Dean P. Alderucci et al.

Patent Trials and Appeals Board

Sep 11, 2019

13600589 - (D) (P.T.A.B. Sep. 11, 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.
13/600,589 08/31/2012 Dean P. Alderucci 09-2303-C2 2785
63710 7590 09/11/2019
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
DUFFY, DAVID W
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
09/11/2019 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):
lkorovich@cantor.com
patentdocketing@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DEAN P. ALDERUCCI, CHARLES PLOTT,
and MARK MILLER
____________

Appeal 2018-008770
Application 13/600,589
Technology Center 3700
_______________

Before JAMES P. CALVE, BRETT C. MARTIN, and LISA M. GUIJT,
Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 29–40, 47–50, and 53.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 CFPH, LLC is identified as the real party in interest. Appeal Br. 3.
2 Appeal is taken from the Final Office Action dated August 31, 2017.
Appeal 2018-008770
Application 13/600,589

2
CLAIMED SUBJECT MATTER
Claims 29, 47, and 53 are the independent claims on appeal. Claim
47, reproduced below, is exemplary of the subject matter on appeal.
47. A machine implemented method, comprising:
providing, by at least one processor of at least one
computer in electronic communication with at least one other
computer via an electronic communication network, first
electronic data comprising first information about a set of
possible outcomes of an event to users, wherein at least a part of
the first information identifies a characteristic of an actually
occurring outcome of the set of possible outcomes;
causing, by the at least one processor, indicia associated
with the set of possible outcomes to be displayed at a graphical
user interface of an electronic display device of the first remote
computer3 of a first user;
causing, by the at least one processor, graphical images
associated with the set of possible outcomes to be displayed at a
graphical user interface of an electronic display device of a
second remote computer of a second user;
after providing the first information, receiving, by the at
least one processor, electronic information about at least one
wager from the first remote computer via the electronic
communications network;
after providing the first information, receiving, by the at
least one processor, electronic information about at least one
wager from the second remote computer via the electronic
communications network;
determining, by the at least one processor, a first set of
likelihood values corresponding to the set of possible outcomes
using first wagers4 placed by the users following provision of the
first information, wherein each likelihood value of the first set of
likelihood values corresponds to a respective possible outcome
of the set of possible outcomes;

3 The claim term “the first remote computer” lacks antecedent basis.
4 The claim term “the first wagers” lacks antecedent basis.
Appeal 2018-008770
Application 13/600,589

3
determining, by the at least one processor, at least one
second likelihood value responsively to comparing the first set
of likelihood values to one or more predetermined values, the one
or more predetermined values being derived from data regarding
expected biases of the users; and
providing, by the at least one processor, second electronic
data comprising the at least one second likelihood values to at
least one computer of at least one user of the users.

THE REJECTIONS
Claims 29–40, 47–50, and 53 stand rejected under 35 U.S.C. § 101 as
directed to patent ineligible subject matter.
Claims 29–40, 47–50, and 53 stand rejected on the grounds of non-
statutory double patenting as unpatentable over: (i) claims 1–78 of U.S.
Patent No. 7,942,734; (ii) claims 1–33 of U.S. Patent. No. 8,070,595; and
(iii) claims 1–21 of U.S. Patent No. 8,257,165.

ANALYSIS
35 U.S.C. § 101
Appellants argue claims 29–40, 47–50, and 53 as a group. Appeal Br.
7–9. We select claim 47 as representative, and claims 29–40, 48–50, and 53
stand or fall with claim 47. See 37 C.F.R. § 41.37(c)(1)(iv) (2015).
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).
Appeal 2018-008770
Application 13/600,589

4
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. 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, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(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 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held 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 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
Appeal 2018-008770
Application 13/600,589

5
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
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].”’ Id. (quoting Mayo, 566 U.S. at 77
(alterations in original)). “[M]erely requir[ing] generic computer
implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“2019 Guidance”).5 Under that guidance, we first

5 Although the Examiner issued the rejection before the 2019 Guidance was
published, because the document provides the PTO’s guidance for
evaluating subject matter eligibility under existing law, the methodology set
Appeal 2018-008770
Application 13/600,589

6
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 MPEP § 2106.05(a)–(c),
(e)–(h)). 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 Guidance.

Step One: Does Claim 47 Fall within a Statutory Category of § 101?
Claim 47 recites a method and, thus, falls within the statutory
categories of 35 U.S.C. § 101.

