Ex Parte Watkins

Patent Trial and Appeal Board

Jan 30, 2018

13631235 (P.T.A.B. Jan. 30, 2018)

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.
13/631,235 09/28/2012 Brian Watkins 777-1584 1023
92852 7590
Multimedia Games, Inc.
Attn: JP Cody, Esq.
206 Wild Basin South
Austin, TX 78746
EXAMINER
COBURN, CORBETT B
ART UNIT PAPER NUMBER
3714
NOTIFICATION DATE DELIVERY MODE
02/01/2018 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):
jp.cody@mm-games.com
peggy. zaongo @ mm-games .com
jpv2u@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN WATKINS
Appeal 2017-000457
Application 13/631,235
Technology Center 3700
Before: MICHAEL L. HOELTER, BENJAMIN D. M. WOOD, and
ANNETTE R. REIMERS, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-000457
Application 13/631,235
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
6—8, 13—15, 19, and 20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to a method for selecting an outcome
distribution for determining an outcome in a wagering game, and a gaming
system and program code for performing the method. Spec., 2:17—20.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method for selecting an outcome
distribution in a wagering game, the method
including:
(a) through a display system of a gaming
machine, displaying a visual depiction of a target area
traversing a grid of grid locations so as to show a
range of visual states in which each visual state is
correlated to a respective grid location that the target
area is then traversing and to a respective outcome
distribution from a set of different outcome
distributions, wherein each respective grid location is
correlated to a respective game outcome and the
outcome distribution correlated to each respective
grid location includes the game outcome correlated to
that grid location and the respective game outcome
correlated to each of a number of grid locations
adjacent to that grid location;
(b) receiving a player input through a player
input system of the gaming machine, the player input
selecting one of the visual states;
(c) applying the outcome distribution
correlated to the selected visual state to randomly
identify an outcome for a play of a game at the
gaming machine; and
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(d) awarding any prize correlated to the
identified outcome, the prize being awarded through
the gaming machine.
REJECTION
Claims 1, 6—8, 13—15, 19, and 20 stand rejected under 35 U.S.C. § 101
as directed to non-statutory subject matter.
ANALYSIS
Based on Appellant’s arguments, Br. 9, we will decide the appeal of
the claims at issue based on claim 1 alone. 37 C.F.R. § 41.37(c)(l)(iv).
To determine whether a claim falls within a judicially recognized
exception to patent eligibility under 35 U.S.C. § 101, we apply the two-step
framework set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
132 S. Ct. 1289, 1293—94 (2012), and reaffirmed in Alice Corp. v. CLS Bank
Int’l, 134 S. Ct. 2347, 2355 (2014). For the first step, we determine whether
the claims at issue are directed to a patent-ineligible concept such as an
abstract idea, law of nature, or natural phenomenon. Alice, 134 S. Ct. at
2355 (citing Mayo, 132 S. Ct. at 1296—97). If so, “we 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” of the otherwise patent-ineligible
concept. Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). The Court has
described this second step “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.” Id. (citing Mayo, 132 S. Ct. at 1294 (internal
quotation marks and alterations omitted)).
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Application 13/631,235
Regarding the first step in the Alice framework, the Examiner finds
that the claims are directed to the abstract idea of a method of selecting an
outcome distribution in a wagering game. Final Act. 2. Regarding the
second step, the Examiner finds that “[t]he additional element(s) or
combination of elements in the claim(s) other than the abstract idea per se
amount(s) to no more than: (i) mere instructions to implement the idea on a
computer, and/or (ii) recitation of generic computer stmcture that serves to
perform generic computer functions that are well-understood, routine, and
conventional activities previously known to the pertinent industry.” Id.
Appellant disputes that claim 1 is directed to an abstract idea.1 First,
Appellant asserts that claim 1 is “directed to a specific physical
implementation of an arrangement to select an outcome distribution in a
wagering game.” Br. 7. Second, Appellant argues that claim 1 is patent-
eligible because it does not “pre-empt an entire field” or “a fundamental
practice prevalent in the gaming field.” Id. at 8; see also id. at 9 (arguing
that claim 1 “does not simply recite the concept of selecting an outcome
distribution in a wagering game so as to preempt that idea for all uses and
applications,” but rather “is limited to a specific method for selecting an
outcome distribution in a wagering game”). Third, Appellant argues that
claim 1 is patent-eligible because it recites “a novel & non-obvious method
of practicing a wagering game.” Id. Specifically, according to Appellants,
“[wjhile the development of a single outcome distribution for a given
wagering game is a technique practiced within the gaming industry, the
selection of an outcome distribution from a set of outcome distributions as
1 Appellant does not address the Examiner’s second-step analysis. Br. 9.
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Application 13/631,235
the result of a player selection is without question not such a technique and
in fact is new and non-obvious over the prior art.” Id.
We are not persuaded that the Examiner erred in rejecting claim 1 as
directed to patent-ineligible subject matter. As the Examiner found, claim 1
is directed to a method of selecting an outcome distribution in a wagering
game. Claim 1 is thus similar to the claims directed to a method of
managing a game of bingo at issue in Planet Bingo, LLC v. VKGS LLC, 576
Fed. Appx. 1005 (Fed. Cir. 2014). In Plant Bingo, the Federal Circuit
agreed with the district court’s determination that managing a game of bingo
“consists solely of mental steps which can be carried out by a human using
pen and paper.” Id. at 1007 (internal quotation marks omitted). Here as
well, a person can use player input to select an outcome distribution that is
used to select a game outcome, using pen and paper. Claim 1 is also
comparable to claims directed to rules for conducting a wagering game,
which the Federal Circuit found to be drawn to an abstract idea in In re
Smith, 815 F.3d 816, 818—19 (Fed. Cir. 2016). Thus, we agree with the
Examiner that claim 1 is directed to an abstract idea.
Moreover, none of Appellant’s arguments persuade us of Examiner
error. First, Appellant does not explain how claim 1 is directed to a
“specific physical implementation” as asserted. Br. 7. On the contrary, as
the Examiner observes, the Specification makes clear that the term “gaming
machine” used in claim 1 encompasses generic computing devices. Ans. 6
(citing Spec. 29, 38). Second, that claim 1 may not preempt “an entire
field” is not relevant to whether claim 1 is directed to an abstract idea,
because “the exclusion applies if a claim involves a natural law or
phenomenon or abstract idea, even if the particular natural law or
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Application 13/631,235
phenomenon or abstract idea at issue is narrow.” buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014) (citing Mayo, 132 S.Ct. at 1303);
see also Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015) (holding that “[wjhile preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility”). Finally, in Alice’s first step analysis, it does
matter that the abstract idea to which claim 1 may be directed is novel and
non-obvious. As the Examiner notes (Ans. 7), the Federal Circuit disagrees
that “the addition of merely novel or non-routine components to the claimed
idea necessarily turns an abstraction into something concrete.”
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014).
Instead, “any novelty in implementation of the idea is a factor to be
considered in the second step of the Alice analysis.” Id. (citing Alice, 134
S.Ct. at 1294).
For the above reasons, we sustain the Examiner’s rejection of claims
1, 6—8, 13—15, 19, and 20 under 35 U.S.C. § 101 as directed to patent-
ineligible subject matter.
DECISION
We affirm the Examiner’s rejection of claims 1, 6—8, 13—15, 19, and
20.
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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