WHITE KNUCKLE GAMING, LLC

Patent Trials and Appeals Board

Jun 24, 2020

2019006278 (P.T.A.B. Jun. 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.
14/034,530 09/23/2013 Athanasios Angelopoulos 17791.3.1.2 4861
134176 7590 06/24/2020
White Knuckle IP
282 Maxine Circle
Bountiful, UT 84010
EXAMINER
PIERCE, DAMON JOSEPH
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
06/24/2020 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):
ahansen.invent@icloud.com
andrew@hansenIP.org
private.djones@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ATHANASIOS ANGELOPOULOS
____________________

Appeal 2019-006278
Application 14/034,530
Technology Center 3700
____________________

Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
SEAN P. O’HANLON, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 2, 4–8, 11, 27, and 29–39. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as White Knuckle
Gaming, LLC. Appeal Br. 4.
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THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A game medium consisting of read-only memory (ROM),
the game medium configured to provide a sports video game in
conjunction with a video game machine, the video game
including a plurality of video game characters that simulate
real-life sports athletes, the video game characters arranged into
video game sports teams that simulate real-life sports teams of a
real-life sports league, each video game character configured to
perform in the video game based at least in part on a player
performance parameter associated therewith, the game medium
being configured to cause the video game machine to perform a
method when loaded thereon, the method comprising:
during a single sports season, receiving a series of
updated video game character performance parameters in a
plurality of transmissions from a data server via a network
including the Internet, wherein each of the updated video game
character performance parameters in the series is (i) based at
least in part on one or more most recent real-life athlete
performance characteristics of a particular real-life sports
athlete performing in one or more most recent sporting events
during the single sports season, wherein the sporting events are
a team event of a particular team of the real-life sports league to
which the the [sic] particular real-life sports athlete is a member
of [sic];
during the single sports season, updating a performance
attribute of a particular video game character of the sports video
game a plurality of times using the series of updated video
game character performance parameters received, wherein each
of the updating includes loading the particular updated video
game parameter into RAM and the particular updated parameter
changes a manner in which the particular individual video game
character performs in the sports video game such that the
particular individual video game character more closely
simulates the most recent real-life athlete performance
characteristics of the particular real-life sports athlete; and
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enabling a user to control the video game character.
EVIDENCE
The prior art relied upon by the Examiner is:
Swanberg US 2002/0155893 A1 Oct. 24, 2002

EA Sports Madden NFL(TM) 2000 Reference Card (1999) (hereinafter
“Madden00”).

EA Sports Madden NFL(TM) 2000 Roster Update–Playoff Week 1
(January 7, 2000) (hereinafter “MaddenPlayoff”).

EA Sports Madden NFL(TM) 2000 Roster Update–EA Super Bowl
(January 28, 2000) (hereinafter “MaddenSuperBowl”).

EASports.com—Madden 2000 (March 2, 2000), available at https://
web.archive.org/web/20000302192248/http://www.easports.com/
99/madden2000/downloads_pc.cfm (hereinafter
“MaddenDownloads”).

EA Sports FIFA 2001 (April 25, 2001), available at https://
web.archive.org/web/20010425215945/http://www.fifa2001.com/
archive/arc11-2000.shtml (hereinafter “FIFA”).

EA Sports Madden NFL(TM) 2003 Playstation2 Manual (2002)
(hereinafter “Madden03”).

REJECTIONS
I. Claims 11, 35, and 38 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite.
II. Claims 1, 2, 4–8, 11, 27, and 29–39 stand rejected under
35 U.S.C. § 101 as being directed to patent-ineligible subject
matter.
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III. Claims 1, 2, 5–8, 11, 27, and 29–38 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Madden03, Madden00,
MaddenSuperBowl, MaddenPlayoff, MaddenDownloads, and
Swanberg.
IV. Claim 4 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Madden03, Madden00, MaddenSuperBowl,
MaddenPlayoff, MaddenDownloads, Swanberg, and FIFA.
V. Claim 39 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Madden03 and Swanberg.
OPINION
Rejection I – Indefiniteness
Appellant does not present any arguments contesting this rejection.
See Appeal Br. 9 (stating that “Appellant holds in abeyance a response to the
. . . rejection[] under Section 112 for correction post-appeal”); see also id. at
9–56 (presenting arguments only with respect to the rejections under
35 U.S.C. §§ 101 and 103(a)). Consequently, Appellant has waived any
argument of error, and we summarily sustain the Examiner’s rejection of
claims 11, 35, and 38 under 35 U.S.C. § 112, second paragraph, as
indefinite. See In re Berger, 279 F.3d 975, 984–85 (Fed. Cir. 2002) (holding
that the Board did not err in sustaining an indefiniteness rejection when the
appellant failed to contest the rejection on appeal); see also 37 C.F.R.
§ 41.31(c) (“An appeal, when taken, is presumed to be taken from the
rejection of all claims under rejection unless cancelled by an amendment
filed by the applicant and entered by the Office.”).

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Rejection II – Subject Matter Eligibility
Principles of Law
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).
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. 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.”
See 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. Kappos, 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, 67 (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
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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 187; 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
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 (quotation marks 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).
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“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The USPTO published revised guidance on the application of § 101.
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019) (the “2019 Eligibility Guidance” or “Guidance”). Under
the 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 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 2019 Eligibility Guidance.
Analysis
In contesting the 35 U.S.C. § 101 rejection, Appellant references
certain limitations recited in independent claims 1, 30, 38, and 39, but
otherwise presents arguments without regard to any particular claim. Appeal
Br. 9–24; Reply Br. 2–8. We select claim 1 as representative to decide the
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appeal of this rejection, and claims 2, 4–8, 11, 27, and 29–39 stand or fall
with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (providing that when multiple
claims subject to the same ground of rejection are argued as a group by an
appellant, the Board may select a single claim from the group to decide the
appeal with respect to the group as to the ground of rejection on the basis of
the selected claim alone).
The Examiner determines that claim 1 is “directed to the abstract idea
of rewriting software to produce an updated version, which corresponds to
concepts identified as abstract ideas by the courts.” Final Act. 3
(citing White Knuckle Gaming, IP, LLC, v. Elec. Arts Inc., 2016 WL
3129133 (D. Utah 2016), aff’d without op. 683 F. App’x. 931 (Fed.
Cir. 2017)). The Examiner explains that the steps recited in claim 1
describe the concept of sending and receiving updated software
over the Internet which is well-known, long-practiced and
fundamental to the software industry. The claims are directed
[to] a patent-ineligible concept because they describe a simple
internet-based method of updating software that is performed
on conventional equipment. It is a longstanding business
practice in the video game industry to update sports video
games parameters to reflect real-world developments.
Id. at 4. The Examiner also determines that “the additional computer
elements, which are recited at a high level of generality, provide
conventional computer functions that do not add meaningful limits to
practicing the abstract idea.” Id. at 3. In particular, the Examiner explains
that claim 1
recites . . . additional limitations of a “data server” for receiving
updated data, and a “network” and the “Internet” for
transmission of data. The claimed invention doesn’t have an
additional element that transforms the abstract idea into an
inventive concept, because it doesn’t rely on anything other
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than generic computer equipment in order to be accomplished.
Though the video game updates . . . are able to happen
frequently over the internet, they use the network in a normal
manner. This use of technology “is exactly the type” of generic
computer implementation that the Supreme Court in Alice said
does not qualify as an additional feature that can make the
material patent-eligible.
Id. at 5.
(1) Step 2A, Prong One: Does Claim 1 Recite
a Judicial Exception?
Appellant argues that claim 1 does not fall within any of the groupings
of abstract ideas identified in the 2019 Eligibility Guidance. Reply Br. 5.
Appellant asserts that the claim is “directed to a game medium configured to
provide a sports video game in conjunction with a video game machine. . . .
The game medium is not a mathematical concept, a method for organizing
human activity, or a mental process.” Id. at 5–6. This argument is
unpersuasive.
Claim 1 recites a game medium configured to cause a video game
machine to perform a method comprising the steps of receiving, via the
internet, a series of video game character performance parameters updates
based on recent real-life athlete performance characteristics during a sports
season, updating a performance attribute of a particular video game
character a plurality of times using the received performance parameters by
loading updated parameters into RAM, and enabling user control of the
video game character. See Appeal Br. 58–59 (Claims App.). In other
words, the process recited in claim 1 amounts to a simple internet-based
method of updating sports video game software. See White Knuckle
Gaming, IP, LLC, 2016 WL at *3. These limitations describe what the 2019
Eligibility Guidance calls “commercial interactions” (or “business
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relations”), which is a variety of judicially excepted abstract ideas—
specifically, “[c]ertain methods of organizing human activity.” 2019
Eligibility Guidance, 84 Fed. Reg. at 52. Thus, the Examiner correctly
determines that claim 1 recites a judicial exception, namely, an abstract idea.
See Final Act. 3.
(2) Step 2A, Prong Two: Is There Integration into
a Practical Application?
Having found that claim 1 recites a judicial exception, namely, an
abstract idea, we are instructed by the 2019 Eligibility Guidance to
determine whether each claim recites “additional elements that integrate the
exception into a practical application.” See 2019 Eligibility Guidance, 84
Fed. Reg. at 54; see also MPEP § 2106.05(a)–(c), (e)–(h). This evaluation
requires us to determine whether an additional element or a combination of
additional elements in a claim applies, relies on, or uses the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the exception. If the recited judicial exception is integrated into
a practical application, the claim is not “directed to” the judicial exception.
Here, the only additional elements recited in claim 1 beyond the
judicial exception are “[a] game medium consisting of read-only memory
(ROM),” “a video game machine” carrying out the method steps, “a plurality
of transmissions from a data server via a network including the Internet,”
“loading the particular video game parameters into RAM,” and “enabling a
user to control the video game character.” Appeal Br. 58–59 (Claims App.).
However, these additional elements are described only generically in the
