CFPH, LLC

Patent Trials and Appeals Board

Jul 8, 2021

2020006043 (P.T.A.B. Jul. 8, 2021)

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.
16/019,122 06/26/2018 Lee Amaitis 10-2290-C2 1097
63710 7590 07/08/2021
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
YOO, JASSON H
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
07/08/2021 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):
lkorovich@cantor.com
mcatarino@cgolaw.com
patentdocketing@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEE AMAITIS
Appeal 2020-006043
Application 16/019,122
Technology Center 3700
Before JENNIFER D. BAHR, CHARLES N. GREENHUT, and
MICHAEL L. WOODS, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6, 8, 9, 11, 13, 14, and 16–18. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as CFPH, LLC. Appeal
Br. 3.
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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to “amusement devices and games
involving elimination of game elements.” Specification, Title (boldface and
uppercase omitted). Claims 1, 11, and 16 are independent. Claim 1,
reproduced below, is representative of the claimed subject matter.
1. A kiosk comprising:
a processor;
a money acceptor and dispenser device configured to
accept insertion of money and dispense money;
a display device; and
a non-transitory computer readable medium having
stored thereon instructions that when executed by the processor
cause the processor to perform a method comprising:
presenting a graphical user interface on the display
device through which a player may establish a wager on a game
by choosing a first subset of numbers from a set of numbers
displayed on the interface;
determining a choice, by the player, by a selection action
to the graphical user interface, of the first subset of numbers
that define the wager;
determining a first monetary amount is inserted into the
money acceptor and dispenser device to define the wager;
in response to determining the choice and the first
monetary amount is inserted into the money acceptor and
dispenser device,
initiating play of a round of the game, and
determining a second subset of numbers of the set
of numbers to eliminate in a first round based on
detecting, by a detector, indicia on given gaming items
on a play area of a gaming device;
determining that the set of numbers without the second
subset of numbers includes at least one first number of the first
subset of numbers;
in response to determining that the set of numbers
without the second subset of numbers includes the at least one
first number, refreshing the graphical user interface to indicate
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elimination of the second subset of numbers from the set of
numbers and present the player with an offer to end the game in
exchange for a monetary award, in which an amount of the
monetary award is based on a first quantity of numbers of the at
least one first number;
determining whether the player does not accept the offer
based on whether a second selection action to the graphical user
interface is performed;
in response to determining that the player does not accept
the offer, determining a third subset of numbers of the set of
numbers that are each different from any of the second subset
of numbers to eliminate in another round;
determining that a remaining subset of numbers defined
by the set of numbers without at least the second subset of
numbers and the third subset of numbers includes at least one
second number of the first subset of numbers; and
in response to determining that the remaining subset of
numbers includes the at least one second number, refreshing the
graphical user interface to present the player with an indication
of a monetary award for winning the game and providing an
amount of the monetary award to the player via the money
acceptor and dispenser device, in which an amount of the
monetary award for winning the game is based on a second
quantity of numbers of the at least one second number.
REJECTIONS2
Claims 1–6, 8, 9, 11, 13, 14, and 16–18 stand rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement with regard to the limitation “determining a second subset of
numbers of the set of numbers to eliminate in a first round based on

2 The Examiner withdrew a rejection of claims 1–6, 8, 9, 11, 13, 14, and
16–18 under 35 U.S.C. § 112, second paragraph. Ans. 14; Advisory Act. 2;
see Final Act. 4–5.
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detecting, by a detector, indicia on given gaming items on a play area of a
gaming device.”3 Ans. 3.
Claims 1–6, 8, 9, 11, 13, 14, and 16–18 stand rejected under 35 U.S.C.
§ 101 as being directed to patent ineligible subject matter—a judicial
exception (i.e., a law of nature, a natural phenomenon, or an abstract idea)
without significantly more. Ans. 6.
Claims 1–6, 8, 9, 11, 13, 14, and 16–18 stand rejected on the ground
of obviousness-type double patenting over claims 1–29 of Amaitis
(US Patent 8,632,387 B2, issued Jan. 21, 2014). Ans. 6.
OPINION
Written Description
The Examiner finds that Appellant’s Specification provides “no
description of a detector that detects or determines a second subset of
number[s] of the set of numbers to eliminate in a first round,” and, thus, the
limitation “determining a second subset of numbers of the set of numbers to
eliminate in a first round based on detecting, by a detector, indicia on given
gaming items on a play area of a gaming device” in claims 1, 11, and 16
lacks written description support. Ans. 4–5.
Appellant argues that “at least paragraphs [179], [181] and
[268]-[269] provide sufficient support for the claim limitations” in question.
Appeal Br. 18. According to Appellant, the cited portions of the
Specification disclose an exemplary embodiment in which

