Ex Parte Bovino

Patent Trial and Appeal Board

Jan 31, 2018

14561535 (P.T.A.B. Jan. 31, 2018)

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.
14/561,535 12/05/2014 Michael Bovino 127181.00007 4635
29880 7590 02/02/2018
FOX ROTHSCHILD LLP
PRINCETON PIKE CORPORATE CENTER
997 LENOX DRIVE
BLDG. #3
EAWRENCEVTT.TE, NJ 08648
EXAMINER
PIERCE, WILLIAM M
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
02/02/2018 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):
ipdocket @ foxrothschild. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL BOVINO
Appeal 2017-011826
Application 14/561,535
Technology Center 3700
Before LYNNE H. BROWNE, THOMAS F. SMEGAL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s rejections2 of claims 1—20: (a) under 35 U.S.C. § 101 because
the claimed invention is directed to non-statutory subject matter in reciting
instructions and guidelines pertaining to how one should act in the event of
an occurrence; (b) under 35 U.S.C. § 112, second paragraph, as being
1 Appellant is the Applicant, DFX: Sound Vision, which, according to the
Appeal Brief, is the real party in interest. Appeal Br. 3.
2 Appeal is taken from the adverse decision of the Examiner as set forth in
the Final Office Action, mailed March 4, 2016 (“Final Act.”) and as
modified in the Answer dated July 26, 2017 (“Ans.”). We note that in the
Answer, the Examiner withdrew the rejection of claims 2, 3, 6, 7, 9, 10, and
16—18 under 35 U.S.C. § 112, fourth paragraph. Ans. 2.
Appeal 2017-011826
Application 14/561,535
indefinite for reciting both an apparatus and the method steps of using the
apparatus; and (c) under 35 U.S.C. § 102(b) as anticipated by Bouchard (US
7,025,687 B2, iss. Apr. 11, 2006). We have jurisdiction under 35 U.S.C. §
6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER3
Claims 1, 13, and 15 are independent. Claim 1 is reproduced below
and illustrates the claimed subject matter, with disputed limitation
emphasized.
1. A system, comprising:
a management system comprising a computer having
stored therein instructions to provide special effects associated
with one or more events to one or more special effects
components,
wherein a bowling mode feature of the management
system allows a user to define and program, on a predefined
schedule, a set of parameters related to a status of each lane in a
bowling center, and
wherein, upon an occurrence of an event at a lane at the
bowling center, the management system:
determines one or more special effects based on the
occurrence of the event and the status of the lane defined
by the bowling mode; and
provides the instructions to the one or more special
effects components to effectuate the special effects
associated with the one or more events.
3 The claims have been copied from those currently the subject of Appeal
No. 2016-007539 (U.S. Application No. 13/902,349). Appeal Br. 4.
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ANALYSIS
Rejection of Claims 1—20 as Directed to Non-Statutory Subject Matter
Appellant argues the claims subject to this rejection as a group.
Appeal Br. 10-12; Reply Br. 2—3. We select claim 1 as representative, with
the remaining claims standing or falling with claim 1. 37 C.F.R.
§ 41.37(c)(1) (iv) (2014).
The Supreme Court has 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.” Alice
Corp. Pty. Ltd. v. CLSBankInt'L, 134 S.Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 132 S Ct. 1289, 1294 (2012).
According to the Supreme Court’s framework, we must first determine
whether the claims at issue are directed to one of those concepts (i.e., laws of
nature, natural phenomena, and abstract ideas). Id. If so, we must 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. The Supreme
Court characterizes the second step 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
than a patent upon the [ineligible concept] itself.’” Id.
Addressing the first step of the Alice analysis, the Examiner
determines that claims 1,13, and 15 are directed to the “abstract idea and the
concept itself of controlling any effect upon the occurrence of any event in a
bowling center and attempts to foreclose upon that concept.” Final Act. 3.
In other words, the claims are directed to a method of managing a computer-
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implemented system for detecting events and controlling special effect
components. In support of this determination, the Examiner finds that the
“[s]teps such as ‘detecting’, ‘determining’ and ‘providing instructions’ are
most broadly related to the gathering and manipulation of data associated
with extra solution activity.” Id. The Examiner explains that to the extent
that performing a special effect is a physical step, such performance is
considered an extra solution activity more analogous to the display of data.
See id.
Appellant first contends, “the Examiner has not examined each claim
individually as required by the Interim Eligibility Guidance.” Appeal Br.
11. We note that we are not bound by the guidance provided to Examiners
by the Office. Further, the guidance at issue is no longer in effect. As
discussed supra, we apply the two-part analysis set forth in Alice. In
addition, the Examiner explains that “[w]here the underlying invention was
articulated as being directed to ineligible subject matter, each claim was
[then] examined to find that it offered nothing substantially more,” pointing
out that “[AJppellant does not argue that any subsequent claim at any point
adds more that would render it patentable.” Ans. 4.
Appellant continues by contending “the claims are not directed to an
abstract idea as suggested by the Examiner,” since “the mere recitation of a
computer device does not automatically mean that the claim is directed to an
abstract idea.” Appeal Br. 11. Appellant also contends “each independent
claim recites a management system and special effects components that
collectively control special effect equipment to produce special effects.” Id.
However, the Examiner explains “the claims were evaluated under
the Bilski factors that suggested the invention as claimed was not patent
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eligible,” and “[AJppellant’s remarks fail to refute any of the factors set forth
in the ground for rejection.” Ans. 4. Furthermore, the Examiner points out
that “the use of special effects in games and interior environments is known
and conventional as is their implementation such that they are designed to be
activated by some [predetermined] occurrence.” Id. As the Examiner
reasons, “none of [Appellants’] arguments show that more is being recited
than an underlying invention which is directed to the concept of allowing a
computer to control the special effects in a bowling environment when
predetermined events occur.” Id. at 5.
Similar data manipulation steps have been held ineligible under § 101.
See Content Extraction and Transmission LLC v. Wells Fargo Bank,
National Ass'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (holding the concept
of “1) collecting data, 2) recognizing certain data within the collected data
set, and 3) storing that recognized data in a memory” abstract); see also
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015) (“Intellectual Ventures I”) (concluding that
customizing information and presenting it to users based on particular
characteristics is abstract as well).
Our reviewing court further instructs us “[s]oftware can make non­
abstract improvements to computer technology just as hardware
improvements can, and sometimes the improvements can be accomplished
through either route.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016). Thus, we are further instructed that we must determine if
“the claims are directed to an improvement to computer functionality versus
being directed to an abstract idea, even at the first step of the Alice
analysis.” Id. Here, however, the limitations at issue are not directed to an
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improvement of a computer’s functionality. Rather, the claims are directed
to the abstract idea of using a computer to manage a system for detecting
events and controlling special effect components.
Having determined that claim 1 is directed to an abstract idea, we
must determine whether the additional elements of the claim transforms it
into patent-eligible subject matter. As discussed supra, the Examiner
determines that at most the data collection, manipulation, and dissemination
steps pertain to post solution activity. See Final Act. 3.
In response, Appellant contends that “each independent claim recites a
management system and special effects components that collectively control
special effect equipment to produce special effects,” and “are directed to
patent eligible subject matter at least because they recite applying an alleged
judicial exception with, or by use of, a particular machine (i.e., the
management system and special effects components).” Appeal Br. 11—12.
Appellant also contends “there is no rule against claims being broadly
written to encompass different embodiments.” Reply Br. 3.
However, we agree with the Examiner that “none of [Appellant’s]
arguments show that more is being recited than an underlying invention
which is directed to the concept of allowing a computer to control the special
effects in a bowling environment when predetermined events occur.” Ans.
5. As the Examiner also explains, “it appears a ‘centralized management
system’ could be so broad as to read on any system for ‘check-in to check­
out’ of the bowlers.” Id.
Based on the foregoing, we sustain the Examiner’s decision rejecting
claims 1—20 as being directed to non-statutory subject matter.
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Rejection of Claims 1—20 under 35 U.S.C. § 112, second paragraph,
as being indefinite
The Examiner finds that “[wjhile the claims recite structure
suggesting an apparatus, they recite some steps consistent with
a process.” Final Act. 5. Based on this finding, the Examiner determines
that “a single claim which claims both an apparatus and the method steps of
using the apparatus is indefinite.” Id. (citing In re Katz Interactive Call
Processing Patent Litigation. 639 F.3d 1303, (Fed. Cir. 2011). However, as
the Examiner explains, in that case confusion was caused because one of the
limitations was directed to actions of users of the system not to actions of the
system itself. See id. at 5—6. This confusion rendered the claim indefinite.
The Examiner does not adequately explain how similar confusion
exists in this case. For example, as Appellant explains, claims 1 and 13
“each recites an apparatus and functions that are performed by the
apparatus,” and “functional language does not render a claim improper.”
Appeal Br. 12. The Examiner does not identify, nor do we discern, any
limitations directed to actions performed by something other than the
computer or management system. Thus, the Examiner’s reliance on In re
Katz is misplaced. For this reason, we do not sustain the Examiner’s
rejection of claims 1—20 under 35 U.S.C. § 112, second paragraph.
Rejection of Claims 1—20 under 35 U.S.C. § 102(b) as anticipated by
Bouchard
The Examiner finds that “Bouchard shows a bowling center
management system 16 with a control system (abstract, In. 5) that is capable
of determining a special event such as 40 of fig. 9 and effecting an audio
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effect col. 10, In. 39.” Final Act. 9. More specifically, the Examiner
determines that “within the broadest suggestion of Bouchard [is] to allow [a]
‘user customized entertainment system. ’ (col. 1, In. 15).” Id. Furthermore,
the Examiner reasons that “[t]he term ‘status of the lane’ is so broad that the
status of the ‘pinfall’ (col. 10, In. 40) in Bouchard can be a status of the lane
meeting the limitations of the claim.” Id.
In response, Appellant acknowledges that “Bouchard generally
discloses a bowling center control system (18),” and “allows for a bowler to
customize the audiovisual, lighting and sound characteristics for his
particular lane and/or bowling game in accordance with his taste,” but
argues that “Bouchard fails to disclose and/or suggest a bowling mode
feature of the management system that allows a user to define and program,
on a predefined schedule, a set of parameters related to a status of each lane
in a bowling center.” Appeal Br. 14—15; Reply Br. 4. Appellant continues
by arguing, “the user of Bouchard is not allowed to define and program, on a
predefined schedule, a set of parameters related to a status of each lane in a
bowling center.” Appeal Br. 15. Appellant also contends that “Bouchard
does not mention using a lane status as criteria for determining one or more
special effects that is to be played in accordance with the bowler’s selected
entertainment style.” Id; Reply Br. 4.
We determine the scope of the claims in a patent application by giving
claims “their broadest reasonable interpretation consistent with the
[Specification” and “in light of the specification as it would be interpreted
by one of ordinary skill in the art.” In re Am. Acad, of Sci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). “Construing claims
broadly during prosecution is not unfair to the applicant. . . because the
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applicant has the opportunity to amend the claims to obtain more precise
claim coverage.” Id.
Appellant has not pointed to any lexicographic definition in the
Specification of the phrase “status of each lane,” or identified any other
disclosure therein that precludes the Examiner from construing “that the
status of the ‘pinfall’ (col. 10, In. 40) in Bouchard can be a status of the lane
meeting the limitations of the claim,” and reasoning that “[e]ven, if one
could effectively argue that Bouchard fails to show [a] user defined
program, as opposed to a predefined program argued by [Appellant],
allowing users to select and customize preferences in games [is] known.”
Final Act. 9. As the Examiner concludes, “A bowler programming his lane
in accordance with his style which is linked to events is considered a set of
parameters related to a status of each lane in the bowling center as recited in
the plain language of the claim.” Ans. 9.
For the foregoing reasons, we discern no error in the Examiner’s
findings and agree that Bouchard anticipates claims 1—20.
DECISION
We AFFIRM the Examiner’s rejections of claims 1—20 under
35 U.S.C. § 101 as being directed to non-statutory subject matter and under
35 U.S.C. § 102(b) as anticipated by Bouchard.
We REVERSE the Examiner’s rejection of claims 1—20 under
35 U.S.C. § 112, second paragraph, as being indefinite.
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)(l)(iv).
AFFIRMED
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