Ex Parte Wilson

Board of Patent Appeals and Interferences

Jan 19, 2010

11106413 (B.P.A.I. Jan. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte LEE H. WILSON
____________________

Appeal 2009-006217
Application 11/106,413
Technology Center 3700
____________________

Decided: January 19, 2010
____________________

Before WILLIAM F. PATE, III, JENNIFER D. BAHR, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Lee H. Wilson (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claims 6-12, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b) (2002).

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SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellant’s claimed invention is directed to wagering on basketball
games (Spec. 1:11-13).
Claim 6, reproduced below, is representative of the subject matter on
appeal.
6. A method of wagering on conventional
basketball games that requires pretending
that the official time of a game is divided into
sixteen consecutive rounds of equal duration, to
compose an unofficial "match;" and declaring the
team that scores the most points in each such
round to be the winner of that round, and basing
various wagers on the outcomes of said rounds.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
http://info.betgameday.com/en/sports/wagerguide_basketball.htm,
Betgameday, Wagering Guide and Rules, pp. 1-9 (viewed on 09/25/2006)
(hereinafter “Betgameday”)

The following rejections1 by the Examiner are before us for review:

1 The application on filing contained claims 1-5. On September 11, 2006, a
new set of claims, independent claim 1 and dependent claims 2-6 were filed.
The Final Rejection mailed October 2, 2006, stated that newly submitted
claims 1-6 were misnumbered, and that the newly submitted claims 1-6 were
renumbered as claims 7-12 [sic, 6-12] in accordance with 37 CFR 1.126
(Final Rejection 2). The Claims Appendix of the Appeal Brief (App. Br. 14)
contains claims 6-12; however, the claims referenced in the dependency of
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1. Claims 6-12 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
2. Claim 82 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the invention.
3. Claims 6-12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Betgameday.

ISSUES
The issues before us are: (1) whether the Examiner erred in finding
that claims 6-12 are directed to non-statutory subject matter since claim 6
includes the language “pretending to divide the official time” (App. Br. 11),
(2) whether the Examiner erred in finding that claim 8 is indefinite on the
basis that it includes the language “a prediction of the number of rounds
required to win a match” (App. Br. 13), and (3) whether the Examiner erred
in concluding that the teachings of Betgameday would have led one having
ordinary skill in the art to divide a basketball game into sixteen consecutive
rounds of equal duration as called for in claim 6 (App. Br. 12, 13).

dependent claims 7-12, are the claims as filed on September 11, 2006, and
not as they were renumbered in accordance with 37 CFR 1.126. When
claims are renumbered in accordance with 37 CFR 1.126, the dependencies
of the claims are also renumbered. Therefore, the dependency references in
claims 7-12 to claims, 1, 2 and 4 will be considered in this appeal as being
dependency references to independent claim 6, and dependent claims 7 and
9, respectively.

2 Claim 8 will be considered in this appeal as being rejected under 35 U.S.C.
§ 112. Claim 9 was inadvertently rejected under 35 U.S.C. § 112 instead of
claim 8 due to a typographical error.
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FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
Appellant’s Invention
1. Appellant’s Specification describes that a basketball game is
divided into sixteen consecutive rounds of equal duration (Spec. 2:
17-20).
2. Appellant’s Specification describes
(2) The team that scores the most points in a
round is declared winner of that round.
(3) The team that wins the most rounds is
declared winner of the match. The match is
ended when one team’s lead is greater than the
number of rounds remaining to be played, i. e.,
when it becomes impossible for one of the
teams to gain at least a tie in the match
. . . .
3. DURATION. The match is ended as soon as
it becomes impossible for one of the
participants to gain at least a tie, while the game
continues, of course. Thus, the duration bet
requires the bettor to predict the number of
rounds that will be completed in the match,
from the maximum of sixteen rounds to the
minimum of nine rounds.
(Spec. 3:12-15, 21-24).
The Examiner’s Findings
3. The Examiner concludes that claims 6-12 are drawn to non-
statutory subject matter since the claims do not require:
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any active action and therefore the claimed
invention is directed to a judicial exception to
35 U.S.C. § 101 (i.e., an abstract idea, natural
phenomenon, or law of nature) and is not
directed to a practical application of such
judicial exception (e.g., because the claim does
not require any physical transformation and the
invention as claimed does not produce a useful,
concrete, and tangible result).
(Ans. 3).
4. The Examiner concludes that the language of claim 8 is unclear
(Ans. 3, 5).
5. The Examiner finds that Betgameday describes the elements of
claim 1, except Betgameday does not describe using 16 periods for
gaming purposes (Ans. 3).
6. The Examiner finds that Betgameday describes that it is old and
well known in the art (1) to divide a basketball game into 1, 2 or 4
parts, and (2) to bet on the winner of the parts. (Ans. 6).
7. The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to have selected any one of several
equivalent periods including 16 periods based on increasing the
satisfaction of the player and increasing the betting potential for
each game (Ans. 3-4).
8. The Examiner concludes that “[t]he segmenting of the game into
16 segments instead of 4 does not show any surprising or
unanticipated results in the specification.” (Ans. 7).

