Lee M. Amaitis et al.

Patent Trials and Appeals Board

Aug 9, 2019

13561299 - (D) (P.T.A.B. Aug. 9, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/561,299 07/30/2012 Lee M. Amaitis 04-7121-C3 9512
63710 7590 08/09/2019
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
HSU, RYAN
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
08/09/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
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 M. AMAITIS, JOSEPH M. ASHER,
HOWARD W. LUTNICK, DARRIN M. MYLET, and ALAN B. WILKINS
____________

Appeal 2018-006084
Application 13/561,299
Technology Center 3700
_______________

Before LINDA E. HORNER, LISA M. GUIJT, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–18.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Interactive Games LLC is identified as the real party in interest. Appeal
Br. 3.
2 Appeal is taken from the Final Office Action dated August 23, 2017.

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CLAIMED SUBJECT MATTER
Claim 1, reproduced below as the sole independent claim on appeal, is
also exemplary of the subject matter on appeal.
1. A method, comprising:
in response to a device attempting to gain access to
a gaming system to engage in at least one gaming activity,
authenticating a user, authenticating the device, and
determining whether the device is located within a
pre-defined location;
in response to authenticating the user and the
device, identifying whether any gaming information is
wagering information;
transmitting the gaming information that is not the
wagering information to the device over an Internet
communication path; and
transmitting the wagering information to the device
over a private communication path.

THE REJECTIONS3
I. Claims 1–18 stand rejected under 35 U.S.C. § 101 as directed to
ineligible subject matter.
II. Claims 1–18 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
III. Claims 1–18 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.

3 The Examiner’s non-statutory double patenting rejection of claims 1–18 in
view of claims 1–30 of copending Application No. 13/561,335 is moot, in
view of Appellants’ Terminal Disclaimer filed November 20, 2017. The
following rejections under 35 U.S.C. § 103(a) have been withdrawn by the
Examiner: (i) claims 1–4 and 6–15 as unpatentable over Steelberg and
Mages (US 2003/0006931 A1; published Jan. 9, 2003); and (ii) claims 5, 17,
and 18 as unpatentable over Steelberg, Mages, and Brenner. Ans. 2.
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IV. Claims 1–4 and 6–16 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Steelberg (US 7,460,863 B2; issued Dec. 2, 2008) and
Letovsky (US 2002/0147047 A1; published Oct. 10, 2002).4
V. Claims 5, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Steelberg, Letovsky, and Brenner (US 2003/0144057 A1;
published July 31, 2003).

OPINION
Rejection I
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what 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

4 The Examiner’s omission of claim 16 in the statement of rejection is an
apparent typographical error, as the Examiner separately finds that “the
combination of Steelberg and Letovsky teach a method wherein the pre-
defined location comprises at least two geographically separate locations,”
as recited in claim 16. Final Act. 19, 22 (citing Letovsky 10:49–67).
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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, 69 (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))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in 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
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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 (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. (quoting Mayo, 566 U.S. at 77
(alterations in original)). “[M]erely requir[ing] generic computer
implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“2019 Guidance”).5 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

5 Although the Examiner issued the rejection before the Guidance was
published, because the document provides the PTO’s guidance for
evaluating subject matter eligibility under existing law, the methodology set
forth in the Guidance applies to examinations of all pending claims,
including those at issue in this Appeal.
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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 Guidance.
The Examiner determines that the claims recite a judicial exception:
an abstract idea, and more particularly, a certain method of organizing
human activity, including “collecting information, analyzing the collected
information and presenting the collected and analyzed information for
display by a device.” Final Act. 6; see also id. at 5–6 (determining that the
claims are similar to the claims analyzed in Electric Power Group, LLC v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)). The Examiner further
determines that the claimed steps referenced above also may be
characterized as “an idea []of itself.” Id. at 6. The Examiner also
determines that none of the additional limitations amount to significantly
more than the abstract idea itself, and that the recited computing elements
are generic and used merely as a tool to perform the recited functions
(i.e., the abstract idea). Id. The Examiner concludes that there is no
evidence that the combination of elements improves the functioning of a
computer or any other technology. Id.
Appellants argue, inter alia, that “the claims generally recite
determining a location of a device and transmitting different types of data
over a respective network based on the device’s location,” and that “[t]he
claimed subject matter is in no way related to collecting information[,]
analyzing it, and displaying certain results.” Appeal Br. 12.
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Step 2A, Prong One: Does claim 1 recite a judicial exception?
Pursuant to Step 2A, Prong 1 of the 2019 Guidance, we analyze the
individual limitations of claim 1 to determine whether any limitations of
claim 1 recite a judicial exception (e.g., a certain method of organizing
human activity)6, for example
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts; legal
obligations; advertising marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions).
2019 Guidance, 84 Fed. Reg. at 52.
We determine that the Examiner oversimplied claim 1 to determine
that the limitations recite a certain method of organizing human activity
(i.e., a commercial interaction) by merely reciting collecting and analyzing
data.
We further determine that at least the claimed step of identifying
whether any gaming information is wagering information is a mental
process, because such a step can be performed in the human mind. See
claim 1 supra (“identifying whether any gaming information is wagering
information”). Steps that can be performed in the human mind, or by a
human using pen and paper, without more, are mental processes that are
abstract ideas. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1372 (Fed. Cir. 2011) (holding a method for verifying the validity of a credit

6 The Guidance does not identify “an idea of itself” as one of the groupings
of subject matter identified as an abstract idea. 2019 Guidance, 84 Fed. Reg.
at 52.
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card transaction over the Internet as an abstract idea capable of being
performed in the human mind or by a human using pen and paper).
Therefore, claim 1 recites an abstract idea, i.e., a mental process.
Step 2A, Prong Two: Is there an integration into a practical application?
Following our Office guidance, having found that claim 1 recites a
judicial exception, namely, a mental process, we are instructed to determine
next 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. We determine that the
claimed steps of transmitting the gaming information that is not the
wagering information to the device over an Internet communication path,
and transmitting the wagering information to the device over a private
communication path integrate the mental process of identifying whether any
gaming information is wagering information into a practical application.
Specifically, the mental process is integrated into a process that secures
transmission of private data and allows public transmission of non-private
data. In view of this integration into a practical application, claim 1 is not
directed to the judicial exception of an abstract idea (i.e., a mental process).
Accordingly, we do not sustain the Examiner’s rejection of claim 1,
and claims 2–18 depending therefrom, under 35 U.S.C. § 101.
Rejection II
Regarding claim 1, the Examiner finds that the step of “‘identifying
whether any gaming information is wagering information’ is construed as
NEW MATTER as it is not adequately described in the Specification.”
Final Act. 10. In particular, the Examiner determines that the Specification
fails to sufficiently describe the hardware and/or algorithm, or the steps or
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procedure, to perform the step of identifying whether any gaming
information is wagering information or how the result is achieved. Id.
(citing MPEP § 2163(A)). Similarly, the Examiner also determines that the
Specification only includes “general statements” that are “generic and do not
provide any steps as to the criticality of the specific type of data being
transmitted or as to how the data is to be identified to perform the features in
the claimed invention.” Id. at 10–11 (citing Spec. 7:6–18).
Appellants quote MPEP § 2163 II(A)[(3)](b), as follows:
The examiner has the initial burden of presenting evidence
or reasoning to explain why persons skilled in the art would
not recognize in the original disclosure a description of the
invention defined by the claims… To comply with the written
description requirement…each claim limitation must be
expressly, implicitly, or inherently supported in the originally
filed disclosure. When an explicit limitation in a claim “is not
present in the written description whose benefit is sought it
must be shown that a person of ordinary skill would have
understood, at the time the patent application was filed, that
the description requires that limitation.”
Appeal Br. 9. Appellants submit that “one of ordinary skill in the art would
understand that a device identifying whether any gaming information is
wagering information is inherent, since the [S]pecification teaches how the
wagering information is handled differently than non-wagering
information.” Id. In other words, Appellants submit that “one of ordinary
skill in the art would readily understand that the device would inherently
identify the wagering information before transmitting it to the private
communication path as claimed.” Id.
The Examiner correctly responds that “merely teaching how the
wagering information is transmitted by a different communication path,” in
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the Specification, does not disclose “the process to identify whether the
information is gaming information or wagering information.” Ans. 10
(emphasis added). The Examiner also responds that the written description
requirement requires “a description of an invention, not an indication of a
result that one might achieve if one made the invention,” regardless of
whether the step of identifying “would have been within the skill of one of
ordinary skill in the art.” Id. 10–11 (citations omitted).
To satisfy the written description requirement, the specification must
describe the claimed invention in sufficient detail that one skilled in the art
can reasonably conclude that the inventor had possession of the claimed
invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir.
1991). Specifically, the specification must describe the claimed invention in
a manner understandable to a person of ordinary skill in the art and show
that the inventor actually invented the claimed invention. Id. at 1562–63;
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc).
The Examiner is correct in that the Specification, as filed, including
the original claims, does not disclose a step of “identifying whether any
gaming information is wagering information,” as claimed. In fact, this step
was added to claim 1 by an Amendment dated June 6, 2017, along with
Appellants’ statement that “[n]o new subject matter has been added by way
of these amendments.” Amend. 5. Appellants have not explained in their
arguments how the Specification describes performance of this step and
merely conclude that the claimed invention is described in a manner
understandable to a person of ordinary skill in the art, as required. The
Specification’s disclosure in Figure 6 that “server software acts on input
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data” is insufficient to explain how information is identified as wagering
information. In sum, we are not persuaded by Appellants’ argument, as
Appellants’ contentions appear to represent mere attorney argument without
supporting evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984) (“Arguments and conclusions unsupported by factual evidence carry
no evidentiary weight.”).
Accordingly, we sustain the Examiner’s rejection of claim 1 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement, and claims 2–18 depending therefrom.
Rejection III
Claim 1 supra recites “identifying whether any gaming information is
wagering information,” and also “transmitting . . . gaming information that is
not the wagering information . . . over an Internet communication path.”
The Examiner determines, inter alia, that the step of “transmitting the
gaming information that is not the wagering information to the device” is “a
negative limitation that renders the claim indefinite.” Final Act. 12. In
particular, the Examiner determines that “the claim is rendered indefinite as
one of ordinary skill in the art would not recognize the metes and bounds of
the invention” because it is unclear “what constitutes ‘gaming information
that is not wagering information’ for a wagering game.” Id.
Appellants argue that “there is nothing inherently ambiguous” about
the claim language “not the wagering information” and that “[t]he
boundaries of this limitation are clear.” Appeal Br. 7 (emphasis omitted).
Appellants submit that because the Specification provides “a positive
alternative to the wagering information (e.g., graphical representation of a
table game), . . . one of ordinary skill in the art could readily discern the
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metes and bounds of the claimed subject matter in view of the
[S]pecification.” Id. at 7–8 (citing Spec. 7:9–18). Appellants do not present
definitions for the claim terms “gaming information” and “wagering
information.”
A claim is properly rejected as indefinite under 35 U.S.C. § 112,
second paragraph, if, after applying the broadest reasonable interpretation in
light of the specification, the metes and bounds of a claim are not clear
because the claim “contains words or phrases whose meaning is unclear.” In
re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014) (per curiam).
The Specification discloses that “[g]aming information . . . may
include any information, in any format, which is necessary or desirable in
the operation of the gaming experience in which the user participates.”
Spec. 6:11–13; see also id. at 2:17‒18 (describing that “gaming information”
is transmitted between a gaming communication device and a gaming
server) (emphasis added); 2:24–25 (describing that “information associated
with the selected gaming activity” is transmitted between a gaming
communication device and a server) (emphasis added).
The Specification also describes that “gaming activities include
gambling” and also “wagering on any type of event.” Id. at 4:10–16.
Consistent with the Specification, an ordinary definition of the term
“gaming” means “the act or practice of playing games for stakes.”
WEBSTER’S THIRD NEW INT’L DICTIONARY 933 (1993). Further, an ordinary
definition of the term “gambling,” consistent with the Specification, is “the
act or practice of betting : the act of playing a game and consciously risking
money or other stakes on its outcome.” Id. at 932. An ordinary definition of
the term “wagering,” consistent with the Specification is “relating to the act
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of one who wagers,” wherein an ordinary definition of the term “wager,”
consistent with the Specification is “something that is risked on an uncertain
event.” Id. at 2569. (Although the Specification discloses that “[g]aming
can also include non-wagering games and events,” “gaming” still includes
the act of playing games for stakes based on such non-wagering games and
events. Spec. 4:16.)
We determine that the claim term “gaming information” means,
consistent with the Specification, any information that is related to the act of
playing a game for stakes (i.e., wagering or risking something on an
uncertain event). We also determine that the claim term “wagering
information,” means, consistent with the Specification, any information
related to the act of risking something on an uncertain event. In view of
these definitions, “gaming information” includes any information related to
playing a game for stakes, including, but not limited to, “wagering
information.” Although the definitions of “gaming information” and
“wagering information” are very broad, the claim is clear in that the method
requires “identifying whether any gaming information is wagering
information” and thus, determining that “gaming information that is not the
wagering information.”
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 1 and claims 2–18 under 35 U.S.C. § 112, second
paragraph, as indefinite.
Rejection IV
Appellants argue claims 1–4 and 6–16 as a group. Appeal Br. 14–16.
We select independent claim 1 supra as representative, and claims 2–4 and
6–16 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
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Regarding independent claim 1, the Examiner finds, inter alia, that
Steelberg teaches the steps of authenticating a user and a device and
determining whether the device is located within a pre-defined location, as
claimed. Final Act. 19 (citations omitted). The Examiner relies on Letovsky
for teaching the step of transmitting gaming information to the device over
an Internet communication path and transmitting wagering information to
the device over a private communications path