Ex Parte Englman et al

Patent Trial and Appeal Board

Aug 31, 2018

12161849 (P.T.A.B. Aug. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/161,849 07/23/2008
70243 7590
NIXON PEABODY LLP
70 West Madison, Suite 3500
CHICAGO, IL 60602
09/05/2018
FIRST NAMED INVENTOR
Allon G. Englman
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.
247079-000456USPX 5616
EXAMINER
MOSSER, ROBERT E
ART UNIT PAPER NUMBER
3714
NOTIFICATION DATE DELIVERY MODE
09/05/2018 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):
docketingchicago@nixonpeabody.com
ipairlink@nixonpeabody.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALLON G. ENGLMAN, MARK B. GAGNER,
BENJAMIN T. GOMEZ, and WALTER E. SMOLUCHA1
Appeal2017-000191
Application 12/161,849
Technology Center 3700
Before BRADLEY W. BAUMEISTER, STACEY G. WHITE, and
SHARON PENICK, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 30, 32, 33, 35-39, 41--45, and 47--49. Br. 10. Claims 1-
29, 31, 34, 40, and 46 previously have been cancelled. Final Action 2
(mailed Nov. 5, 2015) ("Final Act."). We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 Appellants list Bally Gaming, Inc. as the real party in interest. Appeal
Brief 3, filed December 28, 2015 ("Br.").
Appeal2017-000191
Application 12/161,849
STATEMENT OF THE CASE
Appellants describe the present invention as follows:
A method is presented for offering a wagering game
tournament to a plurality of players on a plurality of gaming
machines, which are located on a gaming network. The method
includes increasing a prize pool based on a group achievement
of the plurality of players, and [ distributing] the prize pool to at
least some of the plurality of players.
Abstract.
Independent claim 30, reproduced below, illustrates the claimed
invention:
30. A gaming system comprising:
a plurality of gaming machines on which a wagering game
tournament is offered to a plurality of players, the wagering game
tournament including a plurality of casino wagering games being
conducted during an initial game-play portion and a next game-
play portion, each game of the plurality of casino wagering
games having an initial game play configuration and an initial
volatility, each gaming machine including an electronic display
device and one or more electronic input devices; and
one or more controllers configured to:
detect, via at least one of the one or more electronic input
devices, a physical item associated with a monetary value that
establishes a credit balance,
initiate each of the plurality of casino wagering games in
response to an input indicative of a wager covered by the credit
balance,
allow a first player and a second player of the plurality of
players to participate in the wagering game tournament via
respective ones of the plurality gaming machines,
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during the initial game-play portion with the initial
volatility, provide
(a) a first score for the first player and a second score
for the second player, the first score being greater than the
second score, and
(b) an initial opportunity to modify at least one of the
first score and the second score such that the second score
becomes greater than the first score,
provide a game-enhancement parameter of a plurality of
game-enhancement parameters to at least one of the first player
and the second player,
in response to receiving the game-enhancement parameter
from the first player or the second player, the game-enhancement
parameter being distinct from the wager input, change the initial
game-play configuration to a next game-play configuration over
the course of the wagering game tournament, the next game-play
configuration including a next volatility that is greater than the
initial volatility,
based on the next volatility and during the next game-play
portion of the wagering game tournament, provide an increased
opportunity to modify at least one of the first score and the
second score such that the second score becomes greater than the
first score, the increased opportunity being greater than the initial
opportunity, and
receive, via at least one of the one or more electronic input
devices, a cashout input that initiates a payout from the credit
balance.
Claims 30, 32, 33, 35-39, 41--45, and 47--49 stand rejected under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final
Act. 2--4.
Claims 30, 32, 33, 35-39, 41--45, and 47--49 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Hughes et al. (US 2006/0178202
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Al; published Aug. 10, 2006) and Gilliland et al. (US 2005/0096121 Al;
published May 5, 2005). Final Act. 5-18.
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential).
THE PATENT-INELIGIBILITY REJECTION
Findings
The Examiner finds that the claims are directed to the abstract idea of
organizing a human activity through a plurality of steps for managing a
game play, similar to managing a game of bingo, as well as being directed to
the abstract idea of a method of organizing human activity including creating
contractual relationships. Final Act. 2-3. The Examiner additionally
concludes that the additionally recited elements, such as the gaming
machines, input devices, displays, and controllers, perform generic computer
functions that were well-understood, routine, and convention activities and,
therefore, concludes that the components do not add significantly more to
the abstract idea. Id. at 3.
Appellants present multiple arguments in relation to the 101 rejection.
App. Br. 10-22. The arguments are addressed below seriatim.
Principles of Law
The Supreme Court has set forth an analytical "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 Corp. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014)
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(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
71-73 (2012)). In the first step of the analysis, we determine whether the
claims at issue are "directed to" a judicial exception, such as an abstract
idea. Id. at 2355. If not, the inquiry ends. Thales Visionix Inc. v. U.S., 850
F.3d 1343, 1346 (Fed. Cir. 2017); Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1339 (Fed. Cir. 2016). If the claims are determined to be directed to
an abstract idea, then we consider under step two whether the claims contain
an "inventive concept" sufficient to "transform the nature of the claim into a
patent-eligible application." Alice, 134 S. Ct. at 2355 ( quotations and
citation omitted).
In considering whether a claim is directed to an abstract idea, we
acknowledge, as did the Supreme Court, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. We therefore look to whether the
claim focuses on a specific means or method that improves the relevant
technology or is instead directed to a result or effect that, itself, is the
abstract idea and merely invokes generic processes and machinery. See
Enfish, 822 F.3d at 1336.
In the second step of the Alice analysis, if applicable, we then must
consider whether the claim contains an element or a combination of
elements that is sufficient to transform the nature of the claim into a patent-
eligible application. Ultramercial, Inc. v. Hulu LLC, 772 F .3d 709, 714
(Fed. Cir. 2014); Alice, 134 S. Ct. at 2355.
In applying step two of the Alice analysis, we must
"determine whether the claim[] do[ es] significantly more than
simply describe [the] abstract method" and thus transform the
abstract idea into patentable subject matter. We look to see
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whether there are any "additional features" in the claim[] that
constitute an "inventive concept," thereby rendering the claim[]
eligible for patenting even if [it is] directed to an abstract idea.
Those "additional features" must be more than "well-understood,
routine, conventional activity."
Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328 (Fed.
Cir. 2017) ( citations omitted).
A claim that "merely require[ s] generic computer implementation[]
fail[s] to transform [an] abstract idea into a patent-eligible invention." Alice,
134 S. Ct. at 2357.
Contentions and Analysis
I.
Appellants first take issue with the Examiner's reliance on Planet
Bingo2 as evidence that the claims are directed to an abstract idea. Br. 11-
12. Appellants argue that it is improper to make a "blanket statement that
any system of managing a game ( even a bingo game) is categorically
deemed to be directed to an abstract idea." Id. Appellants also attempt to
distinguish the claims of Planet Bingo from the present claims, asserting that
the former claims were directed to "the abstract idea of 'solv[ing a]
tampering problem and also minimiz[ing] other security risks' during bingo
ticket purchases"-not to managing a bingo game. Id. at 11 ( citing Planet
Bingo, 576 F. App'x. at 1007).
Appellants' arguments are unpersuasive. Although the Planet Bingo
court did characterize that abstract idea as "solv[ing a] tampering problem
and also minimiz[ing] other security risks" (id.), the characterization of the
claims as being directed to an abstract idea was not limited to such a narrow
2 Planet Bingo, LLC. v. VKFS LLC, 576 F. App'x 1005 (Fed. Cir. 2014).
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basis. The court also stated more generally that managing/playing the game
of bingo can constitute an abstract idea. Id. at 1006--07.
Furthermore, our reviewing court subsequently reaffirmed that Planet
Bingo stood for the broader proposition that "methods of managing a game
of bingo were abstract ideas." In re Smith, 815 F.3d 816, 819 (Fed.
Cir. 2016). The Smith court additionally held that "rules for conducting a
wagering game compare to other 'fundamental economic practice[ s]' found
abstract by the Supreme Court .... [A] wagering game is, effectively a
method of exchanging and resolving financial obligations based on
probabilities created during the distribution of the cards." Id. at 818-19
( comparing Smith's claimed method of playing blackjack to the method of
exchanging financial obligations that the Alice Court found to be drawn to
an abstract idea).
II.
Appellants argue that the claims of Planet Bingo are so
distinguishable from the present claims "that any reasonable analysis must
recognize their fundamental dissimilarity and forego any shortcut that
automatically applies the logic ... of the Planet Bingo case to the current
claims." Br. 12. Specifically, Appellants assert that "bingo is thought to
have been invented in 1929 ," and "the basic character of the subject matter
claimed in Planet Bingo involved conventional bingo, with the supposedly
innovative aspects being the way in which that conventional bingo game was
managed." Id. According to Appellants, the present invention is
distinguishable because
Appellants' claimed subject matter is inextricably linked to--
and, in fact, defines-a novel and unique new wagering game,
which further includes innovative and original game rules. The
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underlying game is itself unconventional. That is, the claims do
not seek merely to manage or administer a known game, nor to
administer mere abstract ideas ( e.g., fundamental concepts,
building blocks, or basic tools of the gaming industry). The
current claims include elements that detect a physical item
establishing a credit balance on the gaming system and initiate a
wagering game on the gaming system in response to a wager
commitment.
Id. at 13.
Appellants' arguments are unpersuasive. "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." Diamond v. Diehr, 450
U.S. 175, 188-89 (1981). A novel and nonobvious claim directed to a
purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S.
at 90.
III.
Appellants argue that the claims are not directed to a method of
organizing human activities. Br. 13-15. Appellants' arguments are
unpersuasive. As noted above, our reviewing court has characterized
wagering games as methods of exchanging and resolving financial
obligations, similar to Alice's method of exchanging financial obligation.
Smith, 815 F .3d at 819. The fact that the present claims additionally recite
the machines on which the present methods of organizing human activity are
carried out does not negate the fact that the claims reasonably can be
characterized as being directed to an abstract idea. See Alice, 134 S. Ct. at
2358 ("[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention."). Rather, that
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fact indicates that further analysis is required to determine whether those
claimed gaming components add significantly more to the abstract idea.
IV.
Appellants argue that the current rejection provides no evidence that
the Examiner performed the requisite analysis of the claims as a whole.
Br. 15-17. This argument is unpersuasive. Appellants acknowledge that
their invention is directed to "a novel and unique new wagering game, which
further includes innovative and original game rules." Br. 13. That is,
Appellants acknowledge that there claims are directed to subject matter that
the courts have found to constitute an abstract idea.
The fact that the claims additionally recite computer components does
not change the propriety of the characterization of the invention. Rather,
those additional claim limitations are addressed in the second step of the
Alice framework.
V.
Appellants argue that various claim limitations do not result in the
pre-emption of any cash register or automatic teller machine, and that the
lack of pre-emption provides evidence that the claims, as a whole, are
directed to patent eligible subject matter. Br. 17-18. This argument is
unpersuasive.
To be sure, the Supreme Court has described "the concern that drives
this exclusionary principle [i.e., the exclusion of abstract ideas from patent
eligible subject matter] as one of pre-emption." See Alice, 134 S. Ct. at
2354. However, characterizing preemption as a driving concern for patent
eligibility is not the same as characterizing preemption as the sole test for
patent eligibility. As our reviewing court has explained: "The Supreme
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Court has made clear that the principle of preemption is the basis for the
judicial exceptions to patentability" and "[f]or this reason, questions on
preemption are inherent in and resolved by the§ 101 analysis." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice, 134 S. Ct. at 2354). Although "preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility." Id.
VI.
Appellants argue that the Examiner has not established
a prima facie case of patent ineligibility . . . at least because
(i) the "abstract idea" has not been identified by clear
articulation, (ii) the alleged "abstract idea" in the rejection does
not take into consideration the basic character of the subject
matter involved, (iii) the rejection is silent as to how the claims
are directed to, rather than merely involving, the alleged
"abstract idea," and (iv) the "abstract idea" to which the claims
are allegedly directed is not within the realm of abstract ideas,
in light of precedential court opinions.
Br. 20.
This argument is unpersuasive. As explained above, the abstract idea
has been identified by Appellants, as well as by the Examiner. Furthermore,
legal precedent such as Smith, Planet Bingo, and Alice provide evidence that
the claimed invention is within the realm of abstract ideas, even as
characterized by Appellants.
VII.
Appellants lastly argue (Br. 20-22) that the Examiner misinterprets
the Office's 2014 Guidance to the Examiners on how examiners are to
undertake the "significantly more" analysis for step two of the Alice
framework:
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The Appellants respectfully submit that a careful reading
of the specific instructions of the 2014 [Interim Examiner
Guidance] indicates that claims may be deemed significantly
more than a judicial exception if: 1) they are applied with or by
use of a particular machine; or 2) they include limitations that are
not just "well-known, routine and conventional" in the field of
the subject matter. It is further respectfully submitted that the
current rejection conflates these two separate criterion by
requiring structure qualifying as a "particular machine" to be also
new and unique (i.e., "other than what is well-known, routine and
conventional").
Br. 20.
Appellants' arguments are unpersuasive. In Ultramercial, our
reviewing court held that a claim is not tied to any particular novel machine
or apparatus when it merely recites a general purpose computer.
Ultramercial, 772 F.3d at 716. This holding is reiterated in the Office's
official guidance to the Examining Corps. MPEP § 2106.05(b)(I) "THE
PARTICULARITY OR GENERALITY OF THE ELEMENTS OF THE
MACHINE OR APPARATUS" (citing, inter alia, Ultramercial). As such,
Appellants have not demonstrated the Examiner erred when inquiring
whether a given claim element was well-known, routine, and conventional in
order to determine whether the claim element was directed to a particular
machine.
Conclusion
For the foregoing reasons, Appellants have not demonstrated that the
Examiner erred in determining claim 30 is directed to patent-ineligible
subject matter. We, therefore, sustain the Examiner's rejection of the claim
under 35 U.S.C. § 101, as well as that of claims 32, 33, 35-39, 41--45, and
47--49, which Appellants do not argue separately. See Br. 10-22.
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THE OBVIOUSNESS REJECTION
Findings and Contentions
The Examiner finds that Hughes, which is directed to a virtual
tournament establishment in a wagering game environment (Hughes, Title),
discloses all of the limitations of independent claim 30 except for the
requirement that
the controller is programmed to "in response to receiving a game-
enhancement parameter, from the first player or second player,
the game-enhancement parameter being distinct from the wager
input[,] change the initial gameplay configuration to a next
game-play configuration while conducting the game, the next
game-play configuration including at least the next volatility",
and explicitly presenting that ["]the opportunity to modify at
least one of the first score and the second score" is an "increased
opportunity" wherein "the increased opportunity being greater
than the initial opportunity."
Final Act. 7-8.
The Examiner further finds, though, that two features from different
embodiments of Gilliland teach these limitations. Id. at 8-9. The Examiner
additionally finds that motivation existed to modify Hughes with the two
features of Gilliland. Final Act. 9.
More particularly, Gilliland is directed towards a method for
providing multiple display interfaces for gaming devices, such as slot
machines and other wagering games. Gilliland ,r 5. The goal is "to provide
new, fun and exciting ways to display a primary or base game or a secondary
or bonus game of a gaming device, to entertain the players and to hold a
player's interest." Id. ,r 4.
In one embodiment, the gaming device enables the player
to select which interface to play. The player can play the game
for a while using one interface and then switch interfaces to
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provide a fresh display or to try to change the player's luck. The
player can then switch back to the original interface or select a
brand new interface depending upon how many interfaces the
gaming device is adapted to provide.
Id. ,r 5. The player can change the interface via a mechanical button or a
touch screen. Id. ,r 8; see also id. FIG. 3A (depicting "CHANGE
INTERFACE" input 64).
"In an alternative embodiment, the gaming device automatically
changes display interfaces without the player's input. Such automatic
change can occur" based upon random events and events relating to the
game. Id. ,r 9. "In another alternative embodiment, a component of the
game varies from interface to interface. That is, the game changes in one or
more ways based on the interface chosen and played. For example, a change
in interfaces can lead to a change in[] paytable volatility." Id. ,r 10.
The Examiner concludes
[i]t would have been obvious ... to modify Hughes to include
the volatility adjustment feature of Gilliland, since adjusting the
volatility may be viewed as a reward by the player, and/or make
the game tournament more interesting (see Gilliland, ,r 4), and
therefore players will feel rewarded and more entertained as they
continue to play.
Final Act. 9.
Appellants argue, inter alia, that the Examiner is improperly
combining features of Gilliland's distinct embodiments. Br. 22-24. In
support, Appellants argue that the manual embodiment merely discloses the
player presses a button, but does not further teach that the player provides a
game-enhancement parameter, such as a random multiplier. Id. at 23.
Appellants also argue that the embodiments in which the interface changes
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are automated, conversely fail to teach receipt of the game-enhancement
specifically from a player. Id.
Appellants further argue that "the cited art fails to disclose that the
change of configurations occurs 'over the course of the wagering game
tournament.' In fact, the rejection ignores this aspect of the claim by
broadly referring to 'while conducting the game."' Id. at 28. Appellants
urge that
Id.
Id. 29.
[t]he tournament is more than just a game and broadly
interpreting a "game" to be the same as a "tournament"
completely misses the point of the "tournament" concept.
Consistent with the "catch-up" aspect [ of Appellants' disclosed
invention], the term "tournament" loses its meaning if the
tournament is just a game. The change of volatility over the
course of the tournament requires the "tournament" for the catch-
up aspect to work as intended.
Appellants argue
the timing aspect - "over the course of the wagering game
tournament" - is required and missing from the combined
teachings of Hughes and Gilliland. Hughes, in its teachings, does
not teach anything about changes in volatility between an initial
game-play portion and a next game-play portion ( e.g., changes
between a first half and a second half of the soccer game
[disclosed in Hughes]). Neither does Gilliland, which fails to
disclose that a change of volatility must occur at a later point in
time. The rejection interjects the missing disclosure from the
present application speculating that a player of Gilliland will
change the interfaces in a next game-play portion of Hughes.
However, neither reference teaches the claimed timing aspect
"over the course of the wagering game tournament."
In the Examiner's Answer (mailed July 1, 2016) ("Ans."), the
Examiner dismisses Appellants' arguments, explaining that the
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references teach of all of the claim elements (id. at 10, 11, 13-15) and
determining that Appellants' arguments are based upon an improper
theory of bodily incorporation (id. at 12-13).
Analysis
Appellants' arguments are persuasive. The Examiner's stated
motivation for combining the references' various teachings, which was to
include a volatility adjustment feature to make the game tournament more
interesting, at best demonstrates that one or ordinary skill may have been
motivated to employ the cited features in some fashion. But the stated
motivation does not provide sufficient evidence that one of ordinary skill
would have envisioned achieving this desired goal by combining the
references' cited features specifically in the manner presently claimed. The
rejection's stated reasoning indicates that the only basis of record for
combining the teachings in this manner ( so as to change the initial game-
play configuration to a next game-play configuration specifically over the
course of a wagering game tournament) appears to be found in Appellants'
disclosure. That is, the rejection appears to be a product of impermissible
hindsight reasoning.
For the foregoing reasons, Appellants have persuaded us of error in
the Examiner's obviousness rejection of independent claim 30.
Accordingly, we do not sustain the Examiner's rejection of that claim, as
well as independent claims 39 and 45, which recite similar limitations. We
likewise do not sustain the Examiner's obviousness rejection of claims 32,
33, 35-38, 41--44, and 47--49, which depend from claim 30, 39, and 45.
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CONCLUSIONS
Appellants have not shown that the Examiner erred in rejecting claims
30, 32, 33, 35-39, 41--45, and 47--49 under 35 U.S.C. § 101.
Appellants have shown that the Examiner erred in rejecting these
same claims under 35 U.S.C. § 103.
DECISION
The Examiner's decision rejecting claims 30, 32, 33, 35-39, 41--45,
and 47--49 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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