Ex Parte Fear

Patent Trial and Appeal Board

Apr 25, 2018

13655510 (P.T.A.B. Apr. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/655,510 10/19/2012
102469 7590 04/27/2018
PARKER JUSTISS, P.C./Nvidia
14241 DALLAS PARKWAY
SUITE 620
DALLAS, TX 75254
FIRST NAMED INVENTOR
Andrew Fear
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.
AU-12-0080-USl 7176
EXAMINER
DUFFY, DAVID W
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
04/27/2018 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):
docket@pj-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW FEAR
Appeal2016-003699 1
Application 13/655,5102
Technology Center 3700
Before BART A. GERSTENBLITH, KENNETH G. SCHOPPER, and
AMEE A. SHAH, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1, 3-11, and 13-22. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references the Appeal Brief ("Appeal Br.," filed June 8, 2015
as amended Aug. 4, 2015), Reply Brief ("Reply Br.," filed Feb. 24, 2016),
the Examiner's Answer ("Ans.," mailed Dec. 24, 2015), and the Final Office
Action ("Final Act.," mailed Dec. 5, 2014).
2 According to Appellant, the real party in interest is Nvidia Corporation.
Appeal Br. 3.
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Application 13/655,510
BACKGROUND
The Specification relates "to computer gaming and, more specifically,
to a quick-resume gaming system and a method of quick-resume gaming."
Spec. ,-r 1.
CLAIMS
Claims 1, 3-11, and 13-22 are on appeal. Claim 1 is illustrative of
the appealed claims and recites:
1. A quick-resume gaming system, comprising:
a game device configured to support playing a video game
application by a user; and
a gaming control module coupled to the game device and
configured to suspend playing of the video game application at a
current game display frame and resume playing of the video
game application at the current game display frame directly from
a regular display frame, that is not a part of the video game
application, based on user initiated suspend and resume control
commands, respectively.
Response to Notice of Non-Compliant Appeal Br., App. A, 3.
REJECTIONS
1. The Examiner rejects claims 1, 3-11, and 13-22 under 35 U.S.C. § 101
as being directed to ineligible subject matter.
2. The Examiner rejects claims 1, 3-5, 11, 13-15, 21, and 22 under
35 U.S.C. § 102(b) as anticipated by SNES. 3
3. The Examiner rejects claims 1, 3-5, 11, 13-15, 21, and 22 under 35
U.S.C. § 103(a) as unpatentable over SNES in view of Tarantino. 4
3 "Snes9x: The Portable Super Nintendo Entertainment System Emulator,"
version 1.53, Apr. 2011.
4 Tarantino, US 2002/0055381 Al, pub. May 9, 2002.
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4. The Examiner rejects claims 6 and 16 under 35 U.S.C. § 103(a) as
unpatentable over SNES in view of Gookin. 5
5. The Examiner rejects claims 1, 7, 8, 11, 17, and 186 under 35 U.S.C.
§ 103(a) as unpatentable over Tarantino in view of SNES.
6. The Examiner rejects claims 9, 10, 19, and 20 under 35 U.S.C. § 103(a)
as unpatentable over Tarantino in view of SNES and Perlman. 7
DISCUSSION
Ineligible Subject Matter
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 78-79 (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. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014). The first step in that
analysis is to "determine whether the claims at issue are directed to one of
those patent-ineligible concepts." Id. (citing Mayo, 566 U.S. at 79)
(emphasis added). If so, the second step is to consider the elements of the
claims "individually and 'as an ordered combination'" to determine whether
5 Gookin, "How to Change What Closing the Laptop Lid Does,"
Troubleshooting Your PC For Dummies, 3rd ed., Nov. 2013.
6 Although the heading for this rejection does not list claims 8 and 18, the
body of the rejection lists and addresses the limitations in claim 18. Final
Act. 8-9. Additionally, the Examiner refers to this rejection as directed to
claim 8 when discussing the rejection of claims 9, 10, 19, and 20. See id. at
9 (incorporating the Examiner's findings regarding Tarantino and claim 8).
See also Appeal Br. 12 (Appellant acknowledging the rejection of claim 8).
7 Perlman et al., US 2011/0122063 Al, pub. May 26, 2011.
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the additional elements "'transform the nature of the claim' into a patent-
eligible application." Id. (quoting Mayo, 566 U.S. at 78-79).
