Ex Parte SLOAN et al

Patent Trials and Appeals Board

Apr 17, 2019

14944754 - (D) (P.T.A.B. Apr. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/944,754 11/18/2015 James N. SLOAN
94470 7590 04/19/2019
DISNEY ENTERPRISES, INC.
c/o Fay Kaplun & Marcin, LLP
150 Broadway
Suite 702
New York, NY 10038
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
40l89/00704(l3DIS185MEDI 1070
EXAMINER
YEN,JASONTAHAI
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
04/19/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mmarcin@fkmiplaw.com
preisch@fkmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES N. SLOAN, DAVID M. FISHEL,
MICHAEL A. POLIKOFF, JONATHAN G. KINNERSLEY,
JAMES R. KELLEY, PIERRE Y. BECQUEY, and
NATHAN M. RAVITZ
Appeal2018-006500
Application 14/944,7541
Technology Center 3700
Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPPER Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's rejection of claims 27-46. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Appellants identify "DISNEY ENTERPRISES, INC.," as the real party in
interest. Appeal Br. 2.
Appeal2018-006500
Application 14/944,754
According to Appellants, the invention "relate[ s] to a method and
system for providing recommendations, in particular for drafting or
managing a player in a fantasy sport team." Spec. ,i 3. Claims 27 and 39 are
the independent claims on appeal. Below, we reproduce claim 27 as
illustrative of the appealed claims.
27. A method for a fantasy sport application,
compnsmg:
by a processor device:
executing a fantasy sports draft client that
corresponds to a fantasy league, wherein the fantasy
league comprises a plurality of fantasy sports teams;
receiving a plurality of ranking values associated
with a sport player, wherein the ranking values include a
plurality of draft positions of the sport player in other
fantasy leagues for a current season;
receiving a current fantasy sport draft status,
wherein the fantasy sport draft status comprises
information relating to the fantasy sports league that
correlates to a timing stage of a current fantasy sport
draft and a plurality of sport players available for a
selection;
assigning a corresponding weight value to each
ranking value;
determining a score value as a function of the
ranking value and the corresponding weight value;
determining an adjusted ranking value as a
function of the score values for the sport player;
generating a recommendation for the sport player
as a function of the current fantasy sport draft status and
the adjusted ranking value; and
displaying within the fantasy sports draft client a
representation of the recommendation for the sport
player.
2
Appeal2018-006500
Application 14/944,754
REJECTION
The Examiner rejects claims 27-46 under 35 U.S.C. § 101 as patent-
ineligible.
PRINCIPLES OF LAW CONCERNING 35 U.S.C. § 101
An invention is patent eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit
exceptions, however: "[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. Kappas, 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, 69
3
Appeal2018-006500
Application 14/944,754
(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))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.").
Nonetheless, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum 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
4
Appeal2018-006500
Application 14/944,754
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (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 recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("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 practical application (see Manual of Patent Examining Procedure
("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, [or] conventional" in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Guidance.
ANALYSIS
Initially, we note that Appellants argue against the Examiner's
rejection of all of the pending claims-claims 27-46-as a group. Appeal
Br. 4-14. We choose independent claim 27 for our analysis, and remaining
5
Appeal2018-006500
Application 14/944,754
claims 28-46 stand or fall with claim 27. See 37 C.F.R. § 41.37 (c)(l)(iv).
For the following reasons, we sustain the Examiner's rejection of the claims
as patent-ineligible.
For the reasons set forth below, we determine that in accordance with
point (1) of the Guidance referenced above (also referred to as Step 2A,
Prong One), independent claim 27 contains limitations that recite an abstract
idea. More specifically, as described in further detail, this abstract idea falls
within the Guidance grouping of "mental processes."
As set forth above, claim 27 contains the following limitations: (1)
"A method for a fantasy sport application, comprising": (2) "by a processor
device": (3) "executing a fantasy sports draft client that corresponds to a
fantasy league, wherein the fantasy league comprises a plurality of fantasy
sports teams"; (4) "receiving a plurality of ranking values associated with a
sport player, wherein the ranking values include a plurality of draft positions
of the sport player in other fantasy leagues for a current season"; (5)
"receiving a current fantasy sport draft status, wherein the fantasy sport draft
status comprises information relating to the fantasy sports league that
correlates to a timing stage of a current fantasy sport draft and a plurality of
sport players available for a selection"; ( 6) "assigning a corresponding
weight value to each ranking value"; (7) "determining a score value as a
function of the ranking value and the corresponding weight value"; (8)
"determining an adjusted ranking value as a function of the score values for
the sport player"; (9) "generating a recommendation for the sport player as a
function of the current fantasy sport draft status and the adjusted ranking
value"; and (10) "displaying within the fantasy sports draft client a
6
Appeal2018-006500
Application 14/944,754
representation of the recommendation for the sport player." Appeal Br. 15,
Claims App.
Here, each of claim 27's recitations (4)-(10) may be done by a person
using mental processes. See SmartGene, Inc. v. Advanced Biological
Laboratories, SA, 555 Fed. App'x. 950, 955 (Fed. Cir. 2014) (Going through
the "mental steps of comparing new and stored information[,] and using
rules to identify medical [treatment] options" is a mental process and thus an
abstract idea.). More specifically, one may mentally (4) "receiv[e] a
plurality of ranking values associated with a sport player, wherein the
ranking values include a plurality of draft positions of the sport player in
other fantasy leagues for a current season"; (5) "receiv[e] a current fantasy
sport draft status, wherein the fantasy sport draft status comprises
information relating to the fantasy sports league that correlates to a timing
stage of a current fantasy sport draft and a plurality of sport players available
for a selection"; ( 6) "assign[] a corresponding weight value to each ranking
value"; (7) "determin[ e] a score value as a function of the ranking value and
the corresponding weight value"; (8) "determin[ e] an adjusted ranking value
as a function of the score values for the sport player"; (9) "generat[ e] a
recommendation for the sport player as a function of the current fantasy
sport draft status and the adjusted ranking value"; and (10) "[provide] a
representation of the recommendation for the sport player." This is because
a person may perform these claim recitations by imagining them in his or her
mind. 2 Thus, claim 27 contains limitations reciting an abstract idea.
2 As explained in the Specification, fantasy team owners may consult
"information that is publicly available," and then "determine whether or not
it is safe to wait one more round in order to make their selection or if they
would be well advised to select the player immediately." Spec. ,-J 9. This
7
Appeal2018-006500
Application 14/944,754
In accordance with point (2) of the Guidance referenced above (also
referred to as Step 2A, Prong Two), claim 27 does not recite any additional
element that integrates the judicial exception into a practical application.
We note that the claim only generically recites the use of certain hardware-
a processor and, arguably, a display. Appellants do not describe the claimed
hardware in such a way as to indicate that the hardware is anything other
than generic. See Spec. ,-J 45 ("[P]rocessor 210 ... [ and] display 240 ...
may all provide conventional functionalities."). Thus, claim 27 is directed to
the above-discussed abstract idea, and does not integrate the judicial
exception into a practical application. Restated, claim 27 is "directed to" an
abstract idea.
In accordance with points (3) and (4) of the Guidance referenced
above (also referred to as Step 2B), claim 27 fails to recite a specific
limitation beyond the judicial exception which is not well-understood,
routine, and conventional in the field, but instead simply appends well-
understood, routine, and conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
Taking the claim elements separately, the functions performed by the
claimed hardware are purely conventional. Specifically, the claim uses
known, generic components to perform their known, basic functions.
Restated, the claim recites only well-understood, routine, and conventional
functions. See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016); see also In re Katz Interactive Call Processing Patent Litig., 639
"conventional solution[]" can "start with a survey of the available players,"
in order to make a "determination of their differences." Id. For example, a
fantasy team owner can "use a 'cheat sheet' assembled by a professional
research staff (e.g., a news service or content provider)." Id.
8
Appeal2018-006500
Application 14/944,754
F.3d 1303, 1316 (Fed. Cir. 2011) ("Absentapossiblenarrowerconstruction
of the terms 'processing,' 'receiving,' and 'storing,' ... those functions can
be achieved by any general purpose computer without special
programming."). There is no unconventional use of the claimed hardware,
and the hardware does not produce any unexpected result. Considered as an
ordered combination, claim 27's hardware does not add anything that is not
already present when we consider the steps separately. Thus, claim 27 is
"directed to" an abstract idea, and additional elements in this claim do not
amount to significantly more than this abstract idea.
Appellants argue that "claim 27 amounts to significantly more than an
abstract idea for the same reasons that the claims at issue in [ BASCOM
Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016)] amounted to significantly more than an abstract idea." Appeal Br. 7;
see also id. 7-11. We disagree. In BASCOM, the Federal Circuit
determined that "an inventive concept can be found in the non-conventional
and non-generic arrangement of known, conventional pieces." BASCOM,
827 F.3d at 1350. Specifically, "[t]he inventive concept described and
claimed in the '606 patent is the installation of a filtering tool at a specific
location, remote from the end-users, with customizable filtering features
specific to each end user." Id. Unlike BASCOMs claims, we do not agree
that Appellants' claim 27 provides a solution to a technological problem.
For example, claim 27 does not recite any improvement in the processor's
functioning. Nor does the claim effect an improvement in any other
technology or technical field-instead, claim 27 recites a "method for a
fantasy sport application," which is itself an abstract idea.
9
Appeal2018-006500
Application 14/944,754
Appellants argue that "claim 27 also amounts to significantly more
than an abstract idea for the same reasons that the claims at issue in [Amdocs
(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016)]
amounted to significantly more than an abstract idea." Appeal Br. 11; see
also id. at 11-13. We disagree. In Amdocs, the Federal Circuit determined
that the claim was patent-eligible because the claim entails an
unconventional technological solution ( enhancing data in a distributed
fashion) to a technological problem (massive record flows which previously
required massive databases). Although the solution required generic
components, the court determined that "the claim's enhancing limitation
necessarily requires that these generic components operate in an
unconventional manner to achieve an improvement in computer
functionality," and that the "enhancing limitation depends not only upon the
invention's distributed architecture, but also depends upon the network
devices and gatherers-even though these may be generic-working
together in a distributed manner." Amdocs, 841 F.3d at 1300-01. In this
case, as discussed above, Appellants' claim 27 neither entails a technical
solution to a technical problem, nor requires that generic components act in
an unconventional manner.
Thus, based on the foregoing, we sustain the Examiner's § 101
rejection of claims 27-46.
DECISION
We AFFIRM the Examiner's rejection of claims 27-46.
10
Appeal2018-006500
Application 14/944,754
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a).
AFFIRMED
11