14344795 (P.T.A.B. Sep. 26, 2017)

Ex Parte Kruglick

Patent Trial and Appeal BoardSep 26, 2017

14344795 (P.T.A.B. Sep. 26, 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. 2915.737BS 6507 EXAMINER COBURN, CORBETT B ART UNIT PAPER NUMBER 3714 MAIL DATE DELIVERY MODE 14/344,795 03/13/2014 86636 7590 09/26/2017 BRUNDIDGE & STANGER, P.C. 1925 BALLENGER AVENUE, STE. 560 ALEXANDRIA, VA 22314 Ezekiel Kruglick 09/26/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EZEKIEL KRUGLICK Appeal 2016-0072891 Application 14/344,7952 Technology Center 3700 Before HUBERT C. LORIN, NINA L. MEDLOCK, and BRUCE T. WIEDER, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1—24. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed May 18, 2015) and Reply Brief (“Reply Br.,” filed November 13, 2015), and the Examiner’s Answer (“Ans.,” mailed September 16, 2015), and Final Office Action (“Final Act.,” mailed January 23, 2015). 2 Appellant identifies Empire Technology Development LLC as the real party in interest. App. Br. 3. Appeal 2016-007289 Application 14/344,795 CLAIMED INVENTION Appellant’s claimed invention relates to “personalizing an electronic game.” (Spec. 13). Claims 1, 9, and 17 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method to personalize an electronic game, the method comprising: intercepting text based information directed towards a user; extracting particular words from the text based information; and personalizing an electronic game based at least in part on the extracted particular words. REJECTION Claims 1—24 are rejected under 35U.S.C. § 101 as directed to non- statutory subject matter. ANALYSIS Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to include an implicit exception: “[ljaws of nature, natural phenomena, and abstract ideas” are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS BankInt 7, 134 S. Ct. 2347, 2354 (2014). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those 2 Appeal 2016-007289 Application 14/344,795 that claim patent-eligible applications of those concepts.” Alice Corp., 134 S. Ct. at 2355. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts,” id., e.g., to an abstract idea. If the claims are not directed to a patent- ineligible concept, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “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.” Alice Corp., 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297). The Court acknowledged in Mayo, that “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Mayo, 132 S. Ct. at 1293. We, therefore, look to whether the claims focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). Here, in rejecting the pending claims under § 101, the Examiner analyzed the claims using the Mayo/Alice two-step framework, consistent with the guidance set forth in the “2014 Interim Guidance on Patent Subject Matter Eligibility,” 79 Fed. Reg. 74618 (Dec. 16, 2014). Specifically, the Examiner notified Appellant that the claims are directed to “personalizing a game,” i.e., to a method of organizing human activity, and therefore, to an abstract idea; and that the “claims have no meaningful limitations other than the abstract idea [and] merely implement the abstract idea on a computer” (Final Act. 2—3). The Examiner, thus, notified Appellant of the reasons for 3 Appeal 2016-007289 Application 14/344,795 the rejection “together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.” 35 U.S.C. § 132. And, in doing so, the Examiner set forth a proper rejection under § 101 such that the burden shifted to Appellant to explain why the claims are patent-eligible. Appellant’s argument that the Examiner “has not met the burden as described in Part 1 of the ‘Two-part Analysis for Abstract Ideas’” of the 2014 Interim Guidance (App. Br. 15— 16) is unpersuasive. We also are not persuaded of Examiner error by Appellant’s argument that “the Claims are ‘tied to computer technology and distinct from the types of concepts found by the courts to be abstract’ '''' (App. Br. 15—16) (quoting the USPTO’s Abstract Idea Examples issued January 27, 2015).3 Appellant ostensibly points to the Abstract Idea Examples as support. But those examples are just that, i.e., examples. And, although the 2014 Interim Guidance identifies a number of concepts that courts have found to be abstract ideas (see App. Br. 13—14, quoting the Guidance), the Guidance explicitly states that these concepts “are intended to be illustrative and not limiting” (see id. at 13). We agree with the Examiner, and it also is clear from the Specification (see, e.g., Spec. 123), that the focus of the claimed invention is personalizing a game to include content related to a user’s interests. And, although we are aware of no authority that requires an Examiner to identify a case in which a court has found a similar concept to be abstract, that concept, in our view, is substantially similar to customizing a user interface, 3 Available at: https://www.uspto.gov/patent/laws-and- regulations/examination-policy/subj ect-matter-eligibility. 4 Appeal 2016-007289 Application 14/344,795 which the Federal Circuit found in Affinity Labs is an abstract idea. See Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016) (‘“customizing information based on . . . information known about the user’ is an abstract idea.”) (quoting Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015)). Turning to the second step of the Mayo/Alice framework, Appellant argues the claims amount to “an ‘inventive concept’ by virtue of no prior art being cited in the Office Action” (App. Br. 19; see also id. at 18 (“the very fact that no references were cited as disclosing the claimed features” disproves that the claims do not amount to more than the abstract idea itself); Reply Br. 4—6 (arguing the claims are novel and amount to significantly more)). That argument is likewise unpersuasive. Under the Mayo/Alice framework, a claim directed to a newly discovered abstract idea “cannot rely on the novelty of that discovery for the inventive concept necessary for patent-eligibility.” Genetic Techs. Ltd. v. MerialL.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016). An abstract idea also does not transform into an inventive concept just because the prior art does not disclose or suggest it. See Mayo, 132 S. Ct. at 1304—05. Instead, the Supreme Court has held that “[t]he ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188— 89 (1981). Finally, Appellant argues that the claims are patent-eligible because they recite a specific way to personalize an electronic game by a server that “intercepts ‘text based information directed towards a user, ’ extracts 5 Appeal 2016-007289 Application 14/344,795 ‘particular words from the text based information,’ and personalizes ‘an electronic game based at least in part on the extracted particular words, ’ in order to solve a problem faced by computers on the Internet” (App. Br. 19 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)). Yet not only does Appellant not identify the “problem faced by computers on the Internet” that the claimed invention allegedly solves but the claims do not recite a network, a server, or the Internet. Cf. Intellectual Ventures I LLC 792 F.3d at 1371 (“claims here do not address problems unique to the Internet, so DDR has no applicability”). In fact, claim 1 does not — even nominally — recite a computer. Appellant maintains, as described above, that the claims are patent- eligible because they recite a specific way to personalize an electronic game by intercepting text-based information and extracting particular words from that information. Yet, as the Examiner observes, “[t]he claims contain no details of how the text-based information is intercepted”; “supply [no] details of the method of extracting the words from the text”; and do not “tell how the electronic game is personalized” (Ans. 3). We are not persuaded that the Examiner erred in rejecting claims 1—24 under 35 U.S.C. § 101. Therefore, we sustain the Examiner’s rejection.4 4 The Examiner, in the Answer, mistakenly refers to a district court decision (GametekLLC v. Zynga Inc., Case No. 5:13-cv-02546 (N.D. Cal. April 25, 2014)), as a Federal Circuit decision (Ans. 5—6). That is harmless error. We find that the Examiner otherwise articulates more than sufficient reasoning to support the rejection under § 101. 6 Appeal 2016-007289 Application 14/344,795 DECISION The Examiner’s rejection of claims 1—24 under 35 U.S.C. § 101 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)(l)(iv). AFFIRMED 7