Ex Parte YU

Patent Trial and Appeal Board

Aug 17, 2017

13747989 (P.T.A.B. Aug. 17, 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.
13/747,989 01/23/2013 Leonardo M. YU 325.002-01 4447
38245 7590 08/21/2017
JEROME D. JACKSON (JACKSON PATENT LAW OFFICE)
Jerome Jackson
211 N. UNION STREET, SUITE 100
100
ALEXANDRIA, VA 22314
EXAMINER
MENDIRATTA, VISHU K
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
08/21/2017 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):
docketing @j apalaof. com
pair+jacksonl @bureauflow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEONARDO M. YU
Appeal 2015-006011
Application 13/747,989
Technology Center 3700
Before JENNIFER D. BAHR, GEORGE R. HOSKINS, and
ANTHONY KNIGHT, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Leonardo M. Yu (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 6 and 8—12 under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter.1 We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM, but designate the affirmed rejection
as a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b).
1 Independent claim 6 was amended, and claims 13—16 were canceled, in the
Amendment filed September 18, 2014, subsequent to the Final Action (dated
Apr. 28, 2014). The Examiner entered the Amendment and indicated that
the amendment overcame the rejection under 35 U.S.C. § 103(a) set forth in
the Final Action. Adv. Act. (dated Sept. 24, 2014). See also Ans. 3
(Examiner’s Answer, dated Mar. 23, 2015).
Appeal 2015-006011
Application 13/747,989
THE CLAIMED SUBJECT MATTER
Claim 6, reproduced below from the Claims Appendix to the Appeal
Brief (filed Nov. 28, 2014), with an extraneous space omitted and minor
changes in indentation, is the only independent claim and is representative of
the claimed subject matter.
6. A method of playing a game using a set of parts, the set
comprising:
a playing board provided with a plurality of identical
recessed square spaces being arranged in a grid of rows and
columns, the playing board defining an outer boundary having a
height of multiple recessed square spaces and a width of
multiple recessed square spaces; and
a plurality of identically-shaped playing chips to
removably fill the plurality of recessed square spaces in order to
form a particular pattern wherein, each chip having a triangular
shape such that 4 chips fit snuggly into one recessed square
space, wherein the method comprises the step, of:
distributing a respective color of triangular shape chip to
each player of a plurality of players,
wherein the method further comprises the steps,
respectively performed by each of the plurality of players, of:
choosing one of the recessed square spaces;
choosing any free area of the chosen recessed
square space; and
laying down one triangular shape chip on the chosen
area of the chosen recessed square space,
wherein the method further comprises the steps of:
detecting whether a player has a combination of
forms constituting at least a predetermined number of
points, by
detecting a first form, the first form being
encompassed by one recessed square space, and
detecting a second form, the second form
spanning a plurality of recessed square spaces; and
detecting whether a player has signaled a designated
term.
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DISCUSSION
Claim Grouping
Appellant groups claims 6 and 8—12 together in contesting this
rejection. Appeal Br. 4; id. at 5—6 (presenting arguments only for claim 6).
Thus, we decide the appeal as to claims 6 and 8—12 on the basis of claim 6.
See 37 C.F.R. § 41.37(c)(l)(iv) (providing that when multiple claims subject
to the same ground of rejection are argued as a group by the appellant, the
Board may select a single claim from the group to decide the appeal with
respect to the group as to the ground of rejection on the basis of the selected
claim alone).
Patent Eligibility under 35 U.S.C. § 101
Section 101 of the patent law provides that one may obtain a patent
for “any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. The
Supreme Court has held that this provision includes important exceptions,
notably those that prohibit one from patenting abstract ideas, laws of nature,
or natural phenomena. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct.
2347, 2354 (2014). Although a law of nature or an abstract idea is not
patentable, the application of these concepts may be patentable. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293—94
(2012). This area of law has evolved substantially over the past several
years.
In rejecting the claims in the present case, the Examiner applied the
Interim Guidance for Determining Subject Matter Eligibility for Process
Claims in View ofBilski v. Kappos (75 Fed. Reg. 43922—28; Tuesday, July
27, 2010/Notices) (hereinafter “2010 Bilski Guidance”) to determine that the
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claims at issue are directed to a patent-ineligible abstract idea. See, e.g.,
Final Act. 5—6; see also Ans. 3 (reiterating that the Examiner’s
determination that claim 6 is directed to patent-ineligible subject matter is
based on the 2010 Bilski Guidance).
More specifically, the Examiner determined:
[Claim 6 does] not require the method be implemented by a
particular machine and the claims do not require the method to
particularly transform a particular article. The method as
claimed involves actions through game pieces to merely change
their locations on a game surface based on hypothetical
instructions and abstract ideas. Claimed method steps are
abstract ideas because they simply instruct how business should
be conducted. They constitute rules that may be applied for
moving game pieces on a game board selected from infinite
number of possible hypothetical ways that can be imagined to
move game pieces. In playing a board game the steps are
performed by individual human beings and not by a machine. In
playing the game the steps do not demonstrate transformation of
a particular article, in that the game pieces remain as game pieces
and the game surface remains a game surface. In playing a board
game there is no repeatable result or real world result.
Applicant’s claimed method, while arguably reciting a number
of physical steps of moving game pieces, is viewed here as an
attempt to claim a set of abstract ideas/rules for playing a board
game.
Final Act. 2.
The 2010 Bilski Guidance applied by the Examiner in the Final
Action was developed before the Supreme Court issued its decisions in
Mayo (March 2012) and Alice (June 2014) that clarified the law in this area.
In Alice, the Supreme Court reaffirmed the framework set forth previously in
Mayo “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 134 S. Ct. at 2355. The first step in
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the analysis is to “determine whether the claims at issue are directed to one
of those patent-ineligible concepts.” Id. If the claims are directed to a
patent-ineligible concept, then the second step in the analysis is to consider
the elements of the claims “individually and ‘as an ordered combination’” to
determine whether there are additional elements that “‘transform the nature
of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132
S. Ct. at 1298, 1297).
In responding to Appellant’s arguments in the Answer, citing the
Supreme Court’s decision in Alice, the Examiner “takes the position that the
claims are abstract. . . and with no meaningful limitation beyond the
abstract idea.” Ans. 10. According to the Examiner, applying the first step
of the Alice framework, the claims “are directed to [an] abstract idea and an
attempt to patent a new set of rules” because “the method is being imposed
on the apparatus and the method is not sufficiently tied to the apparatus.” Id.
As for the second step in the Alice framework, “the [Ejxaminer believes that
the claims are not directed to additional elements that amount to
significantly more than the judicial exception when considered individually
and in an ordered combination.” Id. The Examiner states:
Individually the method steps are abstract because they are just a
statement of concept, hypothetical instructions and steps of
conducting a business and in an ordered combination the method
steps are imposed on the apparatus wherein the imposition does
not cause a transformation of the game apparatus because at the
end of the method the game pieces remain game pieces and the
game surface remains game surface. Accordingly the claims are
directed to abstract ideas with no additional limitations and
ineligible for patent.
Id. at 10—11.
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In deciding this Appeal, we apply the framework as set forth by the
Supreme Court in Mayo and Alice.
Step One: Does Claim 6 Recite an Abstract Idea?
The Federal Circuit has described the first step as a determination of
the “basic character of the [claimed] subject matter.” Internet Patents Corp.
v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015) (citing
Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Canada, 687 F.3d 1266,
1273—74 (Fed. Cir. 2012)). The Federal Circuit has also indicated that this
step should determine whether a claimed method “recites an abstraction —
an idea, having no particular concrete or tangible form.” Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); see also Alice, 134 S. Ct.
at 2355 (“The ‘abstract ideas’ category embodies ‘the longstanding rule that
“[a]n idea of itself is not patentable.”’” (quoting Gottschalk v. Benson, 409
U.S. 63, 61 (1972) (further quotations and citations omitted)).
Claim 6 recites “[a] method of playing a game using” a plurality of
playing chips and a playing board provided with a plurality of recessed
square spaces, comprising the steps of distributing a respective color of
triangular chips to each of a plurality of players, each player choosing a
recessed square space and an area of the chosen recessed square space and
laying down a chip on the chosen area of the chosen space, and detecting
whether a player has a combination of forms, including a first form
encompassed by one recessed square space and a second form spanning a
plurality of recessed square spaces, constituting a predetermined number of
points. Appeal Br. 9 (Claims App.). The steps recited in claim 6 are steps
necessary to carry out the rules of the game.
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Thus, we agree with the Examiner that claim 6 is directed to a set of
rules for playing a board game, which is an abstract idea. See In re Smith,
815 F.3d 816, 819 (Fed. Cir. 2016) (concluding that “claims[] describing a
set of rules for a game[] are drawn to an abstract idea”). Additionally, we
note that the claimed method of playing a game is also similar to methods of
“organizing human activity” discussed in Alice. See Alice, 134 S. Ct. at
2356; Final Act. 2 (finding that the steps recited in claim 6 “simply instruct
how business should be conducted”).
Appellant asserts that the method recited in claim 6 “is required to be
implemented by a particular apparatus” (i.e., “a particular set of parts”
including a playing board with a plurality of recessed square spaces arranged
in a grid, and a plurality of triangular chips shaped such that four chips fit
snugly into one recessed square space). Appeal Br. 5. Appellant submits
that “[a]ny alleged preemption by claim 6 would be limited to using this
recited apparatus having the recited chips and recessed spaces.” Id.', see also
Reply Br. 3.2 To the extent that Appellant is arguing that the method recited
in claim 6 is not a complete preemption of the abstract idea (a set of rules for
playing a game), the Federal Circuit has rejected such an argument and
noted that, although “the principle of preemption is the basis for the judicial
exceptions to patentability,” and “preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354). The Federal
Circuit concluded that “[wjhere a patent’s claims are deemed only to
disclose patent ineligible subject matter under the Mayo framework, . . .
2 Reply Brief (dated May 23, 2015).
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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 analysis, and instead apply
the steps set forth by the Supreme Court in Alice and Mayo.
In sum, for the reasons set forth above, the Examiner is correct that
claim 6 is directed to the abstract idea of a set of rules for playing a game.
Step Two: Is There an Inventive Concept?
The Supreme Court characterizes 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.’” Alice,
134 S. Ct. at 2355 (brackets in original) (quoting Mayo, 132 S. Ct. at 1294).
The prohibition against patenting an ineligible concept, such as an abstract
idea, “‘cannot be circumvented by attempting to limit the use of the [abstract
idea] to a particular technological environment’ or adding ‘insignificant
postsolution activity.’” Bilski, 561 U.S. at 610-11 (citing Diamond v. Diehr,
450 U.S. 175, 191—92 (1981)). The Court in Alice noted that ‘“[s]imply
appending conventional steps, specified at a high level of generality,’ was
not ‘enough’ [in Mayo] to supply an ‘inventive concept.’” Alice, 134 S. Ct.
at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Claim 6 recites steps of distributing game pieces (i.e., triangular
playing chips) to players, each of the plurality of players choosing a recessed
square space on a playing board and a free area on the chosen recessed
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square space and laying down one chip on the chosen area of the chosen
recessed square space, and detecting whether a player has a combination of
forms constituting a predetermined number of points. Appeal Br. 9 (Claims
App.). The use of a playing board provided with a grid of recessed square
spaces and a plurality of playing pieces (i.e., chips) of different colors,
including triangular playing pieces, for playing a board game in which
players try to make a variety of figures is conventional, as evidenced, for
example, by US Patent 3,191,937 (hereinafter “Kropinski”), issued to John J.
Kropinski, on June 29, 1965. Kropinski, col. 1,11. 20-24; col. 2,11. 8—14,
36-43, Fig. I).3 Further, the game pieces and playing board are used in the
conventional manner of a board game in the method of claim 6 — namely,
distributing the chips of a respective color to each of a plurality of players,
who lay them down onto free areas of playing board spaces of their choosing
to create figures, or forms. The detecting step of claim 6 is nothing more
than a step of resolving the game in accordance with the rules of the game
(i.e., determining whether a player has created forms entitling the player to
points according to the rules of the game), and, thus, is part of the abstract
idea itself, or insignificant post-solution activity.
Claim 6 also recites that each chip has “a triangular shape such that 4
chips fit snuggly into one recessed square space.” Appeal Br. 9 (Claims
App.). However, this recitation is insufficient to ensure that the claimed
method in practice amounts to significantly more than a claim to the abstract
idea itself. In particular, Appellant’s Specification accords no significance
to the particular number of chips that fit into a space on the playing board.
3 The Examiner entered Kropinski into the record in the Notice of
References Cited (PTO-892) dated April 28, 2014.
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In fact, the Specification characterizes the invention as “a board game . . .
comprising a playing board being provided with a plurality of identical
recessed polygonal spaces being arranged in a grid of rows and columns.”
Spec. 3,11. 1—3.4 Although the Specification discloses “preferably square
spaces of identical size” and triangular playing chips shaped to fit four to a
space, the Specification emphasizes that “specific . . . quantities being
mentioned herein are modifiable by any person skilled in the art” and that
such “modifications . . . would resort to falling within the scope of this
invention.” Id. at 3,11. 4—12, 15—18. The Specification adds that “[t]he size
of the playing board, as well as the size of the playing chips ... are subject
to variation.” Id. at 11,11. 15—16. The Specification gives no indication, and
Appellant does not point to any evidence in the record, that the particular
shape and number of chips intended to fit into a space on the playing board
solves any particular problem in the board game art, causes the playing
board or chips to perform any differently than in the conventional manner to
form a variety of figures or forms, or result in any technological
improvement in the board game itself. Thus, on the basis of this record, we
determine that the recitations in claim 6 directed to the particular shape and
number of chips that fit snugly into one of the spaces of the playing board
are not significant enough to add an inventive concept to the abstract idea (a
set of rules for playing a game).
4 The Specification in the present application lacks page numbers. Thus, for
purposes of referring to Appellant’s Specification herein, we number the
pages chronologically, beginning with the page containing the title, and
“DESCRIPTION,” “TECHNICAL FIELD OF INVENTION,” and
“BACKGROUND OF THE INVENTION” headings as page 1.
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Appellant also argues that “claim 6 requires transformation of an
article.” Appeal Br. 5. In particular, Appellant contends that as the result of
choosing one of the recessed square spaces and any free area of the chosen
recessed square space, and laying down a chip on the chosen area of the
chosen recessed square space, as recited in claim 6, “the article (the part set)
will have a transformed form; recessed square spaces will. . . have
respective triangular shape chips after the game is over.” Id.
Appellant’s arguments regarding transformation of the article to a
different state are unavailing. “[T]he ‘machine or transformation test’ is not
a definitive test of patent eligibility, but only an important and useful clue.”
Mayo, 132 S. Ct. at 1296. The Supreme Court has emphasized that, “in
stating that the ‘machine-or-transformation’ test is an ‘important and useful
clue’ to patentability, [the Court has] neither said nor implied that the test
trumps the [law of nature or abstract idea] exclusion.” Id. at 1303.
Moreover, we do not agree with Appellant that performance of the
steps recited in claim 6 transforms the set of parts (i.e., the playing board and
playing chips) to a different form or state. As the Examiner points out, the
game pieces (i.e., the playing chips) merely move from one position to
another position on the playing board and remain the same structurally.
Ans. 9. Likewise, the playing board merely has game pieces placed on the
recessed square spaces thereof, but has not been changed to a different form
or state. Id. Thus, to the extent that the machine or transformation test is an
important and useful clue to patentability, Appellant does not persuade us
that it should trump the application of the Alice framework here. The
distribution and laying down of playing chips in claim 6 do not supply an
inventive concept sufficient to transform the claimed method into a patent-
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eligible application. Rather, much like the shuffling and dealing of cards in
a card game, these steps are purely conventional activities in a board game.
See In re Smith, 815 F.3d at 819.
For the above reasons, the recited elements, considered individually
and as an ordered combination, do not constitute an “inventive concept” that
transforms the claims into patent-eligible subject matter. See Alice, 134
S. Ct. at 2355. Rather, the recited elements constitute “well-understood,
routine conventional activity.” See Mayo, 132 S. Ct. at 1298. Viewed as an
ordered combination, claim 6 recites a series of conventional steps of
playing a board game using a conventional set of game parts, including a
playing board with spaces and playing pieces (chips) designed to fit into
those spaces to create forms entitled to a predetermined number of points in
accordance with the rules of the game.
Accordingly, we sustain the rejection of claims 6 and 8—12 under
35 U.S.C. § 101. However, because our affirmance relies on additional
findings and reasoning not included in the Examiner’s rejection, we
designate the affirmed rejection as a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) to give Appellant an opportunity to respond thereto.
DECISION
The Examiner’s decision rejecting claims 6 and 8—12 under 35 U.S.C.
§101 is AFFIRMED.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
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rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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)(l)(iv).
AFFIRMED: 37 C.F.R, $ 41.50(b)
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