Ex Parte Morrison et al

Patent Trial and Appeal Board

Oct 2, 2018

13715913 (P.T.A.B. Oct. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/715,913 12/14/2012
69316 7590 10/04/2018
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
FIRST NAMED INVENTOR
Frank R. Morrison III
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.
337124.01 4543
EXAMINER
ROWLAND, STEVE
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
10/04/2018 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):
usdocket@microsoft.com
chriochs@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK R. MORRISON III, BRANDON HUNT,
JEFFREY DAVID HENSHAW, MICHAEL GALLOP,
IVAN P. TRINDEV, and ERIC NEIL LOCKARD
Appeal2016-005249
Application 13/715,913
Technology Center 3700
Before PHILIP J. HOFFMANN, BRADLEYB. BAY AT, and
AMEE A. SHAH, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's rejection of claims 1, 2, 4--13, and 15-20. We have jurisdiction
under 35 U.S.C. § 6(b). The Board heard the appeal on July 3, 2018.
We AFFIRM.
1 According to Appellants, "[t]he real party in interest is Microsoft
Technology Licensing, LLC." Appeal Br. 3.
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Application 13/715,913
According to Appellants, the invention is directed "to acquiring a
digital content item by presenting a partial functionality version of the digital
content item[,] and progressively adding functionality until sufficient content
portions have been received for providing a full functionality version of the
digital content item." Spec. ,r 10. Claims 1, 12, and 18 are the independent
claims on appeal. Below, we reproduce claim 1 as illustrative of the
appealed claims.
1. A method of acquiring a video game including a
plurality of content portions, the method comprising:
receiving and loading into computer memory a first set of
the content portions, the first set including less than an entirety
of the content portions;
computer-executing a partial functionality version of the
video game using the first set of content portions before all of the
plurality of content portions are received and loaded into
computer memory;
receiving and loading into computer memory a second set
of the content portions while the partial functionality version of
the video game is computer-executing; and
adding functionality to the partial functionality version of
the video game using the second set of content portions without
interrupting computer-execution of the partial functionality
version of the video game.
Appeal Br., Claims App. (Claim 1 ).
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. claims 1, 2, 4--13, and 15-20 under 35 U.S.C. § 101 as
ineligible subject matter;
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II. claims 1, 2, 4, 7, 11-13, and 18 under 35 U.S.C. § I02(b) as
anticipated by Chihaya (US 2009/0062007 Al, pub. Mar. 5,
2009); and
III. claims 5, 9, and 10 under 35 U.S.C. § I03(a) as unpatentable
over Chihaya and Archer et al. (US 2013/0079132 Al, pub.
Mar. 28, 2013) ("Archer").
ANALYSIS
Rejection I
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: "[l]aws of nature, natural phenomena, and abstract ideas" are not
eligible for patenting. See, e.g., Alice Corp. Pty. Ltd. v. CLS Bank
Int'!, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step analysis
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those 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. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
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
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"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 78, 79).
Regarding the first step of the analysis, the Supreme 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, 566 U.S. at 71. Therefore, we look to whether the claims
focus on a specific means or method that improves the relevant technology,
or instead whether the claims are 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).
Regarding independent claim 1, based on our review of the record,
including Appellants' Appeal Brief (see Appeal Br. 9-13) and Reply Brief
(see Reply Br. 2-3), and the Examiner's Final Office Action (see Final
Action 2, 7) and Answer (see Answer 3), we agree with the Examiner that
the claim is directed to the abstract idea of acquiring a video game.
Specifically, Appellants argue that claim 1 is not directed to an
abstract idea because
[i]n the claim, "acquiring" is not used to refer to an abstract
transfer of legal rights (e.g., acquisition of purchased ownership
rights). "Acquiring" instead refers to the technical process by
which the game is loaded onto a computing device so that the
game can be played by the computing device. In other words,
"acquiring" has to do with computer networks, computer storage
devices, and/or computer memory, not contracts or abstract legal
rights
(Appeal Br. 10). We are not persuaded, however, because Appellants'
claim 1 is similar to the claims in RaceTech, where the Federal Circuit
affirmed the district court's finding that claims reciting a "video server," a
"game server," a "gateway," and "game terminals" are directed to an
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abstract idea. RaceTech, LLC v. Kentucky Downs, LLC, 167 F. Supp. 3d
853, 860-61, 863---64, 867-68 (W.D. Ky. 2016), aff'd, 676 F. App'x 1009
(Fed. Cir. 2017). By way of further example, Appellants' claim 1 is similar
to the claims in White Knuckle Gaming, where the Federal Circuit agreed
with the district court that claims reciting an "internet-based method of
updating ... software ... [are directed to] an abstract idea." White Knuckle
Gaming, LLC, v. Electronic Arts, Inc., 1:15-cv-00150 (D. Ut. 2016),
aff'd, 683 F. App'x 931 (Fed. Cir. 2017).
Appellants argue that claim 1 is not directed to an abstract idea
because it is not directed to a fundamental economic practice, and is not
directed to a method of organizing human activity. Appeal Br. 11-12. This
is not persuasive because, in the Answer, the Examiner does not rely on a
finding that the claims are directed to a fundamental economic practice or
method of organizing human activity to determine that the claims are
directed to an abstract idea. See, e.g., Answer 3.
Appellants argue that claim 1 is not abstract because the claim is not
directed to an idea of itself. Appeal Br. 12. We disagree. We look to
whether the claims focus on a specific means or method that improves the
relevant technology, or instead whether the claims are directed to a result or
effect that itself is the abstract idea, and merely invoke generic processes and
machinery. See Enfzsh, 822 F.3d at 1336. There is no other computing
element or component recited in claim 1 other than a generic "computer
memory," (Appeal Br., Claims App. (Claim 1 )). Further, claim 1 does not
purport to improve the "computer memory," but, instead, the claim merely
invokes the use of the memory during execution of the video game. Id.
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Appellants argue that claim 1 is not directed to an abstract idea
because it is not directed to a mathematical relationship or formula. Appeal
Br. 12-13. This is not persuasive because, in the Answer, the Examiner
does not rely on a finding that the claims are directed to a mathematical
relationship or formula to determine that the claims are directed to an
abstract idea. See, e.g., Answer 3.
Regarding the second step, Appellants argue that even "assuming[,]
arguendo, that claim 1 ... [is] directed to an abstract idea, ... [ when
considered as a whole,] claim 1 is also directed to 'something more' than the
abstract idea" in accordance with the second step of the Alice/Mayo analysis.
Appeal Br. 13-14. Appellants do not persuade us, however.
Claim 1 "do[ es] not require any nonconventional computer, network,
or display components, or even a 'non-conventional and non-generic
arrangement of known, conventional pieces,' but merely call[ s] for
performance of the claimed" receiving and executing of information by and
within a generic and conventional memory. Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016). Restated, the claim uses
a generic memory and performs routine computer functions such as
executing the instructions of a computer program or video game. Taking the
claim elements separately, the functions performed by the memory-
receiving and loading into memory, and "computer-executing"
instructions- are purely conventional. When considered as an ordered
combination, there is nothing that is not already present when the steps are
considered separately. Contrary to Appellants' argument, claim 1 does not
improve the functioning of memory, and does not improve any other
technology or technical field. Instead, the claim represents an improvement
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to the abstract idea of acquiring a video game. That is not enough to
transform an abstract idea into a patent-eligible invention. See Visual
Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1258 (Fed. Cir. 2017)
("[W]e must. .. ask whether the claims are directed to an improvement to
computer functionality versus being directed to an abstract idea." (internal
quotations omitted)).
Appellants argue that, like the claims in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), Appellants' claimed
invention is necessarily rooted in computer technology to overcome a
problem specifically arising in the realm of computers. Appeal Br. 14. We
are not persuaded, however, because unlike the situation in DDR Holdings,
the problem of reducing wait time is not one necessarily rooted in the realm
of computer, and there is no indication here that the purported solution (i.e.,
the claimed memory) is used other than in its normal, expected, and routine
manner (i.e., receiving, storing, and executing information).
Appellants argue that the § 101 rejection is in error because the
"rejection fails to make a prima facie case of ineligibility." Appeal Br. 15;
see also id. at 15-16. We are unpersuaded, because in the Answer the
Examiner has clearly articulated the reasons as to why the claim is directed
to an abstract idea, and has notified Appellants of the reasons for the
rejection "together with such information and references as may be useful in
judging of the propriety of continuing the prosecution of [the] application,"
such that the Examiner sets forth a prima facie case. 35 U.S.C. § 132.
Answer 3---6. Further, Appellants' argument regarding the Examiner's
discussion related to "'just-in-time' acquisition of resources" is not
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persuasive, inasmuch as the Examiner does not rely on any such discussion
in the Answer to support the§ 101 rejection. Appeal Br. 16.
Although we have carefully considered Appellants' arguments
regarding claims 6, 8, 12, 15, 18, and 19, we are not persuaded that the
Examiner errs in finding that each of these is directed to an abstract idea, in
accordance with step 1 of the Alice/Mayo analysis, and none of the claims
recites 'something more' than the abstract idea, in accordance with step 2 of
the Alice/Mayo analysis, for substantially the same reasons as claim 1,
discussed supra. See Appeal Br. 16-32.
Rejection II
With respect to the Examiner's rejection of claim 1, Appellants argue
that the rejection is in error for the following reasons:
Chihaya does not disclose a partial functionality version
of its hidden object game. Chihaya only discloses a full
functionality version of the hidden object game. In particular,
Chihaya does not disclose, for example, that a pictorial
background is first downloaded and presented, then later a list of
objects to be found is downloaded and presented, and then later
the hidden objects themselves are downloaded and presented.
Likewise, Chihaya does not disclose first downloading and
presenting the pictorial background or hidden objects at a lesser
resolution or in anything other than a fully functional state.
According to the teachings of Chihaya, only a full functionality
version of the video game is computer-executed.
Appeal Br. 33. Appellants do not persuade us of error, however, for the
following reasons.
As set forth above, claim 1 recites, after the preamble, the following
method steps:
receiving and loading into computer memory a first set of
the content portions, the first set including less than an entirety
of the content portions;
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computer-executing a partial functionality version of the
video game using the first set of content portions before all of the
plurality of content portions are received and loaded into
computer memory;
receiving and loading into computer memory a second set
of the content portions while the partial functionality version of
the video game is computer-executing; and
adding functionality to the partial functionality version of
the video game using the second set of content portions without
interrupting computer-execution of the partial functionality
version of the video game
Appeal Br., Claims App. (Claim 1 ). The claim does not define what is
meant by "a partial functionality version" of a video game, other than to
indicate that it is "computer-execut[ed]." See id. Further, although
Appellants reference paragraph 9 of their Specification as "describ[ing]
some of the advantages of computer-executing a partial functionality version
of the game" (id. at 32), Appellants do not establish that the Specification
sufficiently defines or further limits what is meant by a partial functionality
version of a video game. Still further, independent claim 1 only recites that
the partial functionality version updates while the video game is "computer-
executing" (id. at Claims App. (Claim 1)), and does not require that the
partial functionality version updates while someone is playing the game, for
example. Thus, in the absence of persuasive evidence or a persuasive line of
argument convincing us of the contrary, the Examiner adequately supports
the finding that the teaching in Chihaya of a "computing device [that]
automatically connects with a server to update the game with data containing
new episodes of the game," discloses the claimed "partial functionality
version" of a video game ( as well as the claimed updating of the partial
functionality version). Final Action 3.
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Therefore, based on the foregoing, we sustain the Examiner's
rejection of claim 1 as anticipated by Chihaya. Inasmuch as Appellants do
not separately argue against the Examiner anticipation rejection of claims 4
and 11 that depend from claim 1, we also sustain the rejection of these
dependent claims.
Appellants separately argue against the Examiner's anticipation
rejection of dependent claim 2. Specifically, Appellants argue that the
Examiner errs because Chihaya does not disclose "claim 2['s] require[ment]
that the additional content portions are progressively received and additional
functionality is progressively added 'until sufficient content portions are
received and loaded into computer memory for providing a full functionality
version of the video game."' Appeal Br. 33 ( citing Claim 2). Appellants fail
to persuade us, however, that the argued recitation is not disclosed by
Chihaya's "download[ing] new episodes upon reaching in-game
milestones," which "Appellant[ s] acknowledge" is disclosed by Chihaya.
Id. at 22. More specifically, we are not persuaded by Appellants' argument
that "[a]ccording to claim 2, a single download is performed." Id.; see also
Answer 7 ("[The] Examiner is unable to locate any recitation of 'a single
download' in claim[] 2.").
Appellants separately argue against the Examiner's anticipation
rejection of dependent claim 7. In particular, Appellants argue that the
rejection is in error because
claim 7 further requires that "adding functionality includes
initially presenting a virtual game element with a partial
functionality and subsequently presenting the virtual game
element with a full functionality as additional content portions
are received." As claimed, the same game element is first
presented with partial functionality, and then later with full
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functionality. No game element of Chihaya is first presented
with partial functionality and then later, after downloading
additional content, with full functionality.
Appeal Br. 34. Appellants, however, do not address the Examiner's specific
findings (Final Action 4) that Chihaya's Abstract, which discusses the
acquisition of "new episodes of the game" ( Chihaya Abstract), discloses the
claimed step of adding functionality to a partial functionality virtual game
element. In the absence of such argument, Appellants do not persuade us of
error. Thus, we sustain claim 7's rejection.
Although Appellants separately argue against the Examiner's
anticipation rejection of independent claim 12, Appellants' arguments are
substantially the same as those discussed above for claim 1. Appeal Br. 34.
Thus, we sustain claim 12' s rejection for similar reasons as claim 1.
Regarding Appellants' separate argument against the Examiner's
anticipation rejection of dependent claim 13, Appellants' arguments are
substantially the same as those discussed above for claim 7. Appeal Br. 35.
Thus, we sustain claim 13 's rejection for similar reasons as claim 1.
Although Appellants separately argue against the Examiner's
anticipation rejection of independent claim 18, Appellants' arguments are
substantially the same as those discussed above for claims 1 and 7. Appeal
Br. 35-36. Thus, we sustain claim 18's rejection for similar reasons as
claims 1 and 7.
Rejection III
With respect to the Examiner's obviousness rejection of dependent
claim 5, Appellants argue that the rejection is in error because "[ n ]either
Chihaya nor Archer discloses providing a user-controlled character or entity
prior to computer-executing a full functionality version of the video game."
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Appeal Br. 37. Appellants, however, do not address the Examiner's specific
findings that "Archer suggests-where Chihaya does not disclose-where
the first set of the content portions includes a user-controlled character or
entity of the video game (Fig[ure] 6A)," and that "[i]t would have been
obvious ... to combine the disclosures of Archer and Chihaya" to provide
the argued recitation. Final Action 6. In the absence of such argument,
Appellants do not persuade us of error. Thus, we sustain claim S's rejection.
With respect to the Examiner's rejection of dependent claim 9,
Appellants argue that the Examiner errs for the following reason:
[C]laim 9 requires that the partial functionality version of the
game includes a partial functionality multiplayer game. Neither
Chihaya nor Archer discloses computer-executing a partial
functionality multiplayer game prior to computer-executing a
full functionality version of the video game.
Appeal Br. 38. Appellants, however, do not address the Examiner's specific
findings that "Archer suggests-where Chihaya does not disclose-where
the partial functionality version of the video game includes a partial
functionality multiplayer game" (Final Action 6 ( citation omitted)), and that
"[i]t would have been obvious ... to combine the disclosures of Archer and
Chihaya" to provide the argued recitation (id.). In the absence of such
argument, Appellants do not persuade us of error. Thus, we sustain
claim 9' s rejection.
With respect to the Examiner's obviousness rejection of dependent
claim 10, Appellants argue that the rejection is in error because
claim 10 requires that the first set of the content portions includes
a multiplayer game engine. Neither Chihaya nor Archer
discloses receiving and computer-executing a multiplayer game
engine prior to computer-executing a full functionality version of
the video game.
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Appeal Br. 38. Appellants, however, do not address the Examiner's specific
findings that "Archer suggests-where Chihaya does not disclose-where
the first set of the content portions includes a multiplayer game engine of the
video game" (Final Action 7 (citation omitted)), and that "[i]t would have
been obvious ... to combine the disclosures of Archer and Chihaya" to
provide the argued recitation (id.). In the absence of such argument,
Appellants do not persuade us of error. Thus, we sustain claim lO's
rejection.
DECISION
We AFFIRM the Examiner's rejections under 35 U.S.C. §§ 101,
102(b), and 103(a) of claims 1, 2, 4--13, and 15-20.
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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