Ex Parte Ginsberg

Patent Trial and Appeal Board

Sep 29, 2017

14157850 (P.T.A.B. Sep. 29, 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.
14/157,850 01/17/2014 Jared Jeremy Ginsberg 1006.0002 7190
106928 7590 10/03/2017
Knffckv Nrliwnlh T T C
EXAMINER
349 Fifth Avenue
New York, NY 10016
COBURN, CORBETT B
ART UNIT PAPER NUMBER
3714
NOTIFICATION DATE DELIVERY MODE
10/03/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JARED JEREMY GINSBERG
Appeal 2015-006429
Application 14/157,850
Technology Center 3700
Before JAMES P. CALVE, JILL D. HILL, and ERIC C. JESCHKE,
Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jared Jeremy Ginsberg (“Appellant”)1 seeks review under 35 U.S.C.
§ 134(a) of the Examiner’s decision, as set forth in the Final Office Action
dated October 9, 2014 (“Final Act.”), rejecting claims 24 and 27—31 under
35 U.S.C. § 101 as directed to patent-ineligible subject matter. The record
includes a transcript of the oral hearing held on September 12, 2017 (“Tr.”)
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies Class Act Sports, LLC as the real party in
interest. Appeal Br. 2.
Appeal 2015-006429
Application 14/157,850
BACKGROUND
The disclosed subject matter “relates generally to sports-related
prediction and fantasy gaming apparatus and methods.” Spec. 12. Claim
24, the sole independent claim, is reproduced below:
24. An apparatus comprising:
a contest based on a single-elimination
tournament having a plurality of tournament rounds
and a plurality of tournament participants, the
contest having a sponsor, a rule set and plurality of
entrants;
wherein the schedule of the plurality of
tournament participants is determined by assigning
a seed value to each of the plurality of tournament
participants and wherein the same seed value is
assigned to more than one tournament participant;
wherein the rule set comprises a requirement
that, before the beginning of the first tournament
round, for each of the seed values, the entrant
chooses a single tournament participant from the
more than one tournament participants assigned to
that seed value;
wherein, in each tournament round, the rule
set comprises criteria for awarding points to each
entrant based on the actual victories of the single
tournament participant chosen by the entrant for
each of the seed values;
wherein the seed values comprise a plurality
of seed rankings ranging from higher seed rankings
to lower seed rankings;
wherein for each tournament round, the
criteria for awarding points to each entrant provide
for higher point awards for correct predictions
related to tournament participants with lower seed
rankings, for lower point awards for correct
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predictions related to tournament participants with
higher seed rankings, and that the point awards for
correct predictions related to the first quartile of the
higher seed rankings are the same;
and wherein for each tournament round other
than the first tournament round, the criteria for
awarding points to each entrant provide for double
the point awards for the tournament round when
compared to the point awards for the previous
tournament round.
DISCUSSION
The Supreme Court has established “a framework 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. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1294
(2012)). Under that framework, we first “determine whether the claims at
issue are directed to one of those patent-ineligible concepts”—i.e., a law of
nature, a natural phenomenon, or an abstract idea. Id. If so, we secondly
“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. (quoting Mayo,
132 S. Ct. at 1298, 1297). The Supreme Court has described the second step
of the analysis as “a 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, 132 S. Ct. at
1294).
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Application 14/157,850
A. First Step
As to the first step under the Supreme Court’s framework, Appellant
argues the claims as a group. See Appeal Br. 8—10. In the Rejection, the
Examiner stated that the claims are “directed to the abstract idea of
conducting a contest.” Final Act. 2. Below, we address each of Appellant’s
arguments regarding the first step.
First, Appellant states that, “[a]t their highest level,” the claims “are
directed to an apparatus that ties: (a) a contest based on single-elimination
tournament predictions, with (b) a specific rule set related to the contest so
as to (c) assign points and possible compensation based on the success of
these predictions under the specified rules.” Appeal Br. 8. According to
Appellant, the claims “are not directed to the 4 types of abstract subject
matter identified in the Alice USPTO Guidelines, namely: (1) fundamental
economic practices; (2) certain methods of organizing human activities; (3)
‘[A]n idea of itself;’ or (4) Mathematical relationship/formulas.” Id. at 9.2
As to the third category, Appellant argues that the claims “are more than
simply a principle, original cause or motive such as those directed [to] an
algorithm for converting binary-coded decimal numerals into pure binary
form (found ineligible in Gottschalkv. Benson, 409 U.S. 63 (1972)).” Id.
According to Appellant, “the claims are not a simple process converting one
2 With “Alice USPTO Guidelines,” Appellant refers to the
Memorandum from Andrew H. Hirshfeld, Deputy Commissioner for Patent
Examination Policy, to Patent Examining Corps, Preliminary Examination
Instructions in view of the Supreme Court Decision in Alice Corporation
Ptv. Ltd, v. CLS Bank International, et al. (June 25, 2014) (available at
https://www.uspto.gov/sites/default/files/patents/announce/alice_pec_25jun2
014.pdf) (last visited Sept 13, 2017). We will refer to this document as the
“2014 Alice Memorandum.”
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thing to another but encompass contest rules covering multiple scenarios and
applications.” Id.
In response, the Examiner states that the list of four categories of
abstract ideas in the 2014 Alice Memorandum “is not a complete list of types
of abstract ideas.” Ans. 3. The Examiner also states that “methods that can
be implemented using pen and paper are abstract ideas — no matter what the
subject.” Id.
In reply, Appellant argues that “[t]he Examiner implicitly admits in
[the] Answer that [Appellant’s] claims do not fall into one of the four types
of abstract ideas identified” in the 2014 Alice Memorandum and that the
Examiner “seeks to add a new, fifth Alice category of per se abstract claims:
so-called ‘pen and paper’ claims that may potentially be performed with a
pen and paper.” Reply Br. 2.
With this argument, Appellant does not apprise us of error in the
Examiner’s determination that the claims are directed to an abstract idea.
See Final Act. 2; Ans. 3. As an initial matter, we note that the 2014 Alice
Memorandum identifies the four listed categories as “[examples of abstract
ideas referenced in Alice Corp.” 2014 Alice Memorandum, at 2—3 (emphasis
added). The Examiner states that Appellant has “disclosed that the method
can be carried out by a person using pen and paper.” Ans. 2; see also Spec.
1 683 (“The methods and apparatus that may be used to accomplish the
above are numerous. The contests sponsors, contest entrants, philanthropic
organizations, sports leagues, sports teams and athletes may use paper-based
systems or electronic-based systems or a combination of the two.” (emphasis
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added)).3 Appellant does not contest this finding. See Tr. 4:1—4
(“[Bjasically any computer-based invention could be done by pencil and
paper. I believe that is computer science theory. And the question is, where
does it end? And the fact that ours can be done by mental processes — I
mean, many claims can be done by mental processes.” (emphasis added)).
The Examiner states, “[i]t is well-settled law” that a method that “can
be carried out by a person using pen and paper” “is an abstract idea and is
not patent-eligible without ‘significantly more.’” Ans. 2 (citing
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir.
2011), Parker v. Flook, 437 U.S. 584 (1978), and Gottschalk v. Benson, 409
U.S. 63, 67 (1972)). In CyberSource, the Federal Circuit discussed the
Gottschalk decision, stating that “the Supreme Court appeared to endorse the
view that methods which can be performed mentally, or which are the
equivalent of human mental work, are unpatentable abstract ideas.”
CyberSource, 654 F.3d at 1371. The Federal Circuit also discussed the
Parker decision, noting the Supreme Court’s statement that the calculations
“could still ‘be made [using a] pencil and paper.’” CyberSource, 654 F.3d at
1371 (quoting Parker, 437 U.S. at 586). Applying the law to the claim at
issue in CyberSource, the Federal Circuit stated that “[i]t is clear that
unpatentable mental processes are the subject matter of claim 3” because
“[a]ll of claim 3’s method steps can be performed in the human mind, or by
a human using a pen and paper.” CyberSource, 654 F.3d at 1372; see also
id. at 1373 (stating that “a method that can be performed by human thought
alone is merely an abstract idea and is not patent-eligible under § 101”). In
3 Although the Examiner cites to paragraph 680 of the Specification,
we view this as a typographical error.
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light of the decisions cited, we view the Examiner’s discussion of how the
claims here could be performed using a “pen and paper” as indicating that
the claims here are directed to the equivalent of human mental processes,
and thus, to an abstract idea. See Ans. 2—3; see also Planet Bingo, LLC v.
VKGSLLC, 576 F. App’x 1005, 1007 (Fed. Cir. 2014) (“The district court
correctly concluded that managing the game of bingo ‘consists solely of
mental steps which can be carried out by a human using pen and paper.’”).
Although Appellant is correct that, in CyberSource, the Federal
Circuit did not discuss performance on pen and paper as a “per se
disqualifier” (Reply Br. 3), as discussed above, the court did hold that a
method that could be performed in the human mind or by a human using a
pen and paper was directed to an abstract idea. See CyberSource, 654 F.3d
at 1371—72; Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146—
47 (Fed. Cir. 2016) (“While the Supreme Court has altered the § 101
analysis since CyberSource in cases like Mayo and Alice, we continue to
‘treat[ ] analyzing information by steps people go through in their minds, or
by mathematical algorithms, without more, as essentially mental processes
within the abstract-idea category.’” (quoting Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016))); see also Tr. 6:20-21
(“Certainly [the ability to perform a method with a pen and paper is] a factor
that may lean towards abstractness, I certainly would concede that.”).
Appellant argues that “[m]any computer-based inventions that are patentable
under § 101 can be broken down into steps that can be performed by pen and
paper in whole or part,” but does not provide any evidence or reasoning to
support that proposition. Reply Br. 3; see also Tr. 4:1—3 (“[BJasically any
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computer-based invention could be done by pencil and paper. I believe that
is computer science theory. And the question is, where does it end?”).
Further, Appellant’s efforts to distinguish the claims here from those
in decisions cited by the Examiner do not show error in the determination as
to the first step in the analysis. See Reply Br. 3 (stating that (1) Appellant’s
“claims are far narrower than those in CyberSource,” (2) “[ujnlike Parker,
[Appellant’s] claims contain no mathematical formulas,” and (3) Appellant’s
“claims are more than simply a computer algorithm” as in Gottschalk).
At oral argument, Appellant discussed the decision in Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).4 Appellant stated that the
invention in Enfish “was found to be non-abstract under Section 1 — under
prong 1 of Alice f and contended that “the essence of [the invention] could
be done with pencil and paper.” Tr. 8:6—10. Appellant has not provided
evidence to support the position that the invention in Enfish could be
performed with a pen and paper, and the decision itself does not discuss the
issue. Moreover, in Enfish, the court framed the step one analysis of the
claims at issue as assessing “whether the focus of the claims is on the
specific asserted improvement in computer capabilities (i.e., the self-
referential table for a computer database) or, instead, on a process that
qualifies as an ‘abstract idea’ for which computers are invoked merely as a
tool.” Enfish, 822 F.3d at 1335—36. Finding the invention directed to “a
specific improvement to the way computers operate,” the court determined
that the claims were “not directed to an abstract idea.” See id. at 1336; see
also Tr. 8:13—14 (stating that, in Enfish, “the non-abstract improvement to
4 The Enfish decision issued after this appeal transferred to the Board.
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computer technology made the claims eligible”). In contrast, here,
Appellant does not identify any improvement to computer capabilities made
available by the claimed subject matter.
Second, Appellant argues that “[tjhese claims are not the type of
unpatentable ‘abstract idea’ as defined in Alice” because “if allowed, claims
24 & 27—31 will not impede basic innovation in the sports prediction art
since the patentable subject matter is the intertwining of certain sports
predictions and point schemes as recited in the claims.” Appeal Br. 8—9
(discussing 2014 Alice Memorandum, at 2).
We are not apprised of error based on this argument. The Supreme
Court has stated that “patents that. . . integrate the building blocks [of
human ingenuity] into something more, [Jthereby transforming] them into a
patent-eligible invention . . . pose no comparable risk of pre-emption, and
therefore remain eligible for the monopoly granted under our patent laws.”
Alice, 134 S. Ct. at 2354—55 (citations and quotations omitted). Although
preemption “might tend to impede innovation more than it would tend to
promote it, ‘thereby thwarting the primary object of the patent laws’” (id. at
2354 (citing Mayo, 132 S. Ct. at 1293)), “the absence of complete
preemption does not demonstrate patent eligibility.” Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015)
(“[T]hat the claims do not preempt all price optimization or may be limited
to price optimization in the e-commerce setting do not make them any less
abstract.”). Thus, that the claims here may recite “certain sports predictions
and point schemes” (Appeal Br. 9)—i.e., possess a certain level of
specificity—does not demonstrate that the claims are directed to patent-
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eligible subject matter. Cf. Tr. 7:16—18 (Q: “So, your position then is that it
is not an idea of itself because of the specificity of the claim?” A: “Yes.”).
For these reasons, we are not apprised of error in the Examiner’s
determination that the claims at issue are directed to an abstract idea.
B. Second Step
As to the second step under the Supreme Court’s framework, the
Examiner stated that “the[] additional claim element(s) do not provide
meaningful limitation(s) to transform the abstract idea into a patent eligible
application of the abstract idea such that the claim(s) amounts to
significantly more than the abstract idea itself.” Final Act. 2.
First, Appellant argues that “[t]he second step in the § 101 analysis
requires determining whether ‘additional substantive limitations . . . narrow,
confine, or otherwise tie down the claim so that, in practical terms, it does
not cover the full abstract idea itself.’” Appeal Br. 10 (quoting Accenture
Global Servs., GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1341
(Fed. Cir. 2013)). Appellant state that the claims here “include numerous
limitations that amount to ‘significantly more’ that the abstract idea itself’
before listing certain clauses of the claims on appeal. Appeal Br. 10-11.
Appellant then states, “[a]s such, the claims have been sufficiently limited
by these additional limitations.” Id. at 11; see also Reply Br. 6 (stating that
the listed limitations “provide the additional details needed to pass step two
of the Alice test”); Appeal Br. 12 (stating that Appellant “is seeking to patent
a set of specific apparatuses that are defined by specific conditions in the
interplay between certain sports predictions, point schemes, compensation
rules and tournament structure” and “not seeking to foreclose all sports
predictions and point schemes”). Appellant argues that the claims “do not
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pre-empt the field of operating a sports prediction contest” because “there
are many meaningful and significant ways that sports contests can be
generated (which is the abstract idea identified by the Examiner) without
being covered by the claims at issue.” Reply Br.7—8; see also id. at 3
(arguing that the claims “in no way encompass every facet of predicting
sports game events”).
In the Alice decision, although the Supreme Court discusses how “the
pre-emption concern . . . undergirds [the Court’s] § 101 jurisprudence”
{Alice, 134 S. Ct. at 2358), the Court did not perform a “preemption
analysis” as discussed in the Accenture decision (728 F.3d at 1341) relied on
by Appellant. Thus, we do not consider the discussion identified by
Appellant to be part of the analysis required under the framework provided
in the Alice decision. Further, to the extent the identified discussion is
relevant to the analysis, later binding precedent from the Federal Circuit
clarified that “the absence of complete preemption does not demonstrate
patent eligibility.” Ariosa, 788 F.3d at 1379; see also OIP, 788 F.3d at
1362—63 (“[T]hat the claims do not preempt all price optimization or may be
limited to price optimization in the e-commerce setting do not make them
any less abstract.”). Thus, we are not apprised of error by the fact that the
claims here recite certain additional limitations that may narrow the claim
scope from the “full abstract idea itself.” Appeal Br. 10.
Second, Appellant argues that the claim language listed for the prior
argument “are similar to the claims to a mathematical formula applied in a
specific rubber molding process found patent-eligible under § 101 in
Diamond v. Diehr.” AppealBr.il. We disagree. As explained by the
Supreme Court in the Alice decision, “the claims in Diehr were patent
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eligible because they improved an existing technological process, not
because they were implemented on a computer.” Alice, 134 S. Ct. at 2358.
Appellant has not demonstrated how the identified limitations improve an
existing technological process.
Third, Appellant argues that the claims here are “akin to the claims
found patent-eligible under § 101” in DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014), because “[j]ust as in DDR Holdings,
[Appellant’s] claims have no limitations related to the Internet or even a
computer (although they can be performed using the Internet or computer)
and they do not merely recite an abstract business practice or mere
algorithm.” Appeal Br. 13.
The claims in DDR Holdings were not determined to recite patent-
eligible subject matter based on the absence of limitations such as those
identified by Appellant. Rather, the Federal Circuit stated that “the claimed
solution is necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks,”
specifically, “the problem of retaining website visitors that, if adhering to the
routine, conventional functioning of Internet hyperlink protocol, would be
instantly transported away from a host’s website after ‘clicking’ on an
advertisement and activating a hyperlink.” DDR, 773 F.3d at 1257.
Appellant contends that the claimed “apparatus” was “invented to address
particular challenges in the sports prediction industry” but Appellant does
not identify the alleged “challenges.” Appeal Br. 13.
For the reasons above, we sustain the rejection of claims 24 and 27—
31 under 35 U.S.C. § 101 as directed to patent-ineligible subject matter.
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DECISION
We affirm the decision to reject claims 24 and 27—31.
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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