3 The Examiner withdrew a rejection of claims 1–6, 8, 9, 11, 13, 14, and
16–18 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement with regard to a different limitation.
Ans. 14; Advisory Act. 2; see Final Act. 2–3.
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a reader or table monitor (“detector”) may read or image a
symbol (“indicia”) on a card (“given gaming item”) on a
surface (“play area”) of a gaming table (“gaming device”), such
that the indicia, which indicates a value of the card removed
from the gaming table, is detected by the detector, and a
processor, based on the detected indicia on the respective cards
removed, may determine numbers, which correspond to values
of the cards detected as removed by the detector detecting the
indicia, to eliminate in a first round of the game.
Id. at 19.
Further, Appellant submits that the Examiner overlooks paragraphs
268–269 of the Specification, “which disclose that ‘any process of
elimination may be used,’ and that the elimination may be from ‘game
elements being eliminated from play.’” Appeal Br. 19. Appellant
additionally contends that
the application describes that the process of eliminating of
numbers based on indicia on gaming items being detected by a
detector may include detecting ‘cards’ removed from a game
being played on a game table, by detecting symbols on the
cards removed by a detector (e.g., by reading or imaging).
Stated another way, the application describes an embodiment in
which the values of those cards removed from a game being
played on a play area of a gaming table are detected by a
detector that detects indicia on the cards, and a processor uses
the values of the cards that are detected as removed by the
detector to eliminate numbers, which correspond to the values
of the cards removed, in a round of a game.
Id. For the reasons that follow, Appellant’s arguments are not persuasive.
Paragraphs 179 and 181 discuss a prior art system, disclosed in
US Patent 6,579,181, including a card deck reader that reads a
machine-readable symbol from each card of a deck of cards, wherein the
symbol identifies a value of the card in terms of rank and suit, and a table
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monitor that images activity or events occurring at a gaming table and
periodically compares those gaming table images “to identify wagering, as
well as the appearance, removal and position of cards and/or other objects on
the gaming table.” Spec. ¶¶ 179, 181. In other words, the prior art system
monitors activity at a gaming table to identify, among other things, cards
that have been removed (i.e., eliminated).
Paragraph 268 merely discloses that “any process of elimination may
be used,” without disclosing an example of a process of elimination. Spec.
¶ 268. Paragraph 269 discusses “determining whether the chosen game
elements have been eliminated from play and/or whether one or more chosen
elements remains in play” and explains that “in some embodiments, an
elimination of game elements may result in all of a chosen game elements
being eliminated from play or one or more game elements remaining in
play.” Id. ¶ 269 (emphasis added). Paragraph 269 also explains that “[s]uch
a determination [(i.e., of whether chosen game elements have been
eliminated)] may include observing a play area such as a table[,] a gaming
device, a screen, and so on to make a determination.” Id. In other words,
the paragraphs of Appellant’s Specification cited by Appellant disclose
determining whether one or more chosen game elements (e.g., numbers) has
been eliminated from play, not a subset of numbers to eliminate, based on
detecting, by a detector, indicia on gaming items on a play area of a gaming
device.
Appellant does not direct our attention to any disclosure in the
Specification that reasonably conveys to those of skill in the art that
Appellant had possession of the claimed subject matter—particularly,
determining a subset of numbers to eliminate based on detecting, by a
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detector, indicia on given gaming items on a play area of a gaming device,
as recited in independent claims 1, 11, and 16. See Ariad Pharms., Inc. v.
Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (stating that
the test for compliance with the written description requirement “is whether
the disclosure of the application relied upon reasonably conveys to those
skilled in the art that the inventor had possession of the claimed subject
matter as of the filing date”). Thus, Appellant does not apprise us of error in
the rejection of claims 1, 11, and 16, or dependent claims 2–6, 8, 9, 13, 14,
17, and 18 under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement. Accordingly, we sustain the rejection of
claims 1–6, 8, 9, 11, 13, 14, and 16–18 under 35 U.S.C. § 112, first
paragraph.
Patent Eligibility
An invention is patent-eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
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. 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
and Alice. 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, one first determines what concept the claim is “directed to.”
See 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
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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 of rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
(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 (1854))); 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 that “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
(“view[ing] 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. (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
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to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, one turns to the second
step of the Alice and Mayo framework, where “[one] 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
monopolize the [abstract idea].’” Id. (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.
On January 7, 2019, the PTO issued revised guidance on the
application of § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (hereinafter “2019 Eligibility Guidance”). The
2019 Eligibility Guidance includes steps 2A and 2B. Under Step 2A, Prong
One, of the guidance, one first looks to whether the claim recites 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). See id. at 54.
Pursuant to the 2019 Eligibility Guidance, if a claim recites a judicial
exception, one proceeds to Step 2A, Prong Two, and determines whether the
claim recites additional elements that integrate the judicial exception into a
practical application. See id.; see also MPEP § 2106.05(a)–(c), (e)–(h).
Only if a claim both recites a judicial exception and fails to integrate
the judicial exception into a practical application, does one proceed to Step
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2B of the guidance. At this step, one determines whether the claim adds a
specific limitation beyond the judicial exception that is not “well-
understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or
simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception. See 2019 Eligibility Guidance, 84 Fed. Reg. at 56. In doing so,
one considers the elements of the claim both individually and as “an ordered
combination.” See Alice, 573 U.S. at 217 (stating that “[one] consider[s] 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 . . . 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 than a patent upon the [ineligible concept] itself’”); see
also BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1349–50 (Fed. Cir. 2016) (explaining that, even in claims reciting only
“generic computer, network and Internet components, none of which is
inventive by itself,” “an inventive concept can be found in the non-
conventional and non-generic arrangement of known, conventional pieces”
under step two of the Alice framework).
In contesting the patent eligibility rejection, Appellant presents
arguments directed to limitations of claim 1, and relies on these arguments
for all of claims 1–6, 8, 9, 11, 13, 14, and 16–18. See Appeal Br. 9–16. We
decide the appeal of this rejection on the basis of claim 1, and claims 2–6, 8,
9, 11, 13, 14, and 16–18 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv) (permitting the Board to select a single claim to decide the
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appeal as to a single ground of rejection of a group of claims argued
together).
Following the 2019 Eligibility Guidance, the Examiner determines
that claim 1: is directed to a judicial exception (i.e., the abstract idea of a
certain method of organizing human activity, including managing
interactions, such as commercial or financial transactions, between people
and following rules or instructions); does not include any additional
elements that integrate the abstract idea into a practical application; and does
not include any additional element, or combination of elements, that is
sufficient to ensure that the claimed invention amounts to significantly more
than the abstract idea itself. Ans. 7–13; see In re Smith, 815 F.3d 816,
818–19 (Fed. Cir. 2016) (agreeing with the Board that a wagering game is a
method of exchanging and resolving financial obligations, comparable to
“other ‘fundamental economic practice[s]’” and holding that a “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”); see id. at 819 (concluding that “claims describing a set of
rules[] for a game[] are drawn to an abstract idea”).
Appellant argues that claim 1 recites additional elements that integrate
the abstract idea into a practical application in that they “provide[] an
improvement in the functioning of a computer, or an improvement to other
technology or technical field, and implement[] the abstract idea in
conjunction with a particular machine” by “help[ing] to improve computer
performance and computer related operation of a particular machine as a
kiosk that includes a processor, a money acceptor and dispenser device
configured to accept insertion of money and dispense money, and a display
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device.” Appeal Br. 10 (emphasis omitted). According to Appellant, the
claimed features “allow a computer to perform a function not previously
performable by a computer and are implemented using a particular machine
of a kiosk.” Id. (emphasis omitted). Appellant submits that “[t]he claimed
features may help improve computer performance, which may help
computer workload including computer resources such as memory and
processor resources.” Id. (emphasis omitted). Further, Appellant asserts
that paragraphs 262, 263, 266, 269, 270, 275, and 278 describe
[t]he advantages of utilizing a money acceptor and dispenser
device to initiate play of a round of game and provide a
monetary award for winning the game at a kiosk, utilizing a
detector that detects indicia on gaming items to facilitate play of
the game, and refreshing the display of a graphical user
interface at the kiosk to indicate gaming information resulting
from play of the game.
Id. at 11 (emphasis omitted).
The structural elements to which Appellant alludes—a kiosk, a
processor, a money acceptor and dispenser device, and a display device—are
generic devices recited merely nominally in claim 1 simply as generic tools
for implementing the abstract idea (a set of interactions, in the form of
wagering, following a set of rules established for play of a game, and
providing a monetary award in accordance with the rules and play of the
game). Appellant’s Specification mentions the term “kiosk” only once,
stating merely that “[o]ther embodiments may be played using a table, a
computer device, a different interface, a kiosk, no interface, different game
elements, different prompts, and so on.” Spec. ¶ 286. This shows that the
structure, including the kiosk, interface, and computer device (processor), is
not an integral or necessary component of the invention—the invention does
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not lie in the components themselves, either individually or as an apparatus
comprising the components. Appellant’s Specification provides no details
of the kiosk, nor do the drawings of the present application illustrate any
details of the kiosk. Similarly, the Specification discloses the money
acceptor and dispenser only generically as a means to accept and dispense
money. See id. ¶ 225 (referring to a “coin acceptor”), ¶ 248 (disclosing “a
coin payout” without any details of a money dispenser). The Specification
discloses that the various processes of the invention “may be implemented
by, e.g., appropriately programmed general purpose computers, special
purpose computers and computing devices” and that “[a] ‘processor’ means
one or more microprocessors, central processing units (CPUs), computing
devices, microcontrollers, digital signal processors, or like devices or any
combination thereof, regardless of the architecture.” Id. ¶¶ 56–57. This
description does not support Appellant’s assertion that the claimed invention
is tied to a particular machine.
Further, Appellant does not direct our attention to any disclosure in
the Specification that supports Appellant’s assertion that the additional
elements (the kiosk, processor, and money acceptor and dispenser device) of
claim 1 actually improve the functioning of the computer or other
technology. Indeed, as the Examiner points out, Appellant’s assertion that
that “[t]he claimed features may help improve computer performance, which
may help computer workload including computer resources such as memory
and processor resources” (Appeal Br. 10–11 (emphasis added; emphasis
omitted)) is quite telling in this regard. See Ans. 15 (pointing out that
Appellant does not assert that, much less explain how, the claimed features
help improve computer performance or workload). The purported
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advantages to which Appellant points in paragraphs 262, 263, 266, 269, 270,
275, and 278 (Appeal Br. 11) relate to the abstract idea itself (i.e., the
interactions, in the form of wagering, following a set of rules established for
play of a game, and providing a monetary award in accordance with the
rules and play of the game), and not to any improvement in the functioning
or workload of the computer (or processor) itself.
Appellant argues that “the present claims are similar to those of [Core
Wireless Licensing S.A.R.L. v. LG Electronics Inc., 880 F.3d 1356 (Fed. Cir.
2018)].” Appeal Br. 14. Appellant states:
As the Federal Circuit in Core Wireless has explicitly held that
an improved graphical user interface is patent eligible,
Appellant requests that the Board similarly find that the
presently claimed invention, which provides a graphical user
interface which may improve the efficiency of using an
electronic computing device at a kiosk that further includes a
money acceptor and dispenser device, is patent-eligible under
Step 2A of the 2019 PEG.
Id.
Appellant’s reliance on Core Wireless is misplaced. In Core Wireless,
the patents-in-suit “disclose[d] improved display interfaces, particularly for
electronic devices with small screens like mobile telephones. The improved
interfaces allow a user to more quickly access desired data stored in, and
functions of applications included in, the electronic devices.” Core
Wireless, 880 F.3d at 1359. In its analysis, the court asked whether “the
claims are directed to a specific improvement in the capabilities of
computing devices, or, instead, ‘a process that qualifies as an ‘abstract idea’
for which computers are invoked merely as a tool.’” Id. at 1361–62
(emphasis added) (quoting Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
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1336 (Fed. Cir. 2016)). In determining that the claims at issue were the
former, the court held that “[t]he specification confirms that these claims
disclose an improved user interface for electronic devices, particularly those
with small screens” and that “[t]he disclosed invention improves the
efficiency of using the electronic device by bringing together ‘a limited list
of common functions and commonly accessed stored data,’ which can be
accessed directly from the main menu.” Id. at 1363 (quoting US 8,434,020,
col. 2, ll. 55–59). The court therefore concluded that “the claims are
directed to an improvement in the functioning of computers, particularly
those with small screens.” Id.
Appellant’s Specification, by contrast, does not disclose any
improvement in a graphical user interface. Appellant’s Specification
discloses no details of the kiosk or graphical user interface itself, or the
functioning thereof, other than generically as a means of providing
information to and retrieving information from a player. See, e.g., Spec.
¶ 262 (disclosing that “a player may be presented with an interface or
element through which the player may enter information about a game,”
such as “allow[ing] a user to respond to offers, establish[ing] wagers[,]
view[ing] the game[,] and so on”). Further, as discussed above, Appellant’s
Specification states that “[o]ther embodiments may be played using a table,
a computer device, a different interface, a kiosk, no interface, different game
elements, different prompts, and so on.” Id. ¶ 286. This indicates that
Appellant’s interface itself does not supply an inventive concept upon which
patent eligibility may be predicated.
For the above reasons, Appellant fails to apprise us of error in the
Examiner’s determination that claim 1 does not recite additional elements
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that integrate the abstract idea into a practical application as set forth in the
2019 Eligibility Guidance.
Appellant asserts that the Examiner’s analysis under step 2B of the
Alice framework is deficient in that “it merely provides conclusory
statements and does not comport with [USPTO guidance set forth in a memo
entitled Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.), April 19, 2018 (hereinafter “Berkheimer memo”)].” Appeal
Br. 15–16. As is evident in the portions of the Berkheimer memo quoted by
Appellant on page 15 of the Appeal Brief, the Berkheimer memo indicates
that Examiners can rely on statements in the specification, citations to court
decisions discussed in MPEP § 2105.05(d)(II), citations to publications, and
statements taking official notice of the well-understood, routine,
conventional nature of elements. The Examiner relies on paragraph 4 of the
Waxman publication (US 2008/0113766 A1, published May 15, 2008) to
support the Examiner’s findings that “[t]he additional elements of a
processor, money acceptor and dispenser, a display device are generic
gaming components that are well-known[,] routine[,] and conventional in the
art.” Ans. 12. Thus, the Examiner’s findings appear to comply fully with
the Berkheimer memo, and Appellant fails to persuasively explain how or
why the Examiner’s analysis runs afoul of the guidance set forth in the
Berkheimer memo or is otherwise deficient.
For the above reasons, Appellant fails to apprise us of error in the
Examiner’s determination that claim 1 does not recite additional elements
that, when considered both individually and as an ordered combination,
transform the nature of the claim into an inventive concept (i.e., an element
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or combination of elements that is sufficient to ensure that the claim
amounts to significantly more than an abstract idea) (see Ans. 13).
Accordingly, we sustain the rejection of claim 1, and of claims 2–6, 8, 9, 11,
13, 14, and 16–18, which fall with claim 1, under 35 U.S.C. § 101 as being
directed to patent ineligible subject matter.
Obviousness-Type Double Patenting
Appellant does not present any arguments contesting the rejection of
claims 1–6, 8, 9, 11, 13, 14, and 16–18 on the ground of obviousness-type
double patenting over claims 1–29 of Amaitis. See Final Act. 7; Ans. 6
(maintaining the rejection). Accordingly, we summarily sustain the
obviousness-type double patenting rejection of claims 1–6, 8, 9, 11, 13, 14,
and 16–18. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008)
(explaining that summary affirmance without consideration of the
substantive merits is appropriate where an appellant fails to contest a ground
of rejection); 37 C.F.R. § 41.31(c) (“An appeal, when taken, is presumed to
be taken from the rejection of all claims under rejection unless cancelled by
an amendment filed by the applicant and entered by the Office”).
CONCLUSION
We AFFIRM the Examiner’s rejections of claims 1–6, 8, 9, 11, 13, 14,
and 16–18 under 35 U.S.C. § 112, first paragraph, under 35 U.S.C. § 101,
and under the doctrine of obviousness-type double patenting.
Appeal 2020-006043
Application 16/019,122

18
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8, 9,
11, 13, 14,
16–18
112, first
paragraph
Written
Description
1–6, 8, 9,
11, 13, 14,
16–18

1–6, 8, 9,
11, 13, 14,
16–18
101 Eligibility 1–6, 8, 9,
11, 13, 14,
16–18

1–6, 8, 9,
11, 13, 14,
16–18
Obviousness-Type
Double Patenting
Amaitis
1–6, 8, 9,
11, 13, 14,
16–18

Overall
Outcome
1–6, 8, 9,
11, 13, 14,
16–18

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