Ex Parte Halfteck et al

Patent Trial and Appeal Board

Mar 16, 2018

13910992 (P.T.A.B. Mar. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/910,992 06/05/2013
26379 7590 03/20/2018
DLA PIPER LLP (US )
2000 UNIVERSITY A VENUE
EAST PALO ALTO, CA 94303-2248
FIRST NAMED INVENTOR
Guy Halfteck
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.
375214-991102 3570
EXAMINER
ROWLAND, STEVE
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
03/20/2018 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):
PatentDocketing US-PaloAlto@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUY HALFTECK and JOHN FUNGE
Appeal2017-007296
Application 13/910,992
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant 1 appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-26, 36-69, and 81-90. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant is the Applicant, Knack.it Corp., which, according to the Appeal
Brief, is the real party in interest. Appeal Br. 1.
Appeal2017-007296
Application 13/910,992
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A method, comprising:
receiving game play data resulting from a player playing
a game; and
deriving, based at least in part upon the game play data, a
profile for the player, wherein the profile for the player includes
an assessment for at least one of the following: one or more
personality traits of the player, one or more personal
preferences of the player, and one or more aptitudes of the
player; and
wherein the method is performed by one or more
computing devices.
REJECTIONS
I. Claims 1-26, 36-69, and 81-90 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter.
II. Claims 1-16, 21, 23-26, 36-50, 55, 57---63, 65---69, 81-85, and
87-90 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Post (US 2008/0124687 Al, pub. May 29, 2008).
III. Claims 17, 18, 51, 52, 64, and 86 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Post and O'Kelley
(US 2006/0121990 Al, pub. June 8, 2006).
IV. Claims 19, 20, 53, and 54 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Post and Murrell (US 7,997,969
Bl, iss. Aug. 16, 2011).
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V. Claims 22 and 56 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Post and Brown (US 5,913,310, iss. June 22,
1999).2
DISCUSSION
Rejection I
In contesting Rejection I, Appellant references certain limitations
recited in independent claim 1, but otherwise presents arguments without
regard to any particular claim. See Appeal Br. 10-11; Reply Br. 1. Thus,
we select independent claim 1 as representative of the claims subject to this
rejection, with claims 2-26, 36-69, and 81-90 standing or falling with claim
1. 37 C.F.R. § 41.37(c)(l)(iv).
Section 101 of the patent law provides that one may obtain a patent
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 held that this provision includes important exceptions,
notably those that prohibit one from patenting abstract ideas, laws of nature,
or natural phenomena. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014). Although a law of nature or an abstract idea is not
patentable, the application of these concepts may be patentable. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70-72 (2012).
2 Although Appellant does not list this rejection as one of the grounds to be
reviewed on appeal (Appeal Br. 4), we understand Appellant to be
requesting review of this rejection and to be relying, for each of the claims
subject to this rejection, on the arguments presented in contesting the
rejections of their respective independent claims.
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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,
134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 71-72). Under that framework,
we first "determine whether the claims at issue are directed to one of those
patent-ineligible concepts"-i.e., a law of nature, a natural phenomenon, or
an abstract idea. Id. If so, we 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, 566 U.S. at 77-79). The Supreme Court
has described the second part of the 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."' Id. (alteration in original) (quoting
Mayo, 566 U.S. at 72-73).
Step One: Do the Claims Recite an Abstract Idea?
The Federal Circuit has described the first step as a determination of
the "basic character of the claimed subject matter." Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015) (citing Bancorp
Servs., L.L.C. v. Sun Life Assurance Co. of Canada, 687 F.3d 1266, 1273-74
(Fed. Cir. 2012)). The Federal Circuit has also indicated that this step
should determine whether a claimed method "recites an abstraction-an
idea, having no particular concrete or tangible form." Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); see also Alice, 134 S. Ct. at
2355 ("The 'abstract ideas' category embodies 'the longstanding rule that
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Application 13/910,992
"[a]n idea of itself is not patentable.""' (quoting Gottschalkv. Benson, 409
U.S. 63, 67 (1972) (further quotations and citations omitted)).
The Examiner determines that independent claim 1 is "directed to
deriving video game data, [and embodies] the abstract idea of either a
fundamental economic practice, a method of organizing human activities, an
idea of itself, or a mathematical relationship or formula." Final Act. 2. The
Examiner also explains that "the invention is directed toward deriving user
attributes from game play data, such as traits, preferences and aptitudes;
none of these concepts is tangible or quantifiable." Id. at 14.
Appellant argues that the Examiner errs in concluding that the claimed
subject matter is directed to an abstract idea. See Appeal Br. 10-11. In
particular, Appellant asserts that the present claims are similar to the patent
eligible claims in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299 (Fed. Cir. 2016) because they "are directed to improving an existing
technological process (analyzing game playing data and deriving a player
profile) like the lip synchronization and facial expression control of
animated characters" in McRO. Appeal Br. 10. According to Appellant, the
"present claims are limited to a specific process, do not preempt the general
idea of analyzing game data, achieve an improvement to an existing
technological process and are patent eligible under the reasoning set forth in
the McRO case." Id. at 11. These arguments are unpersuasive.
Unlike the claims at issue in McRO, claim 1 does not involve an
incorporation of claimed rules that allow computers to produce "'accurate
and realistic lip synchronization and facial expressions in animated
characters' that previously could only be produced [in a subject process] by
human animators." McRO, 837 F.3d at 1313-14. Rather, Appellant's claim
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is directed to deriving a player profile based on received game play data.
Such activity amounts to receiving information (i.e., game play data for a
player) and manipulating the information using an algorithm to
generate/output additional information (i.e., a profile for the player). 3 Our
reviewing courts have held claims ineligible under § 101 when directed to
manipulating existing information, such as by using algorithms, to generate
additional information. See Parker v. Flook, 437 U.S. 584, 585, 594--96
(1978) (rejecting as ineligible claims directed to (1) measuring the current
value for a variable in a catalytic conversion process, (2) using an algorithm
to calculate an updated "alarm-limit value" for that variable, and (3)
updating the limit with the new value); Gottschalk, 409 U.S. at 71-72
(rejecting as ineligible claims directed to an algorithm for converting binary-
coded decimal numerals into pure binary form); Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016) (discussing how
"collecting information" and "analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more" are
abstract ideas); Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758
F.3d 1344, 1351 (Fed. Cir. 2014) ("Without additional limitations, a process
that employs mathematical algorithms to manipulate existing information to
generate additional information is not patent eligible.").
3 Although claim 1 recites the algorithm in words rather than as a
mathematical formula, the claims nevertheless recite an algorithm. See In re
Grams, 888 F.2d 835, 837 n.1 (Fed. Cir. 1989) ("It is of no moment that the
algorithm is not expressed in terms of a mathematical formula. Words used
in a clairn operating on data to solve a problem can serve the same purpose
.!' 1 ,,, as a iormu a. ).
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Moreover, to the extent that Appellant argues that the present claims
are not a complete preemption of the abstract idea (i.e., manipulating
existing information to generate additional information) (see Appeal Br. 11 ),
the Federal Circuit has rejected such an argument and noted that, although
"the principle of preemption is the basis for the judicial exceptions to
patentability," and "preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent eligibility."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice, 134 S. Ct. at 2354). The Federal Circuit concluded that
"[ w ]here a patent's claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, ... preemption concerns are fully
addressed and made moot." Id.; see also id. (holding that "[i]n this case,
Sequenom' s attempt to limit the breadth of the claims by showing alternative
uses of cfIDNA outside of the scope of the claims does not change the
conclusion that the claims are directed to patent ineligible subject matter").
Given this direction from our reviewing court, we decline to apply a separate
preemption standard in our analysis, and instead apply the steps set forth by
the Supreme Court in Alice and Mayo.
In sum, for the reasons set forth above, the instant claims are directed
to the abstract idea of manipulating existing information to generate
additional information.
Step Two: Is There an Inventive Concept?
Appellant argues that the claims "are directed to substantially more
than the abstract idea." Appeal Br. 11. In particular, Appellant asserts that
the present claims are similar to BASCOM Glob. Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) because "the present
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claims are a particular arrangement of elements (see summary of claims
above) that are a technical improvement (including deriving the player
profil[ e]) over the prior art ways of game data analysis as described in the
background of the present patent application." Appeal Br. 11. This
argument is not convincing.
In BASCOM, the Federal Circuit found an inventive concept in the
ordered combination of limitations providing for "the installation of a
filtering tool at a specific location, remote from the end-users, with
customizable filtering features specific to each end user." BASCOM, 827
F.3d at 1350. In other words, an inventive concept existed because the
claimed Internet filtering improved an existing technological process. See
id. at 1350-51. However, unlike the claims at issue in BASCOM,
Appellant's claim 1 is not directed to a solution that improves the
performance of a computer system itself. See id. at 1351. Rather, claim 1 is
directed to nothing more than a method that qualifies as an abstract idea (i.e.,
manipulating existing information to generate new information) for which a
processor is invoked as a conventional tool.
Appellant has not provided any specificity regarding any particular
inventive technology associated with the steps in the claim. The computer
elements described in the Specification and claims (e.g., "processor,"
"computing devices") appear to function in a conventional manner to
execute program instructions and operations. Receiving data and computing
data are steps that are well-understood, routine, and conventional functions
of a general-purpose computer, and Appellant does not provide adequate
evidence to the contrary. The Specification supports this view by discussing
only generic elements used in performing the steps. See, e.g., Spec. 22, 11.
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6-25; 25, 1. 23 to 26, 1. 10. In particular, the Specification describes that
"games may be played on one or more computing devices and each
computing device may be a processor based system with memory,
input/output devices and a display system to interact with and play the
game." Id. at 22, 11. 9-11. The Specification also describes:
A system for data extraction 515 includes the storage 540 as
well as the other components/units/modules on the left side of
the dotted line in Figure 5. In one implementation, the system
515 may be one or more computing resources and each
component/unit/module may be a plurality of lines of computer
code that are executed by the one or more computing resources
to implement the functions and operations described below.
The one or more computing resources may be one or more
server computers, one or more cloud computing resources or a
stand-alone computer if the system 515 is implemented as a
stand-alone system.
Id. at 22, 11. 20-25. According to the Specification, "[t]he computer system
may be any computing device with one or more pro[ c ]essors, memory, a
display and connectivity such that a user can interact with the game and
game play data may be captured." Id. at 25, 11. 23-25. In other words, the
Specification only lists generic computer hardware elements. There is no
further description, in the claims or the Specification, of any particular
technology for performing the steps recited in the claims other than generic
computer components used in their ordinary capacity as a tool to perform
mathematical operations to apply the abstract idea. In this regard, the
"recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible." DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (citing Alice, 134 S. Ct. at 2358). In
sum, claim 1 is directed merely to ordinary functionality of a generic
processor (e.g., manipulating data to generate new data), and not to a
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specific application of computation and analysis designed to achieve an
improved technological result.
For the above reasons, the recited elements, considered individually
and as an ordered combination, do not constitute an "inventive concept" that
transforms independent claim 1 into patent-eligible subject matter. See
Alice, 134 S. Ct. at 2355. Accordingly, we sustain the rejection of claim 1,
and of claims 2-26, 36---69, and 81-90 falling therewith, under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter.
Rejection II
In contesting Rejection II, Appellant argues for patentability of
independent claims 1, 23, 36, 57, and 81 together as a group, and does not
assert any separate arguments for dependent claims 2-16, 21, 24--26, 37-50,
55, 58---63, 65---69, 82-85, and 87-90. Appeal Br. 12; Reply Br. 1. We
select claim 1 as representative, with claims 2-16, 21, 23-26, 36-50, 55, 57-
63, 65---69, 81-85, and 87-90 standing or falling therewith.
The Examiner finds:
Post discloses a method, comprising: receiving game play data
resulting from a player playing a game (Fig. 4), and deriving,
based at least in part upon the game play data, a profile for the
player (Fig. 4 ), wherein the profile for the player includes an
assessment for at least one of one or more personality traits of
the player, one or more personal preferences of the player, and
one or more aptitudes of the player (Fig. 4), and wherein the
method is performed by one or more computing devices
(if [0024]).
Final Act. 3.
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Appellant argues that Post fails to disclose a step of deriving a user
profile as recited in the claims. See Appeal Br. 12. In particular, Appellant
asserts that
the independent claims recite that the ... system derives a
profile of the user that includes an assessment for at least one of
the following: one or more personality traits of the player,
one or more personal preferences of the player, and one or
more aptitudes of the player which is not found in Post.
Id. This argument is not persuasive.
To the extent that Appellant appears to argue that Post must disclose
deriving a profile that includes an assessment for player personality traits,
personal preferences, and aptitudes (see Appeal Br. 12), such an argument is
unpersuasive because it is not commensurate with the scope of claim 1,
which does not require an assessment for each and every one of the listed
features. See In re Self, 671F.2d1344, 1348 (CCPA 1982) (noting that it is
well established that limitations not appearing in the claims cannot be relied
upon for patentability). Instead, claim 1 only recites that the "profile for the
player includes an assessment for at least one of the following: one or more
personality traits of the player, one or more personal preferences of the
player, and one or more aptitudes of the player." Appeal Br. 14 (Claims
App.) (emphasis added).
As discussed above, the Examiner finds that Post discloses an
assessment for at least one of player personality traits, personal preferences,
and aptitudes. See Final Act. 3; see also Ans. 5 (finding that "items 470
(traits/preferences), 475 (profile) and 510 (aptitude) of Figures 4 and 5 of
Post ... [are] anticipatory disclosures with respect to each of the limitations
in the group"). Appellant makes no attempt to point out where the
Examiner's findings relative to the presence of these elements in the prior art
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or the teachings of the prior art articulated by the Examiner with regard to
these limitations are deficient. See Appeal Br., passim; Reply Br., passim.
Aside from the bald assertion that the disputed limitation "is not found in
Post" (Appeal Br. 12), Appellant offers no evidence or persuasive technical
reasoning to identify a deficiency in the Examiner's finding that Post
anticipates the subject matter of claim 1, which is supported by a
preponderance of the evidence.
For the above reasons, Appellant fails to apprise us of error in the
rejection of claim 1. Accordingly, we sustain the rejection of claim 1, and of
claims 2-16, 21, 23-26, 36-50, 55, 57---63, 65-69, 81-85, and 87-90 falling
therewith, under 35 U.S.C. § 102(b) as anticipated by Post.
Rejections 111-V
Appellant does not assert any separate arguments for patentability of
dependent claims 17-20, 22, 51-54, 56, 64, and 86 subject to Rejections III-
V, and, instead, relies on the arguments presented for patentability of
independent claims 1, 23, 36, 57, and 81 subject to Rejection II. See Appeal
Br. 12. For the reasons discussed above, Appellant's arguments fail to
apprise us of error in Rejection II, and, thus, likewise, fail to apprise us of
error in Rejections III-V. Accordingly, we sustain the rejections of claims
17-20, 22, 51-54, 56, 64, and 86 under 35 U.S.C. § 103(a).
DECISION
The Examiner's decision rejecting claims 1-26, 36---69, and 81-90
under 35 U.S.C. § 101 is affirmed.
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The Examiner's decision rejecting claims 1-16, 21, 23-26, 36-50, 55,
57---63, 65---69, 81-85, and 87-90 under 35 U.S.C. § 102(b) is affirmed.
The Examiner's decision rejecting claims 17-20, 22, 51-54, 56, 64,
and 86 under 35 U.S.C. § 103(a) 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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