Step 2A, Prong One: Does Claim 47 Recite a Judicial Exception?
The Examiner determines that claim 47 recites “a wagering game
method,” which is a judicial exception, namely, a mental process that “may
be done by hand with pen and paper.” Ans. 2; see also Final Act. 3. The
Examiner also determines that claim 47 recites steps for “providing data
about possible outcomes, receiving wagering information from players,
determining likelihood values for the set of outcomes and performing some

forth in the 2019 Guidance applies to examinations of all pending claims,
including those at issue in this Appeal.
Appeal 2018-008770
Application 13/600,589

7
action based on the likelihood values,” which is similar to “other
‘fundamental economic practice[s] found abstract by the Supreme Court.
Final Act. 2–3 (citing, e.g., In re Smith, 815 F.3d 816 (Fed. Cir. 2016). In re
Smith, a precedential decision, held that claims directed to rules for
conducting a wagering game are comparable to fundamental economic
practices held to be abstract by the Supreme Court. Smith, 815 F.3d at 818.
In Smith, the court held that claims directed to a “method of conducting a
wagering game” are drawn to an abstract idea much like the method of
exchanging financial obligations in Alice and the method of hedging risk in
Bilski v. Kappos, 561 U.S. 593, 611 (2010). Id. at 819. The Examiner
further determines that “the additional [claim] elements of . . . [a] processor,
[computing devices], and a display device to carry out the abstract method of
the game” are “generic computer elements,” which fail “to ‘transform’ the
claimed subject matter into a patent-eligible application of the abstract idea.”
Final Act. 3–4.
Appellants argue that the Examiner fails to state a prima facie case
because “the Examiner relies on a position that individual limitations could
be performed by a general purpose computing device.” 6 Appeal Br. 8.
We are not persuaded by Appellants’ argument. The Examiner states
a prima facie case that claim 47 recites a judicial exception by determining
that claim 47 recites a wagering game method, which is a mental process,
regardless of the Examiner’s further determination (discussed infra) that the

6 Although Appellants filed a Reply Brief, Appellants rely solely on the
arguments as presented in the Appeal Brief. See Reply Br. 2 (“[Appellants]
maintain all relevant arguments presented in the Appeal Brief.”).
Appeal 2018-008770
Application 13/600,589

8
generic computing components recited in claim 47 simply apply the abstract
idea.
We agree with the Examiner’s determination that claim 47 recites an
abstract mental process that “may be done by hand with pen and paper.”
Ans. 2. Specifically, claim 47 recites, as set forth supra, in relevant part, the
step of “providing . . . first . . . data comprising first information about a set
of possible outcomes of an event to users, wherein at least a part of the first
information identifies a characteristic of an actually occurring outcome of
the set of possible outcomes.” The Specification discloses that “an event can
have one or more possible outcomes,” wherein “a possible outcome may
include an outcome that may occur” (Spec. 72:28–29); for example, “in a
horse race with only one winner (no ties allowed), the possible outcomes
‘horse A wins’ and ‘horse B wins’ are mutually exclusive if horse A and
horse B are not the same horse” (id. at 72:30–73:1). The Specification also
discloses that “[a] characteristic of a true outcome may include a fact
relating to a true outcome, a likelihood value relating to a true outcome, or
even a true outcome itself” (id. at 74:24–26); for example, when the event is
a horse race, “a characteristic of a true outcome may include what, e.g., the .
. . age of a winning or losing horse . . . is, is not, will be, or will not be . . . or
is likely to be, is not likely to be, is likely to not be, or is not likely to not be”
(id. at 75:14–15). We agree with the Examiner that the provision of data,
without more, is a mental process, which can be accomplished in the human
mind or by pen and paper via observation, evaluation, judgment, and
opinion. See Revised Guidance, 84 Fed. Reg. at 52.
Claim 47 also recites, as set forth supra, in relevant part, the steps of
“causing . . . indicia associated with the set of possible outcomes to be
Appeal 2018-008770
Application 13/600,589

9
displayed . . . [to] a first user” and “causing . . . graphical images associated
with the set of possible outcomes to be displayed . . . to a second user.” We
agree with the Examiner that causing indicia and graphical images
associated with the set of possible outcomes to be displayed to first and
second users are also mental processes, which can be accomplished in the
human mind or by pen and paper.
Claim 47 further recites, as set forth supra, in relevant part, the steps
of “after providing the first information, receiving . . . information about at
least one wager from the first [user]” and “after providing the first
information, receiving . . . information about at least one wager from the
second [user].” We agree with the Examiner that the receipt of information
from users is a mental process, which can be accomplished in the human
mind or by pen and paper.
Claim 47 further recites, as set forth supra, in relevant part, the steps
of “determining . . . a first set of likelihood values corresponding to the set
of possible outcomes using first wagers placed by the users following
provision of the first information, wherein each likelihood value of the first
set of likelihood values corresponds to a respective possible outcome of the
set of possible outcomes” and “determining . . . at least one second
likelihood value responsively to comparing the first set of likelihood values
to one or more predetermined values, the one or more predetermined values
being derived from data regarding expected biases of the users.” The
Specification discloses that “[e]xamples of biases include, e.g., a bias toward
undervaluing very likely outcomes, or a bias toward overvaluing very
unlikely outcomes” (Spec. 89:19–20) and that “[s]ome biases may be, e.g.,
well-known and documented in psychological and scientific literature” (id.
Appeal 2018-008770
Application 13/600,589

10
at 89:31–32), or “based on at least some historical experience” (id. at 90:9).
We agree with the Examiner that making such determinations are mental
processes, which can be accomplished in the human mind or by pen and
paper.
Finally, claim 47 recites, as set forth supra, in relevant part, the step
of “providing . . . second . . . data comprising the at least one second
likelihood values to . . . at least one user of the users.” We agree with the
Examiner that the step of providing data is a mental process, which can be
accomplished in the human mind or by pen and paper.
In sum, claim 47 recites a series of steps that can be performed in the
human mind, or by a human using pen and paper, and without more, are
mental processes, or abstract ideas. CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (holding a method for verifying
the validity of a credit card transaction over the Internet as an abstract idea
capable of being performed in the human mind or by a human using pen and
paper); see also id. at 1375 (“That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.”). “Courts have
examined claims that required the use of a computer and still found that the
underlying, patent-ineligible invention could be performed via pen and paper
or in a person’s mind.” Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306,
1335 (Fed. Cir. 2015); see also Revised Guidance, 84 Fed. Reg. at 52 n.14
(“If a claim, under its broadest reasonable interpretation, covers performance
in the mind but for the recitation of generic computer components, then it is
still in the mental processes category unless the claim cannot practically be
performed in the mind.”).
Appeal 2018-008770
Application 13/600,589

11
To the extent claim 47 recites rules for playing a wagering game, for
example, by “receiving . . . information about at least one wager” from first
and second users, we determine that such rules are mental processes, and
additionally, a certain method of organizing human activity (i.e., a
fundamental economic principle), which, similar to the rules for playing
physical cards in In re Smith, is an abstract idea. See In re Smith, 815 F.3d
816 (Fed. Cir. 2016) (determining that rules for playing physical cards are
abstract ideas); see also Planet Bingo, LLC v. VKGS LLC, 576 Fed. Appx.
1005, 1007–08 (Fed. Cir. 2014) (determining that methods of managing a
bingo game are abstract ideas); see also Revised Guidance, 84 Fed. Reg. at
52 n.13 (citing Smith’s holding that rules for conducting a wagering game
are abstract in the certain methods of organizing human activity category).

Step 2A, Prong Two: Is There Integration into a Practical Application?
Following our Office guidance, having found that claim 47 recites
judicial exceptions, for example, a mental process, we are instructed next to
determine whether the claim recites “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.
We agree with the Examiner that the steps of claim 47 supra
performed “by the at least one processor”—which are in addition to the
claim recitations of an abstract idea (either a mental process or a method of
organizing human activity discussed supra), simply automate actions that
can be performed by humans, including in their minds or on pen and paper.
Final Act. 3–4 (determining that the claims “require the additional elements
of a machine, at least one processor, a second computer, and a display
Appeal 2018-008770
Application 13/600,589

12
device to carry out the abstract method of the game,” which are “generic
computer elements that merely provide normal computer functions of
sending and receiving data and displaying the data to users”). The
invocation of a generic processor is also insufficient to transform the abstract
ideas into a patent-eligible application. See, e.g., Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (“[T]he claims’
invocation of computers, networks, and displays does not transform the
claimed subject matter into patent-eligible applications. The claims at issue
do not require any nonconventional computer, network, or display
components, or even a ‘non-conventional and non-generic arrangement of
known, conventional pieces,’ but merely call for performance of the claimed
information collection, analysis, and display functions ‘on a set of generic
computer components’ and display devices. Bascom [Global Internet
Servs., Inc. v. AT&T Mobility, LLC], 827 F.3d [1341,] 1349–52 [Fed. Cir.
2016].”).
Claim 47 also recites “at least one computer in electronic
communication with at least one other computer via an electronic
communication network,” and “graphical user interface[s]” of “electronic
display device[s]” of “first [and second] remote computer[s],” which we
agree with the Examiner are also implementations of generic computing
devices to automate the mental steps of claim 47.
Our determination is supported by the Specification, which discloses,
for example, that
[i]t will be readily apparent to one of ordinary skill in the art that
the various processes described herein may be implemented by,
e.g., appropriately programmed general purposed computers,
special purpose computers and computing devices. Typically a
Appeal 2018-008770
Application 13/600,589

13
processor (e.g., one or more microprocessors, one or more
microcontrollers, one or more digital signal processors) will
receive instructions (e.g., from a memory or like device), and
execute those instructions, thereby performing one or more
processes defined by those instructions. Instructions may be
embodied in, e.g., one or more computer programs, one or more
scripts.
Spec. 10:17–24. Of course, computing components operate generically
using electronic data, as claimed.
Appellants also argue that “any issues of abstract ideas should be
moot given the absence of prior art rejections under §§ 102 and 103,”
because “the novelty and non-obviousness of the claims clearly demonstrate
that the claimed subject matter recites ‘significantly more’ and is an
‘inventive concept.’” Appeal Br. 8.
Again, we do not find Appellants’ argument persuasive. A novel and
non-obvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90. See also Diamond v. Diehr, 450 U.S.
175, 188-89 (1981) ( “The ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.”).
Accordingly, the recitation of the processor and additional computing
components for performing the various steps of claim 47 does not integrate
the abstract idea into a practical application because these limitations do not
impose any meaningful limits on practicing the abstract ideas. In other
words, the recitation of generic computing components is insufficient to
integrate the claimed wagering game method into a practical application, and
Appeal 2018-008770
Application 13/600,589

14
thus, we determine that claim 47 is directed to the abstract idea (or mental
process) of a wagering game method.

Step 2B: Does Claim 46 Recite an Inventive Concept?
We next consider whether claim 47 recites elements, which are in
addition to recitations of a mental process, individually or as an ordered
combination, that transform the abstract ideas into a patent-eligible
application, e.g., by providing an inventive concept. Alice, 573 U.S. at 217–
18.
As discussed supra, claim 47’s recitation of generic computing
components are no more than instructions to apply the judicial exception
using a generic computer. See MPEP § 2106.05(f) (“Use of a computer or
other machinery in its ordinary capacity for . . . tasks (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 (e.g., a fundamental economic
practice . . .) does not provide significantly more.”).
Further, to the extent the recitation of determining a second likelihood
value responsively to comparing a first set of likelihood values to a
predetermined value derived from data regarding expected biases of the
users is an inventive concept—which we decline to consider, such a claim
limitation is a recitation of a mental process (or abstract idea) and thus, not
considered as a recitation in addition to the mental process itself. See
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (“But, a claim for a new abstract idea is still an abstract idea.”).
In our view, claim 47 fails to add a specific limitation beyond the
judicial exceptions that is not “well-understood, routine, conventional” in the
Appeal 2018-008770
Application 13/600,589

15
field, but instead “simply appends 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. As discussed supra, the recited computing components perform generic
computing functions.
For the reasons discussed above, we find no element or combination
of elements recited in claim 46 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.
Accordingly, we sustain the Examiner’s decision rejecting claim 47,
and claims 29–40, 48–50, and 53, which fall therewith, under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter.

Non-Statutory Double Patenting
Appellants chose not to present arguments addressing the Examiner’s
rejections of claims 29–40, 47–50, and 53 on the grounds of non-statutory
double patenting; therefore, we summarily sustain these rejections. Appeal
Br. 6–9; see MPEP § 1205.02 (“If a ground of rejection stated by the
examiner is not addressed in the appellant’s brief, appellant has waived any
challenge to that ground of rejection and the Board may summarily sustain
it, unless the examiner subsequently withdrew the rejection in the
examiner’s answer.”).

DECISION
We AFFIRM the Examiner’s rejection of claims 29–40, 47–50, and
53 under 35 U.S.C. § 101 as directed to patent ineligible subject matter.
Appeal 2018-008770
Application 13/600,589

16
We AFFIRM the Examiner’s rejections of claims 29–40, 47–50, and
53 on the grounds of non-statutory double patenting as unpatentable over:
(i) claims 1–78 of U.S. Patent No. 7,942,734; (ii) claims 1–33 of U.S.
Patent. No. 8,070,595; and (iii) claims 1–21 of U.S. Patent No. 8,257,165.
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