Guziel, Paul F.

Patent Trials and Appeals Board

Nov 1, 2019

13269593 - (D) (P.T.A.B. Nov. 1, 2019)

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.
13/269,593 10/08/2011 Paul F. Guziel 2908730-000007 3082
49840 7590 11/01/2019
Atlanta Baker Donelson
Intellectual Property Department
Monarch Plaza, Suite 1600
3414 Peachtree Rd.
ATLANTA, GA 30326
EXAMINER
MASUD, ROKIB
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
11/01/2019 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):
ipdocketing@bakerdonelson.com
tdavis@bakerdonelson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PAUL F. GUZIEL
____________

Appeal 2017-001010
Application 13/269,5931
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant2 seeks our review under 35 U.S.C. § 134 of the
Examiner’s final rejection of claims 6–11, 13–16, and 23–25. We
have jurisdiction under 35 U.S.C. § 6(b). A Hearing was held on
October 3, 2019.

1 Appellant identifies Alchemy3, LLC as the real party in interest.
(Appeal Br. 2).
2 We use the word “Appellant” to refer to “applicant as defined in 37
C.F.R. § 1.42.
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SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant states “[t]he present invention relates to apparatus
and methods by which buyers purchase goods or services from
vendors, such as players purchasing lottery game tickets.” Spec. ¶ 1.
Claim 6, reproduced below, is representative of the subject
matter on appeal.
6. An apparatus for completing a lottery ticket
purchase transaction local to a lottery ticket retailer
location but remote from a lottery ticket point-of-sale
terminal, comprising:
a dedicated communication system between a
computer system of a lottery game provider and a
plurality of authorized lottery ticket point-of-sale
terminals, a respective one of the lottery ticket point-of-
sale terminals located at a respective one of a plurality of
lottery game retailers, the computer system having a
database of a plurality of lottery game tickets each
associated with a respective one of a plurality of random
draw lottery games offered by the lottery game provider,
the computer system configured for entering into the
database sales information as to a game ticket purchased
by a player through one of the lottery ticket point-of-sale
terminals for play in a selected one of the lottery games;
a plurality of short range wireless transceivers,
each connected to a respective one of the lottery ticket
point-of-sale terminals for establishing a temporary
connection between a mobile communications device of
a player and the dedicated communications system
through a wireless communications protocol;
the mobile communications device configured to
display at least one indicia of an available lottery game
offered for play by the lottery game provider, each lottery
game thereof having a discrete indicia;
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means for selecting by the player one of the
available lottery games for which a game ticket is to be
purchased:
an access link displayed on the mobile
communications device selected by the player to effect
payment transfer by a payment transfer system that
communicates with an account of the player and an
account of the lottery game provider for transferring
funds from the account of the player to the account of the
lottery game provider to pay for the game ticket
purchased by the player; and
an electronic lottery game ticket transferred from
the database through the lottery ticket point-of-sale
terminal to the mobile communications device by
communication through the dedicated communication
system, whereby the mobile communications device
receives a record of the game ticket purchased by the
player for play in the selected random draw game.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Name Reference Date
White US 2007/0117609 A1 May 24, 2007
Smith US 2007/0124211 A1 May 31, 2007
Safaei US 2010/0069136 A1 Mar. 18, 2010
The following rejections are before us for review.
Claims 6–11, 13–16, and 23–25 are rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to a judicial
exception.
Claims 6–11, 13–16, 23, and 25 are rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Smith in view of White.
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Claim 24 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Smith, White, and Safaei.

FINDINGS OF FACT
We adopt the Examiner’s findings as set forth on pages 2–5 in
the Examiner’s Answer, concerning only the 35 U.S.C. § 101
rejection.

