Ex Parte Felice

Patent Trial and Appeal Board

Nov 30, 2017

13530702 (P.T.A.B. Nov. 30, 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.
06686.0001U2 1092
EXAMINER
COBURN, CORBETT B
ART UNIT PAPER NUMBER
3714
MAIL DATE DELIVERY MODE
13/530,702 06/22/2012
7590
DAVID A. FELICE
724 GREENWOOD ROAD
WILMINGTON, DE 19807
David A. Felice
11/30/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID A. FELICE
Appeal 2016-0072301
Application 13/530,7022
Technology Center 3700
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
SCHOPFER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1—10 and 12—18. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
According to Appellant, “[t]he present invention relates ... to a
system and method to permit interstate or foreign wagering from remote
1 Our decision references the Appeal Brief (“Appeal Br.,” filed Dec. 3,
2015) and Reply Brief (“Reply Br.,” filed July 18, 2016), and the
Examiner’s Answer (“Ans.,” mailed May 18, 2016) and Final Office Action
(“Final Act.,” mailed Mar. 3, 2015).
2 According to Appellant, the real party in interest is David A. Felice.
Appeal Br. 2.
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Application 13/530,702
locations where the player is enabled to establish, join and/or maintain a
business entity bestowing an intra-forum presence to the foreign or interstate
player.” Spec. 1,11. 11—14.
REPRESENTATIVE CLAIM
Claim 1 is the only independent claim on appeal and recites:
1. An automated player system adapted to enable each of the
one or more players to establish, join, or maintain a business
entity, in accordance with applicable legal authority, that will
allow wagering from any location, comprising:
a host computer associated with a! local forum, wherein
said host computer will: (1) receive requests from one or more
players to become a legally recognized member of the business
entity previously organized in the local forum; (2) authenticate
each of the one or more players as a legally recognized member
of the business entity; (3) manage betting activities of the one or
more players as individual members of the business entity,
accounting for wagers, debts, liabilities, obligations or expenses
of each of the one or more players; and (4) collect taxes or
information relating to taxable events, generate an audit-trail, and
track betting activities of each of the one or more players; and
a gaming computer operably connected with said host
computer, wherein the host computer generates at least one
authenticatable message with a token to be provided to the
gaming computer indicating that at least one of the one or more
players is deemed qualified to participate in a gaming activity for
purposes of the local forum's rules and, wherein the gaming
computer allows the at least one of the one or more players to
participate in a gaming activity; and wherein upon expiration of
the token, the gaming computer generates an inquiry notice to
the host computer requesting a status of the at least one of the
one or more players.
Appeal Br., Claims App. 1.
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REJECTION
The Examiner rejects claims 1—10 and 12—18 under 35 U.S.C. § 101
as directed to ineligible subject matter.
DISCUSSION
Appellant argues all claims as a single group. See Appeal Br. 6—17.
We select claim 1 as representative and claims 2—10 and 12—18 stand or fall
with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355.
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural
phenomenon—after all, they take place in the physical world.
See Mayo, 132 S.Ct. at 1293 (“For all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.”) Rather, the “directed to” inquiry
applies a stage-one filter to claims, considered in light of the
specification, based on whether “their character as a whole is
directed to excluded subject matter.” Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015); see
Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1375, 2016
WL 1393573, at *5 (Fed. Cir. 2016) (inquiring into “the focus of
the claimed advance over the prior art”).
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). “The
‘abstract idea’ step of the inquiry calls upon us to look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
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whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (citing Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)); Enfish,
822 F.3d at 1335.
In rejecting claim 1, the Examiner finds that claim 1 is “directed to
allowing people to gamble online though legal entity formation, which is a
method of organizing human behavior and thus an abstract idea.” Final Act.
2. The Examiner also finds that the claims are more generally directed to
“the use of the legal entity as a vehicle for wagering in a jurisdiction in
which they would not normally be able to gamble.” Adv. Act. 3.
We agree with the Examiner’s characterization of the claim and are
not persuaded by Appellant’s arguments, as discussed below.
Appellant argues that the Examiner has defined the abstract idea too
broadly. Appeal Br. 6. Appellant asserts that the Examiner erred in defining
the abstract idea to include legal entity formation and “that the definition of
the abstract idea [should] be focused on the automated player system.” Id. at
7. Appellant also argues that the claims are not directed to legal entity
formation and that a tangible tool, e.g., a business entity, cannot be included
as part of an abstract idea’s definition. Id. at 8—12.
We are not persuaded of error.
Under part one of the Alice framework, we “look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs, 838 F.3d at
1257 (quoting Elec. Power Grp., 830 F.3d at 1353). Thus, while we
consider the claim as a whole, the “directed to” inquiry focuses on the
claim’s “character as a whole.” The Specification describes that the intent of
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the invention is to provide “a system and method to permit interstate or
foreign wagering from remote locations where the player is enabled to
establish, join and/or maintain a business entity bestowing an intra-forum
presence to the foreign interstate player.” Spec. 1,11. 12—14. Claim 1 recites
a host computer and a gaming computer that perform steps to allow a user to
join a business entity, manage betting activities, collect taxes, and to
authentic users for the purpose of participating in a gaming activity. We
agree that the Examiner’s characterization of the claim is accurate and
describes the claim’s character as a whole in light of the description of the
invention in the Specification and the specific limitations of the claims.
Thus, we find that the claim is directed the use of a legal entity as a vehicle
for wagering in a jurisdiction in which the user would not normally be able
to gamble, which is a method of organizing human behavior and an abstract
idea. And more broadly, removing any reference to the legal entity, the
claims are directed to managing a user’s interstate gambling activities.
Step two of the Alice framework is “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.’” Alice, 134 S. Ct. at 2355 (citing Mayo,
566 U.S. at 72-73).
Here, the Examiner finds that claim 1 does “not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because the claims are drawn to a system that uses generic
computers to implement the abstract idea.” Final Act. 2. Additionally, the
Examiner finds that “the claims are . . . drawn to an abstract idea with little
more than an adjuration to ‘implement if.” Id.
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We agree with the Examiner and are not persuaded of error by
Appellant’s arguments, as discussed below.
Appellant argues that there are four categories of additional elements
that show the claim is directed to significantly more than the abstract idea.
Appeal Br. 12. Specifically, Appellant identifies, “(i) the existing business
entity; (ii) management of betting activities of one or more players as
individual members of the business entity; and (iii) an association with the
local forum under which laws the business entity exists[; and] (iv) the
combination of the host computer, gaming computer and business entity.”
Id.
Regarding the business entity, Appellant relies on the discussion of
business entities with respect to step-one of the Alice framework. See
Appeal Br. 13. As an initial matter, regarding this argument, it is not
precisely clear how Appellant’s arguments regarding the claimed business
entity are relevant to our analysis under Alice step two. As best we
understand, Appellant is arguing that the business entity claimed “places a
meaningful limit on the scope of the claims” and “is analogous to the
computers in Alice, the hyperlink in DDR Holdings and the markers in
Jimick to the extent that it is not part of the abstract idea.” Id. at 10.
Appellant may also be arguing that the business entity amounts to
“significantly more” because it is a tangible tool. See id. at 8—9. Regardless,
we are not persuaded that the recitation of a business entity amounts to
significantly more than the abstract idea. Even if we were to agree with
Appellant that the business entity should not and cannot be included in the
definition of the abstract idea, we are not persuaded that the use of a
business entity, either already existing or formed for the claimed purpose,
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amounts to significantly more than the abstract idea. Rather, the use of
business entities to organize human behavior is a practice long prevalent in
our system of commerce.
Next, Appellant argues that “(ii) management of betting activities of
one or more players as individual members of the business entity; and
(iii) an association with the local forum under which laws the business entity
exists” show that the claims are directed to significantly more than the
abstract idea. Appeal Br. 12—13. We are not persuaded regarding these
elements at least because Appellant does not provide any persuasive
reasoning as to why this is the case. See id. Appellant essentially states only
that the Examiner does not agree that these elements show that the claim is
directed to significantly more without an explanation as to why they do
show that.
Next, we are not persuaded by Appellant’s argument that the
combination of a host computer, gaming computer, and business entity
represent additional elements that show the claim is directed to significantly
more than the abstract idea. These elements separately do no more than
perform “purely conventional” functions. See Alice, 134 S. Ct. at 2359
(citing Mayo, 566 U.S. at 79) (internal quotations and bracketed alteration
omitted). For example, the claim does not purport to create a new type of
business entity and the host computer and gaming computer do no more than
perform basic computing functions. And considered as an ordered
combination, there is nothing added that is not already present when the
steps are considered separately. The claims do not, for example, purport to
improve the functioning of the computer processor itself. Nor do they effect
an improvement in any other technology or technical field. Instead, the
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claims at issue amount to nothing significantly more than an instruction to
apply the abstract idea using a generic computer. That is not enough to
transform an abstract idea into a patent-eligible invention. Alice, 134 S. Ct.
at 2360. Further, even if we do not include in the statement of the abstract
idea, as Appellant argues, the use of a business entity does not provide
“significantly more than the abstract idea” because we find it is as much a
generic tool for implementing the idea as the generic computer equipment.
With respect to Appellant’s argument that the claims “resolve[] a
challenge involving the inability of interstate or foreign players to remotely
participate in betting activities within a chosen forum,” we are not persuaded
that this elevates the claims to eligibility. Appeal Br. 14. Appellant asserts
that “the claimed solution is rooted in the connection of a host computer,
gaming computer and a business entity within a chosen local forum to allow
the interstate or foreign player to engage in betting activities.” Id. However,
we disagree that the problem addressed is rooted in technology or that the
claimed computers are improved in the processes claimed. Rather, the
limitations on interstate gambling that are allegedly solved by the claims
exist outside of the computing environment, as noted by the Examiner.
Final Act. 3.
Finally, we find that the claims here are reasonably analogous to
several found ineligible previously by the Federal Circuit. See, e.g.,
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) (creating a
contractual relationship); Planet Bingo, LLC v. VKGS LLC, 576 Fed. Appx.
1005 (Fed. Cir. 2014) (managing a bingo game); Priceplay.com Inc. v. AOL
Advertising, Inc., 621 Fed. Appx. 925 (Fed. Cir. 2016) (performing a sales
contract over the internet). Similar to the claims here, the claims in the cases
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cited relate to the management of human activities through generic
computing equipment.
Based on the foregoing, we are not persuaded of reversible error with
respect to the Examiner’s findings under step two of the Alice framework.
Finally, to the extent Appellant argues that the Examiner erred in not
allowing an amendment to claim 1 (see Reply Br. 11), the Appellant should
have filed a timely petition with the Director under 37 C.F.R. § 1.181. This
is a petitionable matter and not an issue for the Board to decide. See In re
Schneider, 481 F.2d 1350, 1356-57 (CCPA 1973); In reMindick, 371 F.2d
892, 894 (CCPA 1967). See also MPEP § 1002.02(c)(3).
For the reasons set forth above, we are not persuaded of error with
respect to the rejection of claim 1. Accordingly, we sustain the rejection.
We also sustain the rejection of claims 2—10 and 12—18, which fall with
claim 1.
CONCLUSION
We AFFIRM the rejection of claims 1—10 and 12—18 for the reasons
set forth above.
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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