Lee Amaitis et al.

Patent Trials and Appeals Board

Mar 3, 2020

13113479 - (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.
13/113,479 05/23/2011 Lee AMAITIS 10-2287 9725
63710 7590 03/03/2020
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
COBURN, CORBETT B
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):
lkorovich@cantor.com
patentdocketing@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LEE AMAITIS and ANDREW GARROOD
____________________

Appeal 2018-004250
Application 13/113,479
Technology Center 3700
____________________

Before BENJAMIN D. M. WOOD, JILL D. HILL,
and FREDERICK C. LANEY, Administrative Patent Judges.

HILL, 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 4, 5, 7–9, 24–29, and 31–40. 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 CFPH, LLC. Appeal
Br. 3.
Appeal 2018-004250
Application 13/113,479

2
THE CLAIMED SUBJECT MATTER
Independent claims 4, 28, and 33 are pending. Claim 4, reproduced
below, illustrates the claimed subject matter:
4. An apparatus comprising:
a memory;
a display device;
a network interface;
at least one processor to:
display at least one live game on the display
device;
store in the memory a selection of first elements
for a parlay wager received via the network interface, in
which the first elements include games that begin and
end at a future time;
receive, via the network interface, real-time game
data;
determine real-time odds for each first element of
the parlay wager based at least partially on the real-
time game data received via the network interface;
add each of the first elements to the parlay wager
in the memory[;]
detect, via the display device, selection of an
image of a live game participant;
store in the memory a second selection of second
elements for the parlay wager, in which the second
elements include wagers on one or more future events
related to the image selected on the display device that
could occur during the game;
determine real-time second odds for each second
element of the parlay wager based at least partially on the
real-time game data received via the network interface;
add each of the second elements to the parlay
wager in the memory;
determine odds for the parlay wager based on the
real-time odds and the real-time second odds; and
provide an indication of the odds for the parlay wager.
Appeal 2018-004250
Application 13/113,479

3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Brenner US 5,830,068 Nov. 3, 1998
Simon US 2005/0227757 A1 Oct. 13, 2005

REJECTIONS
I. Claims 4, 5, 7–9, 24–29, and 31–40 stand rejected under 35
U.S.C. § 101 as directed to non-statutory subject matter.
II. Claims 4, 5, 7–9, 24–29, and 31–40 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Simon and Brenner.

ANALYSIS
Section 101
The Examiner finds that claims 4, 5, 7–9, 24–29, and 31–40 are
directed to (1) “a method of forming parlay wagers . . . that can be
performed by a person using pen and paper and is therefore an abstract
idea,” (2) “a fundamental economic practice (i.e., wagering . . .),” and (3) “a
method of organizing human activity (i.e., creating contractual
relationships).” Final Act. 3 (citing In re Smith, 815 F.3d 816 (Fed. Cir.
2016)). The Examiner determines that the claims “do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because the non-transitory medium and processor amount to
nothing more than a generic computer performing routine data-processing
functions.” Id. According to the Examiner, Appellant “has merely
presented an abstract idea and said ‘implement it’ on a computer.” Id. The
Appeal 2018-004250
Application 13/113,479

4
Examiner continues that “[p]rior to the computer age, bookmaker[s]
performed these steps using pen and paper on a daily basis.” Id. at 4.
Appellant argues claims 4, 5, 7–9, 24–29, and 31–40 as a group.
Appeal Br. 9–13. We select claim 4 as representative. Claims 5, 7–9, 24–
29, and 31–40 stand or fall with claim 4.
Appellant argues that the facts of In re Smith, cited by the Examiner,
are not reasonably tied to the facts of the present case, because Smith’s
claims were directed to a method of playing black jack and the claims
recited “physical playing cards” being shuffled and dealt manually in a
particular pattern – a manual process. Appeal Br. 9. The claims in In re
Smith did not require a computer apparatus or a network. In contrast, the
claims of the present case do require a computer memory, processor, and
network interface. Also, the claims recite “receive, via the network interface,
real-time game data” and “determine real-time odds for each first element of
the parlay wager based at least partially on the real-time game data received
via the network interface.” Id.
The Examiner responds that, “[w]hile In re Smith is directed to card
games, it was found to be abstract because it was a method of determining
financial obligations,” which is what Appellant’s betting game determines.
Ans. 11.
Appellant replies that the Examiner overgeneralizes the claimed
subject matter in deciding that the claims are directed to determining
financial obligations. Reply Br. 2. Appellant contends that the claims recite
technological components, not financial activity, and the Examiner is
overlooking the technological components. Id. at 3 (discussing Unwired
Planet LLC v. Google Inc., 841 F.3d 1376 (Fed. Cir. 2016)).
Appeal 2018-004250
Application 13/113,479

