David Colvin et al.

Patent Trials and Appeals Board

Aug 30, 2019

13788061 - (D) (P.T.A.B. Aug. 30, 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.
13/788,061 03/07/2013 David Colvin GAMA92PUSP5 2407
144762 7590 08/30/2019
BROOKS KUSHMAN P.C./Gaming Arts, Z4 Poker
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
EXAMINER
SKAARUP, JASON M
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
08/30/2019 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID COLVIN and ERIC D. COLVIN
____________________

Appeal 2019-000638
Application 13/788,061
Technology Center 3700
____________________

Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK,
Administrative Patent Judges.

PESLAK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
David Colvin and Eric D. Colvin (“Appellants”) appeal under
35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–37.1
We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM.

1 Appellants identify the real party in interest as Gaming Arts, LLC. Br. 1.
Appeal 2019-000638
Application 13/788,061

2
DISCUSSION
Appellants’ invention relates to a system and method for playing a
game of chance. Claim 1, reproduced below with italics added, is
illustrative of the claimed subject matter:
1. A system including an electronic gaming machine
comprising:
a memory device configured to store instructions that are
executable by a processor to provide a game of chance in which
a plurality of house indicia is selected from a pool of house
indicia;
an acceptor configured to receive at least one of currency
and a ticket associated with a monetary value;
a user interface configured to:
enable the player to select a wager for the game of
chance; and
enable the player to initiate a cash out operation;
and
a processor coupled to said memory device for executing
the instructions, wherein, when said processor executes the
instructions, said processor is programmed to:
add the monetary value to a credit balance for the
player;
deduct the selected wager from the credit balance;
randomly select a plurality of house indicia from the
pool of house indicia;
provide a random chance of selecting at least one
bonus indicia;
determine whether a pattern has been completed by
matching each player indicia within the pattern with the
selected plurality of house indicia;
present a bonus to the player upon a determination
that the at least one bonus indicia has been matched by a
player indicia within the pattern and that the pattern has
been completed; and
decrease the credit balance in response to the cash
out operation.
Appeal 2019-000638
Application 13/788,061

3
REJECTIONS
1. Claims 1–37 are rejected under 35 U.S.C. § 101 as being
directed to a judicial exception (i.e., an abstract idea) without significantly
more.
2. Claims 1–10, 13–29, and 32–37 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Schultz (US 2009/0197664 A1, published
Aug. 6, 2009).
3. Claims 11 and 30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schultz and Sareli (US 2013/0123018 A1, published May
16, 2013).
4. Claims 12 and 31 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schultz and Muir (US 2006/0189382 A1, published Aug.
24, 2006).

Rejection 1; 35 U.S.C. § 101
Appellants argue claims 1–37 as a group. See Br. 2–12. We select
claim 1 as the representative claim, and claims 2–37 stand or fall with claim
1. See 37 C.F.R. § 41.37(c)(1)(iv).
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 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
Appeal 2019-000638
Application 13/788,061

4
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” 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); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95
(1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67
(1972)).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
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.
The U.S. Patent and Trademark Office (“USPTO”) recently published
revised guidance on the application of § 101. USPTO’s 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
Appeal 2019-000638
Application 13/788,061

5
Revised Guidance”). Under the 2019 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 of organizing human
activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examining Procedure (“MPEP”)
§ 2106.05(a)–(c), (e)–(h) (Rev. 08.2017 2018)).
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.
See 2019 Revised Guidance.
Step 2A, Prong One
The Examiner determines that claim 1 “describes rules for managing
or conducting a wagering [game] and therefore is directed to an abstract
idea.” Final Action 14.
For at least the following reasons, we are persuaded that
representative claim 1 recites an abstract idea. Indeed, as the Examiner
notes (see Final Act. 14), the Federal Circuit has found that “rules for
conducting a wagering game” are abstract. In re Smith, 815 F.3d 816, 818
Appeal 2019-000638
Application 13/788,061

6
(Fed. Cir. 2016). And rules for conducting a wagering game fall within the
grouping of “[c]ertain methods of organizing human activity,” and, more
particularly, under the subgrouping involving “following rules.” 2019
Revised Guidance at 52.
Specifically, claim 1 contains limitations reciting rules for conducting
a wagering game, namely, accepting a monetary value; establishing a credit
balance for a player; receiving a wager from the player based on the credit
balance; receiving input from the player, and presenting symbols in a
specified manner, as the result of the player’s wager. These limitations are
italicized in claim 1 above. Thus, the record sufficiently establishes that
claim 1 recites the abstract idea of a method of organizing human activity
because it recites rules for conducting a wagering game.
Step 2A, Prong Two
The Examiner finds that the additional limitations of a memory
device, an acceptor, a user interface, and a processor coupled to the memory
“are generically claimed to enable the game rules to be executed by
performing the basic functions of: (i) receiving, processing, and storing
data, and (ii) receiving or transmitting data over a network.” Final Act. 15.
The Examiner states that the additional elements “when viewed individually
. . . are simply an attempt to limit the abstract idea to a particular
technological environment,” and when viewed as a combination “simply
instruct the practitioner to implement the concept of managing or conducting
a wagering game with routine, conventional activity specified at a high level
of generality in a particular technological environment.” Id. at 15–16.
Appellants argue that the “claims are directed to an electronic gaming
machine, which is a special purpose machine that includes components such
Appeal 2019-000638
Application 13/788,061

7
as an acceptor that receives currency or tickets associated with monetary
value, for example. Such an acceptor is clearly not a general-purpose
computer component.” Br. 3.
Although we appreciate Appellants’ position that an electronic
gaming machine is not necessarily a general-purpose computer, the realm of
abstract ideas is not limited by using a computer. We find no indication in
the record that attributes the above elements to an improvement in any
technology or functionality, to implementing the abstract idea with a
particular machine that is integral to the claim, which effects a
transformation or reduction of a particular article to a different state or thing,
which applies the abstract idea in some other meaningful way beyond
linking the use of the abstract idea to a particular technological environment,
or which otherwise indicates that the claimed invention integrates the
abstract idea into a “practical application,” as that phrase is used in the 2019
Revised Guidance.
In accordance with the 2019 Revised Guidance, and looking to MPEP
§§ 2106.05(a)–(c) and (e)–(h), we agree with the Examiner that the
additional elements of claim 1, both individually and as an ordered
combination, do not integrate a judicial exception, in this case the abstract
idea of following the rules of a wagering game, into a practical application.
Final Act. 15; Ans. 22. Claim 1 recites little more than the implementation
of the abstract idea on a generic machine.
The Specification discloses that “computing devices include, without
limitation, electronic gaming machines (also known as slot machines), cell
phones, tablets, PDAs, laptop computers, and smart watches.” Spec. ¶ 88.
“Computing devices typically include at least one processor and at least one
Appeal 2019-000638
Application 13/788,061

8
memory device.” Spec. ¶ 87. “The processor may be, without limitation, an
x86-based logic circuit, an ARM-based logic circuit, and/or a system-on-a-
chip circuit.” Id. “The memory device may include random access memory
(RAM), flash memory, read-only memory (ROM), hard disk drives,
magnetic-based memory, and/or any other form of computer-readable
memory.” Id.
The Specification also discloses that a user interface includes “a
keyboard, a keypad, a touch screen, a mouse, a scroll wheel, a pointing
device, an audio input device employing speech-recognition software, a
video input device that registers movement of a user, and/or any other
suitable device.” Id. ¶ 125. The Specification discloses that a bill acceptor
“is a device that enables gaming device 114 to receive and identify paper
currency.” Id. ¶ 130. “In one embodiment, bill acceptor 404 includes a
scanner that scans paper currency inserted therein. Bill acceptor 404 may
also include optical character recognition (OCR) capabilities that enable bill
acceptor 404 to identify the amount of currency inserted into bill acceptor
404 from a scanned image of the currency.” Id.
Appellants do not explain persuasively why these additional elements
are other than known machinery that performs an existing process. Nor do
Appellants direct our attention to anything in the Specification to indicate
that the invention provides an improvement in the processor’s technical
functionality, or offer any technical reasoning that the implementation
improves the functioning of a processor, an acceptor, or a user interface.
Accordingly, the claim, as a whole, does not integrate the abstract idea into a
practical application because the claim limitations do not impose any
meaningful limits on practicing the abstract idea. Stated differently, the
Appeal 2019-000638
Application 13/788,061

9
claims do not (1) improve the functioning of a computer or other technology,
(2) are not applied with any particular machine (except for generic gaming
components), (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, such that the claim, as a whole, is more than a
drafting effort designed to monopolize the exception. See MPEP
§§ 2106.05(a)–(c), (e)–(h).
Step 2B
We next consider whether claim 1 recites an “inventive concept.” The
Examiner determined that claim 1 does not recite an inventive concept
because the additional elements in the claim do not amount to “significantly
more” than an abstract idea. See Final Act. 15; Ans. 18–19.
We agree with the Examiner’s determination in this regard. The
additional elements recited in claim 1 include “a memory”; “an acceptor”; “a
user interface”; and “a processor.” The claim recites these elements at a
high level of generality, and as discussed above, the written description
indicates that these elements are generic components. See, e.g., Spec. ¶¶ 87–
88, 125, and 130. Additional elements that invoke computers or other
machinery merely as a tool to perform an existing process will generally not
amount to significantly more than a judicial exception. See, e.g., Versata
Dev. Grp. v. SAP Am., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (explaining that
in order for a machine to add significantly more, it must “play a significant
part in permitting the claimed method to be performed, rather than function
solely as an obvious mechanism for permitting a solution to be achieved
Appeal 2019-000638
Application 13/788,061

10
more quickly”). Thus, these elements, taken individually or together, do not
amount to “significantly more” than the abstract idea itself.
We acknowledge Appellants’ contentions that the claims are
distinguishable from those of In re Smith and Planet Bingo, because they
“cannot be carried out by a human using pen and paper, or by a general
purpose computer,” but we do not find these contentions to be persuasive.
Br. 9; see also Planet Bingo, LLC v. VKGS, LLC, 576 F. App’x 1005 (Fed.
Cir. 2014).
As the Examiner correctly notes, the Specification “does not describe
any special programming or algorithms required for the electronic gaming
machines, or memory devices, acceptor configured to receive a physical
item associated with a monetary value (e.g., currency or a ticket), user
interfaces, randomization devices and processors thereof.” Ans. 16. We
agree with the Examiner that “this hardware is conventional and performs
well understood, routine and conventional activities in the gaming industry
or gaming arts. Adding hardware that performs ‘well understood, routine,
conventional activit[ies]’ previously known to the industry will not make
claims patent-eligible.” Id. (citing In re TLI Commc’ns LLC, 823 F.3d 607,
614–15 (Fed. Cir. 2016)).
We also are not persuaded by Appellants’ arguments regarding
preemption. Br. 9–11. Although the Supreme Court has described “the
concern that drives [the exclusion of abstract ideas from patent-eligible
subject matter] as one of pre-emption” (Alice, 573 U.S. at 216),
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
“The Supreme Court has made clear that the principle of preemption is the
Appeal 2019-000638
Application 13/788,061

11
basis for the judicial exceptions to patentability” and “[f]or this reason,
questions on preemption are inherent in and resolved by the § 101 analysis.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice, 573 U.S. at 216). “[P]reemption may signal patent
ineligible subject matter, [but] the absence of complete preemption does not
demonstrate patent eligibility.” Id.
Appellants argue that “an acceptor configured to receive at least one
of currency and a ticket associated with a monetary value . . . is not a
‘generic’ function performed by a general-purpose computer.” Br. 11.
Appellants also argue that the claimed processor is programmed to perform
specific functions such as “add[ing] monetary value of the physical item to a
credit balance . . . and determin[ing] whether the player satisfies the winning
criterion.” Id. According to Appellants, “the addition or incorporation of a
programmed processor does not transform a patentable machine to an
unpatentable abstract idea.” Id.
As the Examiner correctly notes, the claimed devices “are generic
components that are well-understood, routine, and conventional in the
gaming industry.” Ans. 23. These generic components “function in a
conventional manner to store data (i.e., memory device), receive input data
(i.e., input device), output data (i.e., user interface), and execute operations
(i.e., randomization device and processor).” Id.; see also Ans. 17 (citing
Cannon (US 5,766,074, issued June 16, 1998) “input devices of the present
invention include conventional input devices such as a touch screen,
switches or levers, and currency acceptors.”) Applying these generic
functions to the particular environment of an electronic gaming machine is
Appeal 2019-000638
Application 13/788,061

12
not sufficient to circumvent the prohibition against patenting an abstract
idea. See Bilski, 561 U.S. at 610–11.
Accordingly, for these reasons, we sustain the Examiner’s rejection
under 35 U.S.C. § 101 of claim 1 as being directed to an abstract idea.
Claims 2–37 fall with claim 1.
Rejection 2; Anticipation
Rejecting claim 1 as anticipated by Schultz, the Examiner finds, inter
alia, that paragraphs 28 and 29 of Schultz describe a processor programmed
to “determine whether a pattern has been completed by matching each player
indicia within the pattern with the selected plurality of house indicia.” Final
Act. 18.
Appellants argue that the portions of Schultz upon which the
Examiner relies “disclose a keno game that does not include matching a
pattern.” Br. 15. According to Appellants, the Examiner improperly relies
on Appellants’ disclosure of a Bingo pattern in the Background section of
the “specification as supporting an interpretation of ‘pattern’ that includes
Keno.” Id. at 16. Appellants assert that one of “ordinary skill in the art
would understand that a pattern is used in its ordinary or plain meaning as
demonstrated by Appellant[s’] entire disclosure and Figures that clearly
distinguish a pattern as used in Bingo from a number of matched indicia as
used in Keno.” Id.
The Examiner responds that at least paragraphs 3 and 5 of Appellants’
Specification “discloses patterns to be a number of matches,” which is
consistent with the plain meaning of the term “pattern,” i.e., “a form or
model proposed for imitation.” Ans. 25. “Providing numbers of matches,
e.g., 1 match, 2 matches, 3 matches, etc. are forms or models proposed for
Appeal 2019-000638
Application 13/788,061

13
imitation in Schultz’s game to provide winning outcomes.” Id. According
to the Examiner, “Schultz discloses determining whether a pattern (number
of matches) has been completed by matching each player indicia within the
pattern (number of matches) with the selected plurality of house indicia.”
Id. (citing Schultz ¶¶ 28 and 29). For the following reasons, we do not
sustain the rejection of claim 1.
We acknowledge that the Background section of Appellants’
Specification provides that “[s]ome patterns only require one number to be
matched.” Spec. ¶ 5. In the Detailed Description section of the
Specification, however, Appellants define the term “pattern” as “a
predetermined combination of spaces of a player card. In at least some
embodiments, a winning combination is satisfied if player indicia included
within the spaces associated with a pattern are matched to house indicia
called during the game.” Spec. ¶ 75. Thus, a broadest reasonable
interpretation of the term “pattern” consistent with the Specification requires
a predetermined combination or group of numbers. Schultz discloses that a
“keno draw consists of selecting twenty numbers (or numbered balls) from a
set of eighty numbers (or numbered balls).” Schultz ¶ 28. Schultz also
discloses “a payout value for matching one to twenty numbers from the keno
draw.” Schultz ¶ 29. Matching one ball or even all twenty balls is not a
predetermined combination of numbers, because each ball is an individual
ball with no defined relationship to any other ball, not part of a predefined
group.
We agree with Appellants that the Examiner’s rejection relies on “an
overly broad construction of ‘pattern,’” and thus, we do not sustain the
rejection of claim 1, and claims 2–10 and 13–19 depending therefrom as
Appeal 2019-000638
Application 13/788,061

14
anticipated by Schultz. Br. 16. Independent claim 20 recites “determining,
by the processor, whether a pattern has been completed by matching each
player indicia within the pattern with the selected plurality of house indicia.”
We, likewise, do not sustain the rejection of claim 20 and claims 21–29 and
32–37 depending from claim 20 for the same reasons.
Rejections 3 and 4; Obviousness
Claims 11, 12, 30, and 31 depend from claim 1 or 20. The Examiner
does not rely on the additional disclosure of Sareli or Muir to remedy the
deficiency of Schultz discussed above. See Final Act. 22–23. We, thus, do
not sustain the rejection of claims 11 and 30 as unpatentable over Schultz
and Sareli, and the rejection of claims 12 and 31 as unpatentable over
Schultz and Muir for the same reasons as discussed above in Rejection 2.

DECISION
The Examiner’s decision rejecting claims 1–37 under 35 U.S.C. § 101
is affirmed.
The Examiner’s decision rejecting claims 1–10, 13–29, and 32–37
under 35 U.S.C. § 102(b) is reversed.
The Examiner’s decision rejecting claims 11, 12, 30, and 31 under
35 U.S.C. § 103(a) is reversed.
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