Butler, Simon et al.

Patent Trials and Appeals Board

Dec 6, 2019

14733407 - (D) (P.T.A.B. Dec. 6, 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.
14/733,407 06/08/2015 Simon Butler 286679 8299
23460 7590 12/06/2019
LEYDIG VOIT & MAYER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON AVENUE
CHICAGO, IL 60601-6731
EXAMINER
YEN, JASON TAHAI
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
12/06/2019 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SIMON BUTLER, ALEX BURSTEIN, and NICK GREEN

Appeal 2019-002761
Application 14/733,407
Technology Center 3700
____________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
BRETT C. MARTIN, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–7, 11, 13, 14, and 16–21. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Abacus
Solutions International IP B.V.” Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The disclosed subject matter relates “to an electronic game
arrangement, a method of operating an electronic game arrangement, a
terminal for communicating with the electronic game arrangement and a
method of operating the terminal.” Spec. 1:4–6. Claims 1, 11, and 13 are
independent. Claim 1 is illustrative of the claims on appeal and is
reproduced below.
1. In an electronic gaming arrangement operatively
connectable to a random number generator, a method
comprising:
receiving, from a game terminal, a game participation
request comprising a prize amount indication;
receiving a random number from the random number
generator;
determining a winning chance based on the prize amount;
determining, based on the winning chance, a winning
criterion for a random number to meet for the game
participation request to yield a winning participation;
determining whether the received random number meets
the winning criterion; and
communicating, to the game terminal, a winning message
that the participation is a winning participation if the random
number meets the winning criterion.
REFERENCE(S)
Name Reference Date
Goldman et al.
(“Goldman”)
US 4,157,829 June 12, 1979
Gatto et al. (“Gatto”) US 2003/0087683 A1 May 8, 2003
Okada US 2004/0116178 A1 June 17, 2004
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REJECTIONS
Claims 1, 3–7, 11, 13, 14, and 16–21 are rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to non-statutory subject
matter.
Claims 1, 4, 5, 7, 11, 13, 14, 16, 17, 19, and 20 are rejected under
35 U.S.C. § 102(a)(1) as anticipated by Gatto.
Claim 3 is rejected under 35 U.S.C. § 103 as unpatentable over Gatto
and Goldman.
Claims 6, 18, and 21 are rejected under 35 U.S.C. § 103 as
unpatentable over Gatto and Okada.
BACKGROUND
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Supreme Court
instructs us to “first determine whether the claims at issue are directed to a
patent-ineligible concept.” Alice, 573 U.S. at 217. In this case, the inquiry
centers on whether the claims are directed to an abstract idea. If the initial
threshold is met, we then move to the second step, in which we “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.” Alice, 573 U.S. at 217 (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78
(2012)). The Supreme Court describes the second step as a search for “an
‘inventive concept’—i.e., an element or combination of elements that is
‘sufficient to ensure that the patent in practice amounts to significantly more
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than a patent upon the [ineligible concept] itself.’” Alice, 573 U.S. at 217-
218 (quoting Mayo, 566 U.S. at 72– 73).
Regarding this two-step process, on January 7, 2019, the U.S. Patent
and Trademark Office published revised guidance on the application of
§ 101. See 2019 Revised Patent Subject Matter Eligibility Guidance
(“Revised Guidance”), 84 Fed. Reg. 50–57. Per the Revised Guidance, we
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 activities such as a fundamental economic
practice, or mental processes) which is identified as “Prong
One” of “Step 2A.” (Revised Guidance, 84 Fed. Reg. at 54,
Section III.A.1.); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h))
which is identified as “Prong Two” of “Step 2A.” (Revised
Guidance, 84 Fed. Reg. at 54, Section III.A.2.).
Only if a claim recites a judicial exception (see (1) above) and does
not integrate that exception into a practical application (see (2) above), do
we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are 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, and which are
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identified as “Step 2B.” Revised Guidance, 84 Fed. Reg. at 56,
Section III.B.
ANALYSIS
The rejection of claims 1, 3–7, 11, 13, 14, and 16–21
as being directed to non-statutory subject matter
Appellant argues claims 1, 3–7, 11, 13, 14, and 16–21 together. See
Appeal Br. 6–12. We select claim 1 for review, with the remaining claims
standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Step One:
Does Claim 1 Fall within a Statutory Category of § 101?
We are instructed to first examine whether claim 1 recites one 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. Claim 1 is directed to a method (see above), which is one
of the statutory classes (i.e., a process) under 35 U.S.C. § 101.
Step 2A, Prong One:
Does Claim 1 Recite a Judicial Exception
We are instructed to next look to whether claim 1 recites 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. In this instance, claim
1 is directed to “an electronic gaming arrangement” and recites the steps of
(a) receiving a request; (b) receiving a random number; (c) determining a
winning chance; (d) determining a winning criterion for the random number
to meet based on the winning chance; (e) determining whether the random
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number meets the winning criterion; and, (f) communicating a winning
message should the random number meet the winning criterion.
The Examiner determined that claim 1 is “directed to the abstract idea
of rules for managing a lottery game.” Non-Final Act. 3. Appellant
contends that claim 1 is not directed to “rules,” but instead “is directed to a
new gaming infrastructure for carrying out a known game of odds-based
payout to game participants.” Appeal Br. 6.
Claim 1 recites a series of steps that are to be performed and, if
satisfied, the gaming arrangement will communicate “a winning message
that the participation is a winning participation.” Appellant characterizes
these steps as “a new gaming infrastructure,” but we do not fault the
Examiner for likewise characterizing them as “rules for managing a lottery
game.” See supra. This is because these steps clearly list instructions and/or
procedures by which a game of chance is to be played.
The Examiner references In re Smith, 815 F.3d 816 (Fed. Cir. 2016)
as being similar in concept. See Non-Final Act. 3–4. Our reviewing court
described this case stating, “[i]n Smith, we concluded that the claimed
‘method of conducting a wagering game’ using a deck of playing cards was
drawn to an abstract idea.” In re Guldenaar, 911 F.3d 1157, 1160 (Fed. Cir.
2018) (which itself is directed to a “method of playing a dice game”). To be
clear, the use of a different wagering device when following Appellant’s
rules, i.e., Appellant’s “game terminal” 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 Fed. App’x 1005, 1008 (Fed.
Cir. 2014) (“[T]he claims here recite methods and systems for ‘managing a
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game of Bingo.’ . . . This is similar to the kind of ‘organizing human
activity’ at issue in Alice.”).
Further, the Guldenaar court “likened [Smith’s] claimed method to the
method of exchanging financial obligations at issue in Alice.” Guldenaar,
911 F.3d at 1160. Thus, consistent with these decisions by our reviewing
court, Appellant’s claim 1 (which addresses a requested “prize amount”) can
similarly be likened to a “certain method[] of organizing human activities
such as a fundamental economic practice” as discussed in the Revised
Guidance above. Revised Guidance, 84 Fed. Reg. at 54 (Section III.A.1).
Consequently, it is determined that Appellant’s claim 1 reasonably recites a
judicial exception.
Step 2A, Prong Two:
Does Claim 1 Recite Additional Elements that Integrate the Judicial
Exceptions into a Practical Application?
Following Office guidance, and having found that claim 1 recites a
judicial exception, we are next instructed to determine whether claim 1
recites “additional elements that integrate the exception into a practical
application” (see MPEP §§ 2106.05(a)–(c), (e)–(h)). Revised Guidance, 84
Fed. Reg. at 54. Here, the “additional elements” recited in claim 1 are “a
game terminal” and a “random number generator.” As used in claim 1, these
additional elements refer to generic components of the recited “electronic
gaming arrangement” that do not result in an improvement in the functioning
of the system or other technology or technological field. See Spec. 4:12–
5:30 (for definitions). Instead, these additional elements are employed as
generic tools merely to perform the above steps. Thus, the claims do not
apply, rely on, or use these additionally recited elements in a manner that
imposes a meaningful limit on those steps. Rather, the claim is a drafting
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effort designed to monopolize the recited steps of claim 1. See also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
(“[R]elying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible.”).
In short, the additional elements do not add meaningful limits to the
steps recited in claim 1. Instead, the reference to these generic terminal and
generator components are no more than instructions to apply the recited
steps 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.”).
Thus, the additional elements discussed above: (1) do not improve the
functioning of a computer or other technology; (2) are not applied with any
particular machine; (3) do not effect a transformation of a particular article
to a different state; and (4) 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), (e)–(h). For
these reasons, the additional elements of claim 1 do not integrate the judicial
exception into a practical application. Consequently, claim 1 remains
directed to a judicial exception to patent eligible subject matter under
35 U.S.C. § 101.
Step 2B:
Does Claim 1 Recite an Inventive Concept?
We are next instructed to consider whether claim 1 recites any
elements, individually or as an ordered combination, that transform the
abstract idea into a patent-eligible application, e.g., by providing an
inventive concept. See Alice, 573 U.S. at 217–18. As noted above, the only
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additional elements are “a game terminal” and a “random number generator”
used in their routine and expected manner so as to enact the recited steps.
These additional elements do not provide, either individually or as a
combination, improvements to another technology or technical field or the
functioning of the gaming arrangement itself, other than to “perform routine
tasks more quickly or more accurately.” See OIP Techs., 788 F.3d at 1363.
According to the above guidance, under Step 2B, there is a need to
“evaluate the additional elements individually and in combination . . . to
determine whether they provide an inventive concept (i.e., whether the
additional elements amount to significantly more than the exception itself).”
Revised Guidance, 84 Fed. Reg. at 56 (emphasis added). Thus, the second
step of the inquiry (Step 2B) looks at the additional elements in combination.
See also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir.
2018) (“It has been clear since Alice that a claimed invention’s use of the
ineligible concept to which it is directed cannot supply the inventive concept
that renders the invention ‘significantly more’ than that ineligible concept.”).
As noted above, the recited terminal and generator are invoked as
conventional tools. Apart from being used to perform the recited steps,
these generic components (see Spec. 4:12–5:30) only serve to perform well-
understood functions (e.g., receiving, storing, analyzing, and outputting
data). 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.”). In our view, claim 1 fails
to add a specific limitation beyond the judicial exception that is not “well-
understood, routine, conventional” in the field but, instead, “simply appends
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well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.”
Revised Guidance, 84 Fed. Reg. at 56. Further, we are instructed that
“[r]elying 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).
Consequently, we are not persuaded that claim 1 is directed to a
specific application designed to achieve an improved technological result, as
opposed to being directed to merely ordinary functionality of the above-
recited additional elements to apply the recited steps. For the reasons
discussed above, we find no element or combination of elements recited in
claim 1 that contains any “inventive concept” or adds anything “significantly
more” to transform claim 1 into a patent-eligible application. See Alice, 573
U.S. at 221.
Accordingly, we agree with the Examiner’s analysis, and ultimate
conclusion, that claims 1, 3–7, 11, 13, 14, and 16–21 “are directed to the
abstract idea of rules for managing a lottery game.” Non-Final Act. 3. In
summation, we sustain the Examiner’s rejection of these claims as being
“directed to non-statutory subject matter.” Non-Final Act. 2.
The rejection of claims 1, 4, 5, 7, 11, 13, 14, 16, 17, 19, and 20
as anticipated by Gatto
Each independent claim (i.e., claims 1, 11, and 13) recites the
limitation “determining a winning chance based on the prize amount.” Such
determination is described in Appellant’s Specification as a formula, i.e.,
“dividing the winning chance per unit of the prize amount by the prize
amount.” Spec. 7:10–11. Hence, the “winning chance” is a variable whose
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calculation is dependent upon the prize amount sought by the user. This is
in contrast to Gatto which, instead, states “the present invention may be
termed a fixed odds, non-skill game.” Gatto ¶ 42; see also Abstract
(“predetermined odds”). The Examiner does not explain how Gatto’s “fixed
odds” can reasonably correlate to the recited, and variable, “winning
chance.”
Each independent claim also recites a “winning criterion for a random
number to meet.” Thus, to prevail in Appellant’s gaming arrangement, it
must be determined whether or not the “random number meets the winning
criterion” as recited. In Gatto, the disclosed random number has no effect on
any chance of winning. To be clear, Gatto specifically states, “the betting
may be of any level of complexity and is independent of the random number
generated.” Gatto ¶ 45 (emphasis added). In fact, Gatto’s random number is
employed only to select the video to be displayed and further that “[b]y
skewing the number of video sequences according to the odds for each
horse, no conversion of the generated random number may be necessary.”
Gatto ¶ 43 (emphasis added). Thus, again, the Examiner does not explain
how Gatto’s “random number” can reasonably correlate to the determination
of whether or not the “random number meets the winning criterion” as
recited.
For the above reasons, the Examiner has not established by a
preponderance of the evidence that Gatto anticipates the claimed method.
We do not sustain the Examiner’s rejection of claims 1, 4, 5, 7, 11, 13, 14,
16, 17, 19, and 20 as anticipated by Gatto.
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The rejection of (a) claim 3 as unpatentable over Gatto and Goldman; and,
(b) claims 6, 18, and 21 as unpatentable over Gatto and Okada
The Examiner does not employ either Goldman or Okada in a manner
that cures the defect of Gatto above. See Non-Final Act. 10–11.
Accordingly, we do not sustain the Examiner’s rejection of these claims as
being unpatentable under Gatto combined with either Goldman or Okada.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–7, 11,
13, 14, 16–
21
101 Non-statutory
subject matter
1, 3–7, 11, 13,
14, 16–21

1, 4, 5, 7, 11,
13, 14, 16,
17, 19, 20
102(a)(1) Gatto 1, 4, 5, 7, 11,
13, 14, 16, 17,
19, 20
3 103 Gatto, Goldman 3
6, 18, 21 103 Gatto, Okada 6, 18, 21
Overall
Outcome2
1, 3–7, 11, 13,
14, 16–21

TIME PERIOD FOR RESPONSE

2 37 C.F.R. § 41.50(a)(1) states: “The affirmance of the rejection of a claim
on any of the grounds specified constitutes a general affirmance of the
decision of the examiner on that claim.”

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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