COGNANT LLC

Patent Trials and Appeals Board

Sep 2, 2020

2019006368 (P.T.A.B. Sep. 2, 2020)

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.
15/265,397 09/14/2016 Gabriel Leydon MZI-002C1 1382
142528 7590 09/02/2020
GOODWIN PROCTER LLP
PATENT ADMINISTRATOR
100 Northern Avenue
BOSTON, MA 02210
EXAMINER
MOSSER, ROBERT E
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
09/02/2020 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):
JGoodwin@goodwinlaw.com
PSOUSA-ATWOOD@GOODWINPROCTER.COM
US-PatentBos@goodwinlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GABRIEL LEYDON and HALBERT NAKAGAWA
Appeal 2019-006368
Application 15/265,397
Technology Center 3700
Before JOHN C. KERINS, MICHELLE R. OSINSKI, and
JEREMY M. PLENZLER, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 24–43, the only claims now pending,
under 35 U.S.C. § 101 as being directed to patent ineligible subject matter.2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as MZ IP Holdings,
LLC. Appeal Br. 2.
2 Claims 1–23 are canceled. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Claims 24, 34, and 43 are independent. Claim 24 is reproduced
below.
24. A method using at least one computer processor,
comprising:

enabling, using the at least one computer processor, a user to
interact within a first virtual environment,

wherein the first virtual environment comprises a plurality
of measurable units configured to measure progress of the
user within the first virtual environment;

monitoring, using the at least one computer processor, at least
one characteristic of the user within the first virtual environment;

detecting, using the at least one computer processor, when the at
least one characteristic of the user is below a predetermined
threshold within the first virtual environment, and, based
thereon:

displaying, using the at least one computer processor, a
first interactive rewarded playable unit within at least a
portion of the first virtual environment,

wherein the user plays the first interactive rewarded
playable unit to generate additional measurable
units for use within the first virtual environment by
achieving a predetermined milestone in the first
interactive rewarded playable unit;

activating, using the at least one computer processor, the
first interactive rewarded playable unit in response to a
request by the user to engage in the first interactive
rewarded playable unit;

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displaying, using the at least one computer processor, a
second interactive rewarded playable unit within at least a
portion of the first interactive rewarded playable unit at
one or more intervals while the user engages in the first
interactive rewarded playable unit; and

activating, using the at least one computer processor, the
second interactive rewarded playable unit in response to a
request by the user to engage in the second interactive
rewarded playable unit,

wherein a probability of the user generating additional
measurable units with the second interactive rewarded playable
unit is configured using one or more computer-implemented
predictive models based at least in part on a history of user
interactions with the first interactive rewarded playable unit.

OPINION
Legal Principles
The patent laws provide that “[w]hoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent therefor, subject to
the conditions and requirements of this title.” 35 U.S.C. § 101. However,
“this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. v.
CLS Bank Int’l, 573 U.S. 208, 216 (2014) (citation omitted).
Mayo Collaborative Services established a framework to distinguish
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts. Alice,
573 U.S. at 217 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 77 (2012)). First, we determine whether the claims are directed
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to a patent-ineligible concept. Id. If so, we next consider the claim elements
individually and as an ordered combination to determine whether additional
elements transform the claims into a patent-eligible application. Id. This
search for an inventive concept seeks an element or combination of elements
“sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself.” Id. at 217–18 (alteration
in original).
Recently, the PTO published guidance for evaluating subject matter
eligibility. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (USPTO Jan. 7, 2019) (“Revised Guidance”). Under Step One,
a determination is made whether the claims are in a statutory category of
patentable subject matter, i.e., do they recite a process, machine,
manufacture, or composition of matter, identified in 35 U.S.C. § 101.
Revised Guidance, 84 Fed. Reg. at 50, 53–54; see Alice, 573 U.S. at 216;
Mayo, 566 U.S. at 70.
Next, at Revised Step 2A, Prong One, an evaluation is made whether
a claim recites a judicial exception, i.e., an abstract idea as set forth in
Section I of the Revised Guidance, a law of nature, or a natural
phenomenon. Revised Guidance, 84 Fed. Reg. at 54. To determine if a
claim recites an abstract idea, specific limitations that recite an abstract idea
must be identified (individually or in combination), and a determination
made whether the limitation(s) fall(s) within one or more of the subject
matter groupings in Section I of the Revised Guidance. Id. (A. Revised
Step 2A). The three groupings are (1) mathematical concepts, relationships,
formulas, or calculations, (2) certain methods of organizing human activity,
including fundamental economic principles and practices, commercial
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interactions, managing personal behavior, relationships, or interactions, and
(3) mental processes and concepts formed in the human mind. Id. at 52.
If a claim recites a judicial exception, Prong Two of Revised Step 2A
requires a determination to be made whether the claim as a whole integrates
the judicial exception into a practical application. Id. “A claim that
integrates a judicial exception into a practical application will apply, rely on,
or use the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception.” Id. at 53. If a judicial
exception is integrated, the claim is patent eligible. See id. at 54–55.
If a claim does not “integrate” a recited judicial exception, the claim is
directed to the judicial exception and further analysis is required under Step
2B to determine whether the claim contains additional elements, considered
individually or in combination, that provide an inventive concept, such that
the additional elements amount to significantly more than the exception
itself. Id. at 56.
Step One: Does Claim 24 Fall within a Statutory Category of § 101?
Appellant argues independent claims 24, 34, and 43 as a group.
Appeal Br. 6–15. We select claim 24 as representative of the issues that
Appellant presents in the appeal, and claims 25–43 stand or fall with claim
24. 37 C.F.R. § 41.37(c)(1)(iv).
We examine whether claim 24 recites one of the enumerated statutory
classes of subject matter, i.e., process, machine, manufacture, or
composition of matter, eligible for patenting under 35 U.S.C. § 101.
Claim 24 refers to “[a] method” including a series of operative steps, which
recites one of the statutory classes (i.e., a process) under 35 U.S.C. § 101.
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Step 2A, Prong One: Does Claim 24 Recite a Judicial Exception?
We next look to whether claim 24 recites any judicial exceptions,
including certain groupings of abstract ideas, i.e., mathematical concepts,
certain methods of organizing human activity, or mental processes.
The Examiner determines that claim 24 is directed to an abstract idea,
specifically, a certain method of organizing human activity. Final Act. 3–5.
The Examiner states that the method of organizing human activity involves
managing personal behavior or relationships through claim steps involving
“enabling . . . a user to interact within a virtual environment,” “monitoring
. . . at least one characteristic of the user within the virtual environment,”
“detecting . . . when the at least one characteristic of the user is below a
predetermined threshold,” “displaying . . . a first interactive rewarded
playable unit, . . . wherein the user plays the first interactive rewarded
playable unit,” “activating . . . the first interactive rewarded playable unit in
response to a request by the user to engage,” and similar claim steps
involving a “second interactive rewarded playable unit.” Ans. 4–5
(emphasis omitted).
We agree that these claim steps detail a method of organizing human
activity. The claimed invention was developed in recognition of “[p]layers
[] engaging with games in new ways and [] seeking experiences” not
previously available, and the need for “new ways to attract players who are
willing to provide revenue and encourage players to undertake revenue-
generating activities.” Spec. ¶¶ 4, 6. Claim steps resulting in the attraction
and encouragement of players is, indeed, the organization of human activity
or behavior. The particular claim steps highlighted by the Examiner,
although they stop short of including outcome-determinative rules, provide a
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roadmap or rules by which a player navigates or is navigated through a first
virtual environment having first and second interactive rewarded playable
units, i.e., games, as well as providing for additional measurable units, or
rewards, for certain unspecified achievements in playing the games.
Appellant takes issue with the Examiner’s inclusion of the claim steps
involving “at least the detecting, displaying, and activating steps,” and their
associated “wherein” clauses, as being considered part of the abstract idea in
the form of a certain method of organizing human behavior. Reply Br. 2.
Although those terms, read in a vacuum, might not immediately convey that
they have any effect on human behavior, Appellant fails to account for the
fact that those steps, as claimed in full, are all performed by a computer
processor for the express purpose of influencing how and in what manner a
human/user interacts with the playable units or games. We do not find error
in the Examiner’s consideration of these steps as contributing to the overall
method of organizing or managing personal behavior.
Managing personal behavior falls within the abstract idea exception
subgrouping of certain methods of organizing human activity. Revised
Guidance, 84 Fed. Reg. at 52. Thus, claim 24 recites at least a method of
managing personal behavior which is one of certain methods of organizing
human activity identified in the Revised Guidance, and, thus, an abstract
idea. We note that “performance of a claim limitation using generic
computer components does not necessarily preclude the claim limitation
from being in the . . . certain methods of organizing human activity
grouping, Alice, 573 U.S. at 219–20.” See Revised Guidance, 84 Fed. Reg.
at 52 n.14.

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Step 2A, Prong Two: Does Claim 24 Recite Additional Elements that
Integrate the Judicial Exception into a Practical Application?
Following the Revised Guidance, having found that claim 24 recites a
judicial exception, we next determine whether the claim recites “additional
elements that integrate the exception into a practical application” (see MPEP
§§ 2106.05(a)–(c), (e)–(h)). See Revised Guidance, 84 Fed. Reg. at 54.
The preamble of claim 24 recites “[a] method using at least one
computer processor.” Appeal Br. 17 (Claims App.) The body of claim 24
recites the computer processor, first and second virtual environments that
may be in the form of modules, and, inferentially, a display as a user
interface, in a generic manner. The Examiner specifically finds that these
potential additional elements fail to meet the criteria in the various
subsections of MPEP § 2106.05, and they otherwise do not implicate a
particular machine, but only generic components. Ans. 6–7.
Appellant argues that, even if an abstract idea is recited, the claims
integrate the abstract idea into a practical application that improves
computer-implemented technology related to virtual environments, in that
“[t]he claimed approach . . . allows a user to engage with first and second
interactive rewarded playable units to generate measureable units for use in a
virtual environment, thereby enhancing the user’s experience and/or
condition in the virtual environment.” Appeal Br. 7–8. This argument fails
to identify any improvement in computer-implemented technology; instead
the improvement, if any, lies in an enhanced user experience that forms part
of the abstract idea of managing human behavior itself.
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Appellant likens claim 24 to the claims at issue in DDR Holdings,3 in
which “the claimed solution [was] necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks.” Appeal Br. 8. Appellant maintains that “the
claimed solution is necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer-generated
virtual environments.” Id. Claim 24 does not, however, address any
problem existing with the generation and presenting of a virtual
environment. The Specification evidences that the “main game” and the
“support game” that correspond to the claimed first and second virtual
environments are of several to many types of already existing virtual
environments. Spec. ¶¶ 40, 42. The so-called “problem,” as noted above, is
how to attract players willing to spend money, and then encouraging them to
undertake revenue-generating experiences. Id. at ¶¶ 6, 44. The solution is a
method that influences or manages the activity of the user so as to generate
that revenue.
Appellant further argues that,
like Enfish,[4] where the claims describe a specific improvement
to the way computers operate through the use of a self-referential
table, the instant claims describe a specific improvement to the
way computers operate through the use of interactive rewarded
playable units that generate measurable units for use within a
virtual environment.
Appeal Br. 10. However, neither the claim language nor any description in
the Specification evidences that any improvement is brought about by the

3 DDR Holdings v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014).
4 Enfish LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
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claimed invention in the operation of the computer on which the method is
practiced.
Appellant also asserts that “the claimed implementation of the
interactive rewarded playable units was not previously performable on a
computer, and the claimed approach therefore represents an improvement in
computer functionality.” Reply Br. 3, citing McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016); see also, Appeal Br. 10–
11. Appellant does not point to any evidence in support of this assertion,
and our review of the Specification leads us to conclude the opposite, i.e.,
that the interactive rewarded playable units in the form of a main game and
support game, are simply resident on the claimed processor, or, in described
embodiments, on one or more main game servers and game servers of one or
more support game providers. Spec. ¶ 56; Fig. 1. No mention is made as to
any aspect of the interactive rewarded playable units that allow them to be
performed on a computer, where they previously could not. More
importantly, no language appearing in claim 24 states or infers an aspect of
the interactive rewarded playable units that brings about such a result.
In short, the additional elements discussed above: (1) are not applied
with any particular machine; (2) do not improve the functioning of a
computer or other technology; (3) do not effect a transformation of a
particular article to a different state; and (4) are not applied in any
meaningful way beyond generally linking the use of the judicial exception to
a particular technological environment. See MPEP §§ 2106.05(a)–(c), (e)–
(h). Consequently, the claimed invention does not integrate the abstract idea
into a “practical application.” Thus, claim 24 is directed to an abstract idea,
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which is a judicial exception to patent eligible subject matter under
35 U.S.C. § 101.
Step 2B: Does Claim 24 Recite an Inventive Concept?
We next consider whether claim 24 recites any elements, individually
or as an ordered combination, that transform the abstract idea into a patent-
eligible application, e.g., by providing an inventive concept. Alice, 573 U.S.
at 217–18. The Revised Guidance similarly states, under Step 2B,
“examiners should . . . evaluate the additional elements individually and in
combination . . . to determine whether they provide an inventive concept
(i.e., whether the additional elements amount to significantly more than the
exception itself).” 84 Fed. Reg. at 56.
The Examiner finds that:
The additional element(s) or combination of elements in the
claim(s) other than the abstract idea(s) per se including a
computer processor, displaying(implying the inclusion of a
display that is not otherwise positively recited) and a server
computer, support provider computers, a computer readable
medium as respectively presented amount(s) to no more than: (i)
mere instructions to implement the idea on a computer, and/or
(ii) recitation of generic computer structures that serves to
perform generic computer functions that are well understood,
routine, and conventional activities previously known to the
pertinent industry per the Appellant’s description (Appellant’s
specification Paragraphs [0038], [0039], [0149]-[0155]). Viewed
as a whole, these additional claim element(s) do not provide
meaningful limitation(s) to transform the abstract idea into a
patent eligible application of the abstract idea such that the
claim(s) amounts to significantly more than the abstract idea
itself.
Ans. 7.
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Appellant responds that claim 24 amounts to significantly more than
the claimed judicial exception, in that,
by displaying the second interactive rewarded playable unit
within at least a portion of the first interactive rewarded playable
unit, the user is more likely to engage in the second interactive
rewarded playable unit, given that the user is already in the mode
of engaging with such units. Additionally, use of the predictive
model ensures that the second interactive rewarded playable unit
can be customized according to the user. In other words, the
predictive model is used to configure a probability for the second
interactive rewarded playable unit, as recited in the independent
claims. This ensures that user history can be taken into
consideration when the second rewarded playable unit is
activated for the user. In general, the claimed use of the
predictive model improves the ability of the computer to
configure the second interactive rewarded playable unit and
represents an improvement to the function of the computer itself.
Appeal Br. 12 (emphasis added).
The italicized phrase in the above quote is indicative that Appellant’s
arguments revolve around aspects of the judicial exception itself, and not
elements, considered individually and as a whole, that transform the judicial
exception into an inventive concept. Similarly, the discussion of the
predictive model as being customizable for individual users based on user
history is not transformative, but instead is an aspect of the judicial
exception itself, in that the Specification evidences that this modeling is for
the purpose of “generat[ing] recommendations and/or control[ling] the
support game as to encourage revenue generation,” employing user histories
“in order to develop a model of behavior for revenue generation,” and using
the model “to base determinations of what to offer the players, when the
offer should be made, the chances of success and so forth in order to
increase revenue generation.” Spec. ¶¶ 119, 124.
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Appellant points to portions of the abstract idea itself—a certain
method of organizing human activity that involves managing personal
behavior—rather than only pointing to additional elements that ensure that
the claim is more than the judicial exception. See Revised Guidance, 84
Fed. Reg. at 56 (instructing that additional element(s) should be evaluated to
determine whether they (a) add specific limitations that are not well-
understood, routine, and conventional in the field, or (2) simply append
well-understood, routine, and conventional activities previously known to
the industry (citing MPEP § 2106.05(d)). See Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (citing Mayo, 566
U.S. at 90) (a finding that the claims are novel and nonobvious in light of an
absence of evidence does not conflict with the Examiner’s conclusion under
35 U.S.C. § 101 because “a claim for a new abstract idea is still an abstract
idea”); see also Trading Techs. Int’l v. IBG LLC, 921 F.3d at 1093 (“The
abstract idea itself cannot supply the inventive concept, ‘no matter how
groundbreaking the advance.”’) (quoting SAP Am., Inc. v. InvestPic, LLC,
898 F.3d 1161, 1171 (Fed. Cir. 2018)).
Claim 24 “simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.” See Revised Guidance, 84 Fed. Reg.
at 56. For the reasons discussed above, we find no element or combination
of elements recited in claim 24 that contain any “inventive concept” or add
anything “significantly more” to transform the abstract concept into a patent-
eligible application. Alice, 573 U.S. at 221.
For these reasons, we find no error in the Examiner’s rejection of
claims 24–43 under 35 U.S.C. § 101.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
24–43 101 Eligibility 24–43

TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED