Ex Parte House et al

Patent Trial and Appeal Board

Jun 29, 2018

12490026 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/490,026 0612312009 Gregory House
94470 7590 07/03/2018
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.
40189/00802(11-DIS-054) 2675
EXAMINER
HSU, RYAN
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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
akhikmat@fkmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY HOUSE, GENE ROSSI, and
YUECHENG ZHANG
Appeal2017-009506
Application 12/490,026
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
ANNETTE R. REIMERS, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gregory House et al. (Appellants) 1 appeal under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1-39. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The Appeal Brief identifies DISNEY ENTERPRISES, INC. as the real
party in interest. Appeal Br. 2.
Appeal2017-009506
Application 12/490,026
CLAIMED SUBJECT MATTER
Claims 1, 24, and 28 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter:
1. A computer-implemented method of generating
information from an athletic event comprising:
analyzing a video stream to determine a first athletic
performance-related aspect of a first player in the athletic event;
analyzing the video stream to determine a second athletic
performance-related aspect of a second player in the athletic
event;
identifying an athletic action of the first player based on a
measured relationship between the first aspect of the first player
and the second aspect of the second player, wherein the first and
second players are separate components in the athletic event;
determining a data representation of the identified athletic
action with a processor, the determining the data representation
including analyzing one of a play and a formation, the data
representation being a qualitative and quantitative assessment of
a level of skill in a strategic player contribution to an overall team
effort from the athletic action of the first player determined based
on the measured relationship, wherein the play comprises an
athletic strategy executed by at least the first player and the
second player, and further wherein the formation comprises a
positioning of at least the first player and the second player
relative to one another; and
storing the data representation in a data server.
Appeal Br. 17 (Claims App.).
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REJECTIONS
I. Claims 1-39 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
II. Claims 1-39 are rejected under 35 U.S.C. § 101, as being
directed to patent-ineligible subject matter.
ANALYSIS
Rejection I-Written Description
Appellants argue for patentability of claims 1-39 as a group. See
Appeal Br. 4--8; see also Reply Br. 2-7. We select claim 1 as representative
of this group, and claims 2-39 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Claim 1 recites, inter alia, "the data representation being a qualitative
and quantitative assessment of a level of skill in a strategic player
contribution to an overall team effort." Appeal Br. 17 (Claims App.). The
Examiner finds Appellants' Specification does not support this claim
limitation. Final Act. 1 7-18.
Appellants contest this finding. Appeal Br. 4; see also Reply Br. 2.
Appellants submit that the Specification describes a sufficient number of
species to satisfy the written description requirement. Appeal Br. 4; see also
Reply Br. 2. Appellants contend that a "qualitative and quantitative
assessment" is based on the recited "athletic action," and the Examiner
concedes a "pose" is disclosed in the Specification as providing a qualitative
and quantitative assessment. Appeal Br. 5; see also Final Act. 18; Reply Br.
2, 4. According to Appellants, the Specification is clear that the disclosed
algorithms are not only based on a pose, but also on a motion or a location of
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a player, and an ordinary artisan would understand that the same principles
regarding a qualitative and quantitative assessment of a pose apply likewise
to a motion and a location. Appeal Br. 6-7 (citing Spec. i-fi-1 71, 105); see
also Reply Br. 2, 4--5 (citing Spec. i181).
Appellants also assert that the Specification discloses a quantitative
assessment of data from a collision between two players and a quantitative
assessment of a rating of the collision. Appeal Br. 7 (citing Spec. i-fi-1 61---65);
see also Reply Br. 3--4 (arguing that that paragraph 105 of the Specification
describes determining players' location and motions to determine a measure
corresponding to a breakaway that includes qualitative and quantitative
measures).
Appellants also contend that the Specification sufficiently discloses a
computer and an algorithm to satisfy the written description requirement.
Appeal Br. 7; see also Reply Br. 6. In support, Appellants reference
paragraphs 42 and 140 and Figure 14 of the Specification, and argue that an
ordinary artisan would understand that a computer device would apply to the
"computer-implemented method" of claim 1, including the qualitative and
quantitative assessment. Appeal Br. 8. Appellants further argue that the
Specification sufficiently describes the required steps with regard to a
qualitative assessment and an ordinary artisan would know how to program
a device to perform the necessary step. Reply Br. 6-7 (citing Spec. i-fi-1 50-
52, 81, 105-106).
Appellants' contentions are not persuasive. The test for sufficiency
under the written description requirement of§ 112, first paragraph, "is
whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
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subject matter as of the filing date." Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). To have "possession," "the
specification must describe an invention understandable to that skilled
artisan and show that the inventor actually invented the invention claimed."
Id. In order to satisfy the written description requirement, the Specification
must describe a sufficient number of species to claim the genus. Id. at 1349
("the specification must demonstrate that the applicant has made a generic
invention that achieves the claimed result and do so by showing that the
applicant has invented species sufficient to support a claim to the
functionally-defined genus").
The specification may fail to satisfy the written description
requirement when the invention is claimed and described in functional
language, but the specification does not sufficiently identify how the
invention achieves the claimed function. Id. ("[A Jn adequate written
description of a claimed genus requires more than a generic statement of an
invention's boundaries.") (citing Eli Lilly, 119 F.3d at 1568). The written
description requirement is not met if the specification merely describes a
"desired result." Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d
671, 692 (Fed. Cir. 2015) (citing Ariad 598 F.3d at 1349).
The scope of claim 1 encompasses more than Appellants' original
disclosure supports. As the Examiner points out, the Specification does not
describe a "qualitative assessment" or "a qualitative and quantitative
assessment of a level of skill in a strategic player contribution to an overall
team effort," as claimed. Ans. 2. In fact, the Specification does not mention
the term "qualitative."
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Referencing the Cambridge Online Dictionary, the Examiner notes
that a definition of "qualitative" is "related to the quality of an experience or
situation rather than to facts that can be measured," and a definition of
"quantitative" is "relating to an amount that can be measured." Id. at 3. We
agree with the Examiner that Appellants' rebuttal is based on limited generic
statements for an intended result which are vaguely tied to the broad
definition of "qualitative." Id. The Examiner explains that the Specification
recites formulas which, at most, can be used to derive purely quantitative
assessments. Id. (citing Spec. i-fi-155, 56-58, 61-65). The Specification is
silent as to how qualitative assessments are determined from a motion, a
location, or a pose. Id.; see also id. at 5 (explaining "the Examiner's
position [is] that the Specification provides no evidence how to create or
measure a qualitative assessment"). Further absent from the Specification is
any discussion as to how both a qualitative and quantitative assessment can
be made of "a level of skill in a strategic player contribution to an overall
team effort." See id. at 3.
We further agree with the Examiner that Appellants merely provide
what purports to be examples of how well a play is executed as an intended
functional result instead of how a qualitative and quantitative assessment is
determined. Id. at 3--4. Appellants do not direct us to any description, steps
or flow charts in the disclosure to show particular hardware or an algorithm,
such that an ordinary artisan would understand how a qualitative and
quantitative assessment is determined. Id. at 4; see also id. at 6 (explaining
that "a qualitative assessment is not a function that a generic computer
would normally perform" and that "[ w ]ithout any description in the
Specification of how the Appellant accomplishes the claimed function[,] one
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of ordinary skill in the art could not program the computer to perform the
necessary steps and/or flowcharts because no steps are described for
determining a qualitative assessment."). The Specification does not indicate
what is necessary beyond a generic computing device. See Spec. i-f 42 ("A
computing device can be any type of computing device having one or more
processors."). As such, the disclosure does not reasonably convey
possession of the claimed subject matter.
Consequently, we sustain the rejection of claim 1 under 35 U.S.C.
§ 112, first paragraph, written description requirement. Claims 2-39 fall
with claim 1.
Rejection II-Patent-Ineligible Subject Matter
Appellants argue for patentability of claims 1-39 as a group. See
Appeal Br. 8-15; see also Reply Br. 8-13. We select claim 1 as
representative of this group, and claims 2-39 stand or fall with claim 1.
The Supreme Court provides "a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Alice
Corp., Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-79 (2012)).
According to this framework, we first determine whether the claims at issue
are directed to one of those concepts. Id. If they are, we secondly "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. The Supreme
Court characterizes the second step of the analysis as "a search for an
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'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. (alteration in the
original).
The Examiner determines that claim 1 is directed to the concepts of
collecting data (analyzing a video stream to determine a first and a second
athletic performance), recognizing certain data within a collected data set
(identifying an athletic action of a first object based on a measured
relationship and determining a data representation), and storing the
recognized data in a memory (storing the data representation in a data
server), and thus, to an abstract idea. Final Act. 19. The Examiner finds that
the abstract idea of claim 1 is similar to organizing human activity, or
performing a series of mental steps including analyzing actions of objects
and players in a sporting event to make assessments of a player's
performance. Id. at 19-20.
Regarding Alice step 2, the Examiner determines that claim 1 does no
more than use a general purpose computer with basic functionality for
comparing input data to stored data and identifying rules, both of which a
sport scout, a sport broadcaster, or a spectator would do regularly when
viewing an athletic event. Id. at 20. As such, the Examiner determines, the
additional claim elements of a computer, a processor, and a data server,
which are generically recited, perform basic functions that are well-
understood, routine, and conventional, e.g., performing repetitive
calculations; receiving, processing, and storing data; electronically scanning
or extracting data from a physical document; electronic record keeping;
automating mental tasks; and receiving or transmitting over a network. Id.
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The Examiner explains that the additional elements when viewed
individually, or in combination, do not add significantly more to the abstract
idea because the additional elements represent insignificant extra-solution
activity and would be routine in any computer implementation, and, as such,
the claim lacks any additional elements to transform the claimed subject
matter into a patent eligible application. Id. at 20-21.
Appellants contend claim 1 is not directed to an abstract idea. Appeal
Br. 8-13; see also Reply Br. 8-11. Appellants argue that the Examiner
failed to formulate a proper subject matter eligibility rejection under the
USPTO's May 2016 Updated Guidelines ("Updated Guidelines") because
the Examiner failed to explain why a concept in the claims corresponds to a
concept the courts have identified as an abstract idea. Appeal Br. 9-1 O; see
also Reply Br. 8-9. According to Appellants, the Examiner simply recites
the claim language and then concludes that the claim corresponds to former
cases. Appeal Br. 10.
Appellants further contend that the subject matter of claim 1 is not
abstract based on the Enfzsh2 decision because the invention is directed to
solving problems arising in the technological area of automation in the field
of video analysis. Id. at 10-11; see also Reply Br. 9-10. Appellants argue
that the claimed invention is an improvement in automation that improves
processor performance. Appeal Br. 11-12. Appellants also argue that the
Examiner describes claim 1 at an unreasonably high level of abstraction
because the claim is not simply organizing human activity or collecting data,
recognizing certain data within a collected data set, and storing the
2 Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
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recognized data in memory. Appeal Br. 12-13; see also Reply Br. 11.
Instead, Appellants assert, claim 1 describes a computer-implemented
method of processing and analyzing a video stream to determine an athletic
play or formation and generate a data representation including a qualitative
and quantitative assessment of a level of skill in a strategic player
contribution to an overall team effort. Appeal Br. 13.
Appellants further contend that claim 1 amounts to significantly more
than an abstract idea. Appeal Br. 14--15; see also Reply Br. 11-13. In
support, Appellants argue that under the analysis used in the Bascom3
decision, claim 1 recites a specific and discrete improvement in the field of
video analysis. Appeal Br. 14--15; see also Reply Br. 11-12. Appellants
contend that an inventive concept exists in the non-conventional and non-
generic arrangement of claim 1 because it improves processor performance
when automating qualitative and quantitative assessments. Appeal Br. 14--
15; see also Reply Br. 11. According to Appellants, claim 1 recites specific
rules performed in an unconventional manner because prior systems fail to
track important elements and fail to generate and utilize the most useful data.
Reply Br. 12.
Claim 1 is directed to a computer-implemented method of generating
information from an athletic event comprising steps of analyzing a video
stream, identifying an athletic action of a first player based on a measured
relationship, determining a data representation of the identified athletic
action with a processor, and storing the data representation in a data server.
3 Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016).
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Appeal Br. 17 (Claims App.). These data manipulation steps of analyzing,
identifying, determining, and storing data are performed using a computer
system within a computer-implemented method, analyzing a video stream of
an athletic event to determine a performance-related aspect, identifying a
relationship to determine a data representation, and storing the data
representation. Id. Thus, claim 1 requires the collection and analysis of data
using a machine, that is, generic operations in a method of generating
information from viewing an athletic event. In other words, claim 1 is
directed to a set of rules performed by a computer (i.e., a mathematical
algorithm or a software).
We note that "[ s ]oftware can make non-abstract improvements to
computer technology just as hardware improvements can, and sometimes the
improvements can be accomplished through either route." Enfish, 822 F.3d
at 13 3 5. We are instructed to determine if "the claims are directed to an
improvement to computer functionality versus being directed to an abstract
idea, even at the first step of the Alice analysis." Id. Here, the limitations at
issue are not directed to an improvement of a computer's functionality.
There is no language recited in claim 1 to suggest that, once a data
representation is determined, the computer used to implement the steps will
be improved functionally. Instead, similar to the claims at issue in Electric
Power Group, claim 1 is a purported advance in uses for existing computer
capabilities, not new or improved computer capabilities. See Elec. Power
Grp., LLC v. Alstom S.A, 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also id.
at 1353-1354 (explaining that an invention directed to the collection,
manipulation, and display of data is an abstract process). Accordingly,
claim 1 is directed to an abstract idea. See also Ans. 10 ("[The steps of the
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claimed invention] do no more than call on a general purpose computer with
the basic function of comparing stored and new (e.g., inputted data)
information to identify rules to assess the performance of athletes to do what
athletic scouts, sports broadcasters, coaches, and spectators do regularly
when viewing athletic events.").
We thus are not persuaded by Appellants' contention that the subject
matter of claim 1 is not abstract based on Enfish because Appellants'
invention is directed to solving problems arising in the technological area of
automation in the field of video analysis. Appeal Br. 10-11; see also Reply
Br. 10. Appellants do not provide evidence to show the claimed invention is
an improvement in automation that improves processor performance in
determining a data representation. See Appeal Br. 11-12
Regarding Appellants' contention that the Examiner describes claim 1
at an unreasonably high level of abstraction (Appeal Br. 12-13; see also
Reply Br. 11), the Examiner's explanation evidences the contrary. See Ans.
9, 1. 9-10, 1. 2.
Similarly, we are not persuaded claim 1 recites a specific and discrete
improvement in the field of video analysis, which, according to Appellants,
would amount to significantly more when analyzed using the rationale in the
Bascom. Appeal Br. 14--15; see also Reply Br. 11-12. Claims must include
additional features that are significantly beyond "well-understood, routine,
conventional activity" or a simple "instruction to implement or apply the
abstract idea on a computer." Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 715 (Fed. Cir. 2014) (quoting Mayo, 566 U.S. 79-80); Bascom at 1349
(quoting Alice, 134 S. Ct. at 2358). Appellants do not demonstrate with
evidence there is an improvement in processor performance when
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automating qualitative and quantitative assessment because of a purported
"non-conventional and non-generic arrangement" of claim 1. Appeal Br.
14--15; see also Reply Br. 12. Appellants' contention that prior systems
"failed to track important elements" and "failed to generate and utilize the
most useful data" is not supported by evidence of record, such as a
disclosure in the Specification that such data had not previously been
analyzed and processed. See Reply Br. 12.
Although claim 1 recites certain data to be collected (a video stream in
an athletic event), and implies that an algorithm is used to manipulate the
collected data (analyzing the video stream, identifying an athletic action,
determining a data representation, and storing the data representation), we
find correct the Examiner's determination that claim 1 does not include
additional elements sufficient to amount to significantly more than the
judicial exception, because the claimed functionality can be carried out on
commonly-known hardware, such as a computer with the basic function of
comparing stored and new information, without producing any improvement
in the functioning of the computer itself. See Ans. 10; see also Spec. i-f 42.
Further, the specific features of claim 1 reiterated by Appellants relate to
data processing steps, such as the analyzing, identifying, and determining
steps, which merely implement the abstract idea. See Ans. 10-11. Thus,
claim 1, at most, requires only "mathematical algorithms to manipulate
existing information to generate additional information." Digitech Image
Techs., LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir.
2014). As such, the limitations of claim 1 do not transform the abstract idea
embodied in the claim, but rather, simply implement the idea. Accordingly,
we agree with the Examiner that "there is no inventive concept sufficient to
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transform the claimed subject matter into a patent-eligible application."
Final Act. 21.
Accordingly, claim 1, considered "both individually and 'as an
ordered combination,"' amounts to nothing more than an attempt to patent
the abstract idea embodied in the steps of the claim. See Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 79--80). Thus, the limitations of claim 1
fail to transform the nature of the claim into patent-eligible subject matter.
See id. (citing Mayo, 566 U.S. at 77, 79--80 ); see also Ans. 11-13.
For these reasons, we sustain the Examiner's decision rejecting claim
1, and claims 2-39 which fall therewith, as being directed to patent-
ineligible subject matter.
DECISION
We affirm the rejections of claims 1-39.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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