Ex Parte Sano

Patent Trial and Appeal Board

Jan 10, 2018

14228162 (P.T.A.B. Jan. 10, 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.
14/228,162 03/27/2014 Takayuki Sano P4457US 1069
8968 7590 01/12/2018
DRINKER BIDDLE & REATH LLP
ATTN: PATENT DOCKET DEPT.
191 N. WACKER DRIVE, SUITE 3700
CHICAGO, IL 60606
EXAMINER
YEN, JASON TAHAI
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
01/12/2018 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):
DB RIPDocket @ dbr. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKAYUKI SANO
Appeal 2017-002144
Application 14/228,1621
Technology Center 3700
Before WILLIAM V. SAINDON, LYNNE H. BROWNE, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) of the Examiner’s
decision, as set forth in the Final Office Action dated October 8, 2015
(“Final Act.”), rejecting claims 1-17 under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellant is the Applicant, Gree, Inc., which, according to the
Appeal Brief, is the real party in interest. Appeal Br. 2.
Appeal 2017-002144
Application 14/228,162
BACKGROUND
The disclosed subject matter relates to “a server device, a control
method performed by the server device, a program, and a terminal device.”
Spec. ^ 2. Claims 1, 6-11, and 13 are independent. Claim 1 is reproduced
below2:
1. A control method performed by a server
device the method comprising:
storing, in a storage unit, a plurality of
lottery modes, wherein each of the plurality of
lottery modes associates respective items, which
are providable to a user, with item odds;
receiving a start request for a game from the
terminal device;
transmitting an image indicating the
plurality of lottery modes to the terminal device;
selecting a lottery mode from among the
plurality of lottery modes;
transmitting an image indicating the selected
lottery mode;
holding a drawing from among a plurality of
types of the items on the basis of the selected
lottery mode;
transmitting an image indicating a won item
in the drawing to the terminal device,
wherein the won item is usable in the game
for which the start request was received.
2 The version of claim 1 shown here is from the Claims Appendix
filed July 11, 2016.
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DISCUSSION
The Supreme Court has established “a framework 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. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1294
(2012)). Under the Alice framework, we first “determine whether the claims
at issue are directed to one of those patent-ineligible concepts”—i.e., a law
of nature, a natural phenomenon, or an abstract idea. Id. If so, we secondly
“consider the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
132 S. Ct. at 1298, 1297). The Supreme Court described the second step as
“a 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.
(alteration in original) (quoting Mayo, 132 S. Ct. at 1294).
Appellant presents certain arguments regarding all claims as a group,
with some arguments based on certain language common to all eight
independent claims—claims 1, 6-11, and 13. See, e.g., Appeal Br. 15.
Appellant also presents arguments based on certain language specific to each
of the eight independent claims. See, e.g., Reply Br. 3-5. Appellant does
not separately argue any dependent claims.
A. Step One
Regarding Step One of the Alice framework, the Examiner states that
“[t]he claims is/are directed to the abstract idea of managing a lottery game,
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which is similar to concepts of an idea of itself, certain methods of
organizing human activity and mathematical relationships.” Ans. 4; see also
Final Act. 4 (“Claim(s) 1, 6-11 is/are directed to managing] a game. The
idea of managing a game is a type of organizing human activity similar to
those found by the courts to be abstract.”).3
First, Appellant addresses the Examiner’s statement that “[rjules of
playing a game are abstract ideas based on Alice and other relevant recent
court decisions.” Appeal Br. 15 (quoting Final Act. 6). Appellant argues all
pending claims as a group, asserting that the Examiner “provides no specific
citation to Alice or to any other court decision in support of this assertion”
and argues that “Alice does not discuss the patentability of game rules at
all.” Id. Appellant states that the “reliance on unnamed ‘other relevant
recent court decisions’ appears to be based on the Planet Bingo Federal
Circuit decision,” “[hjowever, Planet Bingo is nonprecedential (and
therefore limited to its facts) and does not support such a broad rule.” Id.;
see Planet Bingo, LLCv. VKGSLLC, 576 Fed. App’x 1005 (Fed. Cir. 2014).
The Examiner responds that the “claimed invention was, and is,
evaluated based on the current law at the time of examination, which in this
case, relates to 35 U.S.C. [§] 101 based on one or more recent Supreme
Court decisions, including Alice.” Ans. 8.
3 Although the Examiner discusses “[c]laim(s) 1, 6-11,” we
understand this statement regarding Step One to address all pending claims,
including independent claim 13. See Final Act. 7 (“Dependent [c]laim(s) 2-
5, 12-17 further describe the abstract idea, but do not make it less abstract
. . . .”).
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Under Step One, we “look at the ‘focus of the claimed advance over
the prior art’ to determine if the claim’s ‘character as a whole’ is directed to
excluded subject matter.” Affinity Labs of Texas, LLC v. DirectTV, LLC,
838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLCv.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). Here, Appellant does
not assert error in the Examiner’s identification of what the pending claims
are “directed to”; rather, Appellant argues that “rules of a game” has not
been identified by courts as an abstract idea. Appeal Br. 15.
As an initial matter, although the Examiner did—in a discussion of
method claim 1—state that “[t]he described process amounts to no more
than a set of rules for playing a game” and that “[rjules of playing a game
are abstract ideas based on Alice and other relevant recent court decisions”
(Final Act. 6), we understand the Examiner’s position regarding Step One as
that set forth in the initial paragraph of this section. Thus, Appellant’s
argument that “rules of a game” has not been identified as an abstract idea
by courts does not apprise us of error in the Examiner’s determination that
the claims here are directed to managing a lottery game, and that such
subject matter is similar to certain methods of organizing human activity that
have been found to be abstract ideas. See Ans. 4; Final Act. 4.
Further, although the Planet Bingo decision is non-precedential (as
noted by Appellant), we consider the Federal Circuit’s discussion there
instructive as to the analysis of Step One here. See Fed. Cir. R. 32.1(d) (rev.
Oct. 2017) (“The court may refer to a nonprecedential disposition in an
opinion or order and may look to a nonprecedential disposition for guidance
or persuasive reasoning . . . .”). In Planet Bingo, the Federal Circuit
characterized the patents at issue as “recit[ing] methods and systems for
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‘managing a game of Bingo’” and stated that “[t]his is similar to the kind of
‘organizing human activity’ at issue in Alice, 134 S.Ct. at 2356.” Planet
Bingo, 576 Fed. App’x at 1008. The Federal Circuit concluded that “the
subject matter claimed ... is directed to an abstract idea.” Id.
Appellant is correct that, in Planet Bingo, the Federal Circuit also
stated that the claims are “directed to the abstract idea of ‘solving a]
tampering problem and also minimiz[ing] other security risks’ during bingo
ticket purchases” (Planet Bingo, 576 Fed. App’x at 1008 (discussed at
Appeal Br. 15)), however, we view the panel in Planet Bingo as identifying
the abstract idea at issue as managing a game of bingo. Federal Circuit
panels have viewed the discussion in Planet Bingo in a similar manner. See,
e.g., In re Smith, 815 F.3d 816, 819 (Fed. Cir. 2016) (characterizing the
Planet Bingo panel as “determining that methods of managing a game of
bingo were abstract ideas”); Intellectual Ventures ILLC v. Capital One Bank
(USA), 792 F.3d 1363, 1368 n.2 (Fed. Cir. 2015) (characterizing the Planet
Bingo panel as “determining that claims to a computer-aided management
system for bingo games was directed to an abstract idea”).
Further, we view the Federal Circuit’s decision in In re Smith as
instructive as to the analysis of Step One here. See also Ans. 9-10
(discussing In re Smith). There, the Federal Circuit addressed a rejection,
under 35 U.S.C. § 101, of claims reciting a “method of conducting a
wagering game.” In re Smith, 815 F.3d at 817. Addressing Step One of the
Alice framework, the court stated that the “claimed ‘method of conducting a
wagering game’ is drawn to an abstract idea much like Alice's method of
exchanging financial obligations and Bilskf s method of hedging risk” and
concluded that “the rejected claims, describing a set of rules for a game, are
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drawn to an abstract idea.” Id. at 819. Based on these decisions, we see no
error in the Examiner’s determination that the subject matter of managing a
lottery game is an abstract idea. See Enflsh, LLC v. Microsoft Corp., 822
F.3d 1327, 1334 (Fed. Cir. 2016) (stating that our reviewing courts “have
found it sufficient to compare claims at issue to those claims already found
to be directed to an abstract idea in previous cases”).
