Ex Parte Hirosawa

Patent Trial and Appeal Board

Nov 29, 2017

13763046 (P.T.A.B. Nov. 29, 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.
13/763,046 02/08/2013 Teruyuki HIROSAWA RYM-723-3650 9955
27562 7590 12/01/2017
NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
LIDDLE, JAY TRENT
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
12/01/2017 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 TERUYUKI HIROSAWA
Appeal 2016-0051111
Application 13/763,0462
Technology Center 3700
Before BIBHU R. MOHANTY, BRUCE T. WIEDER, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
SCHOPFER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
2—8 and 10-22. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references the Appeal Brief (“Appeal Br.,” filed Nov. 2,
2015) and Reply Brief (“Reply Br.,” filed Apr. 12, 2016), and the
Examiner’s Answer (“Ans.,” mailed Feb. 26, 2016) and Non-Final Office
Action (“Non-Final Act.,” mailed Mar. 3, 2015).
2 According to Appellant, the real party in interest is NINTENDO CO.,
LTD. Appeal Br. 3.
Appeal 2016-005111
Application 13/763,046
BACKGROUND
According to the Specification:
The technology shown here relates to a storage medium
having stored therein a game program, a game apparatus, a
game system, and a game processing method, and in particular,
relates to a storage medium having stored therein having a
game program that, for example, controls the process of causing
an operation object to move so as to output a sound, and a game
apparatus, a game system, and a game processing method that,
for example, control the process of causing an operation object
to move so as to output a sound.
Spec. 11.
REPRESENATIVE CLAIM
Claim 2 is illustrative of the appealed claims and recites:
2. A non-transitory computer-readable storage medium
having stored therein a game program to be executed by a
computer of an apparatus for outputting a sound based on an
operation input, the game program, when executed, causing the
computer to at least:
receive a user input from an input unit coupled to the
apparatus;
in accordance with the user input, move an operation
object displayed on a display screen in a predetermined
movement-allowed range;
cause a plurality of sound objects to appear and move on
the display screen, the sound objects set for sounds to be output
in accordance with a composition to be performed; and
if the operation object and the displayed sound object
have made contact with each other on the display screen, output
a sound set for the sound object contacting the operation object,
wherein the sound to be output differs in accordance with a
position, in the operation object, with which each sound object
has made contact.
Appeal Br. 25.
2
Appeal 2016-005111
Application 13/763,046
REJECTION
The Examiner rejects claims 2—8 and 10—22 under 35U.S.C. § 101 as
directed to ineligible subject matter.
DISCUSSION
Claims 2, 5—8, and 10—22
In 2014, the Supreme Court decided Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 134 S. Ct. 2347 (2014). Alice applies a two-part framework, earlier set
out in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66
(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.
Under the two-part framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
part of the framework is applied to determine if “the elements of the
claim . . . contain[] an ‘inventive concept’ sufficient to ‘transform’ the
claimed abstract idea into a patent-eligible application.” Id. at 2357 (citing
Mayo, 566 U.S. at 72-73, 79).
Under step one of the two-part framework, the Examiner finds that the
claims are directed “to an abstract idea of an idea of itself.” Non-Final
Act. 4. The Examiner also determines that the limitations of claim 2 are
directed to comparing new and stored information and using rules to identify
options. Ans. 3.
Appellant first argues that the claims “do not recite a basic concept
that is similar to any abstract concept previously identified by the courts.”
Appeal Br. 14. Appellant also argues that the claims include physical and
3
Appeal 2016-005111
Application 13/763,046
tangible components “that are directed to more than performance of an
abstract idea.” Id. at 15. Appellant asserts that the claims are not “capable
of being ‘performed mentally’ nor are they the ‘equivalent of human mental
work.’” Id. And Appellant argues that the claims are not abstract because
they “have a clear concrete and tangible form.” Id. at 16.
Under part one of the Alice framework, 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. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Electric
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
Thus, while we consider the claim as a whole, the “directed to” inquiry
focuses on the claim’s “character as a whole.”
In this case, the Specification discloses that the invention is directed to
a game system and program that “controls the process of causing an
operation object to move so as to output a sound.” Spec. 11. Claim 2
recites a computer-readable storage medium including a game program that
executes the steps of “receiv[ing] a user input;” moving “an operation
object” on a display “in accordance with the user input;” causing “sound
objects to appear and move on the display;” and outputting “a sound set for
the sound object contacting the operation object.”
We agree with the Examiner that claim 2’s character as a whole is
directed to an abstract idea in and of itself. Specifically, the claim is
directed to the abstract concept of determining whether to output a sound set
using an algorithm based on when two objects contact each other on a
display. We are not persuaded that the claims are any less abstract here
because the steps cannot be performed mentally, as argued by Appellant,
4
Appeal 2016-005111
Application 13/763,046
because the claim is directed to the abstract idea of determining whether to
output a sound set. Appeal Br. 14—15. We are also not persuaded that the
claims are not directed to an abstract idea because they “have a clear
concrete and tangible form” because the claim steps require user input, the
use of a display, and outputting sound. Id. at 16. The presence of these
claim requirements do not make the character of the claim as a whole any
less abstract, i.e. the character of the claim as a whole is directed to
outputting sound when one object contacts another and an algorithm for
outputting a sound when a user contacts one object with another.
We find the claims here are analogous to those found ineligible in
Electric Power. See Electric Power Group, LLC v. Alstom S.A., 830 F.3d
1350 (Fed. Cir. 2016). In Electric Power, the method claims at issue were
directed to performing real-time performance monitoring of an electric
power grid by collecting data from multiple data sources, analyzing the data,
and displaying the results. Electric Power, 830 F.3d at 1351—52. The
Federal Circuit held that the claims were directed to an abstract idea,
explaining that “[t]he advance they purport to make is a process of gathering
and analyzing information of a specified content, then displaying the results,
and not any particular assertedly inventive technology for performing those
functions.” Id. at 1354. And, the Federal Circuit noted, “we have treated
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.” Id. (citations omitted). Similarly,
claim 2 is directed to gathering position information for objects on a screen,
analyzing that information to determine if contact occurs, and displaying
such contact and playing a sound when such contact occurs.
5
Appeal 2016-005111
Application 13/763,046
In view of the above, we are not persuaded that the Examiner erred in
determining that the claims are directed to an abstract idea.
We next look to part two of the Alice framework which has been
described “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, 134 S. Ct. at 2355 (citingMayo, 566 U.S. at 72—73).
Alice instructs us to consider “the claim elements separately” and “‘as an
ordered combination.’” Alice, 134 S. Ct. at 2359.
Appellant argues that “the subject matter of Appellant’s claims
provides a technical solution to a technical problem.” Appeal Br. 17.
Specifically, Appellant argues that “the combination of claimed features is
directed to solving problems related to enjoying a music game by an easy
operation.” Id. Additionally, Appellant argues that the “claims recite
specific physical elements which indicate a concrete device.” Id. at 18.
Finally, Appellant argues that “there is no per se prohibition against the
patenting of video games.” Id. at 20.
We are not persuaded of reversible error.
“Taking the claim elements separately, the function performed by the
[processor] at each step of the process is ‘[p]urely conventional.’” Alice,
134 S. Ct. at 2359 (citing Mayo, 566 U.S. at 79). Using a processor to, e.g.,
track an input, display objects, and match data or check for contacts are all
basic functions of a processor. And considered as an ordered combination,
there is nothing added that is not already present when the steps are
considered separately. The claims do not, for example, purport to improve
the functioning of the processor itself. Nor do they effect an improvement in
6
Appeal 2016-005111
Application 13/763,046
any other technology or technical field. Instead, the claims at issue amount
to nothing significantly more than an instruction to apply the abstract idea
using an unspecified, generic processor. That is not enough to transform an
abstract idea into a patent-eligible invention. Alice, 134 S. Ct. at 2360. In
particular, with respect to Appellant’s argument that the claims provide a
technical solution to a technical problem, Appellant does not adequately
explain why claim 2, for example, provides solutions for “problems related
to enjoying a music game by an easy operation.” Further, regarding the
argument that the claims recite physical elements and a concrete device, we
are not persuaded that this fact alone elevates the claims to eligibility as the
claims do no more than recite generic computer equipment for the
implementation of the abstract idea. And finally, we are not persuaded by
Appellant’s argument that there is no per se prohibition against patenting
video games because, although true, the claims have not been rejected
simply because they are directed to a video game.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 2 under § 101. Claims 5—8 and 10-22 are not separately argued with
regard to this rejection and, therefore, fall with claim 2. See 37 C.F.R.
§ 41.37(c)(l)(iv). Accordingly, we sustain the rejection of claims 2, 5—8,
and 10—22.
Claims 3 and 4
Appellant provides separate arguments with respect to dependent
claims 3 and 4. Appeal Br. 22—24. However, Appellant relies on arguments
here that are unpersuasive for the reasons provided above. In particular,
Appellant argues that each or claims 3 and 4 recite physical and tangible
components or performing operations related to physical and tangible
7
Appeal 2016-005111
Application 13/763,046
components. Id. We are not persuaded of reversible error because the
components do not add significantly more the abstract idea under step two of
the Alice framework, i.e. the physical components cited are generic
computer components, such as a pointing device, that are used in a
conventional manner in the claims.
Accordingly, we are not persuaded of reversible error and we sustain
the rejection of claims 3 and 4.
CONCLUSION
We AFFIRM the rejection of claims 2—8 and 10—22.
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
8