Ex Parte Gura et al

Patent Trial and Appeal Board

Jan 18, 2017

13128235 (P.T.A.B. Jan. 18, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/128,235 05/07/2011 Damon E. Gura 100.082US1 8415
65375 7590
BALLY (DELIZIO LAW)
C/O DELIZIO LAW, PLLC
15201 MASON ROAD
SUITE 1000-312
CYPRESS, TX 77433
EXAMINER
SKAARUP, JASON M
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
01/20/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
US PTO @ DELIZIOLAW.COM
USPT02 @ DELIZIOLAW.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAMON E. GURA and BUDYANTO HIMAWAN
Appeal 2017-001309
Application 13/128,235
Technology Center 3700
Before WILLIAM A. CAPP, GEORGE R. HOSKINS, and
ARTHUR M. PESLAK, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 26—35 under 35 U.S.C. § 101 as directed to non-statutory
subject matter and as unpatentable under 35 U.S.C. § 103(a) over Patel
(US 2009/0093309 A9, pub. Apr. 9, 2009) and Kaminkow
(US 2006/0046822 Al, pub. Mar. 2, 2006).1 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 A rejection of claims 31—35 under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter Appellants regard as their invention is withdrawn. Ans. 2.
Appeal 2017-001309
Application 13/128,235
THE INVENTION
Appellants’ invention relates to wagering game systems. Spec. 13.
Claim 26, reproduced below, is illustrative of the subject matter on appeal.
26. A method for processing gaming messages in a media
communication server remote from a plurality of wagering game
machines, the method comprising:
receiving, by the media communication server, a first message
from a first browser residing on a first wagering game machine of
the plurality of wagering game machines;
determining, by the media communication server, that the first
message is a wagering game result request message requesting a
result for a wagering game;
in response to the determining that the first message is a wagering
game result request message, transmitting the first message to a
wagering game server configured to determine a result for the
wagering game;
receiving, from the wagering game server, a wagering game result
message indicating a result for the wagering game;
transmitting the wagering game result message to the first
browser;
receiving, by the media communication server, a second message
from the first browser;
determining, by the media communication server, that the second
message is a bonus trigger notification message indicating that a
bonus game has been triggered by the wagering game;
in response to the determining that second message is a bonus
trigger notification message,
transmitting the bonus game notification message to a second
browser residing on the first wagering game machine, wherein
the bonus game notification message notifies the second
browser to present a bonus game;
receiving a bonus result request message from the second browser;
forwarding the bonus result request message to a wagering game
server configured to determine a result for the bonus game;
receiving, from the wagering game server, a bonus result message
indicating a result for the bonus game; and
transmitting the bonus result message to the second browser.
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Application 13/128,235
OPINION
Non-Statutory Subject Matter
Claims 26—30
Appellants argue claims 26—30 as a group. Appeal Br. 22—23. We
select claim 26 as representative. See 37 C.F.R. § 41.37(c)(l)(iv) (2016).
The Examiner finds that claim 26 is directed to the abstract idea of
managing a game and messages thereof. Final Action 7 (citing Planet
Bingo, LLCv. VKGSLLC, 576 Fed. Appx. 1005 (Fed. Cir. 2014)
(unpublished); Alice Corp. v. CLSBanklnt’l, 134 S.Ct. 2347 (2014); and
Bilski v. Kappos, 561 U.S. 593, 601 (2010)). The Examiner further finds
that claim recitations such as “media communication server,” “wagering
game machines,” and “wagering game server” are merely generic computer
elements that do not add a meaningful limitation to the abstract idea as they
would be routine in any computer implementation. Id. Thus, the Examiner
concludes that, because the claims simply instruct the practitioner to
implement the abstract idea with routine, conventional activity, these
additional claim elements, when viewed as a whole, do not provide
meaningful limitations to transform the abstract idea into a patent eligible
application of the abstract idea. Id.
Appellants traverse the Examiner’s rejection by arguing that claim 26
is not directed to an abstract idea. Appeal Br. 22—23. Appellants argue that
claim 26 is distinguishable from the subject matter considered in Planet
Bingo, Bilski, and Alice. Id. at 22. Appellants argue that claim 26 describes
operations by which a media communications server operates as a message
clearing house that facilitates bonus wagering games presented on browsers
residing on remote wagering game machines. Id.
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Application 13/128,235
In response, the Examiner states that, as in Planet Bingo, claim 26
manages a wagering game where the computer adds nothing more than the
ability to manage the game more efficiently. Ans. 15. According to the
Examiner,
independent Claims 26 and 31 merely recite methods wherein
(i) message data is received or collected, (ii) the message data is
recognized as relating to a category (e.g., wagering game or
bonus game), and (iii) the message data is transmitted to a
wagering gaming machine for management of a game - either
the wagering game or the bonus game - depending on the
recognized data.
Id. The Examiner further explains that, since an inventive concept cannot be
supplied by the abstract idea, the Examiner looked for an inventive concept
in the claimed elements additional to the abstract idea. Id. at 17. The
Examiner then reiterates findings from the Final Action that Appellants’
claimed generic computer components do not add a meaningful limitation to
the abstract idea. Id. at 17—18.2
In reply, Appellants argue that, in claim 26, two browsers coordinate
presentation of a wagering game and bonus game by utilizing a
communication game server. Reply Br. 5. Appellants argue that claim 26
does not preempt all forms of browser-related communications and,
therefore, concludes that claim 26 recites patentable subject matter. Id.
Mere abstract ideas are not patentable under 35 U.S.C. § 101. Assoc,
for Molecular Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107, 2116
(2013). The Supreme Court has established a two part test for determining
whether a claim embodying an abstract idea nevertheless reaches patent
2 Among other things, the Examiner notes that Appellants’ Specification
teaches that the claimed method can be performed on a general purpose
computer. Id. at 17 (citing Spec. 1 61).
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Appeal 2017-001309
Application 13/128,235
eligible subject matter. Alice, 134 S.Ct. at 2355. First, the claims are
examined to determine whether they are directed to a patent ineligible
concept. Id. If so, the claim elements are considered both individually and
as an ordered combination to determine whether they transform the claim
into a patent-eligible application. Id.
Here, claim 26 is directed to a patent-ineligible concept, namely,
sending and receiving messages and the management thereof in connection
with a wagering game. Claims App. In terms of presenting an idea that is
“abstract,” we discern no meaningful distinction between managing a game
of bingo in Planet Bingo, the business practice of risk hedging that was
found to be patent ineligible in Bilski, or the business concept that was
enhanced with generic computer technology in Alice, and Appellants’
method for processing gaming messages.
The second step in the analysis is to consider the claim elements
individually to determine whether they transform the claim into a patent-
eligible application of the abstract idea. Alice, 134 S.Ct. at 2355. In other
words, besides the patent ineligible concept, “what else is there in the claims
before us.” Id. (quoting Mayo Collaborative Services v. Prometheus Labs,
Inc., 132 S.Ct. 1289, 1297 (2012)). This second step is a search for an
“inventive concept” — 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. Mayo, 132 S.Ct. at 1294.
The claim must do more than simply state the abstract idea and add the
words “apply it.” Id. at 1290.
In the instant case, Appellants merely argue, unsuccessfully, that
claim 26 is not directed at an abstract idea under step one of the Alice
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analysis. Appeal Br. 22. Appellants present neither evidence nor argument
under step two of the Alice analysis. Id.', see also Reply Br. 5. In particular,
Appellants make no effort to rebut the Examiner’s findings and analysis that
claim 26 merely recites generic computer elements that are used in a routine
manner. Final Action 7. Under the circumstances, we are not apprised of
error and we sustain the Examiner’s 35 U.S.C. § 101 patent ineligible
subject matter rejection as to claims 26—30.
Claims 31—35
Appellants argue claims 31—35 as a group. Appeal Br. 18—21. We
select claim 31 as representative. Claim 31 is substantially similar scope to
claim 26 except that it coordinates media for a bonus game across a plurality
of game machines. Appeal Br. 21, Claims App. The Examiner’s rejection
relies on a common set of findings and conclusion for claims 26 and 31
which are summarized above. Final Action 7.
In traversing the rejection, Appellants first raise arguments concerning
whether claim 31 is directed to an abstract idea that substantially mirror the
arguments that we previously considered and found unpersuasive with
respect to claim 26, and find equally unpersuasive here. Appeal Br. 19.
Appellants next argue that claim 31 recites elements that constitute an
inventive concept. Appeal Br. 20—21. Appellants argue that transmitting
bonus game messages to a plurality of gaming machines elevates the claim
to more than a mere abstract idea. Id. at 21. Appellants analogize their
claim to the situation in DDR Holdings, LLC v. Hotels.com, LP, 773 F.3d
1245 (Fed. Cir. 2014), where the court found claimed subject matter to be
patent eligible. Appellants point out that their computer network includes a
media presentation server and remote wagering game machines, each
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Application 13/128,235
including a browser. Id. Appellants’ invention transmits messages between
a server and remote machines to coordinate a media presentation across
multiple browsers of the remote machines. Id. Therefore, Appellants
conclude that, as in DDR Holdings, claim 31 is rooted in computer
technology to overcome a problem specifically arising in the realm of
computer networks.
In response, the Examiner distinguishes DDR Holdings as directed to
a problem unique to the Internet. Ans. 18. The Examiner states that
Appellants’ transmission of coordinated bonus game messages merely
prioritizes data and processes the data accordingly, which, according to the
Examiner, constitutes patent ineligible subject matter. Id. at 18—19 (citing
Ex Parte Muthu-Manivannan, Appeal No. 2014-006595, 2016 WL 3254092
(PTAB June 16, 2016).
In reply, Appellants argue that claim 31 includes “multiple
improvements” to computerized components. Reply Br. 4. Appellants cite
to the case of Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016) for the proposition that at least “some” computer inventions are
directed to patent-eligible subject matter. Id.
Appellants’ arguments are not persuasive. First of all, Appellants’
argument that claim 31 contains “improvements” to the computer
components is not supported by the record. Appellants’ Specification
discloses that each wagering game machine media presentation unit 162 can
include any software or hardware suitable for presenting audio and video
content. Spec. 166. The system architecture can be implemented as
software, hardware, or any combination thereof. Id. 1 69. Any of the
network components can include hardware and machine-readable media
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Application 13/128,235
with instructions for performing the described operations. Id. Appellants’
CPU element 626 can include any suitable processor. Id. 1143. Appellants’
Specification appears to rely entirely on generic computer components that
are used in accordance with their typical and routine functions. Appellants
do not direct our attention to any teaching in the Specification that purports
to improve the performance or functionality of a computer.
Furthermore, DDR Holdings is distinguishable from the instant case.
In DDR Holdings'.
[U]pon the click of an advertisement for a third-party product
displayed on a host’s website, the visitor is no longer
transported to the third party’s website. Instead, the patent
claims call for an “outsource provider” having a web server
which directs the visitor to an automatically-generated hybrid
web page that combines visual “look and feel” elements from
the host website and product information from the third-party
merchant’s website related to the clicked advertisement. In this
way, rather than instantly losing visitors to the third-party’s
website, the host website can instead send its visitors to a web
page on the outsource provider’s server that 1) incorporates
“look and feel” elements from the host website, and 2) provides
visitors with the opportunity to purchase products from the
third-party merchant without actually entering that merchant’s
website.
DDR Holdings, 773 F.3d at 1257—58. In contrast, Appellants’ invention
merely presents a bonus game to a plurality of machines. Spec. Tflf 103—137;
Figs. 5 A—D. Appellants’ system selectively displays aspects of the bonus
game to individually selected machines. Id. For example, instead of
displaying an entire race track from the start to finish line, different portions
of the race track are displayed to individual machines such that the race car,
as it proceeds down the track, appears on less than all of the machine display
screens. Id. Appellants do not direct our attention to any teaching in the
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Application 13/128,235
Specification that instructs a person of ordinary skill in the art how to
manufacture or program a computer to perform these functions, the
implication being that Appellants tacitly acknowledge that such functions
are routine, conventional, and well-known in the art. Moreover, we are not
persuaded that merely selectively displaying different portions of an object
to different machines amounts to “something more” under the inventive
concept, second step of the Alice analysis.
In summary, we are not persuaded that claim 31, as exemplified by
the embodiment described in paragraphs 103—137 and Figures 5A—D of
Appellants’ disclosure, amounts to more than the application of well-
understood, routine, and conventional activities. We are, furthermore, not
persuaded that the claimed steps require anything more than “a generic
computer to perform generic computer operations.” Alice, 134 S.Ct. at
2359. Consequently, Appellants’ invention fails the “something more”
requirement of step two of the analysis.
In view of the foregoing discussion, we sustain the Examiner’s
rejection of claims 31—35 under 35 U.S.C. § 101 as being directed to non-
statutory subject matter.
Unpatentability of Claims 26—35
over Patel and Kaminkow
In view of our above decision affirming the Examiner’s rejection of
all pending claims (i.e., claims 26—35) on the grounds of lacking statutory
subject matter under 35 U.S.C. § 101, we do not reach the Examiner’s prior
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Application 13/128,235
art rejection of claims 26—35 under 35 U.S.C. § 103. See 37 C.F.R.
§ 41.50(a)(1).3
DECISION
The decision of the Examiner to reject claims 26—35 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
3 “The affirmance of the rejection of a claim on any of the grounds specified
constitutes a general affirmance of the decision of the examiner on that
claim, except as to any ground specifically reversed.” Id.
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