Ex Parte Shuster et al

Patent Trial and Appeal Board

Nov 19, 2018

13919776 (P.T.A.B. Nov. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/919,776 06/17/2013 Brian Mark Shuster
112918 7590 11/20/2018
Coleman & Horowitt, LLP
499 W. Shaw Ave., Ste. 116
Fresno, CA 93704
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.
IFL0D.003Al 4851
EXAMINER
ROBINSON, KITO R
ART UNIT PAPER NUMBER
3695
MAIL DATE DELIVERY MODE
11/20/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN MARK SHUSTER and
GARY STEPHEN SHUSTER
Appeal2017-008740
Application 13/919, 77 61
Technology Center 3600
Before JOSEPH A. FISCHETTI, PHILIP J. HOFFMANN, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
non-final rejection of claims 1---6, 8, 10, 12-16, and 18-25. We have
jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We AFFIRM.
1 According to the Appeal Brief, inventors Brian Mark Shuster and Gary
Stephen Shuster are the real parties in interest. Br. 2.
Appeal2017-008740
Application 13/919,776
THE INVENTION
Appellants claim "systems and methods for incentivizing users of one
application to try or use another application by, for example, enabling users
to transfer virtual objects between applications" (Abstract).
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A method for transferring virtual objects, the method
compnsmg:
determining that a user in a first application has obtained
a non-currency based first virtual object of a first type, the first
virtual object generated by the first application, the first
application comprising a first persistent online environment;
identifying a second application comprising a second
persistent online environment, the second persistent online
environment of a different type than the first persistent online
environment;
converting the first virtual object to a non-currency based
second virtual object of a second type usable with the second
app li cation;
providing the second virtual object to the second
application,
wherein converting the first virtual object to the second
virtual object comprises:
determining a first share of a quantity of the first
virtual object associated with the user;
determining a number of users associated with
shares of the quantity of the first virtual object who have
converted respective shares of the quantity of the first
virtual object to quantities of the second virtual object;
determining a conversion rate for converting the
first share of the quantity of the first virtual object to a
quantity of the second virtual object based, at least in
part, on the number of users;
converting the first share of the quantity of the first
virtual object to the quantity of the second virtual object
based, at least in part, on the conversion rate, and
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wherein providing the second virtual object to the
second application comprises requesting that the second
application provide the quantity of the second virtual
object to the user in the second application.
THE REJECTION
The following rejection is before us for review:
Claims 1---6, 8, 10, 12-16, and 18-25 under 35 U.S.C. § 101.
FINDINGS OF FACT
We adopt the Examiner's findings as set forth on pages 2-8 of the
Non-Final Action and on pages 2-10 of the Answer.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1---6, 8, 10, 12-16, and 18-25
under 35 U.S.C. § 101.
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."
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Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355 (2014)
( alteration in original) (internal citations omitted) ( citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. Although the Court in Alice
made a finding as to what the claims were directed to, we determine that the
plain language of the claims and the Specification provide enough
information to inform one as to what they are directed.
The steps in representative claim 1 result in2 :
converting the first share of the quantity of the first
virtual object to the quantity of the second virtual object based,
at least in part, on the conversion rate, and
wherein providing the second virtual object to the second
application comprises requesting that the second application
provide the quantity of the second virtual object to the user in
the second application.
The Examiner found that "[c]laim(s) 1-6, 8, 10, 12-16 and 18-25
is/are directed to converting a virtual object to another virtual object which
uses mathematical procedures for converting one form of numerical
representation to another (i.e. abstract idea)." Non-Final Act. 5---6. The
Examiner further found:
The claim(s) does/do not include additional elements that
are sufficient to amount to significantly more than the judicial
exception because the only additional limitations in the claim
relate to computerization of converting the first object to the
second object within a persistent online environment. The
persistent online environment would require generic computer
2 Our analysis is made based on considering the claims as a whole, but for
purposes of this discussion, we note the result phrase of the independent
claim to point to what the claims are directed.
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Application 13/919,776
comprising a processor and memory in order to perform basic
computer functions of accepting user input, manipulating that
information (i.e. converting the virtual object) and displaying
the results.
Non-Final Act. 7. The Specification states:
In some embodiments, an application may allow virtual objects
to be traded among users of the same application. However, the
application may prevent virtual objects from being traded or
converted for use with another application. In such cases, a
user of one application who wishes to trade virtual objects with
a user of another application may use a third party system ( e.g.,
a virtual object (VO) transfer system) to facilitate the trade as
described below.
Spec. ,r 20.
Based on the Examiner's findings and the Specification, we find that
the claims are directed to an object of value that is transferable between
applications through the intermediary of a conversion rate, which is a
fundamental economic principle because the object value is tradable, like a
commodity. The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357.
Also, we also agree with the Examiner that the steps in representative
claim 1, such as, "converting the first virtual object," "determining a first
share of a quantity of the first virtual object," "determining a number of
users associated with shares of the quantity of the first virtual object who
have converted respective shares," and "determining a conversion rate for
converting the first share of the quantity of the first virtual object to a
quantity of the second virtual object," constitute "analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354
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(Fed. Cir. 2016); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
13 5 5 (Fed. Cir. 2014) ( claims directed to certain arrangements involving
contractual relations are directed to abstract ideas). Thus, an object of value
which is transferable between applications through the intermediary of a
conversion rate is an "abstract idea" beyond the scope of§ 101.
As in Alice, we need not labor to delimit the precise contours of the
"abstract ideas" category in this case. It is enough to recognize that there is
no meaningful distinction in the level of abstraction between the concept of
an intermediated settlement, as discussed in Alice, and the concept of an
object of value that is transferable between applications through the
intermediary of a conversion rate, at issue here. Both are squarely within the
realm of "abstract ideas" as the Court has used that term. That the claims do
not preempt all forms of the abstraction or may be limited to application-
based value objects, do not make them any less abstract. See OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015) (citations
omitted) ("[T]hat the claims do not preempt all price optimization or may be
limited to price optimization in the e-commerce setting do not make them
any less abstract.").
Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer recitations to perform data reception, transmission,
calculation and linkage, 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 (Fed. Cir. 2016) (finding claims not abstract
because they "focused on a specific asserted improvement in computer
animation").
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The introduction of a computer3 into the claims would not alter the
analysis at Alice step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
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 "implemen[t]" an abstract idea
"on . . . a computer," that addition cannot impart patent
eligibility. This conclusion accords with the pre-emption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
featur[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice, 134 S. Ct. at 2358 (alterations in original) (internal citations omitted).
Instead, "the relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Id. at 2359. They do not.
Taking the claim elements individually, the function performed by a
computer at each step of the process would be purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query, computation and
retrieval----one of the most basic functions of a computer. All of these
3 We note that nowhere in the claims is a computer recited; at best,
claims 21-25 only require "a persistent online environment." We make this
analysis however for purposes of completeness based on the two-prong test
in Alice.
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computer functions are well-understood, routine, conventional activities
previously known to the trading industry. See Elec. Power Grp., 830 F.3d
at 1354; see also In re Katz Interactive Call Processing Patent Litig, 639
F.3d 1303, 1316 (Fed. Cir. 2011) ("Absentapossiblenarrowerconstruction
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 generic
computer to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellants' claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis-
access/display 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) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract); Two-Way Media Ltd. v.
Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The Specification, e.g., at paragraphs ,r,r 44, 45, discloses using
generic computer components in a conventional manner for their known
functions. The ordering of the steps is, therefore, ordinary and conventional.
The 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
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equipment and parameters that might be applied using this concept and the
particular steps such conventional processing would entail based on the
concept of information access under different scenarios. See, e.g., Spec.
,r 45 ( disclosing how "transfer system 420 can each include any type of
computing device," and "network 430 can include any type of network").
Thus, the claims at issue amount to nothing significantly more than
instructions to apply the abstract idea of information access and computation
using some unspecified, generic computer. Under our precedents, that is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice, 134 S. Ct. at 2360.
We have reviewed all the arguments (Br. 4--14) Appellants have
submitted concerning the patent eligibility of the claims before us that stand
rejected under 35 U.S.C. § 101. We find that our analysis above
substantially covers the substance of all the arguments that have been made.
But, for purposes of completeness, we will address various specific
contentions in order to make individual rebuttals.
Br. 6.
Appellants argue:
Here, there is no evidence supporting the Section 101
rejection, and no evidence that the claims are directed to "the
organization and comparison of data which can be performed
mentally and is an idea of itself' (see Office Action, p. 6, 11. 13-
14) or "simply converting one form of mathematical expression
to another" (see id., p. 7, 11. 8-9).
We disagree with Appellants. The Examiner analyzed the claims
using the Mayol Alice two-step framework, consistent with the guidance set
forth in the USPTO's JULY 2015 UPDATE: SUBJECT MATTER ELIGIBILITY" to
2014 INTERIM GUIDANCE ON PA TENT SUBJECT MATTER ELIGIBILITY (2014
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IEG). Ans. 2--4; Non-Final Act. 5-8. The Examiner found that "[c]laim(s)
1---6, 8, 10, 12-16 and 18-25 is/are directed to converting a virtual object to
another virtual object which uses mathematical procedures for converting
one form of numerical representation to another (i.e. abstract idea)." Ans. 2;
Non-Final Act. 5. The Examiner further found:
The claim(s) does/do not include additional elements that
are sufficient to amount to significantly more than the judicial
exception because the only additional limitations in the claim
relate to computerization of converting the first object to the
second object within a persistent online environment. The
persistent online environment would require generic computer
comprising a processor and memory in order to perform basic
computer functions of accepting user input, manipulating that
information (i.e. converting the virtual object) and displaying
the results.
Ans. 4; Non-Final Act. 7.
Also, there is no requirement that examiners must provide evidentiary
support in every case before a conclusion can be made that a claim is
directed to an abstract idea. See, e.g., Section IV, "JULY 2015 UPDATE:
SUBJECT MATTER ELIGIBILITY" to 2014 INTERIM GUIDANCE ON PATENT
SUBJECT MATTER ELIGIBILITY (2014 IEG), 79 Fed. Reg. 7 4618 (Dec. 16,
2014) ("The courts consider the determination of whether a claim is eligible
( which involves identifying whether an exception such as an abstract idea is
being claimed) to be a question of law. Accordingly, courts do not rely on
evidence that a claimed concept is a judicial exception, and in most cases
resolve the ultimate legal conclusion on eligibility without making any
factual findings." ( emphasis added) ( footnote omitted)). We agree that
evidence may be helpful in certain situations where, for instance, facts are in
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dispute, 4 but it is not always necessary. Based on the above analysis set
forth by the Examiner (Ans. 2--4; Non-Final Act. 5-8), we are unpersuaded
it is necessary in this case.
All that is required of the Office to meet its prima facie burden of
production is that the Examiner set forth the statutory basis of the rejection
and the reference or references relied upon in a sufficiently articulate and
informative manner as to meet the notice requirement of 35 U.S.C. § 132.
As the statute itself instructs, the Examiner must "notify the applicant,"
"stating the reasons for such rejection," "together with such information and
references as may be useful in judging of the propriety of continuing the
prosecution of his application." 35 U.S.C. § 132; see In re Jung, 637 F.3d
1356, 1363 (Fed. Cir. 2011). Here, as we found above, the Examiner has
made these findings as required by the statute. See Ans. 2----4; Non-Final
Act. 5----8.
Br. 7.
Appellants also argue:
Although the conversion rate itself may be a mathematical
expression that is used to convert quantities of a first virtual
object to quantities of a second virtual object, the fact that the
objects change form (not just change in number) precludes the
conversion of the virtual objects from falling under the
umbrella of "converting one form of mathematical expression
to another."
We disagree with Appellants. In Diehr, for example, the Court
4 See, e.g., MPEP § 2106.07(a)(III) (2018) ("The courts consider the
determination of whether a claim is eligible (which involves identifying
whether an exception such as an abstract idea is being claimed) to be a
question of law. Thus, the court does not require 'evidence' that a claimed
concept is a judicial exception, and generally decides the legal conclusion of
eligibility without resolving any factual issues." ( citations omitted)).
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established eligibility under § 101 for claims containing mathematical
formulas when the claim "implements or applies that formula in a structure
or process which, when considered as a whole," causes or performs, "e.g.,
transforming or reducing an article to a different state or thing." Diamond v.
Diehr, 450 U.S. 175, 192-93 (1981). In contrast, we fail to see how the
change in the value of an object constitutes transforming or reducing an
article into a different state or thing-a value still remains a value, albeit
different in number but the same in relative worth.
Br. 8.
Appellants further argue:
The claimed solutions represent a significant improvement over
traditional virtual environment technology by enabling objects
to be accessed in multiple environments even when the
environments are configured for different types of objects, data
or software. Therefore, the claimed solutions amount to an
inventive concept for resolving the particular problem of
transferring disparate objects from one virtual environment to
another, rendering the claims patent-eligible.
We disagree with Appellants. The question is whether the claims as a
whole "focus on a specific means or method that improves the relevant
technology" or are "directed to a result or effect that itself is the abstract idea
and merely invoke generic processes and machinery." McRO, Inc. v. Bandai
Namco Games Am., Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). In this case,
representative claim 1, as a whole, is focused on satisfying certain
contingencies for a "converting the first share of the quantity of the first
virtual object to the quantity of the second virtual object based, at least in
part, on the conversion rate," which we find supra is both a calculation and a
fundament economic principle-abstractions. Moreover, we disagree with
Appellants because "the addition of merely novel or non-routine components
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to the claimed idea [ does not] necessarily tum[] an abstraction into
something concrete." Ultramercial, 772 F.3d at 715.
Appellants repeat claim 1 and contend that the claim elements
"contain elements that represent significantly more than the abstract idea
itself." Br. 9.
We disagree with Appellants. First, in their argument on page 9-10 of
the Brief, Appellants constrain their argument to independent claim 1. But,
Appellants interchange the claimed word "application" with "persistent
online environment." The latter is only used in independent claims 21
and 22. The word "application" is only used in claim 1 which is argued, and
is broader than "persistent online environment." The term "application"5 is
a generic word covering processes that can be implemented by human
intervention or by machine. In light of the breadth of the claim, Appellants'
argument is not persuasive as to error in the rejection.
Second, as we found supra, the claims and Specification describe a
general purpose computer programmed to perform conventional functions in
carrying out an abstraction that does not amount to an inventive concept
such that the claims are significantly more than the abstract idea. See, e.g.,
Spec. ,r 45 ( disclosing how "transfer system 420 can each include any type
of computing device," and "network 430 can include any type of network").
Thus, the claims at issue amount to nothing significantly more than
instructions to apply the abstract idea of information access and computation
using some unspecified, generic computer.
5 The ordinary and customary definition of "application" is: "an act of
putting something to use" (https://www.merriam-
webster.com/dictionary/application (last visited Oct. 18, 2018)).
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Concerning claims 21 and 22, Appellants further argue that "the
qualitative alteration is an unconventional step that adds an additional
meaningful limitation to Claim 21, which amounts to significantly more than
any abstract idea." Br. 12.
We disagree with Appellants. The question in the second step of the
Patent-elhribilitv ana1vsis is not whether the process steps are (.:.; .,I ,/
unconventional, but whether the computer implementation of the process
steps involves "more than performance of 'well-understood, routine, [and]
conventional activities previously known to the industry.'" Content
Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d
1343, 1347--48 (Fed. Cir. 2014) (quoting Alice, 134 S. Ct. at 2359). Such an
analysis is a factual determination. See Berkheimer v. HP Inc., 881 F.3d
1360, 1369 (Fed. Cir. 2018) ("Whether something is well-understood,
routine, and conventional to a skilled artisan at the time of the patent is a
factual determination."). We find the Examiner's noting of generic nature of
the component parts recited in the claims provides sufficient evidence of a
generic computer system used to implement the abstraction ("[t ]he persistent
online environment would require generic computer comprising a processor
and memory in order to perform basic computer functions ... "; "[t]he
interface is also recited at a high level of generality with the only required
function of displaying, which is a well-known routine function of
interfaces"). Non-Final Act. 5, 7.
Appellants' remaining arguments on pages 13-14 of the Appeal Brief
either merely repeat claim limitations without substantive argument or
reference arguments made for other similar claims, and thus are
unpersuasive for the same reasons given above. A statement which merely
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points out what a claim recites will not be considered an argument for
separate patentability of the claim. See 37 C.F.R. § 4I.37(c)(l)(iv) (2017).
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1---6, 8, 10,
12-16, and 18-25 under 35 U.S.C. § 101.
DECISION
The decision of the Examiner to reject claims 1---6, 8, 10, 12-16, and
18-25 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).
AFFIRMED
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