Ex Parte Zelin

Patent Trial and Appeal Board

Apr 24, 2017

13291362 (P.T.A.B. Apr. 24, 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.
13/291,362 12/09/2011 Michael Gregory Zelin 3417
7590
Michael Zelin
4129 Orchid Dr.
Hernando Beach, EL 34607
EXAMINER
GISHNOCK, NIKOLAI A
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
04/24/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL GREGORY ZELIN
Appeal 2015-0082291
Application 13/291,3622
Technology Center 3700
Before HUBERT C. LORIN, KENNETH G. SCHOPFER, and
MATTHEW S. MEYERS, Administrative Patent Judges.
SCHOPFER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1—14, 22, and 23. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references the Appeal Brief (“Appeal Br.,” filed Nov. 11,
2014) and Reply Brief (“Reply Br.,” filed Sept. 13, 2015), and the
Examiner’s Answer (“Ans.,” mailed Aug. 28, 2015) and Final Office Action
(“Final Act.,” mailed Mar. 26, 2014).
2 According to Appellant, “Michael Zelin (Inventor/ Assignee) is the real
party in interest for the presently-appealed application.” Appeal Br. 3.
Appeal 2015-008229
Application 13/291,362
BACKGROUND
According to Appellant, “[ejmbodiments of the present invention
generally relate to education systems, and more particularly, to, systems and
methods for multimedia based learning in a computer-based environment.”
Spec. 11.
CLAIMS
Claims 1—14, 22, and 23 are on appeal. Claim 22 is illustrative of the
appealed claims and recites:
22. A method for multimedia based educational game
learning, comprising the steps of:
creating digital galleries for exhibiting multimedia
compositions combining at least one information piece in a
form of a text, an image, an audio, and a video;
providing access to a plurality of resource databases, including
relational databases of textual, image, audio, and video­
information;
creating a plurality of multimedia compositions by combining
at least one information piece in a form of a text, an image, an
audio, and a video;
adding a plurality of links of non-profit organizations or their
sponsors;
adding a plurality of links of advertisers and sponsors providing
support for creating said multimedia compositions;
providing a means for rating of said multimedia compositions
and their components;
providing a means for user collaboration through commenting
and offering improvements;
providing a means for conducting online competitions for
determining at least one best multimedia composition,
including, but not limited to forming teams, finding partners,
challenging opponents, and inviting judges;
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Application 13/291,362
providing a means for e-commerce enabling users to license
and sell their original content in an online store;
providing a means for forming user groups, including, but not
limited to user societies, franchises, and cooperatives;
providing a means for engaging users in learning and creative
activities through participation in online games, including, but
not limited to Role Playing Games (RPGs) and RPGs forums
based on everyday life user activities and/or fictional plots;
providing a means for tracking users’ and user teams progress
in learning and said games and delivering rewards
Appeal Br. 25—26.
REJECTIONS3
1. The Examiner rejects claims 1—14, 22, and 23 under 35 U.S.C. § 112,
second paragraph, as indefinite.
2. The Examiner rejects claims 1—14, 22, and 23 under 35 U.S.C. § 101 as
directed to ineligible subject matter.
DISCUSSION
35 U.S.C. § 112, second paragraph
Appellant does not appeal the rejection of claims 1—14, 22, and 23
under 35 U.S.C. § 112, second paragraph. See Appeal Br. 5. Accordingly,
we summarily sustain this rejection.
35 U.S.C. §101
With respect to this rejection, Appellant groups all claims together.
See Reply Br. 2—7. We select claim 22 as representative of this group.
In the Answer, the Examiner enters a new ground of rejection of
claims 1—14, 22, and 23 under 35 U.S.C. § 101. Ans. 3. Specifically, the
3 The rejection under 35 U.S.C. § 103(a) has been withdrawn. Ans. 3
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Application 13/291,362
Examiner finds that the claims are directed to abstract concepts related to
processing information through a clearing house and concepts involving
human activity relating to commercial practices. Id. at 7. The Examiner
further finds that
[t]he additional elements [of the claims], taken individually and
as a combination, do not result in the claim amounting to
significantly more than the abstract idea because none of the
limitations, considered individually, provide eligibility, because
allowing for user collaboration, games, content exchanges,
competitions, gaming, sponsorship and commerce relate to
steps of organizing human activity using only routine,
insignificant pre-solution activity, and narrowing the idea to the
a computer-implemented method using a processor is an
attempt to limit the use of the abstract idea to a particular
technological environment. None of the limitations, considered
as an ordered combination, provide eligibility, because the
claims simply instruct the practitioner to implement the abstract
idea with routine, conventional activity.
Id. at 8.
We agree with and adopt the Examiner’s findings with respect to this
rejection. As discussed below, we are not persuaded of error by Appellant’s
arguments.
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355. Appellant challenges the
Examiner’s finding that the claims are directed to abstract concepts of
processing information through a clearing house and human activity relating
to commercial practices. Reply Br. 5—6. We disagree.
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Application 13/291,362
Claim 22 recites steps including creating digital galleries; providing
access to . . . resource databases; creating . . . multimedia compositions;
adding a plurality of links related to non-profit organizations; adding a
plurality of links of advertisers; providing a means for rating; providing a
means for user collaboration; providing a means for conducting online
competitions; providing a means for e-commerce; providing a means for
forming user groups; providing a means for engaging users in learning . . .
through games; and providing means for tracking progress. We find that
these steps are related to abstract concepts of storing and organizing data
related to basic human activity including fundamental commercial activities,
e.g. advertising and licensing, and fundamental activities related to human
interaction, e.g. collaborating, judging, playing games, and tracking
progress. We conclude that this finding is consistent with the abstract
concepts identified by the Examiner.
Further, we are not persuaded otherwise by Appellant’s arguments
regarding the specific cases cited by the Examiner, which we find were
meant to generally categorize the concepts claimed and were not meant to
indicate that the present claims were identical to the activities present in
those cases. Reply Br. 5—6. In short, Appellant’s attempt to distinguish the
cases cited by the Examiner does not persuade us that the claims here are
any less abstract than as found by the Examiner. Furthermore, Appellant’s
list of applications in which the present Examiner has allowed claims
“related to Internet based software inventions” is irrelevant to our analysis of
the present claims. See Reply Br. 3—5.
Step two is “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
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Application 13/291,362
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 134 S. Ct. at 2355 (alteration in original) (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294
(2012)). We agree with the specific findings of the Examiner on this point.
See Ans. 8. In particular, we note that the claims and specification recite
only the use of generic computer functionality and methods to implement the
invention. See e.g. claim 1, Spec. 131. With respect to this step of the
analysis, Appellant primarily argues that the rejection is inconsistent with
the Examiner’s withdrawal of the art rejections:
The Examiner has withdrawn rejection 102 and 103 thereby
admitting that the instant invention provides unique software
modules functioning in a unique way and a new educational
gaming method. Thus, the Examiner has admitted that the
claimed system comprised of central processing unit, a server,
etc. (machine) is not generic: is different from the prior art,
performs new/improved function, and achieves new results
making a generic computer a unique machine.
Reply Br. 7. We are not persuaded by this argument. The tests for
anticipation and obviousness are separate and distinct from the two-step test
regarding eligibility. The fact that a particular claim may be novel and/or
non-obvious does not affect our analysis under 35 U.S.C. § 101 in this
appeal. Further, the Examiner has correctly analyzed the claim elements
individually and in combination in determining that the claims do not
include an inventive concept under Alice step two.
Accordingly, we are not persuaded of error with respect to the
rejection of claim 22 under 35 U.S.C. § 101, and thus we sustain the
rejection. We also sustain the rejection of claims 1—14 and 23, which fall
with claim 22, as noted above.
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CONCLUSION
We AFFIRM the rejection of claims 1—14, 22, and 23 under 35 U.S.C.
§ 101 for the reasons set forth above.
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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