IGT

Patent Trials and Appeals Board

Feb 13, 2020

14169869 - (D) (P.T.A.B. Feb. 13, 2020)

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.
14/169,869 01/31/2014 Cameron A. Filipour 025094-7449/P001845-001 3659
29159 7590 02/13/2020
Neal, Gerber & Eisenberg LLP (IGT)
2 N. LaSalle Street
Suite 1700
Chicago, IL 60602-3801
EXAMINER
COBURN, CORBETT B
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
02/13/2020 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):
amasia@ngelaw.com
ipusmail@ngelaw.com
patents@igt.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CAMERON A. FILIPOUR
Appeal 2018-005263
Application 14/169,869
Technology Center 3700
Before JENNIFER D. BAHR, LINDA E. HORNER, and
MICHELLE R. OSINSKI, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1‒20 under 35 U.S.C. § 101 as being
directed to patent ineligible subject matter. Appellant’s representative
presented arguments at an oral hearing on January 7, 2020.2 We have
jurisdiction under 35 U.S.C. § 6(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as IGT. Appeal
Br. 2.
2 A transcript of the oral hearing was added to the Official File Wrapper on
January 21, 2020 (“Tr.”).
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The Examiner rejected the claims on appeal because the claims are
directed to a wagering game (i.e., game rules) and a method of managing a
game, which are ineligible, and do not include additional elements that
amount to significantly more than the abstract idea. Final Act. 2‒20.
Distinguishing prior Federal Circuit decisions addressing patent ineligibility
of certain gaming claims, Appellant argues that the claims on appeal are not
directed to an abstract idea and include significantly more than the game
rules. Appeal Br. 23‒32. For the reasons explained below, we agree with
the Examiner’s determination that the subject matter of claims 1‒20 is
unpatentable under 35 U.S.C. § 101. Thus, we affirm.
CLAIMED SUBJECT MATTER
Appellant’s Specification describes that “[g]aming systems that
provide players awards in primary or base games are well known.”
Spec. ¶ 2. “Bonus or secondary games are also known in gaming systems.”
Id. ¶ 4. These bonus games usually are awarded to a player in addition to
any awards provided for plays of the primary game, and the bonus games
usually do not require an additional wager to be placed by the player. Id.
The Specification describes that “[p]art of the enjoyment and excitement of
playing certain gaming systems is the initiation or triggering of a bonus
game, even before the player knows an amount of a bonus award won via
the bonus game.” Id. The Specification further describes that “[v]arious
players continually seek out new and different variations to gaming systems”
and “[a] continuing need thus exists for gaming systems and methods that
provide new, exciting, and engaging games.” Id. ¶ 5.
The claimed subject matter relates generally to “a gaming system and
method providing a secondary game having a varying narrative based on
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secondary game progress.” Spec. ¶ 6. More specifically, the gaming system
enables a player to play a primary game in association with a secondary
game. Id. ¶ 7. The secondary game progresses based at least in part on
certain events that randomly occur during play of the primary game. Id.
The secondary game includes a narrative or storyline that unfolds or
develops based at least in part on the player’s progress in the secondary
game. Id. Thus, the gaming system leverages the random nature of the
primary game to provide an unpredictable secondary game narrative that is
linked to the player’s progress in the secondary game to maintain player
interest in the secondary game. Id.
Claims 1, 6, 9, and 16 are independent. Claim 1 is illustrative of the
subject matter on appeal and is reproduced below.3
1. A gaming system comprising:
a housing;
at least one display device supported by the housing;
a plurality of input devices supported by the housing, the
plurality of input devices including an acceptor;
at least one processor; and
at least one memory device that stores a plurality of
instructions which, when executed by the at least one processor,
cause the at least one processor to operate with the at least one
display device and the plurality of input devices to:

3 Appellant argues claims 1‒20 as a group. Appeal Br. 21‒32; id. at 26
(presenting arguments for claim 1 and stating that “[s]imilar reasoning
applies to Claims 2 to 20”). We select claim 1 as representative of the
group, and claims 2‒20 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2017).
