Ex Parte Moshal

Patent Trial and Appeal Board

Nov 22, 2017

13357498 (P.T.A.B. Nov. 22, 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.
13/357,498 01/24/2012 Martin Moshal 05-1021-CON 1023
20306 7590 11/22/2017
MrnnNNFT T ROFFTNFN HT TT RFRT Rr RFRGROFF T T P
EXAMINER
300 S. WACKER DRIVE CUFF, MICHAEL A
3 2ND FLOOR
CHICAGO, IL 60606 ART UNIT PAPER NUMBER
3716
MAIL DATE DELIVERY MODE
11/22/2017 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN MOSHAL1
Appeal 2016-001503
Application 13/357,498
Technology Center 3700
Before STEVEN D.A. McCARTHY, JAMES P. CALVE, and
PATRICK R. SCANLON, Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Office
Action rejecting claims 17, 20-24, and 27—30. Appeal Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b). Appellant’s representative appeared for
oral hearing on November 8, 2017.
We AFFIRM.
1 Cork Group Trading Ltd. is identified as the real party in interest. Appeal
Br. 1.
Appeal 2016-001503
Application 13/357,498
CLAIMED SUBJECT MATTER
Appellant discloses that an existing slots game, which allow players to
wager on favorable and intermediate outcomes, “is unnecessarily restrictive
to a player,” so Appellant proposes a “method of wagering” that “offers a
player wagering choices that are more flexible than those of prior art
equivalent games.” Spec. 3:11—18. The “gaming apparatus” allows a player
to play a game of chance and place wagers thereon. Id. at 1:14—16, 30-32.
Claims 17 and 24 are independent. Claim 17 is reproduced below.
17. A gaming apparatus, comprising:
a player terminal operable to simulate a multi-reel slots game,
the multi-reel slots game having a set of possible outcomes
corresponding to the possible combinations of indicia displayable on
the simulated reels, the set of possible outcomes including a plurality
of independently wagerable outcomes, wherein each independently
wagerable outcome can receive a respective wager that is independent
of any wagers on any of the other independently wagerable outcomes;
and
a wagering facility that enables a player to make independent
wagers on any of the independently wagerable outcomes for a turn of
the game, wherein the wagering facility is operable to display a
representation of each of the independently wagerable outcomes and
further operable to display, for each of the independently wagerable
outcomes, (i) an activatable icon that enables the player to make an
independent wager on the independently wagerable outcome, (ii) the
size of any independent wager made on the independently wagerable
outcome, and (iii) odds for the independently wagerable outcome,
wherein the player terminal is operable to display a randomly
determined outcome of the turn of the game from the set of possible
outcomes, wherein the player wins a payout on any independent
wager made on an independently wagerable outcome that corresponds
to the randomly determined outcome and the player loses any
independent wager made on an independently wagerable outcome that
does not correspond to the randomly determined outcome.
2
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Application 13/357,498
REJECTION
Claims 17, 20—24, and 27—30 are rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
ANALYSIS
Appellant argues claims 17, 20-24, and 27—30 as a group. Appeal Br.
3—18 (arguing method claim 24 “stands on the same footing” as apparatus
claim 17). Thus, we select claim 17 as representative, with claims 20-24,
and 27—30 standing or falling with claim 17. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that the claims, with claim elements considered
individually and in combination, are directed to the abstract idea of wagering
or the fundamental economic practice and mathematical formula guiding
wagering. Final Act. 2; Ans. 6—7. The Examiner finds that the additional
elements are mere instructions to implement the abstract idea on a computer
or recite generic computer structure that performs generic functions that are
well-understood, routine, and conventional activities known in the industry.
Final Act. 2; Ans. 8—9. The Examiner determines that these claim elements
do not provide meaningful limitations that transform the abstract idea to a
patent eligible application of the abstract idea. Final Act. 2; Ans. 8—9. The
Examiner finds that the fundamental economic practice is wagering and the
basic steps of wagering display a game or event, accept a wager, provide a
random outcome, and determine a winner or loser. Ans. 6—7.
Appellant argues that a slot machine is patent-eligible, and the gaming
apparatus of claim 17 is a type of slot machine, as is claim 24’s method of
using that apparatus. Appeal Br. 4—5. Appellant argues that “wagering” was
not considered a category of abstract idea or fundamental economic practice
in Alice Corp. v. CLS Bank Inti, 134 S. Ct. 2347 (2014). Id. at 9.
3
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Application 13/357,498
Alice Step One
Essentially, Appellant proposes revised rules of waging on a game of
chance using a simulation of a multi-reel slot machine. Appellant describes
prior art slot machines as allowing players to make a single wager on a game
having a single favorable outcome, a number of intermediate outcomes, and
many unsuccessful outcomes. Spec. 3:5—6. If the one favorable outcome
occurs, the player wins the jackpot, which is the highest payout for the least
likely successful outcome to occur. Id. at 3:6—7, 7:10-30. A player’s single
wager also gives a player the chance to win a payout at predetermined odds
if any “intermediate outcome” occurs. Id. at 3:7—9, 7:8—31. The favorable
outcome and the intermediate outcomes are “successful outcomes” because a
player wins a prize paid out at different amounts according to a payout table
of how likely that particular successful outcome is to occur. Id. at 7:8—27.
The single favorable outcome (i.e., the jackpot) is the least likely outcome
and occurs if 3 Embossed 7s show on a 3-reel slot machine. Id. at 7:29-30.
The odds of this outcome occurring are 2500:1. Id. at 7:18. Intermediate
outcomes can occur for other combinations of icons. These combinations
include 3 Shaded 7s at odds of 240:1 or 3 ANY SEVENS at 120:1 or 3
TRIPLE BARs at 90:1 down to 1 Cherry at 6:1 odds. See id. at 7:19-27.
Appellant’s new game rules revise these prior art rules of chance by
requiring a player to place a separate wager on each of the ten successful
outcomes independently of any wager that is placed on any other successful
outcome. Stated another way, a player’s single wager covers only a single
successful outcome {id. at 4:5—6, 9:4—11) rather than all of the successful
outcomes as in the prior art slot machine rules of chance {id. at 3:11—14). To
be eligible to win on an outcome, the player must wager on that outcome.
4
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Application 13/357,498
A player uses the claimed gaming apparatus and “wagering facility”
“to place a wager on the occurrence of a particular successful outcome.” Id.
at 8:13—14. Wagering facility 8 is a screen display of an array 10 of all of
the possible successful outcomes of the slots game with activatable icons 11
that enable a player to place wagers on any or all of the possible successful
outcomes. Id. at 8:15—19. Wagering facility 8 produces a slots payout table
in electronic format so a player can select any or all of the possible payouts
using activatable icons. Id. at 8:10—19; compare id. at 7:15—27 (payout table
of a slots wagering game), with Fig. 3 (Appellant’s wagering facility 8).
The claimed gaming apparatus and method implement the new rules.
They allow a player to play a game of chance using the new wagering rules.
In re Smith, 815 F.3d 816, 818—819 (Fed. Cir. 2016) held that claims
directed to a new set of rules for conducting a wagering game are drawn to
an abstract idea like fundamental economic practices of exchanging and
resolving financial obligations. That the claimed method used a deck of
physical playing cards did not render the game patent eligible. Id. at 818.
This holding addresses Appellant’s argument that there is no support
for the Examiner’s allegation that “wagering” is a category of abstract idea.
See Appeal Br. 9-10; Reply Br. 1—3. We find this argument unpersuasive in
view of the above-discussed holding of Smith.
Appellant also argues that even if wagering is considered a category
of abstract idea, claim 17 is directed to a “gaming apparatus” that includes
“a wagering facility that enables a player to make independent wagers.”
Appeal Br. 10; Reply Br. 3. Appellant asserts that just because the claimed
apparatus enables wagering by a player does not mean it is directed to
wagering. Appeal Br. 10; Reply Br. 3^4. This argument is not persuasive.
5
Appeal 2016-001503
Application 13/357,498
We consider not just the claim type and statutory class. We also look
to the underlying invention for patent-eligibility purposes. See CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1374 (Fed. Cir. 2011)
(finding that claim 2 recites nothing more than a computer readable medium
containing program instructions for executing the method of claim 3).
Regardless of what statutory category (“process, machine,
manufacture, or composition of matter,” 35 U.S.C. § 101) a
claim's language is crafted to literally invoke, we look to the
underlying invention for patent-eligibility purposes. Here, it is
clear that the invention underlying both claims 2 and 3 is a
method for detecting credit card fraud, not a manufacture for
storing computer-readable information.
Id.; see also Bancorp Services, L.L.C. v. Sun Life Assurance Co. of Canada
(U.S.), 687 F.3d 1266, 1276—77 (Fed. Cir. 2012) (“a machine, system,
medium, or the like may in some cases be equivalent to an abstract mental
process for purposes of patent ineligibility”); Smart Sys. Innovations, LLC v.
Chicago Transit Auth., No. 2016-1233, 2017 WL 4654964, at *5 (Fed. Cir.
2017) (issue is whether claims improve the relevant technology or are just a
result/effect that is an abstract idea using generic processes and machinery).
Here, claim 17 recites a gaming apparatus that merely implements the
new wagering rules for a multi-reel slots game in a conventional computer
gaming environment. Claim 24 is a method of using new wagering rules.
Claim 17 does not recite any technological improvement to a gaming
apparatus; it merely enables a player to wager using the new rules proposed
by Appellant. The gaming apparatus “include [s] any apparatus on which, or
with which, the player may play a game of chance, and associated with
which the player may place a wager on the outcome of the game.” Spec.
1:30-32. It can be a conventional personal computer. Id. at 6:6—17.
6
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Application 13/357,498
Embodying the abstract idea of wagering in a generic computer
environment that implements the abstract idea and its rules in a conventional
way does not escape the reach of the abstract idea inquiry. See Affinity Labs
of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016)
(“In addressing the first step of the section 101 inquiry, as applied to a
computer-implemented invention, it is often helpful to ask whether the
claims are directed to ‘an improvement in the functioning of a computer,’ or
merely “adding conventional computer components to well-known business
practices.” (quoting Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1338
(Fed. Cir. 2016)); In re TLI Commc ’ns LLC Patent Litig., 823 F.3d at 611
(physical components such as a telephone and a server “merely provide a
generic environment in which to carry out the abstract idea”).
The conventional implementation of the abstract idea of wagering
rules is evident from the claim language. The “player terminal” serves “to
simulate a multi-reel slots game . . . having a set of possible outcomes.” The
“wagering facility” “enables a player to make independent wagers on any of
the independently wagerable outcomes.” The claimed “player terminal” also
displays “a randomly determined outcome of the turn of the game.”
The claimed gaming apparatus thus automates the wagering rules and
manages a slots game. See Bancorp Servs. LLC v. Sun Life Assurance Co. of
Canada, 687 F.3d 1266, 1279 (Fed. Cir. 2012) (a claim is not patent-eligible
under § 101 when “the computer simply performs more efficiently what
could otherwise be accomplished manually”); Alice Corp. v. CLS Banklnt’l,
134 S. Ct. 2347, 2358 (2014) (limiting use of an abstract idea to particular
environment or generic computer does not impart patent eligibility); Planet
Bingo, LLCv. VKGSLLC, 576 F. App’x 1005, 1008 (Fed. Cir. 2014).
7
Appeal 2016-001503
Application 13/357,498
The claimed “wagering facility” and its “activatable icon” are not
improvements in gaming technology as Appellant argues. Appeal Br. 7.
Rather, they represent conventional usages of well-known user interface
technologies that implement the abstract wagering rules and payout table.
Wagering facility 8 displays a payout table (array 10) {id. at 7:1—27) of all
possible successful outcomes in electronic format with activatable icons 11
that players use to place wagers on the occurrence of a particular successful
outcome using the “+” or icons on the display. Id. at 8:13—21, Fig. 3.
Activatable icons 11 provide a well-known means for a player to enter
data (e.g., wagers) into a computer. Indeed, Appellant’s Figure 2 discloses a
well-known software simulation of a 3-reel slots game {id. at 6:15—20) with
similar activatable icons such as “Menu,” “Help,” “Setup Stakes,” “Remove
Bet,” and “Repeat Bet,” that allow players to register, create an account, and
purchase “units of credit.” Id. at 8:4—8.
The claimed game apparatus thus implements the wagering rules with
conventional technology. Like the system in Electric Power Group, “[t]he
claims do not require a new source or type of information or new techniques
for analyzing it.” They “do not require any nonconventional computer,
network, or display components, or even a ‘non-conventional and non­
generic arrangement of known, conventional pieces, ’ but merely call for
performance of the claimed information collection, analysis, and display
functions ‘on a set of generic computer components’ and display devices.”
Electric Power Gp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir.
2016) (“Nothing in the claims . . . requires anything other than off-the-shelf,
conventional computer, network, and display technology for gathering,
sending, and presenting the desired information.”).
8
Appeal 2016-001503
Application 13/357,498
Like the bingo system in Planet Bingo, the claimed game apparatus
manages a slots game for a player(s). In Planet Bingo, the claims enabled a
player to repeatedly play the same sets of numbers in multiple sessions and
to preselect Bingo numbers. Planet Bingo, 576 F. App’x at 1007-08. The
claimed game apparatus allows a player(s) to repeatedly play various sets of
preferred outcomes, all of which are known outcomes listed in a payout table
(Spec. 7:1—27, Fig. 3). Planet Bingo, 576 F. App’x at 1008. The patentee in
Planet Bingo argued that the claims recited more than just organizing human
activity for a game and included complex computer code with three distinct
subparts, but the Court held that “the claims recited a program that is used
for the generic functions of storing, retrieving, and verifying a chosen set of
bingo numbers against a winning set of bingo numbers.” Id. at 1008-09.
We find the Federal Circuit’s decision in Trading Technologies to be
distinguishable on its facts. There, the Court held the claims to be directed
to improvements in existing graphical user interface devices that had no pre-
electronic trading analog and recited more than just setting, displaying, and
selecting data or information that is visible on the graphical user interface
device, rather than to a mathematical algorithm, fundamental economic or
longstanding commercial practice or challenge in business. Trading Techs.
Inti, Inc. v. CQG, Inc., 675 F. Appx 1001, 1004 (Fed. Cir. 2017) (adopting
district court’s findings and rationale). The claims in that case recited the
dynamic display of price levels for orders to buy and sell commodities so
that traders could place and execute orders at selected prices without missing
a price because the market moved before the order was entered and executed
or having orders executed at different prices than intended. Id. at 1002-03.
9
Appeal 2016-001503
Application 13/357,498
Here, the claimed wagering facility 8 merely displays a payout table
for a multi-reel slots game with a list of successful outcomes and their odds
and payouts so players can select one or more of those outcomes and place a
wager(s). Spec. 7:1—8:2, 8:10-9:2, Fig. 2; Trading Techs. 675 F. App’x at
1004. Essentially, Appellant automated a prior art payout table to allow a
player to select individual outcomes electronically using a computer gaming
apparatus with known interactive display technology. Spec. 6:13—17, Fig. 2.
The alleged improvement is to the rules of the game, as embodied in
the game apparatus and its wagering facility. The gaming apparatus uses a
known software simulation of a multi-reel slots machine (Spec. 6:15—18),
and the wagering facility uses activatable icons 11 to simulate buttons for
entering wagers (Appeal Br. 5). See Affinity Labs of Texas LLC v. DirecTV
LLC, 838 F.3d 1253, 1257-58 (Fed. Cir. 2016) (A mere recitation of a GUI
does not make a claim patent eligible.); Intellectual Ventures I LLC v.
Capital One Bank, 792 F.3d 1363, 1370 (Fed. Cir. 2015) (“interactive
interface limitation is a generic computer element”).
By allowing a player to wager independently on different successful
outcomes, each with different odds and payouts, the claimed gaming
apparatus allows a player to “hedge their bets” similar to the way a person
can hedge or protect against the financial risk of price fluctuations. See
Bilski v. Kappos, 561 U.S. 593, 599 (2010). The basic concept of hedging or
protecting against risk is a fundament economic practice long prevalent in
our system of commerce. See id. at 611; Smith, 815 F.3d 816, 818—819
(“Applicants’ claimed ‘method of conducting a wagering game’ is drawn to
an abstract idea much like Alice’s method of exchanging financial
obligations and Bilski’s method of hedging risk.”); see Ans. 7—8.
10
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Application 13/357,498
Viewed as individual limitations or as a whole, the game apparatus of
claim 17 (and its associated method of claim 24) recites the abstract concept
of wagering rules for a slots machine embodied in a conventional computer
gaming apparatus. Alice, 134 S. Ct. at 2359.
Alice Step Two
We next consider whether the claim elements individually, and as an
ordered combination, amount to more than a patent on an ineligible concept.
Appellant argues that the other claim elements do not recite routine or
conventional activities that are known in the industry because the Examiner
indicates the claims would be allowable if the § 101 rejection is overcome.
Appeal Br. 6. Appellant argues that claims 17 and 24 recite improvements
in slot machine technology including “a wagering facility that enables a
player to make independent wagers on any of the independently wagerable
outcomes for a turn of the game.” Id. at 7. Appellant further argues that the
elements of claims 17 and 24 are more than “mere instructions to implement
the idea on a computer” or “recitation of generic computer structure”
because the “wagering facility” adds a specific limitation that is not
conventional in the field of slot machine technology. It enables a player to
make independent wagers on any of the independently wagerable outcomes,
whereas a conventional slot machine only enables a player to make a single
wager. Id. at 13—14.
These arguments are not persuasive because, as discussed above, the
claimed gaming apparatus, wagering facility, and method merely implement
Appellant’s abstract wagering rules on a conventional computer with known
slots gaming software without any inventive computer, software, or display
that would transform this abstract idea into patent-eligible subject matter.
11
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Application 13/357,498
If a patent claim recites a computer with the mere instruction to
implement an abstract idea on the computer, the addition of the computer
cannot impart patent eligibility. Alice, 134 S. Ct. at 2358; Planet Bingo, at
1008. The gaming apparatus can be a gaming server 2, player terminal 3 (a
computer workstation or known personal computer) with a display monitor 4
and pointing device 5 (mouse or touch pad). Spec. 6:3—14, Fig. 1; Ans. 8—9.
This known workstation executes a software program that simulates a
3-reel slots game, as shown in Figure 2, in a manner well-known in the art.
Id. at 6:15—20. The invention relates to a “gaming apparatus that enables a
player to play a game of chance and to place a wager thereon.” Id. at 1:14-
lb. A “gaming apparatus” includes any apparatus on which, or with which,
the player may play a game of chance and place a wager on an outcome of a
game {id. at 1:30-32) including client-server architecture (id. at 9:27—29).
The “invention” is to the abstract idea of wagering game rules for a
slots game, rather than to a specialized computer used to play such a game.
See Elec. Power Grp. LLC v. Alstom, 830 F.3d 1350, 1354 (Fed. Cir. 2016)
(claims were directed to an abstract idea because “[t]he advance they purport
to make is a process of gathering and analyzing information of a specified
content, then displaying the results, and not any particular assertedly
inventive technology for performing those functions.”); Mortg. Grader, Inc.
v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324—25 (Fed. Cir. 2016)
(claims to an “interface,” “network,” and “database” are directed to an
abstract idea); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343,
1346, 1348-49 (Fed. Cir. 2015) (claims directed to generalized steps to be
performed on a computer using conventional computer activity are not
patent eligible).
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As the Federal Circuit made clear in Two-Way Media Ltd. v. Comcast
Cable Communications, the improvement must be a technical one. See Two-
Way Media Ltd. v. Comcast Cable Comm., LLC, No. 2016-2531, 2017 WL
4831936, at *5—6 (Fed. Cir. 2017) (reciting an abstract idea performed on
conventional computer and network components that operate according to
their ordinary functions does not contain an inventive concept). In that case,
the specification described an innovative system architecture with protocols
and signal selections, but “no inventive concept resides in the claims.” Id. at
*7. Here, the alleged innovative concept residing in the claims is new rules
for wagering on a slots game as implemented in a conventional computer
(game apparatus) and interactive display (wagering facility). See Ans. 9.
The claims do not recite a technological innovation in computers or in
any other technological field. See Alice, 134 S. Ct. at 2359. Instead, “the
claimed ‘wagering facility’ enables unconventional wagering that represents
an improvement in the field of slot machine technology.” Reply Br. 6 (the
“specification describes how the invention enables a different type of
wagering than what is conventional for slots gaming.”).
The “wagering facility” enables unconventional wagering by allowing
a player to wager on any successful outcome of a slots game rather than
making a single wager on all successful outcomes as in known slots games.
Id. at 6-7. The wagering facility uses conventional technology to do so.
The claims taken as individual elements or an ordered combination do
not recite a technical improvement that solves a technical problem in the
gaming arts. Two- Way Media, 2017 WL 4831936, at *5. Instead, they give
a player flexible wagering choices (Spec. 3:5—18, 9:4—11) via conventional
computer technology (Ans. 10).
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The claimed wagering facility allows a player to make an independent
wager using an activatable icon in a conventional manner. Spec. 8:13—21.
Wagering facility 8 displays a known payout table with the amount of each
wager and the odds for each outcome. Id. at 8:22—23, Fig. 3. Data relating
to the types and sizes of wagers is transmitted by computer workstation 3
across communication network 6 to gaming server 2. Id. at 8:24—27, Fig. 1.
There is nothing in the claimed gaming apparatus, considering the
elements individually or as an ordered combination, to indicate an inventive
step that implements abstract wagering rules in ways that are technologically
advanced enough to make the claims patent eligible. By Appellant’s logic,
the implementation of new wagering rules using conventional technology is
a technological improvement to the gaming apparatus. However, the use of
conventional technology belies the fact that any improvement is to abstract
rules of wagering2 rather than to solving technological problems of gaming
apparatuses. See Versata Dev. Gp., Inc. v. SAP Am., Inc., 793 F.3d 1306,
1333-34 (Fed. Cir. 2015).
DECISION
We affirm the rejection of claims 17, 20—24, and 27—30.
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
2 The alleged new wagering rules engraft onto a slots game the abstract idea
of betting separately on more than one outcome associated with a random
event, as is done in roulette and craps games, presumably to encourage more
betting by players at house odds. See Spec. 9:13—16.
14