Kabam, Inc.

Patent Trials and Appeals Board

Jul 13, 2020

2018007974 (P.T.A.B. Jul. 13, 2020)

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.
15/812,367 11/14/2017 John Kim 45MP-264580 5924
159291 7590 07/13/2020
Esplin & Associates, PC
5411 Avenida Encinas
Suite 100
Carlsbad, CA 92008
EXAMINER
SUHOL, DMITRY
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
07/13/2020 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@esplin.legal
cpearsall@esplin.legal
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN KIM, CLIVE HENRICK, and JOSHUA MORRIS
____________

Appeal 2018-0079741
Application 15/812,367
Technology Center 3700
____________

Before CYNTHIA L. MURPHY, KENNETH G. SCHOPFER, and
BRADLEY B. BAYAT, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), John Kim et al. (Appellant)2 appeal
from the decision rejecting claims 1–18 under 35 U.S.C. § 101 as directed to
a judicial exception without significantly more. A hearing was held on June
22, 2020. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Our Decision references Appellant’s Appeal Brief (“Appeal Br.,” filed
May 7, 2018) and Reply Brief (“Reply Br.,” filed Aug. 1, 2018), the
Examiner’s Answer (“Ans.,” mailed June 27, 2018), and Final Office Action
(“Final Act.,” mailed Apr. 3, 2018).
2 We use the term “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, the real party in interest is
“Kabam, Inc.” Appeal Br. 2.
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STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention “relates to a system and method for selectively
providing access to an exclusive virtual section of an online game based on
past spending behavior of the user.” Spec. ¶ 1. The Background section of
Appellant’s disclosure describes the problem the invention attempts to solve:
In free-to-play games, a small segment of the users spend
a surprisingly large amount of money, most players spend some
money, and a few active players spend little or no money. By
allowing every user, no matter the difference in the particular
user's spending level, to view and access virtual items or value
from the same virtual store section, an opportunity is lost to
extract additional value from users inclined to spend relatively
more money. Additionally, when the users that are less inclined
to spend money are made aware of the ability of other users to
spend more to get ahead in the game, the users that spend less
may be discouraged and thus driven out of the game.
Id. ¶ 3. Appellant’s solution to the problem is comparing the user spend
parameter value with a spend threshold to determine which users should be
provided access to exclusive offers. Id. ¶ 4. According to Appellant,
“[m]aking certain offers exclusive to users based on past spending history
may facilitate presentation of high-end, or expensive virtual items to users
that have demonstrated an appetite for making purchases at a higher level.”
Id. Such “[e]xclusive offers or value pricing may be a method of optimizing
total payer conversion and overall revenue.” Id. ¶ 44.
Claimed Subject Matter
Claims 1 and 10 are the independent claims on appeal. Claim 10,
reproduced below with added bracketed notations, is illustrative of the
subject matter on appeal.
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10. A computer-implemented method for selectively providing
access to exclusive offers in an online game, wherein the access
is provided to users that are associated with client computing
platforms, wherein the users include a first user and a second
user, the method being implemented in a game server that
includes one or more physical processors and storage media
storing machine-readable instructions, the method comprising:

[(a)] executing an instance of the online game to facilitate
presentation of the online game to the users on the client
computing platforms by transmitting view information over a
network to the client computing platforms;

[(b)] determining user spend parameters for the users
including a first user spend parameter for the first user, wherein
the first user spend parameter characterizes spending by the
first user on virtual items purchased and for use within the
online game;

[(c)] performing comparisons of the first user spend parameter
with spend thresholds, wherein the spend thresholds include a
first spend threshold and a second spend threshold;

[(d)] responsive to the first user spend parameter breaching the
first spend threshold, presenting, through a shop interface, a
first offer to sell one or more virtual items for use in the online
game to the first user, wherein the first offer is exclusive to a
first subset of the users that individually have the user spend
parameters that breach the first spend threshold; and

[(e)] responsive to the first user spend parameter breaching the
second spend threshold, presenting, through the shop interface,
a second offer to sell one or more different virtual items for use
in the online game to the first user, wherein the second offer is
exclusive to a second subset of the users that individually have
the user spend parameters that breach the second spend
threshold.
Appeal Br. 27–28, Claims App. (emphasis added).
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OPINION
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “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., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “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,
566 U.S. at 78, 79). This is “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. at 217–18 (alteration in original).
After Appellant’s briefs were filed, and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance for use by USPTO personnel in evaluating subject matter
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eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019
Revised Guidance”). That guidance revised the USPTO’s examination
procedure with respect to the first step of the Alice framework by
(1) “[p]roviding groupings of subject matter that [are] considered an abstract
idea”; and (2) clarifying that a claim is not “directed to” a judicial exception
if the judicial exception is integrated into a practical application of that
exception. Id. at 50. The 2019 Revised Guidance, by its terms, applies to all
applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id.3
The Examiner determines the claims are “directed to tailoring offers
to customers based on their purchasing history.” Ans. 2; Final Act. 3–4
(“the abstract idea of tailoring offers to customers based on their past
spending”).
In contesting the rejection, Appellant argues independent claims 1 and
10 together as a group. See App. Br. 9–21. We select process claim 10 as
the representative claim for the group; thus, claim 1 stands or falls with
claim 10. 37 C.F.R. § 41.37(c)(1)(iv). We have considered Appellant’s
arguments (Appeal Br. 9–22; Reply Br. 4–8), but we are unpersuaded of

3 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related
guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”). Accordingly,
Appellant’s arguments challenging the sufficiency of the Examiner’s
rejection will not be addressed to the extent those arguments are based on
currently superseded USPTO guidance.
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reversible error on the part of the Examiner. We also have reviewed the
eligibility of the pending claims under the Alice framework and in view of
the 2019 Revised Guidance, and we determine the claims are directed to a
judicial exception without significantly more.
Step One of the Alice Framework (2019 Revised Guidance, Step 2A)
As mentioned, the first step in the Alice framework is to determine
whether the claims at issue are “directed to” a patent-ineligible concept, e.g.,
an abstract idea. Alice Corp., 573 U.S. at 217. This first step, as set forth in
the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test; in Step 2A,
Prong One, we look to whether the claim recites a judicial exception, e.g.,
one of the following three groupings of abstract ideas: (1) mathematical
concepts; (2) certain methods of organizing human activity, e.g.,
fundamental economic principles or practices, commercial or legal
interactions; and (3) mental processes. 2019 Revised Guidance, 84 Fed.
Reg. at 54. If so, we next consider whether the claim includes additional
elements, beyond the judicial exception, that “integrate the [judicial]
exception into a practical application,” i.e., that apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception (“Step 2A, Prong 2”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea.
The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether ‘their character as a whole is directed to excluded subject
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matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). We ask whether the focus of the claims is on
a specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36. Here, it is clear from the Specification (including
the claim language) that claim 10’s focus is on an abstract idea, and not on
any improvement to technology and/or a technical field.
Independent claim 10 recites, in part, a method for selectively
providing access to exclusive offers in a game comprising: (b) determining
user spend parameters for the users;4 (c) performing comparisons of the first
user spend parameter with first and second spend thresholds; (d) presenting
through a shop a first offer to sell one or more items for use in the game to
the first user responsive to the first user spend parameter breaching the first
spend threshold; and (e) presenting through the shop a second offer to sell
one or more different items for use in the game to the first user responsive to
the first user spend parameter breaching the second spend threshold.
Under the broadest reasonable interpretation, these steps describe a
method of tailoring and targeting content/advertising (offers) to sell an item
for use in a game based on a user’s past spending history. For instance, in
step (b) the seller determines a consumer’s past spending history by totaling
the amount for items purchased within a game, then the seller compares that
amount to predetermined thresholds (step (c)). When the consumer’s
historical spending surpasses those thresholds, then a corresponding offer to

4 User spend parameters for the users characterize past spending histories of
the users within the game. See Spec. ¶ 8.
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sell an item is presented to the consumer in steps (d) and (e). The process of
presenting offers to sell items to users based on their past spending history is
a commercial interaction between a seller or marketer and a consumer,
which is one of a certain method of organizing human activity under the
Revised Guidance, and an abstract idea. See 2019 Revised Guidance,
84 Fed. Reg. at 52 (Certain methods of organizing human activity including
commercial interactions involving advertising, marketing or sales activities
or behaviors).
The abstract idea recited here is not meaningfully different from the
ideas found to be abstract in other cases before our reviewing court.
Notably, our reviewing court has held that “tailoring of content based on
information about the user—such as where the user lives or what time of day
the user views the content—is an abstract idea.” Affinity Labs of Texas, LLC
v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016) (describing
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1369 (Fed. Cir. 2015)); see Elec. Power Group, LLC v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016) (“collecting information, including when
limited to particular content,” is “within the realm of abstract ideas”). Also,
in Bridge and Post, Inc. v. Verizon Communications, Inc., 778 F. App’x 882
(Fed. Cir. 2019), the Federal Circuit held that abstract ideas include tracking
a user’s computer network activity and using information gained about the
user to deliver targeted media such as advertisements. See also Evolutionary
Intelligence, LLC v. Spring Nextel Corp., 137 F. Supp. 3d 1157 (N.D. Cal.
2015), aff’d, 677 F. App’x 679 (Fed. Cir. 2017) (tailoring content based
upon the time of day and location is abstract) and Morsa v. Facebook, Inc.,
77 F. Supp. 3d 1007, 1013 (C.D. Cal. 2014), aff’d, 622 F. App’x 915
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(Fed. Cir. 2015) (concluding that targeting advertisements to certain
consumers is no more than an abstract idea). In light of these precedents, we
conclude that claim 10 equally recites an abstract idea.
Having concluded that claim 10 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong One), we next consider whether the claim
recites additional elements that integrate the judicial exception into a
practical application (Step 2A, Prong Two). When a claim recites a judicial
exception and fails to integrate the exception into a practical application, the
claim is “directed to” the judicial exception. 2019 Revised Guidance, 84
Fed. Reg. at 51. The claim may integrate the judicial exception when, for
example, it reflects an improvement to technology or a technical field.
Id. at 55.
The additional elements italicized in claim 10 supra include “the
method being implemented in a game server that includes one or more
physical processors and storage media storing machine-readable
instructions,” which is recited in the preamble, and “executing an instance of
the on line game to facilitate presentation of the on line game to the users on
the client computing platforms by transmitting view information over a
network to the client computing platforms,” which is recited in step (a). The
Specification describes these computing elements at a high level of
generality––as generic computer components such as a digital or analog
processor, desktop computer, and a shop interface (see, e.g., Spec. ¶¶ 30, 31,
45–53). For example, paragraph 46 of Appellant’s Specification discloses
that “the given client computing platform 104 may include one or more of a
desktop computer, a laptop computer, a handheld computer, a tablet
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computing platform, a netbook, a smartphone, a gaming console, and/or
other computing platforms.”
Executing an online game by transmitting information over a network
to client computing platform such as a laptop computer, as recited in
limitation (a), merely describes the online game environment in which the
abstract idea is implemented, such that these additional limitations do no
more than generally link the use of the judicial exception to a particular
technological environment or field of use. Spec. ¶ 45 (“The network may be
a wired or wireless network such as the Internet, an intranet, a LAN, a
WAN, a cellular network or another type of network. It will be understood
that the network may be a combination of multiple different kinds of wired
or wireless networks.”). These generic computing elements are
implemented in their ordinary capacity to carry out the operations recited in
claim 10, which encompass the abstract idea discussed, within an online
gaming environment. Although these additional limitations limit the use of
the abstract idea to online gaming, generally linking the use of a judicial
exception to an online gaming environment fails to integrate the judicial
exception into a practical application. See 84 Fed. Reg. at 55; see also
Affinity Labs of Texas v. DirecTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir.
2016).
We are not persuaded that the claims are directed toward an
improvement in computer-related technology by “determining a particular
type of user spend parameter, performing a particular type of comparisons,
and/or presenting a particular type of offer, among other features.” Appeal
Br. 14. As discussed, determining user’s spending history and comparing it
to spend thresholds is an abstract idea, which cannot integrate itself into a
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practical application. And, presenting an offer to a user based on that
analysis through a generic computer interface is the use of existing
computers as tools to perform a particular task. The court in McRO5 asked
whether the claims as a whole “focus on a specific means or method that
improves the relevant technology” or are “directed to a result or effect that
itself is the abstract idea and merely invoke generic processes and
machinery.” McRO, 837 F.3d at 1314. There, the court found that the plain
focus of the claim was on an improvement to computer functionality itself,
not on economic or other tasks for which a computer is used in its ordinary
capacity. Here, Appellant acknowledges the focus of the claim is on an
economic or other task that enhances user experience, “as well as increase
revenue and/or incentivize different types of users to continue playing.”
Appeal Br. 15; Spec. ¶ 44 (“Exclusive offers or value pricing may be a
method of optimizing total payer conversion and overall revenue.”).
Appellant argues that “[t]he present claims may be similar to those in
BASCOM6 because the additional limitations, considered collectively,
describe a specific and discrete implementation of the allegedly abstract
idea.” Appeal Br. 18. But we find no parallel between claim 10 and the
claims at issue in BASCOM.
In BASCOM, the Federal Circuit determined that the claimed
installation of a filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each end user provided
an inventive concept in that it gave the filtering tool both the benefits of a

5 McRO, Inc. v. Bandai Namco Games Am., 837 F.3d 1299 (Fed. Cir. 2016).
6 BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016) (“BASCOM”).
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filter on a local computer and the benefits of a filter on the ISP server.
BASCOM, 827 F.3d at 1350. The court, thus, held that the second step of
the Alice framework was satisfied because the claimed invention “represents
a ‘software-based invention[ ] that improve[s] the performance of the
computer system itself.’” Id. at 1351 (alterations in original) (stating that
like DDR Holdings, where the patent “claimed a technical solution to a
problem unique to the Internet,” the patent in BASCOM claimed a
“technology-based solution . . . to filter content on the Internet that
overcomes existing problems with other Internet filtering systems . . .
making it more dynamic and efficient”).
Here, Appellant states “while the allegedly abstract idea may be
routine in the art, the particular claimed implementation amounts to a
technical improvement over prior ways of performing the allegedly abstract
idea.” Appeal Br. 18. Yet, Appellant does not identify, and we do not find,
any improvement to computer technology analogous to the ordered
combination described in BASCOM or any additional element or elements
recited in claim 10 that yield an improvement in the functioning of a
computer, or an improvement to another technology or technical field. We
find nothing of record, short of attorney argument, that attributes an
improvement in technology and/or a technical field to the claimed invention
or that otherwise indicates that the claimed invention integrates the abstract
idea into a “practical application,” as that phrase is used in the Revised
Guidance. See Revised Guidance, 84 Fed. Reg. at 55.
Step Two of the Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Alice framework that
claim 10 is directed to an abstract idea, we next consider under Step 2B of
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the 2019 Revised Guidance, the second step of the Alice framework, whether
claim 10 includes additional elements or a combination of elements that
provides an “inventive concept,” i.e., whether claim 10 adds specific
limitations beyond the judicial exception that are not “well-understood,
routine, conventional” in the field. Id. at 56. To determine whether a claim
provides an inventive concept, the additional elements are considered—
individually and in combination—to determine whether they (1) add a
specific limitation beyond the judicial exception that is not “well-
understood, routine, conventional” in the field or (2) simply append well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception. Id.
On this record, we are not apprised of error in the Examiner’s finding
that the additional elements of the claim, alone and in combination, do not
contain an “inventive concept” sufficient to “transform” the claimed abstract
idea into a patent-eligible application. As discussed above, the additional
elements of the claim are described in the Specification as conventional
computer components, such as generic processors, operating in a
conventional manner. The additional elements such as the client computing
platforms (i.e., laptop computer), one or more generic processors, and
conventional communications network (i.e., Internet) recited in claim 10 do
not meaningfully limit the abstract idea because they merely link the use of
the abstract idea to a particular technological environment (i.e.,
“implementation via computers”), which are well-understood, routine,
conventional activity recited at a high level of generality. Alice, 573 U.S. at
225–26; Bilski v. Kappos, 561 U.S. 593, 595 (2010).
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We also find Appellant’s no risk of preemption argument (Appeal Br.
15) unpersuasive because, as the Examiner points out, a claim “need not,
however, preempt an entire field to run afoul of § 101; instead, the question
is whether the patent ‘would risk disproportionately tying up’ the use of the
abstract idea.” Final Act. 3 (quoting Mayo, 566 U.S. at 73). We agree with
the Examiner that claim 10 “does not adequately leave room . . . to practice
the abstract idea of tailoring offers to customers based on their past
spending[, and] [l]imiting the abstract idea to the field of video games is not
enough to make the concept patentable” under § 101. Id. at 3–4. “The
Supreme Court has made clear that the principle of preemption is the basis
for the judicial exceptions to patentability” and “[f]or this reason, questions
on preemption are inherent in and resolved by the § 101 analysis.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice Corp., 573 U.S. at 216). “[P]reemption may signal patent
ineligible subject matter, [but] the absence of complete preemption does not
demonstrate patent eligibility.” Id.
Accordingly, we sustain the rejection of independent claim 10 under
35 U.S.C. § 101, and independent claim 1, which falls with claim 10; we
also sustain the rejection of the dependent claims for the same reasons.

CONCLUSION
The rejection of claims 1–18 under 35 U.S.C. § 101 is affirmed.

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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–18 101 Eligibility 1–18

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED