Ex Parte Castle et al

Patent Trial and Appeal Board

Nov 17, 2017

13871824 (P.T.A.B. Nov. 17, 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.
13/871,824 04/26/2013 Louis J. Castle II 110184.491C1 1389
68100 7590
Seed IP Law Group LLP/Bally (110184)
701 FIFTH AVENUE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
COBURN, CORBETT B
ART UNIT PAPER NUMBER
3714
NOTIFICATION DATE DELIVERY MODE
11/21/2017 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 and ZHIHAO ZHANG
Appeal 2016-004694
Application 13/871,8241
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 and Zhihao Zhang (“Appellants”) appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision in the Final Action (dated Apr. 30, 2015,
hereafter “Final Act.”) rejecting claims 1—17, 20, 22—27, and 35—43 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 Appellants’ Appeal Brief (filed Sept.
30, 2015, hereafter “Appeal Br.”). Appeal Br. 2.
2 Claims 18, 19, 21, and 28—34 are canceled. Appeal Br. 43, 45 (Claims
App.).
Appeal 2016-004694
Application 13/871,824
SUMMARY OF DECISION
We AFFIRM.
INVENTION
Appellants’ invention relates to “methods and systems of administering
wagering games conducted live and online.” Spec. para. 2.
Claims 1 and 22 are independent. Claim 1 is illustrative of the claimed
invention and reads as follows:
1. A method of administering a wagering game, comprising:
receiving, via one or more first electronic communications
by one or more electronic gaming devices selectively operable to
communicate via one or more computer networks with one or more
game servers, information indicative of a first wager from a player;
incrementing a first pot in accordance with an amount of the
first wager, wherein the first pot contains wagers from a single live or
virtual table played by the player;
receiving, by the one or more electronic gaming devices via one
or more second electronic communications sent over the one or more
computer networks, information indicative of a second wager from the
player;
incrementing a distinct second pot in accordance with an
amount of the second wager, wherein the second pot accumulates
wagers from two or more live or virtual tables;
initiating, by the one or more game servers or the one or more
electronic gaming devices, dealing physical or virtual cards to each
player;
resolving, by the one or more game servers, the first wager
according to a set of game rules;
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
gaming devices and based at least in part on the resolving of the first
wager, indication of a first payout from the first pot to a first group of
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one or more players at the single live or virtual table at a conclusion of
each round of play;
resolving, by the one or more game servers, the second wager
according to the set of game rules;
providing, by the one or more game servers 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
and based at least in part on the resolving of the second wager, a
second payout to a second group of one or more players holding a
predetermined premium hand combination at the conclusion of each
round of play;
initiating, by the one or more game servers via one or more fifth
electronic communications sent over the one or more computer
networks to at least one of the one or more electronic gaming devices
and in response to an occurrence of a predetermined event, an
awarding of a third payout from the second pot to all players who
contributed to the second pot, wherein the predetermined event
comprises a non-gaming event that is not dependent upon any values
of the physical or virtual cards dealt to each of the one or more
players; and
taking, by the one or more game servers or the one or more
electronic devices, a rake for a rake account.
Appeal Br. 40-41 (Claims App.).
ANALYSIS
Claims 1—5, 7—17, and 20
Appellants have not presented arguments for the patentability of claims 2—5,
7—17, and 20 apart from claim 1. See Appeal Br. 11, 26. 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—5, 7—17, and 20
standing or falling with claim 1.
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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. 2; see also Appeal Br. 11. 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. 2. According to the Examiner,
independent claim 1 is “directed to the steps of administering a wagering game,
which is an abstract idea.” Id. (citing Planet Bingo, LLC v. VKGS LLC, 576 F.
App’x 1005 (Fed. Cir. 2014)). 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 the additional elements (i.e., game servers
& electronic devices) are generic computers.” Id.
Appellants argue that because the claim recites “varied and specific
interactions,” the claim “cannot be reduced to merely ‘administering a wagering
game.’” Appeal Br. 12. According to Appellants, 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 14. Thus, Appellants
contend that “the assertions of the Office are merely conclusory assertions which,
standing alone, are not ‘evidence’ supportive of aprima facie showing.” Id. at 15.
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
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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.
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, we agree with the
Examiner that claim 1 is directed to “[a] method for administering 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.
Advisory Action 2—3 (dated July 15, 2015, hereinafter “Adv. Act.”); see also Ans.
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3—\\ Spec, paras. 41, 43, 51, 56, 58, 63. The Examiner is correct in that the
method of claim 1 “involves nothing more than bookkeeping for a number of pots
in a gambling game.” See Examiner’s Answer 4, 9-10 (dated Feb. 25, 2016,
hereinafter “Ans.”). We also agree with the Examiner that the method of claim 1
“can ... be accomplished by someone using a pen and paper,” and hence, such a
method constitutes an abstract idea that “cannot be patentable without
‘significantly more.’” Id. at 4, 10 (citing CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011)).
As such, the Examiner is correct in 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 2, 9 (citing Planet Bingo, 576 F. App’x at 1008
(holding that methods of managing a game of bingo were abstract ideas)). A
comparable 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. We, thus, do
not envision how Appellants’ “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 Appellants’ claim 1 is not. The only
difference is that Appellants’ “method of administering a wagering game” employs
a conventional computerized network system.
Furthermore, we agree with the Examiner that Appellants’ claimed method
of “administering a wagering game” is similar to Alice’s issue of “organizing
human activity.” Ans. 2, 9. Specifically, “administering a wagering game” “is
drawn to an abstract idea much like Alice’s method of exchanging financial
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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, 611 (2010)); see also Ans. 8—9.
As such, in contrast to Appellants’ 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 Appeal Br. 15—20. Accordingly, we find that the Examiner’s analysis was
sufficient in this case to put Appellants on notice of the basis for the Examiner’s
determination in order to allow Appellants to recognize and seek to counter the
grounds for rejection. In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
Appellants further argue that because claim 1 recites a “specific and detailed
process” it cannot “be characterized as merely ‘administering a wagering game’”
because such “a characterization that disregards over 95% of the claim language.”
Appeal Br. 25, 36.
We are not persuaded by Appellants’ argument because despite being
specific claim 1 is still drawn to an abstract idea. In other words, a specific
abstract idea is still an abstract idea. Other cases have denied patentability of
claims as being directed towards ineligible subject matter even though they
described specific 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. “[Cjases have not distinguished among
different laws of nature according to whether or not the principles they embody are
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sufficiently narrow.” Mayo, 566 U.S. at 88—89 (citing Parker v. Flook, 437 U.S.
584 (1978) (holding narrow mathematical formula unpatentable)).
Appellants also assert 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’.” Appeal Br. 26; see also
Reply Br. 14—15 (filed Mar. 31, 2016, hereinafter “Reply Br.”).3
We do not agree with Appellants’ position that novelty should equate
patentability because such an “approach . . . would make the ‘law of nature’
exception to § 101 patentability a dead letter.” Mayo, 566 U.S. at 89; see also Ans.
18. The same argument as Appellants’ 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. 18. 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-
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
3 We note that White (US 2006/0068899 Al, pub. Mar. 30, 2006) is not part
of the instant rejection.
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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 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 Appeal Br. 34—35. In particular, we agree with the Examiner
that the generically claimed electronic devices of “game servers,” “electronic
gaming devices,” “electronic communications,” and “computer networks,” of
claim 1, constitute “generic computers claimed at a high level of generality
communicating [in] a generic network which is also claimed at a high level of
generality.” Ans. 15—16. Moreover, we note that the generically claimed
electronic devices perform generic computer functions at a high level of generality
such as displaying, transmitting, storing, retrieving and processing data through the
program that enables the operation of managing a wagering game.
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We also do not agree with Appellants’ 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.
Appeal Br. 38 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014)) (emphasis added). According to Appellants, as “any modem
computer without special programming or constmction cannot perform . . . [the
recited functions]” “the recited one or more electronic devices is not any modem
computer.” Reply Br. 9.
In DDR Holdings, the Federal Circuit found that the challenged patent was
valid because it “specified] 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 Appeal Br. 37—38. In contrast, as noted
above, in Appellants’ 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.
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
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and gaming devices unconventional so as to remove the claim from the realm of an
abstract idea. See Planet Bingo, 576 F. App’x at 1008—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, 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).
Appellants further argue 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—3. Specifically,
Appellants note, 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 consumptions and processing power requirements of. . . gaming
devices.” Id. at 4—5. As such, according to Appellants, 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 5.
We are not persuaded as Appellants’ 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
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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,4 and thus is not rooted in computer technology, as Appellants
posit. 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. See also Ans. 17.
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 a mere instruction to ‘implement] ’ an abstract idea ‘on .
. . a computer,’ . . . that addition cannot impart patent illegibility.” Alice, 134 S.
Ct. at 2358 (quoting Mayo, 566 U.S. at 84). 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
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, 566 U.S. at 72, 77). As noted above, claim 1 does not claim a
4 “‘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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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 Examiner is correct in that “[t]he 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.” Ans. 16. Here, like in Alice, the generic computers are merely
programmed to perform the task of administering a wagering game faster and more
efficient than a human. However, as the Examiner states, “that does not make the
invention patent-eligible.” Id. 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 Appellants’ contention that “no computer
software executed on a computer without specialized hardware is eligible for
patent protection.” See Appeal Br. 34 (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, 822 F.3d at 1335. 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 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 Appellants’
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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 of 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—5, 7—17, and 20 fall with claim 1.
Claim 6
Appellants restate the limitations of claim 6 and further argues that claim 5
includes additional limitations that establishes that the claim “is not within the
Court’s implicit exception to subject matter eligibility.” Appeal Br. 26—27.
We are not persuaded by Appellants’ 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). As dependent claim 6 further describes the step of providing a payout from
the first pot of claim 1, claim 6 merely further describes the abstract idea. See
Appeal Br. 41 (Claims App.). However, as noted above, a specific abstract idea is
still an abstract idea. We further agree with the Examiner that the generally
claimed electronic devices of “game servers” and “one or more additional
electronic communications sent over the one or more networks,” of claim 6,
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likewise perform generic functions of displaying, transmitting, storing, retrieving
and processing data through the program that enables the operation of managing a
wagering game. The Examiner is correct in that claim 6 merely implements the
step of providing a first payout from a first pot “by generic computers specified at
a high level of generality over a generic network also specified at a high level of
generality.” Ans. 19.
We, thus, likewise sustain the rejection of claim 6.
Claims 22—27 and 35—42
In contrast to independent claim 1, independent claim 22 is drawn to “[a]
gaming system.” Appeal Br. 43 44 (Claims App.).
Appellants rely on the arguments presented supra in the rejection of claim 1,
which, as discussed above, we have found unpersuasive. See Appeal Br. 28—31.
Furthermore, we are not persuaded by Appellants’ 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 22) 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 22 and independent method claim 1, as both
claims are directed to the same underlying invention. As the Federal Circuit has
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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, 654 F.3d at 1375—76 (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 22 that is in
effect what the claimed subject matter would entail in practice.
With respect to the rejection of dependent claims 24 and 27, Appellants for
the first time argue these claims separately. See Reply Br. 16—18. Such arguments
are untimely and will not be considered because Appellants offer no reason why
the argument was not raised in the Appeal Brief. See 37 C.F.R. §
41.41 (b)(2) (“Any argument raised in the reply brief which was not raised in the
appeal brief, or is not responsive to an argument raised in the examiner’s answer
. . . will not be considered by the Board for purposes of the present appeal, unless
good cause is shown.”); In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000).
Accordingly, for the foregoing reasons, we sustain the Examiner’s rejection
of independent claim 22, and its dependent claims 23—27 and 35—42, under
35 U.S.C. § 101 as directed to non-statutory subject matter.
Claim 43
Appellants restate the limitations of claim 43 and further argues that claim
43 includes additional limitations that establishes that the claim “is not directed to
an ineligible abstract idea.” Appeal Br. 31.
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We are not persuaded by Appellants’ argument because statements which
merely point out what a claim recites will not be considered an argument for
separate patentability of the claim. The Examiner is correct in that claim 43 further
describes the claimed “predetermined event” of claim 22 for resolving a payout
from the second pot. See Ans. 19; see also Appeal Br. 44. As such, claim 43
further describes the abstract idea. “Cases have not distinguished among different
laws of nature according to whether or not the principles they embody are
sufficiently narrow.” Mayo Collaborative Services, dba Mayo Medical
Laboratories, et al. v. Prometheus Laboratories, Inc., 566 U.S. 66, 88—89 (2012)
(citing Parker v. Flook, 437 U.S. 584 (1978) (holding narrow mathematical
formula unpatentable)). A specific abstract idea is still an abstract idea.
We, thus, likewise sustain the rejection of dependent claim 43.
SUMMARY
The Examiner’s decision to reject claims 1—17, 20, 22—27, and 35—43 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