Ahmnon D. Moskowitz

Patent Trials and Appeals Board

Feb 28, 2020

14467006 - (D) (P.T.A.B. Feb. 28, 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.
14/467,006 08/23/2014 Ahmnon D. MOSKOWITZ 08051-P0003A 3603
136531 7590 02/28/2020
The Roy Gross Law Firm, LLC
50 Washington Street
Suite 737/745
Norwalk, CT 06854
EXAMINER
COBURN, CORBETT B
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
02/28/2020 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AHMNON D. MOSKOWITZ
____________

Appeal 2019-000183
Application 14/467,006
Technology Center 3700
____________

Before STEFAN STAICOVICI, CHARLES N. GREENHUT, and
JEREMY M. PLENZLER, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Non-Final Office Action (dated Feb. 5, 2018, hereinafter
“Non-Final Act.”) rejecting claims 1, 6–11, and 34–40.2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Ahmnon D. Moskowitz, the inventor, is identified as the real
party in interest in Appellant’s Appeal Brief (filed May 31, 2018, hereinafter
“Appeal Br.”). Appeal Br. 2.
2 Claims 2–5 and 12–33 are canceled. See Appeal Br. 16, 17 (Claims App.).
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SUMMARY OF DECISION
We AFFIRM.

INVENTION
Appellant’s invention is directed to “a lottery game in which player
selected numbers and/or symbols based on dates are compared to winning
numbers and symbols based on dates for determining a value payout to the
player.” Spec. para. 2.
Claims 1 and 38 are independent. Claim 1 is illustrative of the
claimed invention and is reproduced below (with reference indicators added
in brackets):
1. A method for playing a lottery game based upon picking and
choosing date indicia variables, the method comprising:
[i] inputting, on a remote bet input terminal, a plurality of date
indicia variables representing days in a calendar year on a calendar
matrix and a bet amount;
[ii] wherein a player selects the plurality of date indicia
variables with each indicia variable representing the specific
day of the calendar year;
[iii] transmitting, from a remote bet input terminal, in
response to the selection of date indicia variables, the plurality
of date indicia variables and the bet amount to a central lottery
computer system;
[iv] generating, using the remote bet input terminal, a
printed ticket by transforming the plurality of date indicia
variables to date indicia on the printed ticket;
[v] receiving, from said central lottery computer system,
a plurality of winning date variables from a parameter with
indicia selected from a group consisting of a single calendar
year, the plurality of winning date variables selected by a
gaming operator, wherein the number of winning date variables
are greater than the number of date indicia values selected by
the player; and
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[vi] comparing, on a central processor, the plurality of
winning date variables against the plurality of date indicia on
the printed ticket, such that if a plurality winning date variables
match date indicia variables on the printed ticket, the central
lottery computer system sends a signal when the lottery ticket is
scanned identifying it as a winner, and
[vii] wherein the payout on the bet input terminal for
matching the date indicia variables on the printed ticket to the
winning date variables on the central lottery computer system
includes a top payout for matching all of the winning date
variables, and a subordinate payout for matching part of the
winning date variables, wherein the amount of the payout is
based on the cumulative probability of the matching of the
winning date variables to the date indicia variables and their
frequency of occurrence.

REJECTION
The Examiner rejects claims 1, 6–11, and 34–40 under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter.

ANALYSIS
Section 101 states, “[w]hoever 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.” 35 U.S.C. § 101. However, the
Supreme Court has “long held that this provision contains an important
implicit exception: [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
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and Alice. See 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.”
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
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))).
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
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monopolize the [abstract idea].’” Id. ((alteration in the original) quoting
Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer
implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention.” Id.
The PTO has published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (hereinafter “2019 Guidance”).3 Under Step 2A of that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing 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, in Step 2B, 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.

3 An update to that guidance, available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf, was provided in October
2019.
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Appellant does not present separate arguments for the patentability of
independent claims 1 and 38. See Appeal Br. 13. Therefore, the following
analysis applies equally to both independent claims 1 and 38.

