Ex Parte GiobbiDownload PDFPatent Trials and Appeals BoardMay 28, 201910855270 - (D) (P.T.A.B. May. 28, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 10/855,270 05/27/2004 70243 7590 NIXON PEABODY LLP 70 West Madison, Suite 3500 CHICAGO, IL 60602 05/30/2019 FIRST NAMED INVENTOR John J. Giobbi 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. 247079-000107USD5 8695 EXAMINER SKAARUP, JASON M ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 05/30/2019 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 JOHN J. GIOBBI Appeal2018-004585 Application 10/855,270 Technology Center 3700 Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and BRANDON J. WARNER, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE John J. Giobbi (Appellant)1 appeals under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 89-102. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 According to Appellant, the real party in interest is Bally Gaming, Inc. Appeal Br. 1. Appeal2018-004585 Application 10/855,270 THE CLAIMED SUBJECT MATTER Claim 89, reproduced below, is illustrative of the claimed subject matter. 89. A cashless wagering game method for a gaming system, the gaming system including a processing unit, and a gaming machine including an electronic display device and an electronic input device, comprising: wirelessly communicating a personal identifier between a portable hand-held internet appliance carried by a player and the gaming machine in a gaming establishment; verifying, via a verification module, the player identity based on the personal identifier; linking the portable internet appliance to an outside non- gaming establishment financial institution via a wireless transceiver of the portable internet appliance, the linking in response to verifying the player identity; authorizing transfer of funds from an account at the non- gaming establishment financial institution to a monetary account of the player, the monetary account associated with the personal identifier and the gaming establishment; transferring funds from the monetary account of the player to a credit meter of the gaming machine; after the transferring, and in response to receiving a wager that decreases a balance on the credit meter[,] initiating play of a game of chance via the gaming machine; randomly selecting, by the processing unit, an outcome of the game of chance; displaying the outcome on the electronic display device of the gaming machine; and awarding, by the processing unit, an award in response to the outcome meeting a predetermined award criterion. 2 Appeal2018-004585 Application 10/855,270 REJECTIONS2 I. Claims 89-102 stand rejected under 35 U.S.C. § 112, second paragraph, as indefinite. II. Claims 89-102 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. III. Claims 89-102 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. IV. Claims 89-94, 99, 100, and 102 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Nguyen (US 2003/0003996 Al, pub. Jan. 2, 2003) and Barry (WO 01/025957 A2, pub. Apr. 12, 2001). V. Claims 95-98 and 101 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Nguyen, Barry, and Morita (US 2002/0006824 Al, pub. Jan. 17, 2002). 2 Appellant presents arguments contesting the Examiner's objection to the drawings. Appeal Br. 20-22; see also Final Act. 15-16. However, the propriety of the objection to the drawings under 37 C.F.R. § 1.83 is reviewable by petition (MPEP § 1002.02(c)), and is not appealable. Thus, the relief sought by Appellant should have been presented by a petition under 37 C.F.R. § 1.181 instead ofby appeal to the Board. Ex Parte Frye, 94 UPSQ2d 1072, 1077-78 (BPAI 2010) (precedential); see MPEP § 1201 (the Board will not ordinarily hear a question that is reviewable by petition); In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (citing In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971) (stating that there are many kinds of decisions made by examiners that are not appealable to the Board when they are not directly connected with the merits of issues involving rejections of claims). Accordingly, we do not review the Examiner's objection. 3 Appeal2018-004585 Application 10/855,270 DISCUSSION Rejection I -Indefiniteness In determining whether a claim is definite under 35 U.S.C. § 112, second paragraph, "[t]he USPTO, in examining an application, is obliged to test the claims for reasonable precision." In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). "[A] claim is indefinite when it contains words or phrases whose meaning is unclear." Id. at 1322 (citing MPEP § 2173.05(e)). (i) Claims 89-102 Independent claim 89 recites, in relevant part, "randomly selecting, by the processing unit, an outcome of the game of chance ... and awarding, by the processing unit, an award in response to the outcome." Appeal Br. 28, Claims App. Independent claims 94 and 100 similarly recite that "the processing unit ... randomly selects an outcome of the game of chance ... and awards an award in response to the outcome." Id. at 29, 31. The Examiner determines that "it is unclear whether the 'processing unit' is separate from the 'gaming machine' or whether the 'processing unit' is the processing unit of the gaming machine." Final Act. 21. The Examiner explains that that "processing unit 42 of gaming machine 10 seems to be the only processing unit disclosed in [Appellant's] [S]pecification which performs the claimed functions of randomly selecting an outcome of the game of chance and awarding an award in response to the outcome meeting a predetermined award criterion." Id. (citing Spec. ,-J 193); see also id. at 20- 21 ( explaining that the "[S]pecification doesn't appear to disclose a 3 In referring to the Specification, the Exarniner and Appellant cite paragraph numbers in US 2004/0214641 Al ("Spec."), the October 28, 2004 publication of the present application. See Appeal Br., Evidence App. (Ex. A). For consistency, we do the same herein. 4 Appeal2018-004585 Application 10/855,270 processing unit separate from the gaming machine that randomly selects an outcome of the game of chance, and awards an award in response to the outcome"). We agree with Appellant that the scope of the claims is sufficiently clear, such that "one of ordinary skill in the art would understand that a processing unit may reside in a [gaming] machine or outside of the machine." Appeal Br. 20. In other words, although the claim language is broad enough to encompass a processing unit that is either separate from or a part of the gaming machine, a broad claim is not necessarily indefinite. See In re Johnson, 558 F.2d 1008, 1016 n.17 (CCPA 1977); In re Miller, 441 F.2d 689,693 (CCPA 1971); In re Gardner, 427 F.2d 786, 788 (CCPA 1970). As to the Examiner's position that the Specification does not describe a processing unit separate from the gaming machine performing the gaming outcome and award functions (see Final Act. 20-21 ), we note that the question of whether the present application provides written description support for the limitations at issue is distinct from the issue of whether such limitations are indefinite. Accordingly, we do not sustain this basis for rejection of claims 89- 102 under 35 U.S.C. § 112, second paragraph, as indefinite. (ii) Additional Basis for Rejection of Claims 95-98 and 1 OJ Claims 95 and 96 recite that "the portable internet appliance communicates to the Internet in a stand alone mode." Appeal Br. 30, Claims App. (emphasis added). Claims 97, 98, and 101 similarly recite that "the portable internet appliance establishes a connection with the Internet standing alone and independent of any other device communicating with the outside non-gaming establishment financial institution over the Internet." 5 Appeal2018-004585 Application 10/855,270 Id. at 30-31 (emphasis added). The Examiner determines that the meaning of "stand alone" and "standing alone" is unclear. Final Act. 21. The Examiner explains that "the metes and bounds of the claimed limitations ... are unclear since connection to the Internet requires at least one connection to at least one other device (e.g., networking device such as a router, server or database which forms the global computer network known as 'the Internet')." Ans. 31. Appellant argues that "the term 'standing alone' ... is properly understood and described as a device that performs the claimed functions without attachment to another device." Appeal Br. 19. Appellant asserts that the claim terms "clearly require[] that the devices are capable of communication with the Internet by themselves." Id. We are not persuaded by this argument. Appellant's Specification describes that, "if the portable data unit 14 is incorporated in a portable device such as a mobile telephone or portable internet appliance, the device may link to a financial institution ( e.g., bank or credit card company) where the player has an outside account." Spec. ,-J 50. According to this description, a portable internet appliance is a device that is capable of linking to the outside financial institution. However, a portable internet appliance, such as a mobile phone, does not connect to the internet independent of any other device. For example, a mobile phone requires wireless communication equipment (e.g., wireless router/modem, access point, cellular tower) to facilitate a connection to the internet. Thus, even accepting Appellant's proffered interpretation of "stand alone" as meaning that the portable internet appliance communicates with the outside financial institution via the internet "without attachment to another device" (Appeal 6 Appeal2018-004585 Application 10/855,270 Br. 19 ( emphasis added)), it is unclear how the portable internet appliance would communicate with the internet "by [itself]" (id.) and independent of any other device. Moreover, it is unclear if there is a distinction between "stand alone mode," as recited in claims 95 and 96, and "standing alone and independent of any other device," as recited in claims 97, 98, and 101. Appellant's arguments suggest that the terms in claims 95 and 96 are intended to have the same meaning as the terms in claims 97, 98, and 101. However, reading the terms "stand alone mode" in context with the terms "standing alone and independent of any other device," the additional language in claims 97, 98, and 101 suggests that the language in claims 95 and 96 has a different meaning. As such, the claim terms are ambiguous and render the claims unclear. Appellant asserts that a person of ordinary skill in the art would understand that the portable internet appliance would possess the characteristic of communicating with the internet standing alone (i.e., without another device). See id. at 17 (asserting that "one of skill in the art would understand that these characteristics are part of a portable internet appliance"). In particular, Appellant asserts that "terms such as 'standing alone and independent of any other device' describing the internet appliance are implicit in the [S]pecification from the description of the portable data terminal 14 (internet appliance) in Fig. 2 and paragraphs 11 and 50 of the publication." Id. However, if the portable internet appliance recited in the claims implicitly communicates with the internet independent of any other device, it is unclear why the claims include an additional explicit recitation of such functionality. In other words, such language would be redundant, 7 Appeal2018-004585 Application 10/855,270 and it only creates confusion as to whether the portable internet appliance indeed performs such a function. Accordingly, we sustain the Examiner's additional basis for rejecting claims 95-98 and 101 under 35 U.S.C. § 112, second paragraph, as indefinite. Rejection II - Written Description The fundamental factual inquiry for ascertaining compliance with the written description requirement is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). "This inquiry ... is a question of fact," and "the level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology." Id. "[T]he specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed." Id. (i) First Basis for Rejection of Claims 89-102 Independent claims 89 and 94 recite, in relevant part, "a verification module." Appeal Br. 28-29, Claims App. Independent claim 100 similarly recites "a verification authentication module." Id. at 30. The Examiner finds that Appellant's Specification fails to provide sufficient written description support for these limitations. Final Act. 17. The Examiner explains that the "[S]pecification disclose[s] various verifications, e.g., the contents of the portable data unit 14, the existence of a player account or the 8 Appeal2018-004585 Application 10/855,270 identity of the player, but nowhere does ... [it] disclose 'a verification module' or 'verification authentication module' as claimed." Id. ( citing Spec. ,i,i 23, 36-38). The Examiner also explains that the "[S]pecification does not explain how to program the 'module' to perform the claimed function, nor does Appellant's [S]pecification describe the steps, procedure or acts needed to perform the claimed function." Ans. 19. According to the Examiner, the "[S]pecification does not disclose adequate structure ( e.g., a special purpose computer module and algorithm) for performing the function of verifying the player identity based on the personal identifier." Id. at 20 Appellant argues that paragraphs 37 and 38 of the Specification provide "sufficient description of the verification module or verification and authentication module as they describe the operation of verification and provide hardware (the module) that performs the operation." Appeal Br. 14; see also Reply Br. 5 (asserting that paragraphs 37 and 38 "describe the function of either the gaming machine 10 or the computer 18 that serves as a verification and authentication module"). "Appellant contend[ s] that one of ordinary skill in the art [in] understanding the function of verification would understand how to program such a module." Reply Br. 5. We agree with Appellant that the Specification provides support for the limitation in question sufficient to satisfy the written description requirement of 35 U.S.C. § 112, first paragraph. In particular, the Specification describes: After receiving the verification information, the gaming machine 10 verifies the existence of the player's account and the identity of the player. Specifically, if the player's account resides on the portable data unit 14, the gaming machine 10 compares the entered verification information with the verification information stored with the player's account. If a 9 Appeal2018-004585 Application 10/855,270 match does not exist, the gaming machine 10 rejects use of the portable data unit 14 and informs the player of the problem. If, however, a match exists, the gaming machine 10 accesses the money in the player's account so that the player may proceed to play a game at the gaming machine 10. Spec. i; 37; see also id. ir 19 (describing that "'gaming machine 10 includes a central processing unit (CPU) 42 that executes game software stored in system memory 44"). Alternatively, the Specification describes that host computer 18 can perform the verification function. Id. ,i 38. In other words, the Specification provides disclosure of the computer and algorithm in sufficient detail so as to reasonably convey to one having ordinary skill in the art, as of the filing date, that Appellant possessed the claimed subject matter of a verification module that verifies player identity based on a personal identifier. Accordingly, we do not sustain the Examiner's first basis for rejecting claims 89-102 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. (ii) Second Basis for Rejection of Claims 89-102 In contesting this basis for rejection, Appellant references certain limitations recited in independent claim 89, but otherwise presents arguments without regard to any particular claim. See Appeal Br. 14-17; Reply Br. 7-8. Thus, we select independent claim 89 as representative of the claims subject to this basis for rejection, with claims 90-102 standing or falling with claim 89. See 37 C.F.R. § 41.37(c)(l)(iv) (providing that when multiple claims subject to the same ground of rejection are argued as a group by an appellant, the Board may select a single claim from the group to decide the appeal with respect to the group as to the ground of rejection on the basis of the selected claim alone). 10 Appeal2018-004585 Application 10/855,270 Independent claim 89 recites, in relevant part, "linking the portable internet appliance to an outside non-gaming establishment financial institution via a wireless transceiver of the portable internet appliance." Appeal Br. 28, Claims App. ( emphasis added). The Examiner finds that the Specification does not sufficiently describe "the steps/procedures taken to link the portable internet appliance to an outside non-gaming establishment financial institution (i.e., a bank or credit card company) via a wireless transceiver of the portable internet appliance." Final Act. 18. The Examiner explains that "there is no disclosure of the portable internet appliance having a wireless transceiver." Ans. 22; see also id. at 26 ( explaining that the "[S]pecification does not disclose that the portable internet appliance includes a wireless transceiver"). Appellant argues that "all of the descriptions of the portable data unit 14 are capabilities of the internet appliance term[,] since paragraph 50 describes the portable data unit 14 as being incorporated in an internet appliance." Appeal Br. 15. In particular, Appellant asserts that [ o ]ne of ordinary skill in the art would understand from paragraph 50 of the printed publication that an "internet appliance" may link to a financial institution via the Internet. One of ordinary skill would understand that one common method to link via the Internet would be via a wireless transmitter such as that described in conjunction with portable data unit 14. Id. at 16; see also id. ( asserting that "detailed description of the mechanics of communicating through the Internet is not necessary since they are commonly known to one of skill in the art"). Appellant explains that "[ a ]n internet appliance is a commonly understood term of a device that standing alone (hand held device) that may communicate via the Internet." Id. at 18; 11 Appeal2018-004585 Application 10/855,270 see also id. (stating that "http://www.pcmag.com/encyclopedia/term/45 l 95/ internet-appliance defin[es] Internet Appliance as 'a device specialized for Web browsing ... Internet appliances are smartphones and handheld wireless devices such as the iPod touch' attached as Exhibit F, emphasis added)"). According to Appellant: The common understanding of an internet appliance thus are devices such as Smart Phones, PDAs, etc. which as described in the [S]pecification (Ex. A, ,-J 50, Spec., p. 16, 11. 25-27) and one of ordinary skill would understand that such devices are well known and do not require extensive description as to the communication hardware necessary for Internet capability in order to satisfy the written description requirement. Id. at 17. We are not persuaded by Appellant's arguments. Appellant's Specification describes "first wireless transceiver 12 mounted at the gaming machine 10, and a portable data unit 14 including a second wireless transceiver 16 (see FIG. 2)." Spec. ,-J 11. The Specification describes that "a wireless transmission link is established ( enabled) between the wireless transceivers 12 and 16. The wireless transmission link conveys information between the portable data unit 14 and the gaming machine 10." Id. ,-i 12. "In one embodiment, the transceivers 12 and 16 are respective radio microchips that communicate over short distances and through obstacles by means of radio waves." Id. ,-i 13. According to the Specification, "if the portable data unit 14 is incorporated in a portable device such as a mobile telephone or portable internet appliance, the device may link to a financial institution (e.g., bank or credit card company)." Id. ,-J 50 ( emphasis added). Appellant takes the position "that one of ordinary skill in the art would understand that a portable internet appliance is a portable device that 12 Appeal2018-004585 Application 10/855,270 may communicate via the Internet such as a hand-held wireless device." Reply Br. 6. According to Appellant, "one of skill in the art in [the year] 2000 reading the term 'portable internet appliance' in paragraph 50 [ would] understand that either the wireless transceiver 16 described in paragraphs 11-14 or another transceiver on the Internet appliance would connect to the Internet." Id. at 8; see also id. (asserting that "these capabilities of a portable Internet appliance were well known to those of ordinary skill in the art at the time of the invention"). However, Appellant's position lacks adequate evidentiary support. In particular, Appellant's proffered evidence of record4 is insufficient to establish that, at the time of filing the instant application, it was well known in the art that a portable internet appliance would have a wireless transceiver for establishing links with the internet. Appellant does not point to, nor do we find, any disclosure in the PCMag.com definition (Exhibit F) that the term "portable internet appliance" recited in the Specification would have been understood by one of ordinary skill in the art at the time of the invention to include devices having wireless transceivers for internet communication. Although Appellant states that Exhibit F discloses "smartphones and handheld wireless devices such as the iPod touch" (Appeal Br. 17 (boldface and underlining omitted)), we find no such disclosure in Exhibit F. Additionally, although Appellant points to the 3Com Ergo Audry as an example portable internet appliance available at the 4 We note that Appellant presents new evidence for the first time in the Reply Brief. See Reply Br. 7 (citing id., Exhibits G-I). The Patent Rules state that "[a] reply brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other Evidence." 37 C.F.R. § 41.4l(b)(l). Appellant's additional evidence is untimely, and, thus, we do not consider it. 13 Appeal2018-004585 Application 10/855,270 time of the instant invention (see id. at 18; Reply Br. 6-7), we find no disclosure in Exhibit F that the Ergo Audry included a wireless transceiver for communicating with the internet. In other words, the evidence of record is insufficient to support Appellant's position that "the devices that would be considered as portable internet appliances in 2000 are evidence that one of ordinary skill in the art would have sufficient knowledge of the components necessary to enable wireless Internet communication based on the use of that term alone." Reply Br. 7. For the above reasons, Appellant does not apprise us of error in the Examiner's finding that the disclosure of the present application fails to reasonably convey to those skilled in the art that Appellant had possession of the subject matter of claim 89. Accordingly, we sustain the Examiner's additional basis for rejecting claim 89, and claims 90-102 falling therewith, under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. (iii) Additional Basis for Rejection of Claims 95-98 and 1 OJ In contesting this basis for rejection, Appellant presents arguments without regard to any particular claim. See Appeal Br. 17-18; Reply Br. 9. We select claim 95 as representative of the claims subject to this basis for rejection, with claims 96-98 and 101 standing or falling with claim 95. The Examiner finds that the disclosure of the instant application fails to provide adequate written description support for "the portable internet appliance communicates to the Internet in a stand alone mode," as recited in claims 95 and 96, and "the portable internet appliance establishes a connection with the Internet standing alone and independent of any other device communicating with the outside non-gaming establishment financial 14 Appeal2018-004585 Application 10/855,270 institution over the internet," as recited in claims 97, 98, and 101. Final Act. 19-20. The Examiner explains that the "[S]pecification provides absolutely no disclosure of any modes of operation for the portable internet appliance (e.g., a 'stand alone mode') or establishing a connection with the Internet standing alone and independent of any other device." Ans. 29. Appellant argues that "one of skill in the art would understand that these characteristics are part of a portable internet appliance and thus the elements have sufficient written description at least with the term 'portable internet appliance' in the [S]pecification." Appeal Br. 17. Appellant asserts that the function of communicating with the internet standing alone and without another device is implicit in the Specification's disclosure of a "portable internet appliance." Id. This argument is unconvincing. As discussed above with respect to Rejection I, Appellant's Specification describes that the portable internet appliance may link to an outside financial institution (see Spec. ,i 50). However, the Specification does not provide any disclosure regarding the portable internet appliance operating in "a stand alone mode" or "establish[ing] a connection with the Internet standing alone and independent of any other device" as recited in the claims. Appellant's contention that the term "portable internet appliance" described in the Specification would implicitly possess such functionality is unconvincing because, as discussed above in connection with basis (ii), there is insufficient evidence in the record to support this position. Moreover, we note that the inclusion of the term "mode" in claims 95 and 96 suggests that the portable internet appliance has other modes of operation, possibly including a mode in which the portable internet 15 Appeal2018-004585 Application 10/855,270 appliance does not communicate with the internet standing alone ( e.g., the stand alone mode is turned off). However, there is no disclosure in the Specification regarding any operating modes for the portable internet appliance. Thus, Appellant does not apprise us of error in the Examiner's finding that the disclosure of the present application fails to reasonably convey to those skilled in the art that Appellant had possession of the subject matter of claim 95. Accordingly, we sustain the Examiner's additional basis for rejecting claim 95, and claims 96-98 and 101 falling therewith, under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Rejection III -Patent-Ineligible Subject Matter An invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court's two-step framework, described in Mayo and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework, we first determine what concept the claim is "directed to." See Alice, 573 U.S. at 219 ("On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement 16 Appeal2018-004585 Application 10/855,270 risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk."). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192 (1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267-68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that "[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We view respondents' claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula."). Having said that, the Supreme Court also indicated that a claim "seeking patent protection for that formula in the abstract ... is not accorded the protection of our patent laws, ... and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now commonplace that an application of a law of nature or mathematical formula 17 Appeal2018-004585 Application 10/855,270 to a known structure or process may well be deserving of patent protection."). If the claim is "directed to" an abstract idea, we tum to the second step of the Alice and Mayo framework, where "we must examine the elements of the claim to determine whether it contains an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent- eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A claim that recites an abstract idea must include 'additional features' to ensure 'that the [claim] is more than a drafting effort designed to monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[] fail[ s] to transform that abstract idea into a patent-eligible invention." Id. The USPTO recently published revised guidance on the application of § 101. See USPTO's January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (the "2019 Revised Guidance"). Under the 2019 Revised Guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)-(c), (e)-(h)). See 2019 Revised Guidance. 18 Appeal2018-004585 Application 10/855,270 Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds any specific limitations beyond the judicial exception that are not "well-understood, routine, conventional" in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See 2019 Revised Guidance. The Rejection and Appellant's Arguments The Examiner rejected claims 89-102 under 35 U.S.C. § 101 as being directed to a judicial exception without significantly more. See Final Act. 22-24. The Examiner explains that the claimed steps ... are similar to the claims in In re Smith[, 815 F.3d 816 (Fed. Cir. 2016)] because both the claims at issue in In re Smith and the current claims are directed to the abstract idea of rules for conducting a wagering game which compares to "fundamental economic practices". In addition, the claimed steps are directed to funds transfers, which are a fundamental economic practice similar to the intermediated settlement and risk hedging in Alice and Bilski, respectively. Thus, the claims are directed to an exception. Id. at 23; see also Ans. 16 (explaining that the claims are "directed to a process for transferring funds from a non-gaming establishment financial institution ( e.g., a bank or credit card company) to a gaming machine via a portable internet appliance in wireless communication with the gaming machine"). The Examiner also determines that the claims do not include additional elements that are sufficient to amount to significantly more than 19 Appeal2018-004585 Application 10/855,270 the judicial exception. See Final Act. 23-24. The Examiner explains that the claims include "general computer elements ( e.g., 'portable hand-held internet appliance,' 'wireless transceiver,' 'processing unit,' 'gaming machine,' 'electronic display device,' 'electronic input device,' 'credit meter,' and 'verification module.'[)]" Id. According to the Examiner, "[t]here is no indication that the combination of elements improves the functioning of a computer itself or improves any other technology. Their collective functions merely provide conventional computer implementation for the abstract ideas of transferring funds and conducting a wagering game." Id. at 24. Appellant argues that "the claims are directed toward ... specific machine elements that in combination are a system that operates to allow payment for playing a wagering game via a handheld internet appliance, and cannot properly be said to be 'directed to' an abstract idea." Appeal Br. 9. Appellant asserts that "the claims at issue are directed to a particular inventive embodiment of a gaming system having technical features to allow transfer of monetary information from an outside financial institution to enable the operating of a wagering game." Id. Appellant asserts: The claims at issue constitute "improvements to another technology or technical field" and as such are significantly more than the abstract concept. Viewed as a whole, the claims are directed toward improving the technical field of gaming systems. The improvement involves using a portable hand-held internet appliance to initiate wireless communication to allow verification of a personal identifier to allow the transfer [ ofJ funds to a gaming machine from a nongaming establishment financial institution to initiate the operation of the gaming machine. Id. at 12. 20 Appeal2018-004585 Application 10/855,270 (1) Do the claims recite an abstract idea? Independent claim 89 recites "[a] cashless wagering game method for a gaming system, the gaming system including a processing unit, and a gaming machine including an electronic display device and an electronic input device," and then proceeds to recite several steps related to verifying a player's identity, transferring funds to a player account for use with the gaming machine, and initiating a game on the gaming machine. Appeal Br 28, Claims App.5 In particular, claim 89 recites steps of communicating a player's personal identifier, verifying the player's identity, linking to an outside financial institution, authorizing a funds transfer from the outside financial institution to a monetary account of the player associated with a gaming establishment, transferring the funds to the monetary account, and transferring funds from the monetary account to a gaming machine. Id. Claim 89 also recites steps of receiving a wager and initiating a game of chance via the gaming machine, randomly selecting an outcome of the game, displaying the outcome, and awarding an award in response to the outcome. Id. We agree with the Examiner that such limitations pertain to fundamental economic principles or practices and rules for conducting a wagering game. See Final Act 23. Our reviewing court has identified such certain methods of organizing human activity as representing abstract ideas. See Alice, 573 U.S. at 219-20 (concluding that use of a third party to mediate settlement risk is a "fundamental economic practice" and thus an abstract idea); id. ( describing the concept of risk hedging identified as an abstract idea in Bilski 5 Each of independent claims 94 and 100 recites "[a] cashless gaming system" that performs functions that are substantially similar to the steps recited in claim 89. Appeal Br. 29-31, Claims App. 21 Appeal2018-004585 Application 10/855,270 as "a method of organizing human activity"); Bilski, 561 U.S. at 611-12 ( concluding that hedging is a "fundamental economic practice" and therefore an abstract idea); Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378-79 (Fed. Cir. 2017) (holding that a concept of "local processing of payments for remotely purchased goods" is a "fundamental economic practice, which Alice made clear is, without more, outside the patent system."); Smith, 815 F.3d at 818 (concluding that "[a]pplicants' claims, directed to rules for conducting a wagering game" are abstract). In other words, the instant claims recite subject matter falling within one of the enumerated groups of abstract ideas (namely, certain methods of organizing human activity) described in the 2019 Revised Guidance. See 2019 Revised Guidance, 84 Fed. Reg. at 52. (2) Do the claims recite additional elements that integrate the judicial exception into a practical application? Independent claim 89 additionally recites a portable hand-held internet appliance having a wireless transceiver, a gaming machine having an electronic display device, an input device, and a credit meter, a verification module, and a processing unit. See Appeal Br. 28, Claims App. Independent claims 94 and 100 recite substantially similar limitations. Id. at 29-31. Appellant's Specification describes that"[ c Jashless gaming systems and player tracking systems generally require a player to insert a portable data unit, such as a smart card, magnetic stripe card, ticket, or the like, into a data unit reader at a gaming machine" (Spec. ,i 2), but there are drawbacks associated with such an arrangement (id. ,i 3). In particular, manually inserting and removing a portable data unit into a reader may be inconvenient to the player, especially given that data readers are often placed 22 Appeal2018-004585 Application 10/855,270 in awkward locations. Id. The player may also forget to remove the data unit when finished with a gaming session, leaving the data unit vulnerable to use by other players. Id. Although a string or chain attached to the data unit can be used to prevent it from being forgotten by the player, the string or chain may obscure the gaming machine display as the player plays. Id. The Specification describes that the claimed invention is intended to address the "need ... for a portable data unit that can communicate with a gaming machine without inserting the data unit into a data unit reader." Id. ,i 4. In particular, the Specification describes a system and method for communicating between a portable data unit and gaming machine using wireless transceivers. Id. ,i 5. According to the Specification, "[i]n response to positioning the portable data unit in proximity to the gaming machine, without inserting the portable data unit into any portion of the gaming machine, a wireless transmission link is established between the first and second wireless transceivers." Id.; see also id. (describing that "[i]nformation is transmitted between the portable data unit and the gaming machine via the wireless transmission link for such purposes as cashless gaming, player tracking, game customization, and data transfer"). Reading the instant claims as a whole in view of the Specification, we are persuaded by Appellant's argument that the Examiner erred in determining that the claims are "directed to" an abstract idea. See Appeal Br. 9. Applying the 2019 Revised Guidance, the claims integrate the recited abstract idea into a practical application-the claims provide an improvement in a technical field, i.e., improving the way that a wagering game player interacts with a gaming rnachine by using wireless transceivers to communicate between a portable data unit and a gaming machine, thereby 23 Appeal2018-004585 Application 10/855,270 providing cashless gaming that avoids the inconveniences and dravvbacks associated with manually inserting a portable data unit into a data reader. See MPEP § 2106.05(a) ("Improvernents to the Functioning of a Computer or to Any Other Technology or Technical Field"); see also, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016) (holding that the claim in that case is directed to a technological improvement over existing 3-D animation techniques and, therefore, not directed to an abstract idea); BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1351 (Fed. Cir. 2016) (holding that the '606 patent is claiming a technology-based solution (not an abstract idea based solution) to filter content on the Internet that overcomes existing problerns with other Internet filtering systems). On the present record, the Exarniner has not sufficiently explained why, in view of the express claim language read in light of the above-referenced portions of the Specification, the claimed invention would not be considered an improvement in technology or a technical field. In short, although the claims recite a judicial exception (here, an abstract idea in the form of fundamental economic principles or practices and rules for conducting a wagering game), the claims as a whole also recite additional elements that integrate the recited abstract idea into a practical application, such that the claims are not simply "directed to" the recited judicial exception itself. See 2019 Revised Guidance. Accordingly, we do not sustain the rejection of independent claims 89, 94, and 100, or their dependent claims 90-93, 95-99, 101, and 102, under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. 24 Appeal2018-004585 Application 10/855,270 Rejection IV- Obviousness based on Nguyen and Barry In contesting this rejection, Appellant presents arguments for independent claim 89, and does not separately argue claims 90-94, 99, 100, and 102. See Appeal Br. 22-25. We select claim 89 as representative of the claims subject to this rejection, with claims 90-94, 99, 100, and 102 standing or falling with claim 89. The Examiner finds that Nguyen discloses, in relevant part, "authorizing a transfer of funds from a financial institution to a monetary account of the player (paragraphs 29, 32 and 40) such that the player may use the funds in the monetary account to play the gaming machine (paragraphs 40 and 41 ). " Final Act. 25. The Examiner also finds that Nguyen teaches using the wireless communication device to transfer a cash balance from the wireless device to the credit of a particular gaming machine ... and for communicating a personal identifier with the gaming machine (paragraph 43), [but] Nguyen fails to explicitly teach wirelessly communicating a personal identifier between a portable hand-held internet appliance carried by the player and a gaming machine in a gaming establishment. Id. at 26. However, the Examiner finds that Barry teaches a gaming machine (Fig. 2A and its related description of slot machine 7 5) and wirelessly communicating a personal identifier (page 7, lines 39 to 40 and page 8, line 5 along with Fig. 2B) between a portable hand-held internet appliance (e.g., a ring, PDA, cell phone or other wireless identification device) carried by the player and the gaming machine (e.g., slot machine 75) to identify the player and to effect financial transactions authorized by that player (page 8, line 37 - page 9, line 3 along with Fig. 2B). Id. The Examiner determines that it would have been obvious to modify Nguyen's gaming method and system "to incorporate the wireless 25 Appeal2018-004585 Application 10/855,270 communication of a personal identifier between a portable hand-held internet appliance ( e.g., cell phone) carried by the player and a gaming machine ... to automatically identify and profile the player, e.g., for marketing purposes, without inconveniencing or compromising the security of that player." Id. (citing Barry 2, 11. 1-3, 18-24; 8, 11. 30-35). The Examiner explains that "one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention." Id. at 27. Appellant argues that Nguyen discloses transferring funds directly to a cell phone or a gaming machine, but not to a monetary account associated with the personal identifier and the gaming establishment. Appeal Br. 22-23 (citing Nguy en ,i,i 2 9, 3 2). Appellant asserts that "receipt of funds by the cell phone does not constitute a monetary account associated with the gaming establishment since the cell phone is only associated with the player and not the gaming establishment." Id. at 23. According to Appellant, "there is no intermediate player account associated with the gaming establishment in Nguyen, funds are dispensed from the cell phone which acts as electronic cash to the slot machine." Id. (citing Nguyen ,i 32). We are not persuaded by Appellant's argument. As discussed above, the Examiner finds that Nguyen teaches transferring funds from a financial institution to a player monetary account for use with gaming machines. See Final Act. 25 (citing Nguyen ,i,i 29, 32, 40, 41 ). In this regard, Appellant observes that Nguyen discloses an embodiment in which funds are transferred to a cell phone. See Appeal Br. 22-23 (quoting Nguyen ,i 32). However, Nguyen also discloses an 26 Appeal2018-004585 Application 10/855,270 embodiment in which "the bank or a similar financial center or agency wires the transaction amount to a particular branch of the casino if appropriate, for the benefit of the patron under his identification number." Nguyen ,i 40 ( emphasis added); see also id. ,i 34 ( disclosing that "funds are transferred to the casino on behalf of the player rather than to the wireless communication device of the player" (emphasis added)). Appellant argues that "Nguyen does not disclose communicating a personal identifier between the portable, hand-held internet appliance carried by a player and a gaming machine, and then linking the appliance to a financial institution on authentication of player identity." Appeal Br. 24. Appellant also argues that Barry "only discloses use of a wireless interface with a PDA or phone, and nothing indicates that a personal identifier is communicated for the purpose of initiating a financial transfer." Id. ( citing Barry 8, 1. 37-9, 1. 5). We are not persuaded by these arguments because they attack the references individually rather than as combined by the Examiner in the rejection. "Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ( citing In re Keller, 642 F .2d 413, 425 (CCP A 1981)). As discussed, above, the Examiner does not rely on Nguyen for disclosing that a portable hand-held internet appliance communicates the personal identifier to the gaming machine, and does not rely on Barry alone for disclosing communicating a personal identifier for the purpose of initiating a financial transfer based on player identification. See Final Act. 25-26. Rather, the Examiner relies on Nguyen for disclosing a method that 27 Appeal2018-004585 Application 10/855,270 includes linking a wireless communication device to a financial institution, communicating a personal identifier to the gaming machine for player identity verification, and authorizing a transfer of funds to the player's account. See id. at 25-26. The Examiner relies on Barry for disclosing the use of a portable hand-held internet appliance to wirelessly communicate a personal identifier to a gaming machine. See id. at 26. In this regard, Appellant's arguments against Nguyen and Barry individually are not responsive to the rejection as presented, which is based on a combination of the references' teachings. Appellant argues that "there is no reason provided why one of skill would combine the features of Barry relating to individual game promotions to the financial transactions taught by Nguyen." Appeal Br. 24-25. Appellant asserts that "Nguyen discloses contact with the financial institution first from the cellular telephone[,] and thus there would be no reason to incorporate the Barry feature of identification communication to a gaming terminal with Nguyen." Id. at 25. According to Appellant, "such a combination would communicate the player identification information to the gaming terminal after authentication occurs and not before as required by the claims." Id. We are not persuaded by this line of argument because it does not specifically address the Examiner's reasoning articulated in support of the conclusion of obviousness. As discussed above, the Examiner determines that, based on the teachings of Barry, it would have been obvious to modify the gaming method and system of Nguyen to include communicating the personal identifier wirelessly to the gaming machine in order to identify and profile a player for marketing, while maintaining player security and convenience. 28 Appeal2018-004585 Application 10/855,270 See Final Act. 26. The Examiner also reasons that the claimed subject matter is merely a combination of known elements yielding predictable results. See id. at 26-27; see also KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 415-416 (2007) ("The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results."). In this regard, Appellant does not specifically address or identify a flaw in the Examiner's reasoning. Appellant argues that "Nguyen teaches away from the monetary account element of the present claims as it discloses 'now that the cell phone has received funds, they maybe dispensed in any manner desired by the player."' Appeal Br. 23 ( quoting Nguyen ,i 32). Appellant asserts that "Nguyen teaches away from the claims [because] the disclosed cellular telephone provides identification information directly to the financial center to authorize transfer of funds to a gaming machine." Id. at 24 ( citing Nguyen ,i,i 5-6). Appellant also asserts that "Barry teach[ es] away from the identification being transmitted wirelessly, because the identification is determined from a card reader, smart card or plastic ring." Id. ( citing Barry 7-8). These arguments are unconvincing. A reference teaches away from a claimed invention or a proposed modification if "a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (citing In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Prior art does not teach away from claimed subject matter merely by disclosing a different solution to a similar problem unless the prior art also criticizes, discredits, or otherwise 29 Appeal2018-004585 Application 10/855,270 discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, Appellant does not point to, nor do we find, any disclosure in Nguyen or Barry criticizing, discrediting, or otherwise discouraging the combination of teachings proposed by the Examiner in the rejection. The fact that Nguyen discloses a cell phone providing identification data directly to a financial institution and transfeffing funds to the cell phone does not constitute a teaching away from transfeffing funds to a player account at the casino. In fact, as discussed above, Nguyen also discloses an embodiment in which the financial institution "wires the transaction amount to a particular branch of the casino if appropriate,for the benefit of the patron under his identification number," rather than to the player's wireless communication device. Nguyen ,i,i 34, 40 ( emphasis added). Similarly, the fact that Barry discloses that a smart card or a ring may be used for player identification does not constitute a teaching avvay from wirelessly communicating player identification data. Barry actually teaches wireless transmission. See Barry 7:39-40 (referring to reading "a wireless identification device"); 8:5 ( disclosing that the identification element is a plastic ring that comprises a wireless smart-card integrated circuit); 8: 12-23 ( discussing a plastic pinky ring with a wireless smart chip for identifying contestants). In other words, the references simply disclose a variety of different solutions to player identification and funds transfer. See Fulton, 391 F.3d at 1201. For the above reasons, Appellant's arguments do not apprise us of error in the rejection of independent claim 89. Accordingly, we sustain the rejection of claim 89, and of claims 90-94, 99, 100, and 102 falling therewith, under 35 U.S.C. § 103(a) as unpatentable over Nguyen and Barry. 30 Appeal2018-004585 Application 10/855,270 Rejection V-Obviousness based on Nguyen, Barry, and Morita In contesting this rejection of claims 95-98 and 101, Appellant presents arguments without regard to any particular claim. See Appeal Br. 25-26. We select claim 95 as representative of the claims subject to this rejection, with claims 96-98 and 101 standing or falling with claim 95. We recognize a potential inconsistency implicit in our affirmance of the rejection of claims 95-98 and 101 under 35 U.S.C. § 112, second paragraph, as being indefinite, with an affirmance of a rejection that these claims are unpatentable under 35 U.S.C. § 103(a). Normally, when substantial confusion exists as to the interpretation of a claim, and no reasonably definite meaning can be ascribed to the terms in a claim, a determination as to patentability under 35 U.S.C. § 103 is not made. See In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred in affirming an anticipation rejection of indefinite claims); In re Steele, 305 F.2d 859, 862-63 (CCPA 1962) (holding that the Board erred in affirming a rejection of indefinite claims under 35 U.S.C. § 103(a) because the rejection was based on speculative assumptions as to the meaning of the claims). However, in this instance, we consider it to be desirable to address the rejection under 35 U.S.C. § 103 to avoid the inefficiency of piecemeal appellate review. See Ex parte Ionescu, 222 USPQ 537, 540 (Bd. App. 1984) (expressing the view that where a claim is subject to more than one interpretation, one of which would render the claims unpatentable over the prior art, the USPTO should enter simultaneous rejections under 35 U.S.C. § 112, second paragraph, and under 35 U.S.C. § 103, to avoid piecemeal appellate review). Here, the Examiner makes a finding that Morita teaches a 31 Appeal2018-004585 Application 10/855,270 cellular phone communicating with a bank via the Internet "standing alone" and independent of other devices. Final Act. 30. Appellant's arguments are directed to whether it is proper to combine the teachings of Morita with the teachings of Nguyen and Barry, as proposed by the Examiner, and, thus, we need not speculate about the meaning of the indefinite language to consider the merits of the disputed aspects of the rejections under 35 U.S.C. § 103(a) in view of these arguments. The Examiner finds that, to the extent that one skilled in art would construe the combination of Nguyen and Barry as not explicitly teaching a cellular phone that communicates to the Internet in a stand alone mode, or that establishes a connection with the Internet standing alone and independent of any other device communicating with the outside non-gaming establishment financial institution over the Internet, ... using a cellular phone to communicate to the Internet in a stand alone mode, or to establish a connection with the Internet standing alone and independent of any other device over the Internet was notoriously well-known. Id. at 29-30. In particular, the Examiner finds that Morita teaches that a "cellular telephone transfers funds from a bank and communicates with the Internet standing alone." Id. at 30. The Examiner determines that it would have been obvious to modify Nguyen and Barry according to Morita "for increased convenience and security to the players." Id. Appellant initially relies on argument set forth with respect to independent claims 89, 94, and 100 subject to Rejection IV. Appeal Br. 25. For the same reasons that Appellant's arguments do not apprise us of error in the rejection of claims 89, 94, and 100, these arguments likewise do not apprise us of error in the rejection of dependent claims 95-98 and 101. 32 Appeal2018-004585 Application 10/855,270 In addition, Appellant argues that it is improper to combine Morita with Nguyen and Barry. See id. at 25-26. Appellant asserts that "nothing in Morita indicates the transferring of bank funds using the phone with i-mode capabilities may be used with a wagering gaming machine." Id. at 26. According to Appellant, "Morita would only reinforce Nguyen by contacting the financial institution first and therefore the combination would not disclose authenticating the player identification from the communication with the gaming machine." Id. Appellant's argument against lviorita is unpersuasive because it attacks the reference individually, and is not responsive to the rejection presented. See Merck, 800 F .2d at 1097 ( citing Keller, 642 F.2d at 425). The Examiner does not rely on Morita for teaching transferring funds to a gaming machine or authenticating player identification via communication with the gaming machine. Rather, as discussed above with respect to Rejection IV, the Examiner relies on Nguyen for teaching a funds transfer from a bank to a gaming machine, and relies on Barry for teaching a wireless personal identifier communication between the pm1abfo device and gaming rnachine. See Final Act. 25-26. The Examiner concludes that it would have been obvious to one of ordinary skill in the art to combine the teachings of the references in order to increase player convenience and security, and because the combination is no more than the simple substitution of one known element for another yielding predictable results. Id. at 26. In this regard, Appellant does not specifically address the Examiner's reasoning for the conclusion of obviousness. The Examiner articulates adequate reasoning based on rational underpinnings for modifying the combined teachings of Nguy en and Barry according to the 33 Appeal2018-004585 Application 10/855,270 teachings of Morita (id. at 30), and Appellant does not offer any factual evidence or persuasive technical rationale to refute the Examiner's reasoning or explain why it is deficient. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418 (the relevant inquiry in an obviousness analysis is whether the Examiner has set forth "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness"). For the reasons discussed above, Appellant's arguments do not apprise us of error in the rejection of claim 95. Accordingly, we sustain the rejection of claim 95, and of claims 96-98 and 101 falling therewith, under 35 U.S.C. § 103(a) as unpatentable over Nguyen, Barry, and Morita. DECISION The Examiner's decision rejecting claims 89-102 under 35 U.S.C. § 112, second paragraph, as indefinite is REVERSED as to claims 89-94, 99, 100, and 102, and AFFIRMED as to claims 95-98 and 101. The Examiner's decision rejecting claims 89-102 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement is AFFIRMED ( on the second basis only for claims 89-94, 99, 100, and 102 and on the second and third bases only for claims 95-98 and 101). The Examiner's decision rejecting claims 89-102 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter is REVERSED. The Examiner's decision rejecting claims 89-94, 99, 100, and 102 under 35 U.S.C. § 103(a) as unpatentable over Nguyen and Barry is AFFIRMED. 34 Appeal2018-004585 Application 10/855,270 The Examiner's decision rejecting claims 95-98 and 101 under 35 U.S.C. § 103(a) as unpatentable over Nguyen, Barry, and Morita is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R. § l.136(a)(l )(iv). AFFIRMED 35 Copy with citationCopy as parenthetical citation