Berndt Burghard

Patent Trials and Appeals Board

Nov 22, 2019

14010227 - (D) (P.T.A.B. Nov. 22, 2019)

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.
14/010,227 08/26/2013 Berndt Burghard N2012P996US2 6307
61644 7590 11/22/2019
Kevin H. Fortin
253 Riggle Road
Williams, IN 47470
EXAMINER
COBURN, CORBETT B
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
11/22/2019 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):
kevin@fortinpatent.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERNDT BURGHARD
Appeal 2018-001861
Application 14/010,227
Technology Center 3700
Before LARRY J. HUME, MELISSA A. HAAPALA, and
MATTHEW J. McNEILL, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Novomatic Ag, appeals
from the Examiner’s decision rejecting claims 1–20, which are all claims
pending in the application. Appellant has canceled claims 21–30. Appeal
Br. 5. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Novomatic
A.G. Appeal Br. 3.
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CLAIMED SUBJECT MATTER2
The claims are directed to a gaming machine including moving wild
symbols. See Spec. (Title). In particular, Appellant’s disclosed
embodiments and claimed invention relate “to gaming machines including
slot machines, and particularly to slot machines having wild symbols and
bonus game features.” Spec. ¶ 1.
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A gaming machine having standard and bonus
game play mode, comprising:
a slot machine including a housing, an interface, a
controller, a currency acceptor and a card reader in operative
communication to enable slot machine game play;
the interface attaches to the housing;
the currency acceptor and card reader are enabled to
receive payments to initiate slot machine game play;
a computer in operative communication with the
interface, the computer having a memory and a processor, the
memory stores game play instructions and a set of symbols
including game symbols, scatter symbols and wild symbols, the
computer operates the controller, the currency acceptor and the
card reader;
the game play instructions include instructions for a
standard game play mode and bonus game play mode;

2 Our decision relies upon Appellant’s Supplemental Appeal Brief (“Br.,”
filed June 8, 2017); Examiner’s Answer (“Ans.,” mailed Aug. 25, 2017);
Final Office Action (“Final Act.,” mailed Nov. 14, 2016); and the original
Specification (“Spec.,” filed Aug. 26, 2013) (claiming benefit of
US 13/356,558, filed Jan. 23, 2012, now issued as US 8,540,565). Appellant
did not file a Reply Brief.
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during standard game play mode, the interface displays a
matrix of symbols representing sets of reels, and the computer
calculates payouts based on the symbols, which are randomly
arranged within the matrix;
when a predetermined number of scatter symbols appear
in the matrix of symbols in standard game play mode, bonus
game play commences and at least one of the scatter symbols is
transformed into a wild symbol during bonus game play; and
during bonus game play mode the wild symbol remains
stationary while the matrix of symbols change, and after the
matrix of symbols stop changing the wild symbol moves to a
random location in the matrix of symbols.
REJECTION
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception (i.e., a law of nature, a natural phenomenon, or an
abstract idea) without significantly more. Final Act. 2.
ISSUE
Appellant argues (Br. 10–13) the Examiner’s rejection of claim 1
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter is
in error. These contentions present us with the following issue:
Under the USPTO’s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 1 patent-ineligible under
§ 101?
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PRINCIPLES OF LAW
A. 35 U.S.C. § 101
An invention is patent-eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.3
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we
first determine what concept the claim is “directed to.” See Alice, 573 U.S.
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);

3 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under § 101. MPEP § 2106.
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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” (Diehr, 450 U.S. at 191); “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))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held “a claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view
respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citation omitted) (citing Benson and Flook); see, e.g., id. at 187 (“It is
now commonplace that an application of a law of nature or mathematical
formula to a known structure or process may well be deserving of patent
protection.”).
Abstract ideas may include fundamental economic practices, methods
of organizing human activities, and mathematical formulas or relationships.
Alice, 573 U.S. at 217–21. Under this guidance, we must therefore ensure at
step one that we articulate what the claims are directed to with enough
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specificity to ensure the step one inquiry is meaningful. Id. at 217 (“[W]e
tread carefully in construing this exclusionary principle lest it swallow all of
patent law.”).
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 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in 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.
B. USPTO Revised Guidance
The USPTO recently published revised guidance in the Federal
Register concerning the application of § 101. 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
“Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).
Under the Revised 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
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of organizing human activity such as a fundamental economic
practice, or mental processes);4 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).5
See Revised Guidance 52–53.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.6
See Revised Guidance 56.
Step 2A(i) – Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;

4 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
5 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
6 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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(b) Certain methods of organizing human activity —
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); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
(c) Mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Revised Guidance 52 (footnotes omitted).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance.7
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) – Practical Application
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical

7 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Revised
Guidance, Section III.C.
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application of that exception in Step 2A(ii) 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.
The seven identified “practical application” sections of the MPEP,8
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(f) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
See Revised Guidance 55.
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-

8 See MPEP §§ 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer
to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative
of integration into a practical application, while §§ 2106.05(f), (g), and (h)
relate to limitations that are not indicative of integration into a practical
application.
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eligibility inquiry ends. See Revised Guidance 54. If not, then analysis
proceeds to Step 2B.
Step 2B – “Inventive Concept” or “Significantly More”
Under our reviewing courts’ precedent, it is possible that a claim that
does not “integrate” a recited judicial exception under Step 2A(ii) is
nonetheless patent eligible. For example, the claim may recite additional
elements that render the claim patent eligible even though one or more claim
elements may recite a judicial exception.9 The Federal Circuit has held
claims eligible at the second step of the Alice/Mayo test (USPTO Step 2B)
because the additional elements recited in the claims provided “significantly
more” than the recited judicial exception (e.g., because the additional
elements were unconventional in combination).10 Therefore, if a claim has
been determined to be directed to a judicial exception under Revised Step
2A, we must also evaluate the additional elements individually and in
combination under Step 2B to determine whether they provide an inventive
concept (i.e., whether the additional elements amount to significantly more
than the exception itself).11

9 See, e.g., Diehr, 450 U.S. at 187.
10 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); BASCOM Global Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014).
11 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;” or (2) “simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.” See Revised Guidance,
Section III.B.12
In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s). . . .
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-

12 In accordance with existing Step 2B guidance, an Examiner’s finding that
an additional element (or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown above. For more information concerning evaluation
of well-understood, routine, conventional activity, see MPEP § 2106.05(d),
as modified by the USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memo”).
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understood, routine, conventional nature of the additional
element(s).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s). . . .
See Berkheimer Memo 3–4.
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements do not amount to significantly more than the exception itself, the
claim is ineligible under Step 2B, and the claim should be rejected for lack of
subject matter eligibility.
ANALYSIS
Step 1 – Statutory Category
Claim 1, as a machine claim, recites one of the enumerated categories
of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue before us
is whether it is directed to a judicial exception without significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 1 is directed to “a fundamental
economic practice of long standing” (Final Act. 5), and further states that
claim 1 is
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directed to a wagering game with scatter symbols transformed
into roaming wild symbols played according to the rules
outlined below, which are a method of determining financial
obligations using probability. The CAFC has determined in, In
Re Smith, that such claims are directed to an abstract idea
similar to those found in Alice and Bilski. Additionally, the
Federal Circuit has ruled that managing a game is a method of
organizing human activity and therefore an abstract idea.
(Planet Bingo, LLC v. VKGS LLC, 2013-1663 (Fed. Cir., 2014))
The claim(s) does/do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional elements amount to
insignificant extra-solution activity on an art-generic computer.
Final Act. 2 (citing In re Smith, 815 F.3d 816, 817 (Fed. Cir. 2016) (holding
that method claims directed to rules for conducting wagering game were not
patent-eligible. “Because the claims cover only the abstract idea of rules for
playing a wagering game and use conventional steps of shuffling and dealing
a standard deck of cards, we affirm.”); and Planet Bingo, LLC v. VKGS LLC,
576 F. App’x 1005 (Fed. Cir. 2014) (unpublished decision) (holding that
method and system claims failed to transform the abstract idea of managing
a game of bingo into a patent-eligible invention).
We conclude claim 1 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate whether claim 1 recites
an abstract idea based upon the Revised Guidance.
First, we look to the Specification to provide context as to what the
claimed invention is directed to. In this case, the Specification discloses that
the invention “pertains to gaming machines including slot machines, and
particularly to slot machines having wild symbols and bonus game features.”
Spec. ¶ 1.
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Appellant’s Abstract describes the invention as:
A gaming machine having standard and bonus game play
features includes a housing, an interface attached to a housing,
and a computer in operative communication with the interface.
The computer has a memory and a processor. The memory
stores game play instructions and a set of symbols including
game symbols, scatter symbols and wild symbols. The game
play instructions include instructions for a standard game play
mode and bonus game play mode. During standard game play
mode, the interface displays a matrix of symbols representing
an arrangement of reels, and the computer calculates payouts
based on the symbols, within the matrix. When a predetermined
number of scatter symbols appear in the matrix of symbols in
standard game play mode, bonus game play commences and at
least some of the scatter symbols are transformed into wild
symbols during bonus game play. Bonus game play mode
includes multiple reel spins. The wild symbols presented during
bonus game play mode occupy more than one location in the
matrix of symbols and move during each reel spin to a random
location in the matrix of symbols. The random location in the
matrix of symbols excludes matrix locations previously
occupied by a wild symbol during an immediately previous reel
spin during bonus game play.
Spec. 13 (Abstract).
In TABLE 1 below, we parse the limitations of claim 1 as an aid in
determining whether they recite an abstract idea. We additionally identify in
bold the additional (non-abstract) claim limitations that are generic
computer components and techniques:

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TABLE 1
Independent Claim 1 Revised Guidance
[1] A gaming machine having standard
and bonus game play mode, comprising:
A machine is a statutory
subject matter class. See 35
U.S.C. § 101.
a slot machine including a housing, an
interface, a controller, a currency
acceptor and a card reader in operative
communication to enable slot machine
game play;
the interface attaches to the housing;
the currency acceptor and card reader are
enabled to receive payments to initiate
slot machine game play;
These components represent
generic gaming/computer
elements.
[2] a computer in operative
communication with the interface, the
computer having a memory and a
processor,
the memory stores game play
instructions and a set of symbols
including game symbols, scatter symbols
and wild symbols,
the computer operates the controller,
the currency acceptor and the card
reader;
the game play instructions include
instructions for a standard game play
mode and bonus game play mode;
A computer with a memory
and processor represents well-
understood, routine, and
conventional technology.
Storing data and/or
instructions is a generic
computer function.
[3] during standard game play mode, the
interface displays a matrix of symbols
representing sets of reels, and
the computer calculates payouts based
on the symbols, which are randomly
arranged within the matrix;
Determining a payout based
upon the randomly arranged
symbols within the matrix is
an abstract idea, i.e., an
observation, evaluation,
judgment, opinion, which
could be performed as a
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Independent Claim 1 Revised Guidance
mental process. See Revised
Guidance 52.
[4] when a predetermined number of
scatter symbols appear in the matrix of
symbols in standard game play mode,
bonus game play commences and at least
one of the scatter symbols is transformed
into a wild symbol during bonus game
play; and
during bonus game play mode the wild
symbol remains stationary while the
matrix of symbols change, and after the
matrix of symbols stop changing the
wild symbol moves to a random location
in the matrix of symbols.
See Step 2A(ii) “Practical
Application” analysis, infra.
Claims App.
Under the broadest reasonable interpretation standard,13 we conclude
limitations [1] through [3] recite elements that would ordinarily be used
when constructing and operating a gaming machine. See Final Act. 2 et seq.
For example, “calculat[ing] payouts based on the symbols” is an operation

13 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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that generally occurs when using gaming machines and, as highlighted in
TABLE 1, supra, could be characterized as an abstract mental process.
We determine that the identified limitations of claim 1 recite a mental
process that may also be performed in the human mind and/or by pen and
paper. This type of activity, i.e., “calculat[ing] payouts” as recited in
limitation [3], for example, and aside from any computer-related aspects,
includes longstanding conduct that existed well before the advent of
computers and the Internet, and could be carried out by a human with pen
and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1375 (Fed. Cir. 2011) (“That purely mental processes can be unpatentable,
even when performed by a computer, was precisely the holding of the
Supreme Court in Gottschalk v. Benson.”).14
Thus, under Step 2A(i), we agree with the Examiner that claim 1’s
gaming machine recites a judicial exception. We conclude claim 1, under
our Revised Guidance, recites a judicial exception of a mental process, and
thus is an abstract idea.

14 Our reviewing court recognizes that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[t]he Board’s
slight revision of its abstract idea analysis does not impact the patentability
analysis.” Id. Moreover, merely combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math)
to another abstract idea . . . does not render the claim non-abstract.”); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed.
Cir. 2016) (determining the pending claims were directed to a combination
of abstract ideas).
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Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims recite a judicial exception, as we conclude above, we
proceed to the “practical application” Step 2A(ii) in which 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.
In addition to the abstract limitation recited in limitation [3] identified
in Step 2A(i), supra, claim 1 further recites limitation [4]:
when a predetermined number of scatter symbols appear in the
matrix of symbols in standard game play mode, bonus game
play commences and at least one of the scatter symbols is
transformed into a wild symbol during bonus game play; and
during bonus game play mode the wild symbol remains
stationary while the matrix of symbols change, and after the
matrix of symbols stop changing the wild symbol moves to a
random location in the matrix of symbols.
Claims App.
For the reasons discussed below, we conclude limitation [4] integrates
the abstract idea into a practical application as determined under at least one
of the MPEP sections cited above.15
Appellant’s Specification discloses:
[0034] The payline 26 crosses the top row of the matrix of
symbols and is projected on the display 14a and indicates a

15 See, e.g., MPEP § 2106.05(a) “Improvements to the Functioning of a
Computer or To Any Other Technology or Technical Field,” and
§ 2106.05(e) “Other Meaningful Limitations.”
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payout. According to game play rules, where at least three
scatter symbols appears in standard game play mode, a bonus
game play mode is initiated. Bonus game play mode is initiated
in alternate embodiments of the invention when four or five
scatter symbols appear, respectively.
[0035] Here scatter symbols 24e, 24f, 24g and 24h appear and
enable feature game play so that the payout according to the
payline 26. Preferably, bonus game play mode is automatically
initiated and accepted by enabling a user to activate a button on
the interface 16. The matrix of symbols disappears and is
completely replaced by bonus game play images when the
gaming machine 10 enters bonus game play mode.
Spec. ¶¶ 34–35.
Appellant argues, “[h]ere the present invention claims a particular
improvement of slot machine animation” (Br. 12), and “[t]he structure of the
limited rules reflects a specific implementation not demonstrated as that
which any animator engaged in the search for an automation process would
likely have utilized. . . . [T]he present claims are focused to cover particular
presentation, modification and movement of an animated symbol.” Id.
Appellant further argues “[w]hen looked at as a whole the claims are
directed to a patentable, technological improvement over the existing slot
machine animation techniques. The claims use the limited rules in a process
specifically designed to achieve an improved technological result in
conventional industry practice by providing improved animation.” Id. at 13.
We find Appellant’s argument persuasive that the limitations of
“bonus game play commences and at least one of the scatter symbols is
transformed into a wild symbol during bonus game play” and “during bonus
game play mode the wild symbol remains stationary while the matrix of
symbols change, and after the matrix of symbols stop changing the wild
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symbol moves to a random location in the matrix of symbols” represent
improvements to the underlying technology or technical field, namely,
gaming machines. See MPEP § 2106.05(a) or, alternatively, § 2106.05(e)
“Other Meaningful Limitations.”
With respect to these other meaningful limitations, we find guidance
in MPEP § 2106.05(e), which summarizes and relies upon the Supreme
Court’s holding in Diehr, cited supra, and our reviewing court’s holdings in
Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir.
2011) (decision on remand from the Supreme Court, which had vacated the
lower court’s prior holding of ineligibility in view of Bilski v. Kappos).
In Diehr, the Court evaluated the additional non-abstract limitations,
and found them to be meaningful, because they sufficiently limited the use
of the (abstract idea) mathematical equation to the practical application of
molding rubber products. MPEP § 2106.05(e) (citing Diehr, 450 U.S. at
184, 187).
We find these other meaningful limitations identified above provide a
technological improvement to gaming machines by providing a new and
improved level of bonus play that uses new and improved animations. See
Br. 12–13. Accordingly, we conclude, when the claim is considered as a
whole, the recited judicial exception is integrated into a practical application
as determined under either MPEP sections 2106.06(a) or 2106.05(e) cited
above, such that the claim is patent-eligible.
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Because the claims are not directed to an abstract idea, this concludes
the patent-eligibility inquiry.16
Therefore, based upon the findings and legal conclusions above, on
this record and in consideration of the Revised Guidance, we do not sustain
the § 101 rejection of claim 1, and grouped claims 2–9 which stand
therewith. See Claim Grouping, supra.
2. § 101 Rejection of Claims 10–20
We find the issues presented and arguments made by Appellant with
respect to claims 10–20 to be substantially similar in pertinent part to those
made concerning independent claim 1, supra.
For the same reasons as stated in connection with claim 1, we
conclude these claims, while reciting at least one abstract idea under our
Step 2A(i) analysis, integrate the abstract idea into a practical application
under Step 2A(ii), such that we do not sustain the § 101 rejection of
claims 10–20.
CONCLUSION
Under our Revised Guidance, governed by relevant case law, we do
not sustain the 35 U.S.C. § 101 rejection of claims 1–20.

16 Because we agree with at least one of the dispositive arguments advanced
by Appellant, we need not reach the merits of Appellant’s other arguments.
See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984)
(finding an administrative agency is at liberty to reach a decision based on “a
single dispositive issue”).
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DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
References/
Basis
Affirmed Reversed
1–20 101 Subject Matter
Eligibility
1–20
REVERSED