Ex Parte Lockton

Patent Trials and Appeals Board

Jun 13, 2019

13859471 - (D) (P.T.A.B. Jun. 13, 2019)

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.
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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.
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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
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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
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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).
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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))).
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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:
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(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).
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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
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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
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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.
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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.
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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,
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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).
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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.
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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
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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.
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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
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