Fox Sports Productions, Inc.

Patent Trials and Appeals Board

May 29, 2020

15068819 - (D) (P.T.A.B. May. 29, 2020)

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.
15/068,819 03/14/2016 David B. Hill FEG1611USC 4949
78537 7590 05/29/2020
Cantor Colburn LLP - Fox Entertainment Group
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
MONTOYA, OSCHTA I
ART UNIT PAPER NUMBER
2421
NOTIFICATION DATE DELIVERY MODE
05/29/2020 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID B. HILL, MICHAEL DAVIES,
ZACHARY FIELDS, and DAVID ERIC SHANKS

Appeal 2019-002176
Application 15/068,819
Technology Center 2400
Before CAROLYN D. THOMAS, ERIC B. CHEN, and
SCOTT RAEVSKY, Administrative Patent Judges.
RAEVSKY, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 6–19, and 21–30. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Fox
Sports Productions, Inc. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims relate to systems and methods for tracking and tagging
objects of interest within a broadcast, including expert indications related to
golf course terrain. Spec., Abstr. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A method for tracking and tagging objects of interest in a
broadcast, comprising:
providing an indication of terrain of a golf course; and
rendering graphics in a broadcast over and relative to the
terrain of said golf course, the graphics indicative of a golf
expert’s indications of desirable and/or undesirable locations
for golf play;
wherein said desirable and undesirable locations are
indicated as good and bad spots to land a ball from a preceding
position;
wherein said indication by an expert takes into account
objective and subjective factors; and
wherein said factors include expert opinion on places that
might leave a player in a good or bad position in considering a
following shot, wherein said desirable and/or undesirable
locations are indicated as good and/or bad spots, respectively,
to land a ball from a preceding position.
REJECTION
Claims 1–4, 6–19, and 21–30 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more. Final Act. 4.
ANALYSIS
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
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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 and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed
to.” See id. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use 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 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);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67–68 (1972)).
Concepts determined to be patent eligible include physical and chemical
processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S.
175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing
India rubber, smelting ores” (id. at 183 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
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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. “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely
requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
After the docketing of this Appeal, the USPTO published revised
guidance on the application of § 101 (“Guidance”). See, e.g., USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Revised Guidance”); USPTO, October 2019 Update: Subject Matter
Eligibility (Oct. 17, 2019) (“Update”), 84 Fed. Reg. 55942 (Oct. 18, 2019)
(notice).
Under the Guidance, we 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 activities 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) (9th ed. Rev. 08.2017, Jan. 2018)).
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:
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(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional
activity” 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 Guidance, 84 Fed. Reg. at 56.

Step 2A, Prong One (Judicial Exception)
The Examiner determines that claim 12 is directed to the abstract idea
of “providing advice or instruction.” Final Act. 4. Appellant contends that
claim 1 is not abstract because it “does not describe providing a user advice
in a game at all.” Appeal Br. 6. We disagree that claim 1 does not recite an
abstract idea.
We determine that claim 1 recites a mental process because claim 1
broadly recites providing information about a golf course based on expert
opinion. Claim 1 recites in part:
providing an indication of terrain of a golf course; . . .
. . . indicative of a golf expert’s indications of desirable
and/or undesirable locations for golf play;
wherein said desirable and undesirable locations are
indicated as good and bad spots to land a ball from a preceding
position;

2 Apart from arguing certain dependent claims separately (discussed below
under Step 2A, Prong 2), Appellant argues the claims as a group. Appeal
Br. 6–12. We, therefore, select claim 1 as representative of the group,
except where we specifically address certain dependent claims below. See
37 C.F.R. § 41.37(c)(1)(iv).
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wherein said indication by an expert takes into account
objective and subjective factors; and
wherein said factors include expert opinion on places that
might leave a player in a good or bad position in considering a
following shot, wherein said desirable and/or undesirable
locations are indicated as good and/or bad spots, respectively,
to land a ball from a preceding position.
As drafted, these limitations, under their broadest reasonable
interpretation, recite a mental process that can be performed in the human
mind or using a pen and paper. See, e.g., CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011) (determining that a
claim whose “steps can be performed in the human mind, or by a human
using a pen and paper” is directed to an unpatentable mental process). Here,
claim 1 recites steps for an expert to provide an indication about a golf
course. These limitations encompass acts people can perform using their
minds or pen and paper at least because a golf expert can mentally develop
the claimed “expert opinion” including “objective and subjective factors”
and because the expert can provide an indication of terrain of a golf course,
including indications of desirable and/or undesirable locations for golf play,
with pen or paper.
Accordingly, for the aforementioned reasons, we determine that
claim 1 recites a mental process, and thus, an abstract idea. See Revised
Guidance, 84 Fed. Reg. at 52.

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Step 2A, Prong 2 (Integration into a Practical Application)
Under the Guidance, we now must determine if additional elements in
the claims integrate the judicial exception into a practical application
(see MPEP §§ 2106.05(a)–(c), (e)–(h)).3
We discern no additional element (or combination of elements)
recited in Appellant’s representative claim 1 that integrates the judicial
exception into a practical application. See Revised Guidance, 84 Fed. Reg.
at 54–55 (“Prong 2”). For example, Appellant’s claimed additional elements
(e.g., “rendering graphics in a broadcast over and relative to the terrain of [a]
golf course”) (1) do not improve the functioning of a computer or other
technology; (2) are not applied with any particular machine (except for a
generic computer, see Spec. ¶¶ 110, 119, 126 (discussed infra)); (3) do not
effect a transformation of a particular article to a different state; and (4) are
not applied in any meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment, such that the
claim as a whole is more than a drafting effort designed to monopolize the
exception. See MPEP §§ 2106.05(a)–(c), (e)–(h). Instead, these elements
merely serve to narrow the recited abstract idea using generic computer
graphics technology, which cannot impart patent-eligibility. See Spec. ¶¶
110 (“The system consists of a User Interface computer with a touch screen
and 4 rendering computers.”), 119 (“provided computers (rendering engines,
user interface computers)”), 126 (“This data is passed onto a computer

3 We acknowledge that some of the considerations at Step 2A, Prong 2 may
be evaluated under Step 2 of Alice (Step 2B of the Guidance). For purposes
of maintaining consistent treatment within the Office, we evaluate them
under Step 1 of Alice (Step 2A of the Guidance). See Revised Guidance, 84
Fed. Reg. at 55 n.25, 27–32.
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where an operator can now render the appropriate graphic to air.”);
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014)
(“[A]dding a computer to otherwise conventional steps does not make an
invention patent-eligible. . . . Any transformation from the use of computers
or the transfer of content between computers is merely what computers do
and does not change the analysis.”).
Appellant attempts to analogize the claimed invention to the claims in
Trading Techs. Int’l, Inc. v. CQG, Inc., 675 Fed. Appx. 1001 (Fed. Cir.
2017) (nonprecedential). Id. at 9. Appellant contends, “the graphic interface
is the broadcast, with the specifically rendered graphic over the indicated
terrain, providing (in some cases), non-intuitive or otherwise missed
indication of terrain features and importance relative to the rest of the course
and relative to changing positions of the ball.” Id.
We are not persuaded that the claims are like the claims at issue in
Trading Technologies. In Trading Technologies, the patents at issue
“solve[d] problems of prior graphical user interface devices . . . in the
context of computerized trading.” Trading Techs., 675 Fed. Appx. at 1004.
Appellant does not explain how the claimed invention solves any problem of
known graphic interfaces. For example, Appellant does not identity, and we
do not find, adequate description in Appellant’s Specification identifying a
specific problem with prior graphical interfaces, which Appellant’s claimed
broadcast graphics rendering seeks to solve. See, e.g., Spec. ¶ 75 (describing
a generic “graphical overlay on a golf course”), ¶¶ 110, 119, 126
(performing generic graphics operations with generic computer hardware).
Appellant also contends the claims are analogous to the claims in
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
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2016) and BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827
F.3d 1341 (Fed. Cir. 2016) because the claims recite an “improvement [in]
computer-related technology,” namely “providing improved visual
presentation requiring specific computer presentation parameters to give rise
to the specific visual overlay for the golf broadcast.” Appeal Br. 11.
Appellant does not explain how the claims recite an improvement in
technology; nor does Appellant analogize to the facts of McRO or BASCOM.
Such conclusory arguments are unpersuasive. In any event, in light of the
Specification’s teachings (discussed above), we are not persuaded that the
claims recite anything other than generic graphics operations.
Appellant argues certain dependent claims separately as follows:
Additionally, certain dependent claims that have never
been discussed by the Examiner further relate to particular
techniques for providing the enhanced broadcast rendered
graphics over and relative to the terrain of a golf course (with
graphics indicative of desirable and/or undesirable locations for
golf play to land a ball from a preceding position, along with
the further elements of claim 1).
For example, dependent claims 7 and 22 relate to varying
the position, size or shape of the indicated good and bad spots
according to various factors. The Examiner does not address
these claims at all.
Dependent claims 9 and 24 relate to changes of the
overlay reflecting a change in one or more factors, such as the
length of a preceding shot, lighting, wind conditions,
unanticipated hazards, etc. (described in dependent claims 10
and 25). The Examiner does not address these claims at all.
Dependent claims 12 and 27 further recite the use of a 3D
rendering of the golf course terrain relative to at least one pre-
determined camera shot, with the indication/rendering overlaid
relative to that terrain. The Examiner does not address these
claims at all.
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Dependent claims 14 and 29 further recite the use of a
broadcast extraction window in conjunction with tracking. The
Examiner does not address these claims at all.
Dependent claims 15 and 30 further recite the use of a
broadcast extraction window configured to pan, scan or zoom
in response to tracking data. The Examiner does not address
these claims at all.
Appeal Br. 8. Appellant’s arguments are unpersuasive because Appellant
merely states what these claims recite without providing substantive
argument. See 37 C.F.R. § 41.37(c)(1)(iv) (“A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim.”). In any event, we determine that these
elements likewise merely serve to narrow the recited abstract idea using
generic computer graphics technology, as taught by the Specification. See
Spec. ¶¶ 110, 119, 126 (discussed supra).
Accordingly, we determine that none of the claims integrate the
judicial exception into a practical application and, therefore, the claims are
directed to the recited abstract idea (a mental process).

Step 2B (Inventive Concept)
Because we find that the claims are directed to an abstract idea, we
next consider whether the claims include additional limitations such that the
claims amount to significantly more than the abstract idea.
“The second step of the Alice test is satisfied when the claim
limitations involve more than performance of well-understood, routine,
[and] conventional activities previously known to the industry.” Berkheimer
v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018) (internal quotations
omitted). “Whether something is well-understood, routine, and conventional
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to a skilled artisan at the time of the patent is a factual determination.” Id. at
1369; see also Revised Guidance, 84 Fed. Reg. at 56. The USPTO has
issued guidance in its Berkheimer Memo4, requiring the Examiner to support
a finding that limitation is well-understood, routine, and conventional using
any of the following four categories of information:
1. A citation to an express statement in the specification
or to a statement made by an applicant during prosecution that
demonstrates the well-understood, routine, conventional nature
of the additional element(s) . . . .
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element(s).
3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional
element(s) . . . .
4. A statement that the examiner is taking official notice
of the well-understood, routine, conventional nature of the
additional element(s) . . . .
Berkheimer Memo at 3–4.
Appellant contends “[t]he Examiner does not provide any express
support under items (1)–(3) [of the Berkheimer Memo].” Appeal Br. 7.
Appellant further contends,
Arguably, the Examiner has taken official notice by merely
indicating that the claims are “just using old technology.”
However, the Examiner still has not addressed the additional

4 Memorandum from Robert W. Bahr, entitled “Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.),” dated April 19, 2018
(“Berkheimer Memo”). The Berkheimer Memo is available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF.
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elements, but rather just the words “rendering graphics” from
claim 1. The Examiner must address the entire limitation, and
indeed, the combination of elements in claim 1 as a whole, but
has failed to do so.
Id.
The Examiner determines that “the additional elements, which are
recited at a high level of generality, provide conventional functions that do
not add meaningful limits to practicing the abstract idea.” Ans. 4. In so
determining, the Examiner finds that “rendering graphics in a specific
environment is not significantly more, if it is just using an old technology
(graphics in a broadcast) as a tool or in its conventional, understood function
to perform the abstract idea.” Id. at 5.
We agree that the additional limitations are well-understood, routine,
and conventional. As we explained above, the additional limitations,
individually and as an ordered combination, merely narrow the recited
abstract ideas using generic computer components. Support for our well-
understood, routine, and conventional finding can be found in the
Specification, for example, in paragraphs 110 (“The system consists of a
User Interface computer with a touch screen and 4 rendering
computers.”), 119 (“provided computers (rendering engines, user interface
computers)”), and 126 (“This data is passed onto a computer where an
operator can now render the appropriate graphic to air.”). These paragraphs
confirm that the claimed “rendering graphics in a broadcast over and relative
to the terrain of said golf course” is performed with conventional computer
hardware. Accordingly, we determine there are no additional limitations
that cause the claims to amount to significantly more than the abstract idea.
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Thus, we determine no element or combination of elements recited in
claim 1 contains any “inventive concept” or adds anything “significantly
more” to transform the abstract concept into a patent-eligible application.
Accordingly, we sustain the Examiner’s rejection of claims 1–4, 6–19,
and 21–30 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter in light of Alice, its progeny, and the Guidance.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–4, 6–19,
21–30
101 Eligibility 1–4, 6–
19, 21–30

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