Jamie Abrahamson

Patent Trials and Appeals Board

Oct 31, 2019

15157518 - (D) (P.T.A.B. Oct. 31, 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.
15/157,518 05/18/2016 Jamie Abrahamson 323.007US1 3769
97462 7590 10/31/2019
Mark A. Litman & Associates, P.A.
7001 Cahill Road, Ste. 15A
Edina, MN 55439
EXAMINER
DENNIS, MICHAEL DAVID
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
10/31/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JAMIE ABRAHAMSON
______________________

Appeal 2018-001233
Application 15/157,518
Technology Center 3700
_______________________

Before MICHELLE R. OSINSKI, JEREMY M. PLENZLER, and
GEORGE R. HOSKINS, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 10–19 and 21–23.2 An oral hearing was held on
September 10, 2019. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE CLAIMED SUBJECT MATTER

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as the sole
inventor, Mr. Jamie Abrahamson. Appeal Br. 3.
2 Claims 1–6 and 20 are withdrawn, and claim 7–9 are cancelled. Appeal
Br. 46–52 (Claims App.).
Appeal 2018-001233
Application 15/157,518

2
Claims 10 and 21 are independent. Claim 10 is reproduced below.
10. A system for enabling a method of executing a game of
baccarat with a side bet event, the game of baccarat comprising
a player hand of playing cards in competition with a banker
hand of playing cards, a player hand position and a banker hand
position receiving playing cards from at least one randomized
deck of 52 playing cards, the system comprising:
a gaming table with at least two distinct player positions
at the gaming table;
the gaming table having positions thereon for placing an
initial wager from at least one of at least two player positions at
the gaming table on the game of baccarat;
the gaming table having positions thereon for placing a
second wager on a side bet event from at least one of at least
two player positions at the gaming table on the game of
baccarat resolved by using final playing cards dealt to the
player hand position and final playing cards dealt to the banker
hand position;
each of the at least two player positions has a secondary
random outcome indicator display;
the gaming table is associated with a random event
generator providing distinct random event outcome indicators
to the secondary random outcome indicator displays at each of
the at least two player positions; and
each distinct random event outcome indicator displaying
a single digit number value selected from the group consisting
of 0, 1, 2, 3, 4, 5, 6, 7, 8 and 9.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Jones
Walker
Merati

US 4,861,041
US 2010/0025931 A1
US 2016/0101347 A1

Aug. 29, 1989
Feb. 4, 2010
Apr. 14, 2016

Appeal 2018-001233
Application 15/157,518

3
THE REJECTIONS3
I. Claims 10–19 and 21–23 stand rejected under 35 U.S.C. § 101
as directed to patent ineligible subject matter. Final Act. 2–4.
II. Claims 10 and 214 stand rejected under 35 U.S.C. § 103 as
unpatentable over Merati and Walker. Id. at 6–9; Ans. 4–9.
III. Claims 15 and 235 stand rejected under 35 U.S.C. § 103 as
unpatentable over Merati, Walker, and Jones. Final Act. 11;
Ans. 9–10.

3 A rejection of claims 21–23 under 35 U.S.C. § 112(b) as indefinite (Final
Act. 5), and rejections, under 35 U.S.C. § 103, of: claims 11–14, 21, and 22
as unpatentable over Merati, Walker, and Bigelow (US 8,257,164 B2; issued
Sept. 4, 2012) (id. at 9–10) and claims 15–19 and 23 as unpatentable over
Merati, Walker, Bigelow, and Jones (id. at 11–12) have been withdrawn
(Ans. 10) and are not before us on appeal.
4 The Examiner did not include claims 11–14 and 22 in the Answer (Ans.
4–9), and Appellant views the Examiner’s rejection in the Final Action of
claims 10–14, 21, and 22 (Final Act. 6–9) as having been modified so as to
be only a rejection of claims 10 and 21 (Reply Br. 2). Accordingly,
Appellant limits its arguments in the Reply Brief to claims 10 and 21. Id. at
7–10. Although the Examiner has not clearly withdrawn the rejection of
claims 11–14 and 22 (Ans. 10), we do not discuss these claims in our
analysis due to Appellant’s reliance on a withdrawal of the rejection of these
claims. We leave it to the Examiner to clarify in the record whether this
ground of rejection is applicable to claims 11–14 and 22.
5 The Examiner did not include claims 16–19 in the Answer (Ans. 9–10),
and Appellant views the Examiner’s rejection in the Final Action of claims
15–19 and 23 (Final Act. 11) as having been modified so as to be only a
rejection of claims 15 and 23. Reply Br. 2–3. Accordingly, Appellant limits
its arguments in the Reply Brief to claims 15 and 23. Reply Br. 10–11.
Although the Examiner has not clearly withdrawn the rejection of claims
16–19 (Ans. 10), we do not discuss these claims in our analysis due to
Appellant’s reliance on a withdrawal of the rejection of these claims. We
leave it to the Examiner to clarify in the record whether this ground of
rejection is applicable to claims 16–19.
Appeal 2018-001233
Application 15/157,518

4
OPINION
Rejection I
The patent laws provide that “[w]hoever 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.” 35 U.S.C. § 101. However,
“this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. v.
CLS Bank Int’l, 573 U.S. 208, 216 (2014) (citation omitted).
Mayo Collaborative Services established a framework to distinguish
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts. Alice,
573 U.S. at 217 (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc.,
566 U.S. 66, 77 (2012)). First, we determine whether the claims are directed
to a patent-ineligible concept. Id. If so, we next consider the claim elements
individually and as an ordered combination to determine whether additional
elements transform the claims into a patent-eligible application. Id. This
search for an inventive concept seeks an element or combination of elements
“sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself.” Id. at 217–18.
Recently, the PTO published guidance for evaluating subject matter
eligibility. See USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (USPTO Jan. 7, 2019) (“Revised Guidance”).6
Under Step One, a determination is made whether the claims are in a

6 On October 18, 2019, the Office issued an “Update” to the Revised
Guidance. The Update does not materially impact the present decision.
Appeal 2018-001233
Application 15/157,518

5
statutory category of patentable subject matter, i.e., do they recite a process,
machine, manufacture, or a composition of matter, identified in 35 U.S.C.
§ 101. Revised Guidance, 84 Fed. Reg. at 50, 53–54; see Alice, 573 U.S. at
216; Mayo, 566 U.S. at 70.
Next, at Revised Step 2A, Prong One, an evaluation is made whether
a claim recites a judicial exception, i.e., an abstract idea set forth in Section I
of the Revised Guidance, a law of nature, or a natural phenomenon. Revised
Guidance, 84 Fed. Reg. at 54. To determine if a claim recites an abstract
idea, specific limitations that recite an abstract idea must be identified
(individually or in combination), and a determination made whether the
limitation(s) falls within one or more of the subject matter groupings in
Section I of the Revised Guidance. Id. (A. Revised Step 2A). The three
groupings are (1) mathematical concepts, relationships, formulas, or
calculations, (2) certain methods of organizing human activity, including
fundamental economic principles and practices, commercial interactions,
managing personal behavior, relationships, or interactions and (3) mental
processes and concepts performed in the human mind. Id. at 52.
If a claim recites a judicial exception, Prong Two of Revised Step 2A
requires a determination to be made whether the claim as a whole integrates
the judicial exception into a practical application. Id. “A claim that
integrates a judicial exception into a practical application will apply, rely on,
or use the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception.” Id. at 53. If a judicial
exception is integrated, the claim is patent eligible. See id. at 54–55.
Appeal 2018-001233
Application 15/157,518

6
If a claim does not “integrate” a recited judicial exception, the claim is
directed to the judicial exception and further analysis is required under Step
2B to determine whether the claim contains additional elements, considered
individually or in combination, that provide an inventive concept, such that
the additional elements amount to significantly more than the exception
itself. Id. at 56.
Step One: Do Claims 10 and 21 Fall within a Statutory Category of
§ 101?
Claims 10 and 21 recite “[a] system for enabling a method of
executing a game of baccarat with a side bet event.” Appeal Br. 48, 51
(Claims App.). Claims 10 and 21 recite a machine and, thus, fall within the
statutory categories of 35 U.S.C. § 101.
Step 2A, Prong One: Do Claims 10 and 21 Recite a Judicial Exception?
The Examiner determines that claims 10 and 21 “recite a set of rules
to a baccarat wagering game comprising using a random outcome indicator
to generate a random event, competition rules . . . , wagering rules . . . and
‘resolving’ rules . . . , which is an abstract idea in the same way the Federal
Circuit held the set of rules used to conduct a blackjack wagering game were
an abstract idea in In re Smith.” Final Act. 2–3 (citing In re Smith, 815 F.3d
816 (Fed. Cir. 2016)).
Appellant argues that the USPTO and PTAB have “interpreted and
expanded the scope of Alice . . . in such a manner as to have abused basic
[a]dministrative [l]aw principles and canons by creating an artificial conflict
among different sections of Title 35 of the Patent Act.” Appeal Br. 15
(emphasis omitted). Appellant also argues that that the scope of Alice has
been “interpreted and expanded . . . to such a degree that it has become an
Appeal 2018-001233
Application 15/157,518

7
unwarranted and unconstitutional taking of property, contravening the Fifth
Amendment of the U.S. Constitution.” Id. at 21 (emphasis omitted).
Appellant argues that it is legal error to effectively assert that all wagering
events using playing cards are abstract ideas. Id. at 24 (citing Smith, 815
F.3d at 816). Appellant provides three Declarations Under 37 C.F.R.
§ 1.132 to support that playing card games are non-abstract physical events.
Id. at 27–28.
Smith considered the patent eligibility of claims directed to a “method
of conducting a wagering game” with a deck of playing cards that the dealer
deals according to game rules while accepting and resolving wagers of
players. Smith, 815 F.3d at 817–18. In Smith, which is a precedential
decision and binding on this Board, our reviewing court determined that
claims directed to rules for conducting a wagering game are comparable to
the fundamental economic practices that the Supreme Court held to be
abstract ideas in Alice and Bilski v. Kappos, 561 U.S. 593 (2010). Smith,
815 F.3d at 818–19. Namely, the court determined that the “claimed
‘method of conducting a wagering game’ is drawn to an abstract idea much
like Alice’s method of exchanging financial obligations and Bilski’s method
of hedging risk.” Id. at 819; see also id. (concluding that “claims[]
describing a set of rules for a game[] are drawn to an abstract idea”). The
Smith court also rejected the argument that “shuffling and dealing ‘physical
playing cards’ . . . bring[s] the claims within patent-eligible territory.” Id.
Appellant’s claims 10 and 21 recite a system for executing a game of
baccarat with a side bet event, in which the system includes a gaming table
having (i) positions for placing an initial wager on a game of baccarat which
is described as a player hand of playing cards in competition with a banker
Appeal 2018-001233
Application 15/157,518

8
hand of playing cards from a randomized deck of 52 playing cards; and (ii)
positions for placing a second wager on a side bet event on the game of
baccarat that has been resolved by using final playing cards dealt to the
player and banker hands. Appeal Br. 48, 51 (Claims App.).
Claims 10 and 21, thus, recite a set of rules for executing a game of
baccarat, including wagering, at least in that they indicate that the game of
baccarat is resolved using final playing cards dealt to the player and banker
hands. We agree with the Examiner that the Federal Circuit’s holding in
Smith is controlling and determinative with respect to the question of
whether Appellant’s claim recites an abstract idea. Our reviewing court held
in Smith that a claim reciting “rules for conducting a wagering game” is
directed to a “fundamental economic practice.” Smith, 815 F.3d at 818. A
“fundamental economic practice” is a type of certain method of organizing
human activity that may constitute an ineligible abstract idea. Revised
Guidance, 84 Fed. Reg. at 52. We determine claims 10 and 21, like the
claims at issue in Smith, relate to rules for conducting a wagering game and
resolving financial obligations. We, therefore, determine that claims 10 and
21 recite a fundamental economic practice which is one of certain methods
of organizing human activity identified in the Revised Guidance, and thus,
an abstract idea.
Step 2A, Prong Two: Is There Integration into a Practical Application?
Following our Office guidance, having found that claims 10 and 21
recite a judicial exception, namely, a fundamental economic practice, we are
instructed next to determine whether the claim recites “additional elements
that integrate the exception into a practical application” (see MPEP
§§ 2106.05(a)–(c), (e)–(h)). See Revised Guidance, 84 Fed. Reg. at 54.
Appeal 2018-001233
Application 15/157,518

9
The additional elements recited in claims 10 and 21 include a
“display” at “each of the at least two player positions” and “a random event
generator” (claim 10) or “system” (claim 21) providing distinct random
event outcome indicators (i.e., a single digit number value selected from the
group consisting of 0, 1, 2, 3, 4, 5, 6, 7, 8, and 9) to the displays at each of
the at least two player positions. Appeal Br. 48–49, 51–52 (Claims App.).
The Examiner acknowledges these additional elements as a “random
event generator, display.” Final Act. 3. Appellant argues that “rather than
merely reciting a ‘random event generator, display,’” the claims require that
the random event generator provide distinct random event outcome
indicators to the displays at each player position. Appeal Br. 13 (quoting
Final Act. 3); see also id. at 34–35. That is, Appellant argues that the
limitations “require that there must be a distinct . . . random event indicator
at each player position” and “a limited number of outcome indicators from
which the distinct . . . outcome indicators can be selected.” Id. Appellant
continues that the claims “distinguish from cards as the outcome indicators
are limited to one digit number[s] selected from 0–9” and “[t]he random
number generator must also indicate to the individual outcome displays,
what random single digit outcome is to be displayed.” Id. at 14. Appellant
further continues that the “secondary random event is not a playing card and
is not integrated into the underlying gaming event” and “the system provides
a ‘distinct random event outcome indicator . . . at each of the at least two
player positions . . . ’ as opposed to individual cards or a community event.”
Id. at 35. In sum, Appellant points to “the interconnectivity of the a) random
event generator, random event indicators and individual player positions.”
Id. at 14.
Appeal 2018-001233
Application 15/157,518

10
Claim 10 recites the random event generator providing distinct
random event outcome indicators (selected from the group consisting of 0, 1,
2, 3, 4, 5, 6, 7, 8, 9) to corresponding displays at each player position.
However, claim 10 fails to recite how the random event outcome indicators
(selected from the group consisting of 0, 1, 2, 3, 4, 5, 6, 7, 8, 9), once
displayed, are otherwise related to the system for enabling a method of
executing a game of baccarat with a side bet event. Claim 21 recites a
system providing distinct and different random event outcome indicators to
corresponding displays at each player position. However, claim 21 similarly
fails to recite how the random event outcome indicators, once displayed, are
otherwise related to the system for enabling a method of executing a game of
baccarat with a side bet event. Thus, the additional elements of (i) the
random event generator/system for providing random event outcome
indicators and (ii) the displays do not actually recite a system that enables a
specific manner of executing a game of baccarat with a side bet event that
can be described as an improvement over prior systems. Consequently, the
additional elements of (i) a random event generator/system for providing
random event outcome indicators and (ii) displays at each player position
cannot be considered to improve the functioning of a technology. See MPEP
§ 2106.05(a); see also Update 12–13 (explaining that “the claim must be
evaluated to ensure that the claim itself reflects the disclosed
improvement.”).
We next consider whether the additional elements of (i) a random
event generator/system for providing random event outcome indicators and
(ii) displays at each player position are particular machines that are integral
to the claim. See Revised Guidance, 84 Fed. Reg. at 55 (citing MPEP
Appeal 2018-001233
Application 15/157,518

11
§ 2106.05(b)). When determining whether a machine recited in the claim
provides significantly more, the following factors are relevant: (i) the
particularity or generality of the elements of the machine, i.e., the degree to
which the machine can be specifically identified, (ii) whether the machine
“play[s] a significant part in permitting the claimed method to be performed,
rather than function[ing] solely as an obvious mechanism for permitting a
solution to be achieved more quickly” (Versata Dev. Grp. v. SAP Am. Inc.,
793 F.3d 1306, 1335 (Fed. Cir. 2015)); and (iii) the extent to which (or how)
the machine imposes meaningful limits on the claim or instead contributes
only nominally or insignificantly to the execution of the claimed method.
MPEP § 2106.05(b). Here, the random event generator and displays, as
claimed, are merely tangentially related to the claimed system in that the
claims do not explain at all how they play a part in permitting the game of
baccarat with a side bet event to be executed. Consequently, we do not find
the additional elements of the random event generator and displays to be
particular machines with which the abstract idea is applied. Nor do we find
that the additional elements effect a transformation of a particular article to a
different state or are applied in any meaningful way. See MPEP
§§ 2106.05(c), (e)–(h). Consequently, the claimed invention does not
integrate the abstract idea into a “practical application,” as that phrase is
used in the Revised Guidance.
Step 2B: Do Claims 10 and 21 Recite an Inventive Concept?
We next consider whether claims 10 and 21 recite 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 Examiner determines that claims 10 and 21
Appeal 2018-001233
Application 15/157,518

12
recite the additional elements of “wagers, table, playing cards” and “random
event generator, display.” Final Act. 3. The Examiner finds that these
additional elements “are non-unique and traditional wagering gaming
elements” and “none of [these] additional elements are new or original to the
gaming art.” Id. at 3–4. The Examiner determines that “when considered
separately and in ordered combination, and within the context and character
of the claims as a whole, these additional elements are not sufficient to
amount to significantly more than the abstract idea of the set of rules that
make up the baccarat wagering game.” Id.
Appellant argues that:
The claims require that non-conventional gambling equipment
be used to functionally enable the recited rules architecture of a
unique playing card game using standard baccarat hands only as
a determining outcome basis with the provision of a side wager,
and the existing scoring mechanic differs from all other playing
card games by using the secondary random event only in both
the side bet events, which constitutes a greater departure from
the conventional processes that occurs when administering
conventional playing card wagering events than was required to
demonstrate patent-eligibility in DDR Holdings.
Appeal Br. 32. Appellant also states that the claims “require[] elements that
interact in a unique manner to provide the novel and unobvious events
required to functionalize the wagering event.” Id. at 34 (emphasis omitted).
Appellant continues that “[t]he displayed secondary random event is not a
playing card and is not integrated into the underlying gaming event as is
typical with some displays and with secondary event displays.” Id. at 35.
As an initial matter, claims 10 and 21 do not tie in any way the
secondary random event to the side bet event, let alone limit the secondary
random event to only the side bet event. Thus, the claims do not actually
Appeal 2018-001233
Application 15/157,518

13
require an “existing scoring mechanic [that] differs from all other playing
card games by using the secondary random event only in both the side bet
events,” as argued. Appeal Br. 32. Moreover, even if claims 10 and 21
limited the secondary random event to the side bet event so as to recite a
departure from conventional playing card events with a unique scoring
mechanic, the recitation of a secondary random event to be used only for a
side bet event would itself recite an abstract idea—i.e., rules for executing a
game of baccarat with a side bet event, including wagering and the
resolution of the side bet event—rather than an additional element that
ensures that the claim is more than a judicial exception. See Revised
Guidance, 84 Fed. Reg. at 56 (instructing that additional element(s) should
be evaluated to determine whether they (a) add specific limitations that are
not well-understood, routine, and conventional in the field, or (2) simply
append well-understood, routine, and conventional activities previously
known to the industry (citing MPEP § 2106.05(d)). See Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (citing Mayo,
566 U.S. at 90) (a finding that the claims are novel and nonobvious in light
of an absence of evidence does not conflict with the Examiner’s conclusion
under 35 U.S.C. § 101 because “a claim for a new abstract idea is still an
abstract idea”).
To the extent Appellant is arguing that the random event generator
and displays are “non-conventional gambling equipment” (Appeal Br. 32),
we are not persuaded. Appellant describes the random event generator as a
random number generator, templates, or a combination of a template and
random number generator. Spec. 9:8–17. Appellant does not describe
random number generators in detail in the Specification, but Merati’s
Appeal 2018-001233
Application 15/157,518

14
Background explains that random number generators can be “any
randomizing device such as playing cards, dice, roulette wheels, or number
balls drawn from a container” and “could also be implemented by a
processor executing machine-readable instructions that cause the processor
to generate random numbers, simulating one of the physical random number
generators mentioned above.” Merati ¶ 12. Appellant’s Specification
explains that “[t]emplates have been used in the art for provision of
complete game outcomes.” Spec. 10:3. With respect to displays, the
Specification describes the displays as “any component or system that is
visually (or even electronically) readable” and “[t]his may include 7-
segment displays, nine bulbs, an image panel (with LED, Liquid Crystal,
plasma, analog or digital displays), or any other system.” Id. at 8:8–11.
Thus, there is no indication that random event generators and/or displays are
anything beyond routine and conventional equipment previously known to
the gaming industry.
To the extent that Appellant is arguing that it is the combination of
random event generators and individual displays that renders the additional
elements unconventional, we disagree because in its broadest sense the
combination of random event generators and individual displays is akin to
dealing physical playing cards that are then displayed at individual player
positions, which has been identified as a “purely conventional” activity, and
thus well-understood, routine, conventional activity. Smith, 815 F.3d at 819.
To the extent that Appellant is arguing that it is the combination of random
event generators and individual displays that particularly “display[] a single
digit number value selected from the group consisting of 0, 1, 2, 3, 4, 5, 6, 7,
8, and 9” (Appeal Br. 49, 52 (Claims App.)), we note Merati’s Background
Appeal 2018-001233
Application 15/157,518

15
disclosure of a random number generator comprising “number balls drawn
from a container” (Merati ¶ 12).
Moreover, the printed indicia on each display are not functionally
related to the substrate of the display in that the particular number on a
display does not perform a function with respect to the display (compare In
re Miller, 418 F.2d 1392 (CCPA 1969) (finding that the volumetric indicia
on the side of a measuring cup created a specialized measuring cup)) and the
display does not perform a function with respect to the particular number
associated with it (compare In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983)
(finding that a band that placed a string of numbers in a certain physical
relationship because of the physical structure of the band “exploited the
endless nature of the band”)). In re Marco Guldenaar Holdings B.V., 911
F.3d 1157, 1161 (Fed. Cir. 2018) (“[T]he markings on each of Appellant’s
dice do not cause the die itself to become a manufacture with new
functionality.”); see also In re Bryan, 323 Fed. App’x. 898 (Fed. Cir. 2009
(cited in MPEP § 2111) (holding that the identified function of printed
matter on a card to “identify and distinguish one deck of cards from another”
did not pertain to the structure of the apparatus and were instead drawn to
the method or process of playing a game).
Consequently, the gaming table being associated with the additional
elements of a random event generator providing distinct random event
outcome indicators of numbers 0 through 9 to displays at each of the player
positions is no more than well-understood, routine, conventional activities
previously known to the gaming industry. To the extent that Appellant is
arguing that the use of the random event generator and displays to resolve
side bet event wagers in particular (e.g., to prohibit ties in the side bet when
Appeal 2018-001233
Application 15/157,518

16
there are less than 10 participating players) is what renders the additional
elements unconventional, we note that, as described above, claims 10 and 21
do not recite how the elements of the random event generator and displays
relate to side bet wagers in particular.
For the reasons discussed above, we find no element or combination
of elements recited in claims 10 or 21 that contain any “inventive concept”
or add anything “significantly more” to transform the abstract concept into a
patent-eligible application. Alice, 573 U.S. at 221. Accordingly, we sustain
the Examiner’s decision rejecting claims 10–19 and 21–23 under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter.
Rejection II
Claim 10
The Examiner finds that Merati teaches, among other things, “the
gaming table having positions thereon for placing a second wager (at step
702) on a side bet event from at least one of at least two player positions at
the gaming table on the game of baccarat (Fig. 7).” Final Act. 7. The
Examiner also finds that Merati teaches that “the gaming table 106 is
associated with a random event generator providing distinct random event
outcome indicators . . . [,] generating a distinct . . . single digit number value
selected from the group consisting of 0, 1, 2, 3, 4, 5, 6, 7, 8 and 9 as
compared to any other random event outcome generator.” Id. (citing Merati
¶¶ 82–83). To the extent that Merati may fail to teach the random event
generated outcome being displayed on displays assigned to each of the
player positions, the Examiner finds that Walker teaches “it is known in the
art for each player position to have their own personal display 80 positioned
on a gaming table, wherein the game displays are in communication with the
Appeal 2018-001233
Application 15/157,518

17
game system to display game information to the player.” Id. at 7–8 (citing
Walker ¶¶ 58, 80, Fig. 4). The Examiner concludes that a person of ordinary
skill in the art would have found it obvious to combine the teachings of
Merati and Walker “to increase the efficiency and enjoyment of the game by
providing personal interfaces at each player position.” Id. at 8.
Appellant argues that “there is no evidence in Merati of the limitation:
‘ . . . providing distinct random event outcome indicators to the secondary
random outcome indicator displays . . . [’] and ‘each distinct random event
outcome indicator displaying a single digit number value selected from the
group consisting of 0, 1, 2, 3, 4, 5, 6, 7, 8 and 9.’” Appeal Br. 35–36
(emphasis omitted). Merati teaches a second random number generator that
generates a side bet game value, and “[t]he side bet game value is provided
to server 200, server 300, or processor 702, in accordance with the rules of
baccarat, to generate a score between 0 and 9.” Merati ¶ 82. Merati
describes that in one embodiment, “multiple side bet game values are
generated, one for each player/participant who placed a side bet.” Id. The
Examiner takes the position that “Appellant is mistakenly reading into the
claims the requirement that the value determined by the side bet RNG
[random number generator] for a first player cannot be the same value as
determined by the side bet RNG for a second player.” Ans. 14.
We agree with the Examiner that the recitation of the generator
“providing distinct random event outcome indicators” in claim 10 means
only that the generated indicators for the displays at the player positions are
“[s]eparate or apart so as to be capable of being distinguished” (Oxford
English Dictionary, available at www.oed.com), rather than a more narrow
meaning requiring the generated indicators to be different or “not identical”
Appeal 2018-001233
Application 15/157,518

18
(id.). As explained above, there is a value generated “one for each
player/participant who placed a side bet.” Merati ¶ 82. Accordingly, we are
not persuaded that Merati fails to teach providing distinct random event
outcome indicators to the displays or each indicator displaying a value
selected from the group of 0 to 9.
Appellant also argues that “Merati does not have displays at each
player position, but merely delivers second point values used in the game
count (this is NOT a secondary outcome indicator, but merely a second
source of point count[)].” Appeal Br. 41 (emphasis omitted); see also Reply
Br. 9 (“Merati does not evidence generation of secondary random numbers
that are not used in an underlying card play of the invention.”). Appellant
also argues that “Walker teaches the use of an individual player position
display, and does not evidence using that display for the unique secondary
random INDICATOR produced by a random number generator for a side bet
event on a progressive jackpot.” Appeal Br. 42 (emphasis omitted).
We disagree with Appellant that Merati fails to teach second point
values that are not used in the underlying game. More specifically, Merati
describes that the “secondary random game value generator preserves the
order in which cards are provided by a primary random game value
generator” (Merati ¶ 38) and that “one of the random game value generators
is used as a primary source of cards for the traditional game” and “[t]he
other random game value generator may be used for side bets, or, in other
embodiments, used as a source of random game values when either the
dealer or a player is allowed to select which random game value source to
receive a next game value” (id. ¶ 39) (emphasis added). Thus, although in
some embodiments, the second random game value generator may be used
Appeal 2018-001233
Application 15/157,518

19
as a source of game values, in another embodiment, Merati contemplates the
second random game value generator being used for side bets and not the
underlying game. Thus, Merati’s teachings, in combination with Walker’s
teaching that it is known in the art for each player position to have its own
personal display, result in the claimed invention. See Ans. 14.
For the foregoing reasons, we sustain the Examiner’s obviousness
rejection of claim 10.
Claim 21
Claim 21 recites “the gaming table having a system providing distinct
and different random event outcome indicators to each of the secondary
random outcome indicator displays at each of the at least two player
positions; and each distinct random event outcome indicator displaying a
distinct and different single digit number value selected from the group
consisting of 0, 1, 2, 3, 4, 5, 6, 7, 8 and 9 as compared to any other random
event outcome indicator.” Appeal Br. 51–52 (Claims App.) (emphasis
added). The Examiner finds that Merati teaches these limitations. Final
Act. 9 (citing Merati ¶¶ 82–83).
Appellant argues that “[b]y selecting individual cards, values,
especially zero, can be repeated.” Appeal Br. 37. The Examiner responds
that “within typical game iterations of Merati, the value determined by the
side bet RNG for a first player will indeed be a different value than the value
determined by the side bet RNG for a second player.” Ans. 15. The claim
only requires two player positions, and with possible values ranging from 0
through 9, the Examiner’s finding that the value generated for a first player
will be different than a value generated for a second player “within typical
game iterations of Merati” is supported by a preponderance of the evidence.
Appeal 2018-001233
Application 15/157,518

20
Id. Appellant does not adequately explain why this finding by the Examiner
is insufficient to support a disclosure of “the gaming table having a system
providing distinct and different random event outcome indicators to each of
the secondary random outcome indicator displays at each of the at least two
player positions” and “each distinct random event outcome indicator
displaying a distinct and different single digit number value selected from
the group consisting of 0, 1, 2, 3, 4, 5, 6, 7, 8 and 9 as compared to any other
random event outcome indicator,” as claimed. Appeal Br. 51–52 (Claims
App.). In other words, Merati’s system is capable of providing distinct and
different indicators to two player positions, and will provide distinct and
different indicators to two player positions within a typical game, and
Appellant does not adequately explain how and/or why the claim, as
currently drafted, prohibits any possibility of duplicate values by the system
in order to meet the claim.
For the foregoing reasons, we sustain the Examiner’s rejection of
claim 21.
Rejection III
Claims 15 and 23 stand rejected under 35 U.S.C. § 103 as
unpatentable over Merati, Walker, and Jones. Final Act. 11. Claim 15
depends from independent claim 10. Appeal Br. 50 (Claims App.).
Appellant appears to rely on the arguments made in connection with
independent claim 10 relating to the perceived deficiencies in Merati as the
basis of reversal for claim 15. Reply Br. 10–11. Because we have found no
such deficiencies in Merati with respect to independent claim 10, we are not
persuaded of error in the Examiner’s rejection of claim 15.
Appeal 2018-001233
Application 15/157,518

21
Although Appellant purports to provide additional arguments
regarding claim 23 (Appeal Br. 37–38; Reply Br. 10–11), the arguments
presented do not relate to claim 23, which recites “the second wager
comprises a progressive jackpot wager and there is an automated accounting
system in communication with the positions on the gaming table for placing
the second wager. ” Appeal Br. 52 (Claims App.). Instead, the arguments
relate to subject matter of different dependent claims, for example, claim 22
which recites that the generator “provides equally weighed distinct
indications on individual displays.” Id.; Appeal Br. 37–38; Reply Br. 10–11.
Accordingly, we are not persuaded of error in the Examiner’s rejection of
claim 23.
We sustain the rejection of claims 15 and 23 under 35 U.S.C. § 103 as
unpatentable over Merati, Walker, and Jones.

CONCLUSION
The Examiner’s decision to reject claims 10–19 and 21–23 under
35 U.S.C. § 101 as being directed to patent ineligible subject matter is
affirmed.
The Examiner’s decision to reject claims 10 and 21 under
35 U.S.C. § 103 as unpatentable over Merati and Walker is affirmed.
The Examiner’s decision to reject claims 15 and 23 under
35 U.S.C. § 103 as unpatentable over Merati, Walker, and Jones is affirmed.
Appeal 2018-001233
Application 15/157,518

22
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
10–19, 21–
23
101 Eligibility 10–19,
21–23

10, 21 103 Merati, Walker 10, 21
15, 23 103 Merati, Walker, Jones 15, 23
Overall
Outcome
10–19,
21–23

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