Wright, Robert J. et al.

Patent Trials and Appeals Board

Mar 30, 2020

14837644 - (D) (P.T.A.B. Mar. 30, 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.
14/837,644 08/27/2015 Robert J. Wright HighlightGames-0110-US 9131
65449 7590 03/30/2020
PATENT INGENUITY, P.C.
9701 Wilshire Boulevard
Suite 1000
Beverly Hills, CA 90212
EXAMINER
MOSSER, ROBERT E
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
03/30/2020 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):
patents@patentingenuity.com
ssimpson@patentingenuity.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT J. WRIGHT, STEWART JAMES WHITTLE, and
TIMOTHY PATRICK JONATHAN GREEN
____________

Appeal 2019-002113
Application 14/837,644
Technology Center 3700
____________

Before DANIEL S. SONG, STEFAN STAICOVICI, and
FREDERICK C. LANEY, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated July 13, 2018, hereinafter “Final
Act.”) rejecting claims 21–27, which constitute all the claims pending in this
application.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Highlight Games Limited is identified as the real party in
interest in Appellant’s Appeal Brief (filed Aug. 23, 2018, hereinafter
“Appeal Br.”). Appeal Br. 2.
2 Claims 1–20 are canceled. See Appeal Br. 2, 11.
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SUMMARY OF DECISION
We AFFIRM.

INVENTION
Appellant’s invention is related to “a gaming system for electronic
interactive archive video virtual sports-based games.” Spec. para. 10.
Claim 21, the sole independent claim, is representative of the claimed
invention and is reproduced below (with reference indicators in brackets and
emphasis added):
21. A virtual gaming console comprising:
a display device;
an input device that [i] receives a session initiation input
to initiate a virtual game and that [ii] receives a challenge
response to a challenge presented during the virtual game that
corresponds to the virtual game, the challenge being presented
via the display device;
a processor, in operable communication with a challenge
database and a video clip database [iii] storing a plurality of
prerecorded video clips of one or more real games, that
[iv] initiates the virtual game based on the session initiation
input, [v] determines one or more virtual participants of the
virtual game, [vi] determines a subset of the plurality of
prerecorded video clips stored in the video clip database with a
tag that identifies the one or more virtual participants, [vii]
randomly selects a plurality of virtual game clips from the
subset, [viii] renders a sequence of the plurality of virtual
game clips on the display device, [ix] determines the challenge
from the challenge database based on the tag, [x] renders the
challenge on the display device, and [xi] determines an
outcome to the challenge response.

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REJECTIONS

I. The Examiner rejects claims 21–27 under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter.
II. The Examiner rejects claims 21, 26, and 27 under 35 U.S.C.
§ 103(a) as being unpatentable over Libby.3

ANALYSIS
Rejection I
Section 101 states, “[w]hoever invents or discovers any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.” 35 U.S.C. § 101. However, the
Supreme Court has “long held that this provision contains an important
implicit exception: [l]aws of nature, natural phenomena, and abstract ideas
are not patentable.” E.g., Alice Corp. Pty. Ltd. 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. See Alice, 573 U.S. 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.”
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

3 Libby et al., US 2003/0027621 A1, published Feb. 6, 2003. (“Libby”)
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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 (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 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
monopolize the [abstract idea].’” Id. ((alteration in the 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.
The PTO has published revised guidance on the application of § 101.
See 2019 Revised Patent Subject Matter Eligibility Guidance,
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84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter “2019 Guidance”). Under Step
2A of that 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 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)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look, in Step 2B, to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is 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.
In the matter before us, Appellant does not present separate arguments
for the patentability of claims 21–27. See Appeal Br. 4–7. Therefore, in
accordance with 37 C.F.R. § 41.37(c)(1)(iv), we select claim 21 as the
representative claim to decide the appeal of the rejection of these claims,
with claims 22–27 standing or falling with claim 21.

Step 1 – Statutory Category
We first determine whether independent claim 21 recites one or more
of the enumerated statutory classes of subject matter, i.e., process, machine,
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manufacture, or composition of matter, eligible for patenting under 35
U.S.C. § 101. Here, independent claim 21 recites “[a] virtual gaming
console” (i.e., a “machine”). See Appeal Br. 11 (Claims App.). Thus,
independent claim 21 recites a recognized statutory category under 35
U.S.C. § 101.

Step 2A, Prong 1 – Recitation of Judicial Exception
We next look to whether independent claim 21 recites any judicial
exceptions, including certain groupings of abstract ideas, i.e., mathematical
concepts, certain methods of organizing human activity, or mental processes.
In determining that independent claim 21 constitutes a judicial
exception to patent eligibility, the Examiner determines that the claim recites
“the abstract idea of a virtual gaming system and method as particularly
identified above and that is similar to the concepts that court have previously
found abstract in Certain Methods of Organizing Human Activity.” Final
Act. 4. The Examiner explains that claim 21 is similar to the claims held
ineligible in In re Webb, 609 Fed. Appx. 643 (Fed. Cir. 2015) (“Poker games
with varying position advantage”) and In re Smith, 815 F.3d 816 (Fed. Cir.
2016) (“method of conducting a blackjack game”). Id.
In response, Appellant argues that “numerous claim limitations (e.g.,
challenge database, video clip database, determining a subset of prerecorded
video clips with a tag identifying virtual participants, and randomly selecting
virtual game clips) of claim 21 are simply not in the enumerated abstract
ideas (mathematical concepts, organizing human activity, and mental
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processes).” Reply Br. 3.4 According to Appellant, claim 21 recites
“organizing virtual participant activity, rather than human activity,” “such as
physical actions of a real-world card dealer as described in In re Smith.” Id.
at 3–4.
We are not persuaded by Appellant’s argument because although
independent claim 21 recites an input device, a display device, a processor, a
video clip database, and a challenge database, “the basic character of a
process claim drawn to an abstract idea is not changed by claiming only its
performance by computers, or by claiming the process embodied in program
instructions on a computer readable medium.” See CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1375–76 (Fed. Cir. 2011) (citing In re
Abele, 684 F.2d 902 (CCPA 1982). Here, for the following reasons, we
agree with the Examiner that independent claim 21 recites an abstract idea
that describes a set of game rules. Indeed, the Federal Circuit has held that
“a set of rules for a game, are drawn to an abstract idea.” Smith, 815 F. 3d at
819. Rules for conducting a game fall within the grouping of “[c]ertain
methods of organizing human activity,” and, more particularly, under the
subgrouping involving “following rules.” See 2019 Guidance 52.
In particular, claim 21 recites rules for conducting a game, namely,
receiving input from a player to begin the game (as per limitations [i], [iv]),
selecting one or more virtual participants (as per limitation [v]), selecting
from a video clip database and a challenge database a plurality of video clips
and a challenge (trivia question), respectively, based on a tag identifying the
one or more virtual participants (as per limitations [iii], [vi], [vii], [ix]),

4 Appellant’s Reply Brief, filed Jan. 15, 2019.
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presenting to the player the selected video clip and challenge (as per
limitations [viii], [x]), receiving from the player a response to the challenge
(as per limitation [ii]), and determining an outcome to the player’s challenge
response (as per limitation [xi]). As such, although we appreciate
Appellant’s position that “the ‘virtual participants’ of claim 21 are not
human beings” (see Reply Br. 3), nonetheless, the limitations of claim 21
specify rules regarding how a player interacts with a game and its elements,
i.e., virtual participants, video clips, and challenges. Accordingly, claim 21
falls within the grouping of “[c]ertain methods of organizing human
activity.” See 2019 Guidance 52 (emphasis added).
In conclusion, the record establishes that claim 21 recites the abstract
idea of a method of organizing human activity because it recites rules for
conducting a game.

Step 2A, Prong 2 – Integrated Into a Practical Application
If a claim recites a judicial exception, then, in Prong 2, we determine
whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
See 2019 Guidance 54–55. This evaluation requires an additional element or
a combination of additional elements in the claim to apply, rely on, or use
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 exception. See id. at 54.
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We note the 2019 Guidance indicates that in the context of Prong 2 of
Step 2A, an exemplary consideration indicative that an additional element
(or combination of elements) may have integrated the exception into a
practical application is that an additional element reflects an improvement in
the functioning of a computer, or an improvement to other technology or
technical field. See id. at 55.
In this case, the Examiner finds that the additional elements of an
input device, a display device, and a processor “amounts to the mere
instructions to implement an abstract idea . . . on a generic computer . . .
without causing the improvement of the generic computer or another
technology filed.” Final Act. 5.
In response, Appellant argues that because the processor of
independent claim 21 randomly selects from the archived video footage
video clips that include tags corresponding to the chosen opponents (virtual
participants), the claimed invention “improv[es] the processing capabilities
of the processor via a reduction in the amount of data (e.g., video footage)
that has to be processed.” Appeal Br. 6 (citing Spec., para. 36). Thus,
according to Appellant, the processor of claim 21 “integrates tagging of
virtual participants and random selection of video clips into an application
that generates a video clip sequence of a practical time duration.” Reply Br.
5 (citing Spec., paras. 10, 32).
We are not persuaded by Appellant’s arguments because claim 21
does not recite additional elements sufficient to elevate the abstract idea of a
method of organizing human activity to a patent-eligible application. The
claimed input device, display device, processor, video clip database, and
challenge data base are recited at a high level of generality and their
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recitation does not integrate the abstract idea into a practical application.
Appellant’s Specification makes clear that these elements are generic
computing components, which do not invoke particular hardware or
software and are described by their function (e.g., receiving, storing,
analyzing, and outputting data). See FairWarning IP, LLC v. Iatric Sys.,
Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (“[T]he use of generic computer
elements like a microprocessor or user interface do not alone transform an
otherwise abstract idea into patent-eligible subject matter.”).
For example, each of the “video clip database” and the “challenge
database” is for storing data (pre-recorded video clips and challenges) (as
per limitation [iii]); the “input device” is for receiving data (player input)
from the player (as per limitations [i], [ii]); and the “display device” is for
displaying data (video clips and challenges) to the player (as per limitations
[viii], [x]). See Spec., paras. 34, 36, 37, 42. In a similar manner, the
“processor” is described functionally as analyzing data, namely, initiating a
game based on received input from a player (as per limitation [iv]), selecting
data (virtual participants, video clips, and challenges) (as per limitations [v]–
[vii], [ix]), and determining an outcome to the challenge response (as per
limitation [xi]). See id., paras. 36, 43. As such, the reference to these
generic devices, i.e., input device, display device, processor, video clip
database, and challenge database, are no more than mere instructions to
apply the judicial exception using generic computer elements. See MPEP
§ 2106.05(f)(2) (“Use of a computer or other machinery in its ordinary
capacity for . . . tasks (e.g., to receive, store, or transmit data) . . . does not
provide significantly more.”). Appellant does not persuasively explain why
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the additional elements discussed supra are other than known machinery that
perform an existing process.
We also do not agree with Appellant that selecting “only a portion of
archived video footage” (see Appeal Br. 6), i.e., random selection of tagged
video clips, provides an improvement in the processor’s technical
functionality (processing capability). Rather, any purported improvements
are to the underlying game, not the gaming machine or its operation and/or
function. In other words, claim 21 does not recite a technical improvement
tied to a technical problem in the gaming machine arts, but, rather,
“provide[s]a dimension of fun/ involvement and skill testing” to the game.
Spec., para. 15. The functionality of the game set forth in claim 21 is not
technical in nature and does not provide a technical solution to a technical
problem as contemplated by the Federal Circuit in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). In particular, we agree
with the Examiner that “the proposed use of tags by a processor would at
best represent a computer used in its ordinary capacity to manipulate and
sort data but not represent an improvement to the computer functionality
itself.” Ans. 12.5
Thus, for the foregoing reasons, we determine that the
recited “additional element[s] merely recite[] the words ‘apply it’ (or an
equivalent) with the judicial exception, or merely includes instructions to
implement an abstract idea on a computer, or merely uses a computer as a
tool to perform an abstract idea.” 2019 Guidance 55. Accordingly,
Appellant’s claim 21, (1) does not improve the functioning of a computer

5 Examiner’s Answer, dated Dec. 27, 2018.
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or other technology; (2) is not applied with any particular machine (except
for generic components); (3) does not affect a transformation of a particular
article to a different state; and (4) is not applied in any meaningful way
beyond generally linking the use of the judicial exception to a particular
technological environment. See MPEP § 2106.05(a)–(c), (e).
In conclusion, we are not persuaded of error in the Examiner’s
determination that claim 21 is directed to an abstract idea, and we find
that the claimed additional elements do not integrate the abstract idea
into a practical application.

Step 2B – Well-Understood, Routine, Conventional Activity
Having determined that independent claim 21 recites a judicial
exception, and does not integrate that exception into a practical application,
under Step 2B we consider whether the claim adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field. See 2019 Guidance 56.
The Examiner finds that claim 21 does not include additional elements
that are sufficient to amount to significantly more than the judicial exception
because the recited additional elements of an input device, a display device,
and a processor 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.” Final Act. 4 (citing Spec.,
paras. 31, 34, 41, 66, 67).6 According to the Examiner, Appellant’s

6 The numbering of the last paragraph bridging pages 15 and 16 of the
Specification is a typographical error. We refer to this paragraph as “67” as
it follows paragraph 66.
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“[S]pecification only contains computing elements which are conventional
and generally widely known in the field of the invention described, and
accordingly their exact nature or type is not necessary for an understanding
and use of the invention by a person skilled in the art.” Id. at 5.
Appellant argues that neither the Examiner nor the Specification
indicates how selecting video clips and challenges based on a “tag that
identifies the one or more virtual participants,” as called for by claim 21, is
well-understood, routine, and conventional. See Appeal Br. 4–5 (citing
Berkheimer v. HP Inc., 890 F.3d 1369, 1371 (Fed. Cir. 2018)). Appellant
contends that the Examiner’s reliance on Libby to show that tags are well-
understood, routine, and conventional is misplaced because Libby’s date and
time tag is not the same as the claimed “tag that identifies the one or more
virtual participants.” See id. at 5 (citing Libby, para. 85). Thus, according
to Appellant, the Examiner has not met the “burden of proof in
demonstrating well-understood, routine, and conventional activity, as
outlined by Berkheimer and the USPTO Berheimer Memo.” Id (emphasis
added).
An additional element (or combination of elements) is not well-
understood, routine or conventional unless the Examiner finds an evidentiary
basis, and expressly supports a rejection in writing with, one or more of the
following:
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).
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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).

See Berkheimer Memo 3–4.7
In this case, the Examiner correctly relies on paragraphs 31, 34, 41,
66, and 67 of Appellant’s Specification as evidence that the recited input
device, display device, and processor, are well-understood, routine, and
conventional. See id., criteria 1; see also Final Act. 5, Ans. 9, 11. In
particular, we note that paragraphs 31, 34, 41, 66, and 67 of the
Specification describe the “input device” as a “touch-screen interface”; the
“display device” as “the video display screen on the user’s electronic media
device . . . smartphone, tablet, phablet, PDA, laptop, desktop or other such
device”; and “[s]uitable processors . . . [as] a general purpose processor . . . a
conventional processor.”
In regards to the “tag” of claim 21, we note that as per criteria 4 of the
Berheimer Memo, the Examiner takes official notice that the use of “[t]ags is
a known practice in the prior art.” See Final Act. 10. Furthermore, because
tagging constitutes selecting data, and, selecting data is, like obtaining data,
an extra-solution activity, the recitation of a tag is insufficient to transform
the claimed abstract idea into patent-eligible subject matter because it fails to
impose meaningful limitations on the application of the abstract idea recited
in the claims. See 2019 Guidance 55, n.31. Appellant’s Specification
describes tagging of video clips and randomly selecting tagged video clips

7 USPTO Commissioner for Patent Memorandum dated April 19, 2018,
“Changes in Examination Procedure Pertaining to Subject Matter Eligibility,
Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.).”
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as filtering data (see Spec. paras. 32, 57, 60), which is “a longstanding, well-
known method of organizing human behavior,” and, thus, constitutes an
abstract idea. BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC,
827 F.3d 1341, 1348 (Fed. Cir. 2016). Accordingly, because the “tag”
limitation of claim 21 is part of what we have already determined to be the
abstract idea, we agree with the Examiner that Berkheimer “does not support
Appellant’s . . . [position] that the abstract portions of the claimed invention
must be shown to be well-understood, routine, and conventional.” Ans. 10;
see also BSG Tech LLC v. Buyseasons, Inc., 899 F. 3d 1281, 1291 (Fed. Cir.
2018) (citing SAP Am., Inc. v. InvestPic, LLC, 898 F. 3d 1161, 1168 (Fed.
Cir. 2018) (“What is needed is an inventive concept in the non-abstract
application realm.”).
Finally, to the extent Appellant argues that the “tag” limitation of
claim 21 presents an “advancement” over the prior art of Libby and is thus
not well-understood, routine, and conventional (see Appeal Br. 6), an
abstract idea does not transform into an inventive concept just because the
prior art does not disclose or suggest it. See Alice, 566 U.S. at 78. As
discussed supra, using tags to select/filter video clips and challenges (i.e.,
data) based on the identity of one or more virtual participants in the game of
claim 21 is part of the abstract idea. “It has been clear since Alice that a
claimed invention’s use of the ineligible concept to which it is directed
cannot supply the inventive concept that renders the invention ‘significantly
more’ than the ineligible concept.” BSG, 899 F. 3d at 1290.
As such, for the foregoing reasons, Appellant’s arguments do not
establish that the claimed invention contains an arrangement of non-
conventional elements that exist solely in a technical/computer field and
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solve a specific computer/technological problem. Accordingly, claim 21
fails to add a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field, and, thus, fails to
indicate the presence of an inventive concept. Therefore, we conclude that
none of the limitations of claim 21, viewed “both individually and as an
ordered combination,” amount to significantly more than the judicial
exception in order to sufficiently transform the nature of the claims into
patent-eligible subject matter. See Alice, 573 U.S. at 217–218.
In conclusion, for the foregoing reasons, we sustain the rejection of
claim 21 under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter. Claims 22–27 fall with claim 1.

Rejection II
Appellant does not present arguments for the patentability of claims
26 and 27 apart from independent claim 21. See Appeal Br. 8–9. Therefore,
we select claim 21 as the representative claim to decide the appeal of the
rejection of these claims, with claims 26 and 27 standing or falling with
claim 21.
The Examiner finds that Libby discloses most of the limitations of
independent claim 21 including, inter alia, “identification and use of video
segments by their corresponding content . . . and the use of tags to store data
related to other stored elements.” Final Act. 7–8 (citing Libby, paras. 45, 85,
Fig. 7). However, the Examiner finds that Libby does “not explicitly
describe that video segments content is identified through tags.” Id. at 8.
Nonetheless, the Examiner determines that
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[I]t would have been obvious to one of ordinary skill in the art at the
time of invention to have utilized the known reference element of tags
as taught by Libby with the video segments of Libby in order to use a
known reference element of Libby to enable the identification of
which video segments correspond to defined game outcomes as
disclosed by Libby.

Id (emphasis added).
Appellant argues that the Examiner arrived at the rejection by
employing impermissible hindsight reconstruction. Appeal Br. 8.
According to Appellant, “the tag [in the claimed invention] identifies one or
more virtual participants in the virtual game, not a generalized notion of
content.” Id. Appellant contends that “[m]odifying a time of day and date
tag to be a tag that identifies virtual participants in a virtual game for pre-
recorded clip selection and challenge selection would simply not be
performed by one of ordinary skill in the art without varying all parameters
or trying each of numerous possible choices until arriving at a successful
result.” Id. (citing In re Stepan Company, 868 F. 3d 1342 (Fed Cir. 2017);
see also Reply Br. 7.
We are not persuaded because Appellant’s arguments are not
commensurate with the Examiner’s rejection. Specifically, the Examiner is
not modifying the date and time tags of Libby. Rather, because Libby
discloses identifying participants (i.e., numbers of a lottery winning
combination, participants in a horse, dog, car or motorcycle race) in video
segments for composing a video of the wining outcome of a lottery game,
the Examiner employs tags as a well-known indexing method to identify
such video segments. See Libby, paras. 45, 47, 49. We, thus, agree with the
Examiner that “the rejection presents that it would have been obvious to [a
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skilled artisan to] utilize labels(tags) to index data based on the respective
inclusion of participants when the use of tags and selective use of data based
on participants . . . was taught by the prior art of Libby.” Ans. 14.
The fact that Libby does not explicitly disclose the use of tags for
selecting specific video segments based on identifying participants in a
lottery game does not, without more, establish that the Examiner erred by
determining that the use of such tags would have been obvious to a person
having ordinary skill in the art. Libby discloses composing a video of a
wining outcome of a lottery game based on selecting appropriate video
segments, from a library, which contain participants of the wining outcome
(i.e., numbers of a lottery winning combination, participants in a horse, dog,
car or motorcycle race). See Libby, paras. 45–47, 49. Hence, the Examiner
reasonably found that a person of ordinary skill in the art would employ an
indexing technique to select the appropriate video segments from the library.
Although Libby employs tags for indexing date and time data, rather than
participants in video segments, that does not make the Examiner’s finding
that tags constitute a well-known indexing technique erroneous. See id.,
para. 85 (Libby discloses the use of tags to associate player selection data
with a specific date and time.). Patents are written for those skilled in the art
and, as such, do not elaborate on every excruciating detail of the disclosed
invention. See In re Buchner, 929 F.2d 660, 661 (Fed. Cir. 1991) (what is
well-known is best omitted). Moreover, we note that Appellant does not
adequately challenge the Examiner’s finding that tags are a well-known
indexing technique. See In re Fox, 471 F.2d 1405, 1406-07 (CCPA 1973)
(affirming rejection under 35 U.S.C. § 103 without citation of any prior art
based on facts that were unchallenged by the appellant).
Appeal 2019-002113
Application 14/837,644

19

As such, employing tags for selecting specific video segments based
on identifying participants (i.e., numbers of a lottery winning combination,
participants in a horse, dog, car or motorcycle race) to compose a video of
the wining outcome in Libby’s lottery game, is simply rearranging elements
without changing their function. “[W]hen a patent ‘simply arranges old
elements with each performing the same function it had been known to
perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 417 (2007) (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273,
282 (1976)). Accordingly, we see no merit to Appellant’s contention that
the rejection of claim 21 is improper due to a lack of a reasonable
expectation of success based on employing tags as a well-known indexing
technique in Libby’s lottery game. See Appeal Br. 8; Reply Br. 7. In other
words, unlike the facts of Stepan, the actual disclosure of Libby of selecting
specific video segments based on identifying participants would have
provided a reasonable expectation that employing a well-known indexing
technique, such as tags, would be successful. Therefore, we are not
persuaded that the Examiner relied on impermissible hindsight, rather than
the knowledge of those skilled in the art at the time of the invention.
Finally, we are not persuaded by Appellant’s arguments that Libby’s
“animated sequence” does not constitute “a sequence of pre-recorded video
clips, as recited by claim 21.” Appeal Br. 8 (citing Libby, para. 11). The
Examiner is correct that although “Libby teaches the use of animated clips, it
additionally teaches the use of video clips and notes that these elements can
be utilized in alternative and/or combination with one another.” Ans. 5
Appeal 2019-002113
Application 14/837,644

20

(citing Libby, paras. 11 (“library of animation elements, virtual images
and/or recorded video images”), 46).
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claim 21 as unpatentable over Libby. Claims 26
and 27 fall with claim 21.

CONCLUSION:
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21–27 101 Eligibility

21–27
21, 26, 27 103 Libby 21, 26, 27
Overall
Outcome
21–27

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED