Ex Parte ANDO

Patent Trial and Appeal Board

Sep 21, 2017

13437337 (P.T.A.B. Sep. 21, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/437,337 04/02/2012 Katsuyasu ANDO RYM-723-3411 7727
23117 7590 09/25/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
COBURN, CORBETT B
ART UNIT PAPER NUMBER
3714
NOTIFICATION DATE DELIVERY MODE
09/25/2017 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KATSUYASU ANDO
Appeal 2016-002186
Application 13/437,3371
Technology Center 3700
Before: LYNNE H. BROWNE, JILL D. HILL, and BRENT M. DOUGAL,
Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1—14 under 35 U.S.C. § 101 as being directed to patent ineligible
subject matter. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies Nintendo Co., LTD. as the real party in interest.
Appeal Br. 3.
Appeal 2016-002186
Application 13/437,337
CLAIMED SUBJECT MATTER
The claims are directed to a non-transitory recording medium storing
a program wherein entering a dormant state for longer than a set time (i.e.
taking a break) results in a change to the program advantageous to the user.
Spec. 1 6. Claims 1, 11, 12, and 13 are independent. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A non-transitory recording medium storing an information
processing program causing an information processing
apparatus, comprising at least a processor and a storage, to at
least:
determine a start time and an end time of a dormant state
of the information processing apparatus;
store the start time and the end time of the dormant state
into the storage;
acquire a duration of the dormant state of the information
processing apparatus based on the stored start time and end time;
and
change an execution state or a parameter of a
predetermined program based on the acquired duration of the
dormant state,
wherein the dormant state comprises a state where at least
one component of the information processing apparatus is turned
off, or in a standby state, or a state where at least one task running
on the information processing apparatus is paused or ended.
OPINION
The Supreme Court has 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.” Alice
Corp. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294
(2012)). Under that framework, we first “determine whether the claims at
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Application 13/437,337
issue are directed to one of those patent-ineligible concepts”—i.e., a law of
nature, a natural phenomenon, or an abstract idea. Id. (citing Mayo, 132
S. Ct. at 1296—97). If so, we must secondly “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.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297).
Under the first step of the Alice framework, the Examiner finds that
the claims “are directed to the abstract idea of modifying the operating
parameters of a game program based on the duration of a rest period.” Final
Act. 2; See also, Ans. 2. The Examiner also determines that “[t]he claims
are directed to a method of encouraging a program user to take a rest period
of a certain duration by modifying the operating parameters of a computer
program. This is a method of organizing human activity and is therefore an
abstract idea.” Id. at 3.
Appellant argues that the Examiner’s articulation of the abstract idea
is an “overbroad generalization” that does not “identity and define exactly
what ‘abstract idea’ is at issue.” Appeal Br. 10. Appellant undermines this
argument by later defining the claims as being directed to essentially the
same content as the Examiner’s initial statement. Id. at 11 (“the claims are
directed towards changing an execution state or a parameter of a game
program according to the duration of a specifically claimed dormant state of
an information processing apparatus/system.”).
Appellant also argues that the Examiner uses the wrong process for
defining the abstract idea. Id. at 10. In particular, Appellant argues that the
Examiner is required to “refer to [] case law [] to identify the alleged
exception by way of comparison to concepts already found to be abstract.”
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Application 13/437,337
Reply Br. 2 (citing July 2015 Update: Subject Matter Eligibility, Section
IV); see also, Appeal Br. 11.
We are unaware of any requirement that the rejection refer to other
case law in order to show that the claims are directed to an abstract idea.
The Subject Matter Eligibility Guidelines referred to by Appellant are
merely guidelines to assist the Examiner in formulating a rejection. They
are not statutory requirements. Rather, as discussed supra, the Supreme
Court set forth the test for subject matter eligibility. Here the Examiner
found that the claims are directed to an abstract idea and more specifically
an abstract idea that is “a method of organizing human activity.” Ans. 3.
Thus, we are not informed of error in the Examiner’s rejection or analysis.
Appellant does not agree that the claims can be classified as a method
of organizing human activity. Reply Br. 2—3. Rather, Appellant argues that
“the claims are necessarily rooted in computer technology to overcome a
problem specifically arising in computer systems, and hence are more like
the claims found to be patent-eligible in DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014).” Id. at 3; see also Appeal Br. 11—12.
Appellant defines the technological problem attempted to be solved
by the claims as “e.g., how ‘to cause [an] information processing apparatus
to enter a dormant state’ for a predetermined time length.” Id. at 11.
Appellant also states that this is a problem “not known from the pre­
computer world.” Id. at 12.
However, this analysis ignores the teachings of the Specification. The
teachings of the Specification (see e.g., Spec. ^fl[ 3—6, 12, 19-20, 51, 55) are
consistent with the Examiner’s finding defining the abstract idea, as “a
method of encouraging a program user to take a rest period of a certain
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Application 13/437,337
duration by modifying the operating parameters of a computer program”
(Ans. 3). As further noted by the Examiner, the Specification teaches that
“the method is carried out on a generic computer.” Id. Though Appellant
states that the claims deal with a problem “not known from the pre-computer
world,” this is not supported by the Specification.
Our parents encouraged their children to take a break from watching
video on a screen with an enticing treat, such as cookies or the promise of
more TV. Undoubtedly in the past, parents were dealing with the same issue
in the days of radio broadcasts. Some of our children have even been known
to require encouragement to take a break from reading and have been
allowed to read until bedtime after coming down for dinner. The general
concepts discussed above are not unique to computers. Thus, Appellant’s
arguments do not inform us of error in the Examiner’s conclusion that the
claims are directed to an abstract idea.
Under the second step of the Alice test, the Examiner finds that “[t]he
claim(s) does/do not include additional elements that are sufficient to
amount to significantly more than the judicial exception because the claims
merely recite the implementation of the idea on a general purpose computer
with nothing more.” Final Act. 2; see also Ans. 3.
As discussed above, the general concept of encouraging someone to
take a break, for example, from the TV or video games, by giving them a
reward is not new. Thus, implementing this basic, and common idea on a
generic computer, without more mirrors the facts of Mayo and Alice and is
not enough “to transform that abstract idea into a patent eligible invention”.
Alice Corp. v. CLSBankInt’l, 134 S. Ct. 2347, 2357 (2014); see also id.
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Application 13/437,337
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct.
1289, 1294 (2012)) (comparing the claims to those in Mayo).
Appellant’s argument that the claims amount to something more,
simply lists the steps used to implement the invention on a general purpose
computer. Appeal Br. 13—14. Appellant also states that the novelty of the
claims should be considered. Id. at 15. We note that the Examiner
acknowledges this factor, but concludes that “any novel steps merely involve
the use of a generic computer to perform routine and generic computer
functions” which does not amount to “significantly more.” See Ans. 9—10
(citing Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014).
Thus, Appellant’s arguments do not inform us of error in the Examiner’s
conclusion that the claims do not amount to anything more than
implementation of the abstract idea on a general purpose computer.
Appellant also argues that the claims should be subject to a
streamlined analysis as they “do not seek to ‘tie up’ any judicial exception.”
Appeal Br. 16. However, it is unnecessary for us to analyze the claims
under a streamlined analysis in view of the full analysis under Alice
discussed above.
For these reasons, we sustain the Examiner’s rejection.
DECISION
The Examiner’s rejection of claims 1—14 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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