Trials@uspto.gov
`571-272-7822
`
`Paper 8
`Entered: June 3, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`____________
`
`Case PGR2019-00018
`Patent 9,891,799 B2
`____________
`
`Before LYNNE H. BROWNE, HYUN J. JUNG, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Post-Grant Review
`35 U.S.C. § 324(a)
`
`
`571-272-7822
`
`Paper 8
`Entered: June 3, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`____________
`
`Case PGR2019-00018
`Patent 9,891,799 B2
`____________
`
`Before LYNNE H. BROWNE, HYUN J. JUNG, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Post-Grant Review
`35 U.S.C. § 324(a)
`
`
`
`PGR2019-00018
`Patent 9,891,799 B2
`
`
`I.
`
`INTRODUCTION
`
`GREE, Inc. (“GREE”) is the owner of U.S. Patent No. 9,891,799 B2
`
`(“the ’799 patent”). Supercell Oy (“Supercell”) filed a petition requesting
`
`post-grant review of claims 1–20 of the ’799 patent. Paper 1 (“Pet.”).
`
`GREE, in turn, filed a preliminary response. Paper 7 (“Prelim. Resp.”).
`
`After considering the petition and the preliminary response, as well as all
`
`supporting evidence, we determine the petition demonstrates that it is more
`
`likely than not that at least one of the challenged claims of the ’799 patent is
`
`unpatentable. 35 U.S.C. § 324(a). Thus, we institute post-grant review of
`
`claims 1–20 of the ’799 patent on all grounds.
`
`A. Related Proceedings
`
`Petitioner indicates that there are no related matters involving the ’799
`
`patent. Pet. 1. Patent Owner does not contest this assertion.
`
`B. The ’799 Patent
`
`The ’799 patent is directed to “a game program that processes
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`progress of a game for moving a plurality of objects arranged on a game
`
`field.” Ex. 1001, 1:44–46. The game program includes functions such as
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`“an accepting function that accepts operation information regarding a touch
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`operation performed by a user,” “an associating function that associates the
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`plurality of objects as a group,” and “a moving function that may move . . .
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`the plurality of associated objects as a group.” Id. at 1:47–54. The moving
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`function moves the associated objects in a direction indicated by a direction
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`operation, and this movement is displayed by a display processing function.
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`Id. at 52–56. The game program allows a user to perform “a specifying
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`operation that specifies a first object that is any of the plurality of objects.”
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`Id. at 62–63. Upon such specification, “the moving function may move the
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`2
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`PGR2019-00018
`Patent 9,891,799 B2
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`remaining objects, excluding the first object from the plurality of objects, as
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`a group in the direction indicated by the direction operation.” Id. at 64–67.
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`This game program is performed with information processing
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`apparatus 100 shown in Figure 1 reproduced below:
`
`
`
`
`
`Figure 1 is “a functional block diagram of . . . an information processing
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`apparatus.” Ex. 1001, 2:62–64. Information processing apparatus 100
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`includes “an input unit 110, a storage unit 120, a control unit 130, and a
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`display unit 140.” Id. at 6:66–67. Input unit 110 is a touch pad. Id. at 7:5–
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`6. Storage unit 120 “retain[s] map information 200” and “stores parameters
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`of each of user units and each of enemy units used in the game.” Id. at 7:40,
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`53–54. Control unit 130 is a processor that executes progress of the game.
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`Id. at 7:59–60. Control unit 130 includes accepting unit 131, moving
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`processor 132, battle processor 133, associating unit 134, and display
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`processor 135. Id. at 8:3–5.
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`PGR2019-00018
`Patent 9,891,799 B2
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`
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`Moving processor 132 executes the process of moving the user unit
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`group in accordance with an input from the input unit 110. Ex. 1001, 8:6–9.
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`In response to this input moving processor 132 executes two types of
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`moving processes. Id. at 8:21–22. These two types of moving processes
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`are:
`
`(1) In the case where a swipe operation is transferred from the
`input unit 110, the moving processor 132 may collectively move
`the user unit group by one cell in a direction indicated by the
`swipe operation.
`
`(2) In the case where a swipe operation is transferred from the
`input unit 110 and additionally detection of a touch operation has
`been transferred from the input unit 110, the moving processor
`132 may fix (does not move) a user unit specified by the touch
`operation, and may collectively move the remaining user unit
`group in a direction indicated by the swipe operation.
`
`Id. at 8:24–34.
`
`C.
`
`Representative Claim
`
`The ’799 patent includes twenty claims, of which claims 1, 8, and 15
`
`are independent. All three independent claims recite essentially identical
`
`limitations and vary only as to type, where claim 1 is directed to a
`
`“computer-implemented method,” claim 8 to a “computer program product,”
`
`and claim 15 to a “system.” Ex. 1001, 24:30, 25:36, 26:41. Common across
`
`the independent claims are eight functional steps as set forth, for example, in
`
`representative claim 1 reproduced below:
`
`1. A computer-implemented method for operating a computer
`game, the method comprising:
`storing, in a storage module, a plurality of virtual objects
`and the arrangements of those virtual objects on a game field;
`
`4
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`PGR2019-00018
`Patent 9,891,799 B2
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`accepting, via an input face configured to detect a touch
`operation, operation information regarding a touch operation
`performed by a user;
`associating, using a processor, a plurality of virtual objects
`as a group;
`determining, using a processor, whether the operation
`information comprises a direction operation;
`information
`upon determining
`that
`the operation
`comprises a direction operation, moving, using a moving
`processor, one or more of the plurality of associated objects as a
`group in the direction indicated by the direction operation;
`storing, in a storage module, the new arrangements on the
`game field of the one or more of the plurality of associated
`objects moved with the moving processor;
`displaying, on a computer screen, the game field and the
`plurality of virtual objects arranged on the game field; and
`displaying, on a computer screen, the new arrangement on
`the game field of the one or more of the plurality of associated
`objects moved with the moving processor.
`
`
`Ex. 1001, 24:30–55.
` The Asserted Grounds of Unpatentability
`
`D.
`
`The Petition asserts that claims 1–20 of the ’799 patent are
`
`unpatentable because they are directed to patent-ineligible subject matter
`
`under 35 U.S.C. § 101. Pet. 29–50. The Petition further asserts that claims
`
`1–20 fail to comply with the definiteness requirement of 35 U.S.C. § 112(b).
`
`Id. at 51–60. The Petition also asserts that claims 2–6, 9–13, and 16–19 fail
`
`to comply with the further limitation requirement of 35 U.SC. § 112(d). Id.
`
`at 60–63.
`
`II. ANALYSIS
`
`A.
`
`Claim Construction
`
`Petitioner contends that the terms “direction,” “direction operation,”
`
`and “one or more of the plurality of associated objects” require claim
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`5
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`construction. Pet. 15–28. Patent Owner asserts that the Petition should be
`
`dismissed because Petitioner’s proposed claim constructions apply the
`
`wrong standard. Prelim. Resp. 18. Patent Owner also contests Petitioner’s
`
`proposed construction of “direction” arguing that “[t]he term direction does
`
`not need to be construed, and should be afforded its plain and ordinary
`
`meaning.” Id. 20. At this point, we are not convinced that Petitioner applies
`
`the wrong claim construction. Accordingly, we do not deny institution for
`
`this reason. We agree, however, that for purposes of this decision we need
`
`not expressly construe any claim terms.
`
`B.
`
`Subject Matter Eligibility
`
`Petitioner contends that claims 1–20 are directed to patent-ineligible
`
`subject matter in violation of 35 U.S.C. § 101. We begin our analysis by
`
`reiterating the principles of law regarding subject matter eligibility. Then
`
`we summarize Petitioner’s and Patent Owner’s positions and discuss our
`
`reasoning. We note that Petitioner addresses independent claims 1, 8, and
`
`15 together. Pet. 29–46. Petitioner also addresses similar dependent claims
`
`in groups. Pet. 47–51. We do so as well.
`
`1.
`
`Principles of Law
`
`An invention is patent eligible if it claims a “new and useful process,
`
`machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
`
`However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
`
`implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
`
`ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
`
`216 (2014).
`
`In determining whether a claim falls within an excluded category, we
`
`are guided by the Supreme Court’s two-step framework, described in Mayo
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`Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012)
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`and Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). In
`
`accordance with that framework, we first determine what concept the claim
`
`is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims
`
`before us are drawn to the concept of intermediated settlement, i.e., the use
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`of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561
`
`U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the
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`basic concept of hedging, or protecting against risk.”).
`
`Concepts determined to be abstract ideas, and thus patent ineligible,
`
`include certain methods of organizing human activity, such as fundamental
`
`economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
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`mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
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`mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
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`determined to be patent eligible include physical and chemical processes,
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`such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
`
`(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
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`rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
`
`252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
`
`(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
`
`If the claim is “directed to” an abstract idea, we turn to the second
`
`step of the Alice and Mayo framework, where “we must examine the
`
`elements of the claim to determine whether it contains an ‘inventive
`
`concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
`
`eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
`
`claim that recites an abstract idea must include ‘additional features’ to
`
`ensure ‘that the [claim] is more than a drafting effort designed to
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`monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
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`“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
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`that abstract idea into a patent-eligible invention.” Id.
`
`The PTO recently published revised guidance on the application of
`
`§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
`
`Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”). Under the Guidance, we
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`first look to whether the claim recites:
`
`(1) any judicial exceptions, including certain groupings of
`abstract ideas (i.e., mathematical concepts, certain methods of
`organizing human activity such as a fundamental economic
`practice, or mental processes); and
`
`(2) additional elements that integrate the judicial exception into
`a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
`
`See 2019 Revised Guidance, 84 Fed. Reg. at 52, 54–55. Only if a claim (1)
`
`recites a judicial exception and (2) does not integrate that exception into a
`
`practical application, do we then look to whether the claim:
`
`(3) adds a specific limitation beyond the judicial exception that
`are not “well-understood, routine, conventional” in the field (see
`MPEP § 2106.05(d)); or
`
`(4) simply appends well-understood, routine, conventional
`activities previously known to the industry, specified at a high
`level of generality, to the judicial exception.
`
`See 2019 Revised Guidance, 84 Fed. Reg. at 56.
`
`2. Petitioner’s Challenge
`
`a. Independent Claims 1, 8, and 15
`
`Petitioner contends that “[t]he ’799 patent involves nothing more than
`
`the abstract idea of associating game objects and moving one or more of the
`
`objects.” Pet. 29. According to Petitioner, “[t]he patent does not recite an
`
`improvement in computer functionality or a new technology. Instead, it
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`merely recites a series of generalized steps performed on conventional and
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`generic computer technology to arrive the desired result.” Id. In support of
`
`these contentions, Petitioner applies the two-step test set forth in Alice. Id.
`
`at 31(omitting Alice’s internal citations).
`
`For step 1 of the Alice test, Petitioner asserts that “[t]he claims of the
`
`’799 patent are directed to the abstract idea of associating a plurality of game
`
`objects and moving one or more of the group of objects.” Pet. 34.
`
`According to Petitioner, “[l]ike the ineligible claims of Internet Patents1 and
`
`Two-Way Media,2 the claims of the ’799 patent are written in result-based
`
`functional language and provide no detail as to how the central elements of
`
`the claims are performed.” Noting that “[t]he specification purports to
`
`provide a method for permitting more complex movements of game objects
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`by allowing minor variations to known methods of associating and moving
`
`groups of game objects,” Petitioner further alleges that the claims “fail to a
`
`recite any technical detail aimed at achieving the desired result.” Id. (citing
`
`Ex. 1001, 1:29–34). Petitioner argues that “[t]he ‘storing,’ ‘accepting,’ and
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`‘displaying’ functions recited in each independent claim are conventional
`
`computer functions and serve only to limit the claims to the admittedly well-
`
`known environment of video games played on a touch screen device.” Id. at
`
`35 (citing Ex. 1001, 1:8–35) (parenthetical omitted). Further, Petitioner
`
`argues that the recited associating, determining, and moving functions “are
`
`only a series of generalized, functional steps inherent to the abstract idea.
`
`
`1 Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed.
`Cir. 2015).
`
`2 Two Way Media, Ltd. v. Comcast Cable Communic’ns, LLC, 874 F.3d
`1329, 1337 (Fed. Cir. 2017).
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`Patent 9,891,799 B2
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`There is no mechanism recited in the claims for how to ‘associate’ the
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`objects, ‘determine’ whether the operation information comprises a direction
`
`operation, or ‘move’ the objects in the direction indicated by the
`
`information.” Id. at 35. In addition, Petitioner asserts that the claims of the
`
`’799 patent “do not recite any improvement to computers or video game
`
`technology” such as the improvements found to be patent eligible in Enfish,
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`LLC v. Microsoft Corp., 822 F.3d 1327, 1330 (Fed. Cir. 2016). Id. at 39.
`
`Turning to Alice step 2, Petitioner contends that “[t]he claims of the
`
`’799 patent are ineligible under step two of Alice because they fail to recite
`
`an inventive concept sufficient to transform the abstract idea into a patent-
`
`eligible application.” Pet. 41 (citing Alice, 134 S. Ct. at 2355) (emphasis
`
`omitted). According to Petitioner, “[t]he claim limitations of the
`
`independent claims of the ’799 patent, tangible and otherwise, are
`
`conventional, generic and well understood.” Id. Petitioner again asserts that
`
`“the independent claims fail to capture the purported improvement over
`
`prior art described in the specification” and “[w]hen the steps inherent to this
`
`abstract concept, are stripped away, the only limitations that remain are the
`
`routine computer functions ‘storing,’ ‘accepting’ information via a touch
`
`screen interface, and ‘displaying’ the game information on a computer
`
`screen.” Id. at 44–46 (citing Ex. 1001, 24:30–55).
`
`b. Dependent Claims 2, 9, and 16
`
`
`
`Petitioner asserts that “claims 2, 9, and 16 each recite only an abstract
`
`result without reciting an underlying mechanism [for implementing the
`
`abstract idea].” Pet. 47. According to Petitioner, “neither the claim
`
`language nor the specification disclose what the operation information is that
`
`comprises a specifying operation or how the specifying operation actually
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`10
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`specifies and excludes the game object from moving with the associated
`
`group.” Id. at 48. Petitioner contends that “these claims recite only the
`
`result, without specifying the underlying means for achieving that result.
`
`Claiming such a desired result at such a “high level of generality” cannot
`
`confer inventiveness.” Id. (citing buySAFE, Inc. v. Google, Inc., 765 F.3d
`
`1350, 1354 (Fed. Cir. 2014)).
`
`c. Dependent Claims 3–6, 10–13, and 17–19
`
`
`
`Petitioner makes similar assertions regarding claims 3, 10, and 17 as
`
`for claims 2, 9, and 16 discussed above. See Pet. 49. Petitioner also asserts
`
`that claims 4–6, 11–13, 18, and 193, which depend from claims 3, 10, and
`
`17, respectively, also fail to “provide an inventive concept.” Id. (citation
`
`omitted).
`
`d. Dependent Claims 7, 14, and 20
`
`
`
`Petitioner makes similar assertions regarding claims 7, 14, and 20 as
`
`for the dependent claims discussed above. See Pet. 50. According to
`
`Petitioner, “instead of reciting a particular algorithm or series of steps to
`
`arrive at the result of changing the direct of the game objects, the claims
`
`broadly recite that the processor ‘receives’ varying ‘information’ that causes
`
`such a result.” Id. at 50–51.
`
`
`3 The Petitioner includes claim 20 in this group, however, claim 20 depends
`from claim 15 not claim 16. Ex. 1001 28:13. Also, claim 20 is discussed in
`the following group. Accordingly, we understand the inclusion of claim 20
`in this group to be a typographical error.
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`3.
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`Patent Owner’s Response
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`a. Independent Claims 1, 8, and 154
`
`Patent Owner contends that claims 1, 8, and 15 “are directed to
`
`statutory subject matter under § 101 because they claim a touch screen
`
`interface allowing for complex and intricate gaming movements of
`
`pluralities of characters on a virtual game field with predetermined touch
`
`and swipe commands.” Prelim. Resp. 34 (citing Ex. 2001 ¶¶ 114–134).
`
`According to Patent Owner, “the Claims of the ’799 Patent are not directed
`
`to a judicial exception, and even if they were, they involve more than the
`
`application of routine and conventional activities.” Id. at 38. Patent Owner
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`argues that “Petitioner has not even articulated (nor can it articulate) an
`
`appropriate abstract idea . . . . Indeed, the Petitioner fails to even allege that
`
`the claims are directed to a mathematical process, a method of organizing
`
`human activity, or a mental process, law of nature, or a natural
`
`phenomenon.” Id. at 39. Thus, Patent Owner argues that “the claims should
`
`be found patent eligible under section 101.” Id.
`
`Patent Owner also contends that “[t]he Petitioner’s proposed
`
`articulation of an abstract idea overgeneralizes the claims and omits core
`
`concepts of the claim limitations.” Prelim. Resp. 41 (citations omitted).
`
`According to Patent Owner, “[t]he ’799 Patent claims are directed to
`
`processing features for detecting touch-gesture inputs, and implementing
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`complex movements of games characters on a virtual game field based on
`
`those touch-gestures.” Id. (citing Ex. 2001 ¶ 114). Specifically, Patent
`
`Owner asserts that the Petition ignores “key additional elements such as the
`
`
`4 We note that, like Petitioner, Patent Owner does not separately address
`independent claims 1, 8, and 15.
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`claimed touch screen interface, touch operation, direction operation, and the
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`virtual game field of the particular practical application (i.e., touch
`
`interfaced gaming environment).” Id. at 41–42 (citing Ex. 1001, 24:30–55;
`
`Ex. 2001 ¶¶ 114–118) (emphasis omitted). In addition, Patent Owner asserts
`
`that “the claims as a whole, in view of the intrinsic and extrinsic evidence,
`
`offer a specific technical solution, including an improved touch screen user
`
`interface for playing computer games.” Prelim Resp. 45 (citing Ex. 1001,
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`23:27–35; Ex. 2001 ¶ 121).
`
`Patent Owner further contends that “even if the claims are directed to
`
`a judicial exception under the first prong of Alice step one, the additional
`
`elements of the claim integrate the exception into a practical application
`
`under the second prong.” Prelim. Resp. 39. According to Patent Owner,
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`“[t]he claims reflect an improvement to the technical field of touch screen
`
`computer games, specifically, an improved touch screen computer game user
`
`interface.” Id. (citing Ex. 2001 ¶¶ 119–124). Noting that Petitioner relies on
`
`“a single prior art reference described in the specification of the ’799 Patent
`
`(the Japanese unexamined ’936 application), to state that the claimed
`
`functions of claim 1 are routine and conventional,” Patent Owner argues that
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`“[a]s the Federal Circuit affirmed in Berkheimer, ‘[t]he mere fact that
`
`something is disclosed in a piece of prior art, for example, does not mean it
`
`was well-understood, routine, and conventional.’” Id. at 57–58 (citing
`
`Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018)). Specifically,
`
`Patent Owner asserts that the limitations that use a processor to associate a
`
`plurality of virtual objects as a group, determine whether operation
`
`information comprises a direction operation, and move one or more of the
`
`plurality of associated objects as a group in the direction indicated by the
`
`13
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`direction operation are not “routine and conventional computer processing
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`functions.” Id. at 61. Thus, Patent Owner argues that these limitations
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`“transform the claims into a patentable invention.” Id. at 62. Patent Owner
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`also argues that the claims capture the improvements described in the
`
`Specification. Id. at 64.
`
`b. Dependent Claims 2, 9, and 16
`
`
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`Patent Owner contends that “the specification provides explicit detail
`
`regarding the specifying operation and how it is used to specify and exclude
`
`game objects from movement as claimed.” Prelim. Resp. 67 (citing Ex.
`
`1001, 11:5–13, Fig. 3; Ex. 2001 ¶¶ 108–109). According to Patent Owner,
`
`The Figure 6A embodiment is an example of how operation
`information can comprise both a touch operation and a direction
`operation, contrary to Petitioner’s arguments; thus, as Dr.
`Shamos testifies, a POSITA reviewing the claims in light of the
`specification would understand that the dependent claims 2, 9,
`and 16 are directed to specific mechanisms that were not routine
`and conventional to a person of skill in the art.
`
`Id. at 68 (citing Ex. 2001 ¶¶ 108–109).
`
`c. Dependent Claims 3–6, 10–13, and 17–19
`
`
`
`Patent Owner contends that “[t]he specification provides explicit
`
`detail explaining both what a region is and how the region affects the
`
`movement of units in the claimed system.” Prelim. Resp. 68–19 (citing Ex.
`
`2001 ¶¶ 110–112; Ex. 1001, 11:52–67, 4:59–62, 5:1–9). According to
`
`Patent Owner, “As Dr. Shamos testifies, a POSITA would understand based
`
`on the claims and the extensive disclosure in the specification both what
`
`comprises a region and how the region affects the movement of units.” Id.
`
`at 70 (citing Ex. 2001 ¶¶ 110–112). Patent Owner also asserts that “[a]
`
`POSITA would further understand that these limitations were not
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`routine and conventional to a person of skill in the art.” Id.
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`d. Dependent Claims 7, 14, and 20
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`
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`Patent Owner contends that “[t]he specification provides explicit
`
`detail regarding [the operation information] which, as Dr. Shamos testifies,
`
`was not routine and conventional to a person of skill at the time of the
`
`invention.” Prelim. Resp. 70 (citing Ex. 2001 ¶ 113). According to Patent
`
`Owner, a POSITA would understand that the claims, in view of the
`
`specification, claim both the hardware and specific non-routine and
`
`nonconventional functions for that hardware.” Id. at 71–72.
`
`4.
`
`Analysis
`
`a.
`
`Independent Claims 1, 8, and 15
`
`As discussed above, Petitioner and Patent Owner discuss independent
`
`claims 1, 8, and 15 together. For ease of reference we focus on claim 1
`
`which is representative of claims 8 and 15. We begin our analysis by
`
`considering if claim 1 is directed to a judicial exception (Alice step 1). As
`
`discussed above, Petitioner asserts that the claims of the ’799 patent are
`
`directed to “the abstract idea of associating game objects and moving one or
`
`more of the objects.” Pet. 29. In other words, Petitioner asserts that the
`
`claims are directed to rules that govern play of a game, which, when viewed
`
`through the lens of the Guidance, is akin to managing personal behavior or
`
`relationships or interactions between people (including following rules or
`
`instructions), which are one of certain methods of organizing human activity
`
`that our reviewing courts have found patent-ineligible as abstract ideas. See
`
`In re Smith, 815 F.3d, 816, 818 (Fed. Cir. 2016) (concluding that
`
`“[a]pplicants’ claims, directed to rules for conducting a wagering game” are
`
`patent-ineligible). We agree.
`
`15
`
`
`
`PGR2019-00018
`Patent 9,891,799 B2
`
`
`Specifically, claim 1 recites the following limitations: (1) “storing . . .
`
`a plurality of virtual objects and the arrangements of those virtual objects on
`
`a game field”; (2) “accepting . . . operation information regarding a touch
`
`operation performed by a user”; (3) “associating . . . a plurality of virtual
`
`objects as a group”; (4) “determining . . . whether the operation information
`
`comprises a direction operation”; (5) “upon determining that the operation
`
`information comprises a direction operation, moving . . . one or more of the
`
`plurality of associated objects as a group in the direction indicated by the
`
`direction operation”; (6) “storing . . . the new arrangements on the game
`
`field of the one or more of the plurality of associated objects”; (7)
`
`“displaying . . . the game field and the plurality of virtual objects arranged
`
`on the game field”; and (8) “displaying . . . the new arrangement on the
`
`game field of the one or more of the plurality of associated objects.” These
`
`limitations, under their broadest reasonable interpretation, recite rules
`
`governing the play of a computer game because the limitations all recite
`
`operations that take place during play of a computer game.
`
`For example, “storing . . . a plurality of virtual objects and the
`
`arrangements of those virtual objects on a game field,” as recited in
`
`limitation (1) (similarly recited in limitation (6)), is an activity that would
`
`take place every time a player of a computer game involving such objects
`
`takes a turn. Similarly, accepting operation information, associating a
`
`plurality of virtual objects, determining whether operation information
`
`includes a direction, and responding to that determination, as recited in
`
`limitations (3)–(5), is also characteristic of a player taking a turn in a
`
`computer game. Also, displaying the game field and objects upon that field,
`
`as in limitations (7) and (8), would take place at the end of the player’s turn
`
`16
`
`
`
`PGR2019-00018
`Patent 9,891,799 B2
`
`to indicate that play has continued in accordance with the player’s input
`
`during their turn. The implementation of rules for play of a computer game
`
`is akin to managing personal behavior or relationships or interactions
`
`between people (including following rules or instructions), which is one of
`
`certain methods of organizing human activity that our reviewing courts have
`
`found patent-ineligible as an abstract idea, like the rules for a wagering game
`
`in Smith. Accordingly, we conclude that claim 1 recites an abstract idea.
`
`Next, we consider whether claim 1 includes additional elements into
`
`the judicial exception that integrate it into a practical application. We agree
`
`with Petitioner that simply implementing the abstract idea on a generic
`
`computer, as has been done here, even via the use of a touch screen, is not a
`
`practical application of the abstract idea. Patent Owner asserts that claim 1
`
`is integrated into a practical application because it relates to a “touch
`
`interface gaming environment” including a claimed touch screen interface
`
`and touch operation. Prelim. Resp. 34. Claim 1 as a whole, however,
`
`merely describes how to generally apply the concepts of accepting a touch
`
`operation via a touch screen. The claimed computer components are recited
`
`at a high level of generality and are merely invoked as tools to perform
`
`existing touch screen operations, and so are indistinguishable from the
`
`generic operation of those components.
`
`Further, we note that the 2019 Revised Guidance provides other
`
`“exemplary considerations” that “are indicative that an additional element
`
`(or combination of elements) may have integrated the exception into a
`
`practical application.” 2019 Revised Guidance, 84 Fed. Reg. at 55
`
`17
`
`
`
`PGR2019-00018
`Patent 9,891,799 B2
`
`(emphasis added).5 The 2019 Revised Guidance informs us that one
`
`exemplary consideration is whether “[a]n additional element reflects an
`
`improvement in the functioning of a computer, or an improvement to other
`
`technology or technical field.” Id. (citing MPEP § 2106.05(a)). Patent
`
`Owner asserts that “[t]he claims reflect an improvement to the technical field
`
`of touch screen computer games, specifically, an improved touch screen
`
`computer game user interface.” Prelim. Resp. 39 (citing Ex. 2001 ¶¶ 119–
`
`124). We, however, agree with Petitioner that claim 1 “merely recites a
`
`series of generalized steps performed on conventional and generic [albeit
`
`touch-screen] computer technology to arrive the desired result.” Pet. 29; Ex.
`
`1001, 3:49–54.
`
`The 2019 Revised Guidance informs us that another exemplary
`
`consideration is whether “an additional element implements a judicial
`
`exception with, or uses a judicial exception in conjunction with, a particular
`
`machine or manufacture that is integral to the claim.” 2019 Revised
`
`Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(b)). Patent Owner
`
`asserts that the claims recite “[a] novel touch screen computer game user
`
`interface.” Prelim. Resp. 38. Claim 1, however, fails to recite such a touch
`
`screen. See Ex. 1001, 24:30–56.
`
`At this stage of the proceeding, we are persuaded that Petitioner has
`
`shown sufficiently that independent claim 1 of the ’799 patent is directed to
`
`an abstract idea. And, when viewed through the lens of the 2019 Revised
`
`
`5 We acknowledge that some of these considerations may be properly
`evaluated under Step 2 of Alice (Step 2B of the Guidance). Solely for
`purposes of maintaining consistent treatment within the Office, we evaluate
`them under Step 1 of Alice (Step 2A of the Guidance). See 2019 Revised
`Guidance, 84 Fed. Reg. at 55.
`
`18
`
`
`
`PGR2019-00018
`Patent 9,891,799 B2
`
`Guidance, claim 1 does not integrate the abstract idea into a practical
`
`application. See 2019 Revised Guidance, 84 Fed. Reg. at 55.
`
`Having determined that claim 1 recites a judicial exception and does
`
`not integrate that exception into a practical application, we must determine if
`
`the claim adds a specific limitation or combination of limitations that are not
`
`well-understood, routine, conventional activity or simply appends well-
`
`understood, routine, conventional activities previously known in the
`
`industry, specified at a high level of generality. Patent Owner asserts that
`
`the limitation pertaining to accepting operation information regarding a
`
`touch operation is not routine and conventional. See Prelim. Resp. 58. In
`
`support of this assertion, Patent Owner argues that Petitioner has only
`
`discussed one reference (Japanese Unexamined Patent Application
`
`Publication No. 2012-147936, hereinafter “the ’936 reference”) to show that
`
`such operations are well-understood, routine, and conventional activities.
`
`See id. Patent Owner then argues that the ’936 reference does not disclose
`
`the limitation at issue. Id. at 59. The question before us, ho
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