Ex Parte Zelin

Patent Trial and Appeal Board

Sep 29, 2017

13291362 (P.T.A.B. Sep. 29, 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
09/29/2017 EXAMINER
GISHNOCK, NIKOLAI A
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
09/29/2017 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 REQUEST FOR REHEARING
Appellant requests rehearing of the decision entered April 24, 2017
(“Decision”), which affirmed the Examiner’s rejections of claims 1—14, 22,
and 23, as indefinite3 and directed to ineligible subject matter. Appellant
1 We reference herein the Appeal Brief (“Appeal Br.,” filed Nov. 11, 2014);
Reply Brief (“Reply Br.,” filed Sept. 13, 2015), the Request for Re-Hearing
(“Request,” filed June 20, 2017); the Examiner’s Answer (“Ans.,” mailed
Aug. 28, 2015); Final Office Action (“Final Act.,” mailed Mar. 26, 2014);
and our Decision on Appeal (“Decision”) mailed Apr. 24, 2017.
2 According to Appellant, “Michael Zelin (Inventor/Assignee) is the real
party in interest for the presently-appealed application.” Appeal Br. 3
3 We note our decision summarily affirmed the Examiner’s rejection under
35 U.S.C. § 112 second paragraph. Decision 3.
Appeal 2015-008229
Application 13/291,362
contends that “Appellant was not given a fair chance to amend the claims to
put the application in a condition for a patent allowance” during prosecution
before the Examiner. Request 2. Although we find no point of law or fact
that we overlooked or misapprehended in arriving at our Decision, we
provide further analysis below, which differs sufficiently from the reasoning
set forth by the Examiner such that we deem our affirmance a new ground of
rejection.
DISCUSSION
We have carefully reviewed the Request. We have been unable to
ascertain what precisely Appellant believes we overlooked or
misapprehended in affirming the Examiner’s rejections under (1) 35 U.S.C.
§ 112, second paragraph, and (2) 35 U.S.C. § 101.
Rather, the Request reflects a level of frustration the Appellant has
experienced in seeking a patent for the claimed subject matter, encapsulated
by these statements:
a. Examiner played his Patent game unfairly - used the
advantage of the system, including his power to enter or disregard
amendments to the claims unfairly
b. Examiner did not understand the essence of the invention or
unfairly neglected it- his current main argument that it can be reduced
to uploading and downloading information as in a clearing house is
wrong, as it was his original argument that this is an abstract invention
because it deals with processing of digital information.
c. Please give me a fair chance to restore fairness in this case:
please instruct the Examiner to re-open the case and enter amended
claims that would put the invention in a position for allowance. The
examiner agrees that the invention has merits, but instead of helping a
pro-se inventor as he promised at the beginning of the process, he
does not want to allow amendments to the claims which were made
according to his own suggestions/discussions with him.
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Appeal 2015-008229
Application 13/291,362
Req. 5.
Appellant asserts (see statements a. and c. above) that the Examiner
“played his Patent game unfairly,” and Appellant requests an opportunity “to
re-open the case and enter amended claims that would put the invention in a
position for allowance.” Request 5.
If Appellant is arguing that the Examiner should have entered various
amendments to the claims but did not, then the Appellant should have filed a
timely petition with the Director under 37 C.F.R. § 1.181. This is a
petitionable matter and not an issue for the Board to decide. See In re
Schneider, 481 F.2d 1350, 1356-57, (CCPA 1973); In reMindick, 371 F.2d
892, 894, (CCPA 1967). See also MPEP §§ 1002.02(c)(3).
If on the other hand Appellant is arguing for an opportunity to amend
the claims and to have the amended claims considered by the Examiner, that
opportunity is provided below at the end of this decision.
Appellant further argues (see statement b. above) that the “Examiner
did not understand the essence of the invention . . . [by arguing] that it can
be reduced to uploading and downloading information as in a clearing
house.” Request 5. In support Appellant asserts that the invention may not
be reduced to a clearing house as the Examiner finds because the invention
is directed to a reality role playing game. Request 2. Appellant indicates
that the invention includes a specific “Game Board” and rules that elevate
the claims beyond the abstract idea of playing a game in your head. Id. at 6.
We are not persuaded of error. As an initial matter, we note that a
claim directed to rules of a game alone is likely to be directed to an
ineligible abstract concept. See, e.g., In re Smith, 815 F.3d 816 (Fed. Cir.
2016). Further, a claim that simply employs generic computer equipment to
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Application 13/291,362
implement the rules of a game is also likely to be directed to ineligible
subject matter. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336
(Fed. Cir. 2016). However, claims that recite an improvement to a particular
computer technology may be found non-abstract. See, e.g., McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15 (Fed. Cir. 2016)
(finding claims not abstract because they “focused on a specific asserted
improvement in computer animation”). Additionally, claims that are
directed to conducting a game using new or original equipment, e.g. an
original deck of cards, may be directed to eligible subject matter. See Smith,
815 F.3d at 819.
Here, claim 1 is directed to a system including “a central processing
unit,” “at least one processor,” “a memory device,” and “an interface.”
Appeal Br. 14. The claim goes on to list various software modules including
“a content management module,” “a user management module,” “a
collaboration module,” “a social interaction module,” “a commerce
module,” “a role playing gaming module,” “a customization module,” “a
tools and utilities module,” “an artificial intelligence simulation module,”
and “a control module.” Appeal Br. at 14—15.
The Specification favors viewing these elements as involving generic
computer components employed to perform their common functions. For
example, the Specification describes the use of a “user interface” that “may
be a computer” that allows access to a server. Specification || 39, 40. The
various “modules” are reasonably broadly construed as software capable of
performing the associated activities, e.g., managing content. But here, too,
there is insufficient evidence that said modules represent anything more than
particular functions ordinary computers normally perform. Cf. Enfish, LLC,
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Application 13/291,362
822 F.3d at 1336 (“the plain focus of the claims is [not] on an improvement
to computer functionality itself, [but rather, directed to] economic or other
tasks for which a computer is used in its ordinary capacity.”) See also Credit
Acceptance Corp. v. Westlake Services, LLC, 859 F.3d 1044, 1057 (Fed. Cir.
2017):
Significantly, the claims do not provide details as to any non-
conventional software for enhancing the financing process. See
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332,
1342 (Fed. Cir. 2017) (explaining that "[o]ur law demands more" than
claim language that "provides only a result-oriented solution, with
insufficient detail for how a computer accomplishes it"); Elec. Power
Grp., 830 F.3d at 1354 (explaining that claims are directed to an
abstract idea where they do not recite "any particular assertedly
inventive technology for performing [conventional] functions").
We conclude that under the broadest reasonable interpretation of the
claim, as presently presented, the claim is directed to an abstract idea related
to collecting and manipulating data in the context of a game, and the claim
does not include “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 Corp. Pty. Ltd. v. CLS
Bank International, 134 S. Ct. 2347, 2355 (2014) (alteration in original)
(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct.
1289, 1294 (2012)).
CONCLUSION
The affirmance of the Examiner’s rejections under (1) 35 U.S.C. §
112, second paragraph, and (2) 35 U.S.C. § 101 is maintained. However, our
reasoning here with regard to the rejection under §101 is more fully
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Application 13/291,362
developed than what we presented in the Decision. Therefore, although we
maintain our decision, we grant the Request to the extent that the Appellants
are given another opportunity to respond. To that end, the new ground of
rejection of claims 1—14, 22, and 23 under 35 U.S.C. § 101 entered in the
Decision is hereby entered anew.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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 proceeding will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record.
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).
REHEARING GRANTED-IN-PART: 37 C.F.R, $ 41.50(b)
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