Ex Parte Potkonjak

Patent Trial and Appeal Board

Jan 10, 2018

12541940 (P.T.A.B. Jan. 10, 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.
12/541,940 08/15/2009 Miodrag POTKONJAK US-410343-01-US-REG 4495
89828 7590
Turk IP Law, LLC
c/o Allied Inventors, LLC
111 East Broadway
Suite 725
Salt Lake City, UT 84111
EXAMINER
GRANT, MICHAEL CHRISTOPHER
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
01/12/2018 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIODRAG POTKONJAK
Appeal 2016-008373
Application 12/541,940
Technology Center 3700
Before LISA M. GUIJT, PAUL J. KORNICZKY, and
BRENT M. DOUGAL Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-008373
Application 12/541,940
STATEMENT OF THE CASE
Appellant Miodrag Potkonjak1 appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision, as set forth in the Final Office Action dated August
7, 2015 (“Final Act.”), rejecting claims 1, 2, 5—9, 11—17, and 19-21 under
35 U.S.C. § 101 because the claimed invention is directed to patent
ineligible subject matter: an abstract idea of a method of organizing human
activity.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claims are directed to a “cyber-physical game.” Spec. 1. Claims
1, 8, and 16 are the independent claims on appeal. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method for modeling an actual sports game involving a first
player in a cyber-physical game involving a second player with
a computing device, the method comprising:
receiving, by the computing device, a first set of data
collected by one or more sensors in a first game space from the
actual sports game at a first time as the actual sports game is
being played in the first game space, wherein the first set of data
is associated with a first set of events in the actual sports game,
and the first set of data include at least one of a first
environmental condition, a first movement data, and a first
acceleration data in the actual sports game;
generating, by the computing device, a first modeled event
in the cyber-physical game based on the first set of data and a
first objective associated with the first modeled event;
1 Appellant identifies Empire Technology Development LLC as the real
party in interest. Appeal Brief, dated February 28, 2016 (“Appeal Br.”), at 3.
2 Claims 3,4, 10, 18, and 22 are cancelled. Appeal Br. 13—18 (Claims
App.).
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Application 12/541,940
receiving, by the computing device, a second set of data as
the cyber-physical game is being played in a second game space,
wherein the second set of data include at least one of a second
environment condition, a second movement data, and a second
acceleration data in the cyber-physical game;
evaluating, by the computing device, the second set of data
in view of the first objective to generate a score and to determine
whether to continue the cyber-physical game as the actual sports
game is being played; and
if the cyber-physical game is determined to be continued,
receiving, by the computing device, a third set of
data collected by the one or more sensors in the first game
space from the actual sports game at a second time,
wherein the third set of data is associated with a second set
of events in the actual sports game, and the third set of data
include at least one of a third environment condition, a
third movement data, and a third acceleration data in the
actual sports game; and
generating, by the computing device, a second
modeled event in the cyber-physical game based on the
third set of data and a second objective associated with the
second modeled event, wherein the second time is later
than the first time, and the first set of events and the second
set of events are not continuous in the actual sports game,
wherein no modeled event in the cyber-physical game is
generated based on data collected by the one or more
sensors in the first game space from the actual sports game
between the first time and the second time.
DISCUSSION
Appellant presents arguments specifically addressing independent
claim 1. Appeal Br. 7—12. Other than arguing that independent claims 8 and
16 recite substantially similar elements as claim 1 and claims 2, 5—7, 9, Il­
ls, 17, and 19—21 depend from independent claims 1, 8, and 16, Appellant
does not present separate arguments regarding these claims. Thus, claims 2,
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Application 12/541,940
5—9, 11—17, and 19-21 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
The Supreme Court 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. CLS Bank Inti, 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, the first step is to
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 the
claims are directed to a patent-ineligible concept, the second step in the
analysis to “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.
(alteration in original). To transform an abstract idea into a patent-eligible
concept, the claims require “more than simply stating the abstract idea while
adding the words ‘apply it.’” Id. at 2357 (citations omitted).
The First Step in the Alice Analysis
For the first step in the Alice analysis, the Examiner finds that
independent claim 1 is directed to an abstract idea “in the form of a method
of organizing human activity,” and specifically to “a method of conducting a
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game.” Answer, dated July 18, 2016 (“Ans.”), at 4—5; see also Final Act. 2,
4. The Examiner finds that the claimed method for modeling an actual
sports game is similar to the claimed method of managing a bingo game
found to be an abstract idea in Planet Bingo, LLC v. VKGS LLC, 576 Fed.
Appx. 1005, 1007-08 (Fed. Cir. 2014) (non-precedential) and the claimed
rules for playing games found to be an abstract idea in In re Smith, 815 F.3d
816, 819 (Fed. Cir. 2016). Ans. 4.
Appellant argues that the Examiner’s finding is erroneous because
“the phrase ‘certain method of organizing human activity’ is used to describe
‘concepts relating to interpersonal and intrapersonal activities’” and “the
recited process in claim 1 is not related to interpersonal and intrapersonal
activities and should not be equated to mere organizing human activity.”
Appeal Br. 10. Appellant also suggests that Planet Bingo stands for the
proposition that only “a game consisting solely of mental steps which can be
carried out by a human using pen and paper is patent-ineligible.” Reply
Brief, dated August 30, 2016 (“Reply Br.”), at 7.
According to Appellant, claim 1 “recites a method for modeling an
actual sports game with a computing device in a cyber-physical game as the
actual sports game is being played.” Reply Br. 6. It involves, among other
things, receiving a first set of data in a first game space from an actual sports
game, generating a first modeled event and a first objective based upon the
first set of data, receiving a second set of data in a second game space, and
evaluating the second set of data in view of the first objective to generate a
score and determine whether to continue the cyber physical game. Appeal
Br. 13 (Claims App.). The Federal Circuit has held that claims directed to
managing a game of bingo is an abstract idea. See Planet Bingo, 576 Fed.
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Application 12/541,940
App’x. at 1005. Claim 1 is similarly directed to a method of organizing
human activity in the form of managing a game or competition, e.g.,
determining a score by comparing and evaluating the first and second data.
Appellant also argues that “claim 1 requires the collection of data, the
evaluation of the collected data and objectives, and the generation of
modeled events at different points in time” (Appeal Br. 11), and human
minds are unable to process the data collected by the recited sensors {id. at
10-11). However, the Federal Circuit has held that the “concept of data
collection, recognition, and storage is undisputably well-known. Indeed,
humans have always performed these activities.” Content Extraction and
Transmission LLC v. Wells Fargo Bank, Nat. Ass ’n, 776 F.3d 1343, 1347
(Fed. Cir. 2014). “There is no ‘inventive concept’ in [the] use of a generic
scanner and computer to perform well-understood, routine, and conventional
activities commonly used in industry.” Id. at 1348. Like in Content
Extraction, the data collection and evaluation features of claim 1 are well
known and routinely performed by humans. Further, nothing in the claims
requires more than computer implementation of well-understood, routine
data processing techniques.
In sum, we are not apprised of error in the Examiner’s determination
that the subject matter of claim 1 constitutes an abstract idea directed to a
method of organizing human activity and rules for a game.
The Second Step in the Alice Analysis
For the second step in the Alice analysis, the Examiner finds that
[t]he additional element(s) or combination of elements in the
claims other than the abstract idea per se amount to no more
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Application 12/541,940
than: (i) mere instructions to implement the idea on a computer,
and/or (ii) recitation of generic computer structure that serves to
perform generic computer functions that are well-understood,
routine, and conventional activities previously known to the
pertinent industry.
Final Act. 3. More specifically, the Examiner finds that the claimed
computing device and sensors recited in claim 1 “are generic, well-known,
and conventional and thereby do not amount to significantly more than the
claimed abstract idea” and “[ejmploying a computer, e.g., to, as claimed,
receive data, make some determinations based on that data, then provide an
output based on those determinations are all generic, well-known, and
conventional functions.” Id. at 4.
Appellant argues that the Examiner’s finding is erroneous for several
reasons. First, Appellant argues that “claim 1 is tied to a particular machine”
— the recited “computing device” — that transforms the claim into patent-
eligible subject matter. Appeal Br. 7. According to Appellant,
the recited computing device is at least configured to receive
two different set of data (i.e., first set of data and second set of
data) as two different games (i.e., the actual sports game and
cyber-physical game) are being played at two different spaces
(i.e., first game space and second game space). In addition, the
computing device of claim 1 is also configured to interact with
the recited one or more sensors in one game space (e.g., the first
game space).
Id.
We agree with the Examiner that the claimed abstract idea
implemented using generic computing devices (e.g., computers) and sensors
“is not sufficient to save the patent under the machine prong of the machine-
or-transformation test.” Ans. 3 (citing Ultramercial v. Hulu, 772 F.3d 709,
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Application 12/541,940
716—17 (Fed. Cir. 2014)). The elements of a “computing device” and
“sensors” as recited in claim 1 are generic components that are well-
understood, routine, and conventional in the computer industry. These
elements function in a conventional manner to execute program instructions
and operations. See Alice, 134 S. Ct. at 2359—60 (holding patent-ineligible
claims that “amount to nothing significantly more than an instruction to
apply the abstract idea . . . using some unspecified, generic computer” and in
which “each step does no more than require a generic computer to perform
generic computer functions”) (internal quotations marks, citation omitted).
The fact that these generic computer functions are applied to a particular
game is not sufficient to circumvent the prohibition against patenting an
abstract idea. See Bilski v. Kappos, 561 U.S. 593, 610-11 (2010).
Second, Appellant argues that “the recited transformation from the
different sets of collected data to the different modeled events is sufficient to
transform the process recited in claim 1 into a patent-eligible application.”
Appeal Br. 8. We agree with the Examiner that claim 1 uses generic sensors
to capture electronic input data, and then use a conventional computing
device to generate output data and evaluate that data and make certain
decisions based upon that input data. In Ultramercial, the Federal Circuit
held that “[a]ny [data] transformation from the use of computers or the
transfer of content between computers is merely what computers do and
does not change the [machine or transformation test] analysis.” Ans. 6
(citing Ultramercial, 772 F.3d at 717). In other words, transforming
electronic data is simply what general purpose computers do when they
execute computer programs.
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Third, Appellant argues that, when claims 1, 8, and 16 are considered
as an “ordered combination,” the use of a conventional sensor or computing
device is patent eligible because the claims include a “physical
transformation.” Appeal Br. 9-10. As discussed above, the claimed abstract
idea implemented using generic computing devices (e.g., computers) and
sensors is not saved by the machine-or-transformation test.
Fourth, Appellant argues that at least one feature of claim 1 “is an
improvement to computer functionality” and is not “directed an abstract
idea.” Reply Br. 6 (citing Enfish LLC v. Microsoft Corp., 822 F.3d 1327,
1335—36 (Fed. Cir. 2016). Appellant argues that
while the data in the first game space from the actual sports game
is collected by one or more sensors between the first time and the
second time, the recited computing device does not generate any
modeled event in the cyber-physical game based on the collected
data within this specific time period. By not further processing
a specific set of data collected in the specific time frame (e.g.,
between the first time and the second time) and generating a
modeled event according to the specific set of data, the claim
covers an novel approach of facilitating the interactions between
the events from the actual sports game occurring in the first game
space and the modeled events generated by the computing device
in the second game space. Intelligently managing data in
different game spaces is clearly an improvement in the field of
computer gaming technologies. In addition, by not
indiscriminately processing the data (e.g., at least one of a first
environmental condition, a first movement data, and a first
acceleration data in the actual sports game) collected by the one
or more sensors to generate modeled events, the recited
computing device instead intelligently allocates the limited
resources within the specific time frame, further improving the
functionality of the computing device. These improvements to
computer functionality itself should not be downplayed, and
therefore, claim 1 is not directed to an abstract idea.
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Reply Br. 6—7.
We disagree. Neither the Specification (see, e.g., Spec. 35—46) nor
claim 1 purport to improve the functioning of the computer system itself or
overcome a problem arising in the realm of computer networks. The
problem with which the claims are concerned is the management and
“modeling” of a cyber-game. Claim 1 merely applies rules for a cyber­
game, using generic computers and sensors. See, e.g., Spec. ]Hf 35—46. In
our view, there is no indication that the elements recited in the claims
produce “an improvement to computer functionality itself.” Enfish, 822
F.3d at 1336.
Appellant’s arguments do not persuasively identity any error in the
Examiner’s conclusion that the claims do not amount to anything more than
implementation of the abstract idea on a general purpose computer. In sum,
we are not apprised of error in the Examiner’s determination that the
elements of claim 1, both individually and as an ordered combination,
transform the nature of the claim into a patent-eligible application.
For the reasons above, the Examiner’s rejection of claim 1 is
sustained. Claims 2, 5—9, 11—17, and 19-21 fall with claim 1.
DECISION
For the above reasons, the Examiner’s rejection of claims 1, 2, 5—9,
11-17, and 19-21 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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