Digika Co., Ltd.

Patent Trials and Appeals Board

Sep 24, 2021

2021001583 (P.T.A.B. Sep. 24, 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.
15/501,511 02/03/2017 Chika YAMAUCHI 085173-561633 1206
30678 7590 09/24/2021
POLSINELLI PC
(DC OFFICE)
PO Box 140310
Kansas City, MO 64114-0310
EXAMINER
GEBREMICHAEL, BRUK A
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
09/24/2021 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):
patentdocketing@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHIKA YAMAUCHI
____________

Appeal 2021-001583
Application 15/501,511
Technology Center 3700
____________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
JAMES P. CALVE, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s
Non-Final Rejection of claims 17–34. We have jurisdiction under 35 U.S.C.
§ 6(b).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant claims an abacus calculation type mental arithmetic
learning support device, abacus calculations type mental arithmetic learning

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as DIGIKA
CO., LTD (Appeal Br. 2).
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support program and abacus calculation type mental arithmetic learning
support method (Spec. ¶ 1, Title).
Claim 17 is representative of the subject matter on appeal.
17. A method, comprising:
first displaying on a display an abacus having a plurality
of beads in an initial collective state;
entering a lock out mode;
during the lock out mode:
first presenting a first problem for solution;
first receiving, as a proposed solution on the
abacus to the first problem, selection of at least one of the
beads, the selection modifying the initial collective state
of the beads in a memory into a first collective state of
the beads in the memory;
second presenting a second problem, the second
problem being an expansion of the first problem;
second receiving, as a proposed solution on the
abacus to the second problem, selection of at least one of
the beads, the selection modifying the first collective
state of the beads in the memory into a second collective
state of the beads in memory;
third receiving, after the second receiving, a
request to display a current collective state of the beads;
and
second displaying, in response to the third
receiving, the abacus with a current collective state of the
beads that reflects a cumulative effect of the first
receiving, the second receiving, and any other bead
selection during the lock out mode;
wherein during the lock out mode the first and second
receiving selection of at least one of the beads on the abacus
updates the current state of the beads in memory without
causing a corresponding update to the state of the beads as
displayed.

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THE REJECTIONS
Claims 17–34 are rejected under 35 U.S.C. § 101 as directed to an
abstract idea without significantly more.
Claims 17–34 are rejected under 35 U.S.C. § 112 first paragraph, as
failing to comply with the written description requirement.
Claims 19, 25, and 31 are rejected under 35 U.S.C. § 112(d) or
pre-AIA 35 U.S.C. § 112 fourth paragraph, as being of improper dependent
form.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 17–34 under 35 U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of those
patent-ineligible concepts. If so, . . . then ask, “[w]hat else is there
in the claims before us?” To answer that question, . . . 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. [The Court] described step two of this 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 than a patent
upon the [ineligible concept] itself.”
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–218 (2014)
(internal citations omitted) (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 72–73 (2012)).
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To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether ‘their character
as a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp.
v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks
whether the focus of the claims is on a specific improvement in relevant
technology or on a process that itself qualifies as an “abstract idea” for
which computers are invoked merely as a tool. See id. at 1335–36.
In so doing, we apply a “directed to” two-prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 50–57 (Jan. 7, 2019) (“Guidance”).
The Examiner determines that the claims recite a process for
managing a problem using an abacus (Non-Final Act. 3). The Examiner
determines that this is a mental process and a certain method of organizing
human activity. The Examiner finds the claims recite the additional
elements of a memory, non-transitory media, a processor, and a display
(Non-Final Act. 5). The Examiner finds the additional elements are directed
to conventional computer elements, which are merely serving to perform
conventional computer functions. The Examiner finds that the additional
elements fail to integrate the abstract idea into a practical application and fail
to amount to significantly more than the abstract idea recited since they fail
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to impose meaningful limits on practicing the abstract idea and are merely a
tool to implement the abstract idea (Non-Final Act. 6–7).
The Specification discloses that the invention relates to an abacus
calculation type mental arithmetic learning support device and abacus
calculation type mental arithmetic learning support program. (Spec. ¶ 3).
Consistent with this disclosure, claim 17 discloses “ first displaying
on a display an abacus having a plurality of beads,” “presenting a first
problem for solution,” “ receiving . . . selection of at least one of the beads,”
“presenting a second problem,” “receiving, as a proposed solution . . .
selection of at least one of the beads,” “receiving . . . a request to display a
current collective state of the beads,” “displaying . . . the abacus with a
current collective state of the beads.”
We thus agree with the Examiner’s determination that the claims
recite a method of managing a problem using an abacus. More particularly,
we determine that the claims recite a method of managing a problem using
an abacus in which in a lock out mode the first solution is not displayed but
held in memory and a second solution, which modifies the first solution, is
later displayed. We also find that the claims constitute “analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1355 (Fed. Cir. 2014) (claims directed to certain arrangements
involving contractual relations are directed to abstract ideas). Thus, we
agree with the Examiner and find that the claims recite a mental process.
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Turning to the second prong of the “directed to test,” claim 17 recites
a “display” and a “memory.” These recitations do not impose “a meaningful
limit on the judicial exception, such that the claim is more than a drafting
effort designed to monopolize the judicial exception.” Guidance, 84 Fed.
Reg. at 55. We find no indication in the Specification, nor does Appellant
directs us to any indication, that the operations recited in claim 17 invoke
any inventive programming, require any specialized computer hardware or
other inventive computer components, i.e., a particular machine, or that the
claimed invention is implemented using other than generic computer
components to perform generic computer functions. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
claimed invention integrates the abstract idea into a “practical application,”
as that phrase is used in the revised Guidance. See Guidance, 84 Fed. Reg.
at 55.
In this regard, the recitation does not affect an improvement in the
functioning of the memory or display or other technology, does not recite a
particular machine or manufacture that is integral to the claims, and does not
transform or reduce a particular article to a different state or thing. Id. Thus,
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claim 17 recites a judicial exception that is not integrated into a practical
application and thus claim 17 is directed to an “abstract idea.”
Turning to the second step of the Alice analysis, because we find that
claim 17 is directed to an abstract idea , the claims must include an
“inventive concept” in order to be patent-eligible, i.e., there must be an
element or combination of elements that is sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (quoting Mayo, 566 U.S. at 72–73).
The introduction of computer components like the display and
memory into the claims does not alter the analysis at Alice step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is not
enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption concern
that undergirds our § 101 jurisprudence. Given the ubiquity of
computers, wholly generic computer implementation is not
generally the sort of “additional featur[e]” that provides any
“practical assurance that the process is more than a drafting effort
designed to monopolize the [abstract idea] itself.”
Alice, 573 U.S. at 223 (alterations in original) (citations omitted).
Instead, “the relevant question is whether [claim 17] here do[es] more
than simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Id. at 225. It does not.
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Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval—one of
the most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re
Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming.”). In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, “even if a process of
collecting and analyzing information is ‘limited to particular content’ or a
particular ‘source,’ that limitation does not make the collection and analysis
other than abstract.” SAP Am. Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis-
access/display is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction); Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
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generation, display, and transmission was abstract); Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The ordering of the steps is, therefore, ordinary and conventional.
Claim 17 does not, for example, purport to improve the functioning of
the display or memory. As we stated above, claim 17 does not affect an
improvement in any other technology or technical field. The Specification
spells out different generic equipment and parameters that might be applied
using this concept and the particular steps such conventional processing
would entail based on the concept of information access under different
scenarios (see, e.g., Spec. ¶ 34). Thus, claim 17 amounts to nothing
significantly more than instructions to apply the recited abstract idea using
some unspecified, generic computer. Under our precedents, that is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice, 573 U.S. at 226.
We have reviewed and considered all the arguments (Appeal Br. 16–
19; Reply Br. 2–8) Appellant has submitted concerning the patent eligibility
of the claims before us that stand rejected under 35 U.S.C. § 101. We find
that our analysis above substantially covers the substance of all the
arguments, which have been made. But, for purposes of emphasis, we will
address various arguments in order to make individual rebuttals of same.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that there is a technical problem with traditional
virtual abacus in that by its operation as an abacus the displayed beads adjust
in direct response to bead manipulation (Appeal Br. 16). Appellant
specifically argues that the typical virtual abacus always displays the
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changes in the displayed state of beads in direct response to bead
manipulation and that the claimed invention is an improvement to the field
of AMC training (Appeal Br. 16, 19). We agree with the Examiner’s
response to this argument found on page 4 of the Answer that the Appellant
is arguing the differences between a traditional virtual abacus and the
claimed abacus. In addition, to the extent Appellant maintains that the
limitations of claim 17 necessarily amount to “significantly more” than an
abstract idea because the claimed apparatus is allegedly patentable over the
prior art, Appellant misapprehends the controlling precedent. Although the
second step in the Alice/Mayo 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,
573 U.S. at 217–18 (citation omitted). A novel and nonobvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. at 90.
In addition, the improvement touted by the Appellant, that the virtual
abacus does not display the first proposed solution that is held in memory
until the second solution is received is an improvement to how to manage a
problem using abacus which allows a user to find solutions mentally before
they are shown on the display. The improvement comes from the conceptual
idea itself. The benefits are not improvements to the recited display or
memory functionality. Instead, they are benefits that flow from performing
the recited abstract idea in conjunction with well-known computer
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components. See BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1288
(Fed. Cir. 2018).
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 17. We will also sustain this rejection as it is applied to the remaining
claims for the same reason.
REJECTION UNDER 35 U.S.C. § 112, FIRST PARAGRAPH
The Examiner finds that each of the claims recites the implementation
of a “lock out mode,” however, the original disclosure does not have a
written description regarding any function or operation that involved a “lock
out mode” (Non-Final Act. 14). The Examiner finds that the term “lock out
more” is a mode configured to prevent the user from accessing a computer
device (e.g., a mode for preventing a user from logging into a computer,
particularly when the user fails to provide proper credentials within allotted
time period or after a number of attempts, etc.).
In order to satisfy the written description requirement, “the
specification must describe an invention understandable to [a] 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
banc). “[T]he test for sufficiency is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date.” Id. To
have “possession,” “the specification must describe an invention
understandable to that skilled artisan and show that the inventor actually
invented the invention claimed.” Id. Notably, compliance with the written
description requirement set forth in the first paragraph of 35 U.S.C. § 112
does not require that the claimed subject matter be described identically in
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the Specification, but the disclosure as originally filed must convey to those
skilled in the art that applicant had invented the subject matter later claimed.
In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983). The drawings in an
application can be relied upon to show that an inventor was in possession of
the claimed invention as of the filing date. See Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1564 (Fed. Cir. 1991) (“[D]rawings alone may be sufficient
to provide the ‘written description of the invention’ required by § 112, first
paragraph.”).
We will not sustain this rejection because we agree with Appellant
that the Specification provides support for the recitation at paragraph 10,
which states that the invention has a performance mode and an exercise
mode and that in the performance mode the calculations are not displayed.
Claim 17 recites that in a lock out mode the state of the beads is updated in
memory without causing a corresponding update to the state of the beads as
displayed. This is also depicted in Figure 17 where step 4 asks whether the
method is in exercise mode and if not the process returns to the bead
operation in step 2. It is clear from these disclosures that the Specification
describes the recited lock out mode so as to be understandable to a skilled
artisan and shows that the inventor actually invented the invention claimed.
As we stated above, there is no requirement that the claims use the same
terms as used in the Specification and, in our view, a person of ordinary skill
in the art would understand that the disclosed exercise mode is the recited
lock out mode.
In view of the foregoing, we will not sustain this rejection.
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REJECTION UNDER 35 U.S.C. §112, FOURTH PARAGRAPH
The Examiner finds that claim 19 does not further limit claim 17
because it does not add further steps to the method of claim 17. We agree
with Appellant that claim 19 further limits the subject matter of claim 17
because it recites that beads do not move. This subject matter further limits
the “without causing a corresponding update to the state of the beads as
displayed” by limiting what is considered the state of the beads. As such,
the recited update of the state of the beads does not include an update to the
position of the beads but is some other indication of the state of the beads
such as the color of the beads.
In view of the foregoing, we will not sustain this rejection.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 17–34 under
35 U.S.C. § 101.
We conclude the Examiner did err in rejecting claims 17–34 under
35 U.S.C. § 112, first paragraph.
We conclude the Examiner did err in rejecting claims 19, 25, and 31
under 35 U.S.C. § 112, fourth paragraph.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
17–34 101 Eligibility 17–34
17–34 112 Written
Description
17–34
19, 25, 31 112 Improper
Dependency
19, 25, 31
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Overall
Outcome
17–34

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