Ex Parte Kelley et al

Patent Trial and Appeal Board

Feb 22, 2018

13439305 (P.T.A.B. Feb. 22, 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.
13/439,305 04/04/2012 Timothy J. Kelley 4933.001US1 8456
21186 7590 02/26/2018
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
YEN, JASON TAHAI
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
02/26/2018 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):
uspto@slwip.com
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY J. KELLEY, MICHAEL J. PERRONE,
JOSEPH T. NAPOLI, and INNOKENTY Y. MIHAILOV
Appeal 2016-002165
Application 13/439,305
Technology Center 3700
Before ANNETTE R. REIMERS, JILL D. HILL, and ERIC C. JESCHKE,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 43—57, 59-73, 75—86, and 88—90.1 We have jurisdiction under
35 U.S.C. § 6(b). Oral argument was heard on February 6, 2018.
We AFFIRM.
1 Following the Final Action, Appellants amended the claims and canceled
claims 58, 74, and 87, such that a prior art rejection was withdrawn.
Appellants also added claims 88—90, and the Examiner added claims 88—90
to the pending rejection under 35 U.S.C. § 101 as a new ground. See Final
Act. 1, Advisory Act. 1, Appeal Br. 1, Ans. 3.
Appeal 2016-002165
Application 13/439,305
CLAIMED SUBJECT MATTER
Independent claims 43, 59, 75, and 88—90 are pending. The patent
relates to a system for on-line academic competition (claims 43, 88), a
method for on-line academic competition (claims 59, 89), and a non-
transitory computer readable storage device to provide an on-line academic
competition (claims 75, 90). Claim 43, reproduced below, illustrates the
claimed subject matter:
43. A system for on-line academic competition,
comprising:
a database that stores test questions, team and individual
contestant profiles, and test response statistics for the teams and
individual contestants; and
a processor programmed to interact with the database and
with individual contestant processing devices to perform the
steps of:
enabling the creation of teams of individual contestants
for participation in an academic competition;
presenting a series of predetermined test questions to the
contestant processing devices of the individual contestants of
competing teams for response in a time frame allocated for the
academic competition;
providing a real time scoreboard to each contestant
processing device that permits each individual contestant to
track his/her and his/her opponent’s progress with respect to
both the time frame for answering questions and questions
answered correctly while answering the series of questions
during an academic competition; and
enabling two teams of 1 or more individual contestants
each to compete over a series of test questions for an allotted
time period in an online format including both a test item
presentation area and the real time scoreboard with time clock,
either (1) live, if both teams share a common preferred time, in
which case individual contestants from opposing teams may be
matched against each other, the real time scoreboard displaying
individual score, or share a team score, as determined by taking
a running average or sum of all or a predetermined number of
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individual contestant scores from the respective teams, the
individual and team scores being updated in real time, or (2)
non-live, if both teams do not share a common preferred time,
in which case individual contestants may be matched against a
personal best score, the real time scoreboard displaying
individual score or team score of the individual contestant’s
team updated in real time, and a final score between teams
being determined after both teams have played at their
respective preferred times.
REJECTION
Claims 43—57, 59—73, 75—86, and 88—90 stand rejected under
35U.S.C. § 101 as directed to ineligible subject matter.
PRINCIPLES OF LAW
A patent may be obtained 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
contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v.
CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409
U.S. 63, 67 (1972) (“mental processes, and abstract intellectual concepts are
not patentable, as they are the basic tools of scientific and technological
work.”). Notwithstanding that a law of nature or an abstract idea, by itself,
is not patentable, the application of these concepts may be deserving of
patent protection. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132
S. Ct. 1289, 1293—94 (2012). In Mayo, the Court stated that “to transform
an unpatentable law of nature into a patent eligible application of such a law,
one must do more than simply state the law of nature while adding the words
‘apply it.”’ Id. at 1294 (citation omitted).
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In Alice, the Supreme Court reaffirmed the framework set forth
previously in Mayo “for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in
the analysis is to “determine whether the claims at issue are directed to one
of those patent-ineligible concepts.” Id. If the claims are directed to a
patent-ineligible concept, then the second step in the analysis is to consider
the elements of the claims “individually and ‘as an ordered combination”’ to
determine whether there are additional elements that “‘transform the nature
of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S.
Ct. at 1298, 1297). In other words, the second step is to “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. (brackets in original)
(quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an
abstract idea “cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment or adding insignificant
post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610-11 (2010)
(citation and internal quotation marks omitted).
DISCUSSION
Appellants argue claims 43—47, 49—57, 59-63, 65—73, 75—77, and 19—
86 as a group. See Appeal Br. 17. We select claim 43 as representative, and
claims 44-47, 49-57, 59-63, 65—73, 75—77, and 79-86 stand or fall with
claim 43. See 37 C.F.R. § 41.37(c)(l)(iv). Appellants set forth certain
additional arguments regarding claims 88—90, and claims 48, 64, and 78,
which we address separately below.
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In rejecting the claims, the Examiner determines that the claims are
directed to the abstract idea of an online academic competition, the
additional elements (or combination of elements) of the claims amounting to
no more than “(i) mere instructions to implement the idea on a computer,
and/or (ii) recitation of generic computer structure that serves to perform
generic computer functions that are well-understood, routine, and
conventional activities previously known to the pertinent industry.” Final
Act. 4 (emphasis removed). According to the Examiner, the
additional/combined claim elements do not provide meaningful limitations
to transform the abstract idea into a patent-eligible application reciting
significantly more than the abstract idea itself. Final Act. 4—5.
Claims 43-57, 59-73, 75-86
Appellants argue that the Examiner “has not pointed to any case or
rationale holding that an ‘online academic competition’ is an abstract idea,”
and provides no supporting evidence. Appeal Br. 15.
The Examiner’s position is that an academic competition “is a type of
organizing human activity similar to those found by the courts to be
abstract.” Ans. 4; see CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1371 (Fed. Cir. 2011). According to the Examiner, “[rjules of
managing an academic competition are abstract ideas based on Alice and
other relevant recent court decisions. Such an abstract idea is carried out by
general purpose computing devices.” Ans. 7. The Examiner contends that
“a human could create teams of individual contestants, present a series of
predetermined test questions to contestants, and provide a real time
scoreboard to track progress,” and “[t]hen the human could allow two teams
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to compete over a series of test questions for an allotted time period either
live . . . ornon-live.” Id. at 8.
Regarding the Examiner’s contention that the claimed method could
be performed by a human, despite stating in their Appeal Brief that “the
invention facilitates setting up and managing an on-line academic
competition using hardware and software,” which set up and management
“would have previously been performed manually” (see Appeal Br. 22),
Appellants contend that “the claimed methods have not been used in the
prior art, manually or otherwise.” Reply Br. 5—6.
Regardless of whether the claimed methods have been used in the
prior art, we are not persuaded that the Examiner erred in determining that
“a human could create teams of individual contestants, present a series of
predetermined test questions to contestants, and provide a real time
scoreboard to track progress,” and “[t]hen the human could allow two teams
to compete over a series of test questions for an allotted time period either
live ... or non-live.” Ans. 7—8. Other than the benefit of performing the
claimed method more efficiently and in real time, Appellants have not
explained why the claimed method could not be performed by a human.
Appellants’ Specification does not describe any new or unique
computer hardware or software, and the law is clear that simply
programming a computer to perform what would otherwise be an abstract
idea is not sufficient to impart patent eligibility. See Alice Corp. Pty. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2359 (2014).
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The Examiner further contends that the claimed online academic
competition can be analogized to game rules2 implemented on a generic
computer. Ans. 10.
Appellants reply that it would be “quite apparent to those skilled in
the art that an online academic competition is not a game and is not driven
by game rules,” and “the claims include features such as a real time
scoreboard that is clearly not a game rule.” Reply Br. 2—3. Appellants
further contend that the Examiner “has made no effort to identify any game
rules implicated by the claims.” Id. at 3.
Appellants also argue that the claims are not directed to an abstract
idea of an online academic competition, but rather are directed to specific
techniques for providing online academic competitions in real-time or non-
real time, while a contestant tracks certain aspects of the relative progress of
his/her opponent. Appeal Br. 15. Appellant further points out that the
claims recite features enabling two teams to compete either live or non-live
“in an online format including ... [a] real time scoreboard.” Id. Appellants
contend that the claimed particular type of academic competition including
2 Appellants urge the Board to decline to consider certain arguments made
by the Examiner — including the Examiner’s assertion that the claims are
drawn to game rules — alleging that the new arguments are unauthorized
new grounds of rejection. See Reply Br. 2—5. Even if the Examiner’s
assertions made to further explain the outstanding § 101 rejection could be
considered new grounds (see 37 C.F.R. § 41.39(a)(2); In re Kronig, 539 F.2d
1300, 1303 (CCPA 1976)), Appellants’ recourse was to either (1) request to
withdraw the appeal and reopen prosecution (see 37 C.F.R. § 1.111), or (2)
maintain the appeal by filing a reply brief (see 37 C.F.R. § 41.41) that
addresses the new grounds of rejection. We, therefore, consider each of the
alleged new grounds.
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real time progress tracking against an on-line/virtual opponent is not an
abstract idea. Id. at 15—16.
We disagree with Appellants because a game can be defined as “a
physical or mental competition conducted according to rules with the
participants in direct opposition to each other3,” which appears to include
Appellants’ online academic competition. We find no error in the
Examiner’s characterization of the claimed online academic competition as
an abstract idea. See In re Smith, 815 F.3d 816, 819 (Fed. Cir. 2016) (“the
rejected claims, describing a set of rules for a game, are drawn to an abstract
idea”).
Appellants further argue that the claims “amount to ‘significantly
more’ than the purported ‘abstract idea’ of an online academic competition,”
by reciting a real time scoreboard, and enabling teams to compete either live
ornon-live. Appeal Br. 17.
Regarding whether the recitation of a real time scoreboard provides
significantly more than the judicial exception, the Examiner responds that
the claimed real time scoreboard amounts to no more than instructions to
implement an idea on a computer, or a recitation of generic computer
structure that performs generic, well-understood, routine, and conventional
computer functions. Ans. 4. According to the Examiner, generic electronic
components performing their basic functions of displaying, transmitting,
storing, retrieving, and processing data through a program that includes
“mere instructions to implement the abstract idea on electronic machines” is
3 https://www.merriam-webster.com/dictionary/game (last visited Feb. 12,
2018).
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not substantially more than the abstract idea itself. Id. Further, narrowing
the abstract idea to a computerized network such as the Internet amounts to
no more that implementing the abstract idea in a particular technological
environment, without improving the technology, such that the “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.” Id.
at 5.
Appellants reply that “[t]he only ‘electronic elements’ recited in any
claim are a database, a processor, and a computer-readable storage device,”
which “do NOT perform only generic computer functions but instead recite
novel structures implemented using unusual processing steps that the
examiner has acknowledged to be novel over the prior art.” Reply Br. 4.
Appellants again point to the “real time scoreboard” as non-generic, arguing
that “the [EJxaminer has not shown a real time scoreboard to be ‘well-
understood, routine, and conventional’ computer processing activities (like
displaying, transmitting, storing, retrieving, and processing data).” Reply
Br. 4. Rather, Appellants contend, “the real time scoreboard is novel
structure implemented using unusual processing steps that the [EJxaminer
has acknowledged to be novel over the prior art.” Id. According to
Appellants, “the real time scoreboard feature is necessary for overcoming a
problem introduced by conducting academic contests online rather than in
person, namely, that there is no common clock across a computer network
for tracking the progress of the contestants” in real time to “simulate the
tension and excitement of a live contest.” Id. at 4—5 (citing DDR Holdings,
LLCv. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)).
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Because Appellants provide no explanation or evidence that the
claimed “real time scoreboard” does more than perform a basic function,
such as displaying collected data in a selected format, we agree with the
Examiner that the claimed real time scoreboard provides no more than well-
understood, routine, and conventional computer processing activities and
therefore, does not provide significantly more than the judicial exception.
Further, lacking evidence or explanation to the contrary, we are not
persuaded that the ability to play live or non-live causes the claims to recite
significantly more than the judicial exception.
Appellants also contend that “[tjhere are any of a number of ways that
an on-line academic competition could be conducted without including these
features, thus precluding ‘preemption’ of an ‘online academic competition’
by the invention.” Appeal Br. 18 (including a comparison of the invention
to Kahoot!), 21—22.
Although “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).
Appellants next argue that the Examiner’s withdrawal of the prior art
rejection evidences that the claims are not directed to “well understood,
routine, and conventional” computer functions, such that the claims recite
“significantly more” than an abstract idea. Appeal Br. 18.
The Examiner disagrees. Ans. 11—12. According to the Examiner,
“novelty does not make an abstract idea (i.e. rules for managing
competition) any less abstract. Nor does adding more rules coupled with
extra-solution activity transform the abstract idea into something more. A
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specific implementation of an abstract idea on a general purpose computer is
not sufficiently transformative.” Ans. 15.
We agree with the Examiner. “[Ujnder the Mayo/Alice framework, a
claim directed to a newly discovered law of nature (or natural phenomenon
or abstract idea) cannot rely on the novelty of that discovery for the
inventive concept necessary for patent eligibility.” Genetic Techs. Ltd. v.
Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); see Diamond v. Diehr,
101 S. Ct. 1048, 1057-58 (1981).
Appellants then argue that the Examiner fails to offer evidence to
support “his position that the claims do not add ‘significantly more’ to the
purported abstract idea.” Appeal Br. 20 (citing Ex parte Poisson, No. 2012-
011084 (PTAB Feb. 27, 2015)). The Examiner disagrees, responding that
Poisson is not precedential and, “[wjhile Examiners are required to analyze
each and every claim element, there is no requirement that Examiners may
not summarize the results of their analysis.” Ans. 14—15.
Appellants contend that, while Poisson is not precedential, the panel’s
reasoning therein “is persuasive and should be followed, particularly where
the examiner has so clearly failed to substantiate his position with any
credible evidence.” Reply Br. 6.
We are not persuaded by Appellants’ argument. In Poisson, the
Board rejected the Examiner’s conclusion that the claims were directed to an
abstract idea of a new set of rules for playing a game, finding that the claim
instead involved playing a game “using a table and cards.” Poisson 5. The
Board reversed the Examiner’s rejection because the Board concluded that
the facts and evidence relied upon by the Examiner did not support a finding
that the claim was an ineligible abstract idea. Id. Here, the Examiner made
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adequate findings of fact, including finding that the claimed online academic
competition can be analogized to game rules implemented on a generic
computer.
Claims 88—90
Regarding claims 88—90, the Examiner determines that “[t]he idea of
an academic competition is a type of organizing human activity similar to
those found by the courts to be abstract.” Ans. 4.
Appellants argue that claims 88—90 are not directed to an abstract
idea, or to an online academic competition, but rather are directed to
“enabling the creation of teams of individual contestants for participation in
an academic competition,” ‘“creating a league of teams, in which separate
teams can be merged to form one team,’ ‘creating a cycle of academic
competitions amongst the league of teams,’ ‘enabling a team to search for
and then challenge another team of common time availability to an academic
competition,”’ and dividing teams for an intra-team academic competition.
Appeal Br. 16.
Regarding these claims, the Examiner responds that “a human could
manage an academic competition” by creating teams, leagues, and a cycle of
academic competition, presenting questions, and providing a scoreboard.
Ans. 5.
Appellants reply that the claims recite “a real time scoreboard that a
human could not implement, particularly where the contestants are located
remote in time and/or geography from each other,” which takes “the claims
outside of what is performed by a human or a generic computer by
implementing steps and features that are not practiced in the prior art and
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certainly not ‘well-understood, routine and conventional in the field.’”
Reply Br. 5.
We are not persuaded by this argument because Appellants do not
provide evidence or a sufficient explanation about why the claimed real time
scoreboard and contestants that are remote in time and/or geography take the
claims outside of what is performed by a human or a generic computer.
Appellants also argue that claims 88—90 recite “significantly more”
than an abstract idea because they recite matching contestants via the
matching algorithm applying various rules. Appeal Br. 19.
The Examiner notes that algorithms are “a type of organizing human
activity similar to those found by the courts to be abstract,” and “the fact that
a general purpose computer can execute a specific mathematical algorithm is
not improving its function.” Ans. 14.
Appellants reply that the claims do not recite a mathematical
algorithm per se; “[rjather, these features are recited in the context of an
online academic competition where the claimed mechanism is provided for
evenly matching individual contestants from opposing teams,” and “a
particular way to set up an online competition” that does not include
organizing human activities. Reply Br. 3.
We are not persuaded that matching contestants via the matching
algorithm applying various rules causes claims 88—90 to recite significantly
more than an abstract idea. We agree with the Examiner that the recited
algorithms are “a type of organizing human activity similar to those found
by the courts to be abstract.” Ans. 14.
Appellants argue that claims 88—90 do not preempt an abstract idea,
because they provide a real time scoreboard, create leagues of teams, create
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a cycle of academic competitions, enable challenging other teams, etc.
Appeal Br. 22.
We are not persuaded by this argument because, as explained above,
although “preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.”
Ariosa Diagnostics, 788 F.3d at 1379 (Fed. Cir. 2015) (citing Alice, 134 S.
Ct. at 2354).
Claims 48, 64, and 78
Regarding dependent claims 48, 64, and 78, Appellants argue that
claims 48, 64, and 78 recite “significantly more” than an abstract idea
because they recite matching contestants via a matching algorithm applying
various rules. Appeal Br. 19-20.
The Examiner responds that claims 48, 64, and 78 “further describe
the abstract idea, but do not make is less abstract, because they are no more
than a field of use or merely involve insignificant extra-solution activity.”
Ans. 13-14.
As explained above regarding claims 88—90, matching algorithms do
not constitute significantly more than an abstract idea. Algorithms are “a
type of organizing human activity similar to those found by the courts to be
abstract.” Ans. 14.
For the reasons set forth above, Appellants do not apprise us of
reversible error in the rejection, and we sustain the rejection of claims
43—57, 59—73, 75—86, and 88—90 as directed to ineligible subject matter.
CONCLUSION
We AFFIRM the rejection of claims 43—57, 59-73, 75—86, and 88—90
under 35 U.S.C. § 101.
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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).
AFFIRMED
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