5
Appellant also argues that the claimed subject matter does not recite
an organization of human behavior. Instead, the claims recite computer
operations that provide an improvement to the computer that is a benefit to
users. Appeal Br. 9.
The Examiner responds that “[m]erely implementing an abstract idea
on a computer will not save the claims from abstractness.” Ans. 11.
Appellant then argues that the claimed subject matter cannot be
performed by the human mind with the aid of pen and paper because the
claimed storing in memory, receiving real-time data, determining real-time
odds, an detecting image selection “are integral to the claimed subject
matter.” Appeal Br. 10.
The Examiner responds that “sports betting is of immemorial
antiquity,” and “[b]ookmakers have been processing bets, including parlay
bets, since ancient times . . . without a computer.” Ans. 11. According to
the Examiner, “[t]he mere fact that Applicant has said, ‘implement it’ on a
generic computer does not rescue the claims.” Id. at 12.
Appellant replies that the claims recite a display screen allowing
“selection of a player of a live game and calculation of real-time odds for in-
game events,” making the Examiner’s “pen and paper” argument
unreasonable. Reply Br. 3. Appellant contends that the claims do not recite
generic computer components “because a generic computer does not permit
a user to select a player of a live game displayed on a screen and does not
calculate real-time odds;” rather, the claims are “directed to a special
purpose machine designed for wagering on live in-game events.” Id. at 4.
Appellant further argues that the claims “recite a concept that is an
improvement to computer related technology by protecting users betting
Appeal 2018-004250
Application 13/113,479

6
online,” which is support by their Specification’s statement that “the quick
timing of such a bet may prevent gaming operators and bettors from
comparing the different odds offered,” causing the gaming operator to set
odds “based entirely on the operator’s best assessment of the probabilities of
the various outcomes.” Appeal Br. 11 (quoting Spec. ¶ 95) (emphasis
omitted).
The Examiner responds that, “[a]t best, Appellant’s argument shows
that the computer performs calculations quicker and more efficiently than
humans.” Ans. 12 (citing Intellectual Ventures I LLC v. Capital One
Financial, 792 F.3d 1363 (Fed. Cir. 2015) (citing Bancorp Servs., LLC v.
Sun Life Assurance Co. of Can., 687 F.3d 1266, 1278 (Fed. Cir. 2012)
(“[T]he fact that the required calculations could be performed more
efficiently via a computer does not materially alter the patent eligibility of
the claimed subject matter.”); CLS Bank, Int’l v. Alice Corp., 717 F.3d 1269,
1286 (Fed. Cir. 2013) (en banc) aff'd, 134 S. Ct. 2347 (2014) (“[S]imply
appending generic computer functionality to lend speed or efficiency to the
performance of an otherwise abstract concept does not meaningfully limit
claim scope for purposes of patent eligibility.” (citations omitted))).
Appellant still further argues that the claims are not directed to an
abstract idea because they do not preempt all ways of playing the online
game. Appeal Br. 13.
The Examiner responds that, when claims are directed only to patent
ineligible subject matter, as they are in this case, lack of preemption does not
cause subject matter to become patent eligible. See Ans. 13 (citing Ariosa
Diagnostics, Inc., v. Sequenom, Inc., 726 F.3d 1296 (Fed. Cir. 2015)).
Appeal 2018-004250
Application 13/113,479

7
We have considered each and all of Appellant’s arguments in the
Appeal Brief and the Reply Brief.
Section 101 of the Patent Act provides, “[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.” See 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. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what 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; see also 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)). If the claim is “directed to” an abstract idea, we turn to the second
Appeal 2018-004250
Application 13/113,479

8
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).
The PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
Revised Guidance, 84 Fed. Reg.”). 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 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)).
Only if a claim: (1) recites a judicial exception; and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim;
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception.
See 2019 Revised Guidance, 84 Fed. Reg.

Appeal 2018-004250
Application 13/113,479

9
Step 2A, Prong One
Under the 2019 Revised Guidance, we begin our analysis by first
turning to the first prong of Alice step one (Step 2A, Prong 1 of the 2019
Revised Guidance). The 2019 Revised Guidance teaches that “[i]f a claim,
under its broadest reasonable interpretation, covers performance in the mind
but for the recitation of generic computer components, then it is still in the
mental processes category unless the claim cannot practically be performed
in the mind.” 2019 Revised Guidance, 84 Fed. Reg. n.14, and 54–55. We
agree with the Examiner that the claims are directed to “a method of forming
parlay wagers” (Final Act. 3). We also agree with the Examiner that the
steps can be performed by a person using pen and paper.
The claimed memory, display device, network interface, and
processor are conventional computer components. The steps of displaying a
game, storing information in memory, receiving data, detecting selection,
and providing an indication are conventional steps of collecting, storing, and
displaying data. The claimed determinations are steps of
analyzing/comparing the information/data that is input, stored, and
displayed. Further, we agree with the Examiner that the input, storage, and
display steps can be performed by a human with pen and paper. Further, we
agree with the Examiner that, although a computer can provide expediency,
the claimed determining steps can be performed in the human mind. If a
claim, under its broadest reasonable interpretation, covers performance in
the mind but for the recitation of generic computer components, then it is
still in the mental processes category unless the claim cannot practically be
performed in the mind. See Intellectual Ventures I LLC v. Symantec Corp.,
838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the exception of generic
Appeal 2018-004250
Application 13/113,479

