Ex Parte Shuster

Patent Trial and Appeal Board

Sep 6, 2017

14089639 (P.T.A.B. Sep. 6, 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.
70013-00257 6052
EXAMINER
HYLINSKI, STEVEN J
ART UNIT PAPER NUMBER
3717
MAIL DATE DELIVERY MODE
14/089,639 11/25/2013
112918 7590 09/07/2017
Coleman & Horowitt, LLP
499 W. Shaw Ave., Ste. 116
Fresno, CA 93704
Gary Stephen Shuster
09/07/2017 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 GARY STEPHEN SHUSTER
Appeal 2016-005720
Application 14/089,639
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gary Stephen Shuster (“Appellant”) appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 26-45 under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter.1 We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Claims 1—25 are cancelled. Br. 11 (Claims App.).
Appeal 2016-005720
Application 14/089,639
THE CLAIMED SUBJECT MATTER
Claims 26 and 36 are independent. Claim 26 is reproduced below and
is illustrative of the subject matter on appeal.
26. An apparatus comprising a processor operably coupled to
a memory, the memory holding program instructions operated
by the processor for:
controlling one or more member avatars in a modeled
virtual reality environment at least partly in response to input
received from a member client;
determining whether a guest client is invited by the
member client;
enabling control of a guest avatar’s activity in the
modeled virtual reality environment in response to input data
from the guest client; and
limiting the guest avatar’s activity and continuously
determining a limited area around the member avatar within
which the guest avatar is permitted freedom of movement,
based on determining that the guest client is invited by the
member client.
OPINION
The Supreme Court has set forth “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. Pty. Ltd. 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 that 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
2
Appeal 2016-005720
Application 14/089,639
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
132 S. Ct. at 1298, 1297). The Supreme Court has described the second part
of the analysis 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).
Part one
The Examiner determines that “[t]he instant claims are drawn to the
abstract idea of policies governing the privileges awarded to the guest of a
member client,” and this idea is akin to the “method[] of organizing human
activity]” at issue in Alice. Final Act. 5—6. In particular, the Examiner
determines that “[i]t is well known for real-world human organizations such
as gyms and country clubs to enact policies that place restrictions on what
resources are available for use by guests, what hours the guests can use the
resources, and the like.” Id. at 6. According to the Examiner, the step “of
‘continuously determining a limited area around the member avatar within
which the guest avatar is permitted freedom of movement’ is equivalent to
automating the human activity of host members having to keep their guests
in their company, e.g. within their sight, while they are on a club premises.”
Id.
Appellant argues that “the claims are not directed to any discemable
abstract idea,” but are “directed to a sequence of complex and novel machine
operations.” Br. 4. In particular, Appellant asserts that the claimed subject
matter is not similar to concepts the Supreme Court has identified as
methods of organizing human activities or the example methods of
3
Appeal 2016-005720
Application 14/089,639
organizing human activity described in the July 2015 Update on Subject
Matter Eligibility, 80 Fed. Reg. 45429 (July 30, 2015). Id. This argument is
not persuasive.
In applying the framework set out in Alice, and as the first step of our
analysis, we agree with the Examiner that the claims are directed to an
abstract idea of governing privileges for a guest of a member, which is akin
to a method of organizing human activity. Final Act. 5. Claims 26 and 36
recite steps of (1) controlling member and guest avatars in a virtual reality
environment in response to respective input from member and guest clients;
(2) determining whether a guest has been invited by a member; (3) limiting
the guest avatar’s activity; and (4) continuously determining a limited area
around the member avatar within which the guest avatar is permitted to
move. Br. 11, 12 (Claims App.). That is, the claims are conceptually
equivalent to controlling the activity and access of guests (i.e., non­
members) in a member-exclusive environment, and do not include any
specific instructions as to how these concepts are to be implemented. As the
Examiner explains, “the concepts claimed are well-known methods for
managing the guest privileges awarded to a human being who is a guest of a
member of an exclusive property, applied in a generic technological
environment,” wherein “[ajvatars, by definition, are virtual manifestations of
human entities, intended to look and act like their human counterparts.”
Ans. 8. In this regard, the claims merely use “avatars to emulate the long-
known idea of limiting what a guest can do and where a guest can go, when
he accompanies the member of an exclusive property such as a country club
or gym.” Id.
4
Appeal 2016-005720
Application 14/089,639
Appellant also argues that “the claims here do not create problems
related to preemption,” but “are of limited scope and do not threaten to tie up
the future of building blocks of human ingenuity.” Br. 4—5. This argument
is unpersuasive. Merely because claims do not preempt all forms of the
abstraction does not make them any less abstract. See OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015) (“[Tjhatthe
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.”). Moreover, characterizing preemption as a driving concern for
patent eligibility is not the same as characterizing preemption as the
dispositive test for patent eligibility. Instead, “[t]he Supreme Court has
made clear that the principle of preemption is the basis for the judicial
exceptions to patentability” and “[f]or this reason, questions on preemption
are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S.
Ct. at 2354). Although “preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.” Id. The Federal Circuit concluded that “[wjhere a patent’s
claims are deemed only to disclose patent ineligible subject matter under the
Mayo framework, . . . preemption concerns are fully addressed and made
moot.” Id.', see also id. (holding that “[i]n this case, Sequenom’s attempt to
limit the breadth of the claims by showing alternative uses of cffDNA
outside of the scope of the claims does not change the conclusion that the
claims are directed to patent ineligible subject matter”). Given this direction
from our reviewing court, we decline to apply a preemption standard in our
5
Appeal 2016-005720
Application 14/089,639
analysis, and instead apply the steps set forth by the Supreme Court in Alice
and Mayo.
Therefore, when read as a whole, independent claims 26 and 36 are
directed to rules governing privileges awarded to a guest of a member client,
and, for the reasons discussed above, constitute an abstract idea. The
question to be settled next is whether the claims recite an element, or
combination of elements, that is enough to ensure that the claims are
directed to significantly more than an abstract idea.
Step two
The Examiner determines that the claims “apply [a] well-known type
of abstract idea to a virtual environment, without providing significantly
more than the idea itself.” Final Act. 6. In particular, the Examiner
determines:
The claims instruct that the abstract idea of limiting guest
privileges is capable of being implemented by a general
purpose computing device, without causing improvements to
any technology, improvements in the functioning of the
computer itself (the fact that a general purpose computer can be
programmed for a new purpose is not improving the function of
a computer itself), or providing any meaningful limitations
beyond generally linking the abstract idea to the technological
environments of the general purpose computing devices.
Id. According to the Examiner, “[t]he claims amount to nothing
significantly more than an instruction to apply the abstract idea of
implementing guest privilege policies using some unspecified, generic
computer.” Id.
Independent claims 26 and 36
Appellant argues that, even if claims 26 and 36 relate to an abstract
idea, the claims “contain[] elements that represent significantly more than
6
Appeal 2016-005720
Application 14/089,639
th[e] idea itself.” Br. 7. In particular, Appellant asserts that the claims recite
steps directed “exclusively to controlling avatar activity in a virtual world,”
and “recite[] a specific application of controlling avatars by continuously
determining a limited area around a member avatar within which the guest
avatar is permitted freedom of movement.” Id. According to Appellant,
“the claims [do not] merely recite performing generic computer functions
that are well-understood, routine and conventional activities known in the
industry, as evidenced by the fact that there are no Section 102 and 103
rejections of the claims.” Id.
To the extent Appellant argues that the claims necessarily contain an
“inventive concept” based on their alleged novelty and non-obviousness
over the prior art, this argument is unpersuasive. Although the second step
in the Alice/Mayo framework is termed a search for an “inventive concept,”
the analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for “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.”’ Alice, 134 S. Ct. at 2355. A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 132 S. Ct. at 1304.
Furthermore, the elements of “a processor” and “memory holding
program instructions” recited in claim 26, and “at least one computer”
recited in claim 36, are generic components that are well-understood,
routine, and conventional in the computer and gaming industries. More
specifically, the processor, memory, and computer elements are described in
Appellant’s Specification and claimed only in a wholly generic and
functional manner, much like the computer components in Alice. See Alice,
7
Appeal 2016-005720
Application 14/089,639
134 S. Ct. at 2358—60. In other words, these elements function in a
conventional manner to execute program instructions and operations. See id.
at 2359-60 (holding patent-ineligible claims that “amount to ‘nothing
significantly more’ than an instruction to apply the abstract idea . . . using
some unspecified, generic computer” and in which “each step does no more
than require a generic computer to perform generic computer functions”)
(internal quotation marks, citation omitted). The fact that these generic
computer functions are applied to the particular environment of virtual
reality is not sufficient to circumvent the prohibition against patenting an
abstract idea. See Bilski v. Kappos, 561 U.S. 593, 610-11 (2010).
Appellant argues that “the claimed solutions amount to an inventive
concept for resolving the particular problem of allowing potential members
of a VRU to try out the environment without paying for membership and
without the potential disruption of the VRU environment for paying
members.” Br. 5 (citing DDR, 773 F.3d at 1259). In particular, Appellant
asserts that “the problem of monitoring and restricting guest avatar behavior
and movement arises specifically with regards to computer networks.” Id. at
6. According to Appellant, the claims “recite[] a specific application of
controlling avatars by continuously determining a limited area around a
member avatar within which the guest avatar is permitted freedom of
movement,” and “[t]he invention improves the technology of VRU
environments, and amounts to significantly more than ‘organizing human
activity.’” Id. at 7. This argument is unpersuasive.
The claims at issue in DDR address the problem of retaining website
visitors who would otherwise be transported away from the host website
after clicking on an advertisement on the host website and activating a
8
Appeal 2016-005720
Application 14/089,639
hyperlink. DDR, 773 F.3d at 1257. The DDR claims automatically generate
a hybrid web page that permits users visiting a host website to view and
purchase products from a third-party merchant, whose ads are displayed with
hyperlinks on the host website, without leaving the host website and entering
that merchant’s website. Id. The Federal Circuit determined the claims to
be directed to patent-eligible subject matter because they “specify how
interactions with the Internet are manipulated to yield a desired result—a
result that overrides the routine and conventional sequence of events
ordinarily triggered by the click of a hyperlink.” Id. at 1258. Thus, the
solution set forth in the DDR claims “is necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks.” Id. at 1257. Significantly, the Federal Circuit
identified this as different from claims that “recite a commonplace business
method aimed at processing business information, applying a known
business process to the particular technological environment of the Internet,
or creating or altering contractual relations using generic computer functions
and conventional network operations.” Id. at 1258—59.
In contrast, upon determining whether a guest client is invited by a
member client, Appellant’s claims 26 and 36 control guest avatar activity
and restrict freedom of movement to a limited area around the member
avatar (Br. II, 12 (Claims App.)), but do not purport to improve the
functioning of the computer system itself or overcome a problem arising in
the realm of computer networks. The problem with which the invention is
concerned is limiting “the potential for abuse in having two users share a
single membership (i.e., a paying or registered member and a guest)” (Spec.
3:1—3)—a problem existing before virtual environments and not rooted in
9
Appeal 2016-005720
Application 14/089,639
technology. A policy (e.g., rules) governing the privileges awarded to the
guest of a member client (in order to allow potential members to try out a
membership without paying for membership and without disruption to
paying members) is a method of organizing human activity long prevalent in
commerce and is a conventional and fundamental concept. This concept is
not unique to the virtual world, and is not rooted in computer technology.
See also Ans. 10 (the Examiner explaining that claims “rooted in long-
known methods for organizing human activity are not solving a problem that
only exists in the virtual world”).
The claims merely apply a policy or rules governing the privileges
awarded to the guest of a member client, using generic computers, to the
particular technological environment of a modeled virtual reality
environment. There is no indication that the elements recited in the claims
produce “a result that overrides the routine and conventional” use of their
known features. DDR, 773 F.3d at 1258. Indeed, the Federal Circuit has
distinguished between claims that “merely recite the performance of some
business practice known from the pre-Internet world along with the
requirement to perform it on the Internet” and claims that are “necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks.” Id. at 1257.
Accordingly, we find nothing in independent claims 26 or 36 to be
sufficiently transformative to render the claims patent eligible. For these
reasons, we sustain the Examiner’s rejection of claims 26 and 36 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
10
Appeal 2016-005720
Application 14/089,639
Dependent claims 27—35 and 37—45
Appellant argues that recitations in the dependent claims “further
evidence that the claims are not directed to ‘methods of organizing human
activities.’” Br. 8. In particular, regarding claims 31 and 41, Appellant
asserts that “[a]t least instant messaging and in-game mail do not reside
outside of an electronic environment, and the ‘chat’ referred to here is
directed toward electronic chat, which also does not exist in a non­
electronic, non-computer worldId. at 8—9 (emphasis added). Appellant
also asserts that claims 32, 33, 42, and 43 recite limitations that “cannot be
applied in the real world, and simply cannot be directed to ‘organizing
human activities.’” Id. at 9 (emphasis added). Regarding claims 34, 35, 44,
and 45, Appellant similarly asserts that “‘[continuously determining a
limited area’ is simply unworkable in the real world.” Id. (emphasis added).
We do not find these arguments persuasive.
We agree with the Examiner that the dependent “claims are merely a
list of further details of abstract ideas for managing avatars that simulate
human activity, applied in a generic computing environment” (Ans. 7) and
“these further details that are intended to be applied to ideas for organizing
the activity of an avatar character associated with a human user, so that it
performs functions analogous to those long-known to be performed by
human beings who are subject to guest-access restrictions in an exclusive
members-only environment, are nothing more than further details of an
abstract idea for organizing human activity” (id. at 6). To the extent that any
of the additional operations recited in the dependent claims may not reside in
the non-computer world (i.e., outside of the virtual reality environment),
Appellant does not convince us that these operations are necessarily rooted
11
Appeal 2016-005720
Application 14/089,639
in computer technology to address a problem unique to the virtual reality
environment.
We agree with the Examiner (Ans. 4—7) that the additional limitations
recited in the dependent claims do not amount to significantly more than the
abstract idea discussed above with respect to the independent claims. More
specifically, the dependent claims do not recite “meaningful limitations
beyond linking the[] idea[] to the generic computing environment defined by
the parent claim[s].” Id. at 7. We find that the claims amount to nothing
more than applying the abstract idea of a policy or rules for controlling the
activity of guests of a member in a member-exclusive environment (albeit
with more details regarding such policy or rules) using a generic computer to
perform generic computer functions of executing operations.
Accordingly, we find nothing in dependent claims 27—35 and 37-45
to be sufficiently transformative to render the claims patent eligible, and we
sustain the rejection of these claims under 35 U.S.C. § 101 as being directed
to patent-ineligible subject matter.
DECISION
The Examiner’s decision to reject claims 26-45 under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter 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
12