Ex Parte Sloan et al

Patent Trial and Appeal Board

Dec 20, 2016

13528275 (P.T.A.B. Dec. 20, 2016)

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.
13/528,275 06/20/2012 J. Nathaniel SLOAN 40189/03501(12DIS072MEDIA 1050
94470 7590 12/20/2016
DISNEY ENTERPRISES, INC.
c/o Fay Kaplun & Marcin, LLP
150 Broadway
Suite 702
New York, NY 10038
EXAMINER
LIM, SENG HENG
ART UNIT PAPER NUMBER
3717
MAIL DATE DELIVERY MODE
12/20/2016 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 J. NATHANIEL SLOAN and DAVID MICHAEL FISHEL
Appeal 2014-009817
Application 13/528,2751
Technology Center 3700
Before ANNETTE R. REIMERS, JILL D. HILL, and
JEREMY M. PLENZLER, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
Final Decision rejecting claims 1—20 under 35 U.S.C. § 102(b) as being
anticipated by Kasten (US 2010/0093415 Al, pub. Apr. 15, 2010). We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION in
accordance with 37 C.F.R. § 41.50(b).
1 Appellants identify Disney Enterprises, Inc. as the real party-in-interest.
Appeal Br. 2.
Appeal 2014-009817
Application 13/528,275
CLAIMED SUBJECT MATTER
Claims 1,11, and 20 are independent, with claims 2—10 and 12—19
depending from claim 1 or 11. Claims 1,11, and 20 are illustrative of the
claims on appeal, and are reproduced below:
I. A method for generating a fantasy sports recommendation,
comprising:
receiving, by a processor, a plurality of ranking values
associated with a sport player, each of the ranking values being
generated from a respective source;
assigning, by the processor, a weight value to each of the
ranking values, the weight value being associated with the
respective source;
generating, by the processor, a recommendation value for the
sport player as a function of the ranking values and the
corresponding weight values;
receiving, by the processor, a selection value for the sport
player; and
determining, by the processor, a further weight value for each
of the sources as a function of the selection value, the
recommendation value, and the weight value for the
corresponding source.
II. A device, comprising:
a communication arrangement configured to communicate
via a communication network;
a memory arrangement; and
a processor for a fantasy sports application,
wherein the processor receives a plurality of ranking values
associated with a sport player, each of the ranking values being
generated from a respective source;
wherein the processor assigns a weight value to each of the
ranking values, the weight value being associated with the
respective source;
2
Appeal 2014-009817
Application 13/528,275
wherein the processor generates a recommendation value for
the sport player as a function of the ranking values and the
corresponding weight values;
wherein the processor receives a selection value for the sport
player; and
wherein the processor determines a further weight value for
each of the sources as a function of the selection value, the
recommendation value, and the weight value for the
corresponding source.
20. A non-transitory computer readable storage medium
including a set of instructions executable by a processor, wherein
when executed the set of instructions cause the processor to
perform operations, comprising:
receiving a plurality of ranking values associated with a sport
player, each of the ranking values being generated from a
respective source;
assigning a weight value to each of the ranking values, the
weight value being associated with the respective source;
generating a recommendation value for the sport player as a
function of the ranking values and the corresponding weight
values;
receiving a selection value for the sport player; and
determining a further weight value for each of the sources as
a function of the selection value, the recommendation value, and
the weight value for the corresponding source.
OPINION
Claim Construction
Initially, we note that there is significant disagreement between
Appellants and the Examiner as to what is required by the claims.
Accordingly, we begin by construing the claims.
3
Appeal 2014-009817
Application 13/528,275
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. ofSci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Applying that standard,
we generally interpret the claim terms of an application according to their
ordinary and customary meaning in the context of the written description.
See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An
inventor is entitled to be his or her own lexicographer of claim terms by
providing a definition of the term in the specification with reasonable clarity,
deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994). In the absence of such a definition, however, limitations are not to be
read from the specification into the claims. In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993).
Each of the claims recite “ranking values” and Appellants contend
that “ranking values” should be construed as “values describing the value of
one sport player with respect to other players within the same pool.” Reply
Br. 4. The Examiner disagrees, asserting that “the term ‘ranking value’ is
broad and . . . the Examiner is reasonably interpreting ‘ranking value’ to
mean a value used to determine ranks” and, “[tjherefore, the term ‘the
plurality of ranking values associated with the sport player’ are interpreted to
be the plurality of parameter values used for ranking the sport player.” Ans.
2.
The Specification does not define specifically the term “ranking
value” (i.e., no lexicographical definition). A dictionary definition of “rank”
is “[a] relative position or degree of value in a graded group.” American
Heritage® Dictionary of the English Language (2011)
4
Appeal 2014-009817
Application 13/528,275
(http:// search, credoreference.com/ content/entry/hmdictenglang/rank_l / 0)
(last accessed December 15, 2016). Consistent with that meaning, the
Specification explains that “ranking values” are used to determine when to
select a player in a draft (i.e., the relative value of one player as compared to
others). See, e.g., Spec. 134. Similar to the construction proposed by
Appellants, we determine that a “ranking value” is a numerical indicator of
one player’s value relative to other players, and is not simply the parameters
used to determine that relative value.
Anticipation by Kasten
Our construction of “ranking values” above is dispositive of the issues
on appeal. As noted above, the Examiner improperly considers
“parameters” used to determine a “ranking value” as corresponding to the
recited “ranking values.” Final Act. 3; Ans. 2. For example, the Examiner
finds that the parameters in Kasten used to determine player rankings are
“ranking values.” Final Act. 3; Ans. 3. Appellants dispute that finding.
Appeal Br. 4—6; Reply Br. 2-A.
In view of our construction above (i.e., “ranking values” require a
numerical indicator of one player’s value relative to other players, and is not
simply the parameters used to determine that relative value), we agree that
the Examiner erred in finding that Kasten’s parameters correspond to
“ranking values.”
Accordingly, we do not sustain the Examiner’s rejection of claims 1—
20.
5
Appeal 2014-009817
Application 13/528,275
New Ground of Rejection — Non-Statutory Subject Matter
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
1—20 under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter.
Under 35 U.S.C. § 101, we must first identify whether an invention
fits within one of the four statutorily provided categories of patent-
eligibility: “processes, machines, manufactures, and compositions of
matter.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 713—714 (Fed. Cir.
2014). Here, the claims each fall within one of those categories. Section
101, however, “contains an important implicit exception [to subject matter
eligibility]: Laws of nature, natural phenomena, and abstract ideas are not
patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l., 134 S. Ct. 2347, 2354
(2014) (citing Assoc, for Molecular Pathology v. Myriad Genetics, Inc., 133
S. Ct. 2107, 2116 (2013) (internal quotation marks and brackets omitted)).
In Alice, the Supreme Court reiterated the framework set forth previously in
Mayo Collaborative Services v. Prometheus Laboratories, 132 S. Ct. 1289,
1293 (2012) “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in
the analysis is to “determine whether the claims at issue are directed to one
of those patent-ineligible concepts.” Id.
We determine that the claims are directed to an abstract idea. The
claims are directed to collecting and analyzing data, which, without more,
has long been held patent-ineligible. See Parker v. Flook, 98 S. Ct. 2522,
2528 (1978) (internal quotations omitted) (“if a claim is directed essentially
to a method of calculating, using a mathematical formula, even if the
6
Appeal 2014-009817
Application 13/528,275
solution is for a specific purpose, the claimed method is nonstatutory.”).
Claim 1, for example, recites a method of “receiving . . . ranking values,”
“assigning . . . weight value[s],” “generating ... a recommendation value,”
“receiving ... a selection value,” and “determining ... a further weight
value.” Claims 11 and 20 include essentially the same limitations, packaged
as a “device” and a “non-transitory computer readable storage medium,”
respectively.
The claims before us are similar to those recently addressed by the
Federal Circuit in Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350
(Fed. Cir. 2016), which the Court characterized as “collecting information,
analyzing it, and displaying certain results of the collection and analysis.”
Id. at 1353. In Electric Power, the Court noted that it is unnecessary to
“define the outer limits of ‘abstract idea,’ or at this stage exclude the
possibility that any particular inventive means are to be found somewhere in
the claims, to conclude that these claims focus on an abstract idea—and
hence require stage-two analysis under § 101.” Id. The Court reiterated that
“collecting information, including when limited to particular content (which
does not change its character as information), [i]s within the realm of
abstract ideas” and “analyzing information by steps people go through in
their minds, or by mathematical algorithms, without more, a[re] essentially
mental processes within the abstract-idea category.” Id. at 1353—54.
The abstract idea addressed by the claims before us can be
characterized as collecting data and manipulating that data based on past
user preference (effectively applying a weighted average when combining
collected data). Regardless of the exact characterization of the abstract idea
at issue in the pending claims, however, these claims, like those in Electric
7
Appeal 2014-009817
Application 13/528,275
Power, are directed to collecting information and analyzing that information
by mathematical algorithms, which is clearly within the realm of abstract
ideas.
The claims at issue are also strikingly similar to those found ineligible
in Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344
(Fed. Cir. 2014). There, the Court characterized the claims at issue as “a
process of taking two data sets and combining them into a single data set”
where “[t]he two data sets are generated by taking existing information . . .
and organizing this information into a new form.” Digitech, 758 F.3d at
1351. There, the Court noted that “[wjithout additional limitations, a
process that employs mathematical algorithms to manipulate existing
information to generate additional information is not patent eligible.” Id.
Similar to Digitech, the claims at issue in the pending application simply
take existing information (ranking values and selection values) and combine
that information via mathematical algorithms to create additional
information (weight values and recommendation values).
“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].’” Alice, 134 S. Ct. at 2357 (quoting Mayo,
132 S. Ct. at 1297). “This requires more than simply stating an abstract idea
while adding the words ‘apply it’ or ‘apply it with a computer.’ Similarly,
the prohibition on patenting an ineligible concept cannot be circumvented by
limiting the use of an ineligible concept to a particular technological
environment.” Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306,
1332 (Fed. Cir. 2015) (citations omitted). Moreover, the mere recitation of
generic computer components performing conventional functions is not
8
Appeal 2014-009817
Application 13/528,275
enough. See Alice, 134 S. Ct. at 2360 (“Nearly every computer will include
a ‘communications controller’ and ‘data storage unit’ capable of performing
the basic calculation, storage, and transmission functions required by the
method claims.”).
Ultimately, the claims before us are merely an abstract idea applied by
a generic processor (i.e., they state the abstract idea and add “apply it with a
computer”). The Specification makes clear that the invention is essentially
automating, via a conventional computer, what was previously done
manually. See Spec. 118 (“When using systems implementing the prior art
methods . . . fantasy team owners may review player rankings from various
sources ... or create their own rankings based upon a synthesis thereof, to
assist them in their decision making,” but these “[pjrior art systems ... do
not automatically or adaptively synthesize various weighted ranking sources
into a player recommendation.”). Any potentially technical aspects of the
claims are well-known generic computer components performing
conventional functions (e.g., a processor receiving and analyzing data). This
is similar to the situation in Electric Power, where the Court noted that
“[njothing in the claims, understood in light of the specification, requires
anything other than off-the-shelf, conventional computer, network, and
display technology for gathering, sending, and presenting the desired
information” and reiterated that “such invocations of computers and
networks that are not even arguably inventive are ‘insufficient to pass the
test of an inventive concept in the application’ of an abstract idea.” Elec.
Power, 830 F.3d at 1355 (internal citations omitted).
Claims 1,11, and 20 recite “a processor” and claim 11 additionally
recites “a communication arrangement” and “a memory arrangement.” The
9
Appeal 2014-009817
Application 13/528,275
Specification makes clear, however, that these components are all
conventional off-the-shelf components. See Spec. 131 (“The user device
130 may include a processor 210, a memory arrangement 220, an input
device 230, a display 240, and a transceiver 250” and that “user device 130
may be any electronic device such as a computer terminal, a laptop, a
personal digital assistant, a tablet, a cellular phone, etc.”). Our review of the
dependent claims reveals nothing that adds an inventive concept. The
claims are essentially directed to calculating new data based on existing
data, with nothing more.
Accordingly, we determine that claims 1—20 are not patent eligible
under 35 U.S.C. § 101.
DECISION
We REVERSE the Examiner’s decision to reject claims 1—20; and
We enter a NEW GROUND OF REJECTION of claims 1-20 on the
basis that these claims are patent-ineligible under 35 U.S.C. § 101.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
10
Appeal 2014-009817
Application 13/528,275
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record . . .
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure §1214.01.
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)(l)(iv).
REVERSED; 37 C.F.R, § 41.50(b)
11