2020004347 (P.T.A.B. Jul. 2, 2021)

JUMPINGCLASH

Patent Trials and Appeals BoardJul 2, 2021

2020004347 (P.T.A.B. Jul. 2, 2021)

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. 13/710,997 12/11/2012 Daniel Entrecanales Domecq 22527-014 2155 32137 7590 07/02/2021 PATENT DOCKET CLERK COWAN, LIEBOWITZ & LATMAN, P.C. 114 WEST 47th STREET 21st FLOOR NEW YORK, NY 10036 EXAMINER LEGESSE, NINI F ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 07/02/2021 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): dxo@cll.com ram@cll.com sxd@cll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANIEL ENTRECANALES DOMECQ and PABLO MARQUEZ GALOBARDES Appeal 2020-004347 Application 13/710,997 Technology Center 3700 Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. REIMERS, 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 1–18. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as JUMPINGCLASH. Appeal Brief (“Appeal Br.”) 2, filed Oct. 2, 2019. Appeal 2020-004347 Application 13/710,997 2 CLAIMED SUBJECT MATTER The claimed subject matter “relates generally to a show jumping competition and, more particularly, to a show jumping competition in which competitors engage in elimination duels to advance to the next round.” Spec. ¶ 1.2 Claims 1, 17, and 18 are independent. Claim 1 is illustrative of the claimed subject matter and recites: 1. A method of conducting a horse jumping competition, the method comprising the following steps: a) enrolling a number of participants in the competition, the participants being horses controlled by respective riders and together becoming competitors; b) determining whether a number of the competitors is a predetermined positive integer exponentiation base; c) dividing competitors into competitor groups based on the predetermined positive integer exponentiation base; d) judging each competitor group in a horse jumping contest based on predetermined criteria, the horse jumping contest including a plurality of physical obstacles; e) determining a winner of each competitor group and eliminating a loser of each competitor group; f) advancing the winner of each competitor group to a next round, in a non-final round; g) repeating steps c) - f) until only two competitor groups can be formed with the winners from step f); h) implementing steps c) - e) and advancing the winner of each competitor group to a final round; and i) declaring a tournament winner, in said final round. 2 Specification (“Spec.”), filed Feb. 25, 2013. Appeal 2020-004347 Application 13/710,997 3 THE REJECTIONS I. Claims 1–18 stand rejected under pre-AIA 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. II. Claim 8 stands rejected under pre-AIA 35 U.S.C. § 112, second paragraph, as indefinite.3 III. Claim 1–5, 7, 9, 10, 12, 13, and 16–18 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Show Jumping4 and Tournament.5 IV. Claim 6 stands rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Show Jumping, Tournament, and Consolation Bracket.6 3 The rejection of claims 3, 8, and 17 under 35 U.S.C. § 112, second paragraph, has been withdrawn. See Examiner’s Answer (“Ans.”) 11, dated Feb. 14, 2020. We note that in the Answer, the Examiner states, in response to Appellant’s arguments against the rejection of claim 10 under 35 U.S.C. § 112, second paragraph, that the “Examiner inadvertently identified the claim as claim 10 instead of claim 8.” Ans. 14. The Examiner further states that “[c]orrection to the claim number is made and the rejection stands.” Id. We thus understand that this rejection pertains to claim 8, rather than claim 10. 4 This document of record contains pages numbered 2 to 42 and does not include page 1. The Examiner does not provide any information regarding the identification of the document other than listing the document as “Show Jumping, 10/01/12.” See Notices of References Cited (PTO-892), mailed Sept. 9, 2015. Because Appellant does not dispute this reference as “prior art,” we understand the publication date of Show Jumping to be October 1, 2012. 5 The Examiner indicates that this document is a Wikipedia document having a publication date of April 17, 2004 and is “[f]ound on the Web: https://web.archive.org/web/20040428070521/https:/en.wikipedia.org/ wiki/Tournament#Single-elimination.” See Notices of References Cited (PTO-892), mailed Feb. 4, 2019. 6 The Examiner lists this document as “Consolation Bracket, 2012, Powered by Dynamic Steps Interactive Business Solutions” and indicates that it is “[f]ound on the web: http://www.r2sports.com/linkGallery/consolation- Appeal 2020-004347 Application 13/710,997 4 V. Claims 8, 11, 14, and 15 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Show Jumping, Tournament, and Official Notice.7 ANALYSIS Rejection I – Ineligible Subject Matter Appellant presents arguments for claim 1 and relies on the same arguments for claims 2–18. See Appeal Br. 8–18. We select claim 1 as the representative claim, and claims 2–18 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv)(2019). An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (“Alice”). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo bracket.asp.” See Notices of References Cited (PTO-892), mailed Feb. 4, 2019. 7 We understand the Examiner to be taking Official Notice in stating “[t]he references do not explicitly disclose [a] tournament or [a] competition in which a skilled or experienced or popular competitor plays against competitors who are not skilled and experienced and wherein a skilled or experienced or popular competitor plays against competitors who are not skilled and experienced,” but “that is what is done in many of recreational hockey and soccer leagues, especially for many of the more beginner teams.” Non-Final Office Action (“Non-Final Act.”) 12, dated Feb. 4, 2019. See also Appeal Br. 26 (Appellant stating that “it appears the Examiner is asserting Official Notice”). Appeal 2020-004347 Application 13/710,997 5 and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012) (“Mayo”)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. 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) (“Bilski”) (“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) (“Flook”)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972) (“Benson”)). 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) (“Diehr”)); “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.”). Having Appeal 2020-004347 Application 13/710,997 6 said that, 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 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 (citation 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. (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 published revised guidance on the application of § 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised 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 Appeal 2020-004347 Application 13/710,997 7 human activity such as a fundamental economic practice, or mental processes);8 and (2) additional elements that integrate the judicial exception into a practical application (see Manual for Patent Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h) (9th ed. 2018)).9 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 are 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.10 See Revised Guidance.11 8 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance (hereinafter “Step 2A(1)”). 9 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance (hereinafter “Step 2A(2)”). 10 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the Supreme Court’s two-step framework, described in Mayo and Alice. 11 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter “Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28282.pdf). An update to the 2019 Revised Patent Subject Matter Eligibility Guidance issued in October 2019 (“October 2019 Update,” available at https:// www.uspto.gov/sites/default/files/documents/peg_oct_2019 update.pdf). Appeal 2020-004347 Application 13/710,997 8 Analysis under the Revised Guidance Step 1 – Statutory Category Claim 1, as a method (process) claim, recites one of the enumerated categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue before us is whether claim 1 is directed to a judicial exception without significantly more. Step 2A(1) – Does the Claim Recite a Judicial Exception? The Examiner determines that claim 1 is “directed to a method of conducting a horse jumping competition” including the following multiple abstract steps: enrolling a number of participants in the competition, the participants comprising horses controlled by respective riders and together becoming competitors; determining whether a number of the competitors is a predetermined positive integer exponentiation base; dividing competitors into competitor groups based on the predetermined positive integer exponentiation base; judging each competitor group in a horse jumping contest based on predetermined criteria, the horse jumping contest including a plurality of physical obstacles; determining a winner of each competitor group and eliminating a loser of each competitor group; advancing the winner of each competitor group to a next round, in a non-final round; advancing the winner of each competitor group to a final round; and declaring a tournament winner. Non-Final Act. 3. The Examiner explains that “the claim[] limitations recited above are abstract rules listed in the group of ideas of organizing human activity,” which can include “interactions between people (including social activities. . . and following rules or instructions).” Id. at 4.12 12 The Examiner also determines that certain steps of claim 1 “are also treated as [a] mental process,” which is also another abstract idea of an idea Appeal 2020-004347 Application 13/710,997 9 Appellant contends that “[t]he horses and riders compete as horse- rider team competitors in a horse jumping competition having a plurality of physical obstacles” and that “[t]hese steps cannot be performed in the human mind.” Appeal Br. 10. Appellant further contends that “[c]laim 1 also has nothing to do with fundamental economic principles, social activities, teaching, and following rules or instructions.” Id. at 11. Appellant argues that [e]ach competitor here is a horse-rider team, and the relationship between each horse and its respective rider is paramount in a horse jumping contest based on predetermined criteria. Starting with an initial composition of horse-rider teams (competitors), and changing the composition thereof through repeated eliminations, re- groupings, and subsequent duels between differing horse- rider teams surely does not fall within the province of “interaction between people,” “social activities,” and “following rules or instructions,” for this grouping [sic] enumerated by the USPTO 2019 Guidelines is to prevent preemption of personal behavior or relationships between people, not for governing games or sports, let alone competitions involving people and horses. Id. at 11. These arguments are unpersuasive. Even assuming, for the sake of argument, that claim 1 recites “steps [that] cannot be performed in the human mind,” i.e., a mental process, as Appellant argues (Appeal Br. 10), itself. See Non-Final Act. 4. However, determining whether claim 1 recites an abstract idea of a mental process––rather than or in conjunction with, an abstract idea of organizing human activity––does not alter our analysis below. Appeal 2020-004347 Application 13/710,997 10 claim 1 still recites a method of organizing human activity,13 which is also an abstract idea. To be sure, as to Step 2A(1), which analyzes whether claim 1 recites a judicial exception, we determine that claim 1 recites a method of organizing human activity that manages personal behavior including following rules or instructions. See Revised Guidance 52 (identifying methods of organizing human activity as “managing personal behavior or relationships or [activities] between people (including social activities, teaching, and following rules or instructions)”); n.13 (quoting Interval Licensing LCC v. AOL, Inc., 896 F.3d 1335, 1344–45 (concluding that “[s]tanding alone, the act of providing someone an additional set of information without disrupting the ongoing provision of an initial set of information is an abstract idea,” observing that the district court “pointed to the nontechnical human activity of passing a note to a person who is in the middle of a meeting or conversation as further illustrating the basic, longstanding practice that is the focus of the [patent ineligible] claimed invention.”); quoting In re Smith, 815 F.3d 816, 818 (Fed. Cir. 2016) (concluding that “[a]pplicants’ claims, directed to rules for conducting a wagering game” are abstract)). Here, for example, claim 1 recites “enrolling a number of participants in the competition, . . .;” “determining whether a number of the competitors is a predetermined positive integer exponentiation base;” “dividing competitors into competitor groups . . .;” “judging each competitor group in a horse jumping contest based on predetermined criteria, . . .;” “determining a winner of each competitor group and eliminating a loser of each competitor group;” “advancing the winner of each competitor 13 The inclusion of horses as participants is viewed as one of the “additional elements” or “generic components,” which is discussed below. Appeal 2020-004347 Application 13/710,997 11 group to a next round, in a non-final round;” “repeating [some of the above steps] until only two competitor groups can be formed with the winners . . .;” “implementing [some of the above steps] and advancing the winner of each competitor group to a final round;” and “declaring a tournament winner, in said final round.” Appeal Br. 29 (Claims App.). All of these steps can be regarded as steps in a method of organizing human activity that manages personal behavior including following rules or instructions. Standing alone, the method of conducting a horse jumping competition including the above-identified steps, is nontechnical human activity such as organizing a concept, which is a longstanding practice. Thus, these limitations, under the broadest reasonable interpretation, are steps that recite a method of organizing human activity that manages personal behavior including following rules or instructions. Accordingly, we do not agree with Appellant’s characterization of claim 1 as having “nothing to do with . . . social activities, . . . and following rules or instructions.” Appeal Br. 11. Appellant does not provide sound reasoning as to why competitors that comprise horse-rider teams and their participation in elimination rounds “do[] not fall within the province of ‘interaction between people,’ ‘social activities,’ and ‘following rules or instructions.’” Id. Accordingly, under Step 2A(1), we conclude that claim 1 recites a method of organizing human activity, and thus, a judicial exception, i.e., an abstract idea. Appeal 2020-004347 Application 13/710,997 12 Step 2A(2) – Is the Judicial Exception Integrated into a Practical Application? If the claim recites a patent-ineligible concept, as we conclude above, we proceed to the “practical application” Step 2A, second prong, in which 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. The Revised Guidance is “designed to more accurately and consistently identify claims that recite a practical application of a judicial exception [] and thus are not ‘directed to’ a judicial exception.” Revised Guidance 53. Appellant makes naked assertions that claim 1’s requirement of enrolling participants, using horse-rider competitors, predetermined criteria, and physical obstacles in a horse jumping competition “can still integrate the purported abstract ideas . . . into a practical application” (Appeal Br. 12) and that the “ordered combination of method steps provides a practical application of a horse jumping competition” (id. at 14). Appellant also argues that the Examiner “does not indicate which features of Appellant’s claims could even be considered as additional elements.” Id. at 13. Claim 1 requires performing the above-described steps in which “the participants [comprise] horses controlled by respective riders” and “the horse jumping contest includ[es] a plurality of physical obstacles.” Appeal Br. 29 (Claims App.). The Examiner states that “the additional limitations Appeal 2020-004347 Application 13/710,997 13 [(elements)] include[e] ‘[t]he horses controlled by riders’ and the ‘plurality of physical obstacles.’” Non-Final Act. 4. The Specification discloses, under the Background of the Invention section, that “[s]everal competitive sports involve horse jumping,” such as “show jumping” (Spec. ¶ 2), which “includes various obstacles that must be navigated by the rider and horse” (id. at ¶ 3). Upon review of Appellant’s Specification, a preponderance of the evidence supports a determination that the claimed “participants” or “horses” and “physical obstacles” are generic components or activities configured to implement an abstract idea. See MPEP 2106.05(f) (“As explained by the Supreme Court, in order to transform a judicial exception into a patent-eligible application, the additional element or combination of elements must do ‘more than simply stat[e] the [judicial exception] while adding the words ‘apply it’” (quoting Alice, 573 U.S. at 222–26) (alteration in original). See also Non-Final Act. 4. We thus determine that claim 1 as a whole (i.e., including recitations of “participants” or “horses” and “physical obstacles”) fails to integrate the method of organizing human activity into a practical application. Step 2B — “Inventive Concept” or “Significantly More” The 2019 Guidance further explains that “[i]t is possible that a claim that does not ‘integrate’ a recited judicial exception is nonetheless patent eligible,” for example, because “the claim may recite additional elements that render the claim patent eligible even though a judicial exception is recited in a separate claim element.” See Revised Guidance 56. In other words, “the additional elements recited in the claims provided ‘significantly Appeal 2020-004347 Application 13/710,997 14 more’ than the recited judicial exception (e.g., because the additional elements were unconventional in combination).” Id. (emphasis added). The Examiner determines that claim 1’s additional elements, the “horses controlled by respective riders” and the “plurality of physical obstacles” are “components that [are] used in any generic method of horse jumping competition functions.” Non-Final Act. 5. The Examiner further explains that the “generic competition steps (i.e., record keeping, obtaining data, and issuing instructions and so on)” as recited in claim 1 “are well- understood, routine, and conventional activities previously known to the industry.” Id. Thus, the Examiner determines that claim 1 does not include “additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations including ‘[t]he horses controlled by riders’ and the ‘plurality of physical obstacles’ are not enough to qualify as ‘significantly more.’” Id. Once again, Appellant makes a naked assertion that “Appellant’s claims recite specific limitations that are not well-understood, routine and conventional in the field (e.g., the show jumping equestrian industry.” Appeal Br. 15. Appellant thereafter refers to the Domecq Declaration,14 “finding the particular manner of running the horse jumping competition of Appellant’s invention to be truly innovative.” Id. at 15–16. Appellant argues that repeating a process “until only two competitor groups remain” is “completely unconventional in the horse jumping industry.” Id. at 16. These arguments are unpersuasive in that Appellant is referring to the abstract idea itself, organizing human activity which includes elimination of 14 Declaration of Mr. Daniel Entrecanales Domecq (“Domecq Declaration”), filed Dec. 3, 2014. Appeal 2020-004347 Application 13/710,997 15 participants in rounds (see Non-Final Act. 3), rather than focusing on the additional limitations (“horses controlled by respective riders” and the “plurality of physical obstacles”) as a basis of arguing the additional elements are not well-understood, routine, or conventional. See Ans. 12. As discussed above, the Specification indicates that “horses controlled by respective riders” and the “plurality of physical obstacles” are elements that are well-understood, routine and conventional. See id. at 12–13; see also Spec. ¶¶ 2–3. In regard to claims 11 and 14, Appellant contends that the claimed subject matter of assigning skilled, experienced, or popular competitors with those who are not skilled, experienced, or popular, and maximizing a difference in skilled, experienced, or popularity competitors, are not “well- understood, routine, and conventional.” Appeal Br. 17. This argument is not well-taken as Appellant, once again, focuses on the abstract idea, rather than the additional elements of “horses controlled by respective riders” and the “plurality of physical obstacles.” As such, we agree with the Examiner that claim 1 does not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claim amounts to significantly more than the abstract idea itself. Conclusion For the reasons set forth above, after applying the 2019 Eligibility Guidance, we sustain the Examiner’s rejection of claims 1–18 as being directed to patent-ineligible subject matter. Appeal 2020-004347 Application 13/710,997 16 Rejection II – Indefiniteness The Examiner determines that claim 10 is indefinite because “the expressions [‘]more prestigious’; ‘better’; [and] ‘more popular’ are subjective terms.” Non-Final Act. 6; see also Ans. 6. As noted above in footnote 3, we understand that this rejection pertains to claim 8, rather than claim 10. See Ans. 14. Appellant states that such terms “would be understood by those skilled in the art” and additionally points out that “the term ‘better’ is not recited by claim 10.” Appeal Br. 19. Appellant’s contentions have merit in that the terms “more prestigious,” “better,” and “more popular” are not recited in claim 10. See Appeal Br. 31 (Claims App.). We note, however, that, as the Examiner points out, such terms are recited in claim 8 and Appellant does not respond in that regard. MPEP § 2173.05(b)(IV) states: Some objective standard must be provided in order to allow the public to determine the scope of the claim. A claim that requires the exercise of subjective judgment without restriction may render the claim indefinite. In re Musgrave, 431 F.2d 882, 893, 167 USPQ 280, 289 (CCPA 1970). Claim scope cannot depend solely on the unrestrained, subjective opinion of a particular individual purported to be practicing the invention. Datamize LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350, 75 USPQ2d 1801, 1807 (Fed. Cir. 2005)); see also Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1373, 112 USPQ2d 1188 (Fed. Cir. 2014) (holding the claim phrase “unobtrusive manner” indefinite because the specification did not “provide a reasonably clear and exclusive definition, leaving the facially subjective claim language without an objective boundary”). Here, the Specification does not appear to supply any standard for measuring the scope of the terms identified by the Examiner, and as such, claim 8 Appeal 2020-004347 Application 13/710,997 17 requires the exercise of subjective judgement and renders the claim indefinite. Accordingly, we sustain the Examiner’s rejection of claim 8 as indefinite. Rejection III – Obviousness over Show Jumping and Tournament Appellant presents arguments for claim 1 and relies on the same arguments for claims 2–5, 7, 9, 10, 12, 13, and 16–18. See Appeal Br. 19– 24. We select claim 1 as the representative claim, and claims 2–5, 7, 9, 10, 12, 13, and 16–18 stand or fall with claim 1. As to claim 1, the Examiner finds that Show Jumping discloses much of the claimed subject matter including enrolling participants in a horse jumping competition that has obstacles. Non-Final Act. 7–8 (citing Show Jumping pp. 17–19, 26–27, 30+). The Examiner acknowledges that [s]ome of the method steps as recited in the instant claims for example, the elimination of a loser as recited, advancing winner of competitor group to a next round as recited, [and] dividing competitors into competitor groups and having competitors compete against those within the group … [are] not explicitly disclosed in [Show Jumping]. Id. at 8. The Examiner relies on Tournament for these missing limitations. Id. at 8–9. More particularly, the Examiner finds that Tournament discloses “[a]fter each game, each participant is either dropped from the tournament, or advances to play a new opponent in the next ‘round’” in exemplary games such as tennis and basketball, and in competitions such as a “16-player single elimination tournament bracket.” Id. at 9–10; see also Tournament pp. 1, 3. Appeal 2020-004347 Application 13/710,997 18 Appellant contends that claim 1 requires repeatedly dividing participant horses and horse-rider competitors within each group by elimination, and the Domecq Declaration, along with the accompanying exhibits, “find the particular manner of running the horse jumping competition of Appellant’s invention to be truly innovative.” Appeal Br. 20. These arguments are unpersuasive in that they lack specificity. Only issues and findings of fact contested by the Appellant will be addressed. See Ex Parte Frye, 94 USPQ2d 1072, 1075–76 (BPAI 2010) (precedential). Here, Appellant does not argue what claimed subject matter is missing from the cited prior art. Further, the Examiner correctly responds that the arguments in the Domecq Declaration are “moot since the claims are later on rejected with prior art” and the accompanying exhibits “are not relevant to overcome the claim rejections.” Ans. 14–15. Appellant argues Show Jumping discloses that the results of the first round impact on how all of the teams compete in the second round and thus teaches away from competitors competing against all other competitors. Appeal Br. 21. Even assuming, for the sake of argument, that Show Jumping discloses the results of the first round impact on how all of the teams compete in the second round, Show Jumping does not discredit, criticize, or disparage from a competitor competing against all other competitors. Like our appellate reviewing court, “[w]e will not read into a reference a teaching away from a process where no such language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). Appeal 2020-004347 Application 13/710,997 19 Appellant next argues that Show Jumping does not disclose dividing competitors into competitor groups, in a one-on-one elimination fashion, and repeated elimination rounds. Appeal Br. 21. Appellant improperly attacks the cited art individually here as the Examiner relies on Tournament for this subject matter. See Non-Final Act. 8–9. To be sure, Tournament discloses that a tournament is an organized competition in which many participants play each other in individual games. After each game, each participant is either dropped from the tournament, or advances to play a new opponent in the next “round”. Usually, all the rounds of the tournament lead up to the “finals”, in which the only remaining participants play, and the winner of the finals is the winner of the entire tournament. Tournament, p. 1; see also id. at p. 3 (showing a 16-player, single- elimination tournament bracket). “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. [The reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citation omitted). See also In re Keller, 642 F.2d 413, 425 (CCPA 1981). See also Ans. 15–17. Appellant argues, in regard to Tournament, that “[i]t contains no reference whatsoever to the show jumping equestrian competition industry, horse jumping, or anything remotely like it” and “also contains no reference to tournaments involving judging individual competitors.” Appeal Br. 22– 23. Appellant contends that Tournament does not disclose judging each competitor group with repeating steps that involve a predetermined criteria, physical obstacles, and a human athlete with a non-human animal. Id. at 23. Appeal 2020-004347 Application 13/710,997 20 According to Appellant, the Examiner relies on improper hindsight reconstruction and that Show Jumping teaches away from a tournament methodology. Id. at 23. Once again, Appellant improperly attacks the cited art individually because the Examiner relies on Show Jumping, not Tournament, for disclosing horse jumping and judging individual competitors in a group. Non-Final Act. 7–8. Show Jumping discloses rules for the judges for determining faults of competitors. Show Jumping 14–20. Thus, Show Jumping discloses judging each competitor group with repeating steps that involve a predetermined criteria, physical obstacles, and a human athlete along with a non-human animal. See id. The Examiner reasons that it would have been obvious to an ordinarily skilled artisan to “substitute the method of conducting a horse jumping competition as taught by Show Jumping with the method of playing a tournament as disclosed by the [Tournament] as a known alternative method of playing a game.” Non-Final Act. 10. As such, we find that the Examiner’s rejection is based on evidence and sound technical reasoning rather than improper hindsight reconstruction. Once again, Appellant does not direct us to any passage in Show Jumping that discredits, criticizes, or disparages “a tournament methodology.” See Appeal Br. 23. Thus, we are unpersuaded by Appellant’s contention that Show Jumping “teaches away from it.” Id. Consequently, Appellant does not apprise us of Examiner error. For these reasons, we sustain the Examiner’s rejection of claims 1–5, 7, 9, 10, 12, 13, and 16–18 as unpatentable over Show Jumping and Tournament. Appeal 2020-004347 Application 13/710,997 21 Rejection IV – Obviousness over Show Jumping, Tournament, and Consolation Bracket Claim 6 requires a “consolation round” (Appeal Br. 30 (Claims App.)) and the Examiner relies on Consolation Bracket for this claimed subject matter. Non-Final Act. 10–11. Appellant contends that Consolation Bracket does not disclose dividing competitors and judging each competitor group in multiple horse jumping contests that include a predetermined criteria and physical obstacles. In response to Appellant’s contention, the Examiner points out that “all [the cited] references . . . disclose dividing competitors into competitor groups,” that “having a consolation round in a sport competition is not a new concept” and that Consolation Bracket “discloses that this concept is typically used in tournaments to allow participants who lose in the main draw in the first round of competition to play more instead of having one win and they go home.” Ans. 17–18. Appellant does not apprise us of error in the Examiner’s findings.15 Accordingly, we sustain the Examiner’s rejection of claim 6 as unpatentable over Show Jumping, Tournament, and Consolation Bracket. Rejection V – Obviousness over Show Jumping, Tournament, and Official Notice The Examiner takes the position that the cited art does “not explicitly disclose tournament or competition in which a skilled or experienced or 15 As Appellant has not filed a Reply Brief, Appellant has waived any arguments against the Examiner’s findings. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (“Informative”) (“[A]rguments that could be made in the reply brief, but are not, are waived.”). Appeal 2020-004347 Application 13/710,997 22 popular competitor plays against competitors who are not skilled and experienced and wherein a skilled or experienced or popular competitor plays against competitors who are not skilled and experienced” but “that is what is done in many [] recreational hockey and soccer leagues, especially for many of the more beginner teams. For example, a recreational hockey team has a mix of skaters who played college hockey as well as more beginner players.” Non-Final Act. 12. As an initial matter, we note that the Examiner’s position appears to address the subject matter of claim 11, not claim 8. Compare Appeal Br. 30 (Claims App.) (Claim 8 recites “allowing more prestigious or better or more experienced or more popular participants to advance to later rounds automatically without competing in the qualifying stage”) with, id. at 31 (Claims App.) (Claim 11 recites “assigning skilled or experienced or popular competitors with competitors who are not skilled or experienced or popular”). Additionally, Appellant contends that the Examiner has effectively taken Official Notice but that “none of the cited art” discloses the claimed subject matter at issue. See Appeal Br. 26. In the Answer, the Examiner responds to Appellant’s contention with the same explanation provided by the Examiner in the Non-Final Office Action. Ans. 18; see also Non-Final Act. 12. In this case, Appellant challenges the Examiner’s taking of Official Notice but the Examiner errs in failing to provide evidentiary support once Appellant has challenged the Official Notice. See MPEP § 2144.03. For these reasons, we do not sustain the Examiner’s rejection of claims 8, 11, 14, and 15 as unpatentable over Show Jumping, Tournament, and Official Notice. Appeal 2020-004347 Application 13/710,997 23 CONCLUSION In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed16 Reversed 1–18 101 Eligibility 1–18 8 112, second paragraph Indefiniteness 8 1–5, 7, 9, 10, 12, 13, 16–18 103(a) Show Jumping, Tournament 1–5, 7, 9, 10, 12, 13, 16–18 6 103(a) Show Jumping, Tournament, Consolation Bracket 6 8, 11, 14, 15 103(a) Show Jumping, Tournament, Official Notice 8, 11, 14, 15 Overall Outcome 1–18 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 16 37 C.F.R. § 41.50(a)(1) states: “The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim.”