Ex Parte Huynh et al

Patent Trial and Appeal Board

Feb 28, 2018

13959545 (P.T.A.B. Feb. 28, 2018)

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.
13/959,545 08/05/2013 Jennifer Schulze Huynh 777-1510-Cl 2383
92852 7590
Multimedia Games, Inc.
Attn: JP Cody, Esq.
206 Wild Basin South
Austin, TX 78746
EXAMINER
YOO, JASSONH
ART UNIT PAPER NUMBER
3717
NOTIFICATION DATE DELIVERY MODE
03/02/2018 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):
jp.cody@mm-games.com
peggy. zaongo @ mm-games .com
jpv2u@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JENNIFER SCHULZE HUYNH,
CLINT OWEN, and JP CODY
Appeal 2016-004021
Application 13/959,545
Technology Center 3700
Before MICHAEL L. HOELTER, JILL D. HILL, and
BRENT M. DOUGAL, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Jennifer Schulze Huynh et al. (Appellants) filed a request for
rehearing on February 15, 2018 (hereinafter “Request”), in response to our
Decision on Appeal mailed December 26, 2017 (hereinafter “Decision”),
affirming the Examiner’s rejection of the claims as directed to ineligible
subject matter.
Appeal 2016-004021
Application 13/959,545
ISSUES RAISED ON REQUEST FOR REHEARING
I. Did the Patent Trial and Appeal Board (“Board”) err in
determining that the claims are directed to an abstract idea? Request. 3.
II. Did the Board err in determining that the claims, as written, do
not require significantly more than an abstract idea? Id.
ANALYSIS
37 C.F.R. § 41.52 (2012) states in relevant parts:
(a)
(1) Appellant may file a single request for rehearing within
two months of the date of the original decision of the Board. . . .
The request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked by the
Board. Arguments not raised [in the brief before the Board], and
[ejvidence not previously relied upon [in the brief and the reply
brief(s)] are not permitted in the request for rehearing except as
permitted by paragraphs (a)(2) through (a)(4) of this section. . . .
(2) Appellant may present a new argument based upon a
recent relevant decision of either the Board or a Federal Court.
(3) New arguments responding to a new ground of
rejection made pursuant to § 41.50(b) are permitted.
(Emphasis added).
Appellants are required to state with particularity the point(s) believed
to have been misapprehended or overlooked by the Board. 37 C.F.R.
§ 41.52(a)(1). The Request for Rehearing does not explicitly identify any
such points. The Board, however, has identified the following points for
further consideration, based on arguments presented in the Request.
ISSUE I
Appellants argue that the facts of In re Smith, 815 F.3d 816, 819 (Fed.
Cir. 2016), relied on in our Decision, “are not analogous to the present
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Application 13/959,545
claims.” Request 4. According to Appellants, in Smith, the claimed
elements of blackjack were conducted by mentally executing the rules of the
game using a standard card deck, and the Federal Circuit set forth a
distinction between new rules and using a new structure (e.g., a new and
original deck of cards) to accomplish the rules; such that, in Smith, the
claims were abstract because they lacked structural limitations through
which the rules were to be conducted. Id. Comparing the pending claims to
the game rule claims of Smith, Appellants argue that “it is simply not
realistic to say the claimed method could be used to conduct bingo games by
hand,” and “nothing in the record even hint[s] that such shifting is a well
known technique; instead the record contains only the bare assertion that the
claims concern game rules implemented with well known computer
techniques.” Id. at 5.
We are not persuaded by Appellants’ argument. Smith’s claims
recited rules for playing a game that were held to be an abstract idea, and
using a standard card deck did not provide an “inventive concept” sufficient
to “transform” the claimed subject matter into a patent-eligible application
of the abstract idea. Smith, 815 F.3d at 819. Similarly, Appellants’ claims
recite rules for playing a game, which the Examiner and the Board
determined were directed to an abstract idea. Further, Appellants’ rules are
implemented on a standard gaming machine with a “game processor” and a
“display device,” which the Examiner and the Board determined did not
provide an “inventive concept” sufficient to “transform” the claimed subject
matter into a patent-eligible application of the abstract idea. Thus, like in
Smith, Appellants are claiming new rules, rather than a technological
improvement.
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Appellants also contend that their claims are akin to those in McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016),
where the court “did not require a special purpose machine or new hardware
element to render the claim patentable.” Request 5.
The McRO court held that the claim, which was directed to
automatically animating lip synchronization and facial expression, “uses the
limited rules in a process specifically designed to achieve an improved
technological result in conventional industry practice.” McRO, 837 F.3d at
1316. The court, considering whether the claims focus on a method that
improves the relevant technology or are instead directed to a result or effect
that merely invoke generic processes and machinery, noted that “the
interaction between vocalization and facial expression is very complex, and
there are relationships present other than those required by the claimed
rules,” which “permits development of alternative rules-based methods of
animating lip synchronization and facial expressions of three-dimensional
characters.” Id. at 1315.
We are not persuaded that Appellants’ claimed method improves a
relevant technology. Rather, as determined by the Examiner and the Board
for the reasons set forth in the Decision, Appellants’ claims merely invoke
generic processes and machinery in altering the displayed bingo card.
Appellants further contend that their claims can be “compared with
the non-abstract displayed interface in” Core Wireless Licensing S.A.R.L. v.
LGElecs., Inc., 880 F.3d 1356 (Fed. Cir.2018), wherein “novel user
interface menu elements were held to be not abstract because the claim
disclosed ‘a specific manner of displaying a limited set of information to the
user, rather than using conventional user interface methods to display a
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Application 13/959,545
generic index on a computer. Request 5—6. We are not persuaded by this
argument. Appellants’ claims are directed to a method of operating a game
machine, wherein, inter alia, a displayed bingo card is revised to daub a
populated indicia and move certain indicia. Appeal Br. 19 (Claims App.).
In Core Wireless, the claims were “directed to an improved user interface [or
application summary] for computing devices,” which amounted to a
technological advance in the form of improved functioning of the computing
device. Core Wireless, 880 F.3d at 1362. Appellants have not explained
how their claims, directed to a method of operating a game machine, are
patentable as a technological advance that provides “an improvement in the
functioning of computers” of the type set forth in Core Wireless. See id. at
1362—63. We therefore are not persuaded by Appellants’ argument
regarding Core Wireless or the other cases discussed above.
ISSUE II
Appellants additionally argue that the claims recite significantly more
than an abstract idea. Request 6. This argument is not persuasive, because it
was fully addressed in our Decision. We remind Appellant that a request for
rehearing is not an opportunity to reiterate arguments presented previously
in earlier pleadings that were fully addressed in an earlier Decision. 37
C.F.R. §41.52.
We conclude that Appellants have not shown any points which we
misapprehended or overlooked in our Decision.
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Application 13/959,545
DECISION
Appellants’ Request for Rehearing is granted to the extent that we
have reconsidered our Decision in light of the arguments in Appellants’
Request. Appellants’ Request is denied to the extent that we do not modify
the outcome of the Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
DENIED
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