Ex Parte Castle

Patent Trial and Appeal Board

Nov 13, 2017

13864069 (P.T.A.B. Nov. 13, 2017)

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.
13/864,069 04/16/2013 Louis J. Castle II 110184.491 3526
68100 7590 11/15/2017
Seed IP Law Group LLP/Bally (110184)
701 FIFTH AVENUE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
YEN, JASON TAHAI
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
11/15/2017 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):
Patentinfo @ SeedIP.com
marv.hein @ scientificgames.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LOUIS J. CASTLE II
Appeal 2016-004693
Application 13/864,0691
Technology Center 3700
Before STEFAN STAICOVICI, JAMES P. CALVE, and
ANTHONY KNIGHT, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Louis J. Castle II (“Appellant”) appeals under 35 U.S.C. § 134(a) from the
Examiner’s decision in the Final Action (dated May 7, 2015, hereafter “Final
Act.”) rejecting claims 1—6, 8—11, 14, 15, 18—28, 30, and 31 under 35 U.S.C. § 101
as being directed to ineligible subject matter.2 We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).
1 Bally Gaming, Inc. is the applicant as provided in 37 C.F.R. § 1.46 and is
identified as the real party in interest in Appellant’s Appeal Brief (filed Sept.
30, 2015, hereinafter “App. Br.”). App. Br. 2.
2 Claims 7, 12, 13, 16, 17, and 29 are cancelled. App. Br. 54, 55, 59 (Claims
App.).
Appeal 2016-004693
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SUMMARY OF DECISION
We AFFIRM.
INVENTION
Appellant’s invention relates to “methods and systems of administering
wagering games conducted live and online.” Spec. para. 2.
Claims 1, 18, 24, and 31 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A method of administering a wagering game, comprising:
receiving, by one or more game servers via one or more first
electronic communications sent over one or more computer networks
from one or more electronic gaming devices operable to cooperatively
execute the wagering game with the one or more game servers,
information indicative of a first wager from a player;
incrementing, by the one or more game servers, a first pot in
accordance with an amount of the first wager;
receiving, by the one or more game servers via one or more second
electronic communications sent over the one or more computer
networks from the one or more electronic gaming devices,
information indicative of a second wager from the player;
incrementing, by the one or more game servers, a second pot in
accordance with a value of the second wager;
taking, by the one or more game servers or the one or more
electronic gaming devices, a rake for a rake account from at least one
of the first wager and the second wager;
initiating, by the one or more game servers or the one or more
electronic gaming devices, dealing cards to one or more players;
providing, by the one or more game servers via one or more third
electronic communications sent over the one or more computer
networks to at least one of the one or more electronic devices and
based at least in part on resolving the first wager according to a set of
game rules, indication of a first payout from the first pot to a winning
player from the one or more players at the conclusion of each round of
play; and
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resolving, by the one or more game servers, the second wager in
accordance with the set of game rules, the resolving of the second
wager including providing, via one or more fourth electronic
communications sent over the one or more computer networks to at
least one of the one or more electronic gaming devices, indication of
at least one of:
a fixed odds payout from at least one of the rake account and
the second pot to one or more players holding a predetermined
winning hand combination; and
a progressive payout from the second pot to one or more
additional players holding a premium winning hand composition.
App. Br. 53—54 (Claims App.).
ANALYSIS
Claims 1—4, 6, 8—11, 14, and 15
Appellant has not presented arguments for the patentability of claims 2—4, 6,
8—11, 14, and 15 apart from claim 1. See App. Br. 33, 35. Therefore, in
accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select claim 1 as the
representative claim to decide the appeal of the rejection of these claims, with
claims 2-4, 6, 8—11, 14, and 15 standing or falling with claim 1.
The Examiner considered factors from the 2014 Interim Guidance on Patent
Subject Matter Eligibility (79 Fed. Reg. 74618 (December 16, 2014)) (“2014
Interim Guidance”). See Final Act. 5—\\ see also Advisory Action (dated July 22,
2015, hereinafter “Adv. Act.”). In making the rejection of claim 1, the Examiner
finds that “the claimed invention is directed to a judicial exception (i.e., a law of
nature, a natural phenomenon, or an abstract idea) without significantly more.”
Final Act. 4. According to the Examiner,
Independent claim[] 1 . . . [is] directed to an abstract idea of
administering a wagering game . . . [because] the idea is . . . similar to
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the concepts involving fundamental economic practices, e.g. see Planet
Bingo, LLC v. VKGS LLC, 576 Fed. Appx. 1005 (Fed. Cir. 2014) or
organizing human activity, e.g. administering a wagering game, as set
forth in the interim guidance on Patent Subject Matter Eligibility.
Id. at 4—5. The Examiner further finds that “the claim[] does . . . not include
additional elements that are sufficient to amount to significantly more than the
judicial exception because there are no additional elements besides the abstract
idea.” Id. at 5. The Examiner explains that although “the claim requires the
additional limitations of one or more electronic machines (e.g. game server) with a
processor, a display device, an input device, a memory device and a program,”
such “generic electronic components are claimed to perform their basic functions
of transmitting, storing, displaying, retrieving and processing data through the
program that enables the operation of the wagering game.” Id. Thus, according to
the Examiner, when “[vjiewed as a whole, the additional claim element(s) do not
provide meaningful limitation(s) to transform the abstract idea into a patent eligible
application of the abstract idea such that the claim(s) amounts to significantly more
than the abstract idea itself.” Id. at 5—6.
Appellant argues that because the claim recites “detailed interactions” as a
“very specific set of operations,” the claim “cannot be reduced to merely
‘administering a wagering game’.” App. Br. 19-20. According to Appellant, the
Examiner (1) has not “unambiguously identified” the abstract idea; (2) has failed to
indicate how the claims are “directed to” an abstract idea, rather than merely
“involving” the abstract idea; and (3) has failed to demonstrate that the concept to
which the claims are directed is within the realm of abstract ideas. Id. at 21. Thus,
Appellant contends that “the assertions of the Office are merely conclusory
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assertions which, standing alone, are not ‘evidence’ supportive of aprima facie
showing.” Id. at 22.
Section 101 of the Patent Act defines patent-eligible subject matter:
“Whoever 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 therefore, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. In interpreting this statutory
provision, the Supreme Court has held that its broad language is subject to an
implicit exception for “laws of nature, natural phenomena, and abstract ideas,”
which are not patentable. Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct.
2347, 2355 (2014).
The Supreme Court has set forth “a framework for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts.” Alice, 134 S. Ct. at 2355
(citing Mayo Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 75—78
(2012)). According to the Supreme Court’s framework, we must first determine
whether the claims at issue are directed to one of those concepts (i.e., laws of
nature, natural phenomena, and abstract ideas). Id. If so, we must secondly
“consider the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the nature of
the claim’ into a patent-eligible application.” Id. The Supreme Court characterizes
the second step of the analysis as “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible concept]
itself.’” Id.
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To that end, the first prong of the test requires us to determine whether the
challenged claims are directed to an abstract idea. In particular, claim 1 is directed
to “[a] method for administering a wagering game.” See App. Br. 53 (Claims
App.). The Examiner is correct in that claim 1 recites the abstract idea of “a
method for managing various aspects of a wagering game,” that includes, inter
alia, the steps of receiving wagers, incrementing pots, dealing cards, and resolving
wagers by providing payouts according to preset rules. See Examiner’s Answer 9
(dated Feb. 3, 2016, hereinafter “Ans.”); see also Spec, paras. 38, 40, 48, 53, 55,
60. As such, in contrast to Appellant’s position, the Examiner has properly
“identif[ ied] the features of the claim[] that . . . constitute^] the mere judicial
exception.” App. Br. 47.
We further agree with the Examiner that the limitations of claim 1 are drawn
to the similar concept of managing a bingo game, which has been held by the court
to be an abstract idea. See id. at 4, 11 (citing Planet Bingo, LLC v. VKGS LLC,
576 F. App’x. 1005, 1008 (2014) (holding that methods of managing a game of
bingo were abstract ideas)). A similar situation is present in In re Smith, 815 F.3d
816, 817 (Fed. Cir. 2016), where the Court held that “[a] method of conducting a
wagering game” including, inter alia, receiving wagers (step [b]), dealing cards
(step [c]), and providing payouts according to preset rules (steps [h], [i]), is an
abstract idea. As the terms “administer” and “conduct” are interchangeable, we do
not envision how Appellant’s “method of administering a wagering game” is
different from Smith’s “method of conducting a wagering game,” such that Smith’s
claim is within the realm of abstract ideas, but Appellant’s claim 1 is not.
Furthermore, we agree with the Examiner that Appellant’s claimed method
of “administering a wagering game” is similar to Alice’s issue of “organizing
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human activity”. Ans. 4, 11. Specifically, “administering 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,” which the Court held were
fundamental economic practices. See Smith, 815 F.3d at 819 (citing Bilski v.
Kappos, 561 U.S. 593 (2010)); see also Final Act. 5; Ans. 4.
As such, in contrast to Appellant’s position, the Examiner has (1)
“unambiguously identified” the abstract idea of managing a wagering game; (2)
indicated how the claimed steps are “directed to” an abstract idea, rather than
merely “involving” the abstract idea; and (3) demonstrated that the concept to
which the claims are directed is within the realm of cases involving abstract ideas.
See App. Br. 22—27. Accordingly, we find that the Examiner’s analysis was
sufficient in this case to put Appellant on notice of the basis for the Examiner’s
determination in order to allow Appellant to recognize and seek to counter the
grounds for rejection. In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
Appellant further argues that because claim 1 recites a “specific and detailed
process” it cannot “be characterized as merely ‘administering a wagering game’”
because such “a characterization disregards over 95% of the claim language.”
App. Br. 32—33, 49.
We are not persuaded by Appellant’s argument because the Examiner is
correct in that “despite being specific . . . [claim 1 is] . . . still drawn to an abstract
idea,” and therefore, “[a] specific abstract idea is still an abstract idea.” Ans. 12—
13. We further agree with the Examiner that the claimed steps involved various
rules for conducting a wagering game {id. at 3—4), which is an abstract idea. Smith,
815 F.3d at 818—819. Other cases have denied patentability of claims as being
directed towards ineligible subject matter even though they described specific
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methods, such as, an 11 step method in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 715 (Fed. Cir. 2014) that described “using advertising as an exchange or
currency.” Ans. 12 (citing GametekLLCv. Zyngalnc., 597 F. App’x. 644 (Fed.
Cir. 2015)). “Cases have not distinguished among different laws of nature
according to whether or not the principles they embody are sufficiently narrow.”
Mayo Collaborative Services, 566 U.S. at 88—89 (citing Parker v. Flook, 437 U.S.
584 (1978) (holding narrow mathematical formula unpatentable)).
Appellant also asserts that because the Examiner “has failed to identify any
prior art that anticipates or renders obvious” the subject of claim 1, it is not clear
how such a claim “can be both novel and non-obvious while simultaneously be[]
considered ‘well-understood, routine, and conventional’.” App. Br. 33; see also
Reply Br. 10—11 (filed Mar. 31, 2016, hereinafter “Reply Br.”).
We do not agree with Appellant’s position because such an “approach . . .
would make the ‘law of nature’ exception to § 101 patentability a dead letter.”
Mayo Collaborative Services, 566 U.S. at 89. The same argument as Appellant’s
was made in Ultramercial, but the court did not agree that “the addition of merely
novel or non-routine components to the claimed idea necessarily turns an
abstraction into something concrete.” Ultramercial, 772 F.3d at 715; see also Ans.
13. Moreover, the court stated that “any novelty in implementation of the
[abstract] idea is a factor to be considered only in the second step of the Alice
analysis.” Ultramercial, 772 F.3d at 715.
In conclusion, for the foregoing reasons, we find no error in the Examiner’s
determination that the subject matter of claim 1 is directed to an abstract idea.
Turning to the second step of Alice, we find claim 1 does not contain an
inventive concept sufficient to ‘“transform the nature of the claim’ into a patent-
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eligible application.” Alice, 134 S. Ct. at 2355. The introduction of a computer
into the claims does not alter the analysis here because
the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention. Stating an
abstract idea “while adding the words ‘apply it’” is not enough for
patent eligibility. Nor is limiting the use of an abstract idea “‘to a
particular technological environment.’” Stating an abstract idea while
adding the words “apply it with a computer” simply combines those
two steps, with the same deficient result. Thus, if a patent’s recitation
of a computer amounts to a mere instruction to “implement[t]” an
abstract idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption concern that
undergirds our § 101 jurisprudence. Given the ubiquity of computers,
wholly generic computer implementation is not generally the sort of
“additional featur [e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize the
[abstract idea] itself.”
Id. at 2358 (citations omitted). The relevant question is whether the claim here
does more than simply instruct the practitioner to implement the abstract idea on a
generic computer. Id. at 2359. We conclude that it does not.
Here, the focus of independent claim 1 is not on a specific asserted
improvement in computer capabilities; rather, it is on a process for which
computers are involved merely as a tool. Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1335-36 (Fed. Cir. 2016). The Examiner properly identifies the additional
features under Alice’s second prong. See App. Br. 47-48. In particular, the
Examiner is correct that the generically claimed electronic devices of “game
servers,” “electronic gaming devices,” “electronic communications,” and
“computer networks,” of claim 1, “perform[] generic computer functions at a high
level of generality such as displaying, transmitting, storing, retrieving and
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processing data through the program that enables the operation of managing a
wagering game.” Ans. 5.
We also do not agree with Appellant’s contention that claim 1 recites
significantly more than an abstract idea of “administering a wagering game”
because the claim
addresses problems specific to electronic gaming, and recites a
specific way of enabling one or more game servers and electronic
gaming devices to receive and act on multiple electronic
communications over one or more computer networks between
servers and/or devices in order to resolve multiple wagers and
distribute multiple pots between multiple players and multiple
gaming tables.
App. Br. 51 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed.
Cir. 2014)) (emphasis added). According to Appellant, “neither the recited game
server nor the recited electronic gaming device is any modem computer” because
they “may be specially programmed” to perform the recited functions, “thereby
creating a special purpose computer.” Reply Br. 6 (citing Spec. para. 132).
In DDR Holdings, the Federal Circuit found that the challenged patent was
valid because it “specif[ied] 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.” DDR
Holdings, 773 F.3d at 1258; see also App. Br. 50. In contrast, as noted above, in
Appellant’s claim 1, the claimed “game servers,” “electronic gaming devices,”
“electronic communications,” and “computer networks” receive, store, process,
and transmit data that does not “override[] the routine and conventional sequence
of events ordinarily triggered” by their use. Nonetheless, we appreciate that a
computer program can reconfigure any general-purpose computer, as Appellant
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contends. However, claim 1, like the claims in Planet Bingo, does not claim a
specific program that would make the functions performed by the claimed game
servers and gaming devices unconventional so as to remove the claim from the
realm of an abstract idea. See Planet Bingo, LLC, 576 F. App’x. at 1009 (“The . . .
patents do not claim the ‘accounting program,’ ‘ticket program,’ and ‘verification
program’ that Planet Bingo identifies in its briefs. Instead, the claims recite a
program that is used for the generic functions of storing, retrieving, and
verifying.”). Rather, as the Examiner correctly notes, claim 1 merely alludes to a
program used for the generic functions of receiving data (information regarding
first and second wagers), storing data, processing data (incrementing first and
second pots, taking a rake for a rake account, initiating dealing of cards, resolving
first and second wagers according to payout rules), and transmitting data
(providing payouts). See Ans. 12.
Appellant further argues that, like the claims in DDR Holdings, the invention
of claim 1 is rooted in computer technology to overcome a problem arising
specifically in the realm of computer networks. Reply Br. 2. Specifically,
Appellant notes, that due to the claimed electronic devices and their claimed
interactions, the recited method claim 1 “allows live progressing gaming . . . across
multiple properties in widely dispersed respective geographic locations” and
“reduc[es] power consumption and processing power requirements of. . . gaming
devices.” Id. at 3^4. As such, according to Appellant, because in claim 1 the
“game servers” and the “gaming devices” are “operable to cooperatively execute
the wagering game” the recited method claim 1 overcomes problems arising in the
realm of computer networks. Id. at 4.
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We are not persuaded as Appellant’s attempt to analogize the claimed
subject matter with the claims at issue in DDR Holdings is misplaced. Unlike the
situation in DDR Holdings, in which the problem of retaining website visitors was
a challenge particular to the Internet (DDR Holdings, 773 F.3d at 1257), the
problem of administering a wagering game is not a challenge particular to a
computer environment. Here, the problem addressed by claim 1 is the “inherent
house advantage” that is typical to many casino wagering games. See Spec, paras.
2-4. In other words, the problem addressed by claim 1 is that of administering
(practicing or conducting) a wagering game, which is known from pre-electronic
gaming practice, and represents the conventional business practice of exchanging
financial obligations,3 and thus is not rooted in computer technology, as Appellant
posits. Indeed, humans administering a wagering game can receive wagers from
players, increment pots, take a rake for a rake account, deal cards, and resolve the
wagers by providing payouts according to pre-established rules. As such, the
claimed invention is directed to human activity of administering a wagering game
using conventional computer technology. “[I]f a patent’s recitation of a computer
amounts to mere instruction to ‘implement]’ an abstract idea ‘on ... a computer,’
. . . that addition cannot impart patent illegibility.” Alice, 134 S. Ct. at 2358
(quoting Mayo, 132 S. Ct. at 1301). The fact that the claimed solution
involves computer technology is not surprising considering that the challenge was
to implement the pre-electronic wagering game practice on a computer. Hence, the
recitation in claim 1 directed to “gaming servers” and “gaming devices” as being
3 “A wagering game is, effectively, a method of exchanging and resolving
financial obligations based on probabilities created during the distribution of
the cards.” Smith, 815 F.3d at 818—9.
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“operable to cooperatively execute the wagering game” amounts to nothing more
than linking electronic devices to receive, process, and transmit data over a
network, and thus is “not ‘enough’ to supply an inventive concept.’” Id. at 2357
(quoting Mayo, 132 S. Ct. at 1300, 1297, 1294). As noted above, claim 1 does not
claim a specific program that would make the function performed by the claimed
game server and gaming devices unconventional to remove the claim from the
realm of an abstract idea. The test is not whether the computer, server, or network
can perform a “new” function. It is whether the function allows the computer,
server, or network to function better as a computer, network or server. Here, like
in Alice, the generic computers are merely programmed to perform the task of
administering a wagering game faster and more efficiently than a human; however,
that does not make the invention patent-eligible. In other words, when the
limitations of claim 1 are taken together as an ordered combination, claim 1 recites
an invention directed to administering the wagering game using routine or
conventional computer technology.
Moreover, we do not agree with Appellant’s contention that “no computer
software executed on a computer without specialized hardware is eligible for
patent protection.” See App. Br. 48 49 (underlining omitted). Rather, “some
improvements in computer-related technology when appropriately claimed are
undoubtedly not abstract” and that “[sjoftware can make non-abstract
improvements to computer technology just as hardware improvements can.”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). The court
defined the question “in the first step of the Alice inquiry” as being “whether
the focus of the claims is on [a] specific asserted improvement in
computer capabilities ... or, instead, on a process that qualifies as an ‘abstract
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idea’ for which computers are invoked merely as a tool.” Id. at 1335—1336.
The court found that the “plain focus of the claims” in Enfish was “on
an improvement to computer functionality itself, not on economic or other tasks for
which a computer is used in its ordinary capacity.” Id. at 1336. In Appellant’s
claim 1, the claimed “game servers,” “electronic gaming devices,” “electronic
communications,” and “computer networks” do not affect an improvement to
computer functionality itself, but instead, focus on the process (i.e., administering a
wagering game) that qualifies as an abstract idea, for which computer technology
is invoked merely as a tool.
In conclusion, for the foregoing reasons, claim 1 is directed to the abstract
idea of administering a wagering game and, when the claim elements are
considered both individually and as an ordered combination, the claim does not
recite significantly more than the abstract idea. Therefore, we sustain the rejection
under 35 U.S.C. § 101 of claim 1 as being directed to patent ineligible subject
matter. Claims 2-4, 6, 8—11, 14, and 15 fall with claim 1.
Claim 5
Appellant restates the limitations of claim 5 and further argues that claim 5
includes additional limitations that establish that the claim “is not within the
Court’s implicit exception to subject matter eligibility.” App. Br. 34.
We are not persuaded by Appellant’s argument because statements which
merely point out what a claim recites will not be considered an argument for
separate patentability of the claim. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011). The Examiner is correct in that claim 5 merely “further describes the
abstract idea.” Ans. 14. Specifically, dependent claim 5 further describes the step
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of providing a payout from the first pot of claim 1. App. Br. 54. However, as
noted above, “[a] specific abstract idea is still an abstract idea.” Ans. 15.
Moreover, we note that once more the generically claimed electronic devices of
“game servers,” “electronic devices,” “electronic communications,” and “computer
networks,” of claim 5, likewise perform generic functions of “displaying,
transmitting, storing, retrieving and processing data through the program that
enables the operation of managing a wagering game.” Ans. 5.
We, thus, likewise sustain the rejection of claim 5.
Claims 18—23
In contrast to independent claim 1, independent claim 18 is drawn to “[a]
gaming system.” App. Br. 55—56 (Claims App.).
Appellant relies on the arguments presented supra in the rejection of claim
1, which, as discussed above, we have found unpersuasive. See App. Br. 38-41.
Furthermore, we are not persuaded by Appellant’s arguments because the
introduction of a generic element, such as a server or a processor or a storage
medium that stores instructions, into an apparatus claim, has been deemed
insufficient by the Supreme Court to transform a patent-ineligible claim into one
that is patent-eligible, and it fails to do so here as well. See Alice, 134 S. Ct. at
2358. In this case, the system claim (claim 18) is no different in substance from
the method claim (claim 1). As discussed supra, the method claim recites the
abstract idea implemented on generic electronic devices and the system claim
recites several generic electronic components configured to implement the same
idea. See Alice 134 S. Ct. at 2351. In other words, we find no meaningful
distinction between independent claim 18 and independent method claim 1, as both
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claims are directed to the same underlying invention. As the Federal Circuit has
made clear “the basic character of a process claim drawn to an abstract idea is not
changed by claiming only its performance by computers, or by claiming the
process embodied in program instructions on a computer readable medium.” See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375—76 (Fed. Cir.
2011) (citing In reAbele, 684 F.2d 902 (CCPA 1982)). Stating an abstract idea
‘while adding the words ‘apply it’ is not enough for patent eligibility.” Alice, 134
at 2358 (quoting Mayo, 566 U.S. at 72). Albeit the words “apply it” are not
expressly recited in independent claim 18 that is in effect what the claimed subject
matter would entail in practice.
Accordingly, for the foregoing reasons, we sustain the Examiner’s rejection
of independent claim 18, and its dependent claims 19—23, under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Claims 24—26, 28, 30, and 31
Appellant relies on the arguments presented supra in the rejection of claims
1 and 18, which, as discussed above, we have found unpersuasive. See App. Br.
38-46.
Therefore, for the foregoing reasons, we also sustain the Examiner’s
rejection of independent claim 24, and its dependent claims 25, 26, 28, and 30, and
independent claim 31, under 35 U.S.C. § 101 as directed to non-statutory subject
matter.
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Claim 27
Appellant restates the limitations of claim 27 and further argues that claim
27 includes additional limitations that establishes that the claim “is not directed to
an ineligible abstract idea.” App. Br. 42.
We are not persuaded by Appellant’s argument because statements which
merely point out what a claim recites will not be considered an argument for
separate patentability of the claim. Lovin, 652 F.3d at 1357. The Examiner is
correct in that claim 27 merely “further describes the abstract idea.” Ans. 14.
Specifically, claim 27 further describes the step of resolving the progressive pot of
claim 24. See App. Br. 59. However, as noted above, “[a] specific abstract idea is
still an abstract idea.” See Ans. 15.
We, thus, likewise sustain the rejection of dependent claim 27.
SUMMARY
The Examiner’s decision to reject claims 1—6, 8—11, 14, 15, 18—28, 30, and
31 under 35 U.S.C. § 101 as directed to ineligible subject matter is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
17