Ex Parte Aoyama

Patent Trial and Appeal Board

Jun 22, 2017

10952776 (P.T.A.B. Jun. 22, 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.
10/952,776 09/30/2004 Koji Aoyama P25792 2805
7055 7590 06/26/2017
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
EXAMINER
VAN BRAMER, JOHN W
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
06/26/2017 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):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KOJI AOYAMA
Appeal 2016-002213
Application 10/952,776
Technology Center 3600
Before JEAN R. HOMERE, JOSEPH P. LENTIVECH,
AARON W. MOORE, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—11, 13—21, 23—31, and 33—35, which constitute all claims pending
in this application.1 App. Br. 1. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
1 Appellant identifies the real party in interest as Kabushiki Kaisha Square
Enix (also known as Square Enix Co., Ltd.). App. Br. 3.
Appeal 2016-002213
Application 10/952,776
Introduction
Appellant’s invention relates to an advertisement distribution system
(Fig. 3) wherein advertisement sever (3) transmits to second terminal (IB) of
a second user associated with a first user the status information (name of a
video game and name of amusement facility) of the first user, the evaluation
information (comment by a first user regarding the video game and
amusement facility) obtained from first terminal (1 A), along with
advertisement information obtained from an advertisement information
storage at the server as a way to advertise a video game that is executed in
an amusement facility. Spec 3:4—24. In particular, the second terminal
displays the status information, the evaluation information, and the
advertisement information when the advertisements are not stored as already
executed advertisement information and when the status information of the
first user is selected by the second user. Spec. 34:5—12.
Representative Claim
Independent claim 1 is representative, and reads as follows:
1. An advertisement distributing system having a
server computer and a plurality of terminals connected to the
server computer via a network, wherein:
a first terminal comprises:
a first receiver that receives evaluation
information from a first user that executes a video
game and that exists in an amusement facility, the
evaluation information including a comment of the first
user on the video game and the amusement facility;
a terminal detector that generates status
information of the first user using the video game, the
status information including a name of the video game
that the first user executes and a name of the
amusement facility;
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Application 10/952,776
a first transmitter that transmits the status information
generated by the terminal detector and the evaluation
information received by the receiver,
the server computer comprises:
a user relationship storage including the status
information of the first user, the evaluation information of
the video game and the amusement facility, and associated
information of a second user in association with the first user;
an advertisement information storage including
advertisement information that corresponds to the name of the
video game and the amusement facility;
a second receiver that receives the status information
of the first user and the evaluation information of the video
game and the amusement facility from the first terminal;
a first detector that detects, in the advertisement
information storage, the advertisement information
corresponding to the name of the video game and the
amusement facility included in the received status information
of the first user;
a second detector that detects, in the user relationship
storage, the evaluation information corresponding to the
advertisement information that the first detector detects; and
a second transmitter that transmits the detected
advertisement information, the detected evaluation
information, and the status information of the first user to a
second terminal of the second user based on the association
information included in the user relationship storage,
the second terminal of the second user comprises:
a third receiver that receives the status information, the
advertisement information, and the evaluation information
from the server computer;
an advertisement execution information storage
including executed advertisement information that has been
executed by the second terminal; and
a displayer that displays the status information of the
first user on the second terminal of the second user, the
advertisement information and the evaluation information
being associated with the status information when the
advertisement information is not stored as the executed
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Appeal 2016-002213
Application 10/952,776
advertisement information in the advertisement execution
information storage, and displays the advertisement
information and the evaluation information when the
advertisement information and the evaluation information are
associated with the status information and when the status
information that is displayed on the second terminal is
selected by the second user of the second terminal, and
wherein the amusement facility is a physical location.
Rejection on Appeal2
Claims 1—11, 13—21, 23—31, and 33—35 stand rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter. Final Act. 2—5.
ANALYSIS
Appellant argues the Examiner erred in concluding that claims 1—11,
13—21, 23—31, and 33—35 are directed to the abstract idea of “providing
advertisements to a user of a computer.”3 App. Br. 18. In particular,
Appellant argues the following:
[Independent claim 1 clearly does not include mere
instructions to “provide advertisements to a user of a computer.”
Rather, independent claim 1 uses the identified abstract idea as a
“building block” to arrive at something more. (Alice at 2354). The
advertisements are provided specifically for a video game that a first
user executes in an amusement facility. The advertisements are also
provided specifically to a second user that is associated with the first
user. Moreover, the status information and the evaluation information
of the first user are transmitted and displayed in addition to the
advertisements. The evaluation information and the advertisements
are even provided under a specific set of circumstances, i.e., when the
2 The Examiner indicates that all pending claims would be allowable if the
35 U.S.C. § 101 rejection is overcome. Final Act. 3.
3 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (filed May 18, 2015) (“App. Br.”), the Reply Brief
(filed December 16, 2015) (“Reply Br.”), and the Answer (mailed October
16, 2015) (“Ans.”) for the respective details.
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Appeal 2016-002213
Application 10/952,776
advertisements are not stored as already executed advertisement
information and when the status information of the first user is
selected by the second user. In this regard, Appellant does not seek to
preempt the "providing of advertisements to a user of a computer" in
all fields, but rather, incorporates the idea into a specific, admittedly
novel and non-obvious system. The Supreme Court has confirmed
that patent claims which integrate the “building blocks” of human
ingenuity into something more pose no risk of preemption and should
remain patent-eligible.
App. Br. 20—21 (citing Alice Corp. Pty. Ltd. v. CLS BankInt’l, 124 S. Ct.
2347, 2354 (2014).
According to Appellant, because the Examiner’s reason for allowance
acknowledges that all pending claims recite novel and nonobvious elements,
the Examiner may not properly assert that these elements amount to routine
and conventional activities. Id. at 21 (citing Final Act. 3). Appellant
contends that the claimed invention recites instead limitations that are
beyond what is well understood, routine and conventional with regards to
“providing advertisements to a user of a computer.” Id. at 9. That is, “[t]he
novel and non-obvious elements are integrated with the identified abstract
idea to arrive at a new and useful application of the idea, which merely
involves, but does not preempt, the idea.” Id. Consequently, Appellant
submits because the claimed invention includes additional elements
amounting to significantly more than the judicial exception by adding
improvements to another technology or technical field, it is directed to
patent eligible subject matter. Mat 21—22. These arguments are
persuasive.
The U.S. Supreme Court provides a two-step test for determining
whether a claim is directed to patent-eligible subject matter under 35 U.S.C.
§ 101. See Alice, 134 S. Ct. at 2355. In the first step, we determine whether
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Application 10/952,776
the claims are directed to one or more judicial exceptions (i.e., law of nature,
natural phenomenon, and abstract ideas) to the four statutory categories of
invention. Id. (citations omitted) (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97 (2012)) (“Mayo”). In the
second step, we “consider the elements of each claim both individually and
‘as an ordered combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Id.
(citing Mayo, 132 S. Ct. at 1297—98). In other words, the second step is to
“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.
(citing Mayo, 132 S. Ct. at 1294).
At the outset, we note the Examiner’s reason for allowance states the
following:
[T]he examiner has been unable to find prior art that discloses
that the game is executed in an amusement facility, the comments
include comments about the amusement facility and the status
information includes the name of the game and the name of the
amusement facility, and that this information is used to select an
advertisement and transmit it to a second user that is associated with
the first user.
Final Act. 3.
We agree with Appellant that these features identified by the
Examiner as missing from the prior are sufficient to transform the claim into
one that appropriately embodies an inventive concept. App. Br. 20-21; Ans.
3^4. Consequently, we agree with Appellant that the Examiner has failed to
show on this record that the elements of claim 1 do not amount to
“significantly more” than the abstract idea of providing advertisements to
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Application 10/952,776
the user of a computer, or that they do not add any meaningful limitations
beyond generally linking the abstract idea to the particular technological
environment. Idd Because Appellant has shown at least one reversible error
in the Examiner’s patent eligibility rejection, we need not reach Appellant’s
remaining arguments. Accordingly, we reverse the Examiner’s non-
statutory subject matter rejection of claim 1, as well as the rejection of
claims 2—11, 13—21, 23—31, and 33—35, which were rejected on the same
basis.
DECISION
For the above reasons, we reverse the Examiner’s nonstatutory subject
matter rejection of claims 1—11, 13—21, 23—31, and 33—35.
REVERSED
4 Considerations for determining whether a claim with additional elements
amounts to “significantly more” than the judicial exception itself include
improvements to another technology or technical field (Alice Corp., 134 S.
Ct. at 2359 (citing Diamond v. Diehr, 450 U.S. 175, 177—78 (1981)));
adding a specific limitation other than what is well-understood, routine
and conventional in the field, or adding unconventional steps that confine
the claim to a particular useful application (Mayo, 132 S. Ct. at 1299, 1302);
or other meaningful limitations beyond generally linking the use of the
judicial exception to a particular technological environment (Alice Corp.,
134 S. Ct. at 2360).
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