DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claim 19 is objected to because of the following informalities: the preamble of claim 19 states, “The system as claimed in claim 15, wherein the system further performs: performing at least one of”. However, claim 19 should state, “The system as claimed in claim 15, wherein the system further performs, performing at least one of:”, thus making claim 19 consistent with claims 18 and 20, for example.
Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-19 of US Patent No. 11,862,036. Although the claims at issue are not identical, they are not patentably distinct from each other because the inventions are directed to substantially similar subject matter. The subject matter claimed in the instant application is anticipated by the referenced US Patent, as follows: the difference between independent Claim 1 of instant application, 18/534782 and Claim 1 of US Patent No. 11,862,036 are highlighted in the following table.
Claim 1 of 18/534782
Claim 1 of 11,862,036
A method for generating a play, the method comprising:
A method for generating a play, the method comprising:
drawing the play via an electronic forum, the play comprising a plurality of players, the electronic forum comprising a plurality of buttons or drawing markers for defining moves of the plurality of players;
drawing the play via an electronic forum, the play comprising a plurality of players, the electronic forum comprising: a plurality of buttons or drawing markers for defining moves of the plurality of players, and a virtual clipboard, wherein the virtual clipboard comprises one or more preset formations;
enabling a user to apply standard alignments by position using at least one preset formation from among the one or more preset formations comprised in the virtual clipboard;
posting the play to the electronic forum;
posting the play to the electronic forum;
providing access to the play to a user via the electronic forum;
providing access to the play to the user via the electronic forum;
receiving an edit to the play from the user;
receiving an edit to the play from the user;
editing the play; and
editing the play;
providing the edited play.
providing the edited play;
creating a team, the team comprising a plurality of team members;
assigning access rights to the team members;
providing access to the play based on the rights of the team members;
facilitating a common board where the team members can draw plays together; and
modifying the play based on an input from at least one team member who has the access rights.
Furthermore, claims 2-20 of the instant application contain substantially identical claimed subject matter to claims 1-10 and 12-19 of the referenced US Patent.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1-12 and 15-20 is/are directed towards a statutory category they are directed to either a process, machine, manufacture, or composition of matter (Step 1, Yes).
Claim 15 recites, in part, the limitations of […]; and […]: drawing the play […], the play comprising a plurality of players, […] comprising a plurality of buttons or drawing markers for defining moves of the plurality of players; posting the play […]; providing access to the play to a user […]; receiving an edit to the play from the user; editing the play; and providing the edited play. These limitations, individually and in combination, describe or set forth the abstract idea in claim 15 (and similarly in claim 1). The Examiner notes that the specific limitations that describe or set forth the abstract idea in Step 2A Prong 1 can be identified either individually or in combination (see p. 54 of 2019 Revised Patent Subject Matter Eligibility Guidance).
Under the broadest reasonable interpretation, the claims recite limitations that can be practically performed in the human mind or by a human using pen and paper. The Examiner notes that “[c]laims can recite a mental process even if they are claimed as being performed on a computer,” and that “courts have found requiring a generic computer or nominally reciting a generic computer may still recite a mental process even though the claim limitations are not performed entirely in the human mind” (see p. 8 of the October 2019 Update: Subject Matter Eligibility). The Examiner also notes that “both product claims (e.g., computer system, computer-readable medium, etc.) and process claims may recite mental processes” (see p. 8 of the October 2019 Update: Subject Matter Eligibility). The mere nominal recitation of the additional elements identified below do not take the claims out of the mental process grouping. Thus, the claims recite a mental process.
The claims also recite limitations that are considered a fundamental economic principle or practice (e.g., relating to commerce and economy), commercial interactions, business relations, managing personal behavior or relationships or interactions between people. The Examiner notes that certain activity between a person and a computer may fall within the certain methods of organizing human activity grouping (see p. 5 of the October 2019 Update: Subject Matter Eligibility).
Therefore, the claims fall under the following enumerated groupings of abstract ideas: mental processes (e.g., concepts performed in the human mind (including an observation, evaluation, judgment, or opinion)), and/or certain methods of organizing human activity (e.g., fundamental economic principles or practices (including hedging, insurance, mitigating risk), commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations), or managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)) (Step 2A, Prong 1, Yes).
