Ex Parte Fujita

Patent Trial and Appeal Board

Nov 20, 2017

12557049 (P.T.A.B. Nov. 20, 2017)

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.
12/557,049 09/10/2009 Yoshikazu Fujita AC-723-4341 3695
27562 7590 11/22/2017
NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
GARNER, WERNER G
ART UNIT PAPER NUMBER
3714
NOTIFICATION DATE DELIVERY MODE
11/22/2017 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSHIKAZU FUJITA
Appeal 2016-002791
Application 12/557,049
Technology Center 3700
Before LINDA E. HORNER, JEFFREY A. STEPHENS, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Yoshikazu Fujita (“Appellant”)1 seeks review under 35 U.S.C.
§ 134(a) of the Examiner’s decision, as set forth in the Final Office Action
dated March 3, 2015 (“Final Act.”), and as further explained in the Advisory
Action dated May 28, 2015 (“Adv. Act.”), rejecting claims 1—22 and 24—26
under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies Nintendo Co. Ltd. and Skip Ltd. as the real
parties in interest. Appeal Br. 3.
Appeal 2016-002791
Application 12/557,049
BACKGROUND
The disclosed subject matter “relates to a storage medium storing a
puzzle game program, a puzzle game apparatus, and a puzzle game control
method.” Spec. 0,11. 10-11.2 Claims 1, 9, 10, 11, 17, 18, 21, and 24 are
independent. Claim 1 is reproduced below, with bracketed letters added to
identify each clause:
1. A non-transitory computer readable storage
medium storing computer readable instructions of
a puzzle game program for use with a computing
system that includes at least one processor, the
computing system being coupled to a user input
device configured to accept input provided by a
user and a display configured to display images
output by the computing system, the computer
readable instructions comprising instructions
configured to cause the computing system to:
[A] continually output, to the display,
images of a game field that includes a plurality of
piece objects arranged thereon;
[B] process a first input provided to the user
input device and, responsive to the first input,
select at least one of the plurality of piece objects
included in the game field based on the first input;
[C] process a second input provided to the
user input device;
[D] responsive to the processed second
input, change a position within the game field of
the selected at least one of the plurality of piece
2 Citations to the Specification refer to the version filed on January 17,
2012. In that version, the second page is numbered as page 1. Thus, we use
the page numbering provided for all but the first page, which we identify as
page 0.
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objects to a different position within the game
field;
[E] responsive to the processed second
input, change, in accordance with a predetermined
rule of the puzzle game program, a display form of
the selected at least one of the plurality of piece
objects from a first display form to a second
display form that is different from the first display
form such that how the at least one of the plurality
of piece objects is represented in the images is
changed;
[F] determine whether all or part of the
plurality of piece objects satisfy a predetermined
condition when the display form or the position
within the game field of the at least one of the
plurality of piece objects is changed; and
[G] automatically update the game field in
accordance with the determination of whether all
or part of the plurality of piece objects satisfy the
predetermined condition.
DISCUSSION
Appellant argues the patentability of independent claim 1, stating that
“[f]or purposes of analysis under 35 U.S.C. § 101, the other independent
claims generally set forth similar features in this art area (e.g., a computer
game).” Appeal Br. 24.3 Appellant does not provide separate arguments for
any dependent claims. We select independent claim 1 as representative,
with the remaining claims standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2014).
3 Despite this statement, Appellant discusses certain language in
independent claim 9. See Appeal Br. 27. We address this discussion below.
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The Supreme Court has established “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. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1294
(2012)). Under that framework, we first “determine whether the claims at
issue are directed to one of those patent-ineligible concepts”—i.e., a law of
nature, a natural phenomenon, or an abstract idea. Id. If so, we 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. (quoting Mayo,
132 S. Ct. at 1298, 1297). The Supreme Court has described the second step
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.
(alteration in original) (quoting Mayo, 132 S. Ct. at 1294).
A. First Step
In the Final Office Action, the Examiner stated that the claims are
“directed to a puzzle game.” Final Act. 2. In the Advisory Action, the
Examiner stated the following about the first step of the analysis: (1) “The
present claims are directed to an abstract idea that may be characterized as a
certain method of organizing human activities.”; (2) “The puzzle game at
issue may also be interpreted as an idea of itself.”; and (3) “Finally, the
puzzle game may also be interpreted as a mathematical relationship/formula
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since the movement of game pieces and changing display forms may be
described as geometric or mathematical functions.” Adv. Act. 2.4
As to the Examiner’s statement that “[t]he puzzle game at issue may
also be interpreted as an idea of itself’ (Adv. Act. 2), Appellant argues that
“[t]he ‘idea of itself’ sub-category is closely constrained to actual ‘ideas’ as
opposed to physical elements” and that “a claim that includes ‘machinery’ in
combination with a ‘principle’ is not directed to the ‘principle’ (even if the
principle was the focus of the development of the invention), but is rather
directed to the combination.” Appeal Br. 26, 27 (discussing Le Roy v.
Tatham, 55 U.S. 156, 174 (1852)). According to Appellant, “[t]he instant
claims are not set forth so as [to] cover ... a principle or other similar
concept” and “are therefore not directed merely to a principle or other such
concept, but rather require a combination of specific ‘machine’ elements that
operate in a particular manner.” Id. at 26, 27. Appellant argues that the
“updated Guidelines also support the conclusion that the claims are not
directed to an ‘idea of itself’” because “[a] puzzle game as set forth in this
application is not a purely mental process, cannot be performed in the human
mind, and cannot be performed using merely pen and paper.”5 Appeal Br.
4 In this discussion, the Examiner refers to the 2014 Interim Guidance
on Patent Subject Matter Eligibility, 79 Fed. Reg. 74,618 (Dec. 16, 2014).
5 With “updated Guidelines,” Appellant refers collectively to the
various documents provided as the July 2015 Update on Subject Matter
Eligibility (“July 2015 Update”). See July 2015 update on subject matter
eligibility, https://www.uspto.gov/patent/laws-and-regulations/examination-
policy/ subject-matter-eligibility-examination-guidance-date (last visited
Nov. 3, 2017) (providing links to various documents in July 2015 Update);
see also July 2015 Update on Subject Matter Eligibility, 80 Fed. Reg. 45,429
(July 30, 2015); Appeal Br. 21 (discussing the July 2015 Update).
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27—28; July 2015 Update, Quick Reference Sheet at 2 (describing “An Idea
‘Of Itself ” as “An idea standing alone such as an uninstantiated concept,
plan or scheme, as well as a mental process (thinking) that ‘can be
performed in the human mind, or by a human using a pen and paper’”
(quoting CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372
(Fed. Cir. 2011))).
The Examiner responds that “[a] game symbol (i.e., a piece object)
can, for example, be rotated to produce a changed display form” and states
that “[t]his step can be accomplished either via pencil and paper by rotating
a piece of paper, drawing on the piece of paper, or mentally by imagining a
symbol rotated.” Ans. 11. According to the Examiner, “[tjhere is nothing in
the claims so complex or complicated to prevent the rotation of symbols on a
piece of paper or in the mind and then comparing the outcome to a
predetermined condition.” Id.
Appellant replies that the finding that “[t]his step can be accomplished
either via pencil and paper or mentally” (Ans. 6) is “completely incorrect”
because “[a]ll of the steps or elements set forth in the independent claims are
expressly tied to a computer or processing system.” Reply Br. 4.
Under the first step, we “look at the ‘focus of the claimed advance
over the prior art’ to determine if the claim’s ‘character as a whole’ is
directed to excluded subject matter.” Affinity Labs of Texas, LLC v.
DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). Thus,
although we consider the claim as a whole, the “directed to” inquiry focuses
on the claim’s “character as a whole.” Here, Appellant does not apprise us
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of error in the determination that the claims are directed to an abstract idea—
specifically, an “idea of itself.” See Final Act. 2; Ans. 5—6.
A method that can be performed in the human mind or by a human
using a pen and paper is directed to an abstract idea.6 See CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371—72 (Fed. Cir. 2011);
see also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-47
(Fed. Cir. 2016) (“While the Supreme Court has altered the § 101 analysis
since CyberSource in cases like Mayo and Alice, we continue to ‘treat[ ]
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.’” (quoting Elec. Power Grp., 830 F.3d at
1354)).
In CyberSource, the Federal Circuit discussed the decision in
Gottschalkv. Benson, 409 U.S. 63, 61 (1972). See CyberSource, 654 F.3d at
1371. In a passage from the Benson decision quoted in the relevant
discussion in CyberSource, the Supreme Court stated:
The conversion of BCD numerals to pure binary numerals can
be done mentally .... The method sought to be patented varies
the ordinary arithmetic steps a human would use by changing
the order of the steps, changing the symbolism for writing the
multiplier used in some steps, and by taking subtotals after each
6 Although claim 1 recites “[a] non-transitory computer readable
storage medium storing computer readable instructions . . . configured to
cause the computing system to” perform certain steps, we determine that
claim 1 is not “‘truly drawn to a specific’ computer readable medium, rather
than to the underlying method.” CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1374—75 (Fed. Cir. 2011) (internal quotation marks
omitted). Thus, we treat claim 1 as a method claim for patent-eligibility
purposes. See id. at 1375.
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successive operation. The mathematical procedures can be
carried out in existing computers long in use, no new machinery
being necessary. And, as noted, they can also be performed
without a computer.
Benson, 409 U.S. at 67 (emphasis added). Based on this passage, the
Federal Circuit stated that, “in finding that the process in Benson was not
patent-eligible, the Supreme Court appeared to endorse the view that
methods which can be performed mentally, or which are the equivalent of
human mental work, are unpatentable abstract ideas.’ '’ CyberSource, 654
F.3d at 1371 (emphasis added); see also Benson, 409 U.S. at 67 (discussing
the “longstanding rule that ‘(a)n idea of itself is not patentable’” (quoting
Rubber-Tip Pencil Co. v. Howard, 87 U.S. 498, 507 (1874)). Notably, the
Supreme Court (and the Federal Circuit) made these statements despite that
the claims in Benson recited language limiting the method to performance on
a general-purpose computer. See Benson, 409 U.S. at 64 (“The claims were
not limited to any particular art or technology, to any particular apparatus or
machinery, or to any particular end use. They purported to cover any use of
the claimed method in a general-purpose digital computer of any type.”); see
also id. at 73—74 (providing independent claims 8 and 13).
Thus, we are not apprised of error in the finding that claim 1 can be
accomplished either using a pencil and paper or mentally (and thus is
directed to “an idea of itself’) merely because the recited steps “are
expressly tied to a computer or processing system.” Reply Br. 4;
CyberSource, 654 F.3d at 1375 (“That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottshalkv. Benson[, 409 U.S. 63
(1972)].”).
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Moreover, that independent claim 9, for example, recites generic
computer components such as “an input device,” “a display that includes a
display screen for displaying images thereon,” and “a processing system that
includes at least one hardware processor coupled to a memory, the input
device, and the display” does not (as asserted by Appellant) show that the
claims are not directed to “an idea of itself.” See Appeal Br. 27; Ans. 11
(“the inclusion of a computer (or hardware) in the claim of an abstract idea
does not necessarily preclude the classification as ‘an idea of itself”).
For these reasons, we are not apprised of error in the Examiner’s
determination that the claims at issue are directed to an abstract idea.
B. Second Step
As to the second step under the Supreme Court’s framework, the
Examiner stated (1) that “[t]he claims do not include additional elements that
are sufficient to amount to significantly more than the judicial exception
because the puzzle game is applied to generically recited computer
elements” and (2) that “[t]he generically recited computer elements do not
add a meaningful limitation to the abstract idea because they would be
routine in any computer implementation.” Final Act. 2.
First, Appellant argues that, in the Final Office Action and the
Advisory Action, the Examiner “fails to consider aU of the elements (and
their combination) that are required by the claims” and argues that “[t]his is
not a proper application of step 2 of Alice.” Appeal Br. 29. Appellant states
that “step 2 requires consideration of the ‘claim elements separately’ and ‘as
an ordered combination’” (quoting Alice, 134 S. Ct. at 2359) and argues that
“[t]he rejection fails on this fundamental inquiry and is instead merely a
broad conclusion that is completely divorced from the actual features
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required by the claims.” Appeal Br. 29. Appellant argues that “claim 1
requires significantly more than just ‘a puzzle game.’ For example, the two
‘responsive’ elements are ‘more than a drafting effort’ designed to
monopolize ‘puzzle games’ and are not general purpose computer
components.” Id. According to Appellant, “[tjhese additional features are
not ‘routine,’” but rather, “they are new and ‘substantially more’ than just a
generic puzzle game.” Id.
In the Answer, the Examiner states:
Claim 1 does not include additional elements that are
sufficient to amount to significantly more than the judicial
exception.
The examiner is unable to identity an improvement to
another technology or technical field. The claim does not recite
limitations that improve the functioning of the computer itself.
Claim 1 recites a non-transitory computer readable storage
medium, a computing system, a processor, a user input device,
and a display. These appear to be components of a general
purpose computer rather than a particular machine. There is no
transformation or reduction of a particular article to a different
state or thing. The limitations rather broadly describe receiving
user inputs, processing data, comparing the processed data to a
predetermined condition, and updating fields. These functions
are similar to those that the courts have recognized as being
well-understood, routine, and conventional functions (July 2015
Update [p. 7]). Instead, the claims recite limitations that are
well-understood, routine and conventional activities previously
known to the industry, specified at a high level of generality
and applied to a general purpose computer.
When looked at individually and as a whole, claim 1 is
determined to be an abstract idea without “significantly more,”
and thus not patent eligible.
Ans. 8; see also id. at 13 (“The claim limitations, when considered
separately or as an ordered combination, fail to recite limitations that quality
as ‘significantly more.’”).
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Appellant replies that “it is clear that the Answer (like the Final Office
Action and Advisory before it) has failed to perform the proper analysis
under step 2 of Alice.” Reply Br. 5. Appellant argues that the Examiner
provided (1) “no discussion of the specific combination — i.e., how two of
the elements are ‘responsive’ to the processed second input” (see clause E of
claim 1 as identified above), (2) “no discussion of the automatically updated
game field” (see clause G of claim 1), and (3) “no discussion of the
particular way in which the game piece is both changed in display form and
position” (see clauses E and F of claim 1). Id. at 6.
We are not apprised of error by this argument. The Examiner has, as
required under the second step of the Supreme Court’s framework,
considered the limitations of claim 1 “both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at
2355 (quoting Mayo, 132 S. Ct. at 1298, 1297). As to clauses E, F, and G
highlighted by Appellant, the Examiner states that the limitations in claim 1
“broadly describe receiving user inputs, processing data, comparing the
processed data to a predetermined condition, and updating fields” and that
“[tjhese functions are similar to those that the courts have recognized as
being well-understood, routine, and conventional functions.” Ans. 8 (citing
July 2015 Update, Subject Matter Eligibility at 7 (providing a list of
“computer functions” that “courts have recognized ... to be well-
understood, routine, and conventional functions when they are claimed in a
merely generic manner”)). Appellant asserts that clauses E through G,
“either individually, and especially in combination, are ‘significantly more’
than just a generic puzzle game” (Reply Br. 6), but does not explain why
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these clauses represent significantly more than implementing the abstract
idea on a general-purpose computer. See Alice, 134 S. Ct. at 2358 (stating
that “the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention”).
Second, Appellant argues: “In short, the scope of the claimed subject
matter is sufficiently specific that the preemption concern that ‘undergirds ’
35 U.S.C. § 101 jurisprudence is not an issue.” Appeal Br. 30. Appellant
asserts that “[t]he instant claims do not cover every general purpose
computer that implements a generic ‘puzzle game,” but rather, “as a result of
the specific and detailed technical features recited in the claims, there are
tangible assurances that the claims do not monopolize the alleged abstract
idea of a ‘puzzle game.’” Id.
The Supreme Court has stated that “patents that. . . integrate the
building blocks [of human ingenuity] into something more, [Jthereby
transform[ing] them into a patent-eligible invention . . . pose no comparable
risk of pre-emption, and therefore remain eligible for the monopoly granted
under our patent laws.” Alice, 134 S. Ct. at 2354—55 (citations and
quotations omitted). Although preemption “might tend to impede
innovation more than it would tend to promote it, ‘thereby thwarting the
primary object of the patent laws’” {id. at 2354 (citing Mayo, 132 S. Ct. at
1293)), “the absence of complete preemption does not demonstrate patent
eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1362—63 (Fed. Cir. 2015) (“[T]hat the claims do not preempt all
price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.”). Thus, that the
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claims here may recite “specific and detailed technical features” (Appeal Br.
30) does not demonstrate error in the determination that the claims are
directed to patent-ineligible subject matter.
Third, Appellant argues that the Examiner’s position “results in a de
facto ban on all process claims and computer related inventions (whether
related to games or not).” Reply Br. 2. We disagree. For the reasons
discussed above, we are not apprised of error in the Examiner’s analysis
under the Supreme Court’s framework. See also RecogniCorp, LLC v.
Nintendo Co., 855 F.3d 1322, 1326 (Fed. Cir. 2017) (stating, “[f]or example,
we have held that software patent claims satisfy Alice step one when they are
‘directed to a specific implementation of a solution to a problem in the
software arts, ’ such as an improvement in the functioning of a computer”
(quoting, Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1338—39 (Fed. Cir.
2016))).
Fourth, Appellant argues that “[djespite the unequivocal nature of the
express language of 35 U.S.C. § 100(b) and 35 U.S.C. § 101, according to
the Supreme Court, the broad scope of this language includes an implicit
exception where Taws of nature, natural phenomena, and abstract ideas’ are
not patent-eligible.” Reply Br. 7 (quoting Alice, 134 S. Ct. at 2354).
Appellant argues that “[wjhile not directly addressed by the Supreme Court
in Alice, exceptions to a more general statutory provision should be narrowly
applied in order to give full purpose and effect to the operation of the statute
at issue.” Id. Appellant argues that “given that the exception is judicially
created[,] it would be consistent for an even more narrow interpretation so
that the expressly provided statutory language may be given full effect” and
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that “[t]o do . . . otherwise risks swallowing all of patent law.” Id. (citing
Alice, 134 S. Ct. at 2354).
We are not apprised of error based on this argument. Although
Appellant asserts, for example, that “the Answer’s approach is in contrast to
existing precedent and runs the risk of having the subject matter eligibility
exception swallow the broader, statutorily provided rule” (Reply Br. 7), with
this discussion, Appellant does not specifically identify alleged error by the
Examiner. See id. at 6—7 (section with heading “Interpreting Alice”); see
also 37 C.F.R. § 41.37(c)(l)(iv) (“The arguments shall explain why the
examiner erred as to each ground of rejection contested by appellant.”).
For the reasons above, we sustain the rejection of independent claim
1. Claims 2—22 and 24—26 fall with claim 1.
DECISION
We affirm the decision to reject claims 1—22 and 24—26 under
35U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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