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. (alteration in original) (quoting
Mayo, 566 U.S. at 72-73). The Court acknowledged in Mayo, that "all
inventions at some level embody, use, reflect, rest upon, or apply laws of
nature, natural phenomena, or abstract ideas." Mayo, 566 U.S. at 71. We,
therefore, look to whether the claims focus on a specific means or method
that improves the relevant technology or are instead directed to a result or
effect that itself is the abstract idea, and merely invoke generic processes and
machinery. See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336
(Fed. Cir. 2016).
Here, the Examiner applies the Alice framework and determines:
Claims 11, 13-20, and 22 are directed to a method of
saving and restoring data. Saving data is an abstract concept as
it is a process that can be done in the mind or by hand.
Additionally, the specific steps of saving in the instant
application are old and well known as exhibited by the SNES 9x
reference. The additional limitations of a game device and a
keyboard or pointing device are features of a general purpose
computer and do not confer statutory eligibility.
Claims 1, 3-10, and 21 are directed to a "gaming system"
and a game device that carries out the same abstract method as
above. Similar to above, the inclusion of a generic computing
device does not confer statutory eligibility.
Final Act. 4.
Appellant first argues that the claims are not directed to any judicial
exception because the claims are "directed toward a concept that is
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inextricably tied to computer gaming technology and distinct from the types
of concepts found by courts to be abstract." Appeal Br. 5. We are not
persuaded of reversible error by this argument. The Examiner determines
that the claims are directed to a judicial exception because they attempt to
claim an abstract idea. Final Act. 2-3. The application of an abstract idea to
computer technology does not, by itself, indicate that the claims are not
directed to a judicial exception. Rather, the Alice two-step framework is
applied to determine whether the claims are in fact directed to an abstract
idea and, if so, whether the claims amount to significantly more than the
abstract idea itself.
Further, to the extent Appellant is arguing that the claims are not
directed to an abstract idea, we disagree.
Before determining whether the claims at issue are directed to an
abstract idea, we must first determine what the claims are directed to.
The "directed to" inquiry ... cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical
products and actions involves a law of nature and/or natural
phenomenon-after all, they take place in the physical world.
See Mayo, [566 U. S. at 69] 132 S. Ct. at 1293 ("For all
inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas.")
Rather, 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 matter." Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015); see Genetic Techs. Ltd.
v. Merial L.L.C., 818 F.3d 1369, 1375 ... (Fed. Cir. 2016)
(inquiring into "the focus of the claimed advance over the prior
art").
Enfzsh, 822 F.3d at 1335.
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The step-one analysis requires us to consider the claims "in their
entirety to ascertain whether their character as a whole is directed to
excluded subject matter." Internet Patents Corp., 790 F.3d at 1346. The
question is 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, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314 (Fed. Cir. 2016).
The Specification is titled "QUICK-RESUME GAMING" and relates
to "computer gaming and ... to a quick-resume gaming system and a method
of quick-resume gaming." Spec. i-f 1. The alleged invention seeks to solve
problems related to users having to perform numerous steps in order to
resume playing a saved game. See id. i-f 2. The Specification discloses that
the solution to this problem presented therein incorporates a general purpose
computer and a gaming control module. In particular, the Specification only
describes the video game device as "a general purpose computer" with
generic computer components including a CPU, system memory, GPU, and
frame memory. Id. i-fi-113, 14. Further, the gaming control module is
described generically as "a software module that corresponds to software
included with a video game or software that is independent of the video
game." Id. i-f 15. The Specification generally describes that the
embodiments disclosed therein allow for a user to "employ a keystroke,"
mouse clicks, a game board, or other actions to suspend and resume playing
of a video game. Id. i-f 18. In addition to a standalone gaming system, the
Specification also describes embodiments in which an internet server or
cloud server are employed to perform a quick-resume gaming function. See,
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e.g., id. i-fi-120, 27. Thus, based on the Specification's description of the
problems and solution, the purported advance of the alleged invention is to
provide a quick means of saving and restoring game data.
Independent claim 1 provides for a "quick-resume gaming system"
including a game device configured to play a video game application and a
gaming control module. Appeal Br. 3. The gaming control module is
further limited to a module configured to suspend playing of a video game
application and resume playing of the application at the current frame from a
display frame that is not part of the application based on user commands. Id.
Independent claim 11 provides for "a method of quick-resume gaming"
including the steps of playing a video game application on a game device,
suspending playing of the video game application at a current game display
frame, and resuming playing of the video game at the current game display
frame. Id. at 5
In this context, we agree with the Examiner, and Appellant does not
persuade us otherwise, that the claims are directed to the abstract concept of
saving and restoring data. And we do not see any meaningful distinction
between the concept of saving and restoring data in the claims here and
concepts also found abstract by our reviewing court. See, e.g., Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1372 (Fed. Cir.
2017) (claims directed to the collection, storage, and recognition of data);
see also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016) (claims directed to collecting information, analyzing it, and displaying
certain results); Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC,
874 F.3d 1329, 1337 (Fed. Cir. 2017) (claims directed to routing information
by converting, routing, controlling, monitoring, and accumulating data).
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Next, Appellant argues that "the [ c ]laims do not seek to tie up an
allegedly abstract idea of 'saving and restoring data' such that no others can
practice it." Appeal Br. 5. Appellant asserts that "the [ c ]laims are much
more specific and not generically directed to 'saving and restoring data'
[and] ... are directed to a specific application of quick suspension and
resumption of video game play." Id. at 6. We are not persuaded of error by
this argument. There is no dispute that the Supreme Court has described
"the concern that drives [the exclusion of abstract ideas from patent eligible
subject matter] as one of pre-emption." Alice, 134 S. Ct. at 2354. But
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
"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, 134 S. Ct. at 2354). "[P]reemption may signal patent
ineligible subject matter, [but] the absence of complete preemption does not
demonstrate patent eligibility." Id.
Regarding the second step of the Mayol Alice framework, Appellant
argues that the claims amount to significantly more than the abstract idea
alleged. Appeal Br. 6-7. Specifically, Appellant asserts that the claims
apply the abstract idea with a particular machine, i.e., a gaming device. Id.
at 6. Appellant further contends that the claims tie the idea to the video
game environment and represent an improvement to video gaming
technology that "allows a user to skip past all startup screens, menus, and
saved game selection processes, significantly improving the gaming
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experience." Id. at 7. However, we agree with the Examiner that the claims
merely limit the abstract concept to a particular environment, i.e., video
games, through the use of generic computer equipment and basic computer
operations. See Final Act. 4; see also Ans. 2-3. Further, we agree with the
Examiner that the Specification discloses that the video game device may be
"a general purpose computer" with generic computer components including
a CPU, system memory, GPU, and frame memory. Spec. i-fi-f 13, 14. Still
further, the gaming control module is described generically as "a software
module that corresponds to software included with a video game or software
that is independent of the video game." Id. i-f 15. We also disagree with
Appellant that the claims "represent improvements to a particular
technology" such that the claims would amount to significantly more than
the abstract idea itself. Appeal Br. 7. Although the claims may apply the
abstract concept to the field of video games, the claims do no more than
provide the conceptual advice to save data and restore data at the point at
which it was saved without providing specific implementation details. We
are not persuaded that such amounts to a technical solution or improvement
to a particular technology that would elevate the claim to eligibility.
Based on the foregoing, we sustain the rejection of the claims as
directed to ineligible subject matter.
Anticipation
With respect to claim 1, the Examiner finds that SNES discloses a
gaming system including a game device and gaming control module
configured as claimed. Final Act. 5. In particular, the Examiner identifies
the emulator SNES9x as distinct from the video game application claimed,
and the Examiner finds:
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Thus the emulation program is used to execute and play the video
game application, which is a game loaded from a ROM file. The
emulator acts as the controller or operating system in which the
game is executed and therefore the interface of the emulator
would be regular display frames, and not part of the game display
frames.
Ans. 3. The Examiner further finds, and provides examples showing, that
the emulator may be used in a manner in which "the game is not displayed
before the particular freeze file is selected and opened" because when the
defrost state option is selected in the emulator, "the emulator display of the
game ... is removed entirely and only the file interface ... is displayed. Upon
selection of a valid corresponding freeze file, the game is restarted from the
frozen display frame and play can resume." Id. at 5---6. The Examiner
concludes:
Thus, the prior art of SNES9x teaches the operation of
claim 1 by including a game device, the user's computer, and a
gaming control module, SNES9x program, coupled to the game
device and configured to suspend playing of the video game
application, the game in the ROM file as run by the emulation of
SNES9x, at a current display frame, by using the freeze
command menu option or keyboard shortcuts, and resume
playing of the video game application at the current game display
frame directly from a regular display frame, that is not a part of
the video game application, as detailed above, based on user
initiated suspend and resume control commands, the freeze and
defrost controls, respectively. Thus, examiner maintains that
SNES9x teaches the invention substantially as claimed.
Id. at 6.
As discussed below, we are not persuaded of reversible error in the
rejection of claim 1 by Appellant's arguments.
Appellant first argues that SNES does not disclose a gaming module
that is configured to resume a game from a regular display frame that is not
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part of the video game application. Appeal Br. 8. Appellant asserts that the
"defrosting" function relied upon by the Examiner does not teach this
limitation because this function "loads the frozen game state from a frame
that is a part of the game application." Id. Appellant asserts that the
Examiner has not provided evidence showing that a user may directly load a
frozen game state and that this is not possible using the SNES emulator
because a user must first load the video game before opening a frozen game
state for that game. Id. at 8-9. Appellant also asserts that the Examiner has
not adequately shown that it is possible to quick load a frozen file for a
different game than the one currently being played, as the Examiner alleges.
Id. at 9. We disagree at least because the Examiner provides a specific
example in the Answer in which a game is resumed from a display frame
that is not part of the video game application identified by the Examiner,
which Appellant fails to rebut. See Ans. 3-6; see also Reply Br. 4---6.
In addressing the Examiner's evidence provided in the Answer,
Appellant raises two new arguments. First, Appellant argues that the
evidence provided in the Answer is improper because it amounts to an
undesignated new ground of rejection. Reply Br. 5. Appellant asserts that
this is a new ground of rejection because the evidence provided in the
Answer appears to be from a Mac OS based program, while the program
relied upon in the rejection is a Windows based program. Id. at 4--5. We are
not persuaded of reversible error by this argument at least because whether
the Examiner has introduced a new ground of rejection in the Answer is a
petitionable matter that is not before us on Appeal. See 37 C.F.R.
§ 41.40(a). We also note that SNES states that it "allows you to play most
games designed for the SNES [or] Super Famicom Nintendo game system
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on your Mac, Linux, Windows and so on," and thus, the SNES emulator
program is not limited to the Windows operating system and may be used
with the Mac operating system. SNES at 1.
Second, Appellant argues that the new evidence relied upon by the
Examiner in the Answer does not teach the claimed resume control
command. Reply Br. 5. Appellant asserts that "under the broadest
reasonable interpretation in light of the specification, the relied upon
selection does not teach the claimed resume control command" because the
Specification describes the resume control command as "a quick and
convenient resume command, e.g., a single keyboard stroke or successive
clicks, which allows 'the player to skip past all startup screens, menus, and
saved game selections processes."' Id. (citing Spec. i-f 18). Appellant asserts
that the process relied upon by the Examiner "does the exact opposite in that
it requires the player to go through all of the things the resume control
command intends to skip past." Id.
We disagree. Although the Specification indicates that the resume
command allows "the player to skip past all startup screens, menus, and
saved game selection processes," the Specification also describes that
multiple keyboard strokes and/or multiple clicks of the mouse "may be
employed to accomplish the suspending and resuming of the video game at
the same computer display frame." Spec. i-fi-1 16, 18. Furthermore, we note
that the claim does not limit the system to a single resume control
"command" or require that "all startup screens, menus, and saved game
selection processes" are skipped when a game is resumed. Thus, we decline
to read this requirement into claim 1, and we find that the broadest
reasonable interpretation of the claims consistent with the Specification
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allows for the resuming of a game based on multiple selections, including
the three selections required by the example provided by the Examiner.
Based on the foregoing, we are not persuaded of reversible error with
respect to the rejection of claim 1 as anticipated by SNES. Accordingly, we
sustain the rejection of claim 1. For the same reasons, we also sustain the
rejection of claims 3-5, 11, 13-15, 21, and 22, for which Appellant does not
provide separate arguments. 37 C.F.R. § 41.37(c)(l)(iv).
Obviousness: SNES in View of Gookin
With respect to the rejection of claims 6 and 16, Appellant argues
only that Gookin does not cure the deficiencies in the rejection of the
independent claims. See Appeal Br. 11. Having found no deficiencies, we
sustain the rejection of claims 6 and 16 for the reasons identified above.
Remaining Obviousness Rejections
Regarding the three obviousness rejections based in part on Tarantino,
Appellant relies on the same arguments addressed above with respect to the
anticipation rejection of claim 1. See Appeal Br. 10-12. Thus, for the
reasons discussed above, we sustain the obviousness rejections of claims 1,
3-5, 7-11, 13-15, and 17-22.
CONCLUSION
We AFFIRM the Examiner's decision rejecting claims 1, 3-11, and
13-22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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