Ex Parte Lange et al

Patent Trial and Appeal Board

Sep 28, 2016

13160894 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/160,894 06/15/2011
26646 7590 09/30/2016
ANDREWS KURTH KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
FIRST NAMED INVENTOR
Jeffrey Lange
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.
12170/119 4271
EXAMINER
TROTTER, SCOTTS
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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):
uspto@kenyon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY LANGE, KENNETH CHARLES BARON,
CHARLES WALDEN, and MARCUS HARTE
Appeal2014-007583
Application 13/160,894
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE1
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1-15. We AFFIRM.
1 The Appellants identify Longitude, LLC as the real party in interest.
(Appeal Br. 1 ).
Appeal2014-007583
Application 13/160,894
THE CLAIMED INVENTION
Appellants' claimed invention is generally directed to parimutuel
wagermg. (Spec. 1, 11. 25-26). Claim 1 is illustrative of the claimed subject
matter:
1. A computer-implemented wagering method, comprising:
performing the following by at least one computer
processor:
calculating indicative odds of a bet recordable for
placement in a pool of bets on an event in which there are a
plurality of participating players, the bet including a premium
and a corresponding selected outcome of the event, wherein the
indicative odds are calculated as a function of the selected
outcome, the premium, and the total amount wagered by the pool
of bets on the event and are based on an assumption that no more
bets will be received; and
outputting the indicative odds of the bet for display;
wherein:
the bet specifies that a player will finish in a place other
than first place and does not specify which player will finish in
first place; such that a payout on the bet is not made conditional
upon which player finishes first; and
the pool includes bets on the event which specify a player
that will finish in first place in the event.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Orford
Simon
US 5,672, 106 Sept. 30, 1997
US 2003/0157976 Al Aug. 21, 2003
D.C. Edelman and N.R. O'Brian, Tote Arbitrage and Lock
Opportunities in Racetrack Betting, School Of Mathematics and Statistics,
University Of Sydney (October 17, 2001) (hereinafter "Edelman").
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Definition of "Trifecta," Chambers 21st Century Dictionary
(hereinafter "Chambers").
REJECTIONS
The following rejections are before us for review.
The Examiner rejected claims 1-15 on the ground of non-statutory
obviousness-type double patenting as being unpatentable over claims 3, 4,
13, and 15-17 of U.S. Patent No. 8,370,249 B2.
The Examiner rejected claims 1-15 under 35 U.S.C. § 112, second
paragraph, as indefinite.
The Examiner rejected claims 1, 2, 4---62, 9-13, and 15 under 35
U.S.C. § 103(a) as unpatentable over Orford, Edelman, and Simon.
The Examiner rejected claims 3 and 14 under 35 U.S.C. § 103(a) as
unpatentable over Orford, Edelman, and Simon.
The Examiner rejected claims 7 and 8 under 35 U.S.C. § 103(a) as
unpatentable over Orford, Edelman, Simon, and Chambers.
FINDINGS OF FACT
We find the following facts by a preponderance of the evidence.
1. Appellants' Specification indicates the invention "relates to a
parimutuel wagering system." (Spec., col. 1, 11. 25-26).
2. Appellants' Specification asserts that "[u]sing traditional methods,
payouts for other types of bets, such as place bets (i.e., betting on a
horse to finish in first or second place) or show bets (i.e., betting on a
2 The statements of rejection under 35 U.S.C. § 103(a) omit Simon, and in
some cases instead list O'Neill or Johnson. The Examiner's analysis,
however, makes clear that Simon is relied upon. See Final Act. 5-14.
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horse to finish in first, second, or third place) could not be determined
until after the race was completed." (Spec. 2, 1. 29 to 3, 1. 2).
3. Appellants' Specification asserts that "[i]n contrast to traditional
parimutuel wagering systems, the determination of the indicative odds
for each possible outcome of the event allows for the calculation and
display of the payout for any type of bet placed on the event, even those
bets which do not predict the winner." (Spec. 4, 11. 5-8).
4. Simon discloses mathematics for calculating pari-mutuel bet odds in a
variety of betting situations that include, in addition to basic outcomes,
a number of hierarchically-related sub-choices. (Simon, paras. 135-52).
5. Simon explains the sub-choices available for betting:
In many of the betting events 18 described in the previous
sections, the basic choices 80 could be divided into subchoices
which would make interesting bets themselves. For example, the
batter betting event in a baseball game has two primary outcomes
2001: SAFE and OUT. These two options branch into numerous
possibilities 2002, and some of those possibilities can branch
further 2003, as illustrated in FIG. SA. Of course, if one player
10 places, for example, ten tokens on a particular choice 2001
and a second player 10 places 10 tokens on a subchoice 2002 of
that choice 2001, the second player 10 should get a higher payoff
than the first player 10 if they both win, since the second player
10 took a greater risk and made a more courageous bet. For
example, the first player 10 might bet on "OUT"2001 and the
second player 10 on "GROUND OUT"2002. If the batter strikes
out, the first player 10 is a winner and the second player 10 is a
loser. However, if the batter does ground out then both players
10 are winners, and the payoff scheme should reward the second
player 10 for making a more courageous bet. This section
describes a method for determining payoffs for hierarchical
choice sets that retains the flavor of a parimutuel style.
(Simon, para. 136).
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ANALYSIS
Double Patenting
Appellants acquiesce to the double patenting rejection indicating they
will file a Terminal Disclaimer, and do not advance any argument in
opposition. (Reply Br. 2). We therefore affirm the rejection for claims 1-
15.
Rejection under 35 U.S.C. § 112 as Indefinite
Appellants argue "the claims need not explain how the calculation of
odds is made. There is nothing unclear about a requirement for such a
calculation, and the term therefore does not render the claim indefinite."
(Appeal Br. 5; see also Reply Br. 2). We agree. During prosecution the
PTO gives claims their "broadest reasonable interpretation consistent with
the specification." In re Hyatt, 211F.3d1367, 1372 (Fed. Cir. 2000).
Thus, the Examiner's concerns are a matter of claim breadth, not
indefiniteness. "Breadth is not indefiniteness." In re Gardner, 427 F.2d
786, 788 (1970).
Rejection of Claims 1, 2, 5, 6, and 9-11under35 U.S.C. § 103(a)
Initially, we note that the Appellants argue independent claims 1, 10,
and 11 together as a group. (Appeal Br. 7). Correspondingly, we select
representative claim 1 to decide the appeal of these claims, with remaining
claims 10 and 11 standing or falling with claim 1. Appellants do not provide
a substantive argument as to the separate patentability of claims 2, 5, 6, and
9 that depend from claim 1. (Id.). Thus, claims 2, 5, 6, and 9-11 stand or
fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(vii).
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Each of independent claims 1, 10, and 11 recites "the bet specifies that
a player will finish in a place other than first place and does not specify
which player will finish in first place, such that a payout on the bet is not
made conditional upon which player finishes first .... " Appellants argue
that this limitation is not disclosed by the cited references. (Appeal Br. 6-7;
see also Reply Br. 3--4). We are not persuaded by Appellants' arguments.
First, claim 1 recites standard pari-mutuel betting elements:
calculating indicative odds of a bet recordable for
placement in a pool of bets on an event in which there are a
plurality of participating players, the bet including a premium
and a corresponding selected outcome of the event, wherein the
indicative odds are calculated as a function of the selected
outcome, the premium, and the total amount wagered by the pool
of bets on the event and are based on an assumption that no more
bets will be received; and
outputting the indicative odds of the bet for display.
Thus, the first part of claim 1 recites the well-known pari-mutuel bet. 3
(See also FF 1 ).
The remainder of the claim recites a specific bet:
the bet specifies that a player will finish in a place other
than first place and does not specify which player will finish in
first place, such that a payout on the bet is not made conditional
upon which player finishes first; and
the pool includes bets on the event which specify a player
that will finish in first place in the event.
3 Parimutuel game is a system of mutual betting. It is a system where all
bets of a particular type are pooled together. The winners of the bet divide
the amount among them. http://definitions.uslegal.com/p/parimutuel/ (last
visited 9/2712016)
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The clamed bet is different from well-known pari-mutuel bets such as
win, place, and show. (FF 2). Thus, the issue before us is whether it would
be obvious to calculate the odds on a pari-mutuel bet other than those
commonly associated with pari-mutuel betting, such as win, place, and
show.
It is our understanding that the number of specific bets possible in
pari-mutuel betting is infinite. Instead of calculating odds for well-known
bets whose odds are simple to compute, the claims are directed to the idea of
calculating odds for a more complex bet, even though considered difficult to
do. (See, e.g., FF 2, 3). However, Simon describes the math necessary to
calculate outcomes for a nearly infinite set of pari-mutuel bets, and, thus,
discloses computing odds for essentially any type of pari-mutuel bet. (FF 4--
5). The claim leaves open the manner of calculating the odds to the
particular bet, namely the claim only states that "the bet specifies that a
player will finish in a place other than first place", but does not recite how
the odds for this bet is calculated. Thus, Simon's disclosure meets the broad
claim language as to computing indicative odds of pari-mutuel bets, which
encompasses calculating odds for the specific, recited bet.
As a result, the combination of Orford, which discloses the traditional
"totalizer" display of pari-mutuel bet odds, combined with additional bets
types from Edelman, and the math of Simon, thus, meet the claim language.
Rejection of Claims 4, 12, 13, and 15 under 35U.S.C.§103(a)
Appellants argue independent claims 4 and 12 together as a group.
(Appeal Br. 9). Correspondingly, we select representative claim 4 to decide
the appeal of these claims, with remaining claim 12 standing or falling with
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claim 4. Appellants do not provide a substantive argument as to the separate
patentability of claims 13 and 15 that depend from claim 12. (Id.). Thus
claims 12, 13, and 15 stand or fall with claim 4. See 37 C.F.R.
§ 41.37( c )(1 )(vii).
Independent claims 4 and 12 recite:
the first bet specifies that a specified player will finish in
at least a specified place in the event, such that a payout is made
on the first bet if, and conditional upon that, the player finishes
in any place in the event that is at least as high as the specified
place in the event, and no payout is made on the first bet if the
player finishes in a place that is lower than the specified place in
the event;
the specified place is not first or second place; and
the pool includes at least one of (a) a bet that requires a
player to finish in a place as high as at least second place and (b)
a bet for which there is a payout if a specified player finishes in
a place lower than the specified place.
Appellants argue that Edelman does not disclose the bet specifics
claimed; because "none of these bets (win; place; quinella; and exacta)
includes a specified place that is not first or second place." (Appeal Br. 8-9;
see also Reply Br. 4--6).
We find Appellants' arguments unpersuasive for the same reasons we
set forth above at claim 1, namely because we find that Simon describes the
math necessary to calculate odds of complex pari-mutuel bets that
encompass the specific type recited.
Rejection of Claim 3 under 35 U.S.C. § 103(a)
Independent claim 3 recites:
the bet specifies a place in which a specified player will
not finish in an event, such that a payout on the bet is made if,
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and conditional upon that, the specified player does not finish in
the specified place, and irrespective of in which of a plurality of
other possible places in the event the player finishes;
the specified place is not first place; and
the pool includes at least one of (a) a bet on the event
which specifies a different place in which a player will not finish
in the event and (b) a bet that specifies a place in in which the
player must finish in the event.
Appellants argue that Edelman' s description of "the Exacta bet is
conditional upon the specified players finishing in first and second place,"
and Johnson's "betting the field to win is a bet specifying the favorite not to
finish in first place," unlike the claim language. (Appeal Br. 10-11; see also
Reply Br. 6-8).
We find Appellants' arguments unpersuasive for the same reasons we
set forth above at claim 1, namely because we find that Simon describes the
math necessary to calculate odds of complex pari-mutuel bets that
encompass the specific type recited.
Rejection of Claim 14 under 35 U.S.C. § 103(a)
Appellants do not present argument directed to claim 14. (Appeal Br.
11, Reply Br. 8). We affirm the rejection of claim 14 for the same reasons
as claims 1 and 12, above, because claim 14 depends from claim 12.
Rejection of Claims 7 and 8 under 35 U.S.C. § 103(a)
Appellants do not present argument directed to claims 7 and 8.
(Appeal Br. 12, Reply Br. 8). We affirm the rejection of claims 7 and 8 for
the same reasons as claim 1, above, from which claims 7 and 8 depend.
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New Ground of Rejection under 35 U.S.C. § 101
The Supreme Court:
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of those
patent-ineligible concepts. [] If so, we then ask, "[ w ]hat else is
there in the claims before us? [] To answer that question, []
consider the elements of each claim both individually and "as an
ordered combination" to determine whether the additional
elements "transform the nature of the claim" into a patent-
eligible application. [The Court] described step two of this
analysis as 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 Corp. Pty. Ltd. v CLS Banklnt'l., 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Svcs v. Prometheus Labs, Inc., 132 S. Ct. 1289 (2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
The preamble to all independent claims, except claim 11, recite that
each claim is directed to wagering. The two steps in each of independent
claims 1, 3, 4, and 10-12, which are all the independent claims pending,
recite calculating odds and displaying the result of the calculation. The
Specification incorporates by reference an application which describes a
mathematical algorithm for calculating odds in the case of complex wagers.
(Spec. 1, 11. 21-22). Thus, claim 1 is directed to the abstract idea of
performing mathematical calculations for wagering.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
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recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of
mathematical calculations in wagering at issue here. Both are squarely
within the realm of "abstract ideas" as the Court has used that term. See
Alice Corp. Pty. Ltd., 134 S. Ct. at 2357.
The remaining claims merely describe examples of specific bets upon
which one could enter a wager. We conclude that the claims at issue are
directed to a patent-ineligible abstract idea.
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it'" is not
enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[t ]" an abstract idea
"on . . . a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption concern
that undergirds our § 101 jurisprudence. Given the ubiquity of
computers, wholly generic computer implementation is not
generally the sort of "additional feature[e]" that provides any
"practical assurance that the process is more than a drafting effort
designed to monopolize the [abstract idea] itself."
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (citations omitted). "[T]he relevant
question is whether the claims here do more than simply instruct the
practitioner to implement the abstract idea [] on a generic computer." Alice
Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
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Considered as an ordered combination, the limitations of Appellants'
method add nothing that is not already present when the steps are considered
separately. Viewed as a whole, Appellants' method claims simply recite the
concept of performing calculations and displaying the result. Even were the
steps implied as being performed on a computer, the method claims do not,
for example, purport to improve the functioning of a computer itself. Nor do
they effect an improvement in any other technology or technical field.
Instead, the claims at issue amount to nothing significantly more than an
instruction to apply the abstract idea of performing mathematical
calculations to determine the odds of specific bets that are not common.
Under our precedents, that is not enough to transform an abstract idea into a
patent-eligible invention. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
CONCLUSIONS OF LAW
We affirm the double patenting rejection of claims 1-15.
The Examiner erred in rejecting claims 1-15 under 35 U.S.C. § 112 as
indefinite.
The Examiner did not err in rejecting claims 1-15 under 35 U.S.C.
§ 103(a).
We enter a new ground of rejection for claims 1-15 under 35 U.S.C.
§ 101 as reciting ineligible subject matter.
DECISION
For the above reasons, the Examiner's rejection of claims 1-15 is
affirmed.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2008). 37 C.F.R. § 41.50(b) provides "[a] new ground of
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rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner . . . .
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37
C.F.R. § 1.136(a)(l )(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)
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