Ex Parte PARKER

Patent Trials and Appeals Board

Apr 17, 2019

14952461 - (D) (P.T.A.B. Apr. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/952,461 11/25/2015
133759 7590 04/19/2019
Sheppard Mullin Richter & Hampton LLP
650 Town Center Drive, 4th Floor
Costa Mesa, CA 92626
FIRST NAMED INVENTOR
Joseph William PARKER
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.
46NX-218873 1055
EXAMINER
MCCULLOCH JR, WILLIAM H
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
04/19/2019 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):
dmipdocketing@sheppardmullin.com
SheppardMullin_Pair@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH WILLIAM PARKER
Appeal2018-006501
Application 14/952,461 1
Technology Center 3700
Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and
KENNETH G. SCHOPFERAdministrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner's rejection of claims 1-13, 15-28, and 30-35. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
According to Appellant, the invention "relates to systems and method
of providing a virtual world game where users compete against artificial
1 Appellant identifies Joseph William Parker as the real party in interest.
Br. 2.
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Application 14/952,461
intelligence of the game and/or other users to collect autographs and pictures
of virtual celebrities for game credits." Spec. ,r 1. Claims 1, 16, and 31 are
the independent claims on appeal. Below, we reproduce claim 1 as
illustrative of the appealed claims.
1. A computer implemented method for providing a
celebrity chase virtual world game, the method being
implemented on a computer system having one or more physical
processors programmed with computer program instructions
that, when executed by the one or more physical processors,
program the computer system to perform the method, the method
compnsmg:
generating, by the computer system, an instance of a
virtual world in which a celebrity chase occurs;
placing, by the computer system, an instance of a celebrity
avatar that represents a celebrity into the instance of the virtual
world;
placing, by the computer system, an instance of a first
player avatar that represents a first player into the instance of the
virtual world;
placing, by the computer system, an instance of a second
player avatar that represents a second player into the instance of
the virtual world;
receiving, by the computer system, an input from the first
player to activate a virtual camera flash in the vicinity of the
second player avatar;
causing, by the computer system, the virtual camera flash
to be directed toward the second player avatar;
causing, by the computer system, the second player avatar
to be impeded from pursuing the celebrity avatar for a
predetermined duration of time responsive to the virtual camera
flash;
determining, by the computer system, that the first player
avatar is within a predetermined proximity of the celebrity avatar
in the instance of the virtual world;
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causing, by the computer system, the celebrity avatar to
take one or more evasive actions to evade the first player
responsive to the determination that the first player avatar is
within the predetermined proximity of the celebrity avatar;
determining, by the computer system, that the one or more
evasive actions are sufficient to evade the first player; and
responsive to the determination that the one or more
evasive actions are sufficient, causing, by the computer system,
the celebrity avatar to escape.
REJECTION2
The Examiner rejects claims 1-13, 15-28, and 30-35 under
35 U.S.C. § 101 as patent-ineligible.
PRINCIPLES OF LAW CONCERNING 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 has long interpreted 35 U.S.C. § 101 to include implicit
exceptions, however: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573
U.S. 208,216 (2014).
In determining whether a claim falls within an excluded category, the
Supreme Court's two-step framework, described in Mayo and Alice, guides
us. See Alice, 573 U.S. at 217-18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with
that framework, we first determine what concept the claim is "directed to."
2 "The rejection of claim 34 under double patenting is not appealed." Br. 2
n. 1; see Final Action 2.
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Id. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas-and, thus, patent
ineligible-include certain methods of organizing human activity, such as
fundamental economic practices (Alice, 573 U.S. at 219--20; Bilski, 561 U.S.
at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95
(1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63, 69
(1972)). Concepts determined to be patent eligible include physical and
chemical processes, such as "molding rubber products" (Diamond v. Diehr,
450 U.S. 175, 191 (1981)); "tanning, dyeing, making water-proof cloth,
vulcanizing India rubber, smelting ores" (id. at 182 n. 7 ( quoting Corning v.
Burden, 56 U.S. 252, 267---68 (1853))); and manufacturing flour (Benson,
409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.").
Nonetheless, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
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environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("Guidance"). Under that Guidance, we first look to
whether the claim recites:
( 1) any judicial exceptions, including certain groupmgs of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic practice, or
mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining Procedure
("MPEP") § 2106.05(a}-(c), (e}-(h)).
A practical application "appl[ies ], rel[ies] on, or use[ s] the judicial
exception in a manner that imposes a meaningful limit on the judicial
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exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception." Guidance at 54.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not "well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
See generally Guidance.
ANALYSIS
Initially, we note that Appellant argues against the Examiner's
rejection of independent claims 1, 16, and 31 as a group. Appeal Br. 11-14.
We choose independent claim 1 for our analysis, and the remaining
independent claims stand or fall with claim 1. See 3 7 C.F .R. § 41.3 7
( c )(1 )(iv). For the following reasons, we sustain the Examiner's rejection of
the claims as patent-ineligible.
As discussed below, we determine that in accordance with point (1) of
the Guidance referenced above, independent claim 1 recites at least one
judicial exception, including an abstract idea. More specifically, as
described in further detail, the abstract idea includes mental processes.
As set forth above, claim 1 recites the following: (1) "A computer
implemented method for providing a celebrity chase virtual world game, the
method being implemented on a computer system having one or more
physical processors programmed with computer program instructions that,
when executed by the one or more physical processors, program the
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computer system to perform the method, the method comprising:" (2)
"generating, by the computer system, an instance of a virtual world in which
a celebrity chase occurs"; (3) "placing, by the computer system, an instance
of a celebrity avatar that represents a celebrity into the instance of the virtual
world"; ( 4) "placing, by the computer system, an instance of a first player
avatar that represents a first player into the instance of the virtual world"; (5)
"placing, by the computer system, an instance of a second player avatar that
represents a second player into the instance of the virtual world"; ( 6)
"receiving, by the computer system, an input from the first player to activate
a virtual camera flash in the vicinity of the second player avatar"; (7)
"causing, by the computer system, the virtual camera flash to be directed
toward the second player avatar"; (8) "causing, by the computer system, the
second player avatar to be impeded from pursuing the celebrity avatar for a
predetermined duration of time responsive to the virtual camera flash"; (9)
"determining, by the computer system, that the first player avatar is within a
predetermined proximity of the celebrity avatar in the instance of the virtual
world"; (10) "causing, by the computer system, the celebrity avatar to take
one or more evasive actions to evade the first player responsive to the
determination that the first player avatar is within the predetermined
proximity of the celebrity avatar"; (11) "determining, by the computer
system, that the one or more evasive actions are sufficient to evade the first
player"; (12) and "responsive to the determination that the one or more
evasive actions are sufficient, causing, by the computer system, the celebrity
avatar to escape." Appeal Br. 22, Claims App.
Here, except for the recitation of generic computer hardware ( as
discussed below), each of claim 1 's recitations (2}-(12) may be done by a
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person using mental processes, in the mind, and with a pen and paper.
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Cir. 2016). More specifically, one may mentally, and with a pen and paper,
(2) "generat[ e] ... an instance of a virtual world in which a celebrity chase
occurs"; (3) "plac[ e] ... an instance of a celebrity avatar that represents a
celebrity into the instance of the virtual world"; (4) "plac[e] ... an instance
of a first player avatar that represents a first player into the instance of the
virtual world"; (5) "plac[ e] ... an instance of a second player avatar that
represents a second player into the instance of the virtual world"; ( 6)
"activate a virtual camera flash in the vicinity of the second player avatar";
(7) "caus[ e] ... the virtual camera flash to be directed toward the second
player avatar"; (8) "caus[ e] ... the second player avatar to be impeded from
pursuing the celebrity avatar for a predetermined duration of time responsive
to the virtual camera flash"; (9) "determin[ e] ... that the first player avatar
is within a predetermined proximity of the celebrity avatar in the instance of
the virtual world"; (10) "caus[ e] ... the celebrity avatar to take one or more
evasive actions to evade the first player responsive to the determination that
the first player avatar is within the predetermined proximity of the celebrity
avatar"; ( 11) "determin[ e] ... that the one or more evasive actions are
sufficient to evade the first player"; (12) and "responsive to the
determination that the one or more evasive actions are sufficient, caus[ e] ...
the celebrity avatar to escape." These are mental processes because one may
imagine these recitations, constructing a virtual world within the mind, and
imagining claim recitations (2}-(12). Further, one may draw or otherwise
construct on paper a virtual world in which claim recitations (2}-(12) occur.
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In accordance with point (2) of the Guidance referenced above,
claim 1 does not recite any additional element that integrates the judicial
exception into a practical application-i.e., something that "appl[ies],
rel[ies] on, or use[ s] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception." Guidance
at 54. We note that the claim only generically recites the use of certain
hardware-a computer system and physical processors-and thus the
hardware does not meaningfully limit the claim. Appellant does not
describe the claimed hardware in such a way as to indicate that the hardware
is anything other than generic. See Spec. ,r 25 ("Computer system 110 may
be configured as a server, a desktop computer, a laptop computer, and/or
other device that can be programmed to provide a celebrity chase virtual
world game, as described herein."); ,r 137 ("Illustration of computer
system 110 in F[igure] 1 is not intended to be limiting."); ,r 139 ("As such,
processor 112, 142 may include one or more of a digital processor, an analog
processor, a digital circuit designed to process information, an analog circuit
designed to process information, a state machine, and/ or other mechanisms
for electronically processing information.").
Appellant argues that the "instantiating a virtual world and player
avatars is a technical feature that is inextricably tied to computers, just like
the way to handle hyperlinks was inextricably tied to computers in [DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)]." As
DDR explains, however, "after Alice, there can remain no doubt: recitation
of generic computer limitations does not make an otherwise ineligible claim
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patent-eligible. The bare fact that a computer exists in the physical rather
than purely conceptual realm 'is beside the point."' DDR, 773 F.3d at 1256.
Appellant further argues that
[l]ike the rules in [McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)], the foregoing
recitations relate to specifically and particularly applying rules
( e.g., computer logic unlike mere rules for playing a game) that
improve a technological process ( e.g., executing a virtual world
game) by allowing automation of further tasks (e.g.,
automatically deciding outcomes via computer logic based on
player behavior in a virtual world game).
Br. 13. We disagree with Appellant, however. Claim 1, unlike the claims in
McRO, as we found above, uses generic hardware, and does not recite an
improvement to a particular computer technology. See McRO, 837 F.3d
at 1314--15 (Finding claims not abstract because they "focused on a specific
asserted improvement in computer animation."). Restated, the claims "are
not tied to any particular novel machine or apparatus" or provide a
technological improvement capable of rescuing them from the realm of
abstraction. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed.
Cir. 2014).
For these reasons, we disagree with Appellant that "[l]ike the claims
in [BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016)], [claim 1] recite[s] significantly more than an alleged
abstract idea." Br. 14. In BASCOM, the court determined that "an inventive
concept can be found in the non-conventional and non-generic arrangement
of known, conventional pieces." BASCOM, 827 F.3d at 1350. Specifically,
"[t]he inventive concept described and claimed in the '606 patent is the
installation of a filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each end user." Id.
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Unlike BASCOM's claims, we do not agree that Appellant's claim 1
provides a solution to a technological problem. For example, claim 1 does
not recite any improvement in the processor's functioning. Nor does the
claim effect an improvement in any other technology or technical field-
instead, claim 1 recites a method of playing a game, which is itself an
abstract idea.
Therefore, claim 1 is directed to the above-discussed abstract ideas,
and does not integrate the judicial exception into a practical application.
In accordance with points (3) and (4) of the Guidance referenced
above, claim 1 fails to recite a specific limitation beyond the judicial
exception which is not well-understood, routine, and conventional in the
field, but instead simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception. Taking the claim elements separately,
the functions performed by the claimed hardware are purely conventional.
Specifically, the claim uses known, generic components to perform their
known, basic functions. Restated, the claim recites only well-understood,
routine, and conventional functions. See Elec. Power Grp. v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016); see also In re Katz Interactive Call
Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a
possible narrower construction of the terms 'processing,' 'receiving,' and
'storing,' ... those functions can be achieved by any general purpose
computer without special programming."). There is no unconventional use
of the claimed hardware, and the hardware does not produce any unexpected
result. Considered as an ordered combination, claim 1 's hardware does not
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add anything that is not already present when we consider the steps
separately.
Thus, based on the foregoing, we sustain the Examiner's § 101
rejection of independent claims 1, 16, and 31.
We have reviewed Appellant's arguments regarding dependent
claims 6, 11, 12, 15, 21, 26, 27, 30, 33, and 35. Br. 14--21. We sustain the
Examiner's rejection of these claims, however, for the same reasons we
sustain claim 1 's rejection. We also sustain the rejection of dependent
claims 2-5, 7-10, 13, 17-20, 22-25, 28, 32, and 34 that Appellant does not
argue separately.
DECISION
We AFFIRM the Examiner's rejection of claims 1-13, 15-28,
and 30-35.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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