Ex Parte Takahashi et al

Patent Trial and Appeal Board

Dec 22, 2017

12772549 (P.T.A.B. Dec. 22, 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.
12/772,549 05/03/2010 Hajime TAKAHASHI JHN-723-2757 4116
27562 7590 12/27/2017
NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
HENRY, THOMAS HAYNES
ART UNIT PAPER NUMBER
3717
NOTIFICATION DATE DELIVERY MODE
12/27/2017 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAJIME TAKAHASHI and GENTARO TAKAKI
Appeal 2016-005588
Application 12/772,549
Technology Center 3700
Before STEVEN D.A. McCARTHY, LYNNE H. BROWNE, and
LISA M. GUIJT, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s decision2 rejecting claims 1—48 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as Nintendo Co., Ltd. Appeal
Br. 3.
2 Appeal is taken from the Final Office Action dated March 17, 2015
(“Final Act.”).
Appeal 2016-005588
Application 12/772,549
THE CLAIMED SUBJECT MATTER
Claims 1, 16, 31, 47, and 48 are independent. Claim 1, reproduced
below, are illustrative of the subject matter on appeal.
1. A computer-readable non-transitory storage
medium having stored thereon a game program for displaying,
on a display device, a game world including a player character
acting in accordance with operation information which is output
from an input device by an input operation of a player and a
plurality of non-player characters acting in a self-active manner,
the game program causing the computer to execute the steps of:
a player character control step controlling an act of the
player character in accordance with the operation information
which is output from the input device;
an act number counter update step which, in response to
the player character performing each of a plurality of acts which
are respectively associated with a plurality of act tendencies
influencing an act of each non-player character performed in a
self-active manner, updates an act number counter for the act
tendency corresponding to the act of the player character among
act number counters respectively provided for the act tendencies
of each non-player character, wherein each of the act number
counters is each individually provided for a respective one of the
plurality of non-player characters;
the act number counter update step individually updates a
value of each of the act number counters provided for each of the
non-player characters and the value is in accordance with a state
of existence in the game world of the corresponding non-player
character;
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a non-player character motion control step which controls
a motion of each non-player character based on a value of the
corresponding act number counter; and
a display step of displaying the game world including the
player character and the plurality of non-player characters on the
display device.
OPINION
Appellants argue claims 1—48 as a group. Appeal Br. 10-13; Reply
Br. 2—8. We select claim 1 as representative, with claims 2—48 standing or
falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv)(2014).
The Supreme Court has set forth a two-step framework for
determining whether claimed subject matter is judicially-excepted from
patent eligibility under 35 U.S.C. § 101. Alice Corp. Pty. Ltd. v. CLSBank
Int’l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)). Accordingly, we
must 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 part 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
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than a patent upon the [ineligible concept] itself.”’ Id. (alteration in original)
(quoting Mayo, 132 S. Ct. at 1294).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 132 S. Ct. at 1293. Therefore, we look to whether
the claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Regarding step 1 of the Alice framework, the Examiner determines
that all of the pending claims (i.e., claims 1—48) are “directed to the abstract
idea of counting acts of a player to affect artificial intelligence3 of a non­
player character” (Final Act. 2), and the Examiner also determines that this
abstract idea can be “performed mentally or with pen and paper in the type
of game known as a ‘Tabletop Role Playing Game’” (Ans. 2—3). More
specifically, the Examiner determines that the claimed invention is “‘an idea
of itself” and “classifies” the claimed invention “as a mathematical
formula.’” Ans. 3 (citing Parker v. Flook, 437 U.S. 584 (1978)). Regarding
step 2 of the Alice framework, the Examiner determines that the elements of
each claim, individually and as an ordered combination, amount to no more
3 An ordinary meaning of the term “artificial intelligence” is “a branch of
computer science that develops programs to allow machines to perform
functions normally requiring human intelligence.” Microsoft Encarta
College Dictionary, 74 (2001).
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than “a general purpose computer,” which fail to transform the abstract idea
into patent eligible subject matter. Final Act. 2; see Ans. 3 (citing Planet
Bingo, LLCv. VKGSLLC, 576 Fed. Appx. 1005 (Fed. Cir. 2014)).
Appellants argue that the claims are not an abstract idea itself because
certain features recited in the claims are not abstract, and the steps of the
claims cannot be performed entirely in the human mind. Appeal Br. 10;
Reply Br. 2—A. Appellants submit, for example, that the characters “are not
abstract in that they are generated by a computer and displayed on a
computer screen” (Appeal Br. 10), and also that the claims require “a virtual
game world, player and non-player characters operating in that world, an
input device and a display device that interact steps that move or otherwise
cause to act the non-player characters based on the state of the world and the
inputs to the input device” (Reply Br. 2). Appellants argue that “[cjlaim 1
requires a physical and/or tangible result to be displayed on a physical
device and/or requires specific operations to be performed in response to
operation information from physical device(s).” Reply Br. 3. Appellants
submit that “[o]nly by reducing and mischaracterizing the invention ... is
the Examiner able to say the invention could be performed mentally or with
pen and paper in the type of game known in the art as a ‘Tabletop Role
Playing Game.’” Id. at 4. (citations omitted). Specifically, Appellants argue
that
[t]he Examiner ignores that the claims recite a game program in
which a player character and a plurality of non-player characters
are included in a game world displayed on a display device, the
player character acting in accordance with operation information
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which is output from an input device by an input operation of a
player, and the plurality of non-player characters acting in a self­
active manner.
Id.
Applying the first step of the Alice framework—and notwithstanding
that claim 1 is directed to statutory subject matter (i.e., a method4), we agree
with the Examiner that the subject matter of claim 1 is an abstract idea,
which is judicially-excepted from patent eligibility under § 101. The
method of claim 1 recites steps for controlling the movements of game
players. The Specification discloses that “the present invention may be
embodied to allow a player character’s act to change the act of a non-player
character in a game world and thus to provide the player with a fresh feeling
that the player character’s act set a trend in the game world.” Spec. 1 6; see
also Reply Br. 7 (citing Spec. Tflf 6, 24, 155). Thus, as determined by the
Examiner, we agree that the focus of claim 1 is the abstract idea of a set of
4 In CyberSource our reviewing Court stated that “[rjjegardless of what
statutory category (‘process, machine, manufacture, or composition of
matter,’ 35 U.S.C. § 101) a claim’s language is crafted to literally invoke,
we look to the underlying invention for patent-eligibility purposes.” See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1374 (Fed. Cir.
2011). The Court stated that the basic character of a process claim drawn to
an abstract idea is not changed by claiming program instructions executable
on a computer readable medium. Id. Thus, we analyze claim 1 as a method
claim because claim 1 recites the steps of a method, notwithstanding the
recitation of a computer-readable non-transitory storage medium having
stored thereon a game program causing a computer to execute the method
steps in the preamble of claim 1.
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game instructions for controlling the movement of certain characters in
response to a movement of a player character. As discussed infra, claim 1
merely invokes generic processes and machinery, and recites steps for
manipulating data (or information) via an algorithm.5 See also Reply Br. 5
(“The claims at issue here involve control of a player character and a
plurality of non-player characters included in a game world displayed on a
display device.”).
We are not persuaded by Appellants’ argument, which relies on the
computing devices recited in the preamble of claim 1 (i.e., a display device,
an input device) to shift the focus of the claims from an abstract idea to a
general purpose computer. See, e.g., Spec. ®[ 55 (“The present invention is
applicable to any computer system. A game program according to the
present invention may be supplied to a computer system via an external
storage medium such as the memory card 17.”). Further, Appellants have
not presented persuasive evidence that the abstract idea of a set of game
instructions for controlling the movement of certain game players in
response to a movement of a player character cannot be performed mentally
or with pen and paper in the type of game known in the art as a “Tabletop
Role Playing Game,” as determined by the Examiner.
5 Alternatively, claim 1 appears to recite no more than software per se (i.e.,
program instructions executable on a computer), which does not fall within
any statutory category. The abstract idea of software per se does not change
its character by simply being executed on a computer readable medium. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1374 (Fed. Cir.
2011).
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We are not altogether unsympathetic to Appellants’ arguments.
Computerized games of the type discussed in the Specification are an
improvement over tabletop role playing games precisely because
computerized games immerse the player in the game world to a greater
degree than tabletop role playing games. The requirement for players in a
tabletop role playing game to calculate or otherwise determine the responses
of non-player characters relative to the actions of a player character by hand
(and the time delay inherent in making such determinations by hand) tends
to shatter the illusion that the player is part of the game world. Nevertheless,
the willing suspension of disbelief required to immerse oneself in a game
world is itself a mental exercise.
Appellants also argue that “[b]y providing a means for controlling a
non-player character dependent on the actions of the player characters, the
claimed subject matter represents an advancement in the technical field of
artificial intelligence in computer technology,” explaining that “[t]he
advancement is that non-player characters are given an intelligence that
causes them to react to a count of certain actions by a player character.”
Appeal Br. 11. Appellants submit that “the claims prescribe a specific
manner in which the player character (controlled in a specific manner)
affects the actions of the self-activated non-player characters,” such that
“[pjlayer characters, non-player and their interactions as claimed are an
inventive concept beyond any algorithm in the claims.” Reply Br. 5
(distinguishing Planet Bingo LLC v. VKGSLLC, 576 Fed. Appx. 1005 (Fed.
Cir. 2014)).
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We are not persuaded by Appellants’ argument that the method steps
of claim 1 recite an advancement in the technical field of artificial
intelligence in computer technology rather than the abstract idea of a set of
game instructions for controlling the movement of certain game players in
response to a movement of a player character. Specifically, Appellants do
not persuade us that the claimed player interactions are an inventive concept
(or technological advancement) beyond the algorithm in the claims. The
algorithm recited in claim 1, in relevant part, updates an act number counter
(or value) for a non-player character in response to an input (i.e., movement
by a player character), and controls the non-player character’s movement
based on the value. We are not persuaded that the remaining steps of
receiving the input regarding the player character’s movement and
displaying the resulting character positions (which steps may be
characterized as beyond the number algorithm) represent a technological
advancement in the field of artificial intelligence, rather than conventional
steps. Moreover, as discussed supra, we are not persuaded that the abstract
idea embodied in claim 1 is limited to the field of artificial intelligence, but
rather, may be performed by pen and paper.
Appellants further argue that the invention “does not fall into one of
the abstract idea ‘categories’ identified by the Supreme Court, i.e.,
fundamental economic practices, certain methods of organizing human
activities, an idea of itself, and mathematical relationships.” Appeal Br. 11.
Appellants submit that “the invention claimed here is directed towards ‘a
concept inextricably tied to computer technology and distinct from the types
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of concepts found by the courts to be abstract.’” Id. Appellants submit that,
similar to DDR Holdings, LLC v. Hotels.com L.P., 773 F.3d 1245, 1257
(Fed. Cir. 2014), “the claims are . . . ‘necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks.’” Id.', see also Reply Br. 7 (“the claimed features
provide a technical solution to a technical problem”).
We do not find Appellants’ argument persuasive because rather than
being inextricably tied to, or rooted in, computer technology, the claims
employ a generic computer to execute the claimed method steps. Cf DDR
Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)
(holding that a claim may amount to more than any abstract idea recited in
the claims when it addresses a business challenge, such as “retaining website
visitors,” where that challenge is particular to a specific technological
environment, such as the Internet).
Accordingly, we are not apprised of error in the Examiner’s
determination that claim l is directed to an abstract idea pursuant to step 1 of
the Alice Framework.
Regarding step two of the Alice framework, Appellants argue that “it
is clear the claims require substantially more than just the alleged abstract
idea (or its simple application to a general purpose computer).” Appeal Br.
12. Appellants submit that
[t]he claims require an act number counter update step or an act
number count which is provided for each non-player character
and counts a certain type of action by a player character.
Counting only certain actions of player characters and assigning
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an act counter to each non-player character are not generic
computer functions that are well-understood, routine and
conventional activities previously known in the industry.
Id,; see also Reply Br. 6-7 (reciting claim 1 and arguing that the Examiner
“inappropriately reads limitations out of the claims to conclude that the
claims recited an abstract idea without significantly more.”).
Applying the second step of the Alice framework, we consider the
elements of claim 1 both individually and as an ordered combination to
determine whether the additional elements transform the nature of claim 1
into a patent-eligible application. Notably, “simply implementing an
abstract concept on a computer, without meaningful limitations to that
concept, does not transform a patent-ineligible claim into a patent-eligible
one.” Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d
1336, 1345 (Fed.Cir.2013) (citing Bancorp, 687 F.3dat 1280). Further,
“[information as such is an intangible” (Electric Power Group, LLC v.
Alstom S.A., 830 F.3d 1350, 1353 (2016) (internal citations omitted)), and
the Federal Circuit has ruled that claims covering the collection, analysis,
generation, and display of data were directed to abstract ideas. See, e.g.,
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed.
Cir. 2016) (characterizing collecting information, analyzing information by
steps people go through in their minds, or by mathematical algorithms, and
presenting the results of collecting and analyzing information, without more,
as matters within the realm of abstract ideas).
Although Appellants argue that counting only certain actions of player
characters and assigning an act counter to each non-player character are not
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generic computer functions, Appellants do not provide persuasive evidence
that anything other than a general purpose computer is used to execute the
steps of the game program. In other words, we are not apprised of error in
the Examiner’s determination that the limitations of claim 1, individually
and as an ordered combination, employ a general purpose computer that fails
to transform the claims into patent eligible subject matter. The storage
medium, game program, display device, and input device are described in
Appellants’ Specification and claimed only in a wholly generic and
functional manner, much like the computer components in Alice. See e.g.,
Spec. 1 55; Alice, 134 S. Ct. at 2358—60. In other words, these elements
function in a conventional manner to execute program instructions and
operations. See id. at 2359-60 (holding patent-ineligible claims that
“amount to ‘nothing significantly more’ than an instruction to apply the
abstract idea . . . using some unspecified, generic computer” and in which
“each step does no more than require a generic computer to perform generic
computer functions”) (internal quotation marks, citation omitted). The fact
that these generic computer functions are applied to the particular
environment of a game world is not sufficient to circumvent the prohibition
against patenting an abstract idea. See Bilski v. Kappos, 561 U.S. 593, 610-
11 (2010).
In addition, although Appellants argue that counting only certain
actions of player characters and assigning an act counter to each non-player
character are not well-understood, routine and conventional activities
previously known in the industry, we determine that such steps (and, indeed,
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all of the method steps of claim 1, individually and as an ordered
combination) involve collecting, analyzing, and generating data (or
information), via an algorithm, and therefore, as discussed supra, such steps
do not amount to significantly more than the abstract idea itself. See Reply
Br. 7 (arguing that the Examiner failed to consider all of the elements
individually and as an ordered combination).
To the extent Appellants are arguing that the claims necessarily
contain an “inventive concept” based on their alleged novelty and non­
obviousness over the prior art, this argument is unpersuasive. See Appeal
Br. 10 (“The Examiner has found the claimed inventions to be novel and
unobvious.”). Although the second step in the Alice framework is termed a
search for an “inventive concept,” the analysis is not an evaluation of
novelty or non-obviousness, but rather, a search for “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.”’ Alice, 134 S. Ct. at 2355. A novel and nonobvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 132 S. Ct. at 1304.
Finally, Appellants argue that
[t]he claims are directed to moving non-player characters in a
video game. Movement of a non-player character is not a
building block of human ingenuity. The claims do not preempt
every application of moving a non-player character in a video
game or every relationship between a movement of a non-player
character and a player character. ... For example, all actions of
a player controlled character can be counted and used to affect
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the artificial intelligence of a non-player character. Because
claims would not ‘tie up’ an abstract idea, the streamlined
eligibility analysis should result in reversal of the rejection under
35 U.S.C. § 101.
Appeal Br. 12—13; see also Reply Br. 5—6.
This argument is unpersuasive. Merely because claims do not
preempt all forms of the abstraction does not make them any less abstract.
See 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.”). Moreover, characterizing preemption as a driving
concern for patent eligibility is not the same as characterizing preemption as
the dispositive test for patent eligibility. Instead, “[t]he Supreme Court has
made clear that the principle of preemption is the basis for the judicial
exceptions to patentability” and “[f]or this reason, questions on preemption
are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S.
Ct. at 2354). Although “preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.” Id. The Federal Circuit concluded that “[wjhere a patent’s
claims are deemed only to disclose patent ineligible subject matter under the
Mayo framework, . . . preemption concerns are fully addressed and made
moot.” Id.', see also id. (holding that “[i]n this case, Sequenom’s attempt to
limit the breadth of the claims by showing alternative uses of cffDNA
outside of the scope of the claims does not change the conclusion that the
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claims are directed to patent ineligible subject matter”). Given this direction
from our reviewing court, we decline to apply a preemption standard in our
analysis, and instead apply the steps set forth by the Supreme Court in Alice
and Mayo.
Accordingly, we are not apprised of error in the Examiner’s
determination that when the elements of claim 1 are considered both
individually and as an ordered combination, the elements fail to transform
the nature of the claim into a patent-eligible application.
Therefore, we sustain the Examiner’s rejection of claim 1, and claims
2-48 fall therewith.
DECISION
The Examiner’s rejection of claims 1—48 under 35 U.S.C. § 101 is
affirmed.
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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