Ex Parte GinsbergDownload PDFPatent Trial and Appeal BoardSep 29, 201714157850 (P.T.A.B. Sep. 29, 2017) Copy Citation 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 following e-mail address(es): patent @ koffsky schwalb. com eofficeaction @ appcoll.com miku spto @ gmail. com 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 2 Appeal 2015-006429 Application 14/157,850 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). 3 Appeal 2015-006429 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.” 4 Appeal 2015-006429 Application 14/157,850 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 5 Appeal 2015-006429 Application 14/157,850 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. 6 Appeal 2015-006429 Application 14/157,850 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 7 Appeal 2015-006429 Application 14/157,850 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. 8 Appeal 2015-006429 Application 14/157,850 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- 9 Appeal 2015-006429 Application 14/157,850 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 10 Appeal 2015-006429 Application 14/157,850 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 11 Appeal 2015-006429 Application 14/157,850 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. 12 Appeal 2015-006429 Application 14/157,850 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 13 Copy with citationCopy as parenthetical citation