Chad Friehauf

Patent Trials and Appeals Board

Apr 2, 2020

14296725 - (D) (P.T.A.B. Apr. 2, 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.
14/296,725 06/05/2014 Chad Friehauf 6541-1 9849
22442 7590 04/02/2020
Sheridan Ross PC
1560 Broadway
Suite 1200
Denver, CO 80202
EXAMINER
UTAMA, ROBERT J
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
04/02/2020 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):
e-docket@sheridanross.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHAD FRIEHAUF
Appeal 2018-003143
Application 14/296,725
Technology Center 3700
Before BRETT C. MARTIN, JEREMY M. PLENZLER, and
GEORGE R. HOSKINS, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. 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. Appellant identifies the real party in interest as Chad Friehauf.
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to teaching playbook content and testing
knowledge of a playbook, such as a football playbook. Spec. 2. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for teaching playbook content comprising;
receiving, at a processing device, a first user input from a
first user device identifying a first user of the first user device
based in part on the first user input,
determining, at the processing device, that the first user
belongs to a first user group selected based, at least in part, on a
football position played by the first user,
retrieving, from a playbook database, a set of plays and
corresponding player responsibilities for each play in the set of
plays, wherein the set of plays and the corresponding player
responsibilities are selected from the playbook database for the
first user based on the football position played by the first user,
receiving, at the processing device, a second user input
from a second user device identifying a second user of the second
user device based in part on the second user input,
determining, at the processing device, that the second user
belongs to a second user group selected based, at least in part, on
a football position played by the second user, wherein the first
user group is different from the second user group and the
football position played by the second user is different from the
football position played by the first user,
retrieving, from the playbook database, the set of plays and
corresponding player responsibilities for each play in the set of
plays, wherein the set of plays selected for the second user is the
same as the set of plays selected for the first user and the
corresponding player responsibilities are selected from the
playbook database for the second user based on the football
position played by the second user, which is different from the
first user,
presenting the first user with one of a plurality of playbook
simulation modes for selection,
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presenting the first user with one of a plurality of play
groups for selection based at least in part on the selection of the
playbook simulation mode,
providing the first user with at least one of a plurality of
simulations based at least in part on the selection of the play
group,
presenting the second user with one of a plurality of
playbook simulation modes for selection,
presenting the second user with one of a plurality of play
groups for selection based at least in part on the selection of the
playbook simulation mode,
providing the second user with at least one of a plurality
of simulations based at least in part on the selection of the play
group,
storing, in a memory, the information associated with the
simulation presented and the first and second users, and
sending at least a third user the information associated
with the simulation presented.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Robb
Bowring
US 2006/0247808 A1
US 2013/0139068 A1
Nov. 2, 2006
May 30, 2013

REJECTIONS
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
ineligible subject matter. Final Act. 2.
Claims 1–20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Robb and Bowring. Final Act. 7.

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OPINION
Standard for Patent Eligibility
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Supreme Court
instructs us to “first determine whether the claims at issue are directed to a
patent-ineligible concept,” id. at 216–18, and, in this case, the inquiry
centers on whether the claims are directed to an abstract idea. If the initial
threshold is met, we then move to the second step, in which we “consider 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.” Id. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)).
The Supreme Court describes the second step as a search for “an ‘inventive
concept’—i.e., 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.’” Id. (quoting Mayo, 566 U.S. at 72–
73).
The USPTO published revised guidance on the application of § 101.
USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject
Matter Eligibility Guidance. Under 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
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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 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.
See Guidance.
ANALYSIS
Claim Grouping
Appellant argues claims 1–20 as a group for the purpose of the
rejection under a judicial exception to §101. Appeal Br. 9‒16. As to this
rejection, we select claim 1 as representative of the group and the remaining
claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Examiner’s Findings and Conclusion
In the first step of the Alice inquiry, the Examiner rejects the claims
stating that the claims “are directed to the abstract idea of teaching playbook
content by reciting steps of identifying a first user, presenting the first user
with a plurality of playbook simulation modes, presenting the first user with
a plurality of play groups, providing the first user with a plurality of
simulations, storing the information associated with the simulation, and
sending a second user the information associated with the information.”
Final Act. 2. The Examiner identifies the claimed series of steps for
teaching the playbook as “steps [that] could be accomplished without a
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computer or computerized system” as the abstract idea. Final Act. 3–4. At
Alice step 2, the Examiner additionally finds that the claims do not add a
meaningful limitation to the abstract idea so as to amount to significantly
more than the judicial exception. Final Act. 4–5.
Analysis According to the
Step One: Does Claim 1 Fall within a Statutory Category of § 101?
We first examine whether the claim recites one of the enumerated
statutory classes of subject matter, i.e., process, machine, manufacture, or
composition of matter, eligible for patenting under 35 U.S.C. § 101.
Claim 1 is directed to a method, which is one of the statutory classes (i.e., a
process) under 35 U.S.C. § 101.
Step 2A, Prong One: Does Claim 1 Recite a Judicial Exception?
We next look to whether the claim recites 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.
In this instance, claim 1, for example, recites steps that essentially
amount to mental processes. Specifically, the claim recites:
receiving, at a processing device, a first user input from a
first user device identifying a first user of the first user device
based in part on the first user input,
determining, at the processing device, that the first user
belongs to a first user group selected based, at least in part, on a
football position played by the first user,
retrieving, from a playbook database, a set of plays and
corresponding player responsibilities for each play in the set of
plays…
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receiving, at the processing device, a second user input
from a second user device identifying a second user of the second
user device based in part on the second user input,
determining, at the processing device, that the second user
belongs to a second user group selected based, at least in part, on
a football position played by the second user…
retrieving, from the playbook database, the set of plays and
corresponding player responsibilities for each play in the set of
plays…
presenting the first user with one of a plurality of playbook
simulation modes for selection,
presenting the first user with one of a plurality of play
groups for selection based at least in part on the selection of the
playbook simulation mode,
providing the first user with at least one of a plurality of
simulations based at least in part on the selection of the play
group,
presenting the second user with one of a plurality of
playbook simulation modes for selection,
presenting the second user with one of a plurality of play
groups for selection based at least in part on the selection of the
playbook simulation mode,
providing the second user with at least one of a plurality
of simulations based at least in part on the selection of the play
group,
storing, in a memory, the information associated with the
simulation presented and the first and second users, and
sending at least a third user the information associated
with the simulation presented.
Although these steps are claimed as being done by a processor or computer,
the activities themselves are all capable of being performed by a human
without a computer and fall into the abstract idea of mental processes. See,
e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed.
Cir. 2011) (“That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson.”). We therefore determine that claim 1 recites the
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abstract idea of mental processes, which is a judicial exception to patent-
eligible subject matter.
Step 2A, Prong Two: Does Claim 1 Recite Additional Elements that
Integrate the Judicial Exceptions into a Practical Application?
Following our Office guidance, having found that claim 1 recites a
judicial exception, we next determine whether the claim recites “additional
elements that integrate the exception into a practical application” (see MPEP
§§ 2106.05(a)–(c), (e)–(h)). See Guidance, 84 Fed. Reg. at 54. As noted
above, each of the claimed steps is merely recited as being performed by a
computer or processor. As used in claim 1, the processing device is merely
a generic component of a computer system that does not result in an
improvement in the functioning of a computer or other technology or
technological field. The recitations of the generic structures with which the
recited steps are performed are merely instructions to use a generic computer
system as a tool to perform the abstract idea. Thus, claim 1 does not apply,
rely on, or use the mental process steps in a manner that imposes a
meaningful limit on those steps. Rather, the claim is simply a drafting effort
designed to monopolize the mental process steps of claim 1. See MPEP
§ 2106.05(f) (“Use of a computer or other machinery in its ordinary capacity
for . . . tasks (e.g., to receive, store, or transmit data) or simply adding a
general purpose computer or computer components after the fact to an
abstract idea . . . does not provide significantly more.”).
In short, the additional elements discussed above: (1) do not improve
the functioning of a computer or other technology; (2) are not applied with
any particular machine; (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
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technological environment. See MPEP §§ 2106.05(a)–(c), (e)–(h).
Consequently, the claimed invention does not integrate the abstract idea into
a “practical application.”
For these reasons, the additional elements of claim 1 do not integrate
the judicial exception into a practical application. Thus, claim 1 is directed
to an abstract idea, which is a judicial exception to patent eligible subject
matter under 35 U.S.C. § 101.
Step 2B: Does Claim 1 Recite an Inventive Concept?
We next consider whether claim 1 recites any elements, individually
or as an ordered combination, that transform the abstract idea into a patent-
eligible application, e.g., by providing an inventive concept. Alice, 573 U.S.
at 217–18. The only additional elements are two input devices and a
memory used for routine computer functionality to enact the method steps.
These additional elements do not provide, either individually or as a
combination, improvements to another technology or technical field or the
functioning of the computer itself.
According to Office guidance, under Step 2B, “examiners should . . .
evaluate the additional elements individually and in combination . . . to
determine whether they provide an inventive concept (i.e., whether the
additional elements amount to significantly more than the exception itself).”
See Guidance, 84 Fed. Reg. at 56 (emphasis added). Thus, the second step
of the inquiry (Step 2B) looks at the additional elements in combination.
See, e.g., Examples accompanying Guidance (Example 37 (claim 3 analysis)
and Example 40 (claim 2 analysis)). See also BSG Tech LLC v. BuySeasons,
Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice
that a claimed invention’s use of the ineligible concept to which it is directed
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cannot supply the inventive concept that renders the invention ‘significantly
more’ than that ineligible concept.”).
As noted above, the input devices and memory are invoked as
conventional tools. Apart from being used to perform the abstract idea
itself, the generic computer system components only serve to perform well-
understood functions (e.g., retrieving, determining, presenting, providing,
etc.). See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096
(Fed. Cir. 2016) (“the use of generic computer elements like a
microprocessor or user interface do not alone transform an otherwise
abstract idea into patent-eligible subject matter”). In our view, claim 1 fails
to add a specific limitation beyond the judicial exception that is not “well-
understood, routine, conventional” in the field, but instead “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. That is, we are not persuaded that claim 1
is directed to a specific application designed to achieve an improved
technological result, as opposed to being directed to merely ordinary
functionality of the above-recited additional elements to apply an abstract
idea. For the reasons discussed above, we find no element or combination of
elements recited in claim 1 that contains any “inventive concept” or adds
anything “significantly more” to transform the abstract concept into a patent-
eligible application. See Alice, 573 U.S. at 221.
Appellant’s Contentions
Appellant first argues that “the claims are directed to a specific
asserted improvement in computer capabilities.” Appeal Br. 11. The
claims, however, at best are directed to an alleged improvement in teaching
capabilities by automating what could otherwise be done by a human. The
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claims, in order to be patent eligible, must actually improve the computer
itself, not be an improvement to a method by using a computer to implement
the method.
Appellant next argues that “[t]he present claims are specifically
directed to solving…inefficiencies by enabling players of different player
groups to access a common playbook database and be tested according to
each player’s responsibility for a play or set of plays.” Id. at 12. The
efficiencies achieved by the system, however, are the mere automation of the
process on a computer. The teaching steps claimed, as noted above, are
merely routine steps that are performed on a computer rather than by a
human. Such technological solutions are not the type that involve patent
eligibility. As a whole, we are not persuaded that the Examiner erred in
rejecting the claims as being directed to nonpatentable subject matter.
Obviousness
Appellant argues, inter alia, “that the Examiner appears to use the
selection of offensive or defensive position against both the claimed
selection of a play group and the selection of a playbook simulation mode.”
Appeal Br. 20. Appellant further argues that “if the Examiner intends to
equate Robb’s teaching related to selecting an offensive or defensive
position against the claimed selection of a play group, then it is improper for
the Examiner to also equate this same selection against the claimed selection
of a playbook simulation mode.” Id. Appellant also points out that the
“Examiner goes on to argue that the specification has not provided a
definition of ‘playgroup’ and therefore, the Examiner is allowed to interpret
Robb in a way that suggests an offensive and defensive player will receive a
same play.” Reply Br. 9. Appellant is correct that “[t]here does not exist a
play in football that is assigned to or run by both offensive and defensive
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players” and that “[t]he Examiner’s interpretation of Robb is inconsistent
with the understanding that a person of ordinary skill in the art would have
as to the teachings of Robb.” Id.
Appellant is correct that the Examiner cannot use the selection of
different player groups being offensive and defensive players both against
the selection of the user group and the set of plays. Although this may work
against the selection of the player groups, Appellant is correct that offensive
and defensive players do not run plays from a same set of plays. Regardless
of any specific definition of the term “playgroup,” one of skill in the art
would understand that offensive and defensive players run different plays
and that they would thus draw from entirely different sets of plays. Thus,
the Examiner’s reasoning does not establish that the combination of Robb
and Bowring leads to “the set of plays selected for the second user is the
same as the set of plays selected for the first user,” as is recited in each
independent claim 1, 11, and 16 (emphasis added). The Examiner has
offered no interpretation of Robb that would divide players into different
play groups that also select from a same set of plays as required by the
claims. Accordingly, we do not sustain the Examiner’s obviousness
rejection.

CONCLUSION
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1–20 103 Robb, Bowring 1–20
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Overall
Outcome:
1–20

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