Andre Demarest

Patent Trials and Appeals Board

Sep 29, 2021

2021002325 (P.T.A.B. Sep. 29, 2021)

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.
14/586,170 12/30/2014 Andre V. Demarest D0735.70000US02 4713
23628 7590 09/29/2021
WOLF GREENFIELD & SACKS, P.C.
600 ATLANTIC AVENUE
BOSTON, MA 02210-2206
EXAMINER
HOLZMACHER, DERICK J
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
09/29/2021 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):
Patents_eOfficeAction@WolfGreenfield.com
WGS_eOfficeAction@WolfGreenfield.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDRE V. DEMAREST

Appeal 2021-002325
Application 14/586,170
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the
Examiner’s decision rejecting claims 1–20 and 22. We have jurisdiction
under 35 U.S.C. § 6(b). An Oral Hearing in this matter was held on
August 24, 2021.
We AFFIRM.
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ILLUSTRATIVE CLAIM
1. A method of operating a rugby league within the
United States using resources of an American football league,
the method comprising:
for each rugby team of a plurality of rugby teams of the
rugby league:
associating the rugby team of the plurality of rugby
teams with a football team of a plurality of football teams
of the American football league; and
sharing resources of the football team with the
rugby team, wherein sharing resources comprises the
rugby team of the plurality of rugby teams playing games
with other teams of the plurality of rugby teams using
physical resources and human resources of the one
football team.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Yoo et al. (“Yoo”) US 2010/0070453 A1 Mar. 18, 2010
Tom Dart, NFL knows US professional rugby union could be a very good
deal indeed, The Guardian (May 11, 2013)
Jeff Hull, Pro Rugby in America: New National Rugby Football League
Soaking Up NFL Talent, Bleacher Report (Aug. 29, 2013)

REJECTIONS
I. Claims 1–20 and 22 are rejected under 35 U.S.C. § 101 as
ineligible subject matter.
II. Claims 1, 10–14, 16–18, and 20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hull and Dart.
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III. Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Hull, Dart, and Yoo.1
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Subject-Matter Eligibility
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. Yet, subject matter belonging to any of the statutory
categories may, nevertheless, be ineligible for patenting. The Supreme
Court has interpreted 35 U.S.C. § 101 to exclude laws of nature, natural
phenomena, and abstract ideas, because they are regarded as the basic tools
of scientific and technological work, such that including them within the
domain of patent protection would risk inhibiting future innovation premised
upon them. Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013).
Of course, “[a]t some level, ‘all inventions . . . embody, use, reflect,
rest upon, or apply’” these basic tools of scientific and technological work.
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). Accordingly,
evaluating ineligible subject matter, under these judicial exclusions, involves
a two-step framework for “distinguish[ing] between patents that claim the
buildin[g] block[s] of human ingenuity and those that integrate the building

1 Dependent claims 3–9, 15, and 19 have been indicated as allowable over
the prior art. Non-Final Act. 3.
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blocks into something more, thereby transform[ing] them into a patent-
eligible invention.” Id. (alterations in original) (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 88–89 (2012) (internal
citation and quotation marks omitted)). The first step determines whether
the claim is directed to judicially excluded subject matter (such as a so-
called “abstract idea”); the second step determines whether there are any
“additional elements” recited in the claim that (either individually or as an
“ordered combination”) amount to “significantly more” than the identified
judicially excepted subject matter itself. Id. at 217–18.
In 2019, the Office published revised guidance on the application of
§ 101, in accordance with judicial precedent. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019)
(“2019 Revised Guidance”).2 Under the 2019 Revised Guidance, a claim is
“directed to” an abstract idea, only if the claim recites any of
(1) mathematical concepts, (2) certain methods of organizing human
activity, and (3) mental processes — without integrating such abstract idea
into a “practical application,” i.e., without “apply[ing], rely[ing] on, or
us[ing] the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception.” Id. at 52–55. The
considerations articulated in MPEP § 2106.05(a)–(c) and (e)–(h) bear upon

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf). The Manual of Patent Examining
Procedure (“MPEP”) incorporates the revised guidance and subsequent
updates at § 2106 (9th ed. Rev. 10.2019, rev. June 2020).
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whether a claim element (or combination of elements) integrates an abstract
idea into a practical application. Id. at 55 (referring to MPEP 9th ed. Rev.
08.2017, rev. Jan. 2018). A claim that is “directed to” an abstract idea
constitutes ineligible subject matter, unless the claim recites an additional
element (or combination of elements) amounting to significantly more than
the abstract idea. Id. at 56.
Although created “[i]n accordance with judicial precedent,” the 2019
Revised Guidance enumerates the analytical steps differently than the
Supreme Court’s Alice opinion. 2019 Revised Guidance, 84 Fed. Reg. at 52.
Step 1 of the 2019 Revised Guidance addresses whether the claimed subject
matter falls within any of the statutory categories of 35 U.S.C. § 101. Id.
at 53–54. Step 2A, Prong One, concerns whether the claim at issue recites
ineligible subject matter; if an abstract idea is recited, Step 2A, Prong Two,
addresses whether the recited abstract idea is integrated into a practical
application. Id. at 54–55. Unless such integration exists, the analysis
proceeds to Step 2B, in order to determine whether any additional element
(or combination of elements) amounts to significantly more than the
identified abstract idea, which would render a claim patent eligible, even
though it is directed to judicially excepted subject matter. Id. at 56.
The Appellant presents several arguments for independent claim 1
(see Appeal Br. 11–28), which the Appellant also relies upon for dependent
claims 2–20 (see id. at 29), and the Appellant presents additional arguments
for independent claim 22 (see id. at 29–32). Accordingly, we begin by
addressing claim 1.
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With regard to Step 1 of the 2019 Revised Guidance, the Examiner
regards claim 1 (as well as the other claims in the Appeal) as being within
the statutory categories of § 101. Non-Final Act. 34.
Turning to Step 2A, Prong One, the Examiner addresses the following
limitations of claim 1: “associating the rugby team of the plurality of rugby
teams with a football team of a plurality of football teams of the American
football league”; and “sharing resources of the football team with the rugby
team, wherein sharing resources comprises the rugby team of the plurality of
rugby teams playing games with other teams of the plurality of rugby teams
using physical resources and human resources of the one football team.” See
Non-Final Act. 35. According to the Examiner, these limitations recite
judicially excepted subject matter — specifically belonging to the Office’s
identified category of certain methods of organizing human activity. Id. at
36–37, 39–40. The Examiner also regards the identified claim limitations as
reciting judicially excepted subject matter belonging to the Office’s
identified category of mental processes. Id. at 42.
The Appellant contends that the Examiner’s analysis invokes an
improper categorical prohibition against the patent eligibility of so-called
business methods. Appeal Br. 12 (citing Non-Final Act. 9–10). The
Supreme Court has foreclosed such a prohibition, Bilski v. Kappos, 561 U.S.
593, 606–608 (2010), but we do not regard the Examiner as stating anything
to the contrary.
The Appellant also argues that the Examiner “contends that the
entirety of the body of claim 1 is an ‘abstract idea,’” which the Appellant
regards as “manifestly inconsistent with the Office’s guidance.” Appeal
Br. 17–18. Although the 2019 Revised Guidance, discussed above, would
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not bar such a delineation of claim language, the Examiner’s analysis
corresponding to Step 2A, Prong One, instead, addresses only the limitations
identified above, regarding the claimed “associating” and “sharing
resources” features.
The Appellant argues that the “sharing resources” features of claim 1
are the “only elements” that “relate at all to ‘certain methods of organizing
human activity,’” which might implicate judicially excepted subject matter.
Appeal Br. 18. See also id. at 20.
To the contrary, a proper interpretation of the claim language reveals
an interconnection between the “associating” and “sharing resources”
features — both of which are situated squarely within the judicially excepted
subject matter category of certain methods of organizing human activity.
The Specification discloses that American football teams and rugby teams
might be “associated” in a number of ways. See Spec. 40–41. For example:
“The teams may be associated through common ownership (e.g., the owners
of the football team owning the rugby team, or the football team owning the
rugby team) and/or through sharing of resources (human, physical,
intellectual property).” Id. at 40. As in claim 1, the recited “sharing
resources of the football team with the rugby team” is interrelated with the
nature of the recited “associating the rugby team . . . with a football team.”
As the Specification indicates, the “sharing of resources (human, physical,
intellectual property)” is a particular manifestation of an “associat[ion]”
between the “rugby team” and the “football team.” See id.
Contrary to the Appellant’s argument (see Appeal Br. 20), claim 1’s
“associating” and “sharing resources” limitations recite certain methods of
organizing human activity, as explained in the 2019 Revised Guidance, 84
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Fed. Reg. at 52, such as “commercial or legal interactions,” “including
agreements in the form of contracts; legal obligations; [and] business
relations,” as well as “managing personal behavior or relationships or
interactions between people.” The nature of the claimed “associat[ion]”
(e.g., whether “[t]he teams may be associated through common ownership,”
per Spec. 40) and the “sharing resources” reflect the teams’ commercial and
legal relationships. Further, the recited “the rugby team of the plurality of
rugby teams playing games with other teams of the plurality of rugby teams
using physical resources and human resources of the one football team”
involves managing personal behavior, relationships, and interactions
between people.
In view of the foregoing, the Appellant does not persuade us of error
in the Examiner’s analysis corresponding to Step 2A, Prong One.
Per Step 2A, Prong Two, unless a claim that recites a judicial
exception (such as an abstract idea) “integrates the recited judicial exception
into a practical application of that exception,” the claim is “directed to” the
judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 53. The
analysis of such an “integration into a practical application” involves
“[i]dentifying . . . any additional elements recited in the claim beyond the
judicial exception(s)” and “evaluating those additional elements individually
and in combination to determine whether they integrate the exception into a
practical application.” Id. at 54–55. Among the considerations “indicative
that an additional element (or combination of elements) may have integrated
the exception into a practical application” 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. at 55 (footnote
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omitted). “[W]hether an additional element or combination of elements
integrate[s] the exception into a practical application should be evaluated on
the claim as a whole.” Id. at 55 n.24.
The Appellant argues that claim 1 includes such additional elements
that integrate the identified judicial exception into a practical application.
Specifically, the Appellant argues that claim 1 “specifically limits the idea of
sharing resources between related companies to an athletic context and,
more particularly, to the sharing of resources between a league operating in
one sport and a league operating in another sport.” Appeal Br. 24.
“Additionally,” the Appellant contends, “claim 1 goes on to limit that
concept to the particular practical application of (1) operating a rugby
league, (2) within the United States, (3) using resources of an American
football league.” Id.
As an initial matter, the Appellant’s argument is based upon claimed
subject matter that the Examiner includes as part of the judicial exception, as
discussed above (see Non-Final Act. 35), rather than any additional
elements. The proposed “specific improvements to conventional
techniques” for operating a rugby league that “exploit[s] the previously-
unrecognized underutilization of professional American football league
resources” (Appeal Br. 25) is a result of the judicial exception.
Furthermore, the features that the Appellant emphasizes — the
athletic context, the rugby league, the American football league, and the
geographic area of the United States — are, at best, the type of field-of-use
restrictions that cannot give rise to a patent-eligible practical application of a
judicial exception. Bilski, 561 U.S. at 612 (restricting use of the judicial
exception to “the energy market” did not render claimed subject matter
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patent-eligible); Parker v. Flook, 437 U.S. 584, 589–90 (1978) (restricting
use of the judicial exception to petrochemical and oil-refining industries did
not render claimed subject matter patent-eligible). See also 2019 Revised
Guidance, 84 Fed. Reg. at 55.
Therefore, the Appellant’s arguments regarding Step 2A, Prong Two,
do not persuade us of error in the rejection of claim 1.
Under Step 2B of the 2019 Revised Guidance, 84 Fed. Reg. at 56, a
claim that recites a judicial exception (such as an abstract idea) might,
nevertheless, be patent eligible, if the claim contains “additional elements
amount[ing] to significantly more than the exception itself” — i.e., “a
specific limitation or combination of limitations that [is] not well-
understood, routine, conventional activity in the field, which is indicative
that an inventive concept may be present.” See Alice, 573 U.S. at 223
(“[T]he mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.”)
The Appellant does not address the inquiry of Step 2B separately from
the Appellant’s arguments relating to Step 2A, Prong Two, wherein the
Appellant contends that certain features of claim 1 “provide a specific
improvement to conventional techniques” for operating a rugby league.
Appeal Br. 29. Even if we regard the Appellant as addressing Step 2B, the
Appellant’s arguments are not persuasive, because the Appellant relies upon
aspects of the identified judicial exception — rather than any additional
elements outside of the abstract idea.
Therefore, the Appellant does not persuade us of error in the
Examiner’s analysis corresponding to Step 2B. Consequently, we are not
persuaded of error in the rejection of independent claim 1, or of dependent
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claims 2–20, for which the Appellant relies upon these same arguments. See
Appeal Br. 29.
In addition to the arguments that the Appellant provides for claim 1,
the Appellant argues that independent claim 22 “is patent-eligible for other
reasons as well.” Appeal Br. 31. According to the Appellant, claim 22
includes even more “additional elements” than claim 1, which “further
constrain the concept of sharing resources between related companies, and
indeed, even the particular application of operating a rugby league in the
United States, in a meaningful way.” Id. The Appellant refers to the
following limitations of claim 22:
the human resources of the one football team that are shared
comprising players of the one football team and further
comprising administrative human resources of the one football
team, and wherein the sharing resources further comprises
sharing intellectual property resources of the one football team
with the one rugby team,
. . .
wherein sharing resources of the one football team with
the one rugby team comprises sharing the human resources of
the one football team at least in part by:
for one or more football players of the one football
team, evaluating a position played by the football player
on the one football team and skills of the football player
in connection with a mapping of football positions and
skills to rugby positions, the one or more football players
of the one football team comprising second-string and
third-string football players of the one football team and
not comprising first-string football players of the one
football team, the mapping identifying a first plurality of
positions on the one rugby team as positions that may be
filled by football players and the first plurality of
positions being fewer than all of the plurality of positions
on the one rugby team;
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and assigning at least one of the one or more
football players to a position on the one rugby team
based at least in part on the evaluating.
The Appellant argues:
Sharing these particular resources, and the particular approach
to sharing human resources through a particular mapping of
football positions and skills to rugby positions, and evaluating
“second-string and third-string football players” and not “first-
string” players to determine which positions on the rugby team
(that are expressly recited as “fewer than all of the” rugby
positions) to assign football players to, further ensure that claim
22 is directed to a practical application of any abstract idea and
to a particular improvement over past approaches to operating
rugby leagues or sharing resources between related companies.
Id.
The Appellant’s argument is unpersuasive, because the limitations
that the Appellant relies upon are not “additional elements”; rather, they are
part of the judicial exception, as identified in the Examiner’s Step 2A, Prong
One, analysis. Non-Final Act. 35–45. In a manner similar to claim 1, the
Examiner regards these claim 22 limitations as reciting aspects of certain
methods of organizing human activity or mental processes. Id.
Furthermore, even if the identified limitations of claim 22 were
treated as additional elements, they only narrow the field of use to which the
judicial exception is employed. As discussed above, such applications do
not render a claim patent-eligible. Therefore, we are not persuaded of error
in the Examiner’s rejection of claim 22.
Accordingly, we sustain the rejection of claims 1–20 and 22 under
35 U.S.C. § 101.
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Obviousness
Regarding the rejection of independent claim 1, the Appellant argues
that the cited Hull and Dart references fail to teach or suggest the limitation
of “associating the rugby team of the plurality of rugby teams with a football
team of a plurality of football teams of the American football league.”
Appeal Br. 32–33. This argument persuades us of error in the rejection.
The Examiner relies upon Hull, for this teaching — specifically,
Hull’s disclosure of a proposed rugby league soliciting former National
Football League (NFL) players about playing professional rugby in the
United States. See Non-Final Act. 66–67 (citing Hull 1–4), Answer 15–16
(citing Hull 1–3). As the Appellant argues, Hull does not teach associating
any rugby team with any American football team, because the referenced
former NFL players are “free agents,” who are not employed by any NFL
team. Appeal Br. 33 (citing Hull 1–2). The Examiner does not adequately
establish that soliciting such players for undertaking the sport of rugby
constitutes any relationship with “a football team of a plurality of football
teams of the American football league,” per claim 1. In addition, as the
Appellant contends, Hull’s disclosure of proposing to hold an exhibition
rugby game at a football stadium in the United States also fails to satisfy the
identified claim limitation, because the reference does not identify any
“rugby team of the plurality of rugby teams” that, per claim 1, are “of [a]
rugby league.” Id. (citing Hull 2).
Accordingly, we are persuaded of error in the rejection of independent
claim 1 and, for similar reasons, independent claim 22, as well as the
respective dependent claims, such that we do not sustain the rejections of
claims 1, 2, 10–14, 16–18, and 20 under 35 U.S.C. § 103(a).
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CONCLUSION
The rejection of claims 1–20 and 22 under 35 U.S.C. § 101 as
ineligible subject matter is affirmed.
The rejection of claims 1, 10–14, 16–18, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Hull and Dart is reversed.
The rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable
over Hull, Dart, and Yoo is reversed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20, 22 101 Eligibility 1–20, 22
1, 10–14,
16–18, 20
103(a) Hull, Dart 1, 10–14,
16–18, 20
2 103(a) Hull, Dart, Yoo 2
Overall
Outcome
1–20, 22

TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED