Bally Gaming, Inc.

Patent Trials and Appeals Board

Oct 22, 2020

14496977 - (D) (P.T.A.B. Oct. 22, 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.
14/496,977 09/25/2014 Ryan Masao Yee 3286-12555(PA4747.ap.US) 8108
66137 7590 10/22/2020
TRASKBRITT, P.C. /Bally Gaming, Inc.
PO Box 2550
Salt Lake City, UT 84110
EXAMINER
YOO, JASSON H
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
10/22/2020 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):
USPTOMail@traskbritt.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RYAN MASAO YEE
Appeal 2019-004102
Application 14/496,977
Technology Center 3715
Before SUSAN L. C. MITCHELL, FREDERICK C. LANEY, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection of claims 1–20 as directed to patent ineligible subject
matter under 35 U.S.C. § 101. We have jurisdiction under 35 U.S.C. § 6(b).
A telephonic hearing was held on August 20, 2020.
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Scientific Games Corporation and Bally
Gaming, Inc. (D/B/A Bally Technologies, Inc.) as real parties in interest.
Appeal Br. 2.
Appeal 2019-004102
Application 14/496,977
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CLAIMED SUBJECT MATTER
The claims are directed to methods of administering a wagering game
including a dealer payout. Claims 1, 10, and 20 are independent. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method of administering a wagering game, comprising:
accepting an ante wager from a player to participate in a
primary game by receiving at least one tangible, monetarily
valuable gaming chip in a designated ante wager area on a play
surface of a play table;
accepting an optional bonus wager from the player to
participate in a secondary game by receiving at least another
tangible, monetarily valuable gaming chip in a designated bonus
wager area on the play surface of the play table;
delivering randomized cards from a deck of physical cards
comprising a set of at least one 52-card deck of standard playing
cards utilizing a card-handling device configured to present
randomized cards for delivery;
dealing player cards from the card-handling device to the
player in a playing-card-receiving area on the play surface of the
play table;
revealing the player cards;
paying the player a payout on the bonus wager when the
player obtains a winning outcome according to rules of the
secondary game by transferring at least one tangible, monetarily
valuable gaming chip to the player;
paying a dealer payout from a house account to at least one
of a dealer and a dealer pool when the player obtains a winning
outcome according to the rules of the secondary game, wherein
no additional wager is made to receive the dealer payout; and
paying the player a payout on the ante wager when the
player obtains a winning outcome according to rules of the
primary game by transferring at least one tangible, monetarily
valuable gaming chip to the player and taking each gaming chip
associated with the ante wager when the player does not obtain a
winning outcome according to the rules of the primary game.
Appeal 2019-004102
Application 14/496,977
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OPINION
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 determined that there are certain judicial
exceptions to § 101, namely: (1) laws of nature, (2) natural phenomena, and
(3) abstract ideas. See Mayo Collaborative Svc. v. Prometheus Labs, Inc.,
566 U.S. 66, 70–71 (2012).
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217 (2014) (citing Mayo,
566 U.S. at 72–73). According to the Supreme Court, we first determine
whether the claims at issue are directed to one of those concepts. Id. If so,
we secondly “consider the elements of each claim both individually and ‘as
an ordered combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Id.
(quoting Mayo, 566 U.S. at 79, 78).
The PTO published revised guidance on the application of § 101.
USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (January 7, 2019) (“Revised Guidance”). When conducting step
one of the Alice framework under this guidance, we first look to whether the
claim recites:
Prong 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
Prong 2 additional elements that integrate the judicial exception
into a practical application.
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See Revised Guidance, 84 Fed. Reg. at 54–55. 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; 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 Revised Guidance, 84 Fed. Reg. at 51.
§ 101 Analysis
Applying the Revised Guidance to the facts on this record, we find
that Appellant’s claims 1–20 are directed to patent-ineligible subject matter
without significantly more. Appellant argues claims 1–20 as a group. See
Appeal Br. 21–31. As a result, we select claim 1 as representative, and the
remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner provides a full analysis of the claims under the Revised
Guidance. See Ans. 3–8. We summarize and adopt the Examiner’s analysis
herein. We also address Appellant’s arguments below.
Judicial Exception: Step One of the Mayo/Alice
Framework; Step 2A, Prong 1 of the 2019 Revised
Guidance

The Revised Guidance instructs us, first, to determine whether any
judicial exception to patent eligibility is recited in the claims. The Revised
Guidance identifies three judicially-excepted groupings identified by the
courts as abstract ideas: (1) mathematical concepts, (2) certain methods of
organizing human activity such as fundamental economic practices, and (3)
mental processes.
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Under Prong 1, the Examiner determined, and we agree, that the
claims “describe steps of how a player and a dealer interact by following
rules” and “are directed to a method of organizing human activity.” Ans. 4,
5; see also Final Act. 2 (determining that the claims “are directed to an
abstract idea of managing a wagering game”); In re Smith, 815 F.3d 816,
819 (Fed. Cir. 2016) (where the court found that the ‘“method of conducting
a wagering game’ is drawn to an abstract idea.”).
More specifically, with detailed reference to claim 1, the Examiner
determined that most of the limitations of the claim are directed to rules
governing player and dealer interactions (i.e. a method of organizing human
activity) as follows:
the steps of accepting an ante wager from a player to participate
in a primary game [and] accepting a bonus wager from a player
to participate in a secondary game describe rules or instructions
so that a user can participate in the primary game and the
secondary game. The claim limitations of delivering randomized
cards from a deck of cards, dealing player cards, revealing the
player cards describe an interaction performed by the dealer in
response to the wagers. The claim limitations of resolving the
wagers, or paying a player a payout on the bonus wager when the
player obtains a winning outcome according to the rules of the
secondary game, paying a dealer payout from a house account
when the player obtains a winning outcome according to the rules
of the secondary game, and paying a player a payout on the ante
wager when the player obtains a winning outcome according to
the rules of the primary game describe an interaction in which
payment is exchanged between the player, dealer and the dealer
from a house account according to the rules.
Ans. 4–5.
Appellant does not concede that claim 1 is “directed to a set of rules”
(Reply Br. 4), but Appellant also does not show why claim 1 is not “directed
to a set of rules,” or otherwise not directed to an abstract idea (see generally
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Application 14/496,977
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Appeal Br., Reply Br.). Appellant does argue that included in the
Examiner’s above list of rules is a step2 that is an advance over the prior art.
Reply Br. 3. In support, Appellant provides declaration testimony
concerning novelty, non-obviousness, and commercial success of the
invention. See Declaration under 37 C.F.R. § 1.132 with Respect to
Inventive Concept and Technical Advance in the Industry (“Yee
Declaration”).
Appellant argues that this step renders the claims patentable because it
is new and specific. Appeal Br. 21–25. Even if the step is new and
specific3, however, that does not necessarily mean it is not abstract under
Prong 1. For example, this is not enough to show that the step is not also a
step “describ[ing] . . . how a player and a dealer interact by following” that
particular rule which is part of the “method of organizing human activity.”
See Ans. 8–9, 11. This is consistent with the facts of In re Smith where the
examiner there also found that “the claims represented ‘an attempt to claim a
new set of rules for playing a card game,’ which ‘qualifies as an abstract
idea.’” In re Smith, 815 F.3d at 818. The Federal Circuit agreed with the
examiner and found that claims reciting a new set of rules were drawn to an
abstract idea. Id.

2 The step of: “paying a dealer payout from a house account to at least one of
a dealer and a dealer pool when the player obtains a winning outcome
according to the rules of the secondary game, wherein no additional wager is
made to receive the dealer payout.” See Reply Br. 3. As noted, the
Examiner determines that this is “an interaction in which payment is
exchanged . . . according to the rules” and therefore part of the abstract idea
“of organizing human activity.” Ans. 5.
3 We address Appellant’s arguments regarding this step being a practical
application in the next prong of the test below. See e.g., Appeal Br. 21–22;
Reply Br. 2–5.
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For the reasons discussed above, we agree with the Examiner that
claim 1 is directed to the abstract idea of organizing human activity, in the
form of steps for how a player and a dealer interact by following rules for a
wagering game.
Practical Application: Step One of the Mayo/Alice
Framework; Step 2A, Prong 2 of the 2019 Revised
Guidance

Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea, we next consider under Prong 2, whether the claims recite
additional elements, considered individually and in combination, that
integrate the judicial exception into a practical application. See Revised
Guidance, 84 Fed. Reg. at 54–55.
The Examiner determined, and we agree, that claim 1 does not
integrate the judicial exception into a practical application. The Examiner
determined that claim 1:
is “not directed to an improvement to a function of a
computer;”
does not provide an “improvement to a technical field;”
does not “apply the judicial exception with, or by use of a
particular machine;” and
by “incorporat[ing] the use of at least one tangible, monetarily
valuable gaming chip, a play surface of a play table, and a
card handling device” does not apply the judicial exception
in a meaningful way or describe significant extra-solution
activity beyond the judicial exception.
Ans. 6.
The additional elements recited in claim 1, beyond the steps for how a
player and a dealer interact by following rules are: tangible, monetarily
valuable gaming chips, a play surface of a play table, at least one 52-card
deck of standard playing cards, and a card handling device. We agree with
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Application 14/496,977
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the Examiner that “[t]hese limitations are not applied to claimed steps in a
meaningful way and describe an insignificant extra-solution activity to the
judicial exception.” Ans. 6. We are not persuaded that these limitations,
considered individually or as an ordered combination, integrate the abstract
idea into a practical application. The rules do not alter the functional or
structural characteristics of those elements. Instead, those elements are
merely used by the dealer and player while performing the recited rules (i.e.,
the gaming table with designated areas for wagers provides a surface for the
game and the playing cards are dealt and used to resolve wagers). Thus,
under Prong 2 of Step 2A, the additional elements in independent claim 1 do
not integrate the abstract idea into a practical application.
Appellant provides a number of different arguments as to why claim 1
integrates the judicial exception into a practical application, focusing
primarily on the claimed step for “paying a dealer payout” which it
characterizes as an unconventional action. Appellant argues that “the claims
are patent-eligible because each is limited to a specific, practical application
of the underlying game rules by requiring performance of unconventional
actions in a specified, ordered combination with the other required actions
and physical implementation.” Appeal Br. 21; see also Reply Br 2–3.
However, this generalized statement is insufficient to show error in the
Examiner’s rejection. Requiring performance of unconventional actions,
where those unconventional actions are a part of “the underlying game
rules,” together with “other required actions” does not show how the judicial
exception (i.e. “the underlying game rules”) is integrated into a practical
application.
Appellant goes on to argue that improvements in software and gaming
architecture can be patent eligible, including rules for governing a process.
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Id. at 21–22. However, claim 1 does not require software or gaming
architecture. Further, Appellant does not show how the game rules in
claim 1 would be improvements in software or gaming architecture. We
also determine that rules for governing a process generally, which could
include methods of organizing human activity, is not the same as the rules
for governing a process in software and gaming architecture. Thus,
Appellant’s argument does not identify error in the Examiner’s rejection.
Appellant also argues that claim 1 “involve[s] new and useful
variations in the administration of wagering games involving paying a dealer
payout from a house account when the player obtains a winning outcome in
a secondary game, which is an advance in the technical field of wagering
game administration.” Id. at 22; see also Reply Br. 3. Appellant provides
no explanation as to why or how “wagering game administration” is a
technical field. Though there clearly could be technological and scientific
aspects of “wagering game administration,” it can also include how to play a
game using conventional playing cards. Thus, Appellant’s broad assertion
without more is insufficient to identify error in the Examiner’s rejection.
In view of the above, we determine that under Prong 2, the additional
elements do not integrate the recited abstract idea into a practical application
in a manner that imposes a meaningful limit on the judicial exception.
Inventive Concept: Step Two of the Mayo/Alice
Framework (Step 2B of the 2019 Revised
Guidance)

Under this step, we determine that the additional elements or
combination of elements in claim 1 (tangible, monetarily valuable gaming
chips, a play surface of a play table, at least one 52-card deck of standard
playing cards, and a card handling device) do not add significantly more so
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as to transform the abstract idea into patent-eligible subject matter. Rather,
as noted above, they simply used to implement the abstract idea in game
play.
The Examiner determined and we agree that under In re Smith,
“elements to play the game physically using physical, chips, playing surface,
cards and card handling device” are “purely conventional.” Ans. 8; see In re
Smith, 815 F.3d at 819.
Without addressing In re Smith, Appellant argues that the Examiner
“dismisses the gambling hardware recited in the claims as ‘insignificant
extra-solution activity.’” Reply Br. 3. Appellant argues that this hardware is
“particular” and “integral to the claims” and is not used in other fields. Id.
The Examiner’s determinations do not contest these points and these points
do not show how “physical, chips, playing surface, cards and card handling
device” are anything other than “purely conventional.” In re Smith, 815
F.3d at 819; see also Alice, 134 S.Ct. at 2357–2358 (“appending purely
conventional steps to an abstract idea does not supply a sufficiently
inventive concept.”).
For all of the above reasons, we are not persuaded of error in the
Examiner’s rejection of claims 1–20 under 35 U.S.C. § 101.

Appeal 2019-004102
Application 14/496,977
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20

TIME PERIOD FOR RESPONSE
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