Ex Parte van Os et alDownload PDFPatent Trial and Appeal BoardDec 26, 201712886530 (P.T.A.B. Dec. 26, 2017) 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. 12/886,530 09/20/2010 Marcel van Os 4860P9127US4 1733 45217 7590 APPLE INC./BSTZ BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP 1279 OAKMEAD PARKWAY SUNNYVALE, CA 94085-4040 EXAMINER LIDDLE, JAY TRENT ART UNIT PAPER NUMBER 3716 NOTIFICATION DATE DELIVERY MODE 12/28/2017 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): FIP_Group @bstz. com PTO.MAIL@BSTZPTO.COM PTO.MAIL@BSTZ.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARCEL VAN OS and MIKE LAMPELL Appeal 2016-004153 Application 12/886,530 Technology Center 3700 Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and SCOTT C. MOORE, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 13—26 and 30—32. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. CLAIMED SUBJECT MATTER The claims are directed to methods and systems for initiating a game. Claim 13, reproduced below, is illustrative of the claimed subject matter: 13. A computer-implemented method comprising: Appeal 2016-004153 Application 12/886,530 initiating, with a system, a multi-player gaming application, the system including memory and one or more processors coupled to the memory; receiving data, with the system, that identifies one or more of a user's friends to invite to play the multi-player gaming application based on a selection of one or more of a user's friends; receiving data, with the system, for one or more auto match player positions for playing the multi-player gaming application based on an auto-match function of a game service of the system that automatically fills one or more auto-match players associated with the one or more auto-match positions if necessary for meeting a minimum player requirement of the multi-player gaming application; and generating, with the system, data for presenting on a graphical user interface of the system, the data including a list of one or more invited friends with associated invite friend positions and one or more auto-match player positions, wherein at least one automatch player position to be presented on the graphical user interface includes a selectable invite friend option to replace the auto-match player position with an invite friend position for inviting a friend if the invite friend option is selected from within the automatch player position. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Cho US 2007/0218997 A1 Sept. 20, 2007 Kay US 2009/0104956 A1 Apr. 23, 2009 Lee US 7,937,440 B2 May 3, 2011 REJECTIONS Claims 13—26 and 30-32 are rejected under 35U.S.C. § 101 as being directed to ineligible subject matter. 2 Appeal 2016-004153 Application 12/886,530 Claims 13, 14, 17, 18, 20, 21, 24, 25, 30, and 31 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Kay. Claims 14—16, 21—23, 31, and 32 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Kay and Lee. Claims 19 and 26 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Kay, Lee, and Cho. OPINION §101 The claims subject to the § 101 rejection are argued as a group, for which we select claim 13 as representative under 37 C.F.R. § 1.37(c)(l)(iv). See App. Br. 6—12. A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. The Supreme Court has consistently held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable. See Alice Corp. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, an application of these concepts may be deserving of patent protection. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289, 1293—94 (2012). In Mayo, the Court stated that “to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state 3 Appeal 2016-004153 Application 12/886,530 the law of nature while adding the words ‘apply it.’” Mayo, 132 S. Ct. at 1294 (citation omitted). In Alice, the Court reaffirmed the framework set forth previously in Mayo “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. The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent- ineligible concept, then 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.” Id. (quoting Mayo, 132 S.Ct. at 1298, 1297). In Gottschalk, the Court, citing O’Reilly v. Morse (56 U.S. 62 (1853)), cautioned that a claim “so abstract and sweeping as to cover both known and unknown uses” is not directed to patent-eligible subject matter under 35 U.S.C. § 101. Gottschalk v. Benson, 409 US at 68. In Alice the Supreme Court reaffirmed this principle: We have long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable. We have interpreted § 101 and its predecessors in light of this exception for more than 150 years. We have described the concern that drives this exclusionary principle as one of pre-emption. Laws of nature, natural phenomena, and abstract ideas are ‘the basic tools of scientific and technological work. [Monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it, thereby thwarting the primary object of the patent laws. We have repeatedly emphasized this concern that patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity. 4 Appeal 2016-004153 Application 12/886,530 Alice, 134 S. Ct. at 2354 (quotations and citations omitted). The abstract idea to which claim 13 is directed is populating a multi player game with a combination of players. The claim lacks significantly more so as to limit it to patent-eligible subject matter. As the Examiner points out, were it not for the generic recitations of “computer- implemented,” “application,” “memory and one or more processors,” and “graphical user interface” this claim would in effect cover nearly every way one populates a game with players. Final Act. 10; Ans. 3 (analogizing the claimed subject matter to a game of pickup basketball). These recitations of physical structure are ancillary to the claim. As the Examiner points out, all of the steps of the claim could be performed, and all of the data of the claim, including the list, could be stored, in the mind of the method’s practitioner. Id. As the Examiner points out, without the generic computer-related recitations the claim would be met, for example, by going to a court and populating the game with a combination of players who happened to show up there and players specifically invited. Indeed, the Specification provides that the auto-match function can be based on, among other things, the player’s location and readiness to play, just as with a conventional pickup basketball game. See para. 148. Even a random player selection would meet the “auto-match function” limitation. This is similar to shuffling a deck of cards which our reviewing court has affirmed is, without more, insufficient to limit a claim to cover patent-eligible subject matter. See, e.g., In re Smith 815 F.3d 816, 819 (Fed. Cir. 2016). Similarly, as the Examiner also points out, the “invite” aspect of the claim would be met by calling a friend to come and play. Final Act. 10; Ans. 3. Again, this is a generic recitation of conventional gaming activity. Even if a particular algorithm for performing 5 Appeal 2016-004153 Application 12/886,530 the auto-match or sending an invite might themselves be patentable subject matter, that is not the issue before us. Reciting “insignificant [extra-]solution activity” not “central to the purpose of the claimed process” does not render claims patent eligible. See In re Bilski, 545 F.3d 943, 957, 962 (Fed. Cir. 2008) (citations and quotations omitted).1 The purpose of the claimed process before us is not auto-matching or inviting; it is populating the game with players. Auto-matching and inviting are recited only as broad generic and abstract concepts used to practice the claimed method. If there is anything arguably concrete or tangible about the claim it may be the inclusion of a selectable “invite friend option” at a particular position on the graphical user interface. However, the “option,” which need not take any particular form or be produced or executed through the use of any particular algorithm, can simply be implemented by pressing a button (e.g., 2654, 2656 in Fig. 26). In the Examiner’s pickup basketball analogy this button simply takes the place of choosing to populate the game with an invited player instead of a particular player who arrived at the court without invitation. To embody this particular aspect of the player selection step in the form of a button also constitutes no more than generic and conventional extra-solution activity. According to claim 13, the option or button on the user interface is presented at a location that identifies the auto-matched player to be replaced with an invited player. However, locating a button on a user interface in a manner that communicates some information about the results of pressing that button cannot reasonably be regarded as non- 1 The machine-or-transformation test discussed in In re Bilski remains “a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101.” Bilski v. Kappos, 130 S.Ct. 3218, 3227 (2010). 6 Appeal 2016-004153 Application 12/886,530 conventional. Indeed, Appellants’ entire disclosure on this point consists of one sentence that does not even mention the importance of the button’s particular location: “A user selection of an invite friend option 2654 or 2656 allows the user to replace the auto-match player with a player selected by the user.” See para. 150, also see Fig. 26. One would expect at least some explanation of the button’s purpose in being presented at a particular position in the graphical user interface if such buttons and their actions were regarded as anything but conventional. Thus, placing a button or option at a particular location in a user interface to communicate information about the result of pressing that button or selecting that option cannot, without more, serve to transform otherwise ineligible subject matter into patent-eligible subject matter. Bilski v. Kappos, 561 U.S. at 609 (2010) (quoting Parker v. Flook, 437 U.S. 584, 593 (1978)). Appellants, with claim 13, in effect, seek to obtain the exclusive right to essentially every technological innovation that may come hereafter that can perform the basic task of populating multiplayer games with a combination of invited and auto-matched players, using any conceivable type of “computer,” “application,” “memory and one or more processors,” “graphical user interface,” “auto-match function,” and “selectable invite friend option.” This broadly covers a method of organizing human activity that is a fundamental practice in the gaming arts. Claim 13 lacks any meaningful limitations relating to a particular algorithm or series of manipulative steps that must be undertaken to perform the claimed method. The “initiating,” “receiving data,” and “generating [] data,” steps may be performed by any conceivable process, algorithm, or machinery, including those not yet invented. The “auto-match function,” and “selectable invite friend option” may similarly take any form, either known or unknown. No 7 Appeal 2016-004153 Application 12/886,530 specific structure or transformative manipulative acts are required by the claim language. Instead, the claim recites only broad abstract concepts and desired results. We are unable to identify, and Appellants do not inform us of any language in the claim that serves to transform this unpatentable abstract idea into a patent-eligible application of the idea. Generic recitations “cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” Alice, 134 S. Ct. at 2358 -59. Finally, we cannot agree with Appellants that the Examiner’s guidelines regarding § 101 created a de facto rule that the Examiner must identify some case or example in which similar claims were held ineligible under § 101 to support a § 101 rejection. See App. Br. 7—8. First, rejections at the PTO must necessarily be able to antedate cases in which the particular legal principles involved undergo judicial review. Second, such a requirement would run counter to the principle of not allowing eligibility determinations to hinge on the so-called draftsman’s art. See Alice, 134 S.Ct. at 2358—59 (quoting Parker v. Flook, 437 U.S. 584, 593 (1978)). Here, the Examiner followed the Alice framework and correctly concluded that claim 13 was directed to ineligible subject matter under § 101. Appellants make many generic arguments without directing our attention to any specific claim language relied on to demonstrate otherwise. The Examiner may have expounded on the basis for the § 101 rejection in the Answer (see Final Act. 2—4, 10; Ans. 2—5), however, Appellants did not address the § 101 rejection at all in their Reply Brief leaving the Examiner’s § 101 analysis largely uncontroverted. The Board, in its appellate role, is primarily a tribunal of review. See Ex Parte Frye, 94 USPQ2d 1072, 1075-1077 (BPAI 2010)(precedential). We will not ordinarily scour the record to make arguments on Appellants’ behalf. SmithKline Beecham Corp. v. Apotex 8 Appeal 2016-004153 Application 12/886,530 Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006). It is up to Appellants to identity with specificity the supposed errors in the Examiner’s action for which they seek review. 37 C.F.R. § 41.37(c)(l)(iv). On the record before us, for the foregoing reasons, we sustain the Examiner’s rejection under § 101. § 103(a) The claims rejected on Kay alone are argued as a group, with claim 13 being representative. App. Br. 12—15. The claims rejected on Kay and Lee are argued based only on dependency. App. Br. 15. The Examiner, citing the band game depicted in Figures 21 A—22B of Kay and the associated description, found Kay to disclose the method of claim 13 with the exception of positioning the invite option on an auto- matched position. Final Act. 5—6. The Examiner reasoned that even in light of this difference between the claimed subject matter and the method of Kay’s application, the claimed subject matter would nevertheless have been obvious. Id. The Examiner correctly acknowledged that Kay allows for auto- matched player replacement with an invited player and also depicts an invite button, but does not specifically indicate if, or how, the invitation is correlated to a particular player location. The Examiner reasoned that, because band members are typically chosen for their ability to sing or play specific instruments, as is done with Kay’s automated matching function (Final Act. 6 citing Kay paras. 319, 326), it would have been obvious to provide that same functionality in the inviting option, e.g., providing a button or option to invite a drummer, a button or option to invite a vocalist, and so forth. Final Act. 6. 9 Appeal 2016-004153 Application 12/886,530 In arguing this rejection, Appellants first point out a fact not in dispute, that Kay fails to expressly disclose an invite option at an auto-match position. App. Br. 13—14. As discussed above, the Examiner acknowledged this. Appellants then contend that the Examiner is relying on a theory of inherency to account for this distinction. App. Br. 14—15. However, the Examiner correctly points out that the Examiner did not rely on inherency in rejecting claim 13. Ans. 5. Instead, the Examiner, following the framework set forth in Graham v. John Deere Co. (383 U.S. 1 (1966)), acknowledged the differences between the prior art and claimed subject matter at issue and, following the framework set forth in KSR Int’l. v. Teleflex (550 U.S. 398, 418 (2007)) clearly articulated reasoning supported by rational underpinnings as to why, despite those differences, the claimed subject matter reaches that which is obvious. Appellants do not identify, and we are unaware of, any reason why the Examiner’s articulated reasoning in this regard was not addressed in Appellants’ Appeal Brief. We recognize that, in the Examiner’s Answer, the Examiner embellished the rejection somewhat by additionally stating that the claimed subject matter is derived from the mere duplication of parts and rearrangement of Kay’s printed matter. Ans. 5—6. Nevertheless, the core factual findings and reasoning for the rejection remained the same. We are not apprised as to any reason why the Examiner’s analysis was not addressed prior to Appellants’ Reply Brief, which itself only makes a skeletal argument on this point.2 See Reply. Br. 2. 2 “[T]he Examiner has provided no evidence that one of skill in the art would believe Kay's location of an ‘Invite Friend’ option under the lead player position is inadequate to fulfill the band requirements and thus would be motivated to make the change. Instead, Appellant respectfully submits the entire motivation behind the modification of Kay as suggested by the Examiner is found in Appellant's claims. This is improper hindsight.” 10 Appeal 2016-004153 Application 12/886,530 37 C.F.R. § 41.41 provides, “[a]ny argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer, [] will not be considered by the Board for purposes of the present appeal, unless good cause is shown.” The Examiner’s obviousness analysis for claim 13 is both well-reasoned and uncontroverted. Accordingly, we sustain the § 103(a) rejection of claim 13 and of those claims argued therewith or argued based on dependency. We turn to Appellants’ arguments concerning claims 19 and 26, each of which contain the limitation, “generating data to present to the graphical user interface, the data indicative of an auto-match position that replaces the invite friend position that was declined by the friend or the friend failed to accept the invite within the certain time period.” App. Br. 16—17. Based on the language of these claims, we understand the limitation in question to require, after declination or non-responsiveness from an invited player, returning to the auto-match functionality. We do not find any specific findings or analysis from the Examiner concerning this particular aspect of claims 19 and 26. The Examiner’s findings and remarks concerning declination or non-responsiveness, and auto-matching, per se, are acknowledged. Final Act. 8—9; Ans. 6—8. However, the Examiner appears to overlook the thrust of Appellants’ argument set forth on page 16 of the Appeal Brief. Again, the Board, in its appellate role, is primarily a tribunal of review and although we are authorized to reject claims under 37 C.F.R. § 41.50(b) we will not ordinary substitute our analysis in the first instance for that of the Examiner. As this limitation goes unaddressed in the record before us, we cannot sustain the Examiner’s § 103(a) rejection of claims 19 and 26 on the grounds set forth by the Examiner. 11 Appeal 2016-004153 Application 12/886,530 DECISION The rejection of claims 13—26 and 30—32 under 35U.S.C. § 101 as being directed to ineligible subject matter is affirmed. The rejection of claims 13, 14, 17, 18, 20, 21, 24, 25, 30, and 31 under 35 U.S.C. § 103(a) as being unpatentable over Kay is affirmed. The rejection of claims 14—16, 21—23, 31, and 32 under 35 U.S.C. § 103(a) as being unpatentable over Kay and Lee is affirmed. The rejection of claims 19 and 26 under 35 U.S.C. § 103(a) as being unpatentable over Kay, Lee, and Cho is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.L.R. § 1.136(a). See 37 C.L.R. § 1.136(a)(l)(iv). ALLIRMED1 3 “The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed.” 37 C.L.R. § 41.50(a). 12 Copy with citationCopy as parenthetical citation