Ex Parte Navarrete

Patent Trials and Appeals Board

May 3, 2019

13788079 - (D) (P.T.A.B. May. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/788,079 03/07/2013
144762 7590 05/07/2019
BROOKS KUSHMAN P.C./Gaming Arts, Z4 Poker
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
Moises Navarrete
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.
GAMA0190PUS 4564
EXAMINER
SKAARUP, JASON M
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
05/07/2019 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MOISES NAVARRETE
Appeal2018-008558 1
Application 13/788,0792
Technology Center 3700
Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-60. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED INVENTION
Appellant's invention "relate[s] to systems and methods for playing
bingo and other games of chance." Spec. ,r 1. Claims 1, 18, 31, 41, and 51
1 Our Decision references Appellant's Appeal Brief ("Br.," filed Jan. 12,
2018), and the Examiner's Answer ("Ans.," mailed May 22, 2018) and Final
Office Action ("Final Act.," mailed Dec. 29, 2016).
2 According to the Appellant, the real party in interest is Gaming Arts, LLC.
Br. 1.
Appeal2018-008558
Application 13/788,079
are the independent claims on appeal. Independent claim 1, reproduced
below with added bracketed matter, is illustrative of the claimed subject
matter.
1. A method of playing a game of chance, said method
compnsmg:
[(a)] receiving a physical item associated with a
monetary value using an input device of an electronic player
device;
[ (b)] adding the monetary value to a credit balance;
[ ( c)] providing a player card to be used with the game,
wherein the player card includes a predetermined number of
spaces for displaying player indicia;
[( d)] enabling, by a processor, a player to select one of a
plurality of available winning patterns for the player card,
wherein a plurality of the spaces is included within each of the
available winning patterns;
[(e)] enabling, by the processor, the player to select a
plurality of player indicia for the selected winning pattern,
wherein each player indicia of the selected plurality of player
indicia is displayed within one of the plurality of spaces
included within the selected winning pattern;
[(f)] receiving an input from the player to select a wager
for the game of chance using a user interface of the electronic
player device;
[ (g)] deducting the selected wager from the credit
balance;
[(h)] randomly selecting a plurality of house indicia;
[(i)] determining, by the processor, whether the plurality
of house indicia matched the selected plurality of player indicia
for the selected winning pattern;
[U)J determining, by processor, a payout based upon the
determination whether the plurality of house indicia matches
the selected plurality of player indicia for the selected winning
pattern;
[(k)] enabling the player to initiate a cash out operation
using the user interface; and
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Application 13/788,079
[ (1)] decreasing the credit balance in response to the cash
out operation.
REJECTION
Claims 1---60 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
ANALYSIS
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 573 U.S.
208,216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice Corp., 573 U.S. at 217.
The first step in that analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts." Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered "individually and 'as an ordered combination'"
to determine whether there are additional elements that "'transform the
nature of the claim' into a patent-eligible application." Id. (quoting Mayo,
566 U.S. at 79, 78).
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The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determines that claim 1 is directed to managing or conducting a wagering
game, which is a fundamental economic practice and a method of organizing
human activity, i.e., an abstract idea. Final Act. 4--5. The Examiner finds
the concept similar to the concepts found to be abstract in In re Smith, 815
F.3d 816 (Fed. Cir. 2016) and Planet Bingo, LLCv. VKGS, LLC, 576 F.
App'x 1005 (Fed. Cir. 2014). Final Act. 4--5. The Examiner also
determines that the additional elements, considered individually and in
combination, do not add significantly more because they are simply an
attempt to limit the abstract idea to a particular technological environment.
Id. at 5.
In so doing, the Examiner notified Appellant of the reasons for the
rejection under 35 U.S.C. § 101 in a sufficiently articulate and informative
manner as to meet the notice requirement of 35 U.S.C. § 132, thereby
establishing a prima facie case of patent ineligibility. See In re Jung, 637
F.3d 1356, 1362 (Fed. Cir. 2011) (holding that the USPTO carries its
procedural burden of establishing a prima facie case when its rejection
satisfies the notice requirements of 35 U.S.C. § 132 by notifying the
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applicant of the reasons for the rejection, "together with such information
and references as may be useful in judging the propriety of continuing []
prosecution").
Judicial Exception
Here, claim 1 is directed to a method of "playing a game of chance"
and recites "receiving a physical item associated with a monetary value"
(limitation (a)); "adding the monetary value to a credit balance" (limitation
(b )); "providing a player card to be used with the game, wherein the player
card includes a predetermined number of spaces for displaying player
indicia" (limitation ( c) ); "enabling ... a player to select one of a plurality of
available winning patterns for the player card, wherein a plurality of the
spaces is included within each of the available winning patterns" (limitation
(d)); "enabling ... the player to select a plurality of player indicia for the
selected winning pattern, wherein each player indicia of the selected
plurality of player indicia is displayed within one of the plurality of spaces
included within the selected winning pattern" (limitation (e)); "receiving an
input from the player to select a wager for the game of chance" (limitation
(f)); "deducting the selected wager from the credit balance" (limitation (g));
"randomly selecting a plurality of house indicia" (limitation (h) );
"determining ... whether the plurality of house indicia matched the selected
plurality of player indicia for the selected winning pattern" (limitation (i));
"determining ... a payout based upon the determination whether the
plurality of house indicia matches the selected plurality of player indicia for
the selected winning pattern" (limitation U)); "enabling the player to initiate
a cash out operation" (limitation (k)); and "decreasing the credit balance in
response to the cash out operation" (limitation (1)). These limitations, as
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Appellant acknowledges, recite a wagering game of chance. See Br. 6
("Appellant's claims are directed to ... [a] wagering game of chance"). The
concept of wagering is substantially similar to the concept of "rules for
conducting a wagering game" in In re Smith, 815 F.3d at 818-19, and to
methods and systems for managing a game of bingo in Planet Bingo, 576 F.
App'x at 1008. Wagering is a commercial interaction, which is a method of
organizing human activity and, therefore, an abstract idea.
See 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE,
84 Fed. Reg. 50, 52 (Jan. 7, 2019) ("Revised Guidance").
Practical Application
Under the Revised Guidance, if a claim recites an abstract idea, then it
must be analyzed to determine whether the recited judicial exception is
integrated into a practical application of that exception. Revised Guidance
54. Specifically, we identify whether there are any additional elements
recited in the claim beyond the judicial exception, and evaluate the
additional elements individually and in combination to determine whether
they integrate the exception into a practical application. Id. at 54--55. Here,
claim 1 additionally recites a "physical item" (limitation (a)); an "input
device" (limitation (a)); an "electronic player device" (limitations (a) and
(f)); a "player card" (limitation ( c )); a "processor" (limitations ( d), ( e ), (i),
and U)); and "a user interface" (limitations (f) and (k)).
We find no indication in the record, short of attorney argument, that
attributes the additional elements recited in claim 1 to an improvement in
computer technology and/or functionality to the claimed invention, to
implementing the abstract idea with a particular machine that is integral to
the claim, that effects a transformation or reduction of a particular article to
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a different state or thing, that applies the abstract idea in some other
meaningful way beyond linking the use of the abstract idea to a particular
technological environment, or that otherwise indicates that the claimed
invention integrates the abstract idea into a "practical application," as that
phrase is used in the Revised Guidance. 3 Instead, the additional elements, at
most, implement the abstract idea using a generic computer and/or generally
link the use of the abstract idea to a particular technological environment
(e.g., electronic player device) and/or field of use (e.g., player card).
We also are not persuaded by Appellant's arguments regarding
preemption. Br. 12-13. Although the Supreme Court has described "the
concern that drives [the exclusion of abstract ideas from patent eligible
3 We note that Appellant's Brief was filed, and the Examiner's Answer
mailed, before the USPTO issued the Revised Guidance, which, by its terms,
applies to all applications, and to all patents resulting from applications, filed
before, on, or after January 7, 2019. In accordance with the Revised
Guidance, a claim is generally considered "directed to" an abstract idea if
(1) the claim recites subject matter falling within one of the following
groupings of abstract ideas: (a) mathematical concepts; (b) certain methods
of organizing human activity, e.g., fundamental economic principles or
practices, commercial or legal interactions; and ( c) mental processes, and
(2) the claim does not integrate the abstract idea into a practical application,
i.e., apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception. See Revised
Guidance 54--55. The Revised Guidance references the MANUAL OF PATENT
EXAMINING PROCEDURE ("MPEP") §§ 2106.05(a}-(c) and (e}-(h) in
describing the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. Id. at 55. Thus, as explained in the
Revised Guidance, if the recited judicial exception is integrated into a
practical application, as determined under one or more of these MPEP
sections, the claim is not "directed to" the judicial exception.
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subject matter] as one of pre-emption" (Alice Corp., 573 U.S. at 216),
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
"The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability" and "[ fJor this reason,
questions on preemption are inherent in and resolved by the§ 101 analysis."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) ( citing Alice Corp., 573 U.S. at 216). "[P]reemption may signal
patent ineligible subject matter, [but] the absence of complete preemption
does not demonstrate patent eligibility." Id.
Inventive Concept
Turning to step two, we consider whether claim 1 recites additional
elements, alone or in combination, that amount to significantly more than the
recited abstract idea. Appellant argues that all prior art rejections have been
overcome, and reasons that the rejection under 35 U.S.C. § 101 should be
withdrawn as a result. Br. 7; see also id. at 7-12 (attempting to distinguish
claim 1 from the patent-ineligible claims of In re Smith and Planet Bingo
based on novelty and/or nonobviousness). Although the second step in the
Mayo/Alice framework is termed a search for an "inventive concept," the
analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for "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., 573 U.S. at 217-18. A
novel and non-obvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90.
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Appellant argues that claim 1 recites significantly more than the
abstract idea because it recites "receiving a physical item associated with a
monetary value using an input device of an electronic player device," and
numerous other steps performed "by a processor." Br. 14. Yet, "after Alice,
there can remain no doubt: recitation of generic computer limitations does
not make an otherwise ineligible claim patent-eligible. The bare fact that a
computer exists in the physical rather than purely conceptual realm 'is
beside the point.'" DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014) (citation omitted).
We are not persuaded that the Examiner erred in determining that the
additional elements, considered alone or as a whole, are insufficient to
supply an inventive concept because they "are simply an attempt to limit the
abstract idea to a particular technological environment." Final Act. 5; see
also id. at 5---6 ("the general computer elements do not add meaningful
limitations to the abstract idea because these additional elements represent
insignificant extra-solution activity and would be routine in any computer
implementation").
We have considered each of Appellant's arguments. However, none
persuades us of error in the Examiner's determination that claim 1 is
directed to an abstract idea without significantly more. Accordingly, we
sustain the rejection of independent claim 1 under 35 U.S.C. § 101.
Claims 2---60 recite similar subject matter, and Appellant presents similar
arguments for patent eligibility. See Br. 14--18. Therefore, we sustain the
rejection of claims 2---60 under 35 U.S.C. § 101 for similar reasons to
claim 1.
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DECISION
The Examiner's rejection of claims 1-60 under 35 U.S.C. § 101
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
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