Ex Parte Thelen et al

Patent Trial and Appeal Board

Oct 29, 2012

11421409 (P.T.A.B. Oct. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PAUL THELEN and GLENN WALCOTT
___________

Appeal 2010-012067
Application 11/421,409
Technology Center 3600
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Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/421,409

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STATEMENT OF THE CASE
Paul Thelen et al. (Appellants) seek our review under 35 U.S.C. § 134
of the final rejection of claims 1-27. We have jurisdiction under 35 U.S.C.
§ 6(b).

SUMMARY OF DECISION
We AFFIRM. 1

THE INVENTION
This invention is “[a] network service recruitment architecture for
marketing casual computer games, electronic greeting cards, or other similar
electronic products delivered over a network.” Spec. para. [0006].
Claims 1 and 8, reproduced below, are illustrative of the subject
matter on appeal.
1. A method in a network server configured to
market a collection of casual games accessible
over a network, the method comprising:
enabling a first user to join, free of cost, a
network of recruits;
providing one or more recruitment tools to
the first user to assist the first user in recruiting a
second user to play one or more of the casual
games;
identifying the second user as a recruit of the
first user in an event that the second user plays one

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Jan. 4, 2010) and Reply Brief (“Reply Br.,” filed Jun. 14, 2010),
and the Examiner’s Answer (“Ans.,” mailed Apr. 13, 2010).

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or more of the casual games within a specified
time period; and
in an event that the second user purchases
one or more of the casual games, distributing a
portion of the revenue from the purchase to the
first user.

8. A method in a network server, the method
comprising:
providing a casual game system having a
collection of games that are at least one of playable
over a network or downloadable over a network;
and
sharing, with a first consumer, revenue
generated as a result of a second consumer playing
one or more of the games, wherein the first
consumer has recruited the second consumer.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Rubin
Maggio
US 2004/0093269 A1
US 2007/0288395 A1
May 13, 2004
Dec. 13, 2007

The following rejections are before us for review:
1. Claims 1-23 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
2. Claims 24-27 are rejected under 35 U.S.C. § 112, 2nd paragraph,
as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards
as the invention.
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3. Claims 1-27 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Maggio and Rubin.

ISSUES
The first issue is whether claims 1-23 are directed to non-statutory
subject matter.
The second issue is whether claims 24-27 are indefinite under 35
U.S.C. § 112, second paragraph.
The third issue is whether claims 1-23 are unpatentable under 35
U.S.C. § 103(a) over Maggio and Rubin.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. The Background section of the Specification states that “[a]mong
the products being offered and delivered via network services over
the Internet are casual computer games.” Spec. para. [0001]. See
also Spec. para. [0002] and [0004].
2. Maggio describes a multilevel marketing program where a level 3
person “might receive a commission for selling a product” and the
level 2 person, who signed up the level 3 person, also receives a
benefit. Para. [0003]-[0004]. See also para. [0007] and [0014].
3. Rubin states: “A significant aspect of the present invention is that
Participants are rewarded credits on the basis of the Qualified
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Activities performed by each new Participant signed up by the
original Participant and each subsequent Participant signed up by
the new participant” Para. [0009].
4. Rubin discloses that Qualified Activities include “making
purchases at Partners.” Para. [0008].
5. Rubin describes sharing revenue (see Para. [0022]) from a Level 2
Participants Qualified Activities with a Level 1 Participant. Para.
[0028].

ANALYSIS
The rejection of claims 1-23 under 35 U.S.C. § 101
The Appellants argued claims 1-23 as a group. App. Br. 5-8 and
Reply Br. 2-4. We select claim 1 as the representative claim for this group,
and the remaining claims 2-23 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii).
We are not persuaded by the Appellants’ arguments that the Examiner
erred in rejecting claims 1-23 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. The Appellants argue that the Examiner erred
in finding that independent claims 1 and 8 do not recite a particular machine
and the Appellants point to claim 1 and 8’s preambles’ recitation of “in a
network server” as requiring a particular machine. App. Br. 6-7 and Reply
Br. 3-4. However, the Examiner stated the recitation of a particular machine
must involve more than insignificant “extra-solution” activity (Ans. 4) and
the Appellants have not specifically addressed this finding. Further, we note
that contrary to the Appellants’ argument (Reply Br. 4), the recited “casual
games” is not tied to the recited network server. For example, nothing in
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claim 1 requires the casual games be located on the network server or played
through the network server.
Accordingly, the rejection of claims 1-23 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter is affirmed.

The rejection of claims 24-27 under 35 U.S.C. § 112, 2nd paragraph
We summarily affirm the rejection of claims 24-27 under 35 U.S.C.
§ 112, second paragraph, as being indefinite because the Appellants make no
arguments directed to this rejection.

The rejection of claims 1-23 under §103(a) as being unpatentable over
Maggio and Rubin
Claim 1
We are not persuaded by the Appellants’ argument that the Examiner
erred in finding that the combination of Maggio and Rubin taught “in an
event that the second user purchases one or more of the casual games,
distributing a portion of the revenue from the purchase to the first user.”
App. Br. 10-16 and Reply Br. 4-7. While as the Appellants argue Maggio
does disclose that their marketing program rewards participants who win a
game, Maggio also teaches that in a multilevel marketing program,
commissions for selling products are shared between persons on different
levels (see FF 2). Rubin, which also discloses a multi-level marketing
program, teaches the sharing of revenues between levels based on Qualified
Activities of the Participants, such as making a purchase. FF 3-5. We note
that the Appellants admit that casual games are products that are offered for
sale. See FF 1. Given these teachings of the prior art and the Appellants’
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admission, we agree with the Examiner’s conclusion that one of ordinary
skill in the art would have found this limitation obvious.
Accordingly, the rejection of claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Maggio and Rubin is affirmed.

Claim 8
We are not persuaded by the Appellants’ argument that the
combination of Maggio and Rubin do not teach the step of “sharing, with a
first consumer, revenue generated as a result of a second consumer playing
one or more of the games, wherein the first consumer has recruited the
second consumer.” App. Br. 16-22 and Reply Br. 7-9. For the same reasons
as discussed above with regards to claim 1, we find the Appellants’
argument unpersuasive. Further we note that a second consumer purchasing
a casual game seems to imply that they would be playing the game.
Accordingly, the rejection of claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Maggio and Rubin is affirmed.

Claims 2-7 and 9-23
We also shall sustain the standing 35 U.S.C. § 103(a) rejection of
dependent claims 2-7 and 9-23 as being unpatentable over the prior art since
the Appellants have not challenged such with any reasonable specificity,
thereby allowing claims 2-7 and 9-23 to stand or fall with their parent claims
(see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)).

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Claims 24-27
As we have affirmed the Examiner’s rejection of claims 24-27 as
being indefinite above, the rejection of claims 24-27 as obvious over Maggio
and Rubin must fall because it is necessarily based on a speculative
assumption as to the scope of these claims. See In re Steele, 305 F.2d 859,
826-63 (CCPA 1962). Accordingly, the rejection of claims 24-27 under 35
U.S.C. § 103(a) as being unpatentable over Maggio and Rubin is reversed.

DECISION
The decision of the Examiner to reject claims 1-27 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED

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