10
computer implemented steps, there is nothing in the claims themselves that
foreclose them from being performed by a human, mentally or with pen and
paper.”).
Regarding the “determining” limitations, claim 4 recites determining:
(1) real-time odds for a first element of a parlay wager based at least
partially on real-time game data received from a network interface; (2) real-
time odds for a second element of the parlay wager based at least partially
on the real-time game data received via the network interface; and (3) odds
for the parlay wager based on the real-time odds determined in steps (1) and
(2) above. Although the data is received in real-time from a network
interface, we are not persuaded that the above-listed determining steps could
not be performed in the human mind. A person can display/watch a game,
decide elements of the game for which players can wager, check odds for
those elements, and even determine parlay wager odds for multiple
elements. We note that automating bet selection by first selecting a visual
image is also appending generic computer functionality to lend speed or
efficiency.
We, thus, agree with the Examiner that claim 4 recites the abstract
idea of a mental process.
Step 2A, Prong Two
Because we determine that claim 4 recites an abstract idea, we turn to
prong two of the first step of the Alice analysis and consider whether claim 4
integrates the abstract idea into a practical application. See 2019 Revised
Guidance, 84 Fed. Reg. 51. In doing so, we consider whether there are any
additional elements beyond the abstract idea that, individually or in
combination, “integrate the [abstract idea] into a practical application, using
Appeal 2018-004250
Application 13/113,479

11
one or more of the considerations laid out by the Supreme Court and the
Federal Circuit.” See 2019 Revised Guidance, 84 Fed. Reg. 54–55.
We agree with the Examiner that claim 4 requires only generic
computer components performing routine steps. Final Act. 5. “[T]he
relevant question is whether the claims here do more than simply instruct the
practitioner to implement the abstract idea . . . on a generic computer.”
Alice, 573 U.S. at 225. They do not. See, e.g., Spec. ¶¶ 40–69.
We are not persuaded by Appellant’s argument that the claims do not
recite generic computer components “because a generic computer does not
permit a user to select a player of a live game displayed on a screen and does
not calculate real-time odds;” rather, the claims are “directed to a special
purpose machine designed for wagering on live in-game events” (Reply Br.
4). As stated above, automating bet selection by first selecting a visual
image is also appending generic computer functionality to lend speed or
efficiency.
We determine that neither the processor recited in claim 4 that
performs the claimed steps, nor the steps themselves, integrate the recited
abstract ideas into a practical application. See 2019 Revised Guidance, 84
Fed. Reg. 55 (explaining that courts have identified “merely us[ing] a
computer as a tool to perform an abstract idea” as an example of when a
judicial exception may not have been integrated into a practical application).
Further, consistent with the Examiner’s findings, and in view of Appellants’
Specification (e.g., ¶ 95, 100), we conclude that no aspect of claim 4
integrates the judicial exception into a practical application. In particular,
we determine claim 4 does not recite:
(i) an improvement to the functioning of a computer;
Appeal 2018-004250
Application 13/113,479

12
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a particular
machine;
(iv) a transformation or reduction of a particular article to a different
state or thing; or
(v) other meaningful limitations beyond generally linking the use of
the abstract idea to a particular technological environment.
See MPEP §§ 2106.05(a)–(c), (e)–(h).
Step 2B — Inventive Concept
Finally, we consider whether claims 1 and 8 incorporate an inventive
concept, that is, whether any additional claim elements “‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at
217 (quoting Mayo, 566 U.S. at 78, 79). This requires us to evaluate
whether the additional claim elements add “a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field” or “simply append [] well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality.” See 2019 Revised Guidance, 84 Fed. Reg. 56.
As stated supra, the claims require a generic computer system with a
generic processor that carries out the abstract idea itself. As such, the
claims, when considered as a whole, are nothing more than the instruction to
implement the abstract idea in a particular routine and conventional
technical environment.
Although Appellant contends that the claims cover an improvement to
computer related technology “by protecting users betting online” (Appeal
Br. 11), we agree with the Examiner that the claimed conventional computer
Appeal 2018-004250
Application 13/113,479