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The Board’s Findings
9. Betgameday describes wagering on an entire game, each individual
half and each individual quarter. (Betgameday, Wagering Guide
and Rules, p. 1).
10. Betgameday describes wagering on individual quarters; the
wagering is only on the score of the first, second, third or fourth
quarter of a contest; and the wagering applies only to the score of
the quarter specified. (Betgameday, Wagering Guide and Rules,
pp. 1-2).
11. Additional findings as necessary appear in the Analysis portion of
this opinion.

PRINCIPLES OF LAW
Appellant’s Burden
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)). See also Ex parte Yamaguchi, 88 USPQ2d 1606, 1614 (BPAI 2008)
[burden on appeal] (on appeal, applicant must show examiner erred); Ex
parte Fu, 89 USPQ2d 1115, 1123 (BPAI 2008); Ex parte Catan, 83
USPQ2d 1569, 1577 (BPAI 2007); and Ex parte Smith, 83 USPQ2d 1509,
1519 (BPAI 2007).

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Statutory Subject Matter
Whether a claim is drawn to patent-eligible subject matter under §101
is a threshold inquiry, and any claim of an application failing the
requirements of §101 must be rejected even if it meets all of the other legal
requirements of patentability. In re Bilski, 88 USPQ2d 1385, 1388 (Fed.
Cir. 2008).
The Federal Circuit stated that if the effect of allowing of a claim
would be to allow the patentee to pre-empt substantially all uses of a
fundamental principle, the claim is not drawn to patent eligible subject
matter. Id. at 1390.
The Federal Circuit concluded that “ … [W]e … reaffirm that the
machine-or-transformation test, properly applied, is the governing test for
determining patent eligibility of a process under §101.” Id. at 1392.
The Federal Circuit stated that the machine-or-transformation test is
as follows: “The machine-or-transformation test is a two-branched inquiry;
an applicant may show that a process claim satisfies §101 either by showing
that his claim is tied to a particular machine, or by showing that his claim
transforms an article.” Id. at 1396.
The Federal Circuit further stated that “adding a data-gathering step to
an algorithm is insufficient to convert that algorithm into a patent-eligible
process.” Id. at 1397.

Definiteness
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
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claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986).

Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”).
The Supreme Court noted that “[t]o facilitate review, this analysis
should be made explicit.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.”). However, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 418.
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ANALYSIS
Appellant argues claims 6-12 as a group (App. Br. 11, 13). As such,
we select claim 6 as representative of the group, and claims 7-12 will stand
or fall with claim 6. 37 C.F.R. § 41.37(c)(1)(vii) (2007).

Rejection of claims 6-12 under 35 U.S.C. § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter,
or any new and useful improvement thereof, may obtain
a patent therefor, subject to the conditions and
requirements of this title.
Appellant contends that the invention is neither a phenomenon of
nature, nor a law of nature, nor is any more [sic] of an abstract idea than a
play, a poem or a song (App. Br. 12).
The Examiner concludes that claims 6-12 are drawn to non-statutory
subject matter (Fact 3).
Claim 6 is reproduced below.

6. A method of wagering on conventional
basketball games that requires pretending
that the official time of a game is divided into
sixteen consecutive rounds of equal duration, to
compose an unofficial "match;" and declaring the
team that scores the most points in each such
round to be the winner of that round, and basing
various wagers on the outcomes of said rounds.

Whether a claim is drawn to patent-eligible subject matter under §101
is a threshold inquiry, and any claim of an application failing the
requirements of §101 must be rejected even if it meets all of the other legal
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requirements of patentability. In re Bilski, 88 USPQ2d 1385, 1388 (Fed.
Cir. 2008).
A review of claims 6-12 reveals that they are drawn to a method of
wagering data including the particulars of a wager and declaring a winner
based on gathering and analyzing points (data) earned in each round without
any details as to, inter alia, the particulars of the wager (e.g., how the wager
is placed, where the wager is placed, who the wager is placed with, and the
minimum or maximum amount of a wager), the particulars of the gathering
of the points (e.g., who gathers the points, how the points are gathered), the
particulars of the analyzing of the points, who declares a winner, and how
one retrieves their winnings. In particular, claim 6 calls for, inter alia, a
method of wagering by pretending, declaring a winner based on the
gathering and analyzing of points (data) and basing wagers on round
outcomes. Claims 7-12, which depend from claim 6, either directly or
indirectly, call for further details of the wager including wagering
accumulated winnings, and further details regarding declaring a winner.
Claims 6-12 neither specifically call for a machine nor reference a
machine. The adding of a data-gathering step to a process claim (claims 6-
12) is insufficient to convert a process into a patent-eligible process. See id.
at 1397. A claim that is drawn only to a method of wagering is a claim that
seeks to pre-empt the use of a fundamental principle. See id. at 1390. The
declaring of a winner without more (e.g., a reference as to who would
declare the winner and how one would retrieve their winnings) is determined
to be “insignificant postsolution activity” and as such will not transform the
claimed method into a patentable method. See id. at 1393.
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Therefore, we find that the method as called for in claims 6-12 is not
tied to a machine. Further, as the claimed method contains physical steps
(wagering, data gathering, data analyzing, declaring and retrieving) it does
not involve transforming an article into a different state or thing.
Accordingly, the method as called for in claims 6-12 fails “the machine-or-
transformation test.”
Therefore, we conclude that Appellant has not demonstrated that the
Examiner erred in rejecting claim 6 as being drawn to non-statutory subject
matter.
Appellant has likewise not demonstrated error in the Examiner’s
rejection of claims 7-12, which stand or fall with claim 6.

Rejection of claim 8 under 35 U.S.C. § 112
Claim 8 calls for “wherein said wager is placed on a prediction of the
number of rounds to win a match.”
Appellant contends that claim 8 is perfectly explicit (App. Br. 13).
The Examiner found that the language of claim 8 is unclear (Ans. 5)
(Fact 4).
The Specification states that (1) a basketball game is divided into
sixteen consecutive rounds of equal duration, (2) the team that wins the most
rounds wins a match, (3) the match is ended when it becomes impossible for
one of the participants to gain at least a tie, and (4) the match contains a
maximum of sixteen rounds and a minimum of nine rounds (Facts 1, 2).
The Specification is clear as to how many rounds a basketball game is
divided into, how a round is won, and how many rounds it takes to win a
match.
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A person having ordinary skill in the art applying general mathematics
would understand the limitation “said wager is placed on a prediction of the
number of rounds to win a match” as called for in claim 8.
Therefore, we conclude that Appellant has demonstrated that the
Examiner erred in rejecting claim 8 as being indefinite.

Rejection of claims 6-12 under 35 U.S.C. § 103(a) as being unpatentable
over Betgameday
Appellant contends that Betgameday does not describe creating a
sixteen-round match (App. Br. 13).
The Examiner found that Betgameday describes the elements of claim
1, except Betgameday does not describe using 16 periods for gaming
purposes (Fact 5). In particular, the Examiner found that Betgameday
describes that it is old and well known in the art (1) to divide a basketball
game into 1, 2 or 4 parts, and (2) to bet on the winner of the parts. (Fact 6).
The Examiner concluded that it would have been obvious to one of
ordinary skill in the art to have selected any one of several equivalent
periods including 16 periods based on increasing the satisfaction of the
player and increasing the betting potential for each game (Fact 7). The
Examiner further concludes that “[t]he segmenting of the game into 16
segments instead of 4 does not show any surprising or unanticipated results
in the specification.” (Fact 8).
Betgameday describes wagering on an entire game, each individual
half and each individual quarter. (Fact 9). Betgameday further describes (1)
wagering on individual quarters; (2) the wagering is only on the score of the
first, second, third or fourth quarter of a contest; and (3) the wagering
applies only to the score of the quarter specified. (Fact 10).
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We conclude that it would have been obvious to a person having
ordinary skill in the art to segment a basketball game into 16 equal segments
(rounds) as Betgameday describes three different segments, a whole, a half
and a quarter, wherein each segment is half of the prior segment.
We find that dividing a basketball game into 16 segments (rounds)
would have the reasonably predicted result of increasing the betting potential
of each game, that is, increasing the number of betting rounds. See KSR,
550 U.S. at 418 (The Supreme Court noted that “[t]o facilitate review, this
analysis should be made explicit.” However, “the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.”)
Therefore, we conclude that Appellant has not demonstrated that the
Examiner erred in rejecting claim 6 over Betgameday. Appellant has
likewise not demonstrated error in the Examiner’s rejection of claims 7-12,
which stand or fall with claim 6.

CONCLUSIONS
Appellant has not established that the Examiner erred in finding that
claims 6-12 are directed to non-statutory subject matter since claim 6
includes the language “pretending to divide the official time.”
Appellant has established that the Examiner erred in finding that claim
8 is indefinite on the basis that it includes the language “a prediction of the
number of rounds required to win a match.”
Appellant has not established that the Examiner erred in concluding
that the teachings of Betgameday would have led one having ordinary skill
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in the art to divide a basketball game into sixteen consecutive rounds of
equal duration as called for in claim 6.

DECISION
The decision of the Examiner to reject claims 6-12 under 35 U.S.C.
§ 101 and claims 6-12 over Betgameday is affirmed. The decision of the
Examiner to reject claim 8 under 35 U.S.C. § 112 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).

AFFIRMED

Klh

LEE H. WILSON
NO. 41
1940 E. MAPLE ROAD
BIRMINGHAM, MI 48009