SONY COMPUTER ENTERTAINMENT INC.

Patent Trials and Appeals Board

Jun 4, 2020

14912552 - (D) (P.T.A.B. Jun. 4, 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.
14/912,552 02/17/2016 Shinichi Honda 545-552 5045
27538 7590 06/04/2020
Dernier IP Law, LLC
89 Headquarters Plaza North
PMB 1469
Morristown, NJ 07960
EXAMINER
COBURN, CORBETT B
ART UNIT PAPER NUMBER
3799
NOTIFICATION DATE DELIVERY MODE
06/04/2020 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):
info@gdiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SHINICHI HONDA and SHINICHI KARIYA
____________________

Appeal 2019-0069111
Application 14/912,552
Technology Center 3700
____________________

Before PHILLIP J. KAUFFMAN, TARA L. HUTCHINGS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

FINAMORE, Administrative Patent Judge.

DECISION ON APPEAL

1 The citations herein refer to the Specification filed February 17, 2016
(“Spec.”), Final Office Action mailed January 8, 2019 (“Final Act.”),
Advisory Action mailed March 13, 2019 (“Advisory Act.”), Appeal Brief
filed May 30, 2019 (“Appeal Br.”), Examiner’s Answer mailed July 29,
2019 (“Ans.”), and Reply Brief filed September 24, 2019 (“Reply Br.”).
The Claims Appendix of the Appeal Brief does not include the claims on
appeal because it includes the amended claims of a Response filed
February 21, 2019, which the Examiner has not entered. Advisory Act. 1.
The claims on appeal are the amended claims of a Response filed
October 16, 2018 (“Resp.”), which the Examiner considered in the Final
Office Action.
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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–7 and 93–12. We have jurisdiction
under § 6(b).
We AFFIRM.

SUBJECT MATTER ON APPEAL
The invention “relates to an information processing apparatus, an
information processing method, a program, and an information storage
medium wherein evaluation of an action carried out between a plurality of
users or user groups is carried out.” Spec. ¶ 1. Claims 1 and 10–12 are
independent. Resp. 10, 12–15. Independent claim 10, reproduced below, is
illustrative of the claimed subject matter.
10. An information processing method comprising:
acquiring, regarding a plurality of users or user groups,
action result data indicating results of actions carried out between
the plurality of users or user groups during execution of a
multi-participant application program on an information
processing apparatus;
executing a trace process by a plural number of times and
computing an evaluation value for each of the users or user
groups in response to a number of times by which the user or user
group is selected as a target in the plural number of times of the
trace process, the trace process including: (i) a starting point
selection process randomly selecting a user or a user group as a
target from among the plurality of users or user groups, and (ii) a

2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Sony Interactive Entertainment Inc. as the real party in interest.
Appeal Br. 2.
3 Claim 9 depends from claim 8, which has been canceled. Resp. 4. In the
event of further prosecution, Appellant should correct the dependency of
claim 9.
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target selection process repetitively performing a process newly
selecting, as a next target, an opponent user or opponent user
group who has been an opponent of an action carried out by the
user or user group selected as the target at present on a basis of
the action result data until a predetermined condition is satisfied;
and
receiving a request for a recommendation for a set of
potential next opponents from a requesting user or a requesting
user group from among the plurality of users or user groups, and
in response, to select a set of recommendable users or
recommendable user groups recommendable as potential next
opponents of an action of the requesting user or requesting user
group, where the selection is carried out using the evaluation
values computed relating to the plurality of users or user groups;
wherein the information processing apparatus: (i) provides
information of the selected recommendable user or
recommendable user group as the potential next opponents to the
requesting user or a user who belongs to the requesting user
group, (ii) receives a selection of one next opponent from among
the potential next opponents by the requesting user or a user who
belongs to the requesting user group, and (iii) executes the
multi-participant application program such that the requesting
user or a user who belongs to the requesting user group and the
one next opponent engage one another in the multi-participant
application program.
Resp. 4–5 (claim status identifier omitted).

REJECTION
Claims
Rejected 35 U.S.C. § Basis
1–7, 9–12 101 Eligibility

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ANALYSIS
Principles of Law
35 U.S.C. § 101
An invention is patent eligible if it is 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.” E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)).
To “distinguish[] patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts,” the Supreme Court, in Alice, reaffirmed the
two-step analysis previously set forth in Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66 (2012). Alice, 573 U.S. at 217. The
first step of the analysis considers whether a claim is directed to a
patent-ineligible concept, e.g., an abstract idea. Id. (citing Mayo, 566 U.S. at
77). According to Supreme Court precedent, concepts determined to be
abstract ideas, and thus patent ineligible, include certain methods of
organizing human activity, such as fundamental economic practices (id. at
219–20; Bilski v. Kappos, 561 U.S. 593, 611 (2010)); mathematical formulas
(Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes
(Gottschalk v. Benson, 409 U.S. 63, 69 (1972)).
If the claim is directed to an abstract idea, we turn to the second step
of the Alice framework. The second step considers whether the claim recites
an inventive concept—an element or combination of elements sufficient to
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ensure the claim amounts to significantly more than the abstract idea and
transform the nature of the claim into a patent-eligible application. Alice,
573 U.S. at 217–18 (citing Mayo, 566 U.S. at 72–73, 78, 79). “A claim that
recites an abstract idea must include ‘additional features’ to ensure ‘that the
[claim] is more than a drafting effort designed to monopolize the [abstract
idea].’” Id. at 221 (quoting Mayo, 566 U.S. at 77). “[M]erely requiring
generic computer implementation fails to transform that abstract idea into a
patent-eligible invention.” Id. at 212.
USPTO Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of 35 U.S.C. § 101. 2019
Revised Patent Subject Matter Eligibility Guidance (“2019 Revised
Guidance”), 84 Fed. Reg. 50 (Jan. 7, 2019).4 “All USPTO personnel are, as
a matter of internal agency management, expected to follow the guidance.”
Id. at 51; see also October 2019 Update supra at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas, i.e., (a) mathematical concepts, (b) certain methods of
organizing human activity such as a fundamental economic practice,
and (c) mental processes, (“Step 2A, Prong One”); and

4 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (“October 2019
Update”), https://www.uspto.gov/sites/default/files/documents/peg_oct_
2019_update.pdf.
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(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).
2019 Revised Guidance, 84 Fed. Reg. at 52–55. The evaluation under
Step 2A, Prong Two is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. 2019 Revised Guidance, 84 Fed. Reg. at 54–55
(Section III(A)(2)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
“Step 2B,” to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.

Rejection
Appellant argues claims 1–7 and 9–12 as a group. Appeal Br. 7–9;
Reply Br. 2–5. We select independent claim 10 as representative, and the
remaining claims stand or fall with independent claim 10. See 37 C.F.R.
§ 41.37(c)(1)(iv).
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In rejecting independent claim 10, the Examiner analyzes the claim
using the Alice two-step framework. Final Act. 2–4. Pursuant to the first
step, the Examiner determines the claim is directed to “a method of
gathering and processing data about interaction between a plurality of users
or user groups.” Id. at 2. According to the Examiner, the claimed method
can be performed in the human mind with the aid of pen and paper, and a
method for gathering data and calculating results has been held to be an
abstract idea. Id. at 2 (citations omitted), 4. The Examiner also determines
the claim is directed to a “method[] of organizing human activity because
[the claim] manage[s] the interactions between people (including the social
activity of playing a game).” Ans. 6; see also Advisory Act. 2 (determining
the same).
Under the second step, the Examiner determines the claim does not
include additional elements that are sufficient to amount to significantly
more than the abstract idea because “the computer is a generic computer
performing routine data processing functions.” Final Act. 4. The Examiner
also determines the claimed invention does not effect a technological
improvement. Advisory Act. 3.
Step 2A, Prong One: Recitation of a Judicial Exception, e.g., an
Abstract Idea
Under Step 2A, Prong One of the 2019 Revised Guidance, we
consider whether independent claim 10 recites a judicial exception, i.e., an
abstract idea, law of nature, or natural phenomenon. 2019 Revised
Guidance, 84 Fed. Reg. at 54. For abstract ideas, we contemplate whether a
claim limitation or combination of limitations falls within the enumerated
groupings of abstract ideas set forth in the 2019 Revised Guidance. Id.
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Independent claim 10 recites:
acquiring, regarding a plurality of users or user groups,
action result data indicating results of actions carried out between
the plurality of users or user groups during execution of a
multi-participant application program on an information
processing apparatus;
executing a trace process by a plural number of times and
computing an evaluation value for each of the users or user
groups in response to a number of times by which the user or user
group is selected as a target in the plural number of times of the
trace process, the trace process including: (i) a starting point
selection process randomly selecting a user or a user group as a
target from among the plurality of users or user groups, and (ii) a
target selection process repetitively performing a process newly
selecting, as a next target, an opponent user or opponent user
group who has been an opponent of an action carried out by the
user or user group selected as the target at present on a basis of
the action result data until a predetermined condition is satisfied;
and
receiving a request for a recommendation for a set of
potential next opponents from a requesting user or a requesting
user group from among the plurality of users or user groups,
and in response, to select a set of recommendable users or
recommendable user groups recommendable as potential next
opponents of an action of the requesting user or requesting user
group, where the selection is carried out using the evaluation
values computed relating to the plurality of users or user
groups.
Resp. 4. These steps relate to gathering information and analyzing it, which
could practically be performed in the human mind. October 2019 Update
supra at 7. More specifically, “acquiring, regarding a plurality of users or
user groups, action result data indicating results of actions carried out
between the plurality of users or user groups during execution of a
multi-participant application program on an information processing
apparatus” and “receiving a request for a recommendation for a set of
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potential next opponents from a requesting user or a requesting user group
from among the plurality of users or user groups” relate to gathering
information, which is an observation that can be performed in the human
mind. “Executing a trace process,” “computing an evaluation value,” and
“to select a set of recommendable users or recommendable user
groups . . . where the selection is carried out using the evaluation values” as
recited in claim 10 are evaluations that can be performed mentally.
Concepts that can be performed in the human mind, including observation,
evaluation, judgment, and opinion, are mental processes, which is one of the
enumerated groupings of abstract ideas in the 2019 Revised Guidance.
84 Fed. Reg. at 52. As these limitations recite mental processes, they recite
abstract ideas.
Independent claim 10 further recites:
wherein the information processing apparatus: (i) provides
information of the selected recommendable user or
recommendable user group as the potential next opponents to the
requesting user or a user who belongs to the requesting user
group, (ii) receives a selection of one next opponent from among
the potential next opponents by the requesting user or a user who
belongs to the requesting user group, and (iii) executes the
multi-participant application program such that the requesting
user or a user who belongs to the requesting user group and the
one next opponent engage one another in the multi-participant
application program.
Resp. 4. Providing information of the selected recommendable user or
recommendable user group as the potential next opponents, receiving a
selection of one next opponent from the next potential opponents, and
executing the multi-participant program so that the user engages the one next
opponent, as recited, relate to managing the interactions of players during
the social activity of gaming. Managing interactions between people,
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including social activities, falls within the enumerated grouping of abstract
ideas for certain methods of organizing human activity. 2019 Revised
Guidance, 84 Fed. Reg. at 52; October 2019 Update supra at 6.
Appellant argues claims dealing with data collection and manipulation
do not fall within any of the enumerated categories of abstract ideas,
including mathematical concepts. Appeal Br. 8. This argument is not
convincing, as the October 2019 Update specifies that a claim relating to
data collection and analysis at a high level of generality, such as independent
claim 10, recites a mental process, which is one of the enumerated categories
of abstract ideas. October 2019 Update supra at 7 (“Examples of claims that
recite mental processes include: a claim to ‘collecting information, analyzing
it, and displaying certain results of the collection and analysis,’ where the
data analysis steps are recited at a high level of generality such that they
could practically be performed in the human mind.” (quoting Elec. Power
Grp., LLC v. Alstom, S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016))).
Appellant also argues the Examiner has not shown independent
claim 10 recites steps that can be performed in the human mind. Reply
Br. 4. According to Appellant “the sheer amount of cognitive power
required to perform the recited data gathering, analysis, recommendations,
execution, etc. makes it impossible to carry out in the human mind.” Id.
Requiring more cognitive power, however, does not show the data gathering
and analysis could not be performed mentally, but instead suggests a
computer performs the data gathering and analysis more effectively. Our
reviewing court has held repeatedly that using a computer to perform tasks
more quickly or more accurately does not impart patent eligibility. See OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
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(“[R]elying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible.”); Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed.
Cir. 2015) (“[C]laiming the improved speed or efficiency inherent with
applying the abstract idea on a computer [does not] provide a sufficient
inventive concept.”); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can.
(U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required
calculations could be performed more efficiently via a computer does not
materially alter the patent eligibility of the claimed subject matter.”).
For the above reasons, independent claim 10 recites mental processes
and a certain method of organizing human activity, which are abstract ideas.
Independent claim 10, therefore, recites a judicial exception.
Step 2A, Prong Two: Integration into a Practical Application
Having determined independent claim 10 recites a judicial exception,
we next consider whether the claim recites any additional elements that
integrate the judicial exception into a practical application. 2019 Revised
Guidance, 84 Fed. Reg. at 54–55. More specifically, we evaluate any
additional elements, individually and in combination, to determine whether
they integrate the exception into a practical application, using one or more of
the considerations laid out by the Supreme Court and the Federal Circuit and
set forth in MPEP §§ 2106.05(a)–(c) and (e)–(h). Id.
Apart from the limitations reciting abstract ideas, which we identify
above in accordance with the analysis under Step 2A, Prong One,
independent claim 10 recites “an information processing apparatus.”
Resp. 4. Under the 2019 Revised Guidance, if an additional element, alone
or in combination, implements a judicial exception with, or uses a judicial
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exception in conjunction with, a particular machine, then the additional
element may integrate the judicial exception in a practical application.
84 Fed. Reg. at 55. However, a general purpose computer that applies a
judicial exception via generic computer functions does not qualify as a
particular machine. MPEP § 2106.05(b)(I). Independent claim 10 recites
“information processing apparatus” at a high level of generality, without any
meaningful detail about the structure or configuration of the information
processing apparatus. Accordingly, the recited “information processing
apparatus” does not reflect a particular machine.
In determining whether a judicial exception is integrated into a
practical application, we also consider whether any additional element, alone
and in combination, reflects an improvement in the functioning of a
computer or an improvement to another technology or technical field. 2019
Revised Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(a). Appellant
contends the claimed invention “produces a result that solves a problem in
the computer arts.” Reply Br. 4. In particular, Appellant alleges “when a
large number of users participate in a multi-player game it is impossible (or
at least impractical) for each of the users to know the details of all of the
other users in order to establish a next opponent.” Id.; see also Appeal Br. 9
(“[W]here a large number of users participate in a multi-player game, . . . it
is difficult to simply juxtapose users and carry out ranking of all of the users
on the basis of results of actions of all the users.”). Addressing the problem
of determining a formidable opponent, however, is an improvement to the
management of interactions between the users, or to the computation of
evaluation values meaningful in the selection of potential next opponents.
More simply put, the claimed invention represents an improvement to the
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abstract idea, not to the computer. The claimed invention affects the way the
computer operates only to the extent it implements the abstract idea, and
uses a computer merely as a tool to implement the abstract idea. 2019
Revised Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(a)(I). Accordingly,
independent claim 10 does not include any additional elements, alone or in
combination, that reflect an improvement in the functioning of a computer or
an improvement to another technology or technical field.
For these reasons, independent claim 10 does not include any
additional elements, considered individually and in combination, that
integrate the judicial exception into a practical application. Consequently,
independent claim 10, as a whole, is directed to a judicial exception.
Step 2B: Well-understood, routine, and conventional
As independent claim 10 recites a judicial exception and does not
integrate the judicial exception into a practical application, we consider
whether the claim includes any additional elements, alone and in
combination, that are not well-understood, routine, conventional activity in
the field. 2019 Revised Guidance, 84 Fed. Reg. at 56. This step of the
analysis considers additional elements, as limitations reciting a judicial
exception cannot supply an inventive concept. See Mayo, 566 U.S. at 72–73
(requiring “a process that focuses upon the use of a natural law also contain
other elements or a combination of elements, sometimes referred to as an
‘inventive concept,’ sufficient to ensure that the patent in practice amounts
to significantly more than a patent upon the natural law itself” (emphasis
added)); BSG Tech. LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed.
Cir. 2018) (“It has been clear since Alice that a claimed invention’s use of
the ineligible concept to which it is directed cannot supply the inventive
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concept that renders the invention ‘significantly more’ than that ineligible
concept.”); Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018)
(Moore, J., concurring) (“[A]nd Berkheimer . . . leave[s] untouched the
numerous cases from [the Federal Circuit] which have held claims ineligible
because the only alleged ‘inventive concept’ is the abstract idea.).”
As set forth above, the recited “information processing apparatus” is
an additional element. Independent claim 10 recites the “information
processing apparatus” at a high level of generality, without any meaningful
detail about its structure or configuration. The Specification similarly
describes the computing components at a high level of generality.
Spec. ¶¶ 10–14 (referring to an information processing system as, for
example, “a consumer game machine, a portable game machine, a
smartphone, a personal computer or the like”), Fig. 1. Furthermore, the
recited “information processing apparatus” does not reflect an improvement
to the functioning of the computer, but instead is used merely as a tool to
implement the game. Thus, independent claim 10 does not include any
additional elements, alone or in combination, that represent something other
than well-understood, routine, conventional activity in the field.
Conclusion for the Rejection
In view of the foregoing, independent claim 10 is directed to a judicial
exception without significantly more to transform the nature of the claim
into a patent-eligible application. We, therefore, sustain the rejection of
independent claim 10, with claims 1–7, 9, 11, and 12 falling therewith.

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CONCLUSION
We sustain the rejection of claims 1–7 and 10–12 under 35 U.S.C.
§ 101.

DECISION SUMMARY
Claims
Rejected 35 U.S.C. § Basis Affirmed Reversed
1–7, 9–12 101 Eligibility 1–7, 9–12

TIME PERIOD FOR RESPONSE
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)(1)(iv).

AFFIRMED