Ex Parte Toth

Board of Patent Appeals and Interferences

Jun 15, 2009

11448394 (B.P.A.I. Jun. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT TOTH
____________

Appeal 2009-009323
Application 11/448,394
Technology Center 3700
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Decided:1 June 15, 2009
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Before MICHAEL R. FLEMING, Chief Administrative Patent Judge,
ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge, and
LINDA E. HORNER, ANTON W. FETTING, and JOHN A. JEFFERY,
Administrative Patent Judges.

HORNER, Administrative Patent Judge

DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 11/448,394

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STATEMENT OF THE CASE
Robert Toth (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claims 1-6. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
The Appellant’s claimed invention is a method for a one game scratch
match play, single elimination tournament. Spec. 1:5-7. Claim 1,
reproduced below, is the sole independent claim and is representative of the
subject matter on appeal.
1. A method for providing a one game scratch
match play single elimination tournament for
league players, comprising the steps of:
a. providing a pool of eligible league players;
b. setting a minimum number of games bowled
in league play in order to establish an average for
tournament participation;
c. establishing multiple average divisions
based on 10-pin or 15-pin average divisions as
follows:
i. 10-pin average divisions (220 or
more, 219 to 210, 209 to 200, 199 to 190, 189 to
180, 179 to 170, 169 to 160, 159 to 150, 149 to
140, 139 to 130, 129 to 120, and 119 or less);
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ii. 15-pin average divisions (215 or
more, 214 to 200, 199 to 185, 184 to 170, 169 to
155, 154 to 140, 139 to 125, and 124 or less);
d. placing each eligible league player into one
of the multiple average divisions based on their
highest average from current and/or past league
participation;
e. conducting a local first round of competition
in which each of the eligible league players in each
of the multiple divisions engages in one game
scratch match play, single elimination, and/or eight
player brackets in order to assure uniformity
within the first round for all players, and until one
player prevails in each division and continues on to
a regional second round or championship round;
f. if necessary, conducting a regional second
round in 512 locations that are geographically
distributed in which each of the multiple divisions
engages in one game scratch match play, single
elimination, until one player prevails in each
division and continues on to a championship
round;
g. conducting a championship round in a single
location in which each of the 512 league players
who prevail in the regional second round in each
of the multiple divisions, or the players who
prevail from each city in the television tournament,
engages in one game scratch match play, single
elimination, until one champion prevails in each of
the multiple divisions; and
h. engaging each division champion in a one
game scratch match against a guest star with the
winner receiving twice as much cash prize as the
loser, each division champion bowling in separate
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television telecasts, wherein the number of these
telecasts depends on the number of the average
divisions.

THE REJECTION
The Appellant seeks review of the Examiner’s rejection of claims 1-6
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.

ISSUE
The issue before us is whether the Appellant has shown the Examiner
erred in concluding that the claimed method for conducting a tournament for
league players is drawn to patent-ineligible subject matter under 35 U.S.C.
§ 101.

PRINCIPLES OF LAW
The law in the area of patent-eligible subject matter for process claims
has recently been clarified by the Federal Circuit in In re Bilski, 545 F.3d
943 (Fed. Cir. 2008) (en banc), cert. granted, 77 USLW 3442 (U.S. Jun. 1,
2009) (No. 08-964).
The en banc court in Bilski held that “the machine-or-transformation
test, properly applied, is the governing test for determining patent eligibility
of a process under § 101.” Id. at 956. The court in Bilski further held that
“the ‘useful, concrete and tangible result’ inquiry is inadequate [to determine
whether a claim is patent-eligible under § 101.]” Id. at 959-60.
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The court explained the machine-or-transformation test as follows:
“A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a
particular machine or apparatus, or (2) it transforms a particular article into a
different state or thing.” Id. at 954 (citations omitted). The court explained
that “the use of a specific machine or transformation of an article must
impose meaningful limits on the claim’s scope to impart patent-eligibility”
and “the involvement of the machine or transformation in the claimed
process must not merely be insignificant extra-solution activity.” Id. at 961-
62 (citations omitted). As to the transformation branch of the inquiry, the
court explained that transformation of a particular article into a different
state or thing “must be central to the purpose of the claimed process.” Id.

ANALYSIS
The Appellant argues claims 1-6 as a single group. App. Br. 5-8.
We select claim 1 as the representative claims, and claims 2-6 stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2008).
The Examiner found that the claimed method results in no physical
transformation of any materials or subject matter to a different state or thing,
and there is no machine being claimed. Ans. 3-4. The Appellant argues that
the claim is drawn to patent-eligible subject matter because the final result
achieved, viz, eight tournament champions prevailing after a one game
scratch match play single elimination tournament for league players, is a
useful, tangible and concrete result. App. Br. 8. The Appellant’s argument
is unavailing because it relies on insufficient considerations and it does not
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address the failure of the claim to meet the requirements of the machine-or-
transformation test. See Bilski, 545 F.3d at 959-60 (“the ‘useful, concrete
and tangible result’ inquiry is inadequate [to determine whether a claim is
patent-eligible under § 101.]”).
Method claim 1 fails to meet requirements of the machine-or-
transformation test for patent-eligible subject matter, because the claimed
method is neither tied to a particular machine or apparatus, nor does it
transform a particular article into a different state or thing.
Method claim 1 recites a series of steps for “providing a one game
scratch match play single elimination tournament for league players.” The
claim does not invoke any particular machine or apparatus in the method
steps and thus is not tied to any particular machine or apparatus. The
wording of claim 1 is broad in that it refers generally to a tournament for
“league players.” The claim refers tangentially in step (b) to setting a
minimum number of games “bowled” in league play; however, the claim
does not recite any particular machine or apparatus for conducting the
rounds of competition in steps (e), (f), (g), and (h). For example, the
competition could be conducted via a computer in a virtual bowling
tournament or in person with an actual bowling ball and pins. The claim
also refers to a “television tournament” in step (g) and “television telecasts”
in step (h). The fact that the claim inferentially refers to television telecasts
is not sufficient to tie the method to a particular machine or apparatus. The
references in the claim to television telecasts do not impose any meaningful
limits on the claimed method because the method is directed to tournament
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play to determine a champion and thus the display of the actual
championship play on the television is merely “insignificant extra-solution
activity.” Bilski, 545 F.3d at 961-62. The claim does not limit the method to
implementation using any particular machine or apparatus. As such, the
claims fail the first prong of the machine-or-transformation test.
The steps of method claim 1 also fail the second prong of the
machine-or-transformation test because the method does not transform any
article to a different state or thing. The method steps entail providing a pool
of players, organizing the players into divisions, and then conducting various
rounds of competition. The claims are similar to the claims that were before
the court in Bilski in that the pending claims call for performing method
steps that involve transformations or manipulations of relationships.2

2 The method claim in Bilski called for:
A method for managing the consumption risk costs of a commodity
sold by a commodity provider at a fixed price comprising the steps of:

(a) initiating a series of transactions between said commodity provider
and consumers of said commodity wherein said consumers purchase
said commodity at a fixed rate based upon historical averages, said
fixed rate corresponding to a risk position of said consumer;

(b) identifying market participants for said commodity having a
counter-risk position to said consumers; and

(c) initiating a series of transactions between said commodity provider
and said market participants at a second fixed rate such that said series
of market participant transactions balances the risk position of said
series of consumer transactions initiating a series of transactions
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This type of manipulation of relationships between league players is
the very type of abstraction that the court in Bilski found cannot meet the
second prong of the machine-or-transformation test. 545 F.3d at 963
(“Purported transformations or manipulations simply of public or private
legal obligations or relationships, business risks, or other such abstractions
cannot meet the test because they are not physical objects or substances, and
they are not representative of physical objects or substances.”).
The method as claimed does not involve the transformation of any
physical object or substance, and given that the claim also is not tied to a
particular machine or apparatus, the claim entirely fails the machine-or-
transformation test and is not drawn to patent-eligible subject matter under
35 U.S.C. § 101.

CONCLUSION
The Appellant has failed to show the Examiner erred in concluding
that the claimed method for conducting a tournament for league players is
drawn to patent-ineligible subject matter under 35 U.S.C. § 101.

DECISION
The decision of the Examiner to reject claims 1-6 is AFFIRMED.

between said commodity provider and consumers of said commodity.
545 F.3d at 949.
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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) (2007).

AFFIRMED

vsh

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