Second, in the Reply Brief, Appellant asserts that “the use of ‘rules’
does not preclude patentability under Section 101” and states that
the Federal Circuit recently held a rules-based invention to be
patentable under Section 101, stating that that “a court must
look to the claims as an ordered combination, without ignoring
the requirements of the individual steps” and finding that “[t]he
specific, claimed features of these rules allow for the
improvement realized by the invention.”
Reply Br. 2 (quoting, with emphasis added, McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016)).4 Appellant
contends that, “[rjegardless of whether they are characterized as ‘rules,’ the
claims that are the subject of the present Appeal recite a specific ordered
combination and therefore constitute patentable subject matter.” Reply Br.
3. Appellant then lists, for each independent claim, various recited
limitations. Id. at 3-5.
We are not persuaded that the claimed invention is analogous to the
invention claimed in McRO. There, the Federal Circuit stated that the
representative claim was “focused on a specific asserted improvement in
4 We address this argument in the discussion of Step One because the
McRO decision did not reach Step Two. See McRO, 837 F.3d at 1316
(“Because we find that claim 1 is not directed to ineligible subject matter,
we do not reach Alice step two.”).
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computer animation, i.e., the automatic use of rules of a particular type” and
also stated that “[i]t is the incorporation of the claimed rules, not the use of
the computer, that ‘improved [the] existing technological process’ by
allowing the automation of further tasks.” McRO, 837 F.3d at 1314 (quoting
Alice, 134 S. Ct. at 2358) (emphasis added). Thus, in McRO, it was not the
mere presence of the “claimed rules” that led to patent eligibility; rather (as
noted in the sentence quoted by Appellant), it was that “[t]he specific,
claimed features of these rules allow for the improvement realized by the
invention” that indicated that the claims were not directed to an abstract
idea. See McRO, 837 F.3d at 1313; see also id. at 1316 (“The claim uses the
limited rules in a process specifically designed to achieve an improved
technological result in conventional industry practice. Claim 1 of the ’576
patent, therefore, is not directed to an abstract idea.” (internal citation
omitted and emphasis added), 1314 (“We therefore look to whether the
claims in these patents 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.”).
In contrast, here, Appellant identifies, for each independent claim,
certain recited limitations (see Reply Br. 3-5), but has not identified any
“improved technological result” generated by the identified limitations. Cf.
McRO, 837 F.3d at 1316.5
For these reasons, we are not apprised of error in the Examiner’s
determination that the claims here are directed to an abstract idea.
5 In the discussion of Appellant’s third argument under Step Two,
below, we address an additional argument regarding purported
“improvements” from the claimed inventions.
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B. Step Two
Regarding Step Two of the Alice framework, the Examiner states:
The claim(s) does/do not include additional elements that
are sufficient to amount to significantly more than the judicial
exception because the addition of limitations such as “a server
device, a storage unit, a terminal device, a communication line”
amount(s) 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.
Ans. 5-6; see also Final Act. 5 (first sentence). The Examiner states that
“[mjerely using these generic computer components to perform the
identified basic functions does not constitute meaningful limitations that
would amount to significantly more than the abstract idea.” Ans. 6. In
addition, the Examiner states: “Looking at the limitations as an ordered
combination adds nothing that is not already present when looking at the
elements taken individually. There is no indication that the combination of
elements improve the functioning of a computer or improves any other
technology.” Id.
First, Appellant argues all pending claims as a group, asserting that
the independent claims “each recite elements that are significantly more than
the judicial exception” because, “[f]or example, each of these claims
requires the selection of ‘a lottery mode from among the plurality of lottery
modes based on one or more mode selection probabilities’ and the
transmission of ‘an image indicating the selected lottery mode’ to a terminal
or terminal device.” Appeal Br. 15. Appellant states, “[i]n other words,
each of the independent claims requires a computation (to select a lottery
mode based on probability) and the transmission of an image indicating the
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result of such computation.” Id. According to Appellant, “[s]uch subject
matter has been held to fall within the bounds of § 101.” Id. (citing SiRF
Tech., Inc. v. Int’l Trade Comm ’n, 601 F.3d 1319 (Fed. Cir. 2010), and
United States Patent and Trademark Office, Examples: Abstract Ideas 10-11
(Jan. 27, 2015), http://www.uspto.gov.sites/default/files/documents/
abstract_idea_examples.pdf.6
Neither the SiRF Technology decision nor the Examples supports
Appellant’s position. In SiRF Technology, the claims at issue were not
determined to be patent eligible based on reciting a computation and
transmission of an image indicating a result of the computation; instead, the
Federal Circuit held “that the claims at issue are properly directed to
patentable subject matter as they explicitly require the use of a particular
machine (a GPS receiver) and could not be performed without the use of
such a receiver.” SiRF Tech., 601 F.3d at 1333; see id. at 1332 (discussing
the machine-or-transformation test from In re Bilski, 545 F.3d 943, 954
(Fed. Cir. 2008), affd Bilski v. Kappos, 561 U.S. 593 (2010)).