13
components, including processor performing the claimed steps, merely
performs calculations quicker and more efficiently than humans (Ans. 12),
which does not meaningfully limit claim scope for purposes of patent
eligibility. Automating bet selection by first selecting a visual image merely
employs generic computer functionality to lend speed or efficiency to such
betting.
Claim 4, therefore, does not provide an improvement in computer
technology. Nothing in the claims or the Specification suggests that the
claimed memory, display device, network interface, and processor are
anything but generic computer components that perform well-understand,
routine, and conventional activities. In fact, the Specification indicates that
the components are routine and conventional generic computer components.
See Spec. ¶¶ 57–69.
Thus, considering the claims as a whole, we determine that the
additional elements recited in claim 4 do not provide “a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field.” See 2019 Revised Guidance, 84 Fed.
Reg. 56. Rather, these elements “simply append[] well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality.” Id. Accordingly, we agree with the Examiner that
claim 4 does not have an inventive concept.
Because we determine that claim 4 is directed to an abstract idea and
does not contain an inventive concept, we sustain the Examiner’s rejection
of claim 4 under 35 U.S.C. § 101. Claims 4, 6, 7–9, 24–29 and 31–40 fall
with claim 4.
Appeal 2018-004250
Application 13/113,479

14
Section 103
Appellant argues claims 4, 6, 7–9, 24–29 and 31–40 as a group.
Appeal Br. 16. We select claim 4 as representative. Claims 6, 7–9, 24–29
and 31–40 stand or fall with claim 4.
Regarding claim 4, the Examiner finds that Simon discloses, inter
alia, “displaying at least one live game on the display device,” and storing,
in memory, “first elements for a wager via [a] network interface,” the first
elements including “games that begin and end in the future,” so that a player
can “make bets on games prior to the start of the game.” Final Act. 6 (citing
Simon ¶ 21). The Examiner finds that Simon also discloses receiving
“second elements for the wager,” the second elements including “wagers
related to whether each respective particular event occurs during the game.”
Id. The Examiner then finds that Simon teaches players using “a menu
system to make wagers,” which Appellant’s Specification discloses is
“equivalent to detecting a selection of an image of a live player on the
screen.” Id. at 7 (citing Spec. ¶ 100). The Examiner concludes that it would
have been obvious to modify “Simon in view of [Appellant’s] admission to
detect the selection of the image of a live player on the screen because
Applicant describes them as equivalent and the use of equivalent methods to
achieve predictable results is obvious.” Id.
Appellant argues that neither Simon nor Brennan disclose detecting
the selection of “an image of a live game participant” and wagering on an
event related to the selected image. Appeal Br. 14. According to Appellant,
in Simon, a group of players 10 uses a terminal, as the group watches “a
football game broadcast on television” to place bets on events selected by
the bartender that are displayed on the terminal as a Captain’s Screen. Id.
Appeal 2018-004250
Application 13/113,479

15
(citing Simon ¶ 113, Fig. 2). Appellant contends that, even given the
broadest reasonable interpretation, “the claimed ‘selection of an image of a
live game participant’ does not correspond to the mere selection of a menu
item to enter a bet as provided in Simon.” Id. at 14–15. Thus, Appellant
contends, the Examiner’s interpretation of is unreasonably broad. Id. at 15.
According to the Examiner, Appellant disputes whether one of
ordinary skill in the art would see selecting a player to wager on using a
menu is equivalent to selecting a player image. Ans. 10. The Examiner
responds that, based on the disclosure of Appellant’s Specification (¶ 100), a
user can “touch an image of Barry Bonds on the screen or equivalently,
touch some other image or icon,” and “a menu is another image or icon and
is thus equivalent to the selection of a player image on the screen.” Ans. 11.
The Examiner concludes, based on this disclosure, that it would have been
obvious to substitute these equivalent methods. Id.
The Examiner’s reliance on Appellant’s own Specification for
identifying alternative/equivalent structure, and determining the obviousness
thereof, employs improper hindsight. Although obviousness is in a sense
always a reconstruction based on hindsight, it must not “include knowledge
gleaned only from [Appellant’s] disclosure.” In re McLaughlin, 443 F.2d
1392, 1395 (CCPA 1971). Because the Examiner erred in basing the
obviousness determination on knowledge gleaned from Appellant’s
invention description, we do not sustain the rejection of claim 4. Claims 6,
7–9, 24–29 and 31–40 fall with claim 4.
Appeal 2018-004250
Application 13/113,479

16
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
4, 6, 7–9, 24–
29, 31–40
101

4, 6, 7–9, 24–
29, 31–40

4, 6, 7–9, 24–
29, 31–40
103 Simon, Brenner 4, 6, 7–9, 24–
29, 31–40
Overall
Outcome:
4, 6, 7–9, 24–
29, 31–40

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