Ex Parte YUDownload PDFPatent Trial and Appeal BoardAug 17, 201713747989 (P.T.A.B. Aug. 17, 2017) Copy Citation 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. 2 Appeal 2015-006011 Application 13/747,989 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 3 Appeal 2015-006011 Application 13/747,989 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 4 Appeal 2015-006011 Application 13/747,989 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. 5 Appeal 2015-006011 Application 13/747,989 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. 6 Appeal 2015-006011 Application 13/747,989 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). 7 Appeal 2015-006011 Application 13/747,989 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 8 Appeal 2015-006011 Application 13/747,989 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. 9 Appeal 2015-006011 Application 13/747,989 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. 10 Appeal 2015-006011 Application 13/747,989 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- 11 Appeal 2015-006011 Application 13/747,989 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 12 Appeal 2015-006011 Application 13/747,989 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) 13 Copy with citationCopy as parenthetical citation