ANALYSIS
35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 6–11, 13–16, and 23–25
under 35 U.S.C. § 101.
We select claim 6 as the representative claim for this group, and
so the remaining claims stand or fall with claim 6. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2015).
An invention is patent-eligible if it claims a “new and useful
process, machine, manufacture, or composition of matter.” 35 U.S.C.
§ 101. However, the Supreme Court has long interpreted 35 U.S.C.
§ 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. E.g., Alice Corp.
v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded
category, we are guided by the Supreme Court’s two-step framework,
described in Mayo and Alice. Id. at 217–18 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77
(2012)). In accordance with that framework, we first determine what
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concept the claim is “directed to.” See id. at 219 (“On their face, the
claims before us are drawn to the concept of intermediated settlement,
i.e., the use of a third party to mitigate settlement risk.”); see also
Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in
petitioners’ application explain the basic concept of hedging, or
protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent
ineligible, include certain methods of organizing human activity, such
as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski,
561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S.
584, 594–95 (1978)); and mental processes (Gottschalk v. Benson,
409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible
include physical and chemical processes, such as “molding rubber
products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting
ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68
(1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing
Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but
the Supreme Court held that “[a] claim drawn to subject matter
otherwise statutory does not become nonstatutory simply because it
uses a mathematical formula.” Diehr, 450 U.S. at 176; see also id. at
191 (“We view respondents’ claims as nothing more than a process
for molding rubber products and not as an attempt to patent a
mathematical formula.”). Having said that, the Supreme Court also
indicated that a claim “seeking patent protection for that formula in
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the abstract . . . . is not accorded the protection of our patent laws, . . .
and this principle cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment.” Id.
(citing Benson and Flook); see, e.g., Diehr, 450 U.S. at 187 (“It is now
commonplace that an application of a law of nature or mathematical
formula to a known structure or process may well be deserving of
patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the
second step of the Alice and Mayo framework, where “we must
examine the elements of the claim to determine whether it contains an
‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea
into a patent-eligible application.” Alice, 573 U.S. at 221 (internal
quotation marks omitted). “A claim that recites an abstract idea must
include ‘additional features’ to ensure ‘that the [claim] is more than a
drafting effort designed to monopolize the [abstract idea].’” Id.
(alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely
requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the
application of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the
Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain
methods of organizing human activity such as a
fundamental economic practice, or mental processes);
and
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(2) additional elements that integrate the judicial
exception into a practical application (see Manual of
Patent Examining Procedure (“MPEP”) §§ 2106.05(a)–
(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial
exception.
See Guidance.
The U.S. Court of Appeals for the Federal Circuit has explained
that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether ‘their
character as a whole is directed to excluded subject matter.’” Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)
(quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims
is on a specific improvement in relevant technology or on a process
that itself qualifies as an “abstract idea” for which computers are
invoked merely as a tool. See id. at 1335–36.
In so doing, as indicated above, we apply a “directed to” two
prong test: 1) evaluate whether the claim recites a judicial exception,
and 2) if the claim recites a judicial exception, evaluate whether the
claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a
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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.” Guidance at 53; see also MPEP
§§ 2106.05(a)–(c), (e)–(h).
The Specification states:
Since the mid-1980s introduction of ‘Pay-at-the-
Pump’ self-service payment methods at filling stations,
lottery organizations have experienced increasing
difficulty in getting prospective consumers or players
into filling station establishments for consumer exposure
to lottery ticket sales opportunity. The impulse lottery
ticket purchase has been removed by this convenience of
payment for fuel by a driver located relatively remote
from the cashier in the filling station but nevertheless
local to the particular filling station. Thus, the customer
is local to the filling station but within that context is
remote from the cashier. In response, lottery
organizations have used non-traditional advertising
methods (particularly, display advertising and signage
placed at or on fuel pump stands) in an effort to reverse
the decline in potential sales exposure. Similar
difficulties are present at establishments that include
lottery ticket sales and also provide for non-in-store
transactions, such as drive-through pharmacies, exterior
vending devices for DVD sales or rentals which devices
are increasing located at convenience stores and other
retail establishments.
Spec. ¶ 2.
The preamble states the claim is “for completing a lottery ticket
purchase transaction local to a lottery ticket retailer location but
remote from a lottery ticket point-of-sale terminal.” Claim 6.
Understood in light of the Specification, claim 6 recites, in pertinent
part:
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display[ing] at least one indicia of an available lottery
game offered for play by the lottery game provider, each
lottery game thereof having a discrete indicia; . . .
selecting by the player one of the available lottery games
for which a game ticket is to be purchased: . . . select[ing]
by the player to effect . . . an account of the lottery game
provider for transferring funds from the account of the
player to the account of the lottery game provider to pay
for the game ticket purchased by the player; and a[] . . .
lottery game ticket transferred from the database through
the lottery ticket point-of-sale terminal . . . by
communication . . . , whereby the mobile
communications device receives a record of the game
ticket purchased by the player for play in the selected
random draw game.
Accordingly, the Examiner found that the claims are “directed
to lottery game purchase.” (Answer 4).
We agree with the Examiner that claim 6 is directed to lottery
game purchase because the nub of the claim recites in pertinent part,
“display[ing] at least one indicia of an available lottery game offered
for play by the lottery game provider” and “selecting by the player
one of the available lottery games for which a game ticket is to be
purchased.” An offer for sale of a lottery ticket and the purchase
thereof is a contractual relationship. The offer to play is made by the
provider. The offer is made for a given ticket. The acceptance is the
purchase by the customer. The consideration is the purchase price of
the ticket. These are the basic elements of a contract and/or
transaction, the engine of commerce. Agreements in the form of a
contract are considered commercial or legal interactions which are a
certain method of organizing human activity. The patent-ineligible
end of the spectrum includes certain methods of organizing human
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activity. Guidance, 84 Fed. Reg. at 52, Alice, 573 U.S. at 218–20.
Turning to the second prong of the “directed to” test, claim 6
only generically requires “a computer system,” “point of sale
terminals,” “range wireless transceivers,” “ticket point-of-sale
terminals,” and “mobile communications device.” These components
are described in the Specification at a high level of generality. See
Spec. ¶¶ 30–43, Fig. 1. We fail to see how the generic recitations of
these most basic computer components and/or of a system so
integrates the judicial exception as to “impose[] a meaningful limit on
the judicial exception, such that the claim is more than a drafting
effort designed to monopolize the judicial exception.” Guidance at
53. We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to
a different state or thing.
Thus, we find that the claims recite the judicial exception of a
certain method of organizing human activity that is not integrated into
a practical application.
That the claims do not preempt all forms of the abstraction or
may be limited to lottery ticket sales, does not make them any less
abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1362–63 (Fed. Cir. 2015) (“And that the claims do not preempt all
price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.”).
Turning to the second step of the Alice analysis, because we
find that the claims are directed to abstract ideas/judicial exceptions,
the claims must include an “inventive concept” in order to be patent-
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eligible, i.e., there must be an element or combination of elements
sufficient to ensure that the claim in practice amounts to significantly
more than the abstract idea itself. See Alice, 573 U.S. at 217–18
(quoting Mayo Collaborative Servs., 566 U.S. at 72–73).
Concerning this step the Examiner found the following:
The additional elements taken alone or in combination do
not perform anything more than conventional computer
implementation. There is no indication that the
combination elements improves the functioning of a
computer or improves any other technology.
Thus, considering the elements and combinations
of elements, these claims as a whole, do not amount to
significantly more than the abstract idea itself. This is
because the claims merely amount to applying the
abstract idea on a computer using the computer elements.
Answer 5. We agree with the Examiner. “[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, 573
U.S. at 225. They do not.
Taking the claim elements separately, the function performed
by the computer at each step of the process is purely conventional.
Using a computer to retrieve, select, access, display, transfer, and
apply decision criteria to data as a result amounts to electronic data
query and retrieval—one of the most basic functions of a computer.
All of these computer functions are well-understood, routine,
conventional activities previously known to the industry. See Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir.
2016); see also In re Katz Interactive Call Processing Patent Litig.,
639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower
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construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . .
those functions can be achieved by any general purpose computer
without special programming.”). In short, each step does no more
than require a generic computer to perform generic computer
functions. The claims do not, for example, purport to improve the
functioning of the computer itself. In addition, as we stated above, the
claims do not affect an improvement in any other technology or
technical field. The Specification spells out different generic
equipment and parameters that might be applied using this concept
and the particular steps such conventional processing would entail
based on the concept of information access under different scenarios
(see, e.g., Spec. ¶¶ 30–43). Thus, the claims at issue amount to
nothing significantly more than instructions to apply the abstract idea
using some unspecified, generic computer. Under our precedents, that
is not enough to transform an abstract idea into a patent-eligible
invention. See Alice, 573 U.S. at 225–26.
Considered as an ordered combination, the computer
components of Appellant’s claims add nothing that is not already
present when the steps are considered separately. The sequence of
data reception-analysis (retrieve, select, access, display, transfer, and
apply decision criteria to data) and storing is equally generic and
conventional or otherwise held to be abstract. See Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of
receiving, selecting, offering for exchange, display, allowing access,
and receiving payment recited an abstraction), Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
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2017) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract), Two-Way Media
Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed.
Cir. 2017) (holding sequence of processing, routing, controlling, and
monitoring was abstract). The ordering of the steps is, therefore,
ordinary and conventional.
We have reviewed all the arguments Appellant has submitted
concerning the patent eligibility of the claims before us that stand
rejected under 35 U.S.C. § 101. (Reply Br. 1–16). We find that our
analysis above substantially covers the substance of all the arguments,
which have been made. But, for purposes of completeness, we will
address various arguments in order to make individual rebuttals of
same.
Appellant argues:
Under Alice and Mayo analysis, the claimed
invention is not merely the abstract idea of a purchase of
lottery game tickets, but rather, the claims include an
inventive concept that ensures the invention amounts to
“significantly more” in that the claims "looked at as a
whole" include meaningful limitations that affect another
technology or technological field.
(Reply Br. 12).
Although we agree with Appellant that the claims must be read,
as a whole, we nevertheless find, on balance, that claim 6 is directed
to a lottery game purchase for the reasons specified above with
respect to our “directed to” findings. As found supra, claim 6 only
includes the following generically recited device limitations: “a
computer system,” “point of sale terminals,” “range wireless
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transceivers,” “ticket point-of-sale terminals,” and “mobile
communications device.” What remains in the claim after
disregarding these device limitations, are abstractions, i.e.,
“display[ing] at least one indicia of an available lottery game offered
for play by the lottery game provider” and “selecting by the player
one of the available lottery games for which a game ticket is to be
purchased.” “A claim for a new abstract idea is still an abstract idea.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed.
Cir. 2016) (emphasis omitted) (citing Mayo, 566 U.S. at 90). To the
extent Appellant is arguing that these are additional elements
constituting an inventive concept, such features cannot constitute the
“inventive concept.” Berkheimer v. HP Inc., 890 F.3d 1369, 1374
(Fed. Cir. 2018) (Moore, J., concurring) (“It is clear from Mayo that
the ‘inventive concept’ cannot be the abstract idea itself, and
Berkheimer . . . leave[s] untouched the numerous cases from this court
which have held claims ineligible because the only alleged ‘inventive
concept’ is the abstract idea.”); see also BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been
clear since Alice that a claimed invention’s use of the ineligible
concept to which it is directed cannot supply the inventive concept
that renders the invention ‘significantly more’ than that ineligible
concept.”).
Citing to McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299 (Fed. Cir. 2016), Appellant argues, “the applicants’
specification details the problem addressed by the invention in the
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technical fields of convenience store retail industry and lottery ticket
purchase transactions.” (Reply Br. 13).
We disagree with Appellant. The question is whether the
claims as a whole “focus on a specific means or method that improves
the relevant technology” or are “directed to a result or effect that itself
is the abstract idea and merely invoke generic processes and
machinery.” McRO, 837 F.3d at 1314. In this case, claim 6 as a
whole is focused on satisfying certain contingencies for a “lottery
ticket purchase.”
Here, Appellant argues that the problems resolved are the result
of “[l]ottery games and sales of tickets for lottery games [being] a
tightly controlled statutory-regulated technology.” (Reply Br. 13–14).
Appellant further goes onto describe that: “If for some reason, players
do not come into the store, the store operator loses revenue and the
lottery provider loses an opportunity for a game ticket transaction,” id.
at 14; “The impulse lottery ticket purchase has been removed by this
convenience of payment for fuel by a driver located relatively remote
from the cashier but nevertheless local to the particular convenience
store retailer.” Id. But, such problems are not focused on a specific
means or method that improves the relevant technology, but rather
focus on certain actions of managing personal behavior.
Appellant next argues:
The claimed invention, viewed as an ordered
combination, and notwithstanding that an element viewed
separately is contended to be abstract, provides
meaningful limitations that together form an
unconventional, patentable combination by which
consumers are retained and encouraged for generating
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repeat and continued business from the provider of
consumer goods within the retail technology.
(Reply Br. 16).
We disagree with Appellant. In our view, the evidence weighs
in favor of the Examiners’ determination that when
the claim as a whole is analyzed to determine whether
any element, or combination of elements, is sufficient to
ensure that the claim amounts to significantly more than
the exception. In regard to these claims, these claims
recite point of sale terminal, communication system,
wireless transceiver, mobile communication device, etc.
In each instance, the functions performed by the
computer components include communicating data,
generating data, linking data, and outputting.
Answer 4–5.
On page 15 of the Reply Brief, Appellant generally re–presents
the elements of the claimed dedicated communication system,
asserting that they contain “an inventive concept.” But, Appellant
offers insufficient evidence as to why reference to these items is
meaningful beyond the face of the language itself other than being the
way that data are carried within the network. There is no further
discussion in the Specification of the particular technology for
performing this claimed step. See Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016); see also
Enfish, 822 F.3d at 1336 (focusing on whether the claim is “an
improvement to [the] computer functionality itself, not on economic
or other tasks for which a computer is used in its ordinary capacity”).
Absent evidence to the contrary, we view the “dedicated
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communication system” limitations to be only an indication of the
environment in which the abstract idea is practiced.
MPEP 2106.05(h) concern[s] generally linking use of a
judicial exception to a particular technological
environment or field of use, including a discussion of the
exemplars provided herein, which are based on Bilski,
561 U.S. at 612, and Flook, 437 U.S. at 588–90. Thus,
the mere application of an abstract method of organizing
human activity in a particular field is not sufficient to
integrate the judicial exception into a practical
application.
Guidance at 55 n.32, see also Alice, 573 U.S. at 223.
Although a dedicated communication system and its attendant
devices are in some sense technological, its use in operating system
functionality can be said to be so notoriously settled that merely
invoking it is no more than abstract conceptual advice to use well
known technology for its intended purpose. See In re TLI Commc’ns
LLC Patent Litig., 823 F.3d 607, 612–13 (Fed. Cir. 2016). (Using a
generic telephone for its intended purpose was a well-established
“basic concept” sufficient to fall under Alice step 1.).
For the reasons identified above, we determine there are no
deficiencies in the Examiner’s prima facie case of patent ineligibility
of the rejected claims. Therefore, we will sustain the Examiner’s
§ 101 rejection of claims 6–11, 13–16, and 23–25.

35 U.S.C. § 103(a) REJECTION
The Examiner rejects independent claims 6 and 25 under 35
U.S.C. § 103(a) based on Smith in view of White. In so doing, the
Examiner finds that “Smith does not disclose the feature wherein a
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dedicated communication system between a computer system of a
lottery game provider and a plurality of authorized lottery ticket point-
of-sale terminals.” (Final Act. 3). In turn, the Examiner relies on
White to disclose this feature finding,
it would have been obvious for one of ordinary skill in
the art to have modified the method of Smith wherein an
access link to a payment transfer system that
communicates with an account of the customer and an
account of the lottery provider . . . as taught by White in
order to complete lottery transaction. Incorporating such
features would assist the mobile transaction in the same
manner.
(Final Act. 5).
Appellant argues,
[i]n the system disclosed by White, ‘[t]housands of
retailers are replaced by software running on the server at
the service provider's premises’ (page 2, let column, lines
16 - 17) ‘which creates a convenient alternative to the
retailer chain model of lottery game play...’ (lines 23 -
25). (Emphasis added). White accordingly describes an
on-line internet game system separate from, and a
replacement for, the existing lottery game
provider/retailer structure for sales of game tickets to
game players.
(Appeal Br. 8) (emphasis omitted, second alteration in original).
We agree with Appellant that White teaches away from the
teachings of the vendor point of sale related claims on appeal and of
Smith. In particular, White discloses, “[t]housands of retailers are
replaced by software running on the server at a service provider’s
premises,” and
[t]he system not only makes it convenient for players to play
and buy lottery tickets while being anywhere in the access area
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of a wireless communication network but also creates a
convenient alternative to the retailer chain model of lottery
game play, thus shortening and simplifying the process chain of
the game.
White ¶10. Here, the disclosure in White of replacing “[t]housands of
retailers” with its wireless mobile phone based software explicitly
discourages the existence of the former. A reference will teach away
if it suggests that the line of development flowing from the reference’s
disclosure is unlikely to be productive of the result sought by the
applicant. See United States v. Adams, 383 U.S. 39, 52 (1966)
(“known disadvantages in old devices which would naturally
discourage the search for new inventions may be taken into account in
determining obviousness”). Accordingly, we do not sustain the
rejection made under 35 U.S.C. § 103(a) using the combination of
Smith and White.
Because claims 7–11 and 23 depend directly or in directly from
claim 6, and claims 13–16 depend from claim 25, and because we
cannot sustain the Examiner’s obviousness rejection of claims 6 and
25, the Examiner’s obviousness rejection of claims 7–11, 13–16, 23
and 243 likewise cannot be sustained.

3 Nothing in the rejection of claim 24 using the additional reference to
Safaei changes the outcome of the rejection of claims 6 and 25 under
35 U.S.C. § 103(a) set forth above.
Appeal 2017-001010
Application 13/269,593

20

CONCLUSION
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed.
See 37 C.F.R. § 41.50(a)(1).
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
6–11, 13–16,
23–25
101 Eligibility 6–11, 13–16,
23–25

6–11, 13–16,
23, 25
103(a) Smith, White, 6–11, 13–
16, 23, 25
24 103(a) Smith, White, Safaei 24
Overall
Outcome
6–11, 13–16,
23–25

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)(1)(iv).
AFFIRMED