Ex Parte LocktonDownload PDFPatent Trials and Appeals BoardJun 13, 201913859471 - (D) (P.T.A.B. Jun. 13, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/859,471 04/09/2013 28960 7590 06/13/2019 HAVERSTOCK & OWENS LLP 162 NORTH WOLFE ROAD SUNNYVALE, CA 94086 FIRST NAMED INVENTOR David B. Lockton 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. AIRP-00905 7999 EXAMINER COBURN, CORBETT B ART UNIT PAPER NUMBER 3715 MAIL DATE DELIVERY MODE 06/13/2019 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 DAVID B. LOCK TON Appeal2018-002793 Application 13/859,471 Technology Center 3700 Before PHILLIP J. KAUFFMAN, JEREMY M. PLENZLER, and ALYSSA A. FINAMORE, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal2018-002793 Application 13/859,471 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's decision to reject claims 1-12, 15-19, 22, 24-43, and 46-48, which constitute all the claims pending in this application. Final Act. 3-7. Claims 13, 14, 20, 21, 23, 44, and 45 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. CLAIMED SUBJECT MATTER Appellant's claimed invention makes use of user generated competition groups and system generated competition groups to "allow users to participate in multiple competitions at once based on answering the same questions or making the same selections related to a single event." Spec. 3:4-6. 1 Claims 1, 15, 22, 25, 38, 43, and 46 are independent, and claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of participating in a competition with a closed group of participants programmed in a non-transitory memory of a device, the method comprising: joining the closed group of participants, wherein the closed group of participants is based on personal contacts including the contacts on a mobile device or on a social networking site; downloading a game including a computer-generated gameplay; 1 "Spec." here refers to the Specification, dated April 9, 2013, as amended May 29, 2015. 2 Appeal2018-002793 Application 13/859,471 executing the game specific to the closed group of participants, wherein the computer-generated gameplay provides a same sequence of events for each participant, wherein each participant is permitted to play the game at any time during a specified time period, wherein a game server adjusts data files for the game to affect the computer generated gameplay, wherein affecting the computer-generated gameplay involves utilizing lock outs precluding further response to a game element; providing a score for each participant based on the participant's performance during the participant's play of the game; sending the score for a participant to a database upon completion of the participant's game; and receiving the scores of all of the participants upon detection of completion of the game of the last participant to finish the game. REJECTIONS I. Claims 1-12, 15-19, 22, 24-43, 47, and 482 are rejected under 35 U.S.C. § 112, first paragraph, for lack of written description. Final Act. 3; Ans. 3. II. Claims 1-12, 15-19, 22, 24-43, and 46-48 are rejected under 35 U.S.C. § 101 as ineligible for patent protection. Final Act. 3-7; Ans. 3-7. 2 In the Final Office Aciton and the Answer, the Examiner lists claims 1-12, 15-19, 22, 24-43, 47, and 48 as being rejected under 35 U.S.C. § l 12(a). Claims 44 and 45 are cancelled. The rejection has been corrected accordingly. 3 Appeal2018-002793 Application 13/859,471 In addition to these two grounds of rejection, the Examiner objects to the drawings under 37 C.F.R. § l.83(a). Final Act. 2. Because the drawing may be objectionable under 37 C.F.R. § 1.113 for failure to illustrate a feature recited in a claim even if the feature is disclosed as required by 35 U.S.C. § 112, first paragraph, we will not review the drawing objection presented in this appeal as an adjunct to the rejection of the appealed claims for lack of written description. ANALYSIS I. Written Description The Examiner rejects claims 1-12, 15-19, 22, 24-43, and 46-48 under 35 U.S.C. § 112, first paragraph, for lack of written description. The test for adequate written description "requires an objective inquiry into the four comers of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed." Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). More specifically, the Examiner finds that the Specification fails to describe "wherein affecting the computer-generated gameplay involves utilizing lock outs precluding further response to a game element," as recited in claim 1. Final Act. 3; Ans. 3. Appellant does not suggest that this 4 Appeal2018-002793 Application 13/859,471 limitation was in the claims as filed. Nevertheless, the the Examiner has not shown that the Specification, as a whole, fails to describe this limitation. As Appellant points out, the latter part of the Specification describes synchronizing a game of skill with a television broadcast. Appeal Br. 7 (citing Spec., 16:25). According to the Specification, "[i]n some embodiments, the game experience for users competing in games of skill or chance[,] that experience a variety of propagation delays relating to where and how they receive a television broadcast[,] is synchronized." Spec., 18: 13-15. For example, a "game server adjusts the data files containing the 'lock outs' to accommodate the systemic delay in the delivery of the game data on the cellular networks" to players' local cellular phones. Spec., 17: 19-22. Thus, the Specification expressly describes "wherein the game server adjusts data files for the game to affect the computer generated gameplay," as recited in claim 1. Spec., 17: 19-22. More specifically, the game server adjusts the data files for the game to affect the computer generated gameplay in a manner involving lock outs. Id. Elsewhere, the Specification teaches that "each participant is permitted to play the game at any time during a specified time period." Spec., 3:14-19; see also id. at 18:24-19:1, 20:14- 16. Because the Specification teaches that the "game server adjusts the data files containing the 'lock outs' to accommodate the systemic delay in the delivery of the game data on the cellular networks" (Spec., 17: 19-22), one of ordinary skill in the art would have understood that the function of the 5 Appeal2018-002793 Application 13/859,471 lock outs related to permitting each player the specified time period in which to engage in gameplay despite such systemic delays. Furthermore, because an ordinary usage of the term "lock outs" would have implied a capability to preclude a further action, such as an input (Appeal Br. 9-1 O; see also Ans. 8; Fascenda,3 2:44-48), the Specification, considered as a whole, would have conveyed to one of ordinary skill in the art that the effect produced by the adjustment of the data filed by the game server would have involved using the lock outs to preclude further response to a game element. At the very least, the Examiner has not shown persuasively that the Specification fails to describe "wherein affecting the computer-generated gameplay involves utilizing lock outs precluding further response to a game element," as recited in claim 1. The Examiner has not demonstrated persuasively that the Specification fails to describe corresponding limitations in the other appealed claims, either. II. Patent Eligibility Background An invention is statutory if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: "[l]aws of nature, natural phenomena, and abstract 3 Fascenda (US 4,592,546; iss. June 3, 1986). 6 Appeal2018-002793 Application 13/859,471 ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court's two-step framework, described in Mayo and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework, we first determine what concept, if any, the claim is "directed to." See Alice, 573 U.S. at 219 ("On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mi ti gate settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk."). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191 (1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267-68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). 7 Appeal2018-002793 Application 13/859,471 If the claim is "directed to" an abstract idea, we tum to the second step of the Alice and Mayo framework, where "we must examine the elements of the claim to determine whether it contains an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent- eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A claim that recites an abstract idea must include 'additional features' to ensure 'that the [claim] is more than a drafting effort designed to monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77). "[M]erely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention." Id. at 212. The PTO recently published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"). Under the Guidance, we first look to whether the claim recites: ( 1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)-(c), (e)-(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: 8 Appeal2018-002793 Application 13/859,471 (3) adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional" in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance. Step 1 Independent claims 1, 15, 25, 38, and 46 fall within the literal scope of 3 5 U.S. C. § 101 because they claim processes. Independent claims 22 and 43 fall within the literal scope of this statutory provision because they claim machines, at least nominally. Final Act. 4. Step 2A, Prong 1 The Examiner concludes that claim 1 4 is directed to an abstract idea in the form of an ineligible method of organizing human activity. More specifically, the Examiner concludes that claim 1 is directed to rules for conducting a wagering game. Final Act. 4. See In re Smith, 815 F.3d 816, 818-19 (Fed. Cir. 2016); Guidance at 52. The Examiner identifies each limitation in the body of claim 1 as a game rule. Final Act. 4. Appellant contends that the limitations recited in the body of claim 1 do not constitute game rules, but instead define functionality to implement a 4 Claim 1 is representative for purposes of Rejection II. 37 C.F.R. § 41.37 ( C )(iv). 9 Appeal2018-002793 Application 13/859,471 contest. Appeal Br. 13-14. We determine that at least the following steps recited in claim 1 constitute game rules: joining the closed group of participants[;] ... executing the game specific to the closed group of participants, wherein the computer-generated gameplay provides a same sequence of events for each participant, wherein each participant is permitted to play the game at any time during a specified time period, ... ; providing a score for each participant based on the participant's performance during the participant's play of the game; ... and receiving the scores of all the participants upon detection of completion of the game of the last participant to finish the game. Each of these rules organizes or regulates the behavior of the participants in a game. The first rule organizes human behavior because it is the participants themselves who join the closed group of participants. The second rule is a broad statement that computer-implemented gameplay is to be conducted; that each participant is to be provided the same sequence of events; and that each participant is to be permitted to play the game at any time during a specified period. "[E]xecuting the game specific to the closed group of participants" organizes human behavior because the execution of the game induces the participants to engage in gameplay. The third rule organizes human behavior by providing a score for each participant based on the participant's performance. The fourth rule organizes human behavior because it is the participants who receive the scores of all the participants 10 Appeal2018-002793 Application 13/859,471 upon detection of completion of the game of the last participant to finish the game. Independent claim 1 recites "joining the closed of participants, wherein the closed group of participants is based on personal contacts," "executing the game specific to the closed group of participants, wherein the ... gameplay provides a same sequence of events for each participant, wherein each participant is permitted to play the game at any time during a specified time period," "providing a score for each participant based on the participant's performance during the participant's play of the game," "sending the score for a participant ... upon completion of the participant's game," and "receiving the scores of all of the participants upon detection of completion of the game of the last participant to finish the game." These steps manage interactions between people via the social activity of a competition held according to the rules (instructions) set forth in that claim, which is a method of organizing human activity. See Guidance at 52, n.13 (citing In re Smith, 815 F.3d 816, 818 (Fed Cir. 2016) (concluding that "[a]pplicants' claims, directed to rules for conducting a wagering game" are abstract)). As independent claim 1 recites a method of orangizing human activity, the claim recites an abstract idea. Step 2 (A), Prong 2 The determination that claim 1 recites an abstract idea in the form of organizing human activity via the social activity of a competition held according to certain rules (instructions), does not end our inquiry. "[I]t is 11 Appeal2018-002793 Application 13/859,471 not enough to merely identify a patent-ineligible concept underlying the claim; we must determine whether that patent-ineligible concept is what the claim is 'directed to."' Endo Pharms. Inc. v. Teva Pharms. USA, Inc., 919 F.3d 1347, 1353 (Fed. Cir. 2019) (quoting Rapid Litig. Mgt. Ltd. v. CellzDirect, Inc., 827 F.2d 1042, 1050 (Fed. Cir. 2016)). "A claim is not 'directed to' a judicial exception, and thus is patent eligible, if the claim as a whole integrates the recited judicial exception into a practical application of that exception." Guidance at 53. Claim 1 recites "wherein the closed group of participants is based on personal contacts including the contacts on a mobile device or on a social networking site." Insignificant extra-solution activity, such as insignificant data gathering or selection steps, does not suffice to integrate an otherwise ineligible abstract idea into a practical application. See In re Grams, 888 F.2d 835, 839-40 (Fed. Cir. 1989); MPEP § 2106.05(g) (9th ed. Rev. 08. 2017, Jan 2018); Guidance at 55. The "wherein" clause quoted immediately above is a data gathering or selection step because it defines the sources from which data, namely, the identities of potential members of the closed group of participants, may be gathered or selected. Nevertheless, Appellant contends that the data gathering or selection step is not insignificant because it improves the efficiency with which the claimed method uses the Internet by utilizing social networking to contact and establish competitors. Appeal Br. 11; Reply Br. 6. 12 Appeal2018-002793 Application 13/859,471 A claim reciting the implementation of an abstract idea on a computer is not directed to an application eligible for patent protection merely because computer implementation improves the speed or efficiency with which the abstract idea is carried out. Intellectual Ventures I LLC v. Capital One Bank, 792 F.3d 1363, 1367 (Fed. Cir. 2015). In the present case, the pertinence of a contact list on a mobile device or a social networking site is that the list provides the identities of potential members of the closed group of participants. The fact that the lists are computerized merely improves the speed or efficiency by which those identities may be retrieved, either by providing a central location from which the identities may be gathered; or by speeding up the retrieval by means of computer automation. Either way, any improvement in speed or efficiency is an inherent result of implementing the lists on a computer or computer network. Therefore, the Examiner correctly characterizes the step "wherein the closed group of participants is based on personal contacts including the contacts on a mobile device or on a social networking site" as insignificant extra-solution activity. Ans. 11.5 5 Appellant also contends that "social networking enables more efficient communication between potential competitors." Reply Br. 7. Claim 1 does not recite communication between potential competitors. Appellant has not explained how enabling more efficient communication between potential competitors is commensurate with the language of representative claim 1. Moreover, the improved communication appears to be an inherent result of the computer implementation of the claimed invention such that the claimed invention is not an improvement to the computer technology. 13 Appeal2018-002793 Application 13/859,471 Claim 1 also recites the steps of "downloading a game including a computer-generated gameplay" and "sending the score for a participant to a database upon completion of the participant's game." Within the context of the method recited in claim 1 as a whole, both steps also constitute insignificant extra-solution activity. "[D]ownloading a game including a computer-generated gameplay" to devices is an insignificant extra-solution activity because the step is a necessary prerequisite to engaging in gameplay on those devices. Furthermore, as indicated in the final step of the claim, participants may finish the game at different times. If one participant finishes before another, the score achieved by the first participant to finish must be recorded or stored somewhere so that the scores of all of the participants might be received upon detection of completion of the game of the last participant to finish the game. Thus, the step of "sending the score for a participant to a database upon completion of the participant's game" is an insignificant extra-solution activity because the step is necessary to send the score to a storage unit such as a database in order to implement the game rules recited in claim 1. Because each of the two steps is necessary to the performance of the recited game rules, neither step, alone or in combination, limits the game rules to an application eligible for patent protection. Appellant contends that the step of "sending the score for a participant to a database upon completion of the participant's game" is not insignificant because the step improves the speed and efficiency with which the claimed method uses the Internet. Appeal Br. 12; Reply Br. 6. More specifically, 14 Appeal2018-002793 Application 13/859,471 Appellant asserts that speed and efficiency are improved "by utilizing a distributed database which is able to provide data such as scores more efficiently to the competitors by storing the data closer to the competitors' locations." Id. This contention is not persuasive because neither claim 1, nor any other claim identified by Appellant, recites use of a distributed database. In addition, Appellant does not appear to have identified any passage in the Specification that describes using a distributed database. Appellant's contention is not persuasive because it is not commensurate with the claim language. Finally, claim 1 recites "wherein the game server adjusts data files for the game to affect the computer-generated gameplay, wherein affecting the computer-generated gameplay involves utilizing lock outs precluding further response to a game element." Appellant contends that the use of lock outs improves the speed and efficiency with which the claimed method uses the Internet by allowing participants to engage in gameplay during off-peak hours for the Internet, which relieves network congestion. Appeal Br. 11- 12; Reply Br. 6. Appellant also contends that the lock outs address technical problems of cheating or abuse of the system, as well as technical problems related to maintaining player interest in continued participation in the game. Appeal Br. 17-18. Lastly, Appellant contends that the use of lock outs addresses technical problems related to "accommodate[ing] the systemic delay in the delivery of the game data on the cellular networks." Appeal Br. 18 (citing Spec., 17:19-22). 15 Appeal2018-002793 Application 13/859,471 Claim 1 is not limited to embodiments in which a game is synchronized with a television broadcast. Appellant's contention that the use of lock outs addresses technical problems relating to synchronizing a game with a broadcast, such as systemic delay in the delivery of the game data, is not commensurate with claim 1. In addition, claim 1 recites a rule "wherein each participant is permitted to play the game at any time during a specified time period." The lock outs preclude further response to a game element outside the specified time period. Thus, the primary effect of the lock outs is to organize human behavior by preventing user input outside the specified time period. Relief of network congestion is a contingent, secondary result that might flow if participants choose to engage in gameplay during off-peak hours. Likewise, deterring cheating or abuse of the system, on the one hand, or maintaining player interest in continued participation in the game, on the other, are less technical problems than problems related to the organization of human behavior during gameplay. See Ans. 13. The potential for the lock outs to address such problems does not take claim 1, as a whole, outside the realm of ineligible methods for organizing human behavior. Thus, the recitation of "lock outs precluding further response to a game element" fails to support a determination that representative claim 1 is directed to a practical application of the game rules recited in the claim, rather than to the rules themselves. 16 Appeal2018-002793 Application 13/859,471 The foregoing discussion addresses Appellant's contentions that their claims are narrowly drawn; and that this narrowness supports the conclusion that their claims are directed to an application of the game rules, rather than to the game rules themselves. Appeal Br. 16-17. The issue is not whether the abstract idea to which the claims are directed is narrow. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Instead, the issue is whether the claim, as a whole, is directed to application of the abstract idea. Here, those steps of claim 1 that were not part of the recited game rules constitute insignificant extra-solution activity. Those additional steps do not limit the claim to one for an application eligible for patent protection. Although Appellant has identified improvements in networking speed or efficiency that Appellant attributes to individual elements recited in claim 1 (see Ans. 11-12), Appellant has not persuasively explained how the combination of steps recited in claim 1 might limit the claim to one directed to a method eligible for patent protection where the individual limtations do not. See Ans. 17. Step 2(B) The last step in the analysis is to determine if the remainder of the claim recites an "inventive concept," such that it transforms the nature of the claim into patent-eligible concept. Alice, 573 U.S. at 217-18. In addressing that step, we are mindful that neither the mere invocation of generic computer functionality, nor the mere recitation of sending and receiving information over a network, renders an otherwise ineligible method eligible 17 Appeal2018-002793 Application 13/859,471 for patent protection. BuySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014); see also In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 615 (Fed. Cir. 2016). Appellant contends that the recitation in claim 1 "wherein a game server adjusts data files for the game to affect the comuter-generated gameplay" distinguishes the claimed invention from simply game rules. Appeal Br. 19-20. The Examiner correctly interprets the term "game server" as any server on which, or from which, a game is run. Ans. 14. This interpretation is supported by Figures 3 and 4 of the Specification, both of which disclose server 300 in general terms without describing any particular structure dedicating the server to use as a game server. See generally Spec. 13-14. The recitation of a generic server, even if intended for use in a gaming network, cannot transform an otherwise ineligible method to an eligible, practical application of an abstract idea. Finally, Appellant contends that the steps recited in claim 1 do not: preempt all ways of conducting a tournament in which a closed group of players, selected from a player's list of social contacts, play a game which provides the same sequence of events to each player where the players can participate at any time during a specified time period, according to the rules. Appeal Br. 20. The Examiner correctly concludes that, once the multi-step analysis set forth in Alice has been performed and that claims have been determined to be ineligible, no further analysis is required to determine that the claims would preempt the the abstract idea to which the claim is directed. Ans. 12-13, citing Ariosa Diagnostics, 788 F.3d at 1379. 18 Appeal2018-002793 Application 13/859,471 DECISION I. We reverse the Examiner's decision rejecting claims 1-12, 15-19, 22, 24-43, 47, and 48 under 35 U.S.C. § 112, first paragraph, for lack of written description. II. We affirm the Examiner's decision rejecting claims 1-12, 15-19, 22, 24-43, and 46-48 under 35 U.S.C. § 101 as ineligible for patent protection. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R. § l.136(a)(l )(iv). AFFIRMED 19 Copy with citationCopy as parenthetical citation