David Colvin et al.

Patent Trials and Appeals Board

Mar 2, 2020

13788018 - (D) (P.T.A.B. Mar. 2, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/788,018 03/07/2013 David Colvin GAMA92PUSP1 5290
144762 7590 03/02/2020
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
03/02/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
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 2019-001230
Application 13/788,018
Technology Center 3700
Before MICHELLE R. OSINSKI, WILLIAM A. CAPP, and
JEREMY M. PLENZLER, Administrative Patent Judges.
OSINSKI, 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 1‒35 under 35 U.S.C. § 101 as being
directed to patent ineligible subject matter. 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(a). Appellant identifies the real party in interest as Gaming Arts,
LLC. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Claims 1 and 19 are independent. Claim 1 is reproduced below.
1. An electronic gaming machine comprising:
a memory device configured to store processor-executable
instructions that provide a plurality of games of chance;
an input device configured to receive a physical item
associated with a monetary value;
a user interface configured to:
enable a player to select a wager for at least one of
the plurality of games; 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:
present to the player the plurality of games and a
plurality of game varieties of each game before house
indicia are selected to enable the player to select one of the
games and one of the game varieties associated with the
game, wherein a gameplay for each game of the plurality
of games is different than a gameplay of each other game
of the plurality of games;
enable the player to select one of the plurality of
games and game varieties;
add the monetary value to a credit balance for the
player;
deduct the selected wager from the credit balance;
in response to a determination that the player
selected a first game of the plurality of games:
randomly select a first plurality of house
indicia from a pool of house indicia;
provide a random chance of selecting a bonus
indicia, wherein the bonus indicia is not one of the
selected house indicia; and
present a first outcome based upon a
determination that the bonus indicia was selected;
and
in response to a determination that the player
selected a second game of the plurality of games:
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randomly select a second plurality of house
indicia from the pool of house indicia;
provide a random chance of selecting the
bonus indicia; and
present a second outcome based upon the
determination that the bonus indicia was selected,
wherein the second outcome is different from the
first outcome,
wherein said processor is further programmed to decrease
the credit balance in response to the cash out operation.
OPINION
Legal Principles
The patent laws provide that “[w]hoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent therefor, subject to
the conditions and requirements of this title.” 35 U.S.C. § 101. However,
“this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. v.
CLS Bank Int’l, 573 U.S. 208, 216 (2014) (citation omitted).
Mayo Collaborative Services established a framework to distinguish
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts. Alice,
573 U.S. at 217 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 77 (2012)). First, we determine whether the claims are directed
to a patent-ineligible concept. Id. If so, we next consider the claim elements
individually and as an ordered combination to determine whether additional
elements transform the claims into a patent-eligible application. Id. This
search for an inventive concept seeks an element or combination of elements
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“sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself.” Id. at 217–18.
Recently, the PTO published guidance for evaluating subject matter
eligibility. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (USPTO Jan. 7, 2019) (“Revised Guidance”). Under Step One,
a determination is made whether the claims are in a statutory category of
patentable subject matter, i.e., do they recite a process, machine,
manufacture, or composition of matter, identified in 35 U.S.C. § 101.
Revised Guidance, 84 Fed. Reg. at 50, 53–54; see Alice, 573 U.S. at 216;
Mayo, 566 U.S. at 70.
Next, at Revised Step 2A, Prong One, an evaluation is made whether
a claim recites a judicial exception, i.e., an abstract idea as set forth in
Section I of the Revised Guidance, a law of nature, or a natural
phenomenon. Revised Guidance, 84 Fed. Reg. at 54. To determine if a
claim recites an abstract idea, specific limitations that recite an abstract idea
must be identified (individually or in combination), and a determination
made whether the limitation(s) fall(s) within one or more of the subject
matter groupings in Section I of the Revised Guidance. Id. (A. Revised
Step 2A). The three groupings are (1) mathematical concepts, relationships,
formulas, or calculations, (2) certain methods of organizing human activity,
including fundamental economic principles and practices, commercial
interactions, managing personal behavior, relationships, or interactions, and
(3) mental processes and concepts formed in the human mind. Id. at 52.
If a claim recites a judicial exception, Prong Two of Revised Step 2A
requires a determination to be made whether the claim as a whole integrates
the judicial exception into a practical application. Id. “A claim that
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integrates a judicial exception into a practical application will apply, rely on,
or use the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception.” Id. at 53. If a judicial
exception is integrated, the claim is patent eligible. See id. at 54–55.
