Ex Parte Vanbragt et al

Patent Trial and Appeal Board

Mar 30, 2018

13244774 (P.T.A.B. Mar. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/244,774 09/26/2011
107322 7590 04/03/2018
Schwegman Lundberg & Woessner I Zynga
P.O. Box 2938
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Erik Francis Vanbragt
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
3291.027US5 7845
EXAMINER
GRANT, MICHAEL CHRISTOPHER
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
04/03/2018 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):
slw@blackhillsip.com
uspto@slwip.com
patents@zynga.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIK FRANCIS VANBRAGT, WILLIAM HENRY KELLY
MOONEY, MATTHEW ADAM OCKO, CARL ERIC SCHIERMEYER,
JONATHAN CHANG TIEN, and ROGER F. DICKEY
Appeal2016-000271
Application 13/244,774
Technology Center 3700
Before CHARLES N. GREENHUT, ANNETTE R. REIMERS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Erik Francis Vanbragt et al. (Appellants) appeal under 35 U.S.C. §
134(a) from the Examiner's decision to reject claims 1, 2, 4, and 6-20 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter 1 and
under 35 U.S.C. § 103(a): (1) claims 1, 2, 4, and 6-19 as unpatentable over
Low (US 8,012,014 B2, issued Sept. 6, 2011) and Allen (US 2010/0203963
Al, published Aug. 12, 2010); and (2) claims 1, 2, 4, and 6-20 as
1 The Examiner designated this rejection as a NEW GROUND OF
REJECTION in the Answer. Examiner's Answer 2 (hereinafter "Ans.")
(dated July 31, 2015).
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Application 13/244,774
unpatentable over Allen and Low. Claims 3 and 5 have been canceled. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to "computer-implemented online
games, such as online role-playing games, playable by more than one person
from more than one location." See Spec. i-f 2, Fig. 5. Claims 1, 1 7, and 18
are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A method comprising:
hosting an online game for a plurality of players, each of
the plurality of players controlling at least one of a plurality of
characters in the online game;
continually accessing a plurality of in-game parameters
employed to identify characters who qualify for an in-game
reward provided via the online game, current values of at least
some of the in-game parameters changing as the online game
progresses, the plurality of in-game parameters comprising a
total amount of an in-game asset possessed by at least some of
the plurality of characters in the online game;
continually updating, using at least one processor of a
machine, a current acquisition requirement for the in-game
reward based on the current values of the plurality of in-game
parameters, the current acquisition requirement comprising a
current in-game asset requirement, the current in-game asset
requirement comprising a required amount of the in-game asset
possessed by a character in the online game, the required amount
of the in-game asset being based on the total amount of the in-
game asset possessed by the at least some of the plurality of
characters in the online game; and
providing, using at least one processor of the machine, the
in-game reward to at least one of the plurality of characters
responsive to satisfaction of the current acquisition requirement
by the at least one of the plurality of characters.
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ANALYSIS
Patent-Ineligible Subject Matter
Claims 1, 2, 4, and 6-20
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 Int 'l, 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
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 step
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).
The Examiner determines that"[ c ]laims 1-2, 4, and 6-20 are directed
to an abstract idea, namely, a method of organizing human activity which
does not require the necessary involvement of a particular machine nor the
transformation of any article." Ans. 2 (emphasis omitted). The Examiner
further determines that:
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In regard to Claims 1, 2, 4, and 6-20, while an "online
game" is claimed, limiting the claimed abstract idea to a
particular technological environment (i.e. the internet) is an
attempt to limit the idea to a particular technological
environment and, thereby, insufficient to include elements that
are significantly more than the judicial exception.
In regard to Claims 1, 2, 4, and 6-16, while a "processor
of a machine" is claimed, such a processor is a generic, well-
known and conventional computer device, as is the ability of a
processor to execute computerized instructions a generic, well-
known and conventional computer function.
In regard to Claim 17, while a "non-transitory computer-
readable medium comprising instructions" is claimed, such a
medium is a generic, well-known and conventional computer
device, as is the ability of a processor to execute computerized
instructions a generic, well-known and conventional computer
function.
In regard to Claims 18-20, while an "online game system"
is claimed, not machine nor transformation of any article is also
claimed and the "system" could thereby be one employed by a
human being in his/her head along with the involvement of other
human beings.
Ans. 4 (emphasis omitted) (citation omitted).
Appellants offer the same arguments for independent claims 1 7 and
18 as for claim 1 and do not offer arguments in favor of dependent claims 2,
4, 6-16, 19, and 20 separate from those presented for the independent
claims. See Reply Br. 4--16. 2 We select claim 1 as the representative claim,
and claims 2, 4, and 6-20 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
2 Reply Brief (hereinafter "Reply Br.") (filed Sept. 30, 2015).
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Appellants contend that:
[C]laim 1 shows that the claim is not merely directed to a
"method of organizing human activity." On the contrary, ... the
technical advantage of the disclosed subject matter provides, in
some examples, continual update of in-game parameters and
current acquisition requirements for an in-game reward using at
least one processor of a machine. A processor of a machine is
then used to provide an in-game reward based on satisfaction of
a complex current acquisition requirement.
Reply Br. 7.
Appellants further contend that:
[The] elements of independent claim 1 are beyond the scope of
what is possible for a human hosting a game using mental
processes or a pen and paper. Instead, claim 1 provides a
computer implemented method to perform steps in an online
game to use a computer to perform operations beyond what is
possible for a human, and the claims are necessarily rooted in
computer technology to overcome a problem specifically arising
in that realm.
Reply Br. 12; see also id. at 11 (Claim 1 "and the corresponding dependent
claims are necessarily rooted in computer technology to overcome a problem
specifically arising in that realm.").
As an initial matter, Appellants do not apprise us how "the claims are
necessarily rooted in computer technology to overcome a problem
specifically arising in that realm." See id. In this case, Appellants do not
apprise us of error in the Examiner's finding that claim 1 is directed to "a
method of organizing human activity." See Ans. 2-3. Other than the benefit
of performing the claimed method more efficiently via a processor,
Appellants do not explain why the claimed method could not be performed
by a human.
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Further, Appellants' Specification does not describe any new or
unique computer hardware or software, and the law is clear that simply
reciting language that calls for programming a computer to perform what
would otherwise be an abstract idea is not sufficient to impart patent
eligibility. See Spec. e.g., i-fi-155, 60, 63; see also Alice Corp. Pty. v. CLS
Banklnt'l, 134 S. Ct. at 2359.
Appellants contend that claim 1 is "not directed to a fundamental
economic practice long prevalent in our system of commerce because these
independent claims provide limitations that go beyond any practice long
prevalent." Reply Br. 8. In particular, Appellants contend that:
[Claim 1 does] not seek to tie up all systems, methods, or media
for online games or even systems for providing in-game rewards
as part of an online game.[] Instead, claims 1 is directed to,
specific systems which involve "continually accessing a plurality
of in-game parameters employed to identify characters who
qualify for an in-game reward provided via the online game,
current values of at least some of the in-game parameters
changing as the online game progresses, the plurality of in-game
parameters comprising a total amount of an in-game asset
possessed by at least some of the plurality of characters in the
online game." Claim 1 is thus describing a specific system for
continually updating and identifying rewards based on a total
amount of an in-game asset as the total amount of the in-game
asset for some or all of a plurality of characters changes.
Reply Br. 12-13. As such, Appellants conclude that "[g]iven the
particularities of the ways in which each operation is performed and the
particularities of the actors performing the operations, independent claim 1
cannot and does not preempt the making, using, and selling of basic tools of
scientific and technological work." Id. at 16.
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The Supreme Court has stated that "patents that. .. integrate the
building blocks [of human ingenuity] into something more, []thereby
transform[ing] them into a patent-eligible invention ... pose no comparable
risk of pre-emption, and therefore remain eligible for the monopoly granted
under our patent laws." Alice, 134 S. Ct. at 2354-55 (citations and
quotations omitted). Although preemption "might tend to impede innovation
more than it would tend to promote it, 'thereby thwarting the primary object
of the patent laws"' (id. at 2354 (citing Mayo, 132 S. Ct. at 1293)), "the
absence of complete preemption does not demonstrate patent eligibility."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1362-63 (Fed. Cir. 2015) ("[T]hat the 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."). Thus, even assuming claim 1
recites a particular application of "continually updating and identifying
rewards" (see Reply Br. 12-13}-such that claim 1 does not preempt the
entirety of the identified abstract idea-that does not demonstrate that claim
1 is directed to patent-eligible subject matter.
As to step one of the Alice framework, claim 1 is similar to claims
directed to the collection, organization, and manipulation of data that our
reviewing court has found to be directed to patent-ineligible abstract ideas.
For example, in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350,
1353 (2016), the court held that claims drawn to systems and methods for
performing real-time performance monitoring of an electric power grid by
collecting data from multiple data sources, analyzing the data, and
displaying the results were directed to the abstract idea of "collecting
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information, analyzing it, and displaying certain results of the collection and
analysis." Id. at 1352, 1353. Similarly, in Content Extraction &
Transmission LLC v. Wells Fargo Bank, National Ass 'n, 776 F.3d 1343
(Fed. Cir. 2014), the court held that claims generally reciting "a method of
1) extracting data from hard copy documents using an automated digitizing
unit such as a scanner, 2) recognizing specific information from the
extracted data, and 3) storing that information in a memory," were drawn to
an abstract idea. Id. at 1345, 1347.
Appellants further contend that the "continually accessing" and
"continually updating" steps of claim 1 "are specific detailed steps related to
a particular technological solution implemented using a processor of a
machine" and that these "elements of claim 1 as performed on a processor of
a machine for an online game system, however, do qualify as substantially
more than any abstract idea, as they do not simply recite routine
conventional activities and cannot be performed by a human." Reply Br.
13-14. However, as discussed above, other than the benefit of performing
the claimed method more efficiently via a processor, Appellants do not
explain why the claimed method could not be performed by a human.
Further, Appellants do not explain the "particular technological solution"
implemented by the "continually accessing" and "continually updating"
steps of claim 1. See id.
As to step two of the Alice framework, we agree with the Examiner
that the elements of claim 1, considered both individually and as an ordered
combination, do not transform the nature of the claim into a patent-eligible
application of the abstract idea. See Ans. 3 ("[T]he claims do not include
additional elements that are sufficient to amount to significantly more than
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the judicial exception."). Claim 1 recites an "online game" method that uses
"at least one processor" to "continually updat[ e ]" and "provid[ e ]" data.
Appeal Br. 13, Claims App. "[M]ere ... generic computer implementation"
of an abstract idea does not transform the abstract idea into patent-eligible
subject matter. Alice, 134 S. Ct. at 2357. Here, the claims do not require
any specialized technology or device, but only generic computer equipment.
In fact, Appellants' Specification describes the elements of hardware system
700, described in paragraph 60 and illustrated in Figure 7 of the drawings, as
being "intended to represent a broad category of computer hardware
systems." Spec. i-f 60, Fig. 7; see also id. at i-f 63 ("Any suitable operating
system may be used."). In DDR Holdings, the court held that claims
"necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks," such as the Internet,
were patent eligible. DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245,
1257 (Fed. Cir. 2014). Here, however, claim 1 does not recite a specific
technological solution to a specific problem unique to the Internet, as was
the case in DDR Holdings; see also Elec. Pwr. Grp., 830 F.3d at 1355
(Claim elements that require no more than conventional computer, network,
and display technology are insufficient to constitute "an inventive concept in
the application of an abstract idea.").
For the above reasons, we sustain the Examiner's rejection of claim 1
as directed to patent-ineligible subject matter. We further sustain the
rejection of claims 2, 4, and 6-20, which fall with claim 1.
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Obviousness over Low and Allen
Claims 1, 2, 4, and 6-19
Each of independent claims 1, 17, and 18 recites, "the current in-game
asset requirement comprising a required amount of the in-game asset
possessed by a character in the online game," wherein "the required amount
of the in-game asset being based on the total amount of the in-game asset
possessed by the at least some of the plurality of characters in the online
game." Appeal Br. 13, 15-16, Claims App. 3 The Examiner relies on Low
for this limitation. In particular, the Examiner finds that:
Low teaches the claimed "in-game asset possessed by at least
some of the plurality of players in the online game" via its
teaching that a player is provided a rank by the gaming system
"based on the relative amounts of total wagers placed by the
players during [a] designated time period" (see, col. 34, lines
55-65). In other words, Low teaches each player holds an "in-
game asset" in terms of each player's level of wagering activity,
and that, furthermore, Low teaches that a player may qualify for
a reward (i.e. the system sets a "current in-game asset
requirement") based on each player's individual level of
wagering activity relative to the total level of wagering activity
of all of the other players (i.e. the asset requirement thereby
"based on the total amount of the in-game asset possessed by at
least some of the plurality of players in the online game.") See,
e.g., Low at col. 3, lines 30-45 in regard to tracking total wager
activity and col. 3-4 in regard to ranking based on that activity.
Ans. 5---6; see also Final Act. 2-3. 4
Appellants contend that "Low does not teach or suggest an acquisition
requirement 'comprising a current in-game asset requirement based on the
3 Appeal Brief (hereinafter "Appeal Br.") (filed Apr. 13, 2015).
4 Final Office Action (hereinafter "Final Act.") (dated Oct. 10, 2014).
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total amount of the in-game asset possessed by the at least some of the
plurality of players in the online game."' Reply Br. 4; see also Appeal Br.
8-9. In particular, Appellants contend that "[b ]y Appellants' definition, a
'level of wagering activity' is not equivalent to an 'in-game asset"' that "this
is further shown by the claim recitation ... that the total amount of the in-
game asset is possessed by the at least some of the plurality of players in the
online game" and that the Examiner "indicates that players 'possess' their
level of wagering activity through control over wagering." Id at 3.
However, Appellants contend that:
[C]ontrol over transferring real-world cash to a game operator to
increase a level of wagering activity is not equivalent to
possessing an in-game asset. Instead, in game assets such as
those recited in paragraph 5 [of the subject application] (e.g.
"number of gold coins (i.e., the assets)") are in-game items
"possessed" by players in an online game.
Id. at 3-4; see also Appeal Br. 8-9.
As an initial matter, we agree with Appellants that the Specification
defines the term "in-game asset" to mean "loot" and provides various
examples of "in-game assets." Spec. i-f 5; see also Reply Br. 2--4. Where an
explicit definition is provided by the applicant for a term, the definition will
control interpretation of the term as it is used in the claim. Toro Co. v. White
Consol. Indus. Inc., 199 F.3d 1295, 1301 (Fed. Cir. 1999). In this case, we
understand the Examiner's position that "a player may qualify for a reward
(i.e. the system sets a 'current in-game asset requirement') based on each
player's individual level of wagering activity relative to the total level of
wagering activity of all of the other players." Ans. 5. However, the
Examiner fails to provide sufficient evidence or technical reasoning to
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adequately explain how basing a player's qualification for a reward (i.e., a
current in-game asset requirement) on each player's individual level of
wagering activity in view of the total level of wagering activity of all the
players is indicative of "the total amount of the in-game asset possessed by
the at least some of the plurality of players in the online game." See Ans. 5;
see also Appeal Br. 8-9; Reply Br. 3--4. Stated differently, the Examiner
fails to adequately explain how "tracking total wager activity" and "ranking
based on that activity," as disclosed in Low, is indicative of "the asset
requirement" being "based on the total amount of the in-game asset
possessed by at least some of the plurality of players in the online game."
See Ans. 5---6. As such, the Examiner fails to establish that Low discloses
that the current in-game asset requirement is based on the total amount of the
in-game asset possessed by the at least some of the plurality of players in the
online game. See Final Act. 2-3; see also Ans. 5---6.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of claims 1, 2, 4, and 6-19 as unpatentable over Low
and Allen.
Obviousness over Allen and Low
Claims 1, 2, 4, and 6-20
The Examiner's rejection of claims 1, 2, 4, and 6-20 as unpatentable
over Allen and Low is based on the same unsupported findings and
conclusions discussed above with respect Low. See Final Act. 7-8. The
Examiner does not rely on Allen to remedy the deficiencies of Low. See id.;
see also Reply Br. 4 ("In both rejections ... Low is relied upon to teach
'comprising a current in-game asset requirement based on the total amount
of the in-game asset possessed by the at least some of the plurality of players
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in the online game."'). Accordingly, for reasons similar to those discussed
above for claims 1, 17, and 18, we do not sustain the Examiner's rejection of
claims 1, 2, 4, and 6-20 as unpatentable over Allen and Low.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1, 2, 4, and
6-20 as being directed to patent-ineligible subject matter.
We REVERSE the decision of the Examiner to reject claims 1, 2, 4,
and 6-19 as unpatentable over Low and Allen.
We REVERSE the decision of the Examiner to reject claim 1, 2, 4,
and 6-20 as unpatentable over Allen and Low.
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
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