Step 1 – Statutory Category
We first determine whether independent claims 1 and 38 recite one or
more of the enumerated statutory classes of subject matter, i.e., process,
machine, manufacture, or composition of matter, eligible for patenting under
35 U.S.C. § 101. Here, independent claims 1 and 38 recite a method for
playing a lottery game (i.e., a “process”) and a lottery system for playing a
lottery game (i.e., a “machine”), respectively. See Appeal Br. 15, 17–18
(Claims App.). Thus, like Appellant, we find that independent claims 1 and
38 recite recognized statutory categories under 35 U.S.C. § 101. See id. at 6.

Step 2A, Prong 1 – Recitation of Judicial Exception
We next look to whether independent claims 1 and 38 recite any
judicial exceptions, including certain groupings of abstract ideas, i.e.,
mathematical concepts, certain methods of organizing human activity, or
mental processes.
In determining that independent claims 1 and 38 constitute a judicial
exception to patent eligibility, the Examiner determines that the claims recite
“a method of determining financial obligations based on probability” that
“can be performed in a human mind with the aid of pen and paper.” Non-
Final Act. 2, 4. The Examiner explains that claims 1 and 38 are similar to
the claims held ineligible in In re Smith, 815 F.3d 816 (Fed. Cir. 2016). Id.
at 2.
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In response, Appellant asserts “that the present claims disclose a novel
and improved method and system for playing a lottery game based upon
picking and choosing date indicia variables,” and, “are not a ‘fundamental
economic practice’, ‘certain method of organizing human activities’ or ‘an
idea of itself’.” Appeal Br. 6, 8. According to Appellant, the recited steps
are similar to those found in Trading Technologies International, Inc. v.
CQC., Inc., 675 F. App’x 1001 (Fed. Cir. 2017), which “solves problems
that arise when a trader attempts to enter an order at a particular price, but
misses the price because the market moved before the order was entered and
executed.” Id. at 8. Appellant contends that similar to claim 1 of Trading
Technologies, instant “[c]laim 1 provides active method steps that address
the problem allowing players to pick numbers based on dates they feel have
significance to them.” Id. at 8–9 (citing Spec. para. 6).
Each of independent claims 1 and 38 involves a computerized lottery
game, i.e., a game of chance, involving a player selecting a specific date in a
calendar year, matching the chosen date to a winning date, and determining
a player payout based on the results of the matching. See Appeal Br. 15, 17–
18 (Claims App.). Thus, claims 1 and 38 recite “[c]ertain methods of
organizing human activity” in terms of “fundamental economic principles or
practices” of exchanging and resolving financial obligations based on
probabilities and “organizing human activity” by “managing personal
behavior or relationships or interactions between people . . . [by] following
rules or instructions,” which are abstract ideas. 2019 Guidance 52.
Therefore, we agree with the Examiner that independent claims 1 and 38
recite “rules to a lottery game,” which use “probability to determine winners
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and losers.” Ans. 5.4,5 (emphasis added). The Examiner is correct that
because “[w]inners are paid money or some other object of value for
winning,” “the method uses probability to determine financial obligations.”
Id. As such, we do not agree with Appellant that independent claims 1 and
38 are similar to the claims in Trading Technologies, where the claimed
graphical user interface imparts a specific functionality to a trading system,
because as the Examiner correctly notes, “[t]he Trading Technologies case is
simply not applicable to Appellant’s claims” that recite a lottery game. Id. at
8.
Rather, the Examiner’s description is consistent with In re Smith, 815
F. 3d 818–19 (holding that the “claimed ‘method of conducting a wagering
game’ is drawn to an abstract idea much like Alice’s method of exchanging
financial obligations and Bilski’s method of hedging risk.”) and In re
Guldenaar, 911 F.3d 1157, 1160 (Fed. Cir. 2018) (approving the Board’s
holding in Smith that “[a] wagering game is, effectively, a method of
exchanging and resolving financial obligations based on probabilities
created during the distribution of the cards” and holding that the claimed
method of playing a dice game by placing wagers on whether certain die
faces will appear face up recites “a method of conducting a wagering game,

4 Examiner’s Answer, dated Aug. 6, 2018.
5 Although we appreciate that independent claim 38 is drawn to a system, as
claims 1 and 38 recite similar limitations, “the basic character of a process
claim drawn to an abstract idea is not changed by claiming only its
performance by computers, or by claiming the process embodied in program
instructions on a computer readable medium.” See CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1375–76 (Fed. Cir. 2011) (citing In re
Abele, 684 F.2d 902 (CCPA 1982).

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with the probabilities based on dice rather than on cards”). Although
Appellant employs a different wagering device, i.e., Appellant’s computer
system, versus Smith’s “playing cards” or Guldenaar’s “dice,” does not alter
or invalidate the Examiner’s analogy. See also Planet Bingo, LLC v. VKGS
LLC, 576 F. App’x 1005, 1008 (Fed. Cir. 2014) (“[T]he claims here recite
methods and systems for ‘managing a game of Bingo.’ . . . This is similar to
the kind of ‘organizing human activity’ at issue in Alice.”).
In addition to reciting a certain method of organizing human activity,
claims 1 and 38 also recite a “mental process” that can be performed
practically in the human mind using pen (or pencil) and paper. In particular,
we note that absent the use of the claimed “bet input terminal” and “lottery
computer,” the Examiner is correct that “the underlying method can be
performed in a human mind using pen and paper,” and, thus, the claims
recite an abstract idea. Ans. 5 (citing CyberSource, 654 F.3d at 1372)
(determining that a claim whose “steps can be performed in the human mind,
or by a human using a pen and paper” is directed to an unpatentable mental
process). This is true even if the claim recites that a generic computer
component performs the acts. See, e.g., Versata Dev. Grp., Inc. v. SAP Am.,
Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined claims
that required the use of a computer and still found that the underlying,
patent-ineligible invention could be performed via pen and paper or in a
person’s mind.”); see also 2019 Guidance 52 n.14 (“If a claim, under its
broadest reasonable interpretation, covers performance in the mind but for
the recitation of generic computer components, then it is still in the mental
processes category unless the claim cannot practically be performed in the
mind.”).
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For example, a player can play a lottery game based upon choosing a
specific date from a calendar year by performing the steps of claims 1 and
38 as follows6: (a) mentally selecting a specific date of the calendar year
(limitation [ii]); (b) manually writing (entering) the chosen date on a form
(limitation [i]); (c) manually giving the completed form to a game operator
(limitation [iii]); (d) manually receiving a printed ticket from the game
operator that shows the chosen date (limitation [iv]); (e) mentally reading the
winning dates (limitation [v]); (f) mentally comparing the winning date to
the chosen date on the printed ticket (limitation [vi]); and (g) mentally
determining the payout based on a pre-determined rule (limitation [vii]).7
As such, we do not agree with Appellant that the steps of claim 1 “cannot be
performed in a human mind with the aid of pen and paper.” Reply Br. 3
(emphasis omitted)8; see also Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1354 (Fed. Cir. 2016) (explaining that the Federal Circuit has
“treated analyzing information by steps people go through in their minds . . .
without more, as essentially mental processes within the abstract-idea
category” and determining that the claims at issue involve such steps). As
such, we have considered each of the specific limitations of independent
claims 1 and 38, and each claim represents mere instructions that players can
perform using their minds or pen and paper to play a lottery game.

6 We note that Appellant’s Specification describes a player selecting a
specific date and a teller (game operator) manually marking and entering the
chosen date (bet), manually generating (drawing) the winning date (bet), and
selecting a payout rule. Spec. paras. 36–38, 43–44.
7 We note claim 38 includes similar limitations and, thus, the system of
claim 39 can perform the recited steps. See also footnote 4.
8 Appellant’s Reply Brief, filed Oct. 6, 2018.
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Appellant does not present any persuasive argument or evidence that the
steps of claims 1 and 38 cannot be performed practically in the human mind
using pen (or pencil) and paper.
Accordingly, for the foregoing reasons, because we determine that
independent claims 1 and 38 recite a certain method of organizing human
activity and a mental process that can be performed practically in the human
mind using pen (or pencil) and paper, we conclude that claims 1 and 38
recite an abstract idea, and, thus, we proceed to Prong 2 of Step 2A.

Step 2A, Prong 2 – Integrated Into a Practical Application
If a claim recites a judicial exception, then, in Prong 2, we determine
whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
See 2019 Guidance 54–55. This evaluation requires an additional element or
a combination of additional elements in the claim to apply, rely on, or use
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. See id. at 54.
Appellant argues that “[t]he claims relate to a technological
improvement in the field of lottery gaming” by “address[ing] the problem
[of] allowing players to pick numbers based on dates they feel have
significance to them.” Appeal Br. 9, 10 (citing Spec. para. 6). According to
Appellant, “[t]he system allows for picking dates in various ways and to
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include various bets, side bets and wagers, so as to reinvigorate the lottery
and gaming industry.” Id. at 10. Appellant further asserts that claims 1 and
38 are patent-eligible under McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299 (Fed. Cir. 2016). Id. at 12.
We are not persuaded by Appellant’s contentions for the following
reasons. In this case, the additional elements beyond the judicial exceptions
identified above are a “remote bet input terminal” including “a user interface
and a processor,” and a “central lottery computer system” including a
“central processor.” See Appeal Br. 15, 18 (Claims App.). Appellant’s
Specification makes clear that these elements are generic computing
components, which do not invoke particular hardware or software and are
described by their function. For example, as the “remote bet input terminal”
has “the ability of sending and receiving data inputs to the central processing
unit,” the recited “user interface” and “processor” of the “bet input terminal”
are merely generic tools that perform the above noted function of
transmitting and receiving data. See Spec. para. 44. In a similar manner,
the “lottery central processor” of the “central lottery computer system” is
described functionally as selecting the “[winning] criteria” and generating
the winning dates (bets). Id. at para. 43. As such, the claims do not apply,
rely on, or use these additionally recited elements in a manner that add
meaningful limits to the recited steps. Instead, the reference to these generic
input terminal and computer components are no more than mere instructions
to apply the recited step by using these components. See MPEP
§ 2106.05(f)(2) (“Use of a computer or other machinery in its ordinary
capacity for . . . tasks (e.g., to receive, store, or transmit data) . . . does not
provide significantly more.”). In other words, although each of claims 1 and
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38 are implemented using a computer and specific computer operations and
structures, these specifics of the claimed invention find direct analogs in a
manual implementation, as discussed supra. See Trading Techs. Int’l, Inc. v.
IBG LLC, 921 F.3d 1084, 1090 (Fed. Cir. 2019) (“This invention makes the
trader faster and more efficient, not the computer. This is not a technical
solution to a technical problem.”).
Furthermore, in regards to the “technological improvement in the field
of lottery gaming” that Appellant alludes to, we agree with the Examiner
that because “the claims address the problem of allowing players to pick
number based on dates,” the alleged improvement “is not a technical
problem.” Ans. 8. At most, claims 1 and 38 improve a player’s lottery
game experience, and, thus, the recited features are not problems that are
unique or limited to computer environments. See Spec. para. 6 (“both
lotteries and their service providers are presently searching for new forms of
gaming.”). Hence, the Examiner is correct that “[t]he improvement is an
improvement to an abstract idea” and “as the courts have said on a number
of occasions, ‘a new abstract idea is still an abstract idea.’” Ans. 9 (citing
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) and Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1345 (Fed.
Cir. 2018)), 10; see also SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161,
1163 (Fed. Cir. 2018) (“No matter how much of an advance in the finance
field the claims recite, the advance lies entirely in the realm of abstract ideas,
with no plausibly alleged innovation in the non-abstract application realm.
An advance of than nature is ineligible for patenting.”). Therefore, the
Examiner is correct that because “[t]he ‘improvement’ . . . is not to the
technology of lotteries, but to the game itself,” “[n]o computer or system
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runs faster, better, more securely or with greater ease of use because of
Appellant’s invention.” Ans. 8–9.
We also do not agree with Appellant’s reliance on McRO. See
Appeal Br. 12. In contrast to McRO, Appellant does not identify specific
rules that act in the same way as the specific rules enabling the computer in
McRO to generate the result of a sequence of animated characters. McRO,
837 F.3d at 1313–16. In other words, we agree with the Examiner that here,
we have none of the claimed specificity of technological improvement
the Federal Circuit found present in the invention of McRO. See Ans. 9.
As such, for the foregoing reasons, the additional elements discussed
supra use the ordinary capabilities of a computer to automate what can be
done by a lottery game player and game operator. This is not enough to
integrate the underlying abstract idea into a practical application, as “relying
on a computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible.” OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015). In other words,
the recited claims merely use computers in a routine fashion to implement
the abstract process. See Smart Sys. Innovations, LLC v. Chicago Transit
Authority, 873 F.3d 1364, 1372–73 (Fed. Cir. 2017)) (“The claims are not
directed to a combined order of specific rules that improve any technological
process, but rather invoke computers in the collection and arrangement of
data. Claims with such character do not escape the abstract idea exception
under Alice step one.”).
Accordingly, for the foregoing reasons, we determine that the
recited “additional element[s] merely recite[] the words ‘apply it (or an
equivalent) with the judicial exception, or merely includes instructions to
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implement an abstract idea on a computer, or merely uses a computer as a
tool to perform an abstract idea.” 2019 Guidance 55. Therefore,
Appellant’s claims 1 and 38:
(1) do not improve the functioning of a computer or other
technology;
(2) are not applied with any particular machine;
(3) do not affect a transformation of a particular article to
a different state;
(4) do not add more than insignificant extra-solution
activity; and
(5) are not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment. See MPEP § 2106.05(a)–(c), (f),
(g).
In conclusion, we are not persuaded of error in the Examiner’s
determination that claims 1 and 38 are directed to an abstract idea, and
we find that the claimed additional elements do not integrate the abstract
idea into a practical application.

Step 2B – Well-Understood, Routine, Conventional Activity
Having determined that claims 1 and 38 recite a judicial exception,
and do not integrate that exception into a practical application, under Step 2B
we consider whether the claims add a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional” in the field.
See 2019 Guidance 56.
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The Examiner finds that “[t]he claim(s) does/do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because the recited lottery terminal and central lottery computer
are merely generic computers performing well-understood, routine and
conventional data processing functions.” Non-Final Act. 2.
Appellant argues that claims 1 and 38 constitute “a technological
improvement in the field of lottery gaming” because “a printed ticket and a
remote bet input terminal is absolutely necessary for this invention to
function,” and, thus, “is ‘significantly more’ than any abstract idea.” Appeal
Br. 12–13. According to Appellant, the limitations of “inputting,” as per
limitation [i], and “generating,” as per limitation [iv], are “wholly
unconventional.” Id. at 11; Reply Br. 3. Appellant takes the position that
the steps of generating a printed ticket, comparing the player’s selected date
(bet) to the winning date, and sending a signal indicating that the ticket is a
winning ticket are transformative steps that are significantly more than an
abstract idea. See Reply Br. 4. In particular, Appellant asserts “that [c]laims
1 and 38 are not ‘well known’ as no prior art has been identified which
discloses or suggest the claimed method and system.” Appeal Br. 6, 11, 14;
Reply Br. 2. In addition, Appellant asserts that claims 1 and 38 are patent-
eligible under BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC,
827 F.3d 1341 (Fed. Cir. 2016). Appeal Br. 11–12.
We are not persuaded that the Examiner erred in determining that the
elements of claims 1 and 38, considered both individually and as an ordered
combination, do not amount to significantly more than the abstract idea
itself. Ans. 8. As discussed supra, the recited “remote bet input terminal”
including “a user interface and a processor,” and “central lottery computer
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system” including a “central processor,” are invoked as conventional tools.
Apart from being used to perform the recited steps, these generic
components only serve to perform well-understood functions (e.g.,
receiving, storing, analyzing, and outputting data), as per limitations [i]
(“inputting”), [iii] (“transmitting”), [v] (“receiving”), and [vi] (“comparing”
and sending a signal indicative of a winning ticket). See FairWarning IP,
LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (“[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.”). As such, because Appellant’s arguments do not establish that the
claimed invention contains an arrangement of non-conventional elements
that exist solely in a technical/computer field and solve a specific
computer/technological problem, such as BASCOM’s filtering of Internet
content, we are not persuaded by Appellant’s reliance on BASCOM. See
Appeal Br. 11–12.
We are also not persuaded by Appellant’s contentions because the
“technological improvement in the field of lottery gaming” that Appellant
alludes to, namely, limitations [i] and [iv] of claim 1, in fact, recite a result
without specifying a way of achieving the result. See SAP Am., 898 F.3d at
1167 (Eligible “claims . . . transform[ed] a claim from one claiming only a
result to one claiming a way of achieving it.”). Here, we agree with the
Examiner that “[i]nputting lottery numbers into a terminal (which is a
generic computer) is not unconventional. Neither is printing a lottery ticket,”
as such steps “are performed in stores and gas stations all over the country
every day and have been for decades.” Ans. 8–9 (emphasis added).
Moreover, the steps of “inputting,” “printing,” and “send[ing] a signal . . .
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identifying [the lottery ticket] as a winner” constitute extra-solution activity,
which is insufficient to transform the claimed abstract idea into patent-
eligible subject matter because it fails to impose meaningful limitations on
the application of the abstract idea recited in the claims. See 2019 Guidance
55, n.31.
Furthermore, even though the Examiner has not identified prior art
that discloses or suggests Appellant’s claimed invention, an abstract idea
does not transform into an eligible inventive concept just because the
Examiner has not found prior art that discloses or suggests it. Indeed, “[t]he
‘novelty’ of any element or steps in a process, or even of the process itself, is
of no relevance in determining whether the subject matter of a claim falls
within the § 101 categories of possibly patentable subject matter.” Diehr,
450 U.S. at 188–89. A novel and non-obvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90–91.
Lastly, we are not persuaded by Appellant’s argument that “the
Examiner has not indicated how [the recited] bet input terminal and central
lottery computer are generic computers performing well-understood routine
and conventional data processing functions.” Appeal Br. 13. “Relying on
the specification alone may be appropriate where, as in Mayo, the
specification admits as much.” Berkheimer v. HP Inc., 890 F.3d 1369, 1371
(Fed. Cir. 2018). Here, as discussed supra, Appellant’s Specification makes
clear that the recited “remote bet input terminal” including “a user interface
and a processor,” and “central lottery computer system” including a “central
processor,” are generic computing components, which do not invoke
particular hardware or software and are merely described by well-understood
functions (e.g., receiving, storing, analyzing, and outputting data).
Appeal 2019-000183
Application 14/467,006

19

Appellant does not show, with persuasive evidence, that these elements are
more than generic components that are used as tools to perform the abstract
ideas.
Accordingly, claims 1 and 38 fail to add a specific limitation beyond
the judicial exception that is not “well-understood, routine, conventional” in
the field, and, thus, fail to indicate the presence of an inventive concept.
Therefore, we conclude that none of the limitations of claims 1 and 38,
viewed “both individually and ‘as an ordered combination,’” amount to
significantly more than the judicial exception in order to sufficiently
transform the nature of the claims into patent-eligible subject matter. See
Alice, 573 U.S. at 221.
In conclusion, for the foregoing reasons, we sustain the rejection of
claims 1 and 38 under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter.
As Appellant does not separately argue dependent claims 6–11, 34–
37, 39, and 40, for the same reasons discussed above, we also sustain the
rejection of these claims as being directed to patent-ineligible subject matter.
See Appeal Br. 5–14.

DECISION SUMMARY:
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 6–11,
34–40
101 Eligibility 1, 6–11, 34–40

Appeal 2019-000183
Application 14/467,006

20

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