Ex Parte Endo

Patent Trial and Appeal Board

Apr 18, 2018

14112436 (P.T.A.B. Apr. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/112,436 10/17/2013
23373 7590 04/20/2018
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
TakuEndo
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Q207251 9088
EXAMINER
RENWICK, REGINALD A
ART UNIT PAPER NUMBER
3714
NOTIFICATION DATE DELIVERY MODE
04/20/2018 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKU ENDO
Appeal2017-005181
Application 14/112,436
Technology Center 3700
Before JENNIFER D. BAHR, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Taku Endo ("Appellant") appeals under 35 U.S.C. § 134(a) from the
Examiner's decision rejecting claims 1-12. 1 We have jurisdiction under 35
U.S.C. § 6(b ).
We AFFIRM.
1 The Appeal Brief identifies KONAMI DIGITAL ENTERTAINMENT
CO., LTD. as the real party in interest. Appeal Br. 2.
Appeal2017-005181
Application 14/112,436
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below with italics added, is illustrative of the
claimed subject matter.
1. A game apparatus for dynamically generating a display
screen for providing a user with a game for collecting a plurality
of items belonging to each of a plurality of item groups, the game
apparatus comprising:
a memory configured to store one or more program codes;
a communication unit configured to communicate with a
terminal apparatus of a user;
and
a processor configured to read the one or more program
codes and execute one or more operations comprising:
monitoring a plurality of item groups, each including one
or more items to be collected by the user;
determining whether the user has a collection-not-
completed item group in which all items in the item group have
not yet been collected by the user;
determining another user who owns an item not yet
collected by the user in the collection-not-completed item group
as a candidate user from whom the item is to be taken when
an event is achieved when the user has the collection-not-
completed item group in which all items in the item group have
not yet been collected by the user;
transmitting, to the terminal apparatus via the
communication unit, a first display screen on which the user is
capable of instructing commencement of the event, to cause the
terminal apparatus to display the first screen;
receiving an instruction, via the communication unit, for
the commencement of the event from the user; and in response
to receiving the instruction for the commencement of the event,
dynamically and automatically generating a second display
screen independent of a direct request from the user for
displaying the another user as the candidate user, and
transmitting the second display screen to the terminal apparatus
via the communication unit, to cause the terminal apparatus to
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Application 14/112,436
display the second display screen including the determined
another user who owns the item not yet collected by the user in
the collection-not-completed item group.
REJECTION
Claims 1-12 are rejected under 35 U.S.C. § 101 as directed to patent
ineligible subject matter.
DISCUSSION
Appellant argues claims 1-12 as a group. Appeal Br. 8-24. We
select claim 1 as representative and claims 2-12 stand or fall with claim 1.
37 C.F.R. § 41-37(c)(l)(iv).
To determine patent-eligibility, we perform a two-step analysis. First,
we determine if the claims are directed to a patent-ineligible concept such as
an abstract idea. Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347,
2355 (2014). If so, we determine if the claims contain an "inventive
concept" that transforms the abstract idea into a patent-eligible application.
Id. at 2357.
The Re} ection
The Examiner determines that claim 1 "is directed to the abstract idea
of a method of organizing human activities. Specifically a method of
informing players of other players who own certain items." Final Act. 2.
In an Advisory Action, the Examiner further explains that
[t]he process of determining what items are not on a player's list but
are on another player's list, is itself comparing two lists, and therefore
comparing information. This comparison can be performed by a
person using mental steps. The additional step of presenting to the
player, an optional trading partner based on whether or not said other
players hold a particular item is merely, 'comparing data and
presenting the player with options,' which can also be performed
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Application 14/112,436
using mental steps. This was also previously determined to be an
abstract idea in itself.
Adv. Act. 3.
The Examiner states that certain claim limitations "can be performed by
individuals in person without the use of a computer" and other claim
elements "amount to no more than recitation of generic computer structure
that serves to perform generic computer functions that are well-understood,
routine, and conventional activities previously known in the pertinent
industry." Final Act. 3. The Examiner concludes that "[v]iewed as a whole,
these additional claim elements do not provide meaningful limitations to
transform the abstract idea into a patent eligible application of the abstract
idea such that the claim amounts to significantly more than the abstract idea
itself." Id.
Alice Step 1
Appellant contends that claim 1 is not directed to an abstract idea.
Appeal Br. 9. Appellant argues that the Examiner's statement of the abstract
idea in the Final Action, i.e., informing players of other players who own
certain items, is "overly simplified." Id. at 11; see also Reply Br. 12. In
support of this contention, Appellant presents several arguments based on an
assertion that the claims are directed to an improvement in computer
technology or graphical user interfaces due to the limitation "dynamically
and automatically generating a second display screen independent of a direct
request from the user for displaying the another user as the candidate user."
See id. at 11-12, 14, 16-17. Appellant conceptually frames the claimed
features as
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Application 14/112,436
provid[ing] a specific manner of dynamically generating a display
screen for providing a user with a game and a candidate user ...
independent of a direct request from the user for displaying the
another user as the candidate user. Here, the claimed features are
directed to a specific manner, in which, a display data is generated for
displaying a graphic interface.
Id. at 11-12.
Appellant asserts that the claims address a problem with "smart phones and
other portable devices with smaller screen where a pointing device such as a
mouse cannot be used" and wherein the claimed apparatus "reduces the
burden on a player who wants to acquire a desired item in an event using a
device that has limited types and functions of input devices." Id. at 12. In
support of these arguments, Appellant relies on Enfzsh v. Microsoft Corp.,
822 F.3d 1327 (Fed. Cir. 2016), DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014), and July 2015, Examiner Guidelines
Update, App. 1, Ex. 23. Id. at 10, 14, 16.
In the Answer, the Examiner maintains that "the claims are directed to
a method of organizing human activity wherein players are informed of
other players who are missing a particular item. This process can be
conducted by a person who reviews two lists and determines what items a
user does not have." Ans. 6. The Examiner states that the claim limitation
"dynamically and automatically generating a second display screen ... "is
"merely updating information on a display ... This is not a problem within
the realm of computer display and is instead a generic computer function."
Id. at 8.
In the Reply Brief, Appellant refers us to, inter alia, two Federal
Circuit decisions McRO v. Bandai Namco Games America, Inc., 837 F.3d
1299 (Fed. Cir. 2016) and Trading Technologies Intl., Inc. v. CQG, Inc., 675
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Application 14/112,436
Fed. Appx. 1001 (Fed. Cir. 2017). 2 Reply Br. 10. For the following
reasons, we agree with the Examiner that claim 1 is directed to an abstract
idea. 3
Appellant's argument that the claims are directed to addressing
problems with "smart phones and other portable devices with smaller screen
where a pointing device such as a mouse cannot be used" as an input device
(Appeal Br. 12) is not persuasive because it is not commensurate with the
scope of claim 1. Claim 1 recites "a terminal apparatus" which will "display
the second display screen" without any limitation to the display screen or
lack of pointing devices. Further, Appellant's Specification generically
describes "display unit 26 (such as a liquid crystal display panel) displays ..
. a screen of the game." Spec. i-f 17. The Specification further describes "[a]
touch sensitive panel integrated with the display unit 26 ... can be employed
as the input unit 28." Id. In light of these provisions, Appellant does not
direct us to any portion of the Specification that would support a
construction that claim 1 is limited to small screen devices or persuasively
explain why a touch sensitive panel display does not allow input with a
pointing device.
2 Both McRO and Trading Technologies were decided after the filing of the
Appeal Brief in this case.
3 Appellant also asserts that the claims "hav[ e] been found not obvious from
any prior art of record." Reply Br. 7. We reviewed the prosecution record
in this application and do not find any rejection of the claims under 35
U.S.C. § 103(a) nor do we find a determination by the Examiner that the
claims were patentable thereunder. In any event, such a determination
would not be relevant to the analysis under 35 U.S.C. § 101. See Two-Way
Media Ltd. v. Comcast Cable Comm 'ns, LLC, 874 F.3d 1329, 1339--40 (Fed.
Cir. 2017) ("Eligibility and novelty are separate inquiries.").
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Application 14/112,436
Appellant's reliance on Enfish and DDR Holdings is also not
persuasive. In Enfish, the claims were found to be patent eligible because
they were directed to "a specific type of data structure designed to improve
the way a computer stores and retrieves data in memory." Id. at 1339. In
this case, Appellant has not shown an improvement in the technology of
graphical user interfaces or the processor of the gaming apparatus. Rather,
the claim requires automatic generation of a screen displaying certain
information about a candidate user (potential opponent in the game), which,
presumably, would also be displayed in the same manner in response to a
direct request from the user. Appellant does not direct us to any part of the
claims or the Specification directed to improvements in the technological
aspects of the graphical user interface per se. In fact, both claim 1 and the
Specification indicate otherwise. Claim 1 requires that the game apparatus
receive "an instruction" from the user prior to automatically generating a
second display screen and causing the terminal apparatus to display the
second display screen. According to Appellant's Specification, the recited
instruction may be provided to the game apparatus by the user operating
input unit 28. See Spec. i-fi-124-25. Further, the user can operate input unit
28 "to select a desired player" or a "desired item" from those listed in game
screen GB. Id. i-fi-126-28, Fig. 2A. Thus, the claim limitation automatically
generating a second display screen is performed in response to a direct
"instruction" from the user via the terminal apparatus. Although this
instruction is not "a direct request from the user for displaying another user,"
this instruction is disclosed as entered into the input device on the user's
terminal apparatus. Appellant's argument that the claims solve an issue
relating to user input due to the size of a screen on a terminal apparatus are
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not persuasive because the claims specifically require a user input via the
terminal apparatus.
In DDR Holdings, the Federal Circuit explained the claims were not
directed to an abstract idea because "they do not merely recite the
performance of some business practice known from the pre-Internet world
along with the requirement to perform it on the Internet. Instead the claimed
solution is necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks." 773 F.3d
at 1257. As discussed above in connection with Enfish, Appellant does not
persuade us that the claims at issue are necessarily rooted in computer
technology or graphical user interface technology in order to overcome a
specific technological problem in the prior art.
Claim 1 including the limitation dynamically generating a screen of
categorized information, i.e., candidate users, is analogous to "collecting
information in classified form, then separating and transmitting that
information according to its classification" which the Federal Circuit held
"is an abstract idea that is not patent-eligible." Cyberfone Systems, LLC v.
CNN Interactive Group, Inc., 558 Fed. Appx. 988, 992 (Fed. Cir. 2014).
Appellant's reliance on Trading Technologies, McRO, and Example 23 from
the July 2015 Examiner Guidelines is unavailing in light of the holding in
Cyberfone.
In Trading Technologies, the Federal Circuit, quoting the district
court, explained that the claims in that case did not recite:
"a fundamental economic or longstanding commercial practice" ...
[but] "solve problems of prior graphical user interfaces ... in the
context of computerized trading ...
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Application 14/112,436
the challenged patents do not simply claim displaying information on
a graphical user interface. The claims require a specific structured
graphical user interface paired with a prescribed functionality directly
related to the graphical user interface's structure that is addressed to
and resolves a specifically identified problem in the prior state of the
art.
675 Fed. Appx. at 1004.
As noted above, claim 1 simply requires automatic display of
information relating to the game being played on the graphical user
interface. Appellant does not persuasively explain how the recited automatic
display of information is rooted in the specific structure of the graphical user
interface or the functionality of the graphical user interface.
The holding in McRO is similarly unavailing. The claims at issue in
McRO were directed to "A method for automatically animating lip
synchronization and facial expression" and "are limited to specific rules with
specific characteristics." 839 F. 3d at 1306, 1313. The Federal Circuit held
the claims were not directed to an abstract idea because the claim
incorporates "specific features of the rules as claim limitations" and "is
directed to a patentable technological improvement over the existing manual
3-D animation techniques." Id. at 1315. Appellant does not persuasively
explain how automatically displaying a screen of information without
prompting by the user is a technological improvement over existing
computer technology or graphical user interface technology.
Example 23 of the July 2015 Examiner Guidelines is a hypothetical
example regarding an improvement to a computer graphical user interface.
July 2015 Update, App. 1 at 7. The example relates to a problem in a
computer display where multiple windows are simultaneously open and one
window overlaps with and thereby obscures the text displayed in underlying
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windows. Id. The hypothetical claim is directed to solving this specific
problem by, inter alia, relocating the textual information that is obscured in
the underlying window to an unobscured portion of the underlying window.
Id. at 8. The guidelines indicated that the hypothetical claim did not recite
an abstract idea because it "is necessarily rooted in computer technology to
overcome a problem specifically arising in graphical user interfaces." Id. at
9. The example, thus, does not support Appellant's argument because claim
1 is not directed to an improvement or change in the graphical user interface
technology. Appellant does not argue that the recited automatic display of
information would be displayed in a different manner than with a direct user
request for the information.
We have considered all of Appellant's arguments and determine that
Appellant does not apprise us of error in the Examiner's determination that
claim 1 is directed to an abstract idea. The limitations of claim 1 including
the limitation "dynamically and automatically generating a second display
screen" are analogous to "collecting information in classified form, then
separating and transmitting that information according to its classification"
and hence is an abstract idea. See Cyberfone Systems, LLC, 558 Fed. Appx.
at 992. Automatically displaying the information without a direct request
from the user is merely insignificant post-solution activity. See Parker v.
Flook, 437 U.S. 584, 592 (1978).
Alice Step 2
Appellant contends that the claimed invention amounts to
significantly more that an abstract idea due to improvement in graphical user
interface technology. Appeal Br. 21. As explained above, we do not agree
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Application 14/112,436
that automatically generating a display screen with certain information,
independent of a direct request from the user, is directed to an improvement
in graphical user interface technology or computer technology. Appellants
do not argue that the information automatically displayed is novel or
different than information displayed in previous game apparatus. Rather,
Appellants argue that the claimed apparatus reduces the number of input
steps required by a user to have the same information displayed. See Appeal
Br. 21. This activity is merely the automatic display of routine and
conventional gaming information by means of "'well understood, routine
conventional activit[ies] previously known to the industry." In re TL!
Communications, 823 F.3d 607, 613 (Fed. Cir. 2016); see Ans. 8, 9-10. The
Federal Circuit in TL!, quoted the Supreme Court in Alice, that "[n]early
every computer will include a 'communications controller' and a 'data
storage unit' capable of performing the basic calculation, storage, and
transmission functions required by the method claims." Id. at 614. Here,
claim 1 requires a communication unit to send an instruction to a processor,
which automatically transmits stored information to a display.
Appellant also contends the claims are directed to an improvement in
processing speed and resource usage of a computer and the Examiner did not
consider this aspect of the claimed invention. Id. at 21, 23. This contention
is not persuasive because Appellant does not direct us to any portion of the
Specification or other evidence that would support a finding that the claimed
invention improves processing speed or resource usage of a computer.
Appellant lastly contends that the Examiner did not consider the claim
limitation "dynamically and automatically generating a second display
screen." Id. at 23. To the contrary, the Examiner specifically considered the
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limitation and determined that it is directed to "presenting the player with
options." Adv. Act. 3.
As Appellant's contentions do not apprise us of error, we determine
that the elements of claim 1, considered both individually and as an ordered
combination, do not transform the abstract idea of claim 1 into patent-
eligible subject matter. Claims 2-12 fall with claim 1.
DECISION
The Examiner's decision rejecting claims 1-12 is affirmed.
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)(l )(iv).
AFFIRMED
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