Specification. See, e.g., Spec. ¶¶ 27, 29, 30. We find no indication in the
Specification, nor does Appellant direct us to any evidence, that these steps
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recited in claim 1 invoke any assertedly inventive programming, require any
specialized computer hardware or other inventive computer components,
i.e., a particular machine, or that the claimed invention is implemented using
other than generic computer components to perform generic computer
functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation
of generic computer limitations does not make an otherwise ineligible claim
patent-eligible.”). For example, the step of receiving a plurality of
transmissions from a data server via network is simply a generic data
gathering step, which constitutes insignificant extra-solution activity. See,
e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed.
Cir. 2011) (“We have held that mere ‘[data-gathering] step[s] cannot make
an otherwise nonstatutory claim statutory.’” (alterations in original) (quoting
In re Grams, 888 F.2d 835, 840 (Fed. Cir. 1989))); see also 2019 Eligibility
Guidance, 84 Fed. Reg. at 55 (identifying “add[ing] insignificant extra-
solution activity to the” abstract idea as an example of when an abstract idea
has not been integrated into a practical application). Moreover, the ROM,
video game machine, server, network, and RAM elements are merely
generically-recited computer components that do “no more than generally
link the use of a judicial exception to a particular technological environment
or field of use.” 2019 Eligibility Guidance, 84 Fed. Reg. at 55; see also
Bilski, 561 U.S. at 610–11 (“[T]he prohibition against patenting abstract
ideas ‘cannot be circumvented by attempting to limit the use of the formula
to a particular technological environment’ or adding ‘insignificant
postsolution activity.”’) (quoting Diehr, 450 U.S. at 191–92).
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Appellant argues “that the claims integrate the judicial exception into
a practical application and are therefore patent eligible.” Reply Br. 6. In
particular, Appellant asserts that claim 1 is “comparable to the claims in
Enfish[, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)] in
that [it] relate[s] to particular improvements in computer technology. This
improvement of the Applicant’s invention define[s] the innovative features
of more dynamic, reliable, seamless, accurate, flexible and versatile video
game.” Appeal Br. 16; see also id. at 19 (asserting that the “claimed
invention is related to a concrete improvement in computer technology just
like Enfish”). Appellant asserts that the subject matter “is directed to, and
claims, a specific type of improvement to sports video games.” Id. at 23
(emphasis omitted); see also id. at 20–21 (citing McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016)).
According to Appellant, the “[S]pecification specifically identifies the
improvement as easily providing a video game that simulates athletes from
the current season (i.e., ‘new events of the week, day, or hour’) rather than
‘last season’s teams.’” Reply Br. 6 (quoting Spec. ¶ 9). We are not
persuaded by this line of argument.
In Enfish, our reviewing court found that “the self-referential table
recited in the claims on appeal is a specific type of data structure designed to
improve the way a computer stores and retrieves data in memory.” Enfish,
822 F.3d at 1339. The Enfish court found they were “not faced with a
situation where general-purpose computer components are added post-hoc to
a fundamental economic practice or mathematical equation,” but “[r]ather,
the claims are directed to a specific implementation of a solution to a
problem in the software arts.” Id. Here, Appellant does not identify any
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evidence, or any disclosure in the Specification, that the claimed invention
improves the operation of a computer (e.g., video game machine), or causes
it to function in a different manner. In other words, Appellant does not
explain, nor do we discern, how the claimed receiving and updating steps of
claim 1 cause the video game machine to function any differently than
without these steps. As discussed above, claim 1 recites only generic
computer elements in performing the claimed steps, and Appellant does
provide persuasive evidence or technical reasoning to show that these
computer elements operate in other than a generic manner. Any
improvement in the method of claim 1 appears to reside in the abstract idea
itself (i.e., the commercial interactions or business relations representing
certain methods of organizing human activity), not in the additional elements
recited in the claim.
We are also unpersuaded by Appellant’s attempt to analogize the
instant claims to the claim determined to be eligible in McRO. See Appeal
Br. 20–21. In McRO, the claim at issue was directed to automatically
animating the lip synchronization and facial expressions of three-
dimensional animated characters. McRO, 837 F.3d at 1307–08. There, the
Federal Circuit determined that the claimed invention, considered as a
whole, used limited rules in a computer process specifically designed to
achieve a technological improvement over existing, manual 3-D animation
techniques. Id. at 1316. As such, the court determined that McRO’s claim
was not directed to an abstract idea, and was patent-eligible under 35 U.S.C.
§ 101. Id. According to McRO, the relevant question is whether the claim
as a whole “focus[es] on a specific means or method that improves the
relevant technology” or is “directed to a result or effect that itself is the
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abstract idea and merely invoke generic processes and machinery.” Id. at
1314. As the Federal Circuit made clear in Two-Way Media Ltd. v. Comcast
Cable Communications, the improvement must be a technical one. See Two-
Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1338–
39 (Fed. Cir. 2017) (reciting an abstract idea performed on generic computer
and network components that operate according to their ordinary functions
does not contain an inventive concept). Here, Appellant’s claim does not
recite a technical improvement tied to a specific apparatus that solves a
technical problem. Instead, the claim, as a whole, relates to providing an
improved video game experience for a user (i.e., providing a “dynamic,
reliable, seamless, accurate, flexible and versatile video game” (Appeal Br.
16); “being an enjoyable video game” (id. at 23)), not an improvement in
technology.
Appellant argues that the Examiner’s rejection “ignores the specific
and meaningful claim elements that describe ‘how’ the ‘updating’ is
performed to give rise to [a] vastly more efficient video game that is more
fun to play and more realistic.” Reply Br. 2 (citing Core Wireless Licensing
S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018)). Appellant
asserts that claim 1 is similar to the eligible claims in Core Wireless
“because the claim contains precise language delimiting the type of data to
be displayed and how to display it, thus improving upon conventional sports
video games to increase the realism and efficiency of the video game
machine.” Id. at 4. According to Appellant,
Configuring a video game with player performance
parameters that control an attribute of the video game character
and then configuring the video game to receive a series of
updates from a server during the season to increase the realism
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of the video game is “precise language delimiting the type of
data to be displayed and how to display it,” thus improving
upon conventional sports video games to increase the realism
and efficiency with which that realism can be delivered and is
therefore patent eligible in view of Core Wireless.
Id. at 4–5. This argument is unpersuasive.
The claims at issue in Core Wireless were directed to “an improved
user interface for electronic devices, particularly those with small
screens.” Core Wireless, 880 F.3d at 1363. The specification described that
“prior art interfaces had many deficits relating to the efficient functioning of
the computer, requiring a user ‘to scroll around and switch views many
times to find the right data/functionality,”’ and disclosed that the claimed
invention improved the “efficiency of using the electronic device by
bringing together ‘a limited list of common functions and commonly
accessed stored data,’ which can be accessed directly from the main
menu.” Id. The specification also described that “[t]he speed of a user’s
navigation through various views and windows” was improved because it
“saves the user from navigating to the required application, opening it up,
and then navigating within that application to enable the data of interest to
be seen or a function of interest to be activated.” Id. The Federal Circuit
concluded that this disclosure “clearly indicates that the claims are directed
to an improvement in the functioning of computers, particularly those with
small screens.” Id.
Here, claim 1 does not recite any limitations pertaining to a user
interface or displaying information. As discussed above, claim 1 merely
recites generic computer components performing generic computer functions
associated with receiving information (i.e., performance parameter updates),
sending information (i.e., transmissions from a data server), and inputting
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(i.e., enabling a user to control the game character) without any
technological improvement to the computer components themselves. In
other words, we find no indication in the claims or Specification that claim 1
is directed to an improved interface analogous to the one in Core Wireless or
any other technical improvement that provides an improvement in computer
functionality.
Additionally, we find no indication in the Specification that the
claimed invention effects a transformation or reduction of a particular article
to a different state or thing. Nor do we find anything of record that attributes
an improvement in computer technology and/or functionality to the claimed
invention or that otherwise indicates that the claimed invention integrates the
abstract idea into a “practical application.” See 2019 Eligibility Guidance,
84 Fed. Reg. at 55.
For the above reasons, we determine that the additional elements
recited in independent claim 1 beyond the judicial exception, whether
considered alone or in combination, do not integrate the abstract idea into a
practical application. In other words, claim 1 is “directed to” an abstract
idea.
(3) Step 2B: Does claim 1 Recite an Inventive Concept?
Because we determine that claim 1 fails to recite additional elements
that integrate the judicial exception into a practical application, in
accordance with the 2019 Eligibility Guidance, we next consider whether the
claim adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field or instead “simply
appends well-understood, routine, conventional activities previously known
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to the industry, specified at a high level of generality, to the judicial
exception.” See 2019 Eligibility Guidance, 84 Fed. Reg. at 56.
Appellant argues that the claim “would be patent eligible at step 2B
based on the recently decided Federal Circuit decision in [Berkheimer v. HP,
Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018)].” Reply Br. 7. In particular,
Appellant asserts that the Examiner “has not shown that updating a
particular attribute of a video game character a plurality of times during a
season is conventional or routine or established that the benefits would be
well-understood to one of skill in the art at the time the Application was
filed.” Id. at 8. According to Appellant, the “claimed invention is clearly
directed to something narrower than ‘updating software’ and is clearly
directed to a useful and ‘inventive concept’ specific to sports video games.”
Appeal Br. 20. This argument is unpersuasive.
The receiving and updating video game character performance
attributes during a season represents the abstract idea itself (i.e., certain
methods of organizing human activity, namely, commercial interactions or
business relations). However, the inventive concept under step two of the
Mayo/Alice test cannot be the abstract idea itself. See Berkheimer, 890 F.3d
at 1374 (Moore, J., concurring) (“It is clear from Mayo that the ‘inventive
concept’ cannot be the abstract idea itself, and Berkheimer . . . leave[s]
untouched the numerous cases from this court which have held claims
ineligible because the only alleged ‘inventive concept’ is the abstract idea.”);
see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290–91 (Fed.
Cir. 2018) (“Our precedent has consistently employed this same approach.
If a claim’s only ‘inventive concept’ is the application of an abstract idea
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using conventional and well-understood techniques, the claim has not been
transformed into a patent-eligible application of an abstract idea.”).
For the reasons discussed above, we find no element or combination
of elements recited in claim 1 beyond the judicial exception that is not “well-
understood, routine, conventional” in the field or that contains any
“inventive concept” or adds anything “significantly more” to transform the
abstract concept into a patent-eligible application. Alice, 573 U.S. at 221.
Accordingly, we sustain the rejection of claim 1, and claims 2, 4–8, 11, 27,
and 29–39 falling therewith, under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter.

Rejection III – Obviousness based on Madden03, Madden00,
MaddenSuperBowl, MaddenPlayoff, MaddenDownloads, and Swanberg
In contesting this rejection, Appellant presents arguments without
regard to any particular claim. See Appeal Br. 24–53. Thus, we select claim
1 as representative, and claims 2, 5–8, 11, 27, and 29–38 stand or fall with
claim 1.
The Examiner finds that Madden03 discloses a game medium
configured to provide a sports video game and cause a video game machine
to perform a method that includes,
during a single sports season, receiving a series of
updated video game character performance parameters (pps. 27,
28, and 31 discloses changing attributes of any player) a
plurality of transmissions from a data server via a network
including the Internet (pps. 15–17 discloses online connection
and updates to current NFL roster), wherein the sporting events
are a team event of a particular team of the real-life sports
league to which the particular real-life sports athlete is a
member of (pg. 10, where football teams in video game are
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created after real-life NFL athletes and teams, where the
sporting events are football video games played on the game
console); and
enabling a user to control the video game character (pps.
4–8 discloses basic controls).
Final Act. 7 (boldface omitted). The Examiner finds that Madden03 does
not disclose
each video game character configured to perform in the
video game based at least in part on a player performance
parameter associated therewith,
a series of updated video game character performance
parameters in a plurality of transmissions from a data server,
wherein each of the updated video game character performance
parameters in the series is (i) based at least in part on one or
more most recent real-life athlete performance characteristics of
a particular real-life sports athlete performing in one or more
most recent sporting events during the single sports season,
[and,]
during the single sports season, updating a performance
attribute of a particular video game character of the sports video
game a plurality of times using the series of updated video
game character performance parameters received, wherein each
of the updating includes loading the particular updated video
game parameter into RAM and the particular updated parameter
changes a manner in which the particular individual video game
character performs in the sports video game such that the
particular individual video game character more closely
simulates the most recent real-life athlete performance
characteristics of the particular real-life sports athlete.
Id. at 8 (emphasis omitted). However, the Examiner finds that “Madden00
teaches each video game character configured to perform in the video game
based at least in part on a player performance parameter associated therewith
(pg. 32 discloses ‘rating abbreviations’ related to athlete abilities in video
game).” Id. The Examiner explains that “Madden03 and Madden00 are part
of the Madden football video game series where progressively over time
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enhancing the play, performance, and entertainment value to sports video
game players is the goal.” Id. The Examiner determines that it would have
been obvious to combine the teachings of Madden00 with the video game of
Madden03 in order “to enhance Madden game play features over time in
hopes to make the game progressively more fun for game players.” Id. at 9.
The Examiner finds that “MaddenSuperBowl and MaddenPlayoff
disclose[] adjusted rosters and player abilities; and MaddenDownloads
discloses a number of roster patches available for downloading, where the
roster patches are relatively recent to . . . when a game player decides to
download the patch.” Final Act. 9. The Examiner determines that it would
have been obvious to combine the teachings of MaddenSuperBowl,
MaddenPlayoff, and MaddenDownloads with the Madden03 video game “in
order to give game players a feeling that they are actually playing a real life
game which adds to the excitement and fun of playing a sports-related video
game.” Id. at 10.
The Examiner also finds that “Swanberg teaches loading the particular
updated video game parameter into RAM (¶32). The Playstation of
Madden03 is a form of a computer system where it [is] commonly known
that computer system[s] comprise . . . some form of RAM to process
programs and software.” Final Act. 10. The Examiner determines that it
would have been obvious to combine the teachings of Swanberg with the
video game of Madden03 “in order to continually store game downloads on
the gaming console and assist in providing the modified game play.” Id.
Appellant argues that Swanberg teaches away from the claimed
invention. Appeal Br. 24; see also id. at 27 (asserting “that Swanberg
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teaches away from the application to the Madden references” (italics
omitted)). Appellant asserts that
Swanberg relates to smart trading cards. For the smart
trading cards of Swanberg to be useful for trading, the smart
cards must be different from one another. That is, a person
with a trading card would have no incentive to trade their card
for the exact same trading card. It is also unlikely that the smart
trading card holder would have held, or played with, all of the
cards of an entire league or team. It is this inherent bartering
system of unique trading cards in Swanberg that clearly
differentiates the teachings of Swanberg from the Applicant’s
claimed invention.
Id. at 25 (italics omitted). We are not persuaded by this argument.
A reference teaches away from a claimed invention or a proposed
modification if “a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (quoting In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Prior art does not teach away
from claimed subject matter merely by disclosing a different solution to a
similar problem unless the prior art also criticizes, discredits, or otherwise
discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). Here, Appellant does not point to, nor do we find, any
disclosure in Swanberg criticizing, discrediting, or otherwise discouraging
the combination of teachings proposed by the Examiner in the rejection.
The fact that Swanberg relates to smart trading cards does not constitute a
teaching away from the Examiner’s proposal to modify Madden03 to
include loading updated video game parameters into RAM (see Final Act.
10; Ans. 25–26).
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Appellant argues that Swanberg is non-analogous art. Appeal Br. 24.
Appellant asserts that “the problems and solutions apparent in Swanberg are
specifically related to trading cards and are not directed as analogous art to
the Applicant’s claimed invention under the broadest reasonable
interpretation consistent with the Applicant’s specification.” Id. at 27
(italics omitted). This argument is unpersuasive.
Regarding the issue of analogous art, the established precedent of our
reviewing court sets up a two-fold test for determining whether art is
analogous: “(1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved.” In
re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004)). Here, Swanberg is analogous art at least
because the reference is in the same field of endeavor as Appellant’s
disclosure. Appellant’s Specification describes sports video games. See
Spec. ¶ 1. Swanberg relates to “electronic games that use read/writeable
media.” Swanberg ¶ 2. In particular, Swanberg “is directed to smart trading
cards used to play a game on a computer terminal.” Id. ¶ 3; see also id. ¶ 5
(discussing electronic video gaming devices). Swanberg discloses a
version of the game using sports teams and players. In this
system, each smart card collectible/trading card represents a
team of players (e.g. 5 players for a basketball card or 9 players
for a baseball card). The team functions as a whole when the
card is used during games such as action/arcade, strategy,
rotisserie leagues etc.
Id. ¶ 83; see also id. ¶ 86 (disclosing that “game play would be available to
Team Card holders that would allow them to play an arcade[-]style baseball
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games using the players on the Team Card”). Thus, Swanberg is in the same
field as Appellant’s endeavor. Moreover, Swanberg discloses that “[t]he
abilities of the players on the card could reflect the current statistics of the
corresponding live player combined with the skill of the user playing the
game.” Id. ¶ 86. In other words, “[w]hen the game play begins 241, the
players on the Team Card will perform based upon the statistics loaded in
step 239. For example, if Roger Clemens has had a bad week of pitching,
then the ‘virtual Roger Clemens’ will not pitch as well as before.” Id. ¶ 95
(boldface omitted). Thus, Swanberg is also reasonably pertinent to a
problem with which Appellant was concerned, namely, that sports video
game character performance parameters are fixed at the time the game is
produced, whereas “performance characteristics of real life sports players,
teams and environments change throughout the year.” Spec. ¶¶ 3, 5.
Consequently, Appellant’s assertion does not apprise us of error in the
Examiner’s conclusion that Swanberg is analogous art. See Ans. 26.
Appellant argues that “Swanberg is not programmed to update,
transmit, or download . . . a series of new player performance parameters for
a particular league, team, or player to the smart trading car[d] throughout a
season.” Appeal Br. 25 (italics omitted). We are not persuaded by this
argument against Swanberg because it attacks the reference individually
rather than as combined by the Examiner in the rejection. “Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.” In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642
F.2d 413, 425 (CCPA 1981). As discussed above, the Examiner relies on
MaddenSuperBowl, MaddenPlayoff, and MaddenDownloads, not Swanberg,
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for disclosing “a series of updated video game character performance
parameters in a plurality of transmissions from a data server.” Final Act. 9.
The Examiner relies on Swanberg only for disclosing a step of loading
updated video game parameters into RAM. Final Act. 10 (citing Swanberg
¶ 32).
Appellant argues that one of ordinary skill in the art would not have a
reasonable expectation of success in modifying Madden03 based on the
teachings of Swanberg. Appeal Br. 25. According to Appellant, a server
sending a series of updates for a particular sports video game character “is
irrelevant to the teachings of Swanberg and would likely render the
teachings of Swanberg non-functional if the trading cards of Swanberg had
the same entities and/or updates thereto as each player is intended to be
traded at some point.” Id. (italics omitted). This argument is unpersuasive
because the Examiner’s rejection does not propose a modification of
Swanberg. Instead, as discussed above, the Examiner proposes further
modifying Madden03 to include loading updated video game parameters
into RAM, as taught by Swanberg. Appellant does not proffer factual
evidence or persuasive technical reasoning to explain how combining the
teachings of Madden03 with the teachings of Swanberg in an operable
manner would have been beyond the level of ordinary skill in the art. See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (Fed. Cir. 2007) (“A person
of ordinary skill is also a person of ordinary creativity, not an automaton.”).
Appellant argues that the cited references “do not teach a ‘series of
updated video game character performance parameters’ based on
performances of ‘a particular real-life sports athlete.’” Appeal Br. 28
(emphasis omitted). Appellant asserts that “the Office Action provides no
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evidence that the Madden Updates disclose updating these [player] ratings in
a series for a particular athlete or a particular video game character.” Id.
(emphasis omitted) (citing Final Act. 8). Appellant asserts that “a series of
roster updates does not produce a series of updated character performance
parameters for a particular player.” Id. at 29. According to Appellant,
“there is no evidence that any of the particular football player[’]s ratings
changed more than one time in the Madden Updates and therefore is not a
‘series’ as required by the claims.” Id. We are not persuaded by this
argument.
MaddenPlayoff discloses that “[t]his Roster is the first with adjusted
rosters and player abilities leading into the NFL playoffs. Each week the
roster file will be updated to denote player performance in each eligible
team[’]s playoff game.” MaddenPlayoff 1 (emphasis added).
MaddenSuperBowl similarly discloses that “[t]his Roster includes adjusted
rosters and player abilities including performance during the NFL playoffs.
Each week the roster file will be updated to denote player performance in
each eligible team[’]s playoff game.” MaddenSuperBowl 1. In other words,
each of MaddenPlayoff and MaddenSuperBowl discloses that a “Roster”
update includes updates to team rosters and player abilities (i.e., game
character performance parameters) in the Madden NFL video game based on
a real-life player performance in actual NFL football games. Given
MaddenPlayoff’s and MaddenSuperBowl’s disclosure that updates occur
“each week” to denote playoff game performances by a player, Appellant
does not apprise us of error in the Examiner’s finding that the cited
references disclose a series of updates to player abilities based on
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performances of real-life athletes. See also MaddenDownloads 1 (disclosing
Madden NFL updates for playoff weeks 1–3).
Appellant argues that a person of ordinary skill in the art
at the time of the invention did not recognize the need to
provide parameters that were updated based on changing real-
life events on a real-time or near real-time basis. Rather, sports
video games in the late 1990s and early 2000s were only adding
static features that simulated real life sports and at most
required the creation of ‘mods’ or ‘patches’ to fix or update a
video game.
Appeal Br. 33. Appellant asserts that MaddenSuperBowl, MaddenPlayoff,
and MaddenDownloads disclose “patches [that] have not been shown to
consistently update a particular video game player based on a series of
athletic performances of a particular real-life athlete as opposed to a series of
updated roster variations.” Id. According to Appellant, “[i]n the context of
a sports video game, a ‘roster’ is the list of players on a particular sports
team and the player’s position.” Id. at 34. We are not persuaded by these
arguments.
As discussed above, MaddenPlayoff and MaddenSuperBowl disclose
weekly updates to the video game that include, in addition to roster updates
(i.e., personnel lists), updates to player abilities (i.e., game character
performance parameters) reflecting performances by real-life players in
actual NFL playoff games. See MaddenPlayoff 1 (disclosing that a “Roster”
update includes adjustments to rosters and player abilities);
MaddenSuperBowl 1. In other words, although Appellant contends that
there was no recognized need for providing updated video game character
parameters based on real-life events (Appeal Br. 33), MaddenPlayoff and
MaddenSuperBowl evidence that it was known in the video game art, at the
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time of the claimed invention, to provide a series of updates to sports video
game character performance parameters based on real-life player
performances during a sports season. See also Swanberg ¶¶ 86, 95
(disclosing that it was known to provide an arcade-style baseball game with
in-game character abilities that reflect current statistics of real-life players,
such as weekly pitching performances).
Appellant also argues that secondary considerations demonstrate non-
obviousness of the claimed invention. See Appeal Br. 39–53. In particular,
Appellant asserts that Exhibits I–V, submitted with the Appeal Brief,
evidence commercial success, long-felt but unsolved need, industry praise,
and copying. Id.
Appellant argues that “those of ordinary skill in the video game
industry praise the claimed invention . . . as practiced by the EA [Sports]
Dynamic DNA, EA [Sports] Adidas Live Season, and Take Two Sports
Living Roster features released in 2008 over five years after the applicant’s
priority date.” Appeal Br. 39 (emphasis omitted). Appellant cites to
Exhibits I–T (id. at 40–48), which include various company press releases
and video game blog and forum posts describing EA Sports’ Dynamic DNA
and Take Two’s Living Roster features, and asserts that “those of ordinary
skill in the art, including those who make sports video games and those who
use sports video games[,] both praise the claimed invention as implemented
in Dynamic DNA as new and innovative” (id. at 48). Appellant also argues
that “the claimed invention has found commercial success . . . in the sports
video game commercial market.” Id. at 39 (emphasis omitted). Appellant
asserts that “both Dynamic DNA and Living Roster have been seen as an
overwhelming success by those who design the sports video games, those
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who designate a video game feature as the Best Innovation of 2008, as well
as their customers who play the sports video games.” Id. at 50 (emphasis
omitted). According to Appellant, “it appears that the Dynamic DNA and
Living Roster features are one of the most important features which form the
basis of consumer purchasing decisions between the two competing video
games.” Id. at 51 (emphasis omitted); see also id. at 50–51 (citing to Exhibit
M and asserting that exemplary quotes2 show the importance of the Dynamic
DNA and Living Roster features with respect to the consumer market’s
interest).
“For objective evidence of secondary considerations to be accorded
substantial weight, its proponent must establish a nexus between the
evidence and the merits of the claimed invention.” In re Kao, 639 F.3d
1057, 1068 (Fed. Cir. 2011) (citation omitted). A patent applicant is entitled
to a presumption of nexus when it is shown “that the asserted objective
evidence is tied to a specific product and that product ‘embodies the claimed
features, and is coextensive with them.’” Fox Factory, Inc. v. SRAM, LLC,
944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Polaris Indus., Inc. v. Arctic
Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). If the claimed invention is
only a component of a commercially successful machine or process, the
patentee is not entitled to a presumption of nexus. Id. (reaffirming the
importance of the “coextensiveness” requirement). If a secondary
consideration results from something other than what is claimed and novel in
the claim, there is no nexus to the merits of the claimed invention. Id.; see
also Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir.

2 We note that the quotations provided on pages 50–51 of the Appeal Brief
appear in Exhibit N, not Exhibit M.
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2011) (“If commercial success is due to an element in the prior art, no nexus
exists.”); Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir.
2006) (“[I]f the feature that creates the commercial success was known in
the prior art, the success is not pertinent.”).
Here, Appellant has not established a sufficient nexus between the
claimed invention and the alleged industry praise and commercial success of
the EA Sports and Take Two products discussed in Appellant’s exhibits.
Appellant contends that “[a] nexus between the claims of the claimed
invention and the secondary considerations based on [EA Sports’] NBA
Live 09, [EA Sports’] [A]didas Live Season, and [Take Two’s] NBA 2K9 is
presumed because these products are covered by the claimed invention.”
Appeal Br. 51. According to Appellant, “[t]he Dynamic DNA and Living
Rosters features are directed to the exact same concept as the inventions
presently claimed.” Id. at 52. However, Appellant has not adequately
explained how the EA Sports and Take Two video games that implement
these features are coextensive with the scope of claim 1. The Dynamic
DNA and Living Rosters features that are allegedly “the exact same” as the
updating feature of the claimed invention (id.) are merely components of
commercially successful video game products (i.e., EA Sports’ NBA Live
and Take Two’s NBA 2K9 video games). Appellant has not persuasively
shown that the alleged praise and commercial success of the EA Sports and
Take Two video games is attributable to the features recited in claim 1.
Thus, Appellant has not established a sufficient nexus between the praise
and commercial success of the EA Sports and Take Two products and the
claimed game medium, such that the proffered evidence does not
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demonstrate that the praise and commercial success is sufficiently tied to the
claimed subject matter.
Moreover, the alleged “novel” feature of the claimed game medium is
updating video game character performance attributes using a series of
updated video game character performance parameters that are based on
real-life athlete performance in recent sporting events during a sports season,
to which Appellant attributes the praise and commercial success of the EA
Sports and Take Two products. See, e.g., Appeal Br. 40–42, 48, 52. Even
assuming that Appellant’s proffered evidence was attributable to this feature,
the evidence of record shows that this feature already existed in the prior art,
as discussed above with respect to MaddenPlayoff, MaddenSuperBowl, and
MaddenDownloads. In other words, Appellant’s evidence of praise and
commercial success, insofar as it concerns updating character performance
parameters in sports video games based on real-life athlete performance
during a sports season, must fail because it is “focused on conventional
features in the prior art.” ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1220
(Fed. Cir. 2016).
With respect to Appellant’s assertion of commercial success (see
Appeal Br. 50–53), Appellant has not provided any objective evidence to
support its position. As noted by the court in In re Huang, 100 F.3d 135,
139 (Fed. Cir. 1996), “the PTO lacks the means or resources to gather
evidence which supports or refutes the applicant’s assertion that the sales
constitute commercial success.” Thus, the court noted that the PTO must
rely upon the applicant to provide hard evidence of commercial success. Id.
at 140. Here, Appellant’s exhibits provide subjective evidence in the form
of user feedback, reviews, and ratings, but do not provide any hard evidence
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or objective data (e.g., market share) to support Appellant’s assertion of
commercial success. Moreover, Appellant has not demonstrated that any
evidence provided by the exhibits relates to commercial success of
Appellant’s product; rather, it appears that any such commercial success is
related to EA Sports’s and Take Two’s products. See Appeal Br. 50–53. On
the basis of the limited information of commercial success provided in the
exhibits, we find that the Appellant has failed to prove meaningful
commercial success of the claimed invention.
Appellant argues that “the claimed invention has . . . fulfilled a long
felt but unsolved need in the sports video game commercial market.”
Appeal Br. 39 (emphasis omitted). Appellant asserts that “the Dynamic
DNA feature by EA Sports and the Living Roster feature by Take Two have
found sweeping success and addressed a long felt need in the industry for
sports video games to more closely simulate the real-life attributes of
athletes during a sports season.” Id. at 50 (emphasis omitted).
As explained by our reviewing court:
Long-felt need is closely related to the failure of others.
Evidence is particularly probative of obviousness when it
demonstrates both that a demand existed for the patented
invention, and that others tried but failed to satisfy that demand.
See, e.g., In re Piasecki, 745 F.2d 1468, 1475 (Fed.Cir.1984)
(finding nonobviousness where the evidence demonstrated a
failure of others to provide a feasible solution to a longstanding
problem); Alco Standard Corp. v. Tenn. Valley Auth., 808 F.2d
1490, 1500 (Fed.Cir.1986) (affirming a nonobviousness finding
where the evidence showed that the relevant industry had
searched for more than a decade for a reliable solution and that
major manufacturers in the industry had tried but failed to
develop such a solution).
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In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent
Litig., 676 F.3d 1063, 1082–83 (Fed. Cir. 2012); but see In re Depomed,
Inc., 680 F. App’x. 947, 952–53 (Fed. Cir. 2017) (non-precedential) (stating,
“While ‘[e]vidence is particularly probative of obviousness when it
demonstrates both that a demand existed for the patented invention, and that
others tried but failed to satisfy that demand,’ a patent owner may establish a
long-felt but unmet need without presenting evidence of failure of others.”)
(quoting In re Cyclobenzaprine, 676 F.3d at 1082).
Here, Appellant fails to establish a long-felt need in the industry.
Establishing long-felt need requires objective evidence that an art-
recognized problem existed in the art for a long period of time without
solution. In particular, the evidence must show that the need was a
persistent one that was recognized by those of ordinary skill in the art. In re
Gershon, 372 F.2d 535, 538 (CCPA 1967). Appellant’s proffered evidence
does not show that the purported “need in the industry for sports video
games to more closely simulate the real-life attributes of athletes during a
sports season” (Appeal Br. 50) was a persistent one or that others tried to
meet the need and failed. “[L]ong-felt need is analyzed as of the date of an
articulated identified problem and evidence of efforts to solve that problem.”
Texas Instruments, Inc. v. U.S. Int’l Trade Comm’n, 988 F.2d 1165, 1178
(Fed. Cir. 1993). As such, we find that Appellant has failed to set forth
sufficient evidence to establish a long-felt need in the industry.
Appellant argues that “the invention as recited in the claims has been
copied by . . . large corporations with ample resources in the video game
industry.” Appeal Br. 39 (emphasis omitted); see also id. at 48–50 (citing
Exhibits U, V). Appellant asserts that it “filed this patent application more
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than five years before EA Sports announced the Dynamic DNA feature and
over five years before Take Two announced the Living Roster feature.” Id.
at 48. Appellant asserts that “EA Sports and Take Two have argued over
who came up with the novel feature first.” Id. at 49. According to
Appellant, “[w]hether EA Sports copied Take Two or vice-versa, it is clear
that those skilled in the art believe the feature was copied by one of them.”
Id. (emphasis omitted).
“[C]opying requires evidence of efforts to replicate a specific product,
which may be demonstrated through . . . access to the patented product
combined with substantial similarity to the patented product.” Wyers v.
Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010). “[A] showing of
copying is only equivocal evidence of non-obviousness in the absence of
more compelling objective indicia of other secondary considerations.”
Ecolochem, Inc. v. Southern Cal. Edison Co., 227 F.3d 1361 (Fed. Cir.
2000).
Here, Appellant’s allegation that “the invention as recited in the
claims has been copied” (Appeal Br. 39) lacks adequate evidentiary support.
It is unclear from the evidence whether EA Sports or Take Two actually
copied Appellant’s claimed invention, or whether the updating features of
EA Sports’s and Take Two’s video game products were a result of the
companies’ own efforts developing the video games. Appellant has not
pointed to any evidence showing that EA Sports or Take Two copied
Appellant’s invention after expending great effort to develop their own
solutions. See Pentec, Inc. v. Graphic Cntrls. Corp., 776 F.2d 309, 317
(Fed. Cir. 1985) (giving little weight to a copying argument where the
alleged copy is not identical to the claimed product, and the alleged copier
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has not expended great effort to develop its own solution). That the EA
Sports and Take Two video games allegedly include features that are
“covered by the claimed invention” (id. at 51) is not persuasive evidence of
copying. Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325
(“Not every competing product that arguably falls within the scope of a
patent is evidence of copying. Otherwise every infringement suit would
automatically confirm the nonobviousness of the patent.”). Even assuming,
arguendo, that one of EA Sports and Take Two copied the other’s product,
we discern no evidence that a specific product of Appellant’s was copied.
See id. (“[C]opying requires the replication of a specific product.”).
Having considered all the evidence presented by Appellant against
obviousness and weighing all the evidence, both of obviousness and of
nonobviousness, it is our conclusion that the evidence of obviousness
outweighs the evidence of nonobviousness of the subject matter of claim 1.
See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (agreeing that “given the strength of the prima facie obviousness
showing, the evidence on secondary considerations was inadequate to
overcome a final conclusion that [the claimed subject matter] would have
been obvious”). Accordingly, we sustain the rejection of claim 1, and claims
2, 5–8, 11, 27, and 29–38 falling therewith, as unpatentable over Madden03,
Madden00, MaddenSuperBowl, MaddenPlayoff, MaddenDownloads, and
Swanberg.

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Rejection IV – Obviousness based on Madden03, Madden00,
MaddenSuperBowl, MaddenPlayoff, MaddenDownloads, Swanberg,
and FIFA
In contesting the rejection of claim 4, Appellant relies on the
aforementioned arguments asserted against the rejection of independent
claim 1. See Appeal Br. 9 (stating that, “[f]or purposes of this appeal only
claim 4 may stand or fall with respect to independent claim 1 and is
therefore not separately discussed”). For the reasons discussed above,
Appellant’s arguments fail to apprise us of error in the rejection of claim 1
and, likewise, fail to apprise us of error in the rejection of claim 4, which we
sustain.

Rejection V – Obviousness based on Madden03 and Swanberg
The Examiner finds that Madden03 discloses most of the limitations
of independent claim 39, including, in relevant part,
means for directly contacting a data server through only a
modem and the Internet to download video game character
parameters of the video game league over the Internet during a
single real-life sports season of the real-life sports league
(pps. 15–17 discloses online connection and updates to current
NFL roster using a modem to connect to the Internet).
Final Act. 18 (boldface omitted). The Examiner finds that “Madden03 fails
to explicitly disclose download up-to-the-minute video game character
performance parameters.” Id. at 19 (emphasis omitted). However, the
Examiner finds that “Swanberg teaches download[ing] up-to-the-minute
video game character performance parameters (¶96 teaches the latest live
players’ statistics are downloaded).” Id. The Examiner determines that it
would have been obvious to combine the teachings of Madden03 and
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Swanberg “in order to continually store game downloads on the gaming
console and assist in providing the modified game play.” Id.
Appellant initially relies on the same arguments presented in
contesting Rejection III. See Appeal Br. 53–54 (asserting that “Swanberg
teaches away from the Applicant’s claimed invention, Swanberg is non-
analogous art, and one of ordinary skill in the art would not modify the
Madden 2000 references in view of [Swanberg] to obtain the claimed
invention with a reasonable expectation of success” (italics omitted)). For
the same reasons discussed above, we are not persuaded by these arguments.
Appellant argues that the Examiner’s rejection of claim 39 is in error
because “claim 39 includes a means-plus-function limitation and the proper
analysis has not been made of record.” Appeal Br. 54. Appellant points to
Figure 3 of the Drawings and asserts that “the Video Game Machine is
directly connected to the data server (82) through only a modem (107) and
the network (85) including the Internet. This means is devoid of user
intervention or user operation for the up-to-the-minute video game character
performance parameters of the video game league.” Id. at 56. According to
Appellant, “[n]either Madden03 nor Swanberg teach[es] or suggest[s] such
claimed means as shown and described in the specification and drawings nor
would these references be able to accomplish such function as they require
user intervention to obtain such updates.” Id. (italics omitted). We are not
persuaded by this argument.
First, Appellant’s argument is not commensurate with the scope of
claim 39. As stated by our reviewing court in In re Hiniker Co., 150 F.3d
1362, 1369 (Fed. Cir. 1998), “the name of the game is the claim.” It is well
established that limitations not appearing in the claim cannot be relied upon
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for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Here,
claim 39 recites, in relevant part, “means for directly contacting a data server
through only a modem and the Internet to download up-to-the-minute video
game character performance parameters of the video game league over the
Internet during a single real-life sports season of the real-life sports league.”
Id. at 68 (Claims App.). Appellant points to Figures 1–6 of the Drawings
and paragraph 38 of the Specification (id. at 55–56), but does not identify
any disclosure to support an interpretation of the claim limitation as
precluding user intervention in the update process.
Moreover, we are unpersuaded by Appellant’s argument that
Madden03 and Swanberg would be unable to perform the function of
directly contacting a server to download video game character performance
parameters through only a modem and the internet. See Appeal Br. 56. The
Examiner responds in the Answer that
Madden03 (see pps. 2 and 3 disclose Madden game disc), and
Swanberg (see ¶[5, 39, and 50] discloses CDROM) disclose[] a
game media where upon being read by a computing device such
as a game console/machine is capable of modification as taught
by downloadable data of MaddenSuperBowl, MaddenPlayoff,
MaddenDownloads, and Swanberg (see ¶[30, 32, 40, and 95]).
In regards to the “download up-to-the-minute” limitation the
combination of Madden references and Swanberg can receive
downloads as soon as new data is made available for
downloading to a game console/machine of Madden or
Swanberg.
Ans. 32. In this regard, Appellant does not persuasively refute the
Examiner’s position. In particular, Appellant does not proffer any evidence
or persuasive technical reasoning to support the assertion that the means
identified by the Examiner in Madden03 and Swanberg would be incapable
of performing the claimed function.
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For the above reasons, Appellant does not apprise us of error in the
Examiner’s determination that the subject matter of claim 39 would have
been obvious. Accordingly, we sustain the rejection of claim 39 as
unpatentable over Madden03 and Swanberg.
CONCLUSION
In summary:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
11, 35, 38 112 Indefiniteness 11, 35, 38
1, 2, 4–8,
11, 27,
29–39
101 Eligibility 1, 2, 4–8,
11, 27,
29–39

1, 2, 5–8,
11, 27,
29–38
103(a) Madden03, Madden00,
MaddenSuperBowl,
MaddenPlayoff,
MaddenDownloads,
Swanberg
1, 2, 5–8,
11, 27,
29–38

4 103(a) Madden03, Madden00,
MaddenSuperBowl,
MaddenPlayoff,
MaddenDownloads,
Swanberg, FIFA
4
39 103(a) Madden03, Swanberg 39
Overall Outcome 1, 2, 4–8,
11, 27,
29–39

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED