BANDAI NAMCO ENTERTAINMENT INC.

Patent Trials and Appeals Board

Feb 16, 2022

2021003459 (P.T.A.B. Feb. 16, 2022)

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. 15/936,792 03/27/2018 Kazuhito ICHIJO 180805 6192 25944 7590 02/16/2022 OLIFF PLC P.O. BOX 320850 ALEXANDRIA, VA 22320-4850 EXAMINER MOSSER, ROBERT E ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 02/16/2022 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): OfficeAction25944@oliff.com jarmstrong@oliff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KAZUHITO ICHIJO and SATOSHI MINAMIDATE Appeal 2021-003459 Application 15/936,792 Technology Center 3700 Before CHARLES N. GREENHUT, WILLIAM A. CAPP, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1 and 4-15. 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(a). Appellant identifies the real party in interest as BANDAI NAMCO ENTERTAINMENT INC. Appeal Br. 1. Appeal 2021-003459 Application 15/936,792 2 CLAIMED SUBJECT MATTER The claims relate to a game system and method. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A game system that executes a first game using a relationship between a plurality of players including a first player who plays the first game and a plurality of second players who respectively play each of second games executed independently of the first game, the game system comprising: a memory; and a processor configured to execute instructions stored in the memory to: store in the memory: (i) relationship information indicating the relationship of the first player to the plurality of second players including: a following relationship in which predetermined information or statuses relating to the plurality of second players is viewed as a function of the first game, and a follower relationship in which the plurality of second players are permitted to view predetermined information or statuses relating to the first player as a function of the second game, (ii) a plurality of first player character information, each of the plurality of first player character information relating to a player character that is selectable by the first player, each of the plurality of player character information having a first predetermined game parameter value, and (iii) second player character information relating to a player character for one of the second games that is managed by one of the plurality of second players, the second player character information having a second predetermined game parameter value; select, on the basis of an instruction from the first player, a player character to be used in the first game as an execution character from among the plurality of first player characters that are stored in the memory; Appeal 2021-003459 Application 15/936,792 3 automatically set the first predetermined game parameter value of which the player character is selected as the execution character and that is stored in the memory to an execution parameter value of the execution character for executing the first game; in response to a specific player character being selected as the execution character of the first game, the specific player character being managed in one of the second games by one of the plurality of second player: automatically set the execution parameter value of the specific player character based on the second predetermined game parameter value that is stored in the memory and aggregated value that is calculated by aggregating given numerical values of the relationship information indicating the following relationship or the follower relationship between the first player and the plurality of second players, stored for the execution character in the memory;[] execute the first game on the basis of the selected execution characters including the specific player character and the set execution parameter values thereof, and control the selected execution characters in a game space according to the set execution parameter based on operation of the first player during the first game. REJECTION Claims 1 and 4-15 are rejected under 35 U.S.C. § 101 as being patent- ineligible. OPINION The Examiner determines that the claims are patent-ineligible under 35 U.S.C. § 101. Non-Final Act. 2-8. Appellant argues claims 1 and 4-15 as a group. Appeal Br. 8-18. We select claim 1 as representative. Claims 4-15 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2021-003459 Application 15/936,792 4 Section 101 of the Patent Act provides that “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” is patent eligible. 35 U.S.C. § 101. Claim 1 falls within the literal scope of this provision because it recites a system. The Supreme Court, however, has long recognized an implicit exception to this section: “Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank lnt’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). To determine whether a claim falls within one of these excluded categories, the Court has set out a two-part framework. The framework requires us first to consider whether the claim is “directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If so, we then examine “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 Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). That is, we examine the claims for an “inventive concept,” “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, 573 U.S. at 217-18 (alteration in original) (quoting Mayo, 566 U.S. at 72-73). Under the 2019 Eligibility Guidance, to decide whether a claim is “directed to” an abstract idea, we evaluate whether the claim (1) recites an abstract idea grouping listed in the guidance and (2) fails to integrate the recited abstract idea into a practical application. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 51 (Jan. 7, 2019) Appeal 2021-003459 Application 15/936,792 5 (“2019 Eligibility Guidance”).2,3 The groupings of abstract ideas listed in the guidance include, for example: “Mathematical concepts,” “Certain methods of organizing human activity,” and “Mental processes.” 2019 Eligibility Guidance, 84 Fed. Reg. at 52. If the claim is “directed to” an abstract idea, as noted above, we then determine whether the claim recites an inventive concept. The guidance explains that, when making this determination, we should consider whether the additional claim elements add “a specific limitation or combination of limitations that are not [a] well- understood, routine, conventional activity in the field” or “simply append[] well-understood, routine, conventional activities previously known to the industry.” 2019 Eligibility Guidance, 84 Fed. Reg. at 56. Step 2(A), Prong 1 The Examiner determines that essentially every element of claim 1, other than the memory and processor, recites abstract ideas in the certain methods of organizing human activity category. Non-Final Act. 3-5. Appellant responds that “the claimed features do not organize any human activity whatsoever, and do not fall into any of the categories identified by the Patent Office as constituting the organization of human activity.” Appeal Br. 8-9 (emphasis omitted). To support its position, Appellant asserts that “[t]he [recited] features have the technical effect of forcing 2 An Appendix to the 2019 Eligibility Guidance (“Appendix I”) includes examples 37-42 illustrating eligibility analysis. 3 An update to the 2019 Revised Patent Subject Matter Eligibility Guidance issued in October 2019 (“October 2019 Update,” available at https:// www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf). An Appendix to the October 2019 Update (“Appendix II”) includes examples 43-46 illustrating eligibility analysis. Appeal 2021-003459 Application 15/936,792 6 players to develop relationships with each other in order to acquire advantageous effects during the game.”4 Id. at 11 (emphasis added). We agree with the Examiner’s determination that virtually everything recited in claim 1 relates to organizing human activity. As Appellant, itself, asserts, the claims relate to forcing players to develop relationships with each other, which the Examiner correctly characterizes as a “Certain Method[] of Organizing Human Activity including managing personal behavior or relationships.” Ans. 4. Accordingly, we are not apprised of error in the Examiner’s determination that claim 1 recites an abstract idea. Step 2(A), Prong 2 At step 2A, prong 2, we are instructed to “evaluate integration into a practical application by: (a) Identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application.” 2019 Eligibility Guidance, 84 Fed. Reg. at 55. The computer features are additional elements in claim 1. See Non-Final Act. 5. “[A] judicial exception has not been integrated into a practical application” when, as in claim 1 of the present application, “[a]n additional element merely recites the words ‘apply it’ (or an equivalent) with the judicial exception, or merely 4 Appellant additionally presents allegations related to McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), which do not appear particularly relevant to the Examiner’s analysis under Step 2(a), Prong 1. See Appeal Br. 9-12. Appeal 2021-003459 Application 15/936,792 7 includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea.” Id. Appellant alleges that various recited “features have the technical effect of forcing players to develop relationships with each other in order to acquire advantageous effects during the game, which constitutes an improvement to game system technology.” Appeal Br. 14 (emphasis added). We disagree. There is no technological improvement as alleged by Appellant. Rather, the claims simply apply the abstract idea using a generic computer. Appellant’s contentions essentially rely on the abstract idea, itself, being the practical application. Although Appellant alleges an “improvement to game system technology,” there is no reasoned explanation as to what that purported improvement to technology involves. Rather, Appellant repeatedly alleges that “players are being forced to develop relationships with each other via the execution parameter value, this enlivens the game for other players and especially expands the number of players interacting with each other - i.e., as opposed to have a small group of players that only interact with each other.” Appeal Br. 13; see also id. at 14 (“The above features have the technical effect of forcing players to develop relationships with each other in order to acquire advantageous effects during the game, which constitutes an improvement to game system technology.”). For the reasons set forth above, we agree that claim 1 fails to recite additional elements integrating the abstract idea into a practical application and is, therefore, directed to an abstract idea. Appeal 2021-003459 Application 15/936,792 8 Step 2(B) Because we agree with the Examiner that claim 1 is directed to an abstract idea, we next determine whether the claim provides an inventive concept. See 2019 Eligibility Guidance, 84 Fed. Reg. at 56. This requires us to evaluate whether the additional claim elements add “a specific limitation or combination of limitations that are not [a] well-understood, routine, conventional activity in the field” or “simply append[] well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality.” Id. The Examiner determines that the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception and, instead, simply adds well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality. Non-Final Act. 6-7. Appellant does not dispute the Examiner’s determination in any meaningful way. Rather, Appellant alleges that “the Examiner has not provided any actual factual basis to support his findings--i.e., apart from unfounded assumptions and/or speculation that all of the features recited in the claims are conventional.” Appeal Br. 15. It is unclear what additional information Appellant expects the Examiner to provide. The Examiner provides sufficient basis to conclude that the additional features are well-understood, routine, and conventional. See Non-Final Act. 6 (“The additional element(s) or combination of elements in the claim(s) other than the abstract idea(s) per se including a memory and a processor amount(s) to no more than: (i) mere instructions to implement the idea on a computer, and/or (ii) recitation of generic computer structures that serves to perform generic computer functions that are well- Appeal 2021-003459 Application 15/936,792 9 understood, routine, and conventional activities previously known to the pertinent industry per the applicant’s description (Applicant’s specification Pages 32-35).”). Appellant does not apprise us as to how any of the structures the cited portion of the Specification indicates are used to carry out the recited instructions amount to anything more than generic computer structures performing their generic functions. Contrary to Appellant’s general allegations, the Examiner does, in fact, have factual basis for the asserted findings. Accordingly, we are not apprised of error in the Examiner’s determination that the claim does not add any inventive concept. Conclusion For the reasons set forth above, after applying the 2019 Eligibility Guidance, we sustain the Examiner’s decision to reject claims 1 and 4-15 under 35 U.S.C. § 101. CONCLUSION The Examiner’s rejection is affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4-15 101 Patent Eligibility 1, 4-15 Appeal 2021-003459 Application 15/936,792 10 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