KING SHOW GAMES, INC.

Patent Trials and Appeals Board

Mar 3, 2020

15431742 - (D) (P.T.A.B. Mar. 3, 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.
15/431,742 02/13/2017 Bradley BERMAN KSG.097.CONT1 7688
111805 7590 03/03/2020
King Show Games, INC.
10275 Wayzata Blvd.
Suite 300
Minnetonka, MN 55305
EXAMINER
HSU, RYAN
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
03/03/2020 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):
ip@ksg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRADLEY BERMAN
Appeal 2019-004385
Application 15/431,742
Technology Center 3700
Before STEFAN STAICOVICI, EDWARD A. BROWN, and
CHARLES N. GREENHUT, Administrative Patent Judges.
GREENHUT, 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 21–40. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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 King Show Games,
Inc. Appeal Br. 2.
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Application 15/431,742
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CLAIMED SUBJECT MATTER
The claims are directed to a method and apparatus for combining
symbols in gaming devices. Claim 21, reproduced below, is illustrative of
the claimed subject matter:
21. A gaming device comprising: a video display device
including a game portion having a grid of multiple card positions;
a memory device configured to store a plurality of virtual
cards each having a rank value and a suit type, and to store a
credit amount;
a wager input device structured to receive physical items
associated with a currency value;
and a processor operable to: receive a signal from the
wager input device indicating receipt of a physical item
associated with a currency value;
increase the credit amount stored in the memory based on
the currency value of the received physical item;
receive a wager on a poker game of chance, an amount of
the wager deducted from the credit amount stored in the memory;
display a first number of the plurality of virtual cards in the card
positions of the grid on the video display device, the displayed
first number of virtual cards forming a dealt poker hand;
determine whether a plurality of the displayed virtual
cards meet a combination criterion;
combine the plurality of cards meeting the combination
criterion when said plurality of cards meet the combination
criterion, the plurality of cards being combined in a single card
position in the grid;
deal one or more replacement cards from the plurality of
virtual cards to each card position, respectively, left empty by the
combining of the plurality of cards meeting the combination
criterion;
determine a final poker hand based on the cards shown in
the multiple card positions of the grid shown on the video
display;
evaluate the final poker hand to determine if it is
associated with any awards;
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Application 15/431,742
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and increase the credit amount stored in memory by
amounts of any awards determined from the evaluation of the
final poker hand.
REJECTION2
Claims 21–40 are rejected under 35 U.S.C. 101 because the claimed
invention is directed to a judicial exception (i.e., a law of nature, a natural
phenomenon, or an abstract idea) without significantly more. Final Act. 6.
OPINION
Principles of Law
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) (internal quotation marks and citation omitted).
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. See Alice, 573 U.S. 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.”

2 Claims 21–40 were rejected on the ground of nonstatutory double patenting
as being unpatentable over claims 1–20 of Berman (US 9,569,935 B2; iss.
Feb. 14, 2017). Final Act. 4. The Examiner does not appear to have
expressly indicated this rejection has been withdrawn but does not include it
in the listing of applicable rejections in the February 26, 2019 Answer or the
Supplemental Answer of March 12, 2019 (hereinafter “Ans.”). As a terminal
disclaimer referencing Berman was filed on February 14, 2018 and approved
on February 20, 2018, we consider this rejection to be moot and not before
us for review.
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Application 15/431,742
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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 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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 citation
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. (alteration in the 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.
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In January of 2019, the PTO published revised guidance on the
application of § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter “Memorandum”).
Step 2A of that guidance involves determining 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
(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) (9th Ed., Rev.
08.2017, 2018)).
If a claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application, Step 2B of that guidance involved
determining 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 Memorandum.
Analysis
Claim Grouping
The claims are argued as a group for which we select claim 21 as
representative under 37 C.F.R. § 41.37(c)(1)(iv).

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Statutory Category
Claim 21 recites “A gaming device.” A large portion of Appellant’s
arguments are devoted to asserting the § 101 inquiry ends there because the
claim is directed to a machine or device as opposed to methods held
ineligible under § 101. App. Br. 13–16. However, our reviewing court has
made clear “the basic character of a process claim drawn to an abstract idea
is not changed by claiming only its performance by computers, or by
claiming the process embodied in program instructions on a computer
readable medium.” See CyberSource Corp v. Retail Decisions, Inc. 654
F.3d 1366, 1375–76 (Fed. Cir. 2011) (citing In re Abele, 684 F.2d 902
(CCPA 1982)). Other than the basic componentry recited that can be found
in nearly any electronic wagering game device, including a video display, a
memory, a wager input device and a processor, claim 21 predominantly
recites the acts each of those elements, particularly the processor, performs.
Particularly in light of its broad and functionally-defined nature, holding
claim 21 necessarily passes muster under § 101 simply because it is an
apparatus claim would “exalt form over substance.” It is noted that
Appellant does not appear to regard this distinction in the styling of the
claim preamble as particularly profound, as Appellant relies only on the
arguments presented for alleged apparatus claim 21 when arguing claim 37,
which is unequivocally directed to a method. App. Br. 12.

Recitation of Judicial Exception
The Examiner reasonably determined:
[T]he limitations such as “determine whether a plurality of
displayed virtual cards meet a combination criterion” and
“determine a final poker hand based on the cards shown in the
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multiple card positions of the grid shown on the video display”
recite steps which when viewed individually are directed to
mental processes. Furthermore, when viewed as a whole, the
focus of the claimed invention recite a series of steps directed
towards managing a poker wagering game. Therefore when
viewed individually and as a whole, the claims recite concepts of
a fundamental economic activity which is one of the abstract idea
groupings.
Ans. 4.
“The Appellant strongly disagrees that the claimed gaming device
includes only steps that may be performed by a human using a pen and paper
or merely automated by any generic computer.” App. Br. 16. However,
Appellant does not direct our attention to what limitations specifically
supposedly fall outside these realms. Mental processes involve the use of
human observation, evaluation, judgment (e.g., “evaluate” and “determine”
steps). See In re Prater 415 F. 2d 1393, 1402 n. 22 (CCPA 1969). “[M]ental
processes . . . are not patentable, as they are the basic tools of scientific and
technological work.” Gottschalk, 409 U.S. at 67 (quoted with approval in
Mayo, 566 U.S. at 71). Receiving wagers, increasing credit, conducting a
game according to certain rules and determining changes to the credit based
on the outcome under those rules, are fundamental economic practices See,
e.g., In re Smith, 815 F.3d 816, 818–19 (Fed. Cir. 2016) (describing a new
set of rules for conducting a wagering game as a “fundamental economic
practice”); MPEP § 2106.04(a)(2).
The incidental use of “video display device,” “memory,” “input
device,” or “processor” does not make a claim otherwise directed to process
that “can be performed in the human mind, or by a human using a pen and
paper” patent eligible. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1375, 1372 (Fed. Cir. 2011).
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Application 15/431,742
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Practical Application
Appellant argues patent eligibility largely by repeating claim language
with little supporting analysis. App. Br. 16; Reply. Br. 6. We are not
apprised of how the limitations Appellant identifies impose any meaningful
limits on the abstract ideas themselves. The absence of any claim recitations
indicating specifically how, for example, signals are received, credit is
increased, cards are displayed, and criterion satisfaction is determined and
evaluated, contrary to Appellant’s argument (App. Br. 14), raises serious
preemption concerns. Appellant, with these claims would preempt nearly
any and all techniques for carrying out these steps without contributing any
particular structure or method to the state of the art. This includes both
mental techniques and physical, technological ones. Such a monopoly is
inconsistent with the basic quid pro quo that is the heart of the patent grant.
Thus we agree with the Examiner (Ans. 8–9) that the claimed subject matter
is not limited in some meaningful way so as to recite a practical application.

Well-Understood, Routine, Conventional Activity
The Examiner, in a Supplemental Examiner’s Answer provides the
following analysis of the subject matter of claim 21 understood to be routine
and conventional:
In accordance with the 2018 Berkheimer Memo, an additional
element (or combination of elements) is not well-understood,
routine or conventional unless the examiner finds, and expressly
supports a rejection in writing with a citation to an express
statement in the specification or demonstrates the well-
understood, routine, conventional nature of additional elements
(see Berkheimer memo, pg. 3 III. A1). A review of the
Specification provides the expressed statement that “[a]s is well
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Application 15/431,742
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known in the art and as used herein, the term “gaming” and
“gaming devices” generally involves some form of wagering,
and that players make wagers of value, whether actual currency
or something else of value” (see Specification, pg. 2: ln 2–5).
Furthermore, the Specification demonstrates that “a wager input
device structure to receive physical items” is directed to “various
mechanisms for entering such vouchers, tokens, credit cards,
coins, tickets, etc. are known in the art” (see pg. 7: ln 13–20).
The Specification further elaborates that “coin/symbol input
mechanisms, card readers, credit card readers, smart card
readers, punch card readers, radio frequency identifier (RFID)
readers, and other mechanisms may be used to enter wagers[”]
(see pg. 7: ln 17–20). It follows that the Examiner request a
finding that the additional elements such as “a wager input
device” do not add to the recited abstract idea but recites an
arrangement that itself does not provide a potential improvement
over conventional gaming devices. The remaining additional
elements such as a display, a memory, and a processor are
general components in any generic computer gaming devices
(see pg. 1-2: ln 19–[2]9).
Ans. 5
The Examiner correctly found that the recited use of the generic
componentry typically associated with any electronic card gaming machine,
both individually and as an ordered combination, relates only to subject
matter that is well-understood, routine and conventional. Ans. 5. We do not
find within Appellant’s briefing any arguments that inform or apprise us of
error in the Examiner’s analysis quoted above. As the Examiner’s analysis is
thorough and comprehensive in this regard, we adopt the Examiner’s
findings, analysis, and conclusions as those of the Board. See, e.g., In re
Paulsen, 30 F. 3d 1475, 1478 n. 6 (Fed. Cir. 1994) accord In re Cree, 818
F.3d 694, 698 n. 2 (Fed. Cir. 2016).

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Conclusion
We have considered all of Appellant’s arguments in support of the
patent eligibility of claim 21, but find them unpersuasive. Accordingly, we
sustain the Examiner’s rejection of claims 21–40 under 35 U.S.C. § 101.
CONCLUSION
The Examiner’s rejection is AFFIRMED.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21–40 101 Eligibility 21–40

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