner disagrees, arguing that the alleged transformation of
data is not a sufficient transformation, because nothing changes to a different
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state or derives new capabilities. Ans. 4—5 (“there is merely a change in
location or of indicia and any meaning afforded to the indicia is dictated by
the rules themselves”).
The Examiner again has the better argument. The Federal Circuit has
held that the following do not satisfy the transformation prong of the
machine-or-transformation test: (1) collection and organization of data; and
(2) manipulation or reorganization of data. See CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d at 1371, 1375. The court concluded that
collecting, organizing, and manipulating data did not satisfy the
transformation prong because each action could be performed in the human
mind. See id. at 1373, 1376—77. Appellants’ own Specification discloses
that the claimed providing, enabling, and determining steps need not be
performed by a data processing system. See, e.g., Spec. 28—35 (describing
“Examplary Embodiment #1”). Although a data processing system may
enhance the claimed method, for example with displays or increased
processing speed, each of the steps can nonetheless be performed by a dealer
and the players.
Thus, considering the second step of the Alice inquiry, we agree with
the Examiner that nothing in claims adds “significantly more” to transform
the abstract concept of displaying, collecting, storing, and analyzing
information into a patent-eligible application. See Alice, 134 S. Ct. at 2357.
Rather, the claims simply incorporate a known data processing system to
perform the abstract concept of applying rules and performing steps for
playing a game, i.e., displaying, collecting, storing, and analyzing
information.
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Preemption
Appellants next argue that the claimed invention is directed to
statutory subject matter because the claims do not preempt an abstract idea
or tie up all action between participants in playing a game. Appeal Br. 6, 12
(citing Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. at 2351—52); Reply
Br. 3.
We are not persuaded by this argument. Although Alice was indeed
concerned with preemption, the Federal Circuit has stated that “[wjhile
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility. . . . Where a
patent’s claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, . . . preemption concerns are fully addressed and
made moot.” Ariosa Diagnostics Inc. v. Sequenom Inc., 788 F.3d 1371,
1376 (Fed. Cir. 2015). Thus, based on our analysis above, this argument is
rendered moot.
Dependent Claims
Appellants argue that the dependent claims were improperly rejected
without individually addressing their claimed features. Appeal Br. 17. The
Examiner contends that, to the contrary, “the examiner’s position is directed
to all the claims as being patent ineligible and that none of any features of
any of the claims overcome that position.” Ans. 8. Appellants contend, in
response, that a prima facie case must be establish for each claim
independently. Reply Br. 3^4.
We are not persuaded that the Examiner failed to establish prima facie
obviousness of the dependent claims. The Examiner stated that the claimed
method steps, generally, are directed to the abstract idea of rules and steps
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for playing a game. Each of the dependent claims recite rules and steps for
playing a game. We decline to find error in the Examiner’s decision not to
(1) recite each depended claim limitation separately, (2) state that the
limitation recites rules and steps for playing a game, and then (3) state that
recited rules and steps for playing a game are an abstract idea.
Conclusion
For the reasons set above, we sustain the rejection of the claims under
35 U.S.C. § 101 as directed to non-statutory subject matter.
DECISION
We AFFIRM the rejection of claims 32—59 and 63 on the ground of
non-statutory double patenting.
We AFFIRM the rejection of claims 32—59 and 63 under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.
We REVERSE the rejection of claim 32—59 and 63 under 32 U.S.C.
§ 103(a) as unpatentable over Samberg and GameColony.com
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).
AFFIRMED
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