Ex Parte Ward

Patent Trial and Appeal Board

Sep 13, 2018

14662118 (P.T.A.B. Sep. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/662,118 03/18/2015
7590 09/13/2018
Lonnie Ward III
2803 Gulf to Bay Blvd, Suite 282
Clearwater, FL 33759
FIRST NAMED INVENTOR
Lonnie Ward III
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.
6639
EXAMINER
GLENN, CHRISTOPHER A
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
09/13/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LONNIE WARD III
Appeal2017-010796
Application 14/662, 118
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Lonnie Ward III ("Appellant"), proceeding prose, appeals under
35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-5,
which are all the pending claims. See Appeal Br. 1. 1 We have jurisdiction
over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
Reference herein is made to Appellant's Amended Appeal Brief
("Appeal Br."), filed March 8, 2017.
Appeal2017-010796
Application 14/ 662, 118
CLAIMED SUBJECT MATTER
Appellant's disclosed invention relates to "an improving game
competition system." Spec. 1. 2 Claims 1 and 5 are independent. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A method of operating a martial art competition system
having a plurality of scoring methods, sub[-]systems for the
compensation and advancement of martial artist, said method
comprising the steps of: determining by challenge the ability
and performance of one or more martial artist of said method.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Sediq US 2013/0005419 Al Jan.3,2013
REJECTIONS
The following rejections are before us for review:
I. Claims 1-5 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 2-3.
II. Claims 1-5 stand rejected under 35 U.S.C. § I02(a)(l) as
anticipated by Sediq. Id. at 4--7.
2 We note that the Specification in the present application lacks page
numbers. For reference convenience, we designate the page with the
heading "SPECIFICATION" as page 1 and number the pages consecutively
therefrom.
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ANALYSIS
Rejection I- Claims 1-5 as directed to patent-ineligible subject matter
A patent may be obtained for "any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof." 35 U.S.C. § 101. The Supreme Court has consistently held that
this provision contains an important implicit exception: laws of nature,
natural phenomena, and abstract ideas are not patentable. See Alice Corp. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409
U.S. 63, 67 (1972) ("Phenomena of nature, though just discovered, mental
processes, and abstract intellectual concepts are not patentable, as they are
the basic tools of scientific and technological work.").
Notwithstanding that a law of nature or an abstract idea, by itself, is
not patentable, an application of these concepts may be deserving of patent
protection. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132
S. Ct. 1289, 1293-94 (2012). In Mayo, the Court stated that "to transform
an unpatentable law of nature into a patent-eligible application of such a
law, one must do more than simply state the law of nature while adding the
words 'apply it."' Mayo, 132 S. Ct. at 1294 ( citation omitted).
In Alice, the Court reaffirmed the framework set forth previously in
Mayo "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
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts." Id. If the claims are directed to a
patent-ineligible concept, then the second step in the analysis is to consider
the elements of the claims "individually and 'as an ordered combination"' to
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determine whether there are additional elements that "'transform the nature
of the claim' into a patent-eligible application." Id. (quoting Mayo, 132
S. Ct. at 1298, 1297).
In other words, 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
on the [ineligible concept] itself."' Id. (brackets in original) (quoting Mayo,
132 S. Ct. at 1294). The prohibition against patenting an abstract idea
"cannot be circumvented by attempting to limit the use of the formula to a
particular technological environment or adding insignificant postsolution
activity." Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (citation and
internal quotation marks omitted). The Court in Alice noted that "[ s ]imply
appending conventional steps, specified at a high level of generality," was
not "enough" [in Mayo] to supply an "'inventive concept."' Alice, 134
S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
In rejecting claims 1-5 under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter, the Examiner determined that "the claim(s)
as a whole, considering all claim elements both individually and in
combination, do not amount to significantly more than an abstract idea."
Final Act. 2-3. In particular, the Examiner determined that the claims "are
directed to the abstract idea of rules for scoring methods to advance through
a tournament," and "the additional claim elements (i.e. a method of
operating a martial art competition system) are merely conventional and do
not add any improvement so that these elements do not significantly add to
the abstract idea/rules." Id. at 3. The Examiner explains that the steps
recited in independent claims 1 and 5 "are directed to rules governing an
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activity (a martial art competition)," where "[m]ethods of managing a game
have been found to be abstract ideas (See: Planet Bingo, LLC v. VKGS LLC,
576 Fed. Appx. 1005 (Fed. Cir. 2014))[,] and a set of rules for a game have
been found to be abstract ideas (See: In Re Smith[, 815 F.3d 816] (Fed. Cir.
2016))." Ans. 7 (italics added).
Appellant argues that "the current invention is directed to patent
eligible subject matter considering all relevant factors with respect to the
[ c ]laim( s) and [ c ]laimed invention as a whole." Appeal Br. 5. Appellant
asserts that the claims contain an inventive concept sufficient to transform
the abstract idea into a patent-eligible application. See id. For the reasons
discussed below, we are not persuaded by Appellant's arguments.
Step one:
In the first step of the Alice analysis, "the decisional mechanism
courts now apply is to 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." Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d
1288, 1294 (Fed. Cir. 2016), cert. denied, 138 S. Ct. 469 (2017) (citing Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016).
Independent claim 1 recites "[a] method of operating a martial art
competition system having a plurality of scoring methods, sub[-]systems for
the compensation and advancement of martial artist, said method comprising
the steps of: determining by challenge the ability and performance of one or
more martial artist of said method." Appeal Br. 17 (Claims App.).
Independent claim 5 similarly recites "[a] method of operating a martial art
competition system having a plurality of scoring methods, sub[-]systems for
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the compensation and advancement of martial artist, said method comprising
the steps of: awarding compensation and/or granting approval for the
advancement to professional of martial artist, including competition system
results." Id. Appellant's Specification describes "an improving game
competition system." Spec. 1. In particular, the Specification describes that
[a] well-known game utilizing the hand and foot is Tae Kwon
Do. In the game of Tae Kwon Do, two or more participants
compete on a mat for two or three rounds that last two minutes
per round, the object is to score as many points as possible by
landing kicks to the torso, head and punches only to the chest, in
a given time to be called a winner. This game requires skill,
balance, coordination, stamina and agility.
Id. According to the Specification, "[a]n advantage of the present invention
include[ s,] without limitation, an opportunity to solve a specific problem by
building a community for which the advanced amateur athlete can compete
in on the professional level while playing a Martial Art game as in Tae
[K]won [D]o." Id. at 4.
Here, we agree with the Examiner that Appellant's claims "are
directed to rules governing an activity (a martial art competition)." Ans. 7.
In particular, the claims are directed to an abstract idea of organizing human
activities similar to the method of managing a game at issue in Planet Bingo
and the set of rules for a game at issue in In re Smith. See Planet Bingo, 576
Fed. App'x at 1008 (citing Alice, 134 S. Ct. at 2356) (the court stating that
the claims were "similar to the kind of 'organizing human activity' at issue
in Alice"); see also In re Smith, 815 F.3d at 819 ("the rejected claims,
describing a set of rules for a game, are drawn to an abstract idea")
(emphasis added); In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 613
(Fed. Cir. 2016) ("we have applied the 'abstract idea' exception to
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encompass inventions pertaining to methods of organizing human activity")
(citing Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d
1363, 1367 (Fed. Cir. 2015)). In this regard, Appellant does not apprise us
of a meaningful distinction in the form or type of the claims between those
presently recited and those previously adjudicated in Planet Bingo and In re
Smith.
Step two:
As to the second step of the Alice analysis, we agree with the
Examiner's determination that the elements of independent claims 1 and 5,
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. 7. We not persuaded by the Appellant's arguments to the contrary. See
Appeal Br. 4--7, 15-16.
In particular, Appellant argues that the claimed methods provide a
financial reward for competition winners, which represents a concrete and
tangible result. See id. at 6; see also id. at 7 ( asserting that "the current
invention clearly defines compensation as being Rewarded Financially, and
the compensated as Tangible, result or results" ( citing Spec. 4, 11. 6-9)).
However, regardless of whether the claimed methods encompass providing
concrete or tangible financial compensation, "[i]t is well-settled that mere
recitation of concrete, tangible components is insufficient to confer patent
eligibility to an otherwise abstract idea." TL!, 823 F.3d at 613.
Given the binding precedent of our reviewing courts, we agree with
the Examiner's ultimate conclusion that the present claims are directed to
patent-ineligible subject matter, particularly in light of the explanation
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provided at pages 2-3 of the Final Action and pages 6-7 of the Examiner's
Answer.
In short, we find nothing in claims 1-5 to be sufficiently
transformative to render the claims patent eligible. For these reasons, we
affirm the Examiner's rejection of claims 1-5 under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter.
Rejection II- Claims 1-5 as anticipated by Sediq
In rejecting independent claim 1, the Examiner found that
Sediq (Figures 1-5) teaches a method of operating a martial art
competition system (See figures 3--4) having a plurality of
scoring methods (Page 2, Para. 0023, Lines 1-15), sub[-]systems
for the compensation and advancement of martial artist, said
method comprising the steps of: determining by challenge the
ability and performance of one or more martial artist of said
method (Page 2, Para. 0024, Lines 1-14) (Page 2, Para. 0026,
Lines 1-15).
Final Act. 4.
Appellant contests the rejection by reproducing the Examiner's
findings articulated in the rejection, describing the corresponding disclosure
in the cited portions of Sediq, and describing relevant disclosure in
Appellant's Specification. See Appeal Br. 7-8, 13-14 (citing Spec. 4).
Appellant asserts that he "disagrees" with the Examiner's findings (id. at 8,
12-14 ), but does not provide factual evidence or persuasive technical
reasoning to identify error in the Examiner's findings as to the disclosure of
Sediq. In other words, Appellant does not persuasively explain why the
cited portions of Sediq would be insufficient to support the Examiner's
findings.
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Appellant further asserts that "Sediq describes repetitive use of a
scoring method" (id. at 8 (citing Sediq, Figs. 3--4)), whereas the "[c]laimed
invention describes repetitive use of multiple scoring methods" (id. ( citing
Spec. 4)). According to Appellant, the claimed invention is "[n]ot
comparable to Sediq." Id. This argument is unpersuasive because it is not
commensurate with the scope of claim 1. As stated by our reviewing court
in In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), "the name of the
game is the claim." It is well established that limitations not appearing in
the claim cannot be relied upon for patentability. See In re Self, 671 F .2d
1344, 1348 (CCPA 1982). Here, claim 1 only recites a single step of
"determining by challenge the ability and performance of one or more
martial artist of said method." Appeal Br. 17 (Claims App.). Although the
preamble of claim 1 recites "[a] method of operating a martial art
competition system having a plurality of scoring methods," the only
operative step recited in the body of the claim does not require repetitive use
of multiple scoring methods. Id. Moreover, Appellant's assertion that Sediq
is "not comparable" (see id. at 8) does not persuasively distinguish claim 1
from the disclosure of Sediq.
Regarding dependent claims 2--4 and independent claim 5, although
Appellant addresses these claims under separate headings (see id. at 9--11 ),
Appellant's arguments are unconvincing for the same reasons discussed
above with respect to independent claim 1. Namely, Appellant merely
reproduces portions of the Examiner's rejection, Sediq, and the Specification
without persuasively explaining why the Examiner's specific findings as to
the disclosure of Sediq would be deficient. See Final Act. 7.
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For the above reasons, Appellant does not apprise us of error in the
Examiner's finding that Sediq anticipates the subject matter of claims 1-5.
Accordingly, we sustain the rejection of claims 1-5 under 35 U.S.C.
§ 102(a)(l) as anticipated by Sediq.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-5 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
We AFFIRM the Examiner's decision rejecting claims 1-5 under
35 U.S.C. § 102(a)(l) as anticipated by Sediq.
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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