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(a) if a physical item associated with a monetary value is
received by the acceptor, establish a credit balance based at
least in part on the monetary value, wherein the physical item is
one selected from the group consisting of: a ticket associated
with the monetary value and a unit of currency;
(b) if an actuation of a wager button is received, place a
wager on a play of a primary game, the credit balance being
decreasable by the wager, a current primary theme of said
primary game being one of a plurality of different primary
themes;
(c) randomly determine and display an outcome of said
play of the primary game;
(d) determine any awards associated with the displayed
outcome of said play of the primary game, the credit balance
being increasable by any determined awards;
(e) display any determined awards associated with the
displayed outcome of said play of the primary game;
(f) upon an occurrence of a first triggering event, for a
secondary game including a plurality of different object
visitation areas, each object visitation area being associated
with: (i) one of the primary themes, and (ii) one of an unvisited
status and a visited status:
(A) determine one of the object visitation areas
based, at least in part, on the status of each of one or
more of the object visitation areas, wherein for each of at
least one of the object visitation areas, a probability of
determining said object visitation area when said object
visitation area has the unvisited status is greater than a
probability of determining said object visitation area
when said object visitation area has the visited status;
(B) display a secondary game object in association
with said determined object visitation area;
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(C) if said determined object visitation area has the
unvisited status, change the status of said determined
object visitation area to the visited status; and
(D) if the primary theme associated with said
determined object visitation area is different than the
current primary theme of said primary game, change the
current primary theme of said primary game to the
primary theme associated with said determined object
visitation area;
(g) upon an occurrence of a second different triggering
event, for the secondary game:
(A) determine one of a plurality of different video
segments based at least in part on: (i) the object visitation
area that said secondary game object is displayed in
association with; and (ii) at least one of any video
segments previously displayed for the secondary game;
and
(B) display the determined video segment; and
(h) if an actuation of a cashout button is received, initiate
a payout associated with the credit balance.
Appeal Br. 34‒35 (Claims Appendix).
OPINION
Legal Principles
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).
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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 concept the claim is “directed to.” See Alice, 573
U.S. 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.
(15 How.) 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 187; see also id. at 191(“We
view respondents’ claims as nothing more than a process for molding rubber
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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 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., id. 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 (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.
In 2019, the PTO published revised guidance on the application of
§ 101. See 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (USPTO Jan. 7, 2019) (“Guidance”). Under that 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
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human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)).
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 are 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, 84 Fed. Reg. at 54–56.
Step One: Does Claim 1 Fall within a Statutory Category of § 101?
We examine whether the claim recites one of the enumerated statutory
classes of subject matter, i.e., process, machine, manufacture, or
composition of matter, eligible for patenting under 35 U.S.C. § 101.
Claim 1 is directed to a gaming system, including a housing, a display
device, input devices, a processor and a memory device, which collectively
recite one of the statutory classes (i.e., a manufacture) under 35 U.S.C.
§ 101.
Step 2A, Prong One: Does Claim 1 Recite a Judicial Exception?
We next look to whether the claim recites any judicial exceptions,
including certain groupings of abstract ideas, i.e., mathematical concepts,
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certain methods of organizing human activity such as a fundamental
economic practice, or mental processes.
Claim 1 recites the memory device stores instructions that cause the
processor to operate with the display device and input devices to perform
various functions associated with conducting a wagering game. The
Examiner found these game rules amount to a “method of exchanging and
resolving financial obligations based on probabilities.” Final Act. 2‒5
(identifying the functions recited in steps (a) through (h) of claim 1 as
reciting “game rules.”). For the reasons that follow, we agree with the
Examiner that claim 1 recites rules for conducting a wagering game.
First, the claim recites that the instructions cause the processor, in
response to receipt of a physical item associated with a monetary value, to
“establish a credit balance based at least in part on the monetary value.”
Claim 1, step (a). This step is part of a method of conducting a wagering
game. In other words, in order to be able to place a bet, one has to establish
that they have money with which to wager. This step is a fundamental part
of exchanging and resolving financial obligations based on probabilities. As
the Examiner correctly noted, this step recites a simple accounting process
that establishes an account for later game play. Final Act. 3. We discuss
below in prong 2 of the step 2A analysis the additional limitations in this
step, which recite that the account is established in response to receipt of a
physical item, i.e., a ticket or a unit of currency, input into an acceptor.
Second, the claim recites that the instructions cause the processor, in
response to actuation of a wager button, to “place a wager on a play of a
primary game, the credit balance being decreasable by the wager, a current
primary theme of said primary game being one of a plurality of different
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primary themes.” Claim 1, step (b). This step is akin to step (b) recited in
method claim 1 discussed in In re Smith, 815 F.3d 816, 817–18 (Fed. Cir.
2016), in which the dealer accepts a wager from each player. Placing a
wager is the first step in a method of conducting a wager game that involves
exchanging and resolving financial obligations based on probabilities. The
fact that the credit balance is decreasable by the wager is an inherent feature
of a credit balance established for the purpose of wagering. And the general
recitation that the primary game has a primary theme does not remove the
recited step from the realm of abstraction. We discuss below in prong 2 of
the step 2A analysis the additional limitation in this step, which recites that
the wager is placed in response to actuation of a wager button.
Third, the claim recites that the instructions cause the processor to
“randomly determine and display an outcome of said play of the primary
game.” Claim 1, step (c). This step is akin to step (c) recited in method
claim 1 in Smith, in which the dealer deals cards from a random set of
playing cards. In other words, a method of conducting a wagering game
entails randomly determining an outcome and informing the player of the
outcome. This step is a fundamental part of exchanging and resolving
financial obligations based on probabilities.
Fourth, the claim recites that the instructions cause the processor to
“determine any awards associated with the displayed outcome of said play of
the primary game, the credit balance being increasable by any determined
awards.” Claim 1, step (d). This step is akin to steps (h) and (i) recited in
method claim 1 in Smith, in which the dealer determines if the player has
won the game and resolves the wagers based on whether the player won.
Again, a method of conducting a wagering game entails determining if a
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player has won the game and resolving the wager placed on the game by the
player. Thus, this step is a fundamental part of exchanging and resolving
financial obligations based on probabilities.
Fifth, the claim recites that the instructions cause the processor to
“display any determined awards associated with the displayed outcome of
said play of the primary game.” Claim 1, step (e). This simple outputting
step is part of a method of conducting a wagering game in which the result
of the wager and game play is made visible to the player in order to resolve
the wager. Thus, this step is a fundamental part of exchanging and resolving
financial obligations based on probabilities.
Sixth, the claim recites that the instructions cause the processor to:
upon an occurrence of a first triggering event, for a secondary
game including a plurality of different object visitation areas,
each object visitation area being associated with: (i) one of the
primary themes, and (ii) one of an unvisited status and a visited
status:
(A) determine one of the object visitation areas based, at
least in part, on the status of each of one or more of the
object visitation areas, wherein for each of at least one of
the object visitation areas, a probability of determining
said object visitation area when said object visitation area
has the unvisited status is greater than a probability of
determining said object visitation area when said object
visitation area has the visited status;
(B) display a secondary game object in association with
said determined object visitation area;
(C) if said determined object visitation area has the
unvisited status, change the status of said determined
object visitation area to the visited status; and
(D) if the primary theme associated with said determined
object visitation area is different than the current primary
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theme of said primary game, change the current primary
theme of said primary game to the primary theme
associated with said determined object visitation area.
Claim 1, step (f), substeps (A) through (D). This step amounts to
instructions for determining a particular award, i.e., the award of a secondary
game, based on play of the primary game. For instance, the Specification
describes that a first triggering event that triggers an award of the secondary
game includes a first secondary game movement event, such as three symbol
display areas in a slot machine each displaying a wind symbol. Spec. ¶ 44.
If the award is a secondary game, then this step includes the processor
determining which secondary game to display to the user and displaying it,
while keeping track of what displays the user already may have seen and
coordinating theming between the primary and secondary games. For
instance, in the slot machine example described in the Specification, the
gaming system determines which object visitation area in the secondary
game to visit based on which areas have not yet been visited and proximity
of the area to the current visitation area. Id. ¶ 46. This step and its
subordinate steps are merely rules of conducting the wagering game,
including how the game is displayed to the user based on the user’s past
play. This step and its subordinate steps are a fundamental part of
exchanging and resolving financial obligations based on probabilities.
Further, even if one were to find that the specificity of the recited
limitation goes beyond simply exchanging and resolving financial
obligations based on probabilities, the recited limitations nonetheless pertain
to managing personal behavior. Specifically, the awarding of a secondary
game and the selection of particular theming of the secondary game based
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on the user’s past play is designed to keep the player interested in playing
the game. Spec. ¶¶ 7, 19; Tr. 7:14‒19, 18:6‒14.
Seventh, the claim recites that the instructions cause the processor to
upon an occurrence of a second different triggering
event, for the secondary game:
(A) determine one of a plurality of different video
segments based at least in part on: (i) the object visitation area
that said secondary game object is displayed in association
with; and (ii) at least one of any video segments previously
displayed for the secondary game; and
(B) display the determined video segment.
Claim 1, step (g), substeps (A), (B). This step amounts to instructions for
determining a particular award for the secondary game, i.e., the award of
display of a video segment, based on play of the primary game. For
instance, the Specification describes that a second triggering event that
triggers an award of a video segment can occur when three symbol display
areas in a slot machine each display a story symbol. Spec. ¶ 59. This step
and its subordinate steps are merely rules of conducting the wagering game
and how awards are provided to the user based on the user’s play. This step
and its subordinate steps are a fundamental part of exchanging and resolving
financial obligations based on probabilities.
Further, even if one were to find that the specificity of the recited
limitation goes beyond simply exchanging and resolving financial
obligations based on probabilities, the recited limitations nonetheless pertain
to managing personal behavior. Specifically, the awarding of a video
segment for play of a secondary game is designed to keep the player
interested in playing the game. Spec. ¶¶ 7, 19; Tr. 7:14‒19, 18:6‒14.
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Finally, eighth, the claim recites that the instructions cause the
processor to “initiate a payout associated with the credit balance.” Claim 1,
step (h). This is the final step of any method of conducting a wagering
game, i.e., the payout for a winning bet. This simple outputting step is
necessary to resolve the wager. Thus, this step is a fundamental part of
exchanging and resolving financial obligations based on probabilities.
Each of the above-described steps relates to rules of conducting a
wagering game, in which the rules are part of exchanging and resolving
financial obligations based on probabilities, and/or relates to managing
personal behavior. See In re Marco Guldenaar Holding B.V., 911 F.3d
1157, 1160 (Fed. Cir. 2018) (holding that rules for playing games “is one
type of certain method of organizing human activity.”); In re Smith, 815
F.3d at 818 (holding that rules for conducting a wager game compare to
fundamental economic practices). Fundamental economic practices and
managing personal behavior or relationships or interactions between people
fall within the abstract idea exception subgrouping of certain methods of
organizing human activity. Guidelines, 84 Fed. Reg. at 52. Thus, each of
the steps discussed above recites a certain method of organizing human
activity, which is a judicial exception.
Considered as a whole, these steps discussed above, under their
broadest reasonable interpretation, contribute to the rules of playing the
game and recite steps for managing interactions between people, which are
certain methods of organizing human activity. These limitations are similar
to other processes that courts have determined are certain methods of
organizing human activity. See, e.g., Marco Guldenaar, 911 F.3d at 1160‒
61 (holding that a claimed “method of playing a dice game” was drawn to an
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abstract idea); Smith, 815 F.3d at 819 (holding that a “method of conducting
a wagering game” using a deck of playing cards was drawn to an abstract
idea).
Step 2A, Prong Two: Does Claim 1 Recite Additional Elements that
Integrate the Judicial Exceptions into a Practical Application?
Following our Office guidance, having found that claim 1 recites a
judicial exception, we next determine whether the claim recites “additional
elements that integrate the exception into a practical application” (see MPEP
§§ 2106.05(a)–(c), (e)–(h)). See Guidance, 84 Fed. Reg. at 54.
The preamble of claim 1 is directed to a “gaming system.” The body
of claim 1 recites certain physical components of the gaming system in a
generic manner. Specifically, claim 1 recites that the gaming system
comprises “a housing,” “at least one display device supported by the
housing,” “a plurality of input devices supported by the housing, the
plurality of input devices including an acceptor,” “at least one processor,”
and “at least one memory device that stores a plurality of instructions which,
when executed by the at least one processor, cause the at least one processor
to operate with the at least one display device and the plurality of input
devices” to perform various functions. Also, steps (a), (b), and (h)
inferentially recite additional features. Step (a) recites that a credit balance
is established based, at least in part, on the monetary value of a physical item
received by the acceptor of the input devices, wherein the physical item is
selected from the group consisting of a ticket and a unit of currency. Step
(b) recites that a wager is placed on a play of a primary game “if an
actuation of a wager button is received.” Step (h) recites that a payout is
initiated “if an actuation of a cashout button is received.”
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The Examiner interpreted this claim language as reading on a
computer with a keyboard, a display, a scanner, (optionally) a printer, and an
internet connection. Ans. 14. The Examiner’s interpretation is reasonable
when these limitations are read in light of the Specification. Appellant’s
Specification describes, “It should be appreciated that a ‘gaming system’ as
used herein refers to various configurations of: (a) one or more central
servers, central controllers, or remote hosts; (b) one or more EGMs; and/or
(c) one or more personal gaming devices, such as desktop computers, laptop
computers, tablet computers or computing devices, personal digital
assistants (PDAs), mobile telephones such as smart phones, and other
mobile computing devices.” Spec. ¶ 91. The Specification supports a
reading of “gaming system” that encompasses a general-purpose computer
having generic computer components. We agree with the Examiner that the
buttons recited in claim 1 encompass buttons on a keyboard, for instance.
Ans. 14, ¶ 31 (finding that the wager button could be the “W” key and the
cashout button could be the “C” key on a standard keyboard). We further
agree with the Examiner that the claim, as written, encompasses an acceptor
that is capable of receiving a ticket via scanning. Id. at 14, ¶ 29 (reading the
acceptor on a “common scanner.”). See also Spec. ¶ 105 (describing that
“the [electronic gaming machine (EGM)] includes one or more input
devices” that “may include any suitable device that enables an input signal
to be produced and received by the at least one processor of the EGM.”); see
also id. ¶ 106 (describing that the payment device can be configured to
communicate with a player’s mobile device “to retrieve relevant information
associated with that player to fund the EGM”).
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These physical components of the gaming system are recited
generically and encompass any computing device that can be used to input
data and store and run software. The physical components of the gaming
system are not specific to any particular manifestation of the gaming system
(e.g., a dedicated gaming machine, versus a game played on a PC, home
gaming system, or handheld device).
Thus, the steps of claim 1 are recited as being performed with generic
computer components that, when considered both individually and in
combination, do not implement the judicial exception with, or use the
judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim. The recitations of the generic structures, with
which the recited steps are performed, are merely instructions to apply the
judicial exception in the context of a game. Thus, the claims do not apply,
rely on, or use rules of conducting the wagering game in a manner that
imposes a meaningful limit on those aspects of the claim. See, e.g., Smith,
815 F.3d at 819 (“Just as the recitation of computer implementation fell
short in Alice, shuffling and dealing a standard deck of cards are ‘purely
conventional’ activities” that are not “sufficient to ‘transform’ the claimed
subject matter into a patent-eligible application of the abstract idea.”).
Rather, the claim is simply a drafting effort designed to monopolize the rules
of conducting a wagering game of claim 1.
Even if we were to agree with Appellant’s initial argument that the
“acceptor” or the inferentially recited “wager button” and “cashout button”
limit the scope of claim 1 to implementation of the rules of conducting a
wagering game using a dedicated gaming machine, such as a slot machine,
we do not find that such a limitation is adequate to impose a meaningful
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limit on the judicial exception. Rather, the recitation of physical
components of a dedicated gaming machine are akin to a field of use
limitation and amount to a drafting effort designed to monopolize the
judicial exception.
Appellant appears to shift its argument in its Supplemental Appeal
Brief and at the oral argument.4 Instead of arguing that the physical
components, such as the acceptor, wager button, and cashout button, of the
gaming system impose a meaningful limit on the abstract idea, Appellant
argues that programming a general purpose computer to carry out specific
steps of the primary game and the secondary game as recited in the claim
creates a “special-purpose computer” that is a practical application of the
abstract idea. Specifically, Appellant argues that “the claims integrate the
alleged abstract idea into a practical application[, which is] a special-purpose
gaming system configured to operate in a very particular manner.” Supp.
Appeal Br. 2. Appellant argues that “[b]ecause the secondary game
progresses based on the play of the primary game, the gaming system
leverages the random nature of the primary game to provide an
unpredictable secondary game narrative that is nevertheless linked to the
player’s progress in the secondary game to maintain player interest in the
secondary game.” Id. at 2‒3. Appellant similarly argued during the oral
hearing that the practical application is “a unique gaming system configured
to operate in a very specific manner.” Tr. 13:4‒6. Appellant contends that

4 Appellant argued in the Appeal Brief that these specialized components,
i.e., an acceptor, a wager button, and a cashout button, limit the scope of the
“gaming system” of claim 1 so that it is not merely a “general-purpose
computing device.” Appeal Br. 29. Appellant abandoned this argument
during the oral hearing. Tr. 10:17‒11:4.
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by programming a general purpose computer to carry out specific steps of
the primary game and the secondary game as recited in claim 1, the claim
recites a new special-purpose computer that is analogous to a new,
unconventional deck of cards. Tr. 14:11‒19 (drawing an analogy to In re
Smith, 815 F.3d at 818).
Appellant’s analogy to Smith is misplaced. The claim at issue in
Smith was directed to a method of conducting a wagering game. Smith, 815
F.3d at 817. The rules for playing the game included the dealer examining
hands of dealt cards to determine if any hand has a “Natural 0” count, and
either resolving wagers or continuing play in a specific manner based on the
result of this examination, and then resolving wagers based on a specific
scoring system. Id. at 817‒18. In the rejection of the claims under
35 U.S.C. § 101, the Examiner acknowledged that the set of rules for playing
the game were new, but the Examiner found that the rules were an abstract
idea. Id. at 818. The court in Smith agreed that the claims, “directed to rules
for conducting a wagering game, compare to other ‘fundamental economic
practice[s]’ found abstract by the Supreme Court.” Id. at 818‒19 (agreeing
with the Board that “[a] wagering game is, effectively, a method of
exchanging and resolving financial obligations based on probabilities
created during the distribution of the cards.”). The court then examined,
under step two of the Alice inquiry, whether the claim recited an inventive
concept sufficient to transform the set of rules for a game into a patent
eligible application. Id. at 819. The court found that the additional
limitations in the claim recited “shuffling and dealing a standard deck of
cards.” Id. The court held that these additional limitations are “‘purely
conventional’ activities” that are not sufficient to transform the abstract
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game rules into a patent-eligible application of the abstract idea. Id. The
court further explained, “[t]hat is not to say that all inventions in the gaming
arts would be foreclosed from patent protection under § 101” and that “[w]e
could envisage, for example, claims directed to conducting a game using a
new or original deck of cards potentially surviving step two of Alice.” Id.
Appellant’s argument that the combination of its specific rules for
conducting a wagering game on a general-purpose computer creates a
special purpose computer that amounts to a practical application of the
abstract idea misses the mark. Appellant is asking us to ignore the holding
of Smith. In Smith, the court did not find that the combination of the new
rules for playing a game with a conventional deck of cards creates a special
purpose deck of cards. Likewise, in this case, Appellant has not imposed
meaningful limits on the rules for playing a game simply by programming a
general-purpose computer to perform them.
Here, the additional elements recited in claim 1 do not reflect an
improvement in the functioning of a computer, or an improvement to other
technology or a technical field. See Tr. 17:24‒18:7 (Appellant’s counsel
admitting that the claimed invention is “not improving the speed,” “not
improving the processor,” and “not improving access to data”). Instead,
Appellant argues that the improvement that provides a practical application
in claim 1 is “an improved game” that people want to play by “keeping the
player’s interest in the second game from the random nature of the
interrelatedness of the two games.” Id. at 18:7‒14.
Under step one of the Alice inquiry, “we evaluate the focus of the
claimed advance over the prior art to determine if the character of the claim
as a whole, considered in light of the specification, is directed to excluded
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subject matter.” Trading Technologies Int’l, Inc. v. IBG LLC, 921 F.3d
1084, 1092 (Fed. Cir. 2019) (citations and internal quotation marks omitted).
Here, the claims are directed to an improvement in the game itself so as to
keep the player’s interest in the game. The problem the invention is
designed to solve is the age-old problem faced by casinos; that of keeping a
player’s interest so that the player will continue wagering. See Tr. 7:14‒19
(“[T]hat’s IGT’s business. That’s the technology. It’s having a game, it’s
having a technology presented to a user that makes it so the user will want to
go back to the game and fill the casinos. That’s the primary purpose of the
entire business.”).
The invention is not directed to solving a problem rooted in computer
technology. This asserted improvement to the manner in which a game is
played does not reflect an improvement in the particular manufacture,
i.e., the gaming machine. Rather, the improvement lies in the rules for
conducting a wagering game, which is the judicial exception itself. At the
oral argument, Appellant’s counsel drew analogies to the inventions found to
be patent eligible in DDR Holdings, LLC v. Hotel.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014), Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880
F.3d 1356 (Fed. Cir. 2018), and Data Engine Techs. LLC v. Google LLC,
906 F.3d 999 (Fed. Cir. 2018). Tr. 16:5‒18:14. We address each of these
cases in turn.
The court in DDR found that the claims, which were directed to
creating a composite web page that displays product information from a
third-party merchant, but retains the host website’s “look and feel,” did not
recite a mathematical algorithm or a fundamental economic or longstanding
commercial practice. 773 F.3d at 1257. The court said that the claims
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address a challenge particular to the Internet of retaining website visitors.
Id. “[T]hese claims stand apart because they do not merely recite the
performance of some business practice known from the pre-Internet world
along with the requirement to perform it on the Internet. Instead, the
claimed solution is necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks.”
Id. By contrast, Appellant’s claim 1 before us is directed to a business
problem of the gaming industry, i.e., how to keep customers interested in
playing a wagering game, and not to a problem rooted in computer
technology or specifically arising in the realm of computer gaming.
In Core Wireless, the claims were directed to an improved user
interface for computing devices and to a particular manner of summarizing
and presenting information in electronic devices with small screens. 880
F.3d at 1362‒63. The claims recited limitations that restrain the type of data
that can be displayed in the summary window and require that the device
applications exist in an “un-launched state.” Id. The court held that the
claimed invention improved upon prior art interfaces that required the user
to scroll and switch views. Id. at 1363. “The disclosed invention improves
the efficiency of using the electronic device by bringing together ‘a limited
list of common functions and commonly accessed stored data,’ which can be
accessed directly from the main menu.” Id. The court noted that this
improved the speed of a user’s navigation. Id. “This language clearly
indicates that the claims are directed to an improvement in the functioning of
computers, particularly those with small screens.” Id. Unlike the case in
Core Wireless, Appellant admits that the subject matter of claim 1 does not
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improve the speed of the computer or improve the user’s access to data.
Tr. 18:1‒7.
In Data Engine, the court held that the claims solved a known
technological problem in computers, i.e., spreadsheets that required users to
master complex and arbitrary operations and search through complex menu
systems for commands, by providing a highly intuitive user-friendly
interface. 906 F.3d at 1007‒08. “The improvement allowed computers, for
the first time, to provide rapid access to and processing of information in
different spreadsheets, as well as easy navigation in three-dimensional
spreadsheets.” Id. at 1008. The court noted that the industry applauded the
invention as “improving computers’ functionality as a tool” and that “the
claims require a specific interface and implementation for navigating
complex three-dimensional spreadsheets using techniques unique to
computers.” Id. at 1008–09. Unlike the case in Data Engine, the subject
matter of claim 1 does not improve the computer’s functionality; rather, it
makes an “improved game” that players will want to play. Tr. 18:6‒14.
In short, the additional elements discussed above: (1) do not improve
the functioning of a computer or other technology; (2) are not applied with
any particular machine; (3) do not effect a transformation of a particular
article to a different state; and (4) are not applied in any meaningful way
beyond generally linking the use of the judicial exception to a particular
technological environment. See MPEP §§ 2106.05(a)–(c), (e)–(h). The
additional elements recited in claim 1 merely include instructions to
implement the rules for conducting a wagering game on a computer and use
the computer as a tool to implement the rules. See MPEP § 2106.05(f)
(“Use of a computer or other machinery in its ordinary capacity for . . . tasks
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(e.g., to receive, store, or transmit data) or simply adding a general purpose
computer or computer components after the fact to an abstract idea . . . does
not provide significantly more.”). Thus, the additional elements do not add
meaningful limits to the judicial exception recited in claim 1. Consequently,
the claimed invention does not integrate the abstract idea into a “practical
application.” Thus, claim 1 is directed to an abstract idea, which is a judicial
exception to patent eligible subject matter under 35 U.S.C. § 101.
Step 2B: Does Claim 1 Recite an Inventive Concept?
We next consider whether claim 1 recites any elements, individually
or as an ordered combination, that transform the abstract idea into a patent-
eligible application, e.g., by providing an inventive concept. Alice, 573 U.S.
at 217–18. The guidance similarly states, under Step 2B, “examiners should
. . . evaluate the additional elements individually and in combination . . . to
determine whether they provide an inventive concept (i.e., whether the
additional elements amount to significantly more than the exception itself).”
84 Fed. Reg. at 56 (emphasis added).
As discussed above, the additional elements include generic
recitations of conventional computer components. These additional
elements, when considered individually and as an ordered combination, do
not add a specific limitation or combination of limitations that are not
well-understood, routine, conventional activity in the field. Rather, the
claimed computer components are recited at such a high level of generality
as to encompass any computer capable of being programmed with rules for
conducting the wagering game. And as discussed above, the Specification
describes that the “gaming system” refers to configurations of “desktop
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computers, laptop computers, table computers or computing devices,” etc.
Spec. ¶ 91.5
Appellant concedes that its argument under Step 2B is “not about the
physical pieces and it’s not about the computer per se that the invention
could be applied to.” Tr. 5:11‒13; id. at 6:20‒25 (“we’re not talking about
whether it’s a conventional computer. Obviously, this software can be run
on [a] conventional computer. We’re not necessarily even talking about the
physical components, the slot machine, the input/outputs, the acceptor that
you use to enter a wager.”). Rather, Appellant argues that “[w]hat is not
routine and conventional is the combination of elements in the claims”
including “a primary game” and a related “secondary game” that “progresses
based at least in part on certain events that occurred during the play of the
random game.” Id. at 5:13‒19. Appellant argues that “[t]his invention is a
new – it’s essentially the software is running a new system. It’s not
conventional, it’s not routine.” Id. at 9:24‒10:2. Appellant argues “these
claims in software are no different than the new deck [of cards] that In re
Smith talked about and which Judge Moore and Judge Hughes said would
pass step 2 of Alice. It’s just in the form of software.” Id. at 7:1‒5. See also
id. at 11:5‒8 (“The basis of the argument is what’s new, again, is the new 52
card deck. It’s the new software carried out – the new system carried out in
the software is our argument on step 2”).
This argument fails because what makes the software arguably “new”
is the abstract idea, i.e., the steps relating to the method of conducting a

5 Further, the Examiner provided ample evidence that the claimed physical
components, as properly interpreted, are conventional components of
machines used for gaming. Final Act. 9‒15.
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wagering game. According to the Guidance, under Step 2B, “examiners
should . . . evaluate the additional elements individually and in combination
. . . to determine whether they provide an inventive concept (i.e., whether the
additional elements amount to significantly more than the exception itself).”
See Guidance, 84 Fed. Reg. at 56 (emphasis added). Thus, the second step
of the inquiry (Step 2B) considers those elements within the claim other than
those drawn to the judicial exception. See, e.g., Examples accompanying
Guidance (Example 37 (claim 3 analysis) and Example 40 (claim 2
analysis)). 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.”).
Claim 1 fails to add a specific limitation beyond the judicial exception
that is not ‘well-understood, routine, conventional” in the field. Instead,
claim 1 “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, 84 Fed. Reg. at 56. For the reasons
discussed above, we find no element or combination of elements recited in
claim 1 that contains any “inventive concept” or adds anything “significantly
more” to transform the abstract concept into a patent-eligible application.
Alice, 573 U.S. at 221.
For these reasons, we find no error in the Examiner’s rejection of
claims 1‒20 under 35 U.S.C. § 101.
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CONCLUSION
We sustain the Examiner’s rejection of claims 1‒20 under 35 U.S.C.
§ 101. Thus, we affirm.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1‒20 101 Patent ineligible
subject matter
1‒20
TIME PERIOD FOR RESPONSE
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