As to Example 4 in the Examples (which is “modeled after the
technology” in the SiRF Technology decision), the hypothetical claims were
not identified as patent eligible based on reciting a computation and
transmission of an image indicating a result of the computation; instead, the
analysis provides that:
the combination of elements impose meaningful limits in that
the mathematical operations are applied to improve an existing
technology (global positioning) by improving the signal-
acquisition sensitivity of the receiver to extend the usefulness of
6 We will refer to this document as the “Examples.”
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the technology into weak-signal environments and providing
the location information for display on the mobile device. All
of these features, especially when viewed in combination,
amount to significantly more than the judicial exception.
Examples 12-13 (emphasis added). Here, as noted in the discussion of the
second argument under Step One and the third argument under Step Two,
Appellant has not identified any improved technological result or improved
computer functionality reflected in the pending claims. See Ans. 9
(discussing the claims in SiRF Technology and stating that “[hjere, in
contrast, the claims are directed a set of game rules for managing a lottery”
and that “[t]he present claims fail to improve any technology or computer
functions”).
Second, Appellant argues all pending claims as a group, asserting that
“the independent claims all include limitations that allow the system
described to overcome problems that are ‘necessarily rooted in computer
technology.’” Appeal Br. 16 (quoting DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). Appellant contends that
“[ajmong those limitations are limitations relating to the transmission of
images (e.g., ‘transmitting an image indicating the selected lottery mode’ as
in claim 10).” Id. Appellant argues that “[tjhis clearly amounts to
‘significantly more’ than the judicial exception.” Id.
We are not apprised of error by the argument because Appellant has
not explained how the limitation identified in claim 10 (or similar limitations
in other independent claims) actually “overcome problems that are
‘necessarily rooted in computer technology.’” Appeal Br. 16. Instead, we
agree with the Examiner that the “recitation of transmitting images . . . does
not solve any problem rooted in computer technology, because these
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limitations are generic computer components performing generic computer
functions at a high level of generality.” Ans. 10.
Third, Appellant argues all pending claims as a group, asserting that
“the claimed subject matter improves the operation of a game-providing
server device by selecting a lottery mode from among a plurality of lottery
modes in order to vary the ways of acquiring battle cards (see, e.g.,
paragraph [0004] of the [Specification as filed).” Appeal Br. 15-16.
According to Appellant, “[tjhese improvements help to keep a user’s interest
in a game and enhance his or her level of entertainment.” Id. at 16.
Although improving the functioning of a computer itself may amount
to “significantly more” under Step Two of the Alice framework (see Alice,
134 S. Ct. at 2359-60), Appellant has not explained how the identified
limitations “improve[] the operation of a game-providing server device”
itself (Appeal Br. 15). Here, the purported improvements—“varying] the
ways of acquiring battle cards” to allegedly “help to keep a user’s interest in
a game and enhance his or her level of entertainment” {id. at 15-16)—do not
indicate improved operation of the server device itself, but rather, result
from modifying the abstract idea. See Spec. ^ 5 (“In view of the foregoing,
an object of various embodiments of the present invention is to provide a
server device which enables an item to be provided by a lottery and allows
the item odds to be changed in accordance with a prescribed condition . . . .”
(emphasis added)).
For the reasons above, we sustain the rejection of independent claims
1,6-11, and 13. Because Appellant does not separately argue dependent
claims 2-5, 12, and 14-17, we also sustain the rejection of those claims.
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DECISION
We affirm the decision to reject claims 1-17 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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