Nicholas J. Witchey

Patent Trials and Appeals Board

Sep 13, 2019

14179802 - (D) (P.T.A.B. Sep. 13, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/179,802 02/13/2014 Nicholas J. Witchey NICKW-001GC 6629
7663 7590 09/13/2019
STETINA BRUNDA GARRED & BRUCKER
75 ENTERPRISE, SUITE 250
ALISO VIEJO, CA 92656
EXAMINER
HSU, RYAN
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
09/13/2019 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 NICHOLAS J. WITCHEY1
____________

Appeal 2018-003839
Application 14/179,802
Technology Center 3700
_______________

Before JOHN C. KERINS, EDWARD A. BROWN, and
ARTHUR M. PESLAK, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to a computer-based gaming system.
Claim 1, reproduced below, is illustrative:

1 Vanav Holdings is identified as the real party in interest. Appeal Br. 4.
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1. A computer-based gaming system comprising:

an electronic physical real-world game component having:

a non-transitory computer readable memory including an
asset storage area that is configured to store at least one
representation of an in-game re-locatable asset as a re-
locatable asset data structure associated with a computer
game, wherein production of the physical real-world game
component is influenced by a corresponding in-game
virtual representation of the physical real-world game
component described by data members of the relocatable
asset data structure and wherein the asset storage area
initially lacks the in-game re-locatable asset data structure;
and

a wireless connector coupled with the asset storage area;
and

a computer game server configured to:

host the computer game, said computer game including a
virtual game world;

establish a connection with the electronic physical real-
world game component via the wireless connector through
an intermediary wireless asset reader;

obtain the in-game re-locatable asset data structure
associated with the in-game virtual representation of the
physical real-world game component, the in-game re-
locatable asset data structure’s data members having
parameters associated with the virtual representation of the
physical real-world game component and including a
variable value able to change outside the virtual game
world;

store the in-game re-locatable asset data structure in the
asset storage area of the electronic physical real-world
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game component through the intermediary wireless asset
reader and via the wireless connector; and

host the corresponding virtual representation of the
physical real-world game component in the game by
cooperating with the in-game re-locatable asset data
structure’s data members stored in the physical game
component, the virtual representation having an in-game
value derived from the parameters from the in-game re-
locatable asset data structure updated via the asset reader.

THE REJECTION
The Examiner rejects claims 1–19 under 35 U.S.C. § 101, as being
drawn to patent-ineligible subject matter.

ANALYSIS
Appellant presents arguments for the patent eligibility of claims 1−19
as a group, and states that, for the purposes of this appeal, claims 1–19 stand
or fall together. Appeal Br. 12. We select claim 1 as the representative
claim, and claims 2−19 stand or fall with claim 1.
An invention is patent-eligible 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
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014) (citation omitted).
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. See Alice, 573 U.S. at 217−18 (citing Mayo Collaborative Servs.
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v. Prometheus Labs., Inc., 566 U.S. 66, 75−77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed to.”
Id. 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 mitigate settlement
risk.”); see also Bilski v. Kappos, 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 (Gottschalk v. Benson, 409 U.S. 63, 67 (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.
(15 How.) 252, 267−68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If the claim is “directed to” an abstract idea, we turn 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 (citation 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) (alteration in original).
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“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
In January of 2019, the PTO published revised guidance on the
application of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter “Guidance”). Under
Step 2A of that 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, in Step
2B, to whether the claim:
(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 -- Statutory Category
Claim 1 recites a computer-based gaming system, and, therefore, is a
machine or manufacture. See Appeal Br. 22 (Claims App.).

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Step 2A, Prong 1 -- Recitation of Judicial Exception
In determining that claim 1 is directed to a judicial exception to patent
eligibility, the Examiner takes the position that the claim recites “program
elements for managing a game,” which elements are “similar to the kind of
‘organizing human activity’ and ‘an idea in itself” at issue in Alice Corp.”
Final Act. 7. The Examiner characterizes claim 1 as involving an “abstract
idea of managing a game by organizing, storing, and transmitting the new
and stored information and using rules to identify options,” similar to the
“collecting of information, analyzing it, and displaying certain results of the
collection and analysis,” found to be ineligible in Electric Power Group,
LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). Id. The Examiner
additionally summarizes the claim limitations as requiring a game server to
be configured to host a computer game including a virtual game world;
establish a wireless connection with an electronic physical real-world game
component (computer readable memory); obtain an in-game re-locatable
asset data structure; store the in-game relocatable asset structure; and host
the corresponding virtual representation of the game; all of which amount to
an abstract idea in the form of organizing, storing, and transmitting
information. Ans. 3–4.
Appellant criticizes both of the above characterizations advanced by
the Examiner, as improper oversimplifications that omit various relevant
claim features. Reply Br. 5. Appellant maintains that the Examiner fails to
consider limitations involving “the in-game re-locatable asset data
structure’s data members having parameters associated with the virtual
representation of the physical real-world game component and including a
variable value able to change outside the virtual game world,” and “the
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virtual representation having an in-game value derived from the parameters
from the in-game re-locatable asset data structure updated via the asset
reader.” Id. Appellant maintains that both of these limitations relate to the
interrelationship between the electronic physical real-world game
component and a computer-based virtual game world.
The two limitations Appellant argues to have been disregarded are
merely virtual objects or things that the recited computer game server is to
be configured to obtain and operate with, when they exist and are present,
but are not objects or things that are positively recited in claim 1. Claim 1
specifically states that the asset storage area of the computer readable
memory of the electronic physical real-world game component “initially
lacks the in-game re-locatable asset data structure,” and the claim nowhere
positively introduces the in-game re-locatable asset data structure as an
element of the claim. Appeal Br. 22–23 (Claims Appendix) (emphasis
added). As such, the Examiner’s alleged failure to consider those
limitations, even if accurate, does not rise to the level of error as an
oversimplification as to what claim 1 includes.
Appellant further maintains that, even beyond the limitations said to
be ignored, the Examiner’s summary of the claimed invention goes beyond
any recognized abstract idea, including ‘“organizing, storing, and
transmitting information,’” or ‘“collecting information, analyzing the stored
information, and presenting a certain set of the collected and stored
information.’” Reply Br. 5. Appellant highlights the limitation requiring
that the computer game server be configured to “host the corresponding
virtual representation of the game,” averring that Appellant is aware of no
precedential decision that has considered such a limitation to be an abstract
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idea or a part thereof. Id. at 5–6. Appellant additionally argues that “the
claimed invention addresses a challenge particular to computer-based virtual
game worlds that does not arise in the real world, namely challenges in the
convenience and security of virtual asset transfers and enhancing the value
of such virtual assets.” Id. at 6.
The system of claim 1 includes an “electronic physical real-world
game component” having a computer readable memory and a wireless
connector, and a computer game server. The computer readable memory is
“configured to” store data having particular characteristics relative to an
associated computer game, but is essentially a standard memory or storage
device such as an RFID tag, or magnetic strip, on a card. See Spec. 6:9–15.
As noted previously, claim 1 does not require that the data be resident in or
on the memory or storage as part of the claimed system
Claim 1 also recites that the computer game server is “configured to”
perform steps or operations of: (1) “host[ing] the computer game including a
virtual game world;” (2) “establish[ing] a connection with the electronic
physical real-world game component via the wireless connector through an
intermediary wireless asset reader;” (3) “obtain the in-game re-locatable
asset data structure associated with the in-game virtual representation of the
physical real-world game component;” (4) “store the in-game re-locatable
asset data structure;” and (5) “host the corresponding virtual representation
of the physical real-world game component in the game.” Appeal Br. 22–23
(Claims Appendix)
When a computer game server is actually called upon to perform these
steps or operations, step (1) of hosting a computer game including a virtual
game world involves having software running on the server to execute steps
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(2)–(5), along with whatever non-specified actions are required in
accordance with whatever non-specified game rules are imposed in the
software. The non-specified actions, because they involve playing a game,
can be seen as collecting and analyzing, or managing, data to effect actions
in accordance with the game rules, which can further be characterized as a
series of mental steps or mental processes.2 As such, they fall into the
category of abstract ideas.
Steps (2)-(5) are steps involved in collecting data to be used in the
playing of the game, to wit, establishing a connection such that a data
structure may be obtained onto and stored on the physical real-world game
component, and hosting a corresponding virtual representation of the
physical real-world game component in the game. These, too, involve
collecting or transferring data in accordance with game rules, which, absent
the use of a computer/server, could be performed as a series of mental steps
or mental processes, and present an abstract idea.
Accordingly, the outcome of our analysis under Step 2A, prong 1,
requires us to proceed to Step 2A, prong 2. See Guidance, 84 Fed. Reg. at
54.
Step 2A, Prong 2 -- Integrated Into a Practical Application
In Step 2A, Prong 2, we determine whether the recited judicial
exception is integrated into a practical application of that exception by: (a)
identifying whether there are any additional elements recited in the claim
beyond the judicial exception(s); and (b) evaluating those additional

2 Rules of a game themselves have been held to be abstract ideas. See, In re
Guldenaar, 911 F.3d 1157, 1159 (Fed. Cir. 2018); In re Smith, 815 F.3d 816
(Fed. Cir. 2016).
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elements individually and in combination to determine whether they
integrate the exception into a practical application. See generally, Guidance.
This evaluation requires an additional element or a combination of
additional elements in the claim to apply, rely on, or use 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 exception. See id.
Appellant argues that “the claimed invention addresses a challenge
particular to computer-based virtual game worlds that does not arise in the
real world, namely challenges in the convenience and security of virtual
asset transfers and enhancing the value of such virtual assets.” Reply Br. 6.
Appellant additionally argues that the recited computer components do not
perform generic functions, but rather perform highly-specific, non-generic
functions. Id. at 11. Appellant maintains that the claimed memory “does
not merely generically store data but stores ‘at least one representation of an
in-game re-locatable asset as a re-locatable asset data structure associated
with a computer game.”’ Id. In addition, according to Appellant, the
claimed server does not generically receive or transmit data, it instead
“host[s] the corresponding virtual representation of the physical real-world
game component in the game by cooperating with the in-game re-locatable
asset data structure’s data members stored in the physical game component.”
Id.
We disagree with Appellant’s contentions. Appellant does not explain
how the stored “asset data structure” is anything other than “data” of a
particular type, nor how it is stored in the claimed memory in some non-
generic manner. Similarly, that the claimed server is configured to “host”
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the particular type of data recited does not change the fact that the recited
hosting appears to be no different than storing data reflective of data that is
also stored on the claimed memory. To the extent that Appellant envisions
that there is something involving the “cooperating with” language that result
in an integration into a practical application, claim 1 is devoid of any
language or limitation that evidences that the “cooperation” is a specific type
of action that excludes generically storing, receiving, or transmitting data.
The computer-readable memory and wireless connector making up
the electronic physical real-world game component, and the computer game
server provided in claim 1 do not amount to a particular machine or
manufacture that is integral to the claim. Rather, such components are
broadly recited generic items usable in games other than the one envisioned
by Appellant.
Nor is there any transformation recited in claim 1 sufficient to impart
patent eligibility. Although claim 1 requires the computer game server to be
configured to handle data having a particular meaning within the game, the
claim requires only that the data be transmitted between the server and the
memory of the electronic physical real-world game component.
Appellant further argues that claim 1 offers a solution to an
underlying problem that is “necessarily rooted in computer technology.”
Reply Br. 10. According to Appellant, certain limitations in claim 1 “refer
inseparably to both the real and virtual worlds, thus reciting
interrelationships between a physical real-world game component and an in-
game virtual representation of that game component.” Id. (emphasis
omitted). Appellant posits that there is logically no purely real world
equivalent to the claimed solution. Id.
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As claim 1 is directed to a system having an object such as a trading
card (Spec. 6:5) including a computer readable memory and a wireless
connector, and a computer game server with the capability of obtaining,
storing and hosting an asset data structure that is not positively recited in the
claim (“the asset storage area initially lacks the in-game re-locatable asset
data structure”), we do not view claim 1 as providing any particular solution
to any particular problem.
Claim 1 thus does not integrate the recited judicial exception into a
practical application. Accordingly, we proceed to step 2B.

Step 2B -- Well-Understood, Routine, Conventional Activity
In Step 2B, we determine whether the claim adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field. See Guidance. Appellant’s Specification
evidences that the computer readable memory, the wireless connector, and
the computer game server are conventional components. . The asset storage
area of the computer readable memory may be an RFID tag or flash
memory. Spec. 10:10–13. The wireless connector is a standard component.
Id. at 7:4–5. The computer game server is a standard component, as well.
See, e.g., id. at 7 (repeated reference simply to a “server 120”).
Appellant criticizes the Examiner’s findings in this respect by
asserting that the claimed memory “stor[es] ‘at least one representation of an
in-game relocatable asset as a re-locatable asset data structure associated
with a computer game.’” Reply Br. 13. Appellant further notes that the
server is recited as being “configured to ‘host the corresponding virtual
representation of the physical real-world game component in the game by
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cooperating with the in-game re-locatable asset data structure’s data
members stored in the physical game component.’” Id. Appellant thus
maintains that the claimed memory and server are not generic as claimed,
and that the combination of the memory and server is unconventional.
The Specification does not evidence that a particular memory or
server architecture or structure is altered in any manner such that the
functions recited in the claim are capable of being performed. Rather, the
Specification is silent with respect to anything other than the provision of a
computer readable memory of a known type, and, for the server, discloses
that the functionality required is provided by software, and not through the
use of a non-conventional server. Spec. 6:9–15; 7:17–22.
Thus, claim 1 is not seen as adding any specific limitation beyond the
judicial exception that is not “well-understood, routine, conventional” in the
field.
We have considered all of Appellant’s arguments in support of the
patent eligibility of claim 1, but find them unpersuasive. Accordingly, we
sustain the rejection of claims 1−19 under 35 U.S.C. § 101.

DECISION
The Examiner’s rejection of claims 1–19 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)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED