Ex Parte DAVIS

Patent Trial and Appeal Board

Aug 10, 2018

14269923 (P.T.A.B. Aug. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/269,923 05/05/2014
25883 7590 08/14/2018
MUNCK WILSON MANDALA L.L.P
P.O. Drawer 800889
DALLAS, TX 75380
FIRST NAMED INVENTOR
MALCOLM B. DAVIS
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BRGM-32096 6889
EXAMINER
CHAN,ALLEN
ART UNIT PAPER NUMBER
3714
NOTIFICATION DATE DELIVERY MODE
08/14/2018 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):
admin@dalpat.com
eofficeaction@appcoll.com
IPdocketing@munckwilson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MALCOLM B. DA VIS
Appeal2017-009376
Application 14/269,923 1
Technology Center 3700
Before JEREMY M. PLENZLER, LISA M. GUIJT, and
SEAN P. O'HANLON, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
Final Decision rejecting claims 17, 20-32, and 35-37 under 35 U.S.C.
§ 101. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant is the Applicant, Brain Games, L.C., identified by the Appeal
Brief as the real party in interest. Br. 1.
Appeal2017-009376
Application 14/269,923
CLAIMED SUBJECT MATTER
Claims 17, 27, and 32 are independent, with claims 20-26, 28-31, and
35-37 depending from claim 17, 27, or 32. Claim 17 is representative of the
claims on appeal, and is reproduced below:
1 7. A system for simulating a gaming tournament with a
quasi-tournament utilizing a plurality of electronic game
machines wherein a plurality of human users each play a
machine-implemented game on an electronic game machine, the
system including:
a plurality of electronic game machines configured with a
machine-implemented game whereby a plurality of human users
may play the game using the electronic game machines and
wager using wagering units to participate in the quasi-
tournament, each of the electronic game machines including (i)
a display device for displaying indicia representative of a game
state, (ii) means for receiving an input from the human user in
response to a display of indicia representing a game state;
wherein the system is operative to enable a human user
entering the quasi-tournament to provide differing amounts of
value a single time as an entry fee, the differing amounts of value
corresponding to prize pots of differing value whereby the
human user is eligible to receive a payout from multiple prize
pots at the conclusion of the tournament and wherein each human
user entering the quasi-tournament is provided with the same
number of wagering units independent of the amount of value
provided by the human user;
a central processor connected to each of the electronic
game machines, the central processor operative to receive an
input from each of the electronic game machines corresponding
to the outcome of games played on the electronic game machines
by the human users and to determine one or more winners of the
quasi-tournament based upon the outcome of games played by
the human users on the electronic game machines;
wherein the human users may select, as input, after the
machine-implemented game is initiated and value received from
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Application 14/269,923
the human user, from one of at least two different potentially
winning actions at a single stage in each game played by the
human users; and
wherein the system is operative to provide a human user
winning the quasi-tournament with a payout from one or more
prize pots upon winning the quasi-tournament.
OPINION
Appellant argues claims 17, 20-32, and 35-37 as a group. 2 Br. 13-
21. We select claim 17 as representative. Claims 20-32 and 35-37 stand or
fall with claim 17. See 37 C.F.R. 4I.37(c)(l)(iv).
Under 35 U.S.C. § 101, we must first identify whether an invention
fits within one of the four statutorily provided categories of patent-
eligibility: "processes, machines, manufactures, and compositions of
matter." Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 713-714 (Fed. Cir.
2014). Here, the claims each fall within one of those categories. Section
101, however, "contains an important implicit exception [to subject matter
eligibility]: Laws of nature, natural phenomena, and abstract ideas are not
patentable." Alice Corp. Pty. Ltd. v. CLS Bankint'l., 134 S. Ct. 2347, 2354
(2014) (citing Assoc.for Molecular Pathology v. Myriad Genetics, Inc., 133
S. Ct. 2107, 2116 (2013) (internal quotation marks and brackets omitted)).
In Alice, the Supreme Court reiterated the framework set forth previously in
Mayo Collaborative Servs. v. Prometheus Labs, 132 S. Ct. 1289, 1293
(2012) "for distinguishing patents that claim laws of nature, natural
2 In its arguments, Appellant recites the limitations of claims 27 and 32 (Br.
13-15), which does not amount to separate argument for those claims. See
37 C.F.R. 4I.37(c)(l)(iv) ("A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim.").
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Appeal2017-009376
Application 14/269,923
phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts." Alice, 134 S. Ct. at 2355. We first
"determine whether the claims at issue are directed to one of those patent-
ineligible concepts." Id. If so, we "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. (quoting Mayo, 132 S. Ct. at 1298, 1297).
The Examiner finds that the steps recited in claim 17 "simply amount
to managing a tournament game, which is in essence managing a group of
players in a game (i.e.[,] organizing human activity)," and explains that
"[t]his is similar to 'managing a game of Bingo', which was determined to
be an abstract idea." Final Act. 3--4 (citing Planet Bingo, LLC v. VKGS
LLC, 576 Fed. App'x 1005 (Fed. Cir. 2014)).
Appellant disputes the Examiner's determination that claim 17 is
directed to an abstract idea, arguing that the Examiner has characterized the
claim too broadly. See Br. 16-17. There is no definitive rule to determine
what constitutes an "abstract idea." Rather, the Federal Circuit has
explained that "both [it] and the Supreme Court have found it sufficient to
compare claims at issue to those claims already found to be directed to an
abstract idea in previous cases." Enfzsh, LLC v. Microsoft Corp., 822 F.3d
1327, 1334 (Fed. Cir. 2016); see also Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (explaining that, in
determining whether claims are patent-eligible under § 101, "the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen-what prior cases were about, and
which way they were decided").
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Application 14/269,923
Regardless of the exact characterization of the abstract idea at issue in
the pending claims, we agree with the Examiner that claim 1 7 is like those at
issue in Planet Bingo. In Planet Bingo, "[t]he claims at issue recite[d]
computer-aided methods and systems for managing the game of bingo" and
included "storing a player's preferred sets of bingo numbers; retrieving one
such set upon demand, and playing that set; while simultaneously tracking
the player's sets, tracking player payments, and verifying winning numbers."
Planet Bingo, 576 Fed. App'x at 1006. Claim 17 similarly manages a
gaming tournament, including entering player entry fees, tracking play
selections, and providing a payout to a winner. We are not apprised of error
in the Examiner's determination that claim 17 is directed to an abstract idea
because Appellant does not even acknowledge, let alone address in any
persuasive manner, the Examiner's comparison of claim 17 to those found to
be directed to an abstract idea in Planet Bingo.
Appellant's arguments related to a lack of complete preemption are
also unpersuasive of Examiner error. See Br. 15. "While 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).
The Examiner additionally finds that "[t]oumament style play has
long existed in both electronic and non-electronic forms" and, rather than
being "rooted in game machine technology[,] ... the claimed game
machines merely recite technology that is generic and well known in the art
and attempt to limit the abstract idea to this technological environment."
Final Act. 5. The Examiner finds that "this electronic implementation would
be routine and conventional and would not add significantly more to the
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Application 14/269,923
abstract idea identified above." Id. Appellant does not dispute the
Examiner's findings and, instead, simply alleges that "[ t ]he gaming
machines of the present application are not generic computers, but are in fact
machines built and used specifically for gaming, rather than a general-
purpose computer on which gaming software is installed, for instance,"
without any meaningful explanation. Br. 20.
We agree with the Examiner that the additional elements of the claim
fail to transform the claim into a patent-eligible application. Claim 17
simply recites generic "game machines" that "display[] indicia
representative of a game state" and "receiv[ e] an input from the human user
in response to a display of indicia representing a game state," as well as a
generic "central processor connected to each of the electronic game
machines" with "the system ... operative to provide a human user winning
the quasi-tournament with a payout." Again, similar to Planet Bingo, "the
claims recite a generic computer implementation of the covered abstract
idea." Planet Bingo, 576 Fed. App'x at 1008.
For at least these reasons, we are not apprised of Examiner error in the
rejection of claims 17, 20-32, and 35-37.
DECISION
We AFFIRM the Examiner's decision to reject claims 17, 20-32, and
35-37 under 35 U.S.C. § 101.
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
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