Miller, Mark E. et al.

Patent Trials and Appeals Board

Aug 24, 2020

2019002048 (P.T.A.B. Aug. 24, 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.
14/318,353 06/27/2014 Mark E. Miller 997.03DIV1 2934
8685 7590 08/24/2020
DERGOSITS & NOAH LLP
One Embarcadero Center
Suite 350
SAN FRANCISCO, CA 94111
EXAMINER
THOMAS, ERIC M
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
08/24/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK E. MILLER and JONATHON SPAETH
__________

Appeal 2019-002048
Application 14/318,353
Technology Center 3700
____________

Before KENNETH G. SCHOPFER, BRADLEY B. BAYAT, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1–11 and 13–17, which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). A
hearing was held on July 30, 2020.
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies inventors “Mark Miller and Jonathon Spaeth”
as the real parties in interest. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Appellant’s invention relates generally to virtual horse racing, and
specifically, to a method “for creating a completely virtual horse racing
environment, with virtual horses, a virtual racetrack, and a horse racing form
generated and displayed using data on the virtual horses.” Spec. 1:13–16.
Method claims 1, 5, and 11 are the only independent claims pending on
appeal. Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A computer-implemented method for generating and
displaying a horse racing form for use with a computer-
implemented horse race simulation system comprising:
identifying to a processor a first group of virtual horses to
run in a particular computer-implemented horse race
simulation, the first group of virtual horses selected from a
plurality of virtual horses created using the processor, each
virtual horse having associated data stored in data storage
accessible to the processor, the stored associated data including
virtual attributes associated with the virtual horse including
physical attributes, breeding attributes, and performance
attributes including results from the processor running previous
horse race simulations using a plurality of combinations of the
plurality of virtual horses, the results from the previous horse
race simulations including split times;
prior to running the particular horse race simulation,
processing the stored associated data by the processor to
generate for display to the user on a computer display a portion
of the stored associated data for each of the first group of virtual
horses as a single integrated document in a racing form format,
the displayed single integrated document in racing form format
including at least one data table containing at least the portion
of the stored associated data about all of the virtual horses in
the first group and the portion of the stored associated data
organized and normalized based on the physical attributes, the
breeding attributes, and the performance attributes including
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split times associated with each of the virtual horses in the first
group;
prior to running the particular horse race simulation, and
after the generation and display of the single integrated
document in racing form format to the user on the computer
display, receiving by the processor a selection from the user of
one virtual horse in the first group as the user’s pick to win,
place or show in the particular horse race simulation;
running by the processor the particular horse race
simulation based at least in part on the virtual attributes of the
virtual horses; and
transmitting the results of the particular horse race
simulation by the processor to the computer display of the user.

Appeal Br. 33 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Hisada US 2002/0034981 A1 Mar. 21, 2002
Pacey et al. (“Pacey”) US 2004/0053686 A1 Mar. 18, 2004

REJECTION
Claims 1–11 and 13–17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hisada and Pacey.2
OPINION
We are persuaded by Appellant’s argument that Hisada, on which the
Examiner relies, fails to disclose a data table “organized and normalized
based on the physical attributes, the breeding attributes, and the

2 We note that the Examiner inadvertently includes canceled claim 12 in the
statement of the rejection. Final Act. 2; Ans. 3.
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performance attributes including split times associated with each of the
virtual horses in the first group.” Appeal Br. 11, 15–17; Reply Br. 5–6.
In rejecting independent claims 1, 5, and 11 as unpatentable over
Hisada and Pacey, the Examiner finds that Figure 20 of Hisada shows a data
table with performance attributes including split times associated with each
of the virtual horses in the first group, as required by the claims.3 Final
Act. 3.
Alleging error in the rejection, Appellant argues that “Hisada Does
Not Teach That the Data In The Data Table Is Organized And Normalized
Based on the Physical Attributes, Breeding Attributes and Performance
Attributes including Split Times For All Horses In The Virtual Race.”
Appeal Br. 15. According to Appellant, Figure 20 of Hisada only shows
attribute information of one horse and there is no indication that split times
are included. Id. (“Split times are a record of the horse’s time and position
at certain intervals in the race, and are important to help a handicapper
visualize previous race performance in order to determine how the horse
may perform relative to other horses in a particular race with a particular
race distance.”).
Responding to Appellant’s argument, the Examiner states that
it is argued that Hisada does not disclose split times, time and
interval position at certain intervals in the race. In other words,
it is argued that the present invention provides more
comprehensive data than that of the single horse view of the
prior art. The Examiner interprets this extra comprehensive
data as the Appellants attempt at merely claiming and

3 Claim 11 similarly requires “performance attributes including split times
associated with all of the virtual contestants in the first group.” Appeal Br.
36 (Claims App.).
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displaying data in a consolidated, condensed format. Claiming
and presenting data in a preferred format is just displaying
data, it is not a novel and inventive concept.
Answer 10 (emphasis added).
We are persuaded of Examiner error.
“A rejection based on section 103 clearly must rest on a factual basis.”
In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). The Examiner has the
initial duty of supplying the factual basis for the rejection and may not resort
to speculation, unfounded assumptions, or impermissible hindsight
reconstruction to supply deficiencies in its factual basis. Id. We do not find
in Figure 20 of Hisada, and the Examiner ostensibly acknowledges that
Hisada’s profile screen of a “single horse” as shown in Figure 20, does not
show split times associated with each virtual horse in the first group. Yet,
the Examiner resorts to unfounded assumptions to supply deficiencies in its
factual basis in maintaining the rejection of independent claims 1, 5, and 11.
See supra. In Figure 2 of Appellant’s Specification, “the normalized
distances and split times present a picture of how a horse runs on different
tracks, different surfaces, different conditions, different distances, etc.”
Reply Br. 5. According to Appellant, the claimed split times are “extremely
useful for a handicapper when analyzing a field of virtual horses as it
underlies a skilled analysis rather than luck. Such information can also
provide an effective basis for comparison and analysis across different
platforms, such as virtual race platforms hosted by different entities.” Id.
We agree with Appellant that Hisada does not teach split times as required
by the independent claims. The Examiner does not rely on Pacey to cure the
deficiency in Hisada.
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Therefore, we do not sustain the rejection of independent claims 1, 5,
and 11 as unpatentable over Hisada and Pacey. For the same reasons, we
also do not sustain the rejection of dependent claims 2–4, 6–10, and 13–17.
Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims
are nonobvious if the independent claims from which they depend are
nonobvious”).
CONCLUSION
The Examiner’s rejection of claims 1–11 and 13–17 under 35 U.S.C.
§ 103(a) is reversed.
DECISION SUMMARY

Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1–11, 13–17 103(a) Hisada, Pacey 1–11, 13–17

REVERSED