Claim 15 recites the additional element(s) of “A system comprising: a processor; and a memory coupled to the processor, the memory storing instructions which when executed by the processor cause the system to perform a method for managing a play, the method comprising: […] an electronic forum,[…]; […]; […]; […]; […]; and […]. These additional element(s) are recited at a high level of generality, and under the broadest reasonable interpretation are generic processor(s) and/or generic computer component(s) that perform generic computer functions. The generic processor and/or generic computer component limitation(s) are no more than mere instructions to apply the exception using a generic computer component. The additional element(s) are merely used as tools, in their ordinary capacity, to perform the abstract idea. The additional elements amount to adding the words “apply it” with the judicial exception. Merely implementing an abstract idea on generic computers and/or generic computer components does not integrate the judicial exception or amount to significantly more, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer. Using a computer to generate data, compute a result, and return the result to a user amounts to electronic data query and retrieval—some of the most basic functions of a computer. “[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent eligible subject matter" (see pp 10-11 of FairWarning IP, LLC. v. Iatric Systems, Inc. (Fed. Cir. 2016)). The additional elements also amount to generally linking the use of the abstract idea to a particular technological environment or field of use. The type of information being manipulated does not impose meaningful limitations or render the idea less abstract. Further, the courts have found that simply limiting the use of the abstract idea to a particular environment does not integrate the judicial exception into a practical application or add significantly more. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional elements do not amount to a claim that integrates the judicial exception in to a practical application, nor do they amount to a claim that amounts to significantly more than the abstract idea itself. The additional elements amount no more than mere instructions to apply the abstract idea using generic computer components. The additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea (Step 2A Prong 2, No).
Additionally, the specification makes it clear that the system or method for drawing plays can be implemented on a generic computer.
[0077] … It is understood that devices 104 and 108 may not be limited to a desktop computer and a mobile phone, respectively, as shown in the environment 100 and that the users may connect to the network using various devices. Examples of the devices include, but are not limited to, laptops, smartphones, tablets, smart watches, smart televisions, smart devices in homes and/or vehicles, and other such systems having capability to access an electronic forum.
As such, the system or method, for implementing the abstract idea, may require no more than generic, conventional, and well-known computer devices such as a general purpose computer (as evidenced in Para. 77).
In Step 2B, the additional element(s) also do not amount to significantly more for the same reasons set forth with respect to Step 2A Prong 2. The Examiner notes that revised Step 2A overlaps with Step 2B, and thus, many of the considerations need not be reevaluated in Step 2B because the answer will be the same. However, unless an Examiner had previously concluded under revised Step 2A that an additional element was insignificant extra-solution activity, they should reevaluate that conclusion in Step 2B (see 2019 Revised Patent Subject Matter Eligibility Guidance). Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional elements do not amount to a claim that integrates the judicial exception in to a practical application, nor do they amount to a claim that amounts to significantly more than the abstract idea itself. The additional elements amount no more than mere instructions to apply the abstract idea using generic computer components. The additional elements do not integrate the abstract idea into a practical application or amount to significantly more because they do not impose any meaningful limits on practicing the abstract idea (Step 2B, No).
Thus, Claims 1 and 15 are rejected as shown above. Additionally, Claims 2-12 and 16-20 also recite limitations that are similar to the abstract ideas identified with respect to Claim 15 above (i.e., certain methods of organizing human activities and/or mental processes). Claims 2-12 and 16-20 do not recite any additional elements other than those recited in Claim 15. Therefore, for the same reasons set forth with respect to Claim 15, Claims 2-12 and 16-20 also do not integrate the judicial exception into a practical application or amount to significantly more.
Claims 13-14 is/are directed towards a statutory category they are directed to either a process, machine, manufacture, or composition of matter (Step 1, Yes).
Claim 13 recites, in part, the limitations of creating a team, the team comprising a plurality of team members; generating a play, the play comprising a plurality of players, […] comprising a plurality of buttons or drawing markers for defining moves of the plurality of players; sharing the play with the plurality of team members; receiving inputs from at least one team member for editing the play; and editing the play based on the inputs. These limitations, individually and in combination, describe or set forth the abstract idea in claim 13. The Examiner notes that the specific limitations that describe or set forth the abstract idea in Step 2A Prong 1 can be identified either individually or in combination (see p. 54 of 2019 Revised Patent Subject Matter Eligibility Guidance).
Under the broadest reasonable interpretation, the claims recite limitations that can be practically performed in the human mind or by a human using pen and paper. The Examiner notes that “[c]laims can recite a mental process even if they are claimed as being performed on a computer,” and that “courts have found requiring a generic computer or nominally reciting a generic computer may still recite a mental process even though the claim limitations are not performed entirely in the human mind” (see p. 8 of the October 2019 Update: Subject Matter Eligibility). The Examiner also notes that “both product claims (e.g., computer system, computer-readable medium, etc.) and process claims may recite mental processes” (see p. 8 of the October 2019 Update: Subject Matter Eligibility). The mere nominal recitation of the additional elements identified below do not take the claims out of the mental process grouping. Thus, the claims recite a mental process.
The claims also recite limitations that are considered a fundamental economic principle or practice (e.g., relating to commerce and economy), commercial interactions, business relations, managing personal behavior or relationships or interactions between people. The Examiner notes that certain activity between a person and a computer may fall within the certain methods of organizing human activity grouping (see p. 5 of the October 2019 Update: Subject Matter Eligibility).
Therefore, the claims fall under the following enumerated groupings of abstract ideas: mental processes (e.g., concepts performed in the human mind (including an observation, evaluation, judgment, or opinion)), and/or certain methods of organizing human activity (e.g., fundamental economic principles or practices (including hedging, insurance, mitigating risk), commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations), or managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)) (Step 2A, Prong 1, Yes).
Claim 13 recites the additional element(s) of “A method for generating and managing play in an electronic forum, the method comprising: […]; […] the electronic forum,[…]; […]; […]; and […]. These additional element(s) are recited at a high level of generality, and under the broadest reasonable interpretation are generic processor(s) and/or generic computer component(s) that perform generic computer functions. The generic processor and/or generic computer component limitation(s) are no more than mere instructions to apply the exception using a generic computer component. The additional element(s) are merely used as tools, in their ordinary capacity, to perform the abstract idea. The additional elements amount to adding the words “apply it” with the judicial exception. Merely implementing an abstract idea on generic computers and/or generic computer components does not integrate the judicial exception or amount to significantly more, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer. Using a computer to generate data, compute a result, and return the result to a user amounts to electronic data query and retrieval—some of the most basic functions of a computer. “[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent eligible subject matter" (see pp 10-11 of FairWarning IP, LLC. v. Iatric Systems, Inc. (Fed. Cir. 2016)). The additional elements also amount to generally linking the use of the abstract idea to a particular technological environment or field of use. The type of information being manipulated does not impose meaningful limitations or render the idea less abstract. Further, the courts have found that simply limiting the use of the abstract idea to a particular environment does not integrate the judicial exception into a practical application or add significantly more. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional elements do not amount to a claim that integrates the judicial exception in to a practical application, nor do they amount to a claim that amounts to significantly more than the abstract idea itself. The additional elements amount no more than mere instructions to apply the abstract idea using generic computer components. The additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea (Step 2A Prong 2, No).
Additionally, the specification makes it clear that the method for drawing plays can be implemented on a generic computer.
[0077] … It is understood that devices 104 and 108 may not be limited to a desktop computer and a mobile phone, respectively, as shown in the environment 100 and that the users may connect to the network using various devices. Examples of the devices include, but are not limited to, laptops, smartphones, tablets, smart watches, smart televisions, smart devices in homes and/or vehicles, and other such systems having capability to access an electronic forum.
As such, the method, for implementing the abstract idea, may require no more than generic, conventional, and well-known computer devices such as a general purpose computer (as evidenced in Para. 77).
In Step 2B, the additional element(s) also do not amount to significantly more for the same reasons set forth with respect to Step 2A Prong 2. The Examiner notes that revised Step 2A overlaps with Step 2B, and thus, many of the considerations need not be reevaluated in Step 2B because the answer will be the same. However, unless an Examiner had previously concluded under revised Step 2A that an additional element was insignificant extra-solution activity, they should reevaluate that conclusion in Step 2B (see 2019 Revised Patent Subject Matter Eligibility Guidance). Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional elements do not amount to a claim that integrates the judicial exception in to a practical application, nor do they amount to a claim that amounts to significantly more than the abstract idea itself. The additional elements amount no more than mere instructions to apply the abstract idea using generic computer components. The additional elements do not integrate the abstract idea into a practical application or amount to significantly more because they do not impose any meaningful limits on practicing the abstract idea (Step 2B, No).
Thus, Claim 13 are rejected as shown above. Additionally, Claim 14 also recites limitations that are similar to the abstract ideas identified with respect to Claim 13 above (i.e., certain methods of organizing human activities and/or mental processes). Claim 14 does not recite any additional elements other than those recited in Claim 13. Therefore, for the same reasons set forth with respect to Claim 13, Claim 14 also does not integrate the judicial exception into a practical application or amount to significantly more.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by Lynch (US 2008/0288590 A1) (henceforth, “Lynch”).
Regarding claims 1 and 15, Lynch teaches a system and a method for generating a play, comprising:
a processor (e.g., host server 104 including a processor in Para. 19); and
a memory coupled to the processor (e.g., host server 104 including memory which is capable of running a coaching program 122 in Para. 19), the memory storing instructions which when executed by the processor cause the system to perform a method for managing a play, the method comprising:
drawing the play via an electronic forum (e.g., an application program 124 allows users through the interfacing program 114 of the client device 102 to access the coaching program 122 on the host server 104 in Para. 20), the play comprising a plurality of players, the electronic forum comprising a plurality of buttons or drawing markers for defining moves of the plurality of players (e.g., the coaching program 122 displays a sketchpad feature in the form of a web page 136, to each client device 102, where it is displayed on each display 110 and using the input device 112, the session facilitator selects from various buttons # to sketch diagrams that appear on the display 110 in Para. 28);
posting the play to the electronic forum (e.g., storing play diagrams on the host server database in Para. 29);
providing access to the play to a user via the electronic forum (e.g., the player profiles enable each group participant involved in a session to view the coaching program 122 on their display 110 and in this way, the group participant can view a diagram through their own point-of-view in Para. 28);
receiving an edit to the play from the user (e.g., once selected, a group participant can view, edit, or animate the selected diagram in Para. 29);
editing the play (e.g., once selected, a group participant can view, edit, or animate the selected diagram in Para. 29); and
providing the edited play (e.g., Diagrams can be stored on the database 126 to the library for access at a later time by the group participants or others in Para. 29).
Regarding claims 13 and 8, Lynch teaches the method for generating and managing play in an electronic forum substantially as described above including: creating a team, the team comprising a plurality of team members (e.g., the registration data 156 can be used to determine each participants associated team (i.e., a group of players) in Para. 21); and sharing the play with the plurality of team members (e.g., the player profiles enable each group participant involved in a session to view the coaching program 122 and the group participant can view a diagram in Para. 28).
Regarding claims 2 and 16, Lynch teaches enabling at least one of audio or video communication among users via the electronic forum (e.g., host server 104 can facilitate one-way voice communication between one participant, such as the session facilitator, and all the other participants in Para. 30).
Regarding claims 3 and 17, Lynch teaches the drawing comprises using symbolism to define moves of the plurality of players (e.g., the session facilitator can select player icons, such as X's or O's, running and passing lines, or moving ball icons in Para. 27).
Regarding claims 4 and 18, Lynch teaches the drawing defining location of players for a field game (e.g., player icons, such as, X’s and O’s used to identify player locations in football in Para. 27).
Regarding claims 5 and 19, Lynch teaches performing sharing the play (e.g., the player profiles enable each group participant involved in a session to view the coaching program 122 and the group participant can view a diagram in Para. 28).
Regarding claims 6 and 20, Lynch teaches enabling searching of the plurality of players (e.g., the system includes a home page including a menu offering coach/player search 150 in Para. 20).
Regarding claims 7 and 14, Lynch teaches generating playbook from the play and one or more plays, the play and the one or more plays having at least one common characteristic (e.g., diagrams can be stored on the database for access at a later time by the group participants, wherein a coach can create and store a personalized playbook of diagrams (wherein all the plays are created by a specific coach, i.e., a common characteristic) in Para. 29).
Regarding claim 9, Lynch teaches assigning access rights to the team members (e.g., each group of participants designates a session facilitator, wherein the rest of the group participants are participants but not designated as a facilitator in Para. 25); and providing access to the play based on the rights of the team members (e.g., facilitator that is responsible for scheduling and managing a session and the rest of the participants can view and edit diagrams, etc. in Para. 25 and Para. 28).
Regarding claim 10, Lynch teaches assigning an administrator having admin rights to the team (e.g., each group of participants designates a session facilitator in Para. 25).
Regarding claim 11, Lynch teaches the plurality of team members comprise at least one of a member and a leader (e.g., each group of participants designates a session facilitator, wherein the rest of the group participants are participants but not designated as a facilitator in Para. 25).
Regarding claim 12, Lynch teaches the play is accessible when at least one of an administrator or a leader is present in a war room comprising the play (e.g., the client device 102 for the session facilitator displays a facilitator console (i.e., war room) that provides the session facilitator with control and access of all of the coaching program 122 features, wherein the client devices 102 for the other group participants display a participant console (i.e., war room) that provides limited access to the coaching program 122 features so that the participant console is subservient to the facilitator console in Para. 26).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure and is listed on the attached Notice of References Cited.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHASE E LEICHLITER whose telephone number is (571)270-7109. The examiner can normally be reached Monday-Friday (9-5).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Lewis can be reached at (571)272-7673. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHASE E LEICHLITER/Primary Examiner, Art Unit 3715