Ex Parte Vaioli et al

Patent Trial and Appeal Board

Jan 30, 2018

13902349 (P.T.A.B. Jan. 30, 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.
13/902,349 05/24/2013 Roberto Vaioli 4222-40007 4592
25570 7590 02/01/2018
Roberts Mlotkowski Safran Cole & Calderon, P.C.
7918 Jones Branch Drive
Suite 500
McLean, VA 22102
EXAMINER
PIERCE, WILLIAM M
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
02/01/2018 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):
lgallaugher@rmsc2.com
docketing@rmsc2.com
secretaries @ rmsc2. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERTO VAIOLI, SAMUEL R. NAMALA, MASSIMO
BARALDI, FRANK G. KOVACH, TOMMASO PARISI, KELLY J.
WILBAR, and NEIL S. PENNINGTON
Appeal 2016-007539
Application 13/902,349
Technology Center 3700
Before LYNNE H. BROWNE, THOMAS F. SMEGAL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s
rejections2 of claims 1-20: (a) under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter in reciting instructions
and guidelines pertaining to how one should act in the event of an
1 Appellant is the Applicant, QUBICAAMF EUROPE S.P.A., which,
according to the Appeal Brief, is the real party in interest. Appeal Br. 2.
2 Appeal is taken from the adverse decision of the Examiner as set forth in
the Final Office Action, mailed June 18, 2015 (“Final Act.”) and as modified
in the Answer dated June 3, 2016 (“Ans.”). We note that in the Answer, the
Examiner withdrew the rejection of claims 2, 3, 6, 7, 9, 10, and 16-18 under
35 U.S.C. § 112, fourth paragraph. Ans. 2.
Appeal 2016-007539
Application 13/902,349
occurrence; (b) under 35 U.S.C. § 112, second paragraph, as being indefinite
for reciting both an apparatus and the method steps of using the apparatus;
and (c) under 35 U.S.C. § 102(b) as anticipated by Bouchard (US 7,025,687
B2, iss. Apr. 11, 2006). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claims 1, 13, and 15 are independent. Claim 1 is reproduced below
and illustrates the claimed subject matter, with disputed limitation
emphasized.
1. A system, comprising:
a management system comprising a computer having
stored therein instructions to provide special effects associated
with one or more events to one or more special effects
components,
wherein a bowling mode feature of the management
system allows a user to define and program, on a predefined
schedule, a set of parameters related to a status of each lane in a
bowling center, and
wherein, upon an occurrence of an event at a lane at the
bowling center, the management system:
determines one or more special effects based on the
occurrence of the event and the status of the lane defined
by the bowling mode; and
provides the instructions to the one or more special
effects components to effectuate the special effects
associated with the one or more events.
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Application 13/902,349
ANALYSIS
Rejection of Claims 1—20 as Directed to Non-Statutory Subject
Matter3
Appellant argues the claims subject to this rejection as a group.
Appeal Br. 3-35; Reply Br. 2-22. We select claim 1 as representative, with
the remaining claims standing or falling with claim 1. 37 C.F.R. §
41.37(c)(1) (iv) (2014).
The Supreme Court has 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. CLSBankInt'l., 134 S.Ct. 2347, 2355 (2014) (citingMayo
Collaborative Servs. v. Prometheus Labs, Inc., 132 S Ct. 1289, 1294 (2012).
According to the Supreme Court’s framework, we must first 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 so, we must 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. 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.
3 A correct copy of claim 19 is found only in the Amendment dated April 8,
2015.
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Application 13/902,349
Addressing the first step of the Alice analysis, the Examiner
determines that claims 1,13, and 15 are directed to the “abstract idea of
using a computer to sense events and control lights, sounds and effects in a
‘system.’” Final Act. 2. In other words, the claims are directed to a method
of managing a computer-implemented system for detecting events and
controlling special effect components. In support of this determination the
Examiner finds that the “[sjteps such as ‘detecting’, ‘associating’ and
providing instructions’ are most broadly related to the gathering and
manipulation of data associated with extra solution activity.” Id. at 3. The
Examiner explains that to the extent that performing a special effect is a
physical step, such performance is considered an extra solution activity more
analogous to the display of data. See id.
Appellants contend that the Examiner errs in not addressing the
dependent claims. See Appeal Br. 6 (citing Interim Guidance on Patent
Subject Matter Eligibility, Federal Register notice dated December 16, 2014.
We note that we are not bound by the guidance provided to Examiners by
the Office. Further, the guidance at issue is no longer in effect. As
discussed supra, we apply the two-part analysis set forth in Alice.
Next, Appellants contend “the limitations identified by the Examiner
are not an abstract idea.” Appeal Br. 6. In support of this contention,
Appellants argue that abstract ideas are limited to “fundamental economic
practices; certain methods of organizing human activities; an idea of itself;
and mathematical relationships/formulas.” Id. However, as discussed
supra, the Examiner finds that the claims are directed a computer program.
Final Act. 2. Further, the method steps set forth in the claims pertain to the
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Application 13/902,349
collection, manipulation, and dissemination of data. See Appeal Br. 66-69
(Claims App.).
Similar data manipulation steps have been held ineligible under § 101.
See Content Extraction and Transmission LLC v. Wells Fargo Bank,
National Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (holding the concept
of “1) collecting data, 2) recognizing certain data within the collected data
set, and 3) storing that recognized data in a memory” abstract); see also
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015) (“Intellectual Ventures I”) (concluding that
customizing information and presenting it to users based on particular
characteristics is abstract as well).
Our reviewing court further instructs us “[sjoftware can make non­
abstract improvements to computer technology just as hardware
improvements can, and sometimes the improvements can be accomplished
through either route.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016). Thus, we are further instructed that we must determine if
“the claims are directed to an improvement to computer functionality versus
being directed to an abstract idea, even at the first step of the Alice
analysis.” Id. Here, however, the limitations at issue are not directed to an
improvement of a computer’s functionality. Rather, the claims are directed
to the abstract idea of using a computer to manage a system for detecting
events and controlling special effect components.
Having determined that claim 1 is directed to an abstract idea, we
must determine whether the additional elements of the claim transforms it
into patent-eligible subject matter. As discussed supra, the Examiner
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determines that at most the data collection, manipulation, and dissemination
steps pertain to post solution activity. See Final Act. 3.
In response, Appellants contend “the steps of claim 1 are not mere
gathering and manipulation of data associated with extra solution activity,”
but “provide one or more special effects based on the occurrence of the
event and the status of the lane defined by the bowling mode,” which “is
clearly more than post solution activity.” Appeal Br. 9.
However, we agree with the Examiner “the computer is not necessary
to perform the steps of the abstract idea since the activation of any special
effect such as lights or sounds upon the observation of a bowling event can
clearly be done . . . manually by an operator.” Ans. 9.
Thus, we sustain the Examiner’s decision rejecting claims 1-20 as
being directed to non-statutory subject matter.
Rejection of Claims 1—20 under 35 U.S.C. § 112, second paragraph,
as being indefinite
The Examiner finds that “[wjhile the claims recite structure
suggesting an apparatus, they recite some steps consistent with a process.”
Final Act. 5. Based on this finding, the Examiner determines that “a single
claim which claims both an apparatus and the method steps of using the
apparatus is indefinite.” Id. (citing In re Katz Interactive Call Processing
Patent Litigation. 639 F.3d 1303, (Fed. Cir. 2011). However, as the
Examiner explains, in that case confusion was caused because one of the
limitations was directed to actions of users of the system not to actions of the
system itself. See id. at 5-6. This confusion rendered the claim indefinite.
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The Examiner does not adequately explain how similar confusion
exists in this case. Rather, as Appellant explains “the claims recite a
function of the computer (claim 1) or the management system (claim 13) and
that there is no other way to recite the features of a computer or management
system, but for the use of the processes.” Appeal Br. 37. The Examiner
does not identify, nor do we discern, any limitations directed to actions
performed by something other than the computer or management system.
Thus, the Examiner’s reliance on In re Katz is misplaced. For this reason, we
do not sustain the Examiner’s rejection of claims 1-20 under 35 U.S.C. §
112, second paragraph.
Rejection of Claims 1—20 under 35 U.S.C. § 102(b) as anticipated by
Bouchard
The Examiner finds that “Bouchard shows a bowling center
management system 16 with a control system (abstract, In. 5) that is capable
of determining a special event such as 40 of fig. 9 and effecting an audio
effect col. 10, In. 39.” Final Act. 10. More specifically, the Examiner
determines that “allowing a user to define and program on a predefined
schedule a set of parameters . . . falls with the broadest suggestion of
Bouchard to allow, ‘user customized entertainment system’ (col. 1, In. 15).”
Id. at 11. Furthermore, the Examiner reasons that “the term ‘status of the
lane’ is so broad that the status of the ‘pinfalT (col. 10, In. 40) in Bouchard
can be a status of the lane meeting the limitations of the claim.” Id.
In response, Appellants acknowledge “Bouchard discloses that each
bowler may select his own entertainment style and corresponding
audiovisual content to be associated with him individually and to be played
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or implemented on his particular lane when he is bowling,” but argue that
“Bouchard does not disclose that the system 10 includes a bowling mode
feature that allows a user to define and program, on a predefined schedule, a
set of parameters related to a status of each lane in a bowling center.”
Appeal Br. 44. Appellants continue by arguing, “Bouchard makes no
mention of a status of a lane with respect to these features, or allow the user
the ability to define and program, on a predefined schedule, a set of
parameters related to a status of each lane in a bowling center.” Id. at 45.
Thus, Appellants contend that “although Bouchard teaches expanding some
functionality of the scoring system, there simply is no disclosure that a user
can customize the entertainment system in the manner as recited by the
claimed invention with respect to defining a status of the lane.” Id. at 48;
see also Reply Br. 23-30.
We determine the scope of the claims in a patent application by giving
claims “their broadest reasonable interpretation consistent with the
[Specification” and “in light of the specification as it would be interpreted
by one of ordinary skill in the art.” In re Am. Acad. ofSci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). “Construing claims
broadly during prosecution is not unfair to the applicant. . . because the
applicant has the opportunity to amend the claims to obtain more precise
claim coverage.” Id.
Appellant has not pointed to any lexicographic definition in the
Specification of the phrase “status of each lane,” or identified any other
disclosure therein that precludes the Examiner from construing “that the
‘pinfalF (col. 10, In. 40) in Bouchard can be a status of the lane meeting the
limitations of the claim.” Final Act. 11. As the Examiner further reasons,
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“[i]n Bouchard, all of the voice, sound, light, and music effects selected by a
player ‘are prompted and played in part upon the occurrence of at least one
of a designated number of bowling events (i.e., strike, spare, split, gutter
ball, etc.).’” Ans. 29 (citing Bouchard, col. 6,11. 35-38).
For the foregoing reasons, we discern no error in the Examiner’s
findings and agree that Bouchard anticipates claims 1-20.
DECISION
We AFFIRM the Examiner’s rejections of claims 1-20 under 35
U.S.C. § 101 as being directed to non-statutory subject matter and under 35
U.S.C. § 102(b) as anticipated by Bouchard.
We REVERSE the Examiner’s rejection of claims 1-20 under 35
U.S.C. § 112, second paragraph as being indefinite.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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