If a claim does not “integrate” a recited judicial exception, the claim is
directed to the judicial exception and further analysis is required under Step
2B to determine whether the claim contains additional elements, considered
individually or in combination, that provide an inventive concept, such that
the additional elements amount to significantly more than the exception
itself. Id. at 56.
Step One: Do Claims 1 and 19 Fall within a Statutory Category of § 101?
Appellant argues claims 1–18 as a first group, and claims 19–35 as a
second group. Appeal Br. 13–14. We select independent claims 1 and 19 as
the representative claims. Claims 2–18 stand or fall with independent
claim 1, and claims 20–35 stand or fall with independent claim 19.
37 C.F.R. § 41.37(c)(1)(iv).
We examine whether claims 1 and 19 recite 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 refers to “[a]n electronic gaming machine,” which recites one of the
statutory classes (i.e., a machine) under 35 U.S.C. § 101. Claim 19 refers to
“[a] method of providing a plurality of games of chance and game varieties
of the games of chance,” which recites one of the statutory classes (i.e., a
process) under 35 U.S.C. § 101.
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Step 2A, Prong One: Do Claims 1 and 19 Recite a Judicial Exception?
We next look to whether claims 1 and 19 recite 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.
The Examiner finds that claims 1 and 19 “describe[] rules for
managing or conducting a wagering game” and that “[m]anaging or
conducting the game as recited in [the claims] is similar to the kind of
‘fundamental economic practice’ and ‘organizing human activity’ at issue in
Alice Corp.” Final Act. 9–10 (underlining omitted). Claim 1 recites a
memory device that stores instructions to cause a processor to perform
various steps associated with conducting a wagering game, as well as a user
interface to enable a player to take part in the wagering game. Appeal Br.
(Claims App.). Claim 19 recites the steps taken by the processor and the
functionality of the user interface. Id.
Claim 1 recites that the user interface is configured to “enable a player
to select a wager for at least one of [a] plurality of games.” Appeal Br.
(Claims App.). Placing a wager is the first step in a method of conducting a
wager game that involves exchanging and resolving financial obligations
based on probabilities. Claim 1 further recites that the processor, when
executing the instructions, is programmed to present a plurality of games,
each game having a plurality of game varieties, for selection by a player, and
also, enables the player to select a game and game variety. Id. In order to
be able to take part in a wagering game, one has to select a particular game
in which to participate. Claim 1 additionally recites that the processor, when
executing the instructions, is programmed to “add [a] monetary value to a
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credit balance for the player.” Id. This step recites a simple accounting
process to establish an account for game play. We discuss the requirement
that the monetary value added to the player’s credit balance be derived from
a physical item received by an input device under Step 2A, Prong Two of the
analysis. Claim 1 further recites that the instructions cause the processor to
“deduct the selected wager from the credit balance.” Appeal Br. (Claims
App.). This is akin to the step of a dealer accepting a wager as in In re
Smith, 815 F.3d 816, 817–18 (Fed. Cir. 2016). The fact that the credit
balance is decreased by the wager is an inherent feature of a credit balance
established for the purpose of wagering.
Claim 1 additionally recites that the instructions cause the processor to
“in response to a determination that the player selected a first game,”
“randomly select a first plurality of house indicia . . . ; provide a random
chance of selecting a bonus indicia . . . ; and present a first outcome based
upon a determination that the bonus indicia was selected” and “in response
to a determination that the player selected a second game,” “randomly select
a second plurality of house indicia . . . ; provide a random chance of
selecting the bonus indicia; and present a second outcome based upon the
determination that the bonus indicia was selected, wherein the second
outcome is different from the first outcome.” Appeal Br. (Claims App.).
This is akin to the step in Smith, in which the dealer deals cards from a
random set of playing cards. In other words, a method of conducting a
wagering game entails randomly determining an outcome. This step is a
fundamental part of exchanging and resolving financial obligations based on
probabilities.
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Claim 1 also recites that the user interface is configured to “enable the
player to initiate a cash out operation” and that the “processor is further
programmed to decrease the credit balance in response to the cash out
operation.” Appeal Br. (Claims App.). This step recites a simple accounting
process to enable the player, when done playing, to “cash out” the credits the
player has accumulated. This is the final step of any method of conducting a
wagering game, i.e., the payout for a winning bet. This simple outputting
step is necessary to resolve the wager. This enables the results of the
wagering and the game play to be made clear to the player, and is a
fundamental part of exchanging and resolving financial obligations based on
probabilities.
Each of the above-described steps relates to rules of conducting a
wagering game, in which the rules are part of exchanging and resolving
financial obligations based on probabilities, and/or relates to managing
personal behavior. See In re Marco Guldenaar Holding B.V.,
911 F.3d 1157, 1160 (Fed. Cir. 2018) (holding that rules for playing games
“is one type of [certain] method of organizing human activity”); In re Smith,
815 F.3d at 818 (holding that rules for conducting a wager game compare to
fundamental economic practices). Fundamental economic practices and
managing personal behavior or relationships or interactions between people
fall within the abstract idea exception subgrouping of certain methods of
organizing human activity. Revised Guidance, 84 Fed. Reg. at 52. Thus,
each of the steps discussed above recites a certain method of organizing
human activity, which is a judicial exception.
Considered as a whole, these steps discussed above, under their
broadest reasonable interpretation, contribute to the rules of playing the
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game and recite steps for managing interactions between people, which are
certain methods of organizing human activity. These limitations are similar
to other processes that courts have determined are certain methods of
organizing human activity. See, e.g., Marco Guldenaar, 911 F.3d at 1160‒
61 (holding that a claimed “method of playing a dice game” was drawn to an
abstract idea); Smith, 815 F.3d at 819 (holding that a “method of conducting
a wagering game” using a deck of playing cards was drawn to an abstract
idea). Claim 19, although in the form of a method claim, recites
substantially similar limitations to independent claim 1.
Appellant argues that independent claims 1 and 19 “are
distinguishable from those of” Smith because Appellant’s claims “are not
performed by a dealer,” but instead “are directed to an electronic gaming
machine and method performed by an electronic gaming machine.” Appeal
Br. 8 (emphasis omitted). We disagree that the instant claims are
distinguishable from Smith. Although an electronic gaming machine, rather
than a human, performs the recited steps, the instant claim limitations
continue to relate to exchanging and resolving financial obligations between
a player and an operator of a gaming machine based on probabilities created
during the game, which remains at least a fundamental economic practice.
Accordingly, we disagree with Appellant’s contention that Smith is
inapposite to the claims. Instead, we determine that claims 1 and 19, like the
claims at issue in Smith, relate to rules for a wagering game and resolving
financial obligations. We therefore determine that claims 1 and 19 recite at
least a fundamental economic practice which is one of certain methods of
organizing human activity identified in the Revised Guidance, and, thus, an
abstract idea.
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Step 2A, Prong Two: Do Claims 1 and 19 Recite Additional Elements that
Integrate the Judicial Exceptions into a Practical Application?
Following the Revised Guidance, having found that claims 1 and 19
recite a judicial exception, we next determine whether the claims recite
“additional elements that integrate the exception into a practical application”
(see MPEP §§ 2106.05(a)–(c), (e)–(h)). See Revised Guidance, 84 Fed. Reg.
at 54.
The preamble of claim 1 is directed to “[a]n electronic gaming
machine.” Appeal Br. (Claims App.). The body of claim 1 recites certain
physical components of the electronic gaming machine in a generic manner.
Specifically, claim 1 recites that the electronic gaming machine comprises “a
memory device configured to store processor-executable instructions that
provide a plurality of games of chance,” “an input device configured to
receive a physical item associated with a monetary value,” “a user interface
configured to: enable a player to select a wager . . . and enable the player to
initiate a cash out operation,” and “a processor.” Id.
The Examiner takes the position that “under their broadest reasonable
interpretation in light of [Appellant’s] [S]pecification . . . , none of
[c]laims 1 to 35 recite coin acceptors, wager inputs and cashout buttons or
can be interpreted to provide gameplay on a special purpose machine rather
than providing gameplay on a general purpose machine.” Final Act. 4. The
Examiner determines that “[w]ithout [an] explicit recitation of gaming
device components, the gaming device 114 described in [Appellant’s]
[S]pecification is simply a general purpose computer like computing device
300.” Id. at 7.
Appellant argues that “Appellant’s claims are not directed to a
general-purpose computer,” but rather “are directed to an electronic gaming
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machine, which is a special purpose machine that includes components such
as an input device configured to receive a physical item associated with a
monetary value, such as currency or tickets, for example.” Appeal Br. 4.
Appellant argues particularly that “[s]uch an input device is clearly not a
general-purpose computer component.” Id. Appellant continues that
claim 1 is directed to “an electronic gaming machine that includes hardware
specific to electronic gaming machines and not found on a general-purpose
computer.” Id.; see also id. at 5 (“While Appellant’s claims include
components that may be found on a general-purpose computer, the claims
taken as a whole as an ordered combination are clearly not directed to a
general-purpose computer or implementation of an abstract idea on a
general-purpose computer, but rather a special-purpose electronic gaming
machine that includes components that are NOT found on a general-purpose
computer to implement a game that is NOT a conventional process.”).
We disagree with Appellant that “an input device configured to
receive a physical item associated with a monetary value,” as claimed, is
necessarily indicative of something beyond a general-purpose computer
component. Appellant’s Specification describes that “gaming devices may
include, for example, cellular phones, laptop or desktop computers, gaming
kiosks or terminals, and/or any other suitable devices.” Spec. ¶ 62; see also
id. ¶ 97 (“Gaming devices 114 may also include one or more mobile gaming
devices 122, such as, without limitation, cellular phones, tablet computing
device, and/or laptops.”). The Specification describes that “gaming
device 114 is a computing device 300 that includes a plurality of computing
device components 302” and that “[i]n addition, gaming device 114 may
include a plurality of gaming device components 402 including a bill
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acceptor 404, a card reader 406, a barcode scanner 408, a printer 410, an
intrusion detection system 412, a randomization device 414, and an
accounting interface 416.” Id. ¶ 128. The Specification recognizes that “in
some embodiments, a gaming device 114 may not include each gaming
device component 402 illustrated in FIG. 4. For example, if gaming
device 114 is a cellular phone, gaming device 114 may not include bill
acceptor 404, card reader 406, barcode scanner 408, and/or printer 410.” Id.
¶ 129 (emphasis added).
The Specification, however, does not suggest explicitly that laptop or
desktop computers might lack a card reader 406. Indeed, the Specification
states that “in some embodiments, the functions of each omitted gaming
device component 402 may be replaced by equivalent software, hardware,
and/or firmware if desired.” Id. Accordingly, one of ordinary skill in the art
would understand from the Specification that the functionality of a card
reader may be encompassed by equivalent computer software and/or
hardware for a laptop or desktop computer.
Even to the extent that one of ordinary skill in the art would not
consider a card reader 406 to be a general purpose computer component,
Appellant’s Specification describes an embodiment in which “the player
may enter a number or other identifier associated with the player reward
card into gaming device 114, through user interface 312 for example, instead
of using card reader 406.” Spec. ¶ 131. Appellant’s Specification also
describes another embodiment in which “the player may use a near field
communication (NFC) device, such as an NFC device incorporated within
communication interface 308, to read the player reward card or data
representative of the player card.” Id. These alternative embodiments
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utilize only user interface 312 or communication interface 308 of computing
device 300. Id. ¶¶ 120, 131. Yet, these alternative embodiments for the
claimed input device remain able “to receive a physical item associated with
a monetary value” in that they are able to be presented with the physical card
for the obtainment of monetary information associated therewith. See
Oxford Lexico Dictionary, available at https://www.lexico.com/en/
definition/receive (defining “receive” as “[b]e given, presented with, or paid
(something)”). Thus, we do not agree with Appellant that the claimed input
device precludes the Examiner from interpreting the claimed electronic
gaming machine as a general purpose computer. Instead, the Specification
supports reading an “electronic gaming machine” so as to encompass a
general-purpose computer having generic computer components.
Beyond the input device configured to receive a physical item
associated with a monetary value, Appellant does not argue with any
specificity regarding any other claimed components that Appellant considers
to bring the claimed “electronic gaming machine” outside of the purview of
a general-purpose computer. In our view, the claimed physical components
of the electronic gaming machine are recited generically and encompass any
computing device that can be used to input data and store and run software.
The physical components of the gaming system are not specific to any
particular manifestation of the gaming system (e.g., a dedicated gaming
machine, versus a game played on laptop or desktop computers or tablets).
Thus, the elements of claims 1 and 19 are recited as generic computer
components that, when considered both individually and in combination, do
not implement the judicial exception with, or use the judicial exception in
conjunction with, a particular machine or manufacture that is integral to the
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claim. The recitations of the generic structures are merely instructions to
apply the judicial exception in the context of a game. Thus, the claims do
not apply, rely on, or use rules of conducting the wagering game in a manner
that imposes a meaningful limit on those aspects of the claims. See, e.g.,
Smith, 815 F.3d at 819 (“Just as the recitation of computer implementation
fell short in Alice, shuffling and dealing a standard deck of cards are ‘purely
conventional’ activities” that are not “sufficient to ‘transform’ the claimed
subject matter into a patent-eligible application of the abstract idea.”).
Rather, the claims are simply a drafting effort designed to monopolize the
rules of conducting a wagering game of claims 1 and 19.
Appellant also argues that “Appellant’s claims are similar to ‘a new
deck of cards’ as described by the Court in In re Smith in that . . .
Appellant’s claimed electronic gaming machine and method are essentially a
new electronic gaming machine and method for a statutory, special-purpose
electronic gaming machine.” Appeal Br. 9. Appellant’s analogy to Smith is
misplaced. The claim at issue in Smith was directed to a method of
conducting a wagering game. Smith, 815 F.3d at 817. The rules for playing
the game included the dealer examining hands of dealt cards to determine if
any hand has a “Natural 0” count, and either resolving wagers or continuing
play in a specific manner based on the result of this examination, and then
resolving wagers based on a specific scoring system. Id. at 817‒18. In the
rejection of the claims under 35 U.S.C. § 101, the Examiner acknowledged
that the set of rules for playing the game were new, but the Examiner found
that the rules were an abstract idea. Id. at 818. The court in Smith agreed
that the claims, “directed to rules for conducting a wagering game, compare
to other ‘fundamental economic practice[s]’ found abstract by the Supreme
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Court.” Id. at 818‒19 (alteration in original) (agreeing with the Board that
“[a] wagering game is, effectively, a method of exchanging and resolving
financial obligations based on probabilities created during the distribution of
the cards.”). The court then examined, under step two of the Alice inquiry,
whether the claim recited an inventive concept sufficient to transform the set
of rules for a game into a patent eligible application. Id. at 819. The court
found that the additional limitations in the claim recited “shuffling and
dealing a standard deck of cards.” Id. The court held that these additional
limitations are “‘purely conventional’ activities” that are not sufficient to
transform the abstract game rules into a patent-eligible application of the
abstract idea. Id. The court further explained, “[t]hat is not to say that all
inventions in the gaming arts would be foreclosed from patent protection
under § 101” and that “[w]e could envisage, for example, claims directed to
conducting a game using a new or original deck of cards potentially
surviving step two of Alice.” Id.
To the extent Appellant is arguing that “the gaming machine features
not found on a general-purpose computer are sufficient to transform the
abstract idea into a patent-eligible machine and process” (Appeal Br. 9), we
have already explained above that the claims are reasonably interpreted by
one of ordinary skill in the art in light of the Specification as extending to a
general-purpose computer and are not necessarily indicative of a special-
purpose gaming machine. To the extent Appellant is arguing that the game
implemented on the electronic gaming machine “is NOT a conventional
process” (Appeal Br. 5) so as to result in a special-purpose electronic
gaming machine, Appellant has not imposed meaningful limits on the rules
for playing and/or managing a game simply by programming a general-
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purpose computer to perform them, just as the court in Smith did not find
that the combination of the new rules for playing a game with a conventional
deck of cards created a special purpose deck of cards.
Appellant has not established adequately that the additional elements
recited in claims 1 and 19 reflect an improvement in the functioning of a
computer, or an improvement to other technology or a technical field.
Appellant asserts that “[t]he recitations of the instant claims solve a domain-
specific problem related to electronic gaming machines” and “the pending
claims are patent-eligible according to the Federal Circuit holding DDR
Holdings.” Appeal Br. 12. The claims at issue in DDR addressed the
problem of retaining website visitors who would otherwise be transported
away from the host website after clicking on an advertisement on the host
website and activating a hyperlink. DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1257 (Fed. Cir. 2014). The DDR claims describe
automatically generating a hybrid web page that permits users visiting a host
website to view and purchase products from a third-party merchant, whose
ads are displayed with hyperlinks on the host website, without leaving the
host website and entering that merchant’s website. Id. The Federal Circuit
found the claims to be directed to patentable subject matter because they
“specify how interactions with the Internet are manipulated to yield a desired
result—a result that overrides the routine and conventional sequence of
events ordinarily triggered by the click of a hyperlink.” Id. at 1258. Thus,
the solution set forth in the DDR claims “is necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks.” Id. at 1257. Appellant does not explain adequately
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how claims 1 and 19 recite a technical improvement tied to a technical
problem in the gaming arts.
We have also considered Appellant’s argument that “the fact that
Appellant’s claims do not attempt to pre-empt every application of the
alleged abstract idea weighs in favor of patent eligibility.” Appeal Br. 11.
Merely because claims do not preempt all forms of the abstraction does not
make them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1362–63 (Fed. Cir. 2015) (“[T]hat the claims do not preempt all
price optimization or may be limited to price optimization in the
e-commerce setting do not make them any less abstract.”). Moreover,
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the dispositive test for patent
eligibility. Although “preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015).
In short, 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). The
additional elements recited in claims 1and 19 merely include instructions to
implement the rules for conducting a wagering game on a computer and use
the computer as a tool to implement the rules. See MPEP § 2106.05(f)
(“Use of a computer or other machinery in its ordinary capacity for . . . tasks
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(e.g., to receive, store, or transmit data) or simply adding a general purpose
computer or computer components after the fact to an abstract idea . . . does
not provide significantly more.”). Thus, the additional elements do not add
meaningful limits to the judicial exception recited in claims 1 and 19.
Consequently, the claimed invention does not integrate the abstract idea into
a “practical application.” Thus, claims 1 and 19 are directed to an abstract
idea, which is a judicial exception to patent eligible subject matter under
35 U.S.C. § 101.
Step 2B: Do Claims 1 and 19 Recite an Inventive Concept?
We next consider whether claims 1 and 19 recite 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.
Alice, 573 U.S. at 217–18. The Revised Guidance similarly states, under
Step 2B, “examiners should . . . 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).” 84 Fed. Reg. at 56.
Appellant argues that claim 1 “recite[s] additional elements that are
more than a generic computer performing generic steps.” Appeal Br. 13. In
particular, Appellant argues that ‘the electronic gaming machine recited in
[c]laim 1 includes an input device configured to receive a physical item
associated with a monetary value . . . which is not a ‘generic’ function
performed by a general-purpose computer,” and also “includes a processor
that adds the monetary value of the physical item to a credit balance, deducts
the wager from the credit balance, presents the game to the player, and
determines an outcome based on indicia randomly selected by the machine,
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and whether a bonus indicia has been selected.” Id. Similarly, Appellant
argues that claim 19 “require[s] a special-purpose electronic gaming
machine that receives a physical item associated with a monetary value
using an input device of the electronic gaming machine” and “includes
hardware specific to a special-purpose electronic gaming machine.” Id.
at 14.
The Examiner determines that claims 1 and 19
require the additional limitations of a memory device, an input
device configured to receive a physical [i]tem associated with a
monetary value, a user interface configured to enable the player
to select a wager for at least one of the plurality of games or game
varieties and enable the player to initiate a cash out operation,
and a processor. These computer components are generically
claimed to enable the management of the game by performing
the basic functions of: (i) receiving, processing, and storing data,
and (ii) receiving or transmitting data over a network. The courts
have recognized these functions to be well-understood, routine,
and conventional functions when claimed in a merely generic
manner. As such, the recitation of the computer limitations in
[c]laims 1 [and 19] amounts to mere instructions to implement
the abstract idea on a computer.
Final Act. 10.
As discussed above, the additional elements include generic
recitations of conventional computer components. These additional
elements, when considered individually and as an ordered combination, are
well-understood, routine, conventional activity in the field. The claimed
computer components are recited at such a high level of generality as to
encompass a computer capable of being programmed with rules for
conducting the wagering game. And as discussed above, the Specification
describes that “[t]he gaming devices may include, for example, cellular
phones, laptop or desktop computers, gaming kiosks or terminals, and/or any
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other suitable devices.” Spec. ¶ 62; see also id. ¶ 97. The Specification also
supports that the claimed physical components, as properly interpreted, are
simply computer components. See, e.g., id. ¶ 131 (supporting that user
interface 312 of computing device 300 is able “to receive a physical item
associated with a monetary value,” as claimed, in that it is able to be
presented with the physical card in order to allow a player to enter an
identifier associated with the card into the gaming device for the obtainment
of monetary information associated with the card).
Claims 1 and 19 “simply append[] well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception.” See Revised Guidance, 84
Fed. Reg. at 56. For the reasons discussed above, we find no element or
combination of elements recited in claims 1 or 19 that contains any
“inventive concept” or adds anything “significantly more” to transform the
abstract concept into a patent-eligible application. Alice, 573 U.S. at 221.
For these reasons, we find no error in the Examiner’s rejection of
claims 1‒35 under 35 U.S.C. § 101.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1‒35 101 Eligibility 1‒35

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED