Ex Parte van Os et al

Patent Trial and Appeal Board

Dec 26, 2017

12886530 (P.T.A.B. Dec. 26, 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.
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