Ex Parte Chow et al

Patent Trial and Appeal Board

Jun 11, 2014

11059781 (P.T.A.B. Jun. 11, 2014)

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.
11/059,781 02/17/2005 Timothy Yi-Chung Chow 9126
7590 06/11/2014
George Elias
21634 NE 87th Place
Redmond, WA 98053
EXAMINER
D'AGOSTINO, PAUL ANTHONY
ART UNIT PAPER NUMBER
3716
MAIL DATE DELIVERY MODE
06/11/2014 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 TIMOTHY YI-CHUNG CHOW,
GEORGE SKAFF ELIAS, CHENTEH KENNETH FAN, and
RICHARD CHANNING GARFIELD
____________________

Appeal 2012-003247
Application 11/059,781
Technology Center 3700
____________________

Before: MICHAEL L. HOELTER, LYNNE H. BROWNE, and
ANNETTE R. REIMERS, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-003247
Application 11/059,781

2
STATEMENT OF THE CASE
Timothy Yi-Chung Chow et al. (Appellants) appeal under 35 U.S.C.
§ 134 from the rejection of claims 21-50. Claims 1-20 have been canceled.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
The claims are directed to a codeword matching game using a mass
media network. Claims 21 and 34 are independent. Claim 21 is reproduced
below:
21. A method for increasing viewer interest in programs of
broadcast media by having viewers match a personal codeword
with codes associated with selected identifiable events that
potentially occur during one or more media programs broadcast
over a mass media network, the method comprising the steps
of:
(a) selecting one or more media programs scheduled to
broadcast over a mass media network;
(b) preparing prior to the scheduled broadcast a list of
identifiable events that potentially occur during a course of
broadcasting the one or more media programs via the mass
media network;
(c) associating a code for identifying each of the
identifiable events in the list;
(d) making the codes available to a plurality of viewers
of a broadcast of the one or more media programs, each of the
plurality of viewers having a personal codeword derived from
an already possessed personal identifier specified by an
organizer; and
(e) receiving from a viewer of the plurality of viewers a
contact indicating that at least a part of the viewer’s personal
codeword matches one or more codes of events identified from
the identifiable events that occurred during the broadcast.

Appeal 2012-003247
Application 11/059,781

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PRIOR ART
McNeight
Roemer
Leake
Sullivan
US 4,586,707
US 5,197,884
US 5,624,119
US 5,673,914
May 6, 1986
Mar. 30, 1993
Apr. 29, 1997
Oct. 7, 1997

GROUNDS OF REJECTION
1. Claims 21-23, 25-27, 29-37, 39-43, and 46-50 stand rejected under
35 U.S.C. § 101 as being directed to non-statutory subject matter.
2. Claims 21-27, 29-31, 33-42, and 46-50 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Roemer and Sullivan.
3. Claim 45 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Roemer, Sullivan, and Official Notice.
4. Claims 28, 32, 43, and 44 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Roemer, Sullivan, and McNeight.
5. Claims 21 and 34 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Roemer and Leake.

OPINION
Rejection under 35 U.S.C. § 101
The Examiner finds that claims 21-23, 25-27, 29-37, 39-43, and 46-50
are directed to non-statutory subject matter. In support of this finding, the
Examiner identifies factors both for and against patentability. Ans. 5-11.
The Examiner weighs these factors and finds that the factors against
patentability outweigh the factors in favor of patentability. See e.g. Ans. 9.
Appellants argue that “the Examiner appears to focus solely on what
he deems to be the lack of substantial machine implementation in the cited
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Application 11/059,781

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claims.” App. Br. 8; see also Reply Br. 2. In support of this contention,
Appellants argue that the Examiner failed to consider that “the claimed
invention presents a fundamentally new kind of viewer-participation game
based on broadcast programs that serve to increase interest in the programs
and their commercials” (App. Br. 9) and that “the invention cannot be
implemented without the physical distribution to all players of the codes
associated with events on a broadcast program” (App. Br. 10). Appellants
further argue that “the Examiner incorrectly characterizes the cited claims as
‘purely mental activity.’” App Br. 10, see also Reply Br. 3.
As recognized by the Supreme Court, the machine-or-transformation
test remains “an investigative tool . . . for determining whether some claimed
inventions are processes under § 101.” Bilski v. Kappos, 130 S. Ct. 3218,
3227 (2010). Thus, the Examiner’s reliance on the machine-or
transformation test as one of the tools for determining subject matter
eligibility is not misplaced. Furthermore, the Examiner considered
Appellants’ contentions that the invention increases viewer interest in
programs and commercials and that the invention cannot be implemented
without physical distribution of the codes and found these arguments to be
unpersuasive. Ans. 8.
Additionally, although the Examiner has somewhat overstated his
position by stating that the claimed method is “an entirely mental activity”
(Ans. 10), the Examiner correctly applied the investigative tool identified in
Parker v. Flook, 437 U.S. 584 (1978). As explained by the Court in Bilski:
The Applicant [in Flook] attempted to patent a procedure for
monitoring the conditions during the catalytic conversion
process in the petrochemical and oil-refining industries. The
application’s only innovation was reliance on a mathematical
Appeal 2012-003247
Application 11/059,781

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algorithm. . . . Flook rejected “[t]he notion that post-solution
activity, no matter how conventional or obvious in itself, can
transform an unpatentable principle into a patentable process.”
. . . Flook stands for the proposition that the prohibition against
patenting abstract ideas “cannot be circumvented by
attempting to limit the use of the formula to a particular
technological environment” or adding “insignificant
postsolution activity.”
130 S. Ct. at 3230 (citations omitted, emphasis added). Thus, the Examiner
does not err in determining that the claimed methods are directed to abstract
ideas (see Ans. 9-10). As such, we sustain the Examiner’s rejection of
claims 21-23, 25-27, 29-37, 39-43, and 46-50 as being directed to non-
statutory subject matter.
Rejection Based on Roemer and Sullivan
Claims 21-27, 29-31, 33-42, and 46-50
Regarding independent claims 21 and 34, Appellants argue that
“[t]here is no description in the cited references that would suggest to
someone of ordinary skill in the art to derive a personal codeword from an
already possessed personal identifier.” App. Br. 11. In support of this
argument, Appellants explain that “Roemer is directed to a question-and-
answer game[] . . . The questions are posed to readers via a question form . .
. Each question has an associated code. An assembly of codes from a list of
questions identifies a fixed winning codeword.” Id. Appellants explain that
in Roemer the codeword is “established by the publisher” and “[e]ven if any
word may be used for the game in Roemer, it is not equivalent to the
personal codewords of the claimed invention. A personal codeword is a
codeword derived from a personal identifier.” App. Br. 12.
In response to this argument, the Examiner states that the rejection
uses a personal identifier as a code word and provides an explicit example of
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Application 11/059,781

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how the game would operate. Ans. 25. The Examiner’s statements are not
responsive to the argument presented by Appellants because the Examiner
does not explain how the personal codeword is derived from the personal
identifier. Rather, in the example provided, the personal identifier is
substituted for the personal codeword.
For this reason, we do not sustain the Examiner’s rejection of
independent claims 21 and 34, and claims 22-27, 29-31, 33, 35-42, and 46-
50 which depend from either claim 21 or claim 34.
Rejection Based on Roemer, Sullivan, and Official Notice
Claim 45
Claim 45 depends from claim 34. The Examiner’s taking of Official
Notice does not cure the deficiency in the rejection of claim 34 discussed
supra. Accordingly, we do not sustain the rejection of claim 45.
Rejection Based on Roemer, Sullivan, and McNeight
Claims 28, 32, 43, and 44
Claims 28 and 32 depend from claim 21. Claims 43 and 44 depend
from claim 34. McNeight does not cure the deficiency in the rejection of
claims 21 and 34 discussed supra. Accordingly, we do not sustain the
rejection of claims 28, 32, 43, and 44.
Rejection Based on Roemer and Leake
Claims 21 and 34
In rejecting claims 21 and 34, the Examiner “interprets already
possessed personal identifier specified by an organizer as the ability to
customize the card according to one[’]s own preferences for color and word
or number available by the game organizer.” Ans. 23. Appellants “disagree
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strongly with the Examiner’s interpretation.” App. Br. 18. Appellants argue
that:
Leake teaches how to generate a wide variety of different
game cards, but in Applicants’ invention, the significance of an
already possessed identifier is not the variety of forms that an
identifier can take, but the fact that the dissemination of the
identifiers is a pre-existing assignment in society, and does not
require a similar assignment as a separate preliminary step.
App. Br. 19.
In response to this argument, the Examiner again states the
interpretation of personal identifier set forth supra, but does not explain the
basis for this interpretation or provide a factual basis for concluding that a
customizable game card is the equivalent of personal identifier specified by
an organizer. Accordingly, we find the Examiner’s interpretation to be
unreasonable because it is not supported by rationale underpinnings.
For this reason, we do not sustain the Examiner’s rejection of claims
21 and 34.

DECISION
The Examiner’s decision rejecting claims 21-23, 25-27, 29-37, 39-43,
and 46-50 under 35 U.S.C. § 101 is AFFIRMED.
The Examiner’s decisions rejecting claims 21-50 under 35 U.S.C.
§ 103(a) are REVERSED.
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-IN-PART
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