Gree, Inc.

Patent Trials and Appeals Board

Jun 16, 2021

2020006623 (P.T.A.B. Jun. 16, 2021)

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.
15/195,170 06/28/2016 Jason CITRON 468895US 9377
22850 7590 06/16/2021
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
STROUD, CHRISTOPHER
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
06/16/2021 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JASON CITRON and JAKOB WILKENSON

Appeal 2020-006623
Application 15/195,170
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision rejecting claims 1–20. An oral hearing in this matter
was held on April 15, 2021. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Gree,
Inc. Appeal Br. 1.
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ILLUSTRATIVE CLAIM
1. A system comprising:
a communication interface configured to receive, from a
first computing device via a network, a notification that a first
application created by a first developer is being executed by the
first computing device;
a memory configured to store information indicating
whether a first message associated with the first developer has
been displayed by a second computing device executing a
second application associated with a second developer; and
circuitry configured to
access the memory to determine whether the first
message associated with the first developer has been
displayed by the second computing device executing the
second application associated with the second developer;
control the communication interface to transmit a
second message associated with the second developer to
be displayed at the first computing device executing the
first application when it is determined that the first
message associated with the first developer has been
displayed by the second computing device executing the
second application associated with the second developer;
control the communication interface to not
transmit the second message when it is determined that
the first message has not been displayed by the second
computing device;
determine whether a predetermined relationship
exists between a first user of the first application and a
second user of the second application;
control the communication interface to prioritize
display of the second message when the predetermined
relationship is determined to exist;
not control the communication interface to
prioritize display of the second message when the
predetermined relationship is determined not to exist; and
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store, in the memory, an indication that the second
message associated with the second developer has been
transmitted to the first computing device executing the
first application.
REJECTIONS
I. Claims 16 and 17 are rejected under 35 U.S.C. § 112(b) as
indefinite.
II. Claims 1–20 are rejected under 35 U.S.C. § 101 as ineligible
subject matter.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Indefiniteness
The Appellant does not address the rejection of claims 16 and 17
under 35 U.S.C. § 112(b). Therefore, we summarily sustain this rejection.
Subject-Matter Eligibility
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. Yet, subject matter belonging to any of the statutory
categories may, nevertheless, be ineligible for patenting. The Supreme
Court has interpreted 35 U.S.C. § 101 to exclude laws of nature, natural
phenomena, and abstract ideas, because they are regarded as the basic tools
of scientific and technological work, such that including them within the
domain of patent protection would risk inhibiting future innovation premised
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upon them. Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013).
Of course, “[a]t some level, ‘all inventions . . . embody, use, reflect,
rest upon, or apply’” these basic tools of scientific and technological work.
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). Accordingly,
evaluating ineligible subject matter, under these judicial exclusions, involves
a two-step framework for “distinguish[ing] between patents that claim the
buildin[g] block[s] of human ingenuity and those that integrate the building
blocks into something more, thereby transform[ing] them into a patent-
eligible invention.” Id. (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 88–89 (2012) (internal quotation marks omitted)).
The first step determines whether the claim is directed to judicially excluded
subject matter (such as a so-called “abstract idea”); the second step
determines whether there are any “additional elements” recited in the claim
that (either individually or as an “ordered combination”) amount to
“significantly more” than the identified judicially excepted subject matter
itself. Id. at 217–18.
In 2019, the USPTO published revised guidance on the application of
§ 101, in accordance with judicial precedent. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019)
(“2019 Revised Guidance”).2 Under the 2019 Revised Guidance, a claim is

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf). The Manual of Patent Examining
Procedure (“MPEP”) incorporates the revised guidance and subsequent
updates at § 2106 (9th ed. Rev. 10.2019, rev. June 2020).
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“directed to” an abstract idea, only if the claim recites any of
(1) mathematical concepts, (2) certain methods of organizing human
activity, and (3) mental processes — without integrating such abstract idea
into a “practical application,” i.e., without “apply[ing], rely[ing] on, or
us[ing] the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception.” Id. at 52–55 (referring to
MPEP 9th ed. Rev. 08.2017, rev. Jan. 2018). The considerations articulated
in MPEP § 2106.05(a)–(c) and (e)–(h) bear upon whether a claim element
(or combination of elements) integrates an abstract idea into a practical
application. Id. at 55. A claim that is “directed to” an abstract idea
constitutes ineligible subject matter, unless the claim recites an additional
element (or combination of elements) amounting to significantly more than
the abstract idea. Id. at 56.
Although created “[i]n accordance with judicial precedent,” the 2019
Revised Guidance enumerates the analytical steps differently than the
Supreme Court’s Alice opinion. 2019 Revised Guidance, 84 Fed. Reg. at 52.
Step 1 of the 2019 Revised Guidance addresses whether the claimed subject
matter falls within any of the statutory categories of 35 U.S.C. § 101. Id.
at 53–54. Step 2A, Prong One, concerns whether the claim at issue recites
ineligible subject matter; if an abstract idea is recited, Step 2A, Prong Two,
addresses whether the recited abstract idea is integrated into a practical
application. Id. at 54–55. Unless such integration exists, the analysis
proceeds to Step 2B, in order to determine whether any additional element
(or combination of elements) amounts to significantly more than the
identified abstract idea. Id. at 56.
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The Appellant argues claims 1–20 as a group. See Appeal Br. 6–15.
Claim 1 — which the Appellant regards as exemplary (see id. at 8, 10, 12)
— is selected for analysis herein, pursuant to 37 C.F.R. § 41.37(c)(1)(iv).
As to Step 1 of the 2019 Revised Guidance, the Examiner does not
determine claim 1 to be outside the statutory categories of § 101.
Under Step 2A, Prong One, the Examiner characterizes certain
limitations of “representative” claim 1, as follows:
receive a notification that a first instance created by a first
developer is being run by a first user, store information
indicating whether a first message associated with the first
developer has been displayed to a second user executing a
second instance associated with a second developer, determine
whether the first message associated with the first developer has
been displayed to the second user executing the second instance
associated with the second developer, transmit a second
message associated with the second developer to be displayed
at the first instance when it is determined that the first message
associated with the first developer has been displayed on the
second instance associated with the second developer, not
transmitting the second message when it is determined that the
first message has not been displayed to the second instance,
determine whether a predetermined relationship exists between
a first user of the first instance and a second user of the second
instance, prioritize display of the second message when the
predetermined relationship is determined to exist, not prioritize
the display of the second message when the predetermined
relationship is determined not to exist, store an indication that
the second message associated with the second developer has
been transmitted to the first instance.
Non-Final Act. 3–4. The Examiner further clarifies the selection of claim
limitations (bearing upon the Step 2A, Prong One, analysis), by identifying
“the additional elements of a communication interface, memory, circuitry,
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first and second computing devices running applications” (id. at 4), which
are not part of the judicial exception.
According to the Examiner, the identified limitations of the judicial
exception “embody certain methods of organizing human activities related to
fundamental economic principles or practices, commercial or legal
interactions, and managing personal relationships or interactions between
people.” Id. More particularly, the Examiner explains:
The claims provide a manner of cross promotion in which a
user who has received a message in one instance now causes a
user of a second instance to receive a message. Further, the
messages are prioritized based on a whether a relationship
exists between the users. Accordingly the claims recite abstract
ideas.
Id. The Examiner also likens the identified judicial exception to “the
business practice of targeted advertising” (Answer 4) — subject matter that
courts have determined to constitute ineligible methods of organizing human
activity. See Customedia Techs., LLC v. Dish Network Corp., 951 F.3d
1359, 1362 (Fed. Cir. 2020) (using a computer to deliver targeted
advertising to a user constitutes an abstract idea); Affinity Labs of Tex., LLC
v. Amazon.com, Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016) (“[T]ailoring of
content based on information about the user — such as where the user lives
or what time of day the user views the content — is an abstract idea that is as
old as providing different newspaper inserts for different neighborhoods.”)
The Appellant’s discussion of the issues relating to Step 2A, Prong
One, primarily addresses whether claim 1 recites a “mental process” judicial
exception. Appeal Br. 9–10. No analysis is provided for the Appellant’s
assertion that “[t]hese claimed features are clearly not mathematical
concepts” — which the Examiner does not mention in the Non-Final Office
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Action — “or certain methods of organizing human activity” — which the
Examiner relies upon — “as these two categories specified in the USPTO
guidelines can be quickly eliminated.” Id. at 9. Notwithstanding the spare
allegation that the category of “certain methods of organizing human activity
. . . can be quickly eliminated” (id.), the Appellant does not explain a basis
for any error in the Examiner’s position.
Accordingly, the Appellant does not persuade us of error in the
Examiner’s analysis under Step 2A, Prong One.
Turning to Step 2A, Prong Two, unless a claim that recites a judicial
exception (such as an abstract idea) “integrates the recited judicial exception
into a practical application of that exception,” the claim is “directed to” the
judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 53. The
analysis of such an “integration into a practical application” involves
“[i]dentifying . . . any additional elements recited in the claim beyond the
judicial exception(s)” and “evaluating those additional elements individually
and in combination to determine whether they integrate the exception into a
practical application.” Id. at 54–55. Among the considerations “indicative
that an additional element (or combination of elements) may have integrated
the exception into a practical application” is whether “[a]n additional
element reflects an improvement in the functioning of a computer, or an
improvement to other technology or technical field.” Id. at 55 (footnote
omitted). “[W]hether an additional element or combination of elements
integrate[s] the exception into a practical application should be evaluated on
the claim as a whole.” Id. at 55 n.24.
According to the Examiner, the “additional elements of a
communication interface, memory, circuitry, first and second computing
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devices running applications” are simply “tool[s] to implement the abstract
idea” and “merely provide a general link to a particular technological
environment or field of use,” such that “the additional elements do not
integrate the abstract idea into a practical application.” Non-Final Act. 4.
The Appellant (Appeal Br. 11–13) argues that claim 1 integrates the
judicial exception into a practical application, in a manner similar to the
“method of rearranging icons on a graphical user interface (GUI)” of
USPTO Example 37 (claim 1), which involves “automatically moving the
most used icons to a position on the GUI closest to the start icon of the
computer system based on the determined amount of use” (USPTO Subject
Matter Eligibility Examples: Abstract Ideas, Jan. 7, 2019, at 2) (“USPTO
Examples”). According to the Appellant:
Claim 1 of Example 37 recites additional features that
integrated a mental process into a practical application such as
automatically displaying icons to a user based on usage. In this
regard, based on a determined amount of use, the display of
some icons was prioritized over the display of other icons.
These prioritization features are similarly recited in Appellant’s
claims. For example, Appellant’s claim 1 recites circuitry
configured to “control the communication interface to prioritize
display of the second message when the predetermined
relationship is determined to exist,” and “not control the
communication interface to prioritize display of the second
message when the predetermined relationship is determined not
to exist.” . . . Just like the prioritization of the display of [sic]
icon in Claim 1 of Example 37 were [sic] determined to provide
a specific improvement over prior systems, the combined
features of Appellant’s claim 1 that result in the prioritized
display of a message provides [sic] a specific improvement for
GUI’s used in online gaming technologies.
Appeal Br. 12. Similarly, the Appellant argues that “[i]mproving the user’s
experience with the GUI has been held to be a patent-eligible technological
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improvement in the operation of the computing device itself” — here, “a
significantly advantageous solution to the problems in conventional gaming
systems.” Appeal Br. 8 (citing Core Wireless Licensing S.A.R.L. v. LG
Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018)).
However, the Appellant’s arguments rely upon the asserted benefits of
the identified judicially excepted concept itself. Example 37 (claim 1)
involves “additional elements” that “recite a specific manner of
automatically displaying icons to the user based on usage which provides a
specific improvement over prior systems, resulting in an improved user
interface for electronic devices.” USPTO Examples 2–3. By contrast, and
as the Examiner explains, the preferential delivery of messages (in the
Appellant’s claim 1) is part of what the Examiner identifies as a judicially
excepted concept. See Non-Final Act 3–4, Answer 5–6. A similar problem
exists, in regard to the Appellant’s reliance on Core Wireless. The claims in
Core Wireless, for example, recited additional elements of a particular
manner of presenting information, wherein an “application summary” could
be reached directly from the menu, and an application summary window
allows selected data to be displayed while the applications “are in an un-
launched state.” Core Wireless, 880 F.3d at 1362–63. The Appellant
identifies no such analogous additional elements in claim 1.
Therefore, the Appellant does not persuade us of error in the
Examiner’s analysis of Step 2A, Prong Two.
Proceeding to Step 2B of the 2019 Revised Guidance, 84 Fed. Reg.
at 56, a claim that recites a judicial exception (such as an abstract idea)
might, nevertheless, be patent-eligible, if the claim contains “additional
elements amount[ing] to significantly more than the exception itself” — i.e.,
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“a specific limitation or combination of limitations that [is] not well-
understood, routine, conventional activity in the field, which is indicative
that an inventive concept may be present.” See Alice, 573 U.S. at 223
(“[T]he mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.”)
As to additional elements that might amount to significantly more
than the judicial exception, the Appellant relies on the same arguments
addressed for Step 2A, Prong Two:
Appellant respectfully submits that the reasons provided
above for how Appellant’s invention improves a technological
process also demonstrates the “inventive concept” underlying
the claimed invention. As discussed above, prior art online
gaming technologies did not have the ability to perform cross
promotions due to the lack of technological innovation that
allowed for the prioritization of certain messages. The
combined features of Appellant’s claims result in the
significantly advantageous feature of improving a GUI’s ability
to prioritize certain messages to enable cross promotions.
Thus, the claims provide a technological solution to a
problem that was created by the need for online gaming
technologies to perform cross promotions by prioritizing
messages.
Appeal Br. 13–14 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257 (Fed. Cir. 2014)).
But, the Appellant’s claims do not address a problem arising as an
artifact of online gaming technologies, in the manner of the proposed
analogy to DDR Holdings. Rather than solving any sort of problem arising
from the practice of online gaming, claim 1 describes the cross-promotion
concept implemented in the technological context of online gaming. The
Appellant’s arguments do not identify any additional elements that operate
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in a non-conventional manner, so as to achieve “a result that overrides the
routine and conventional sequence of events ordinarily triggered” by the
operation of the recited online gaming technology. DDR Holdings, 773 F.3d
at 1258. Instead, the Appellant ascribes the features — allegedly
constituting significantly more than the judicial exception — to the judicial
exception itself. See Appeal Br. 14 (“The combined features of Appellant’s
claims result in the significantly advantageous feature of improving a GUI’s
ability to prioritize certain messages to enable cross promotions.”) Yet, as
the Federal Circuit explains, “[i]t has been clear since Alice that a claimed
invention’s use of the ineligible concept to which it is directed cannot supply
the inventive concept that renders the invention ‘significantly more’ than
that ineligible concept.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018).
Therefore, the Appellant does not persuade us of error in the
Examiner’s analysis of Step 2B.
In view of the foregoing, the Appellant does not persuade us that the
Examiner erred in rejecting claim 1, such that — per 37 C.F.R.
§ 41.37(c)(1)(iv) — we sustain the rejection of claims 1–20 under 35 U.S.C.
§ 101.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
16, 17 112(b) Indefiniteness 16, 17
1–20 101 Subject-Matter
Eligibility
1–20
Overall
Outcome
1–20
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED