Ex Parte Toth

Board of Patent Appeals and Interferences

Jun 15, 2009

10617993 (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 2008-004543
Application 10/617,993
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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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. placing each eligible league player into one
of eight divisions, each division being defined by
highest average scores attained by league players
in current league play;
c. conducting a local first round of competition
in which each of the eligible league players in each
of the eight divisions engages in one game scratch
match play, single elimination, eight-player
brackets, until one player prevails in each division
and continues on to a regional second round;

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d. conducting a regional second round in 512
locations that are geographically distributed as
equally as possible in which each of the eight
divisions engages in one game scratch match play,
single elimination, until one player prevails in each
division and continues on to a championship
round; and
e. 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 eight divisions engages in one game scratch
match play, single elimination, until 8 tournament
champions prevail, one in each of the eight
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 that 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
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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.
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. 4-7.
We select claim 1 as the representative claim, and claims 2-6 stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2008).
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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. 5-6. 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. 7. The Appellant’s argument
is unavailing because it relies on insufficient considerations and it does not
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 the 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 does not limit the play to any particular game
and thus does not limit the method to implementation using any particular
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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
This type of manipulation of relationships between league players is
the very type of abstraction that the court in Bilski found cannot meet the

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