Ex Parte SLOAN et al

Patent Trials and Appeals Board

Jun 25, 2019

13528275 - (D) (P.T.A.B. Jun. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/528,275 06/20/2012 J. Nathaniel SLOAN
94470 7590 06/27/2019
DISNEY ENTERPRISES, INC.
c/o Fay Kaplun & Marcin, LLP
150 Broadway
Suite 702
New York, NY 10038
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.
40l89/0350l(l2DIS072MEDIA 1050
EXAMINER
LIM, SENG HENG
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
06/27/2019 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):
mmarcin@fkmiplaw.com
fball@fkmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte J. NATHANIEL SLOAN and DAVID MICHAEL FISHEL
Appeal2018-006803
Application 13/528,275
Technology Center 3700
Before ANNETTE R. REIMERS, JILL D. HILL, and
JEREMY M. PLENZLER, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
Final Decision rejecting claims 1---6, 8-16, and 18-22 under 35 U.S.C. § 101.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2018-006803
Application 13/528,275
CLAIMED SUBJECT MATTER
Claims 1, 11, and 20 are independent. Claims 2---6, 8-10, and 21
depend from claim 1, and claims 12-16, 18, 19, and 22 depend from claim
11. Claim 1 is illustrative of the claims on appeal, and is reproduced below:
1. A method of operating a fantasy sports platform
with improved recommendation generation using iterated
weight values, comprising:
executing, by a processor, a fantasy sports draft client
that corresponds to a fantasy sports league and wherein the
fantasy sports league comprises a plurality of fantasy sports
owners;
receiving, by the processor, a first plurality of ranking
values associated with a first sport player and a second plurality
of ranking values associated with a second sport player from a
plurality of sources;
assigning, by the processor, a weight value to each of the
ranking values, the weight value being associated with the
source that generated the ranking value;
generating, by the processor, a recommendation value for
the sport player as a function of the ranking values, the
corresponding weight values and a set of scoring rules that
correspond to the fantasy sports league;
displaying within the fantasy sports client a
representation of the first sport player and a representation of
the second sport player, wherein the representations of the first
and second sport players are ordered based on the
recommendation values of the first and second sports players;
receiving, by the processor during the execution of the
fantasy sports draft client, a selection value for one of the first
and second the sport player, wherein the selection value
corresponds to input from one of the plurality of fantasy sports
owners; and
determining, by the processor during the execution of the
fantasy sports draft client, a further weight value for each of the
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Application 13/528,275
sources as a function of the selection value, the
recommendation value, and the weight value for the
corresponding source.
OPINION
Appellants address claims 1---6, 8-16, and 18-22 as a group. We
select claim 1 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv). Appellants
dispute whether claim 1 is directed to an abstract idea ( Appeal Br. 8-11)
and, even if directed to an abstract idea, whether claim 1 recites significantly
more than that abstract idea (id. at 11-16). We have considered all of
Appellants' arguments when reaching our decision below.
Section 101 of the Patent Act provides that "any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof' is patent eligible. 35 U.S.C. § 101.
Independent claim 1, which is representative, falls within the literal scope of
this provision because it claims a process.
The Supreme Court, however, has long recognized an implicit
exception to this section: "Laws of nature, natural phenomena, and abstract
ideas are not patentable." Alice Corp. v. CLS Bank lnt'l, 573 U.S. 208,216
(2014) (quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013)). To determine whether a claim falls within one of
these excluded categories, the Court has set out a two-part framework. The
framework requires us first to consider whether the claim is "directed to one
ofthosepatent-ineligible concepts." Alice, 573 U.S. at 217. Ifso, we then
examine "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." Alice, 573 U.S. at
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217 ( quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 78, 79 (2012)). That is, we examine the claims for an "inventive
concept," "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."' Alice, 573 U.S. at 217-18 ( alteration
in original) (quoting Mayo, 566 U.S. at 72-73).
The Patent Office recently issued guidance about this framework. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) ("2019 Eligibility Guidance"). Under the guidance, to decide
whether a claim is "directed to" an abstract idea, we evaluate whether the
claim (1) recites an abstract idea grouping listed in the guidance and (2) fails
to integrate the recited abstract idea into a practical application. See 2019
Eligibility Guidance, 84 Fed. Reg. at 51. If the claim is "directed to" an
abstract idea, as noted above, we then determine whether the claim recites an
inventive concept. The guidance explains that when making this
determination, we should consider whether the additional claim elements
add "a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field" or "simply append[]
well-understood, routine, conventional activities previously known to the
industry." 2019 Eligibility Guidance, 84 Fed. Reg. at 56.
Step 2(A), Prong 1
The Examiner explains, for example, that a number of the limitations
recited in claim 1 can be performed by a human. Final Act. 4. We agree.
Claim 1 recites subject matter that falls within an abstract idea grouping
listed in the guidance: "mental processes." See 2019 Eligibility Guidance,
84 Fed. Reg. at 52, 53 (listing "[m]ental processes----concepts performed in
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Application 13/528,275
the human mind (including an observation, evaluation, judgment, opinion)"
as one of the "enumerated groupings of abstract ideas" (footnote omitted)).
The guidance explains that "mental processes" include acts that people can
perform in their minds or using pen and paper, even if the claim recites that
a generic computer component performs the acts. See 2019 Eligibility
Guidance, 84 Fed. Reg. at 52 n.14 ("If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind.")
( emphasis omitted); see also Intellectual Ventures I LLC v. Symantec Corp.,
838 F.3d 1307, 1318 (Fed. Cir. 2016) ("[W]ith the exception of generic
computer-implemented steps, there is nothing in the claims themselves that
foreclose them from being performed by a human, mentally or with pen and
paper."), quoted in 2019 Eligibility Guidance, 84 Fed. Reg. at 52 n.14.
The majority of claim 1 is a recitation of mental processes. The steps
of "receiving ... a first plurality of ranking values associated with a first
sport player and a second plurality of ranking values associated with a
second sport player from a plurality of sources," "assigning ... a weight
value to each of the ranking values, the weight value being associated with
the source that generated the ranking value," "generating ... a
recommendation value for the sport player as a function of the ranking
values, the corresponding weight values and a set of scoring rules that
correspond to the fantasy sports league," "displaying ... a representation of
the first sport player and a representation of the second sport player, wherein
the representations of the first and second sport players are ordered based on
the recommendation values of the first and second sports players,"
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Appeal2018-006803
Application 13/528,275
"receiving ... a selection value for one of the first and second the sport
player, wherein the selection value corresponds to input from one of the
plurality of fantasy sports owners," and "determining ... a further weight
value for each of the sources as a function of the selection value, the
recommendation value, and the weight value for the corresponding source"
are all capable of being performed in the human mind and/or with pen and
paper.
Accordingly, claim 1 recites an abstract idea, namely, the mental
processes listed above.
Step 2(A), Prong 2
The remaining limitations (those not included in the recited abstract
idea noted above) specify that the various steps of the abstract idea are
"execut[ed], by a processor, [via] a fantasy sports draft client." The
Examiner explains that "[t]he additional elements or combination of
elements in the claims other than the abstract idea per se amount to no more
than 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. 4. We
agree.
There is nothing in the claim that integrates the recited abstract idea
into a practical application. Appellants' Specification makes clear that the
remaining limitations are generic. See Spec. ,r,r 28-32. The Specification
explains, for example, that "[t]he fantasy sports application may be an
interface provided on a client ... executed on an electronic device." Id. ,r
29. "The user device 130 may be any electronic device such as a computer
terminal, a laptop, a personal digital assistant, a tablet, a cellular phone, etc."
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Application 13/528,275
and "may include a processor 210, a memory arrangement 220, an input
device 230, a display 240, and a transceiver 250." Id. ,r 31. "The processor
210, the memory 220, the input device 230, the display 240, and the
transceiver 250 may all provide conventional functionalities for the user
device 130." Id. ,r 32. Simply programming a general-purpose computer to
perform abstract ideas does not integrate those ideas into a practical
application. See 2019 Eligibility Guidance, 84 Fed. Reg. at 55 (identifying
"merely includ[ing] instructions to implement an abstract idea on a
computer" as an example of when an abstract idea has not been integrated
into a practical application).
Accordingly, claim 1 is directed to an abstract idea.
Step 2(B)
Because we determine that claim 1 is directed to an abstract idea, we
next determine whether the claim provides an inventive concept. See 2019
Eligibility Guidance, 84 Fed. Reg. at 56. As noted by the Examiner (Final
Act. 4), and acknowledged in Appellants' Specification (Spec. ,r,r 28-32),
the additional claim elements ("processor" and "fantasy sports draft client")
"simply append[] well-understood, routine, conventional activities
previously known to the industry" (see 2019 Eligibility Guidance, 84 Fed.
Reg. at 56).
Accordingly, the claim does not add any inventive concept.
For at least these reasons, after applying the 2019 Eligibility
Guidance, we sustain the Examiner's decision to reject claims 1---6, 8-16,
and 18-22 under 35 U.S.C. § 101.
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Application 13/528,275
DECISION
We AFFIRM the Examiner's decision to reject claims 1---6, 8-16, and
18-22.
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.
§ 1.13 6( a )(l)(iv ).
AFFIRMED
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