Ex Parte Herbrich et al

Patent Trial and Appeal Board

Jul 12, 2018

11869165 (P.T.A.B. Jul. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/869, 165 10/09/2007
69316 7590 07/16/2018
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
FIRST NAMED INVENTOR
Ralf Herbrich
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.
321463.01 2496
EXAMINER
GARNER, WERNER G
ART UNIT PAPER NUMBER
3714
NOTIFICATION DATE DELIVERY MODE
07/16/2018 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):
usdocket@microsoft.com
chriochs@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RALF HERBRICH, THORE GRAEPEL, THOMAS MINKA,
and PIERRE DANGAUTHIER
Appeal2016-006604
Application 11/869, 165
Technology Center 3700
Before PHILIP J. HOFFMANN, BRADLEY B. BAY AT, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-7, 11-17, and 19 under 35 U.S.C. § 101 as
directed to § 101 as directed to non-statutory subject matter. 3 We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
1 Throughout this decision, we refer to the Appellants' Appeal Brief
("Appeal Br.," filed Dec. 14, 2015), Reply Brief ("Reply Br.," filed June 21,
2016), and Specification ("Spec.," filed Oct. 9, 2007), and to the Examiner's
Answer ("Ans.," mailed Apr. 21, 2016) and Final Office Action ("Final
Act.," mailed Apr. 14, 2015).
2 According to the Appellants, the real party in interest is "Microsoft
Techonology [sic] Licensing, LLC." Appeal Br. 1.
3 The Appellants requested an oral hearing, but waived appearance at the
hearing that was scheduled for July 3, 2018. See Waiver (May 15, 2018).
Appeal 2016-006604
Application 11/869, 165
STATEMENT OF THE CASE
The Appellants' invention relates to "[a] process for determining
relative player skills and draw margins." Spec. ,r 5.
Claims 1, 12, and 19 are the independent claims on appeal. Claim 1
(Appeal Br. 23 (Claims App.)) is illustrative of the subject matter on appeal,
and is reproduced below:
1. A computer-implemented method comprising:
receiving, for each of a plurality of players, a time series
of skill statistics associated with a distribution representing a
belief about a skill of that player, wherein the time series
separates a period of time into time intervals and the time series
includes an ordered sequence of mean and standard deviation
value pairs representing the skill belief for that payer for the
respective time intervals;
for each time interval within the time series for each
player, receiving, via a server, information about a plurality of
game outcomes;
within each time interval for each player, updating the skill
statistics based at least in part on the information about the
plurality of game outcomes within the given time interval;
within each time interval for each player, updating the
statistics based at least in part on skill statistics in a forward time
interval and a backward time interval; and
receiving a request from a game environment and, in
response to the request, matching two or more of the plurality of
players, the matching being based at least in part on the skill
statistics associated with the players.
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ANALYSIS
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLSBankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 588-89
(2013)).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 78-79 (2012), "for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts." Alice, 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. ( citing
Mayo, 566 U.S. at 79) (emphasis added). If so, the second step is to
consider the elements of the claims "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,
566 U.S. at 78-79).
Alice/Mayo Step One
The step-one analysis requires us to consider the claims "in their
entirety to ascertain whether their character as a whole is directed to
excluded subject matter." Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015). The Court acknowledged in Mayo,
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that "all inventions at some level embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S. at 71.
The question is whether the claim as a whole "focus[ es] on a specific means
or method that improves the relevant technology," or is "directed to a result
or effect that itself is the abstract idea and merely invoke generic processes
and machinery." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299, 1314 (Fed. Cir. 2016). We, therefore, look to "whether the focus of
the claims is on [a] 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." Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016).
Under the first step of the Alice/Mayo framework, the Examiner
determines that the claims are directed to "determining relative player skills
and draw margins" (Final Act. 2), a method of organizing human activity,
and an idea of itself (id. at 3). The Appellants similarly contend that the
claims are directed to "determining a player skill level using a specific
process and matching players based upon that skill level" (Appeal Br. 14,
15, 16), but argue that this is not an abstract idea (see id. at 13-21).
Claim 1 provides for a "computer-implemented method comprising"
the steps of receiving data of a time series of skill statistics, receiving via a
server data/information of a plurality of game outcomes, updating the skill
statistics data based on the game outcomes data and the skill statistics data in
forward and backward time intervals, receiving data of a request, and
matching players based in part on the skill statistics of the players. See
Appeal Br. 23. Claim 12 provides for a memory to configure a computer to
execute the functions of receiving date of timer series of game outcomes and
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skill belief statistics, updating the data of statistics, and matching players
based on the updated skill statistics data. See id. at 25. Claim 19 provides
for a memory to configure a computer to perform the functions of setting a
time series, receiving data of skill statistics, updating the skill statistics based
on game outcome data, and matching players based on the updated skill
statistics data. See id. at 26-27. The players "can be human players or
computer programs." Spec. ,r 1. Time series and game outcome data are set
and received by "access[ing]" the data. Id. ,r,r 47, 48 (cited in Appeal
Br. 4, 5, 6). The apparatus for providing skill belief statistics has two inputs,
a memory, a processor, and an output (id. ,r 53), and can be stored in a "data
store" (id. ,r 99). The updating comprises determining and weighting
probabilities and averaging. See id. ,r 15 ( cited in Appeal Br. 5). The
matching uses "Bayesian statistical techniques have previously been used to
determine indications of player relative skill," as described in patent
US 7,050,868, issued May 23, 2006. See id. ,r 9 (cited in Appeal Br. 5). The
method is implemented by "any form of a computing and/or electronic
device, and in which embodiments of a system for estimating skills and/or
draw margins of players may be implemented." Id. ,r 96. The computing
device comprises inputs for receiving content and information (id. ,r 97),
processor(s) (id. ,r 98), and an output (id. ,r 100), and is "any device with
processing capability such that it can execute instructions" that includes
"PCs, servers, mobile telephones, personal digital assistants and many other
devices (id. ,r 101 ).
As such, we find supported the Examiner's determination that the
claims are directed to determining relative player skills and draw margins.
However, even if we accept the Appellants' characterization of the claims,
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determining a player skill level using a specific process of receiving and
updating data and matching players based upon that determined skill level is
akin to ideas deemed abstract by our reviewing courts. 4 See Electric Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (a process of
gathering and analyzing information of a specified content and displaying
the result); Planet Bingo, LLC v. VKGS LLC, 576 F. App'x 1005, 1007---08
(Fed. Cir. 2014) (process of managing the game of bingo by "selecting,
storing, and retrieving two sets of numbers, assigning a player identifier and
a control number, and then comparing a winning set of bingo numbers with
a selected set of bingo numbers" that not only could be "'carried out in
existing computers long in use,' but they also [could] be 'done mentally'"
(quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Here, the claims
involve nothing more than receiving and updating data and
matching/determining data based on the received and updated data without
any particular inventive technology- an abstract idea. See Electric Power,
830 F.3d at 1354.
As such, we find unpersuasive the Appellants' arguments that the
claim are not directed to an abstract idea because they are not directed to any
method of organizing human activities provided in the "July 2015 Update"5
(Appeal Br. 13-17), a mathematical formula (id. at 17-19), or an idea of
itself (id. at 19-20), as defined in the July 2015 Update. See also Reply
4 See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016)
("An abstract idea can generally be described at different levels of
abstraction.").
5 July 2015 Update: Subject Matter Eligibility, available at
https://www.uspto.gov/sites/default/files/ documents/ieg-july-2015-
app 1.pdf (hereinafter "July 2015 Update").
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Br. 4--5, 7-10. We note that abstract ideas are not restricted to the non-
limiting examples provided in the July 2015 Update.
The Appellants' reliance on Example 26 of Appendix I of the July
2015 Update (id. at 17-19) is misplaced. In that hypothetical example, the
claims described "an internal combustion engine having manifolds, valves,
and sensors forming a specific structure that uses the control system to
optimize exhaust gas recirculation." July 2015 Update 20. Here, there is no
such recited structure that is altered by or uses the updated data.
That "[p ]racticing this method results in real world consequences; not
merely a thought" (Appeal Br. 20) and that the claims recite "real word
devices and operating them results in real world consequences; not merely a
thought" (id.) do not change that the claims are directed to an abstract idea.
The mere recitation of a practical application for an abstract idea is
insufficient to transform the abstract idea into a patent-eligible invention.
Cf CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed.
Cir. 2011) ("The Court [in Parker v. Flook, 437 U.S. 584 (1978)] rejected
the notion that the recitation of a practical application for the calculation
could alone make the invention patentable.").
Thus, we are not persuaded of error in the Examiner's determination
that the claims are directed to an abstract idea.
Alice/Mayo Step Two
The second step is to "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, 134 S. Ct. at 2355 (alteration in original)
(quoting Mayo, 566 U.S. at 72-73).
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Under the second step of the Mayo/Alice framework, we agree with
and find supported the Examiner's determination that the elements of
independent claims 1, 12, and 19, and their dependent claims, individually or
as an ordered combination, do not amount to significantly more than the
abstract idea. See Final Act. 3; Ans. 5. We not persuaded by the
Appellants' arguments to the contrary. See Appeal Br. 9-13.
We disagree that the claims recite a method or machine using or
having "a physical sensor used to detect and measure a real-world condition
(e.g., player skill) of a real-world subject (players)." Appeal Br. 9, 10, 12;
see also Reply Br. 3--4. The claims do not recite detecting or measuring
information, much less using or having any such sensor. And, the Examiner
properly considered the claims at issue in light of the Specification. See
Alice, 134 S. Ct. at 2355. Further, nowhere does the Specification discuss or
make mention of detecting or measuring information using a physical
sensor. The Specification discusses a first input that is an interface to a
database or memory storing time series of skill belief information (Spec.
,r 53), a second input for receiving outcome information (id.), "access[ing]"
time series of skill belief statistics (id. ,r 47), and "computing-based
device 2100" for implementing the method comprising "any form of a
computing and/or electronic device" (id. ,r 96) comprising inputs,
processors, and an output (id. at ,r,r 97-100), i.e., a general purpose
computer. There is no further description or mention of the inputs
comprising sensors. Morevoer, the Appellants envisioned that players can
be computer programs (id. ,r 1 ); it is not known or discussed how sensors
would measure and detect real-world conditions in a computer program
player.
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The Appellants' reliance on Example 25 of Appendix I of the July
2015 Update (id. at 9--12; see also Reply Br. 4--5) is misplaced. That
hypothetical example is based on Diamond v. Diehr, 450 U.S. 175 (1981),
which involved the use of mathematical equations in operation of a rubber
molding press to cure raw rubber into a product that retains its shape. In
Diamond, the claimed invention improved the operation of a rubber molding
press by taking measurements, and feeding those measurements into a digital
computer that repeatedly recalculates the cure time based on the Arrhenius
equation, resulting in a transformation of raw rubber to a molded, rubber
product. Diamond, 450 U.S. at 177-179, 184. The Appellants contend that
the claims here similarly "tak[ e] an action to match players based on the
calculations." Appeal Br. 10, 11, 12. However, merely taking a manual,
mental, or computer-implemented action is not transforming the data from
one form to another, such as a molded product, and is not patent eligible, as
the Supreme Court made clear in Gottschalk, 409 U.S. at 71-72. In contrast
to the situation in Diamond, applying the Appellants' claimed steps (e.g.,
receiving and updating data, and matching players/ data based on the data)
does not result in any analogous transformation of matter from one state
(i.e., raw rubber) to another (i.e., a molded product). We determine the
Appellants' claims to be more analogous, instead, to the process claim
deemed patent-ineligible in Gottschalk.
We are not persuaded by the Appellants' argument (Reply Br. 5---6)
that the Examiner's comparison of the present claims to those at issue in
Parker v. Flook (Ans. 4--5) is inapposite. The claims' updating and
matching by weighting probabilities, averaging data, and using Bayesian
statistical techniques (see Spec. ,r,r 9, 15) are not dissimilar to Parker's use
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of a mathematical algorithm based on weighting and averaging data to adjust
a setting at least because both use mathematical algorithms/calculations to
perform some conventional post-solution activity. See Parker, 437 U.S. at
591-94.
In response to the Appellants' argument that the claims "do[] not
preempt all methods of determining player skills and making matches, nor
do[] [they] preempt all uses of the specific process claimed for determining
player skills" (Appeal Br. 10, 11, 13), we note that although the Supreme
Court has described "the concern that drives this exclusionary principle [i.e.,
the exclusion of abstract ideas from patent eligible subject matter] as one of
preemption" (see Alice, 134 S. Ct. at 2354), characterizing preemption as a
driving concern for patent eligibility is not the same as characterizing
preemption as the sole test for patent eligibility. "The Supreme Court has
made clear that the principle of preemption is the basis for the judicial
exceptions to patentability" and "[ fJor this reason, questions on preemption
are inherent in and resolved by the § 101 analysis." Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice,
134 S. Ct. at 2354). Although "preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility." Id.
For these reasons, the Examiner did not err in determining that the
claims fail to recite significantly more than the abstract idea.
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Additional Arguments
In the Reply Brief, the Appellants, citing to the guidance issued May
2016 in the form of a Memo, 6 newly argue that the Examiner ( 1) "only
provides an explanation of the rejection of independent Claim 1 and notes
that the explanation applies equally to independent Claims 12 and 19. No
explanation has been provided, either in an Office Action or in the Answer
regarding the rejection of any dependent claims" (Reply Br. 2), (2) in "the
Answer repeatedly relies on broad, sweeping statements regarding eligibility
without identifying the idea as recited in the claim[s]" (id.), (3) "fail[s] to
point to any court decisions, and those that do simply rely on the
exceedingly brief summaries" (id.), ( 4) does not provide a "claim-to-claim
comparison" to claims deemed abstract in previous court decisions (id. at 3),
and (5) improperly describes the claims "at a high level of generality" (id.
at 7). The May Memo did not alter the requirements for the Examiner, but
provided additional guidance on how the Examiner should formulate a
rejection under§ 101. May Memo 1. We note that these arguments
regarding the Examiner's alleged lack of explanation, "broad, sweeping
statements," failure to cite court decisions, failure to state a claim to claim
comparison, and improper description of the claims were not raised in the
Appeal Brief, are not responsive to an argument in the Examiner's Answer,
6 USPTO Memorandum "Formulating a Subject Matter Eligibility Rejection
and Evaluating the Applicant's Response to a Subject Matter Eligibility
Rejection, dated May 4, 2016, issued after the Examiner's Answer)
(hereafter "May Memo"), available at
https://www.uspto.gov/sites/default/files/documents/ieg-may-2016-
memo. pdf.
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and good cause has not been shown for making these new arguments. See
37 C.F.R. § 41.41(b)(2). Thus, we do not consider these arguments.
However, we do note that there is no specific requirement that each
claim be examined individually by the Examiner in determining that the
claims are directed to an abstract idea. See Alice, 134 S. Ct. at 2355-57
(addressing the claims together). Nor is there a specific requirement that the
comparisons to prior court decisions must consist of a certain minimum
number of sentences. See Amdocs (Israel) Ltd. V. Openet Telecom, Inc., 841
F.3d 1288, 1294 (Fed. Cir. 2016) ( explaining that there is not a single test
for what an abstract idea encompasses, and courts instead "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").
We also note that the Examiner includes the dependent claims in the
heading of the rejection (Final Act. 2) and the analysis (id. at 2-3). There is
no indication that the Appellants were not put on notice of the Examiner's
rejection regarding the dependent claims, or that the rejection otherwise
failed to satisfy the requirements of 35 U.S.C. § 132. And, the Appellants
do not provide separate arguments for the dependent claims.
Further, we note that in rejecting the pending claims under § 101, the
Examiner analyzes the claims using the Mayo/Alice two-step framework.
Specifically, the Examiner looks to the language of the claims, determines
that the claims are directed to the abstract idea as indicated above, and cites
to and compares the claims to those deemed abstract in prior court decisions.
See Final Act. 2; Ans. 10, 12-13. The Examiner further determines that the
additional elements of the claims, taken alone and as an ordered
combination, do not ensure that the claims amount to significantly more than
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the abstract idea, and cites to and compares the claims to those deemed to
not amount to significantly more than the abstract idea. See Final Act. 3;
Ans. 4--7. Thus, the Examiner has articulated and explained the reasons for
the rejection, and has notified Appellants of the reasons for the rejection
"together with such information and references as may be useful in judging
of the propriety of continuing the prosecution of [the] application."
35 U.S.C. § 132.
Based on the foregoing, we are not persuaded that the Examiner erred
in rejecting claims 1-7, 11-17, and 19 under 35 U.S.C. § 101, and, therefore,
we sustain the rejection.
DECISION
The Examiner's rejection of claims 1-7, 11-17, and 19 under
35 U.S.C. § 101 is AFFIRMED.
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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