Ex Parte Joshi et al

Patent Trial and Appeal Board

Aug 4, 2016

13550234 (P.T.A.B. Aug. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/550,234 07/16/2012 Shridhar P. Joshi
65375 7590 08/08/2016
BALLY (DELIZIO LAW)
C/O DELIZIO LAW, PLLC
15201 MASON ROAD
SUITE 1000-312
CYPRESS, TX 77433
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.
100.011US2 4705
EXAMINER
MCCLELLAN, JAMES S
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
08/08/2016 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):
USPTO@DELIZIOLA W.COM
USPT02@DELIZIOLA W.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHRIDHAR P. JOSHI, CANDACE LUCAS, and
ALFRED THOMAS
Appeal2014-004812
Application 13/550,234
Technology Center 3700
Before JENNIFER D. BAHR, JAMES P. CALVE, and
GEORGE R. HOSKINS, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Shridhar P. Joshi et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1, 2, 4---6, 8-15, and 22-24.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION.
Appeal2014-004812
Application 13/550,234
THE CLAIMED SUBJECT MATTER1
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A method comprising:
receiving player information in a computing device,
wherein the player information indicates activities of players in
a casmo;
analyzing, by the computing device, the player
information to determine social acquaintance relationships
between the players; and
providing, via a network, an indication of the social
acquaintance relationships to wagering game network devices.
REJECTIONS
I. Claims 1, 2, 6, 8-15, and 22-24 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Moser (US 2003/0232647 Al, pub.
Dec. 18, 2003) and Atazky (US 2007/0121843 Al, pub. May 31,
2007).
II. Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Moser, Atazky, and Stewart (US 2006/0089873 Al, pub. Apr.
27, 2006).
III. Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Moser, Atazky, and Kelly (US 2006/0010022 Al, pub. Jan.
12, 2006).
1 Claims 23 and 24 depend from claim 21, which has been canceled. Appeal
Br. 13, 14 (Claims App.). As claims 23 and 24 are directed to "one or more
computer-readable storage devices," for purposes of this appeal, we treat
claims 23 and 24 as depending from claim 22. However, in the event of
further prosecution of the subject matter of claims 23 and 24, Appellants
may wish to consider amending these claims to reflect a proper dependency.
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DISCUSSION
Claims 1, 2, 4-6, and 22-24
Independent claim 1 is directed to a method comprising, in pertinent
part, steps of receiving "player information indicat[ing] activities of players
in a casino" and "analyzing ... the player information to determine social
acquaintance relationships between the players." Appeal Br. 11 (Claims
App.). Independent claim 22 is directed to computer-readable storage
devices including, in pertinent part, instructions for performing essentially
those same steps. Id. at 13.
The Examiner found that Moser "is silent regarding analyzing a
person's social acquaintance and online community relationship data and
associated promotion data," but that "Atazky teaches analyzing a person's
online community relationship data and associated promotion data to
generate marketing campaigns." Final Act. 3 (underlining omitted) (citing
Atazky i-fi-159---62). The Examiner then determined that "[i]t would have
been obvious to ... modify Moser with social networking data as taught [by]
Atazky to build better build [sic] personal profiles and thereby improve the
success of casino marketing campaigns." Id. (underlining omitted). The
Examiner explains that "Atazky teaches ... that user information may be
social relationship data collected about a user via a computer device and that
it may be received and analyzed for marketing purposes." Ans. 5 (citing
Atazky i-fi-159---65) (underlining omitted).
As Appellants point out, the deficiency in the modification of Moser
proposed by the Examiner is that it yields a system and method which
analyzes social relationship data, in addition to casino activity data, for
marketing purposes, but does not address the limitation in claims 1 and 22
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that the player information indicating activities ofplayers in a casino be
analyzed to determine social acquaintance relationships. See Appeal Br. 6,
9; Reply Br. 3--4. Accordingly, Appellants apprise us of error in the
rejection of claims 1 and 22 and their dependent claims 2, 6, 23, and 24.
In rejecting claims 4 and 5, which depend from claim 1, the
Examiner's application of the teachings of Stewart and Kelly does not cure
the deficiency in the combination of Moser and Atazky. See Final Act. 3--4.
Claims 8-10 and 12-15
Appellants argue that the combination of Moser and Atazky "does not
teach or suggest an analysis indicating social relationships between players
based on information about choices made during wagering games." Appeal
Br. 7-8. More specifically, Appellants submit that "Atazky does not teach
or suggest any sort of analysis that that [sic] derives social relationships
based on player activities during wagering games and player activities in an
online community," but, rather, "distributes advertisements to social contacts
of those who endorse a product or service." Id. at 8. This argument does not
identify error in the rejection of claim 8 because it is not commensurate in
scope with claim 8. See In re Self, 671F.2d1344, 1348 (CCPA 1982)
(limitations not appearing in the claims cannot be relied upon for
patentability).
Notably, independent claim 8 does not require analyzing player
information indicating activities of a player in a casino to determine social
acquaintance relationships. Rather, claim 8 requires:
wagering game machines configured to provide a first set of
player information . . . indicat[ing] choices made by players
during a wagering game; a community server configured to
provide a second set of player information ... indicat[ing] online
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Application 13/550,234
community activities of the players; and a player information
server configured to analyze the first and second sets of player
information [to indicate] wagering game content preferences
associated with the players and social relationships between
certain of the players.
Appeal Br. 12 (Claims App.). As such, claim 8 encompasses a wagering
game network comprising a player information server configured to analyze
the first set of player information to indicate wagering game content
preferences and to analyze the second set of player information to indicate
social relationships. The Examiner's rejection includes a finding that Moser
teaches a player information server configured to analyze the first set of
player information (i.e., monitored gaming activity) to indicate wagering
game content preferences, and a finding that Atazky teaches a server
configured to analyze a second set of player information (i.e., data on a
social network, or online community) to indicate social relationships
between members of the social network. Final Act. 2-3 (citing Moser i-fi-1
22- 23; Atazky ilil 59---62); see also Atazky ilil 98-99 (discussing "social
network sites ... in which users' profiles are defined and the social ties
between users are conceived and developed over time" and determining
interpersonal relationships "by data mining past interactions, including
extraneous collaborative systems, such as email databases or even virally
distributed messages"), 217 (disclosing "calculate[ing] each target user's
'importance' perceived by all other target user participants" in a social
network and extracting or data mining required data from social network
databases). The Examiner determined it would have been obvious to use the
social networking data as taught by Atazky in Moser's system "to build
better build [sic] personal profiles and thereby improve the success of casino
marketing campaigns." Final Act. 3. The Examiner explains that Moser is
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Application 13/550,234
silent regarding use of "player information including social relationship
data," but that Atazky teaches collecting social relationship data about a user
via a computer device and analyzing that data for marketing purposes. Ans.
5---6. Thus, the Examiner maintains that "the combination of Moser and
Atazky make obvious the recited features of claim 8." Id. at 6 (underlining
omitted).
Appellants do not identify any deficiencies in either the Examiner's
findings or in the Examiner's stated rationale for combining the teachings of
Moser and Atazky. Accordingly, Appellants do not apprise us of error in the
rejection of independent claim 8 or its dependent claims 9, 10, and 12-15,
for which Appellants do not present any separate arguments for
patentability. See Appeal Br. 7-8 (grouping claims 8-10 and 12-15 together
and submitting "that claims 9, 10, and 12-15 are allowable for at least the
reasons claim 8 is allowable").
Claim 11
Claim 11 depends from claim 8 and further recites "a wagering game
server configured to provide wagering game content to the wagering game
machines based on the preferences and relationships." Appeal Br. 12
(Claims App.). The Examiner did not make any specific findings directed to
this claim limitation in the rejection. See Final Act. 2-3; Ans. 2-3.
Appellants submit that "claim 11 recites a wagering game server that
provides wagering game content (e.g., wagering games) based on
relationships between players" and argue that "the cited art does not teach or
suggest claim 11 's wagering game server." Appeal Br. 8.
The Examiner responds by explaining that "Atazky is relied upon to
teach collecting social relationship data for marketing"; "Moser is relied
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Application 13/550,234
upon for collecting wagering game player information for providing
wagering game content"; and "[ w ]hen combined, the combination of Moser
and Atazky make obvious the recited features of claim 11." Ans. 6
(underlining omitted) (citing Atazky i-fi-1 59---65; Moser i-fi-15, 9, 22, 26, 33).
We do not discern in paragraphs 5, 9, 22, 26, and 33 of Moser relied upon by
the Examiner as disclosing "collecting wagering game player information
for providing wagering game content" any disclosure of providing wagering
game content to the wagering game machines based on the wagering game
content preferences and relationships, as called for in claim 11, and the
Examiner does not further elaborate on where such disclosure is contained in
or may reasonably be inferred from these paragraphs. Neither does the
Examiner explain adequately why such a feature would have been obvious
in view of the combined teachings of Moser and Atazky.
As such, the Examiner fails to articulate the specific factual findings
and analysis necessary to support the conclusion of obviousness of the
subject matter of claim 11.
NEW GROUND OF REJECTION
Pursuant to our authority under 3 7 C.F .R. § 41. 50(b ), we enter the
following new ground of rejection.
Claims 22-24 are rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter.
Claims 22-24 recite "[o]ne or more computer-readable storage
devices" including instructions to be executed on one or more processors.
Appeal Br. 13-14 (Claims App.). Aside from the inclusion of instructions
thereon, claims 22-24 do not further define the "computer-readable storage
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devices" or limit them to any particular type of storage media. Thus, we
tum to Appellants' Specification to see if it provides a definition for
"computer-readable storage devices." Appellants' Specification does not
provide an explicit definition of "computer-readable storage devices," but
does disclose that "the operations can be performed by executing
instructions residing on machine-readable media (e.g., software), while in
other embodiments, the operations can be performed by hardware and/ or
other logic (e.g., firmware)." Spec. i-f 61.
The broadest reasonable interpretation of a claim drawn to a
computer readable medium ... typically covers forms of non-
transitory tangible media and transitory propagating signals per
se in view of the ordinary and customary meaning of computer
readable media, particularly when the specification is silent. ...
When the broadest reasonable interpretation of a claim covers a
signal per se, the claim must be rejected under 35 U.S.C. § 101
as covering non-statutory subject matter.
David J. Kappos, Subject Matter Eligibility of Computer Readable Media,
1351 Off Gaz. Pat. Office 212 (Feb. 23, 2010).
Appellants' Specification does not exclude such signal or
communication media from the scope of "computer-readable storage
devices." Accordingly, giving claims 22-24 their broadest reasonable
interpretation consistent with the Specification, we construe the terminology
"computer-readable storage devices" as encompassing transitory
propagating signals having instructions. Thus, claims 22-24 cover subject
matter that is not patent-eligible under 35 U.S.C. § 101. See Ex parte
Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential) (holding
recited machine-readable storage medium ineligible under § 101 because it
encompassed transitory media); see also In re Nuijten, 500 F.3d 1346, 1353
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Application 13/550,234
(Fed. Cir. 2007) (holding that "transitory embodiments are not directed to
statutory subject matter"). 2' 3
DECISION
The Examiner's decision rejecting claims 1, 2, 4---6, 8-15, and 22-24
is affirmed as to claims 8-10 and 12-15, and reversed as to claims 1, 2, 4--6,
11, and 22-24. Pursuant to our authority under 37 C.F.R. § 41.50(b), we
enter a new ground of rejection of claims 22-24 under 35 U.S.C. § 101.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
2 As noted in Subject Matter Eligibility of Computer Readable Media, "[a]
claim drawn to such a computer readable medium that covers both transitory
and non-transitory embodiments may be amended to narrow the claim to
cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101
by adding the limitation 'non-transitory' to the claim."
3 No inference should be drawn from the absence herein of any other new
grounds of rejection, including additional grounds under 35 U.S.C. § 101.
See 37 C.F.R. § 41.50(b). See also Manual of Patent Examining Procedure
(MPEP), 9th ed., rev. 07.2015, Nov. 2015, § 1213.02. Under
37 C.F.R. § 41.50(b), the Board may, in its decision, make a new rejection of
one or more of any of the claims pending in the case. Since the exercise of
authority under 37 C.F.R. § 41.50(b) is discretionary, no inference should be
drawn from the decision to exercise that discretion with respect to some
claims and grounds but not other claims or other potential grounds.
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Application 13/550,234
of rejection to avoid termination of the appeal as to the rejected
claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the Examiner, in which event the prosecution will be
remanded to the Examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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-IN-PART; 37 C.F.R. § 41.50(b)
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