Ex Parte CITRON et alDownload PDFPatent Trial and Appeal BoardAug 28, 201813530067 (P.T.A.B. Aug. 28, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/530,067 06/21/2012 Jason CITRON 22850 7590 08/30/2018 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 463044US 105 9468 EXAMINER STROUD, CHRISTOPHER ART UNIT PAPER NUMBER 3688 NOTIFICATION DATE DELIVERY MODE 08/30/2018 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): patentdocket@oblon.com OBLONPAT@OBLON.COM tfarrell@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 Appeal2016-008199 1 Application 13/530,0672 Technology Center 3600 Before MURRIEL E. CRAWFORD, ROBERT J. SILVERMAN, and ALYSSA A. FINAMORE, Administrative Patent Judges. FINAMORE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the Examiner's decision to reject claims 1-9, 20-28, and 39. We have jurisdiction under § 6(b ). We AFFIRM. 1 Our Decision references the Specification filed June 21, 2012 ("Spec."), Appeal Brief filed February 29, 2016 ("Appeal Br."), and Reply Brief filed September 1, 2016 ("Reply Br."), as well as the Examiner's Answer mailed July 1, 2016 ("Ans.") and Final Office Action mailed July 1, 2015 ("Final Act."). The record also includes a transcript of the oral hearing held on August 16, 2018. 2 Appellants identify Gree Inc. as the real party in interest. Appeal Br. 1. Appeal2016-008199 Application 13/530,067 SUBJECT MATTER ON APPEAL The invention "relates generally to online gaming, and more specifically to cross-promotion among video game makers in an online game community." Spec. ,r 2. Claims 1, 20, and 39 are the independent claims on appeal. Independent claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A computer-implemented method for controlling the display, on a local computing device, of internet social gaming messages related to a first game maker and a second game maker involving a first message and a second message, the method compnsmg: at the local computing device, running an instance of a first video game, wherein the first video game is made by the first game maker; transmitting, to a server, an indication that the instance of the first video game is running on the local computing device; and receiving, from the server, an instruction to display a second message on the local computing device, wherein the second message is associated with a second game maker, wherein the instruction is an indication that a first message has been previously transmitted from the server to a remote computing device and has been previously displayed on the remote computing device; and in response to receiving the instruction, displaying, on the local computing device, the second message in the instance of the first video game. REFERENCES The Examiner relies on the following prior art in rejecting the claims on appeal: Shaw et al. US 8,221,238 Bl July 17, 2012 ("Shaw") 2 Appeal2016-008199 Application 13/530,067 Shuster et al. US 2009/0287569 Al Kim US 2010/0100446 Al Webster et al. US 2012/0225723 Al Nov. 19, 2009 ("Shuster") Apr. 22, 2010 Sept. 6, 2012 ("Webster") Dean Takahashi, Applifier fuels a "rebel alliance" against the evil social game empire on F acebook (Sept. 9, 2010), http://venturebeat.com/2010/09/ 09/applifier-cross-promotes-facebook-games-for-rebel-alliance-of-small- game-developers ("Applifier"). REJECTIONS The Examiner rejects the claims on appeal as follows: I. claims 1-9, 20-28, and 39 under 35 U.S.C. § 101 as patent ineligible; II. claims 1, 6, 20, and 25 under 35 U.S.C. § I03(a) as unpatentable over Applifier and Shuster; III. claims 7, 8, 26, and 27 under 35 U.S.C. § I03(a) as unpatentable over Applifier, Shuster, and Kim; 3 IV. claims 2-5, 9, 21-24, and 28 under 35 U.S.C. § I03(a) as unpatentable over Applifier, Shuster, Webster, and Shaw; and V. claim 39 under 35 U.S.C. § I03(a) as unpatentable over Applifier, Shuster, and Webster. 3 The heading of the rejection lists claims 7, 8, 20, 26, and 27. Final Act. 7. The body of the rejection, however, does not address claim 20. Id. Furthermore, the Examiner rejects claim 20 under 35 U.S.C. § I03(a) as unpatentable over Applifier and Shuster. Id. at 5-7. We, therefore, understand the inclusion of claim 20 in the heading of the rejection to be an inadvertent error. 3 Appeal2016-008199 Application 13/530,067 ANALYSIS Rejection I An invention is patent eligible if it is a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to include an implicit exception: "[l]aws of nature, natural phenomena, and abstract ideas are not patentable." See, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). To "distinguish[] patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts," the Supreme Court, in Alice, reaffirmed the two-step analysis previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012). Alice, 134 S. Ct. at 2355. The first step of this analysis considers whether a claim is directed to a patent-ineligible concept, e.g., an abstract idea. Id. (citing Mayo, 566 U.S. at 77). If so, the second step considers whether the claim recites an inventive concept-an element or combination of elements sufficient to ensure the claim amounts to significantly more than the abstract idea and transform the nature of the claim into a patent-eligible application. Id. (citing Mayo, 566 U.S. at 72-73, 78, 79). In rejecting the claims under 35 U.S.C. § 101 as patent ineligible, the Examiner analyzes the claims using this two-step framework. Ans. 3-5. Pursuant to the first step, the Examiner determines the claims are directed to the abstract idea of cross-promotion, which is similar to other concepts the courts of have held to be abstract ideas, such as intermediated settlement in 4 Appeal2016-008199 Application 13/530,067 Alice, hedging in Bilski, 4 creating a contractual relationship in buySAFE, 5 using advertising as a currency or exchange in Ultramercial, 6 and comparing new and stored information to identify options in SmartGene. 7 Id. at 3--4. Under the second step, the Examiner determines the claims do not recite significantly more than the abstract idea because the additional elements of the claims, i.e., a local computing device, a server, a first computing device, and a second computing device, are generic computing devices recited at a high level of generality and perform only well-understood, routine, and conventional computing activity, such as receiving and transmitting data over a network. Id. at 4--5 (citing Spec. ,r 22). The Examiner also determines "[l]ooking at the elements as a combination does not add anything more than the elements analyzed individually as there is no indication that the combination of elements improves the functioning of a computer or improves any other technology." Id. at 5. Claims 1-9 and 20-28 Appellants argue claims 1-9 and 20-28 as a group. /·/ee Appeal Br. 19 ("Although the above discussion uses claim l as an example, it is respectfully submitted that the above arguments also apply to independent claims 20 and 39, and claims depending respectively therefrom."). We 4 Bilski v. Kappas, 545 F.3d 943 (Fed. Cir. 2008). 5 buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014). 6 Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014). 7 SmartGene v. Adv. Biological Labs., S.A., 555 F. App'x 950 (Fed. Cir. 2014). 5 Appeal2016-008199 Application 13/530,067 select independent claim 1 as representative, and the remaining claims of the group stand or fall with independent claim 1. 37 C.F.R. § 41.37(c)(l)(iv). As a preliminary matter, we are unpersuaded of error by Appellants' argument that the claims do not seek to tie up the use of the entire abstract idea. Appeal Br. 12. Although preemption may be the basis for excluding abstract ideas from eligible subject matter, it is not the test for determining whether a claim is patent eligible. Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) ("The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability. For this reason, questions on preemption are inherent in and resolved by the§ 101 analysis." (citation omitted)). Under the first step of the Alice analysis, Appellants argue the Examiner oversimplifies independent claim 1 in determining it is directed to cross-promotion. Appeal Br. 11. According to Appellants, independent claim 1 is not directed to an abstract idea, but rather to identifying an instance of a first video game made by a first game maker executed at a local computing device and transmitting a message corresponding to a second game maker to the local computing device for display only when it is determined that a message corresponding to the first game maker was previously transmitted and displayed at a remote computing device. Id. at 11-12. Appellants also assert that independent claim 1 is not directed to an abstract idea because the claimed invention addresses a business challenge, namely ensuring reciprocity in a cross-promotional relationship between two video game makers. Id. at 13. Appellants further contend independent claim 1 is similar to claims in examples 1 and 6 in the Office's guidance, which are not directed to abstract ideas. Id. at 14--16 (citing Abstract idea examples 1-8 (issued Jan. 27, 2015), https://www.uspto.gov/ 6 Appeal2016-008199 Application 13/530,067 sites/ default/files/ documents/ abstract_idea_examples. pdf). Appellants' arguments are not convincing. In determining whether a claim is directed to excluded subject matter, e.g., an abstract idea, the Federal Circuit has explained that "the 'directed to' inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether 'their character as a whole is directed to excluded subject matter.'" Enfish, LLC v. lviicroscft 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)). For computer-implemented inventions in particular, such as the present invention, "the first step in the Alice inqui1y ... asks whether the focus of the claims is on the specific asserted improvement in computer capabilities ... or, instead, on a process that qualifies as an 'abstract idea' for which computers are invoked merely as a tool." Id. at 1335-36. Here, independent claim 1 recites steps that result in displaying a second message associated with a second game maker during the running of a first video game made by a first game maker on a local device when a first message has been previously transmitted and displayed on a remote device. Said differently, independent claim 1 provides cross-promotion between first and second game makers by enabling the second game maker's message to be displayed during the running of the first game maker's video game on a local device after a first message has already been displayed on a remote device. Independent claim 1 further recites a social gaming environment including various computing components. The Specification, however, does not describe an improvement to the computing components or to the online 7 Appeal2016-008199 Application 13/530,067 environment. Rather, the Specification explains that the claimed invention provides a meaningful way for cross-promoting products from different video game makers. Spec. ,r 4. In light of the above, the claimed invention implements a process for cross-promotion in a social gaming environment. The focus of the claimed invention is not on the social gaming environment or the computing components associated therewith, but rather on a process for cross-promotion, for which the computer components are invoked merely as tools to implement the process. Thus, the character of independent claim 1 as a whole is directed to cross-promotion. Appellants also argue the Examiner has failed to explain how cross-promotion is equivalent to one of the enumerated categories that have been identified by a court as an abstract idea. Appeal Br. 12. Appellants' argument is not persuasive of error. According to our reviewing court, when determining whether a claim is directed to an abstract idea, "the decisional mechanism courts now apply is to examine earlier cases in which a similar or parallel descriptive nature can be seen-what prior cases were about, and which way they were decided." Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016). As set forth above, the Examiner explains that the concept of cross-promotion is similar to other concepts the courts of have held to be abstract ideas, such as intermediated settlement in Alice, hedging in Bilski, creating a contractual relationship in buySAFE, using advertising as a currency or exchange in Ultramercial, and comparing new and stored information to identify options in SmartGene. Ans. 3--4. Indeed, we see no meaningful distinction between the concept of cross-promotion and the 8 Appeal2016-008199 Application 13/530,067 abstract idea of intermediated settlement in Alice, as both are fundamental economic practices long prevalent in our system of commerce. Seeing no error in the Examiner's determination that independent claim 1 is directed to the abstract idea of cross-promotion pursuant to the first step of the Alice analysis, we tum to Appellants' arguments under the second step. Appellants argue that independent claim 1 does not recite functions that are generic. Appeal Br. 17. According to Appellants, the recited steps of running an instance of a first video game, transm1ttmg, to a server, an indication that the instance of the first video game is running on the local computing device; and receiving, from the server, an instruction to display a second message, the instruction indicating that a first message has been previously transmitted from the server to a remote computing device and has been previously displayed on the remote computing device to display a second message on the local computing device are not well-understood, routine, and conventional, and not claimed in a generic matter. Id. Appellants further assert that the claimed features are not taught or suggested by the art, which, per Appellants, is evidence that the recited features amount to significantly more than the abstract idea. Id. at 18. Appellants' arguments do not apprise us of error. Although the second step of the Alice analysis is termed a search for an "inventive concept," the analysis is not an evaluation of novelty or nonobviousness. Rather, as forth above, the second step considers whether the elements of a claim, individually and as an ordered combination, transform the nature of the claim into a patent-eligible application. Alice, 134 S. Ct. at 2355 (quoting Aiayo, 566 U.S. at 79, 78). The question in the second step, therefore, is whether the implementation of the abstract idea involves "more than performance of 'well-understood, routine, [and] 9 Appeal2016-008199 Application 13/530,067 conventional activities previouslv known to the industrv. m Content ~ ~ Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347----48 (Fed. Cir. 2014) (quoti11gAlice1 134 S. Ct at 2359). Here, Appellants conflate the conventionality of the steps being performed by computing components and the conventionality of the computer functions required to implement the steps. With respect to the latter, the Examiner determines, and we agree, that the implementation requires nothing more than generic computer components performing generic computer functions that are well-understood, routine, and conventional activities, such as receiving and transmitting data. Ans. 5 ( citing Spec. ,r 22). Appellants further argue that, similar to claim 2 in example 21 of the Office's guidance, which is patent eligible because the claimed invention addresses an Internet-centric challenge, the present invention addresses the challenge of "ensuring that a first gaming company's interests are protected in a cross-promotional relationship with [a] second gaming company without requiring the first gaming company to continuously monitor when, or how many, cross[-]promotional messages are displayed." Appeal Br. 19 ( citing Abstract idea examples 21-27 (July 30, 2015), https://www.uspto.gov/sites/ default/files/documents/ieg-july-2015-appl.pdf). This problem addressed by the claimed invention, however, is not an Internet-centric problem or a technological problem, and, therefore, Appellants' argument is not persuasive of error. In view of the foregoing, Appellants do not apprise us of error in the Examiner's determination that independent claim 1 is patent ineligible. We 10 Appeal2016-008199 Application 13/530,067 sustain the rejection of independent claim 1 under 35 U.S.C. § 101, with claims 2-9 and 20-28 falling therewith. Claim 39 Appellants argue that independent claim 39 recites more detailed features directed to the capability of the server that effectively moderates the cross-promotional relationship than independent claim 1, and that the Examiner has not considered these features in the Alice analysis. Appeal Br. 19-20. Appellants' argument is not convincing because Appellants do not explain how these additional features affect the rejection. Moreover, in the new ground of rejection, the Examiner expressly refers to independent claim 39 under both steps of the analysis. Ans. 3-5. Consequently, Appellants do not apprise us of error, and we sustain the rejection of independent claim 39 under 35 U.S.C. § 101. Rejection II Each of independent claims 1 and 20 recites "wherein the instruction is an indication that a first message has been previously transmitted from the server to a remote computing device and has been previously displayed on the remote computing device." Appellants argue the combined teachings of Applifier and Shuster would not result in this limitation. Appeal Br. 21-22. Appellants' argument is persuasive. Applifier discloses displaying messages for different games while a user is playing a game. Applifier 2 ("Applifier draws attention to smaller games on Facebook by adding a 'cross-promotion' bar to the top of each game that recommends games from other independent developers."). For 11 Appeal2016-008199 Application 13/530,067 instance, the figure on page 1 of Applier shows messages regarding other games such as "Baking Life" and "Ninja Saga" while a user is playing the game, "Icy Tower." Applifier further discloses "a member that sends 100 clicks out receives 100 clicks back." Id. Applifier, therefore, discloses cross-promotion across different games, but does not disclose cross-promotion across different devices, as claimed. Shuster teaches websites cross-promoting other websites. Shuster ,r 29. According to Shuster, a website receives credits for cross-promoting another website and may exchange those credits for the right to run its own advertisement on the other website. Id. Although Shuster teaches a type of cross-promotion that requires a participant to first promote another participant's website before the participant's website is promoted by the other participant, Shuster teaches this type of cross-promotion across websites, not devices, as claimed. Given that neither Applifier nor Shuster discloses cross-promotion across different devices, the Examiner has not sufficiently shown that the combined teachings of Applifier and Shuster would result in the limitation reciting "wherein the instruction is an indication that a first message has been previously transmitted from the server to a remote computing device and has been previously displayed on the remote computing device." We, therefore, do not sustain the Examiner's rejection of independent claims 1 and 20. We similarly do not sustain the Examiner's rejection of claims 6 and 25, which depend from independent claims 1 and 20, respectively. 12 Appeal2016-008199 Application 13/530,067 Re} ections III and IV Each of claims 2-5, 7-9, 21-24, 27, and 29 depends from independent claim 1 or 20. The Examiner does not rely on Kim, Webster, or Shaw in any way that cures the deficiency in the rejection of independent claims 1 and 20 discussed above with respect to Rejection II. Final Act. 7-9. Accordingly, for the same reasons as independent claims 1 and 20, we do not sustain the Examiner's rejections of claims 2-5, 7-9, 21-24, 27, and 29. Rejection V Similar to independent claims 1 and 20, independent claim 39 recites "determine whether the second message has been previously transmitted to the second computing device and has been previously displayed on the second computing device, wherein the second message is associated with the first game maker." The Examiner's rejection of independent claim 39 suffers from the same deficiency as the rejection of independent claims 1 and 20 discussed above with respect to Rejection II. Final Act. 9-11. For the same reasons as independent claims 1 and 20, we do not sustain the Examiner's rejection of independent claim 3 9. DECISION The Examiner's decision to reject claims 1-9, 20-28, and 39 under 35 U.S.C. § 101 is affirmed. The Examiner's decision to reject claims 1-9, 20-28, and 39 under 35 U.S.C. § 103(a) is reversed. 13 Appeal2016-008199 Application 13/530,067 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 14 Copy with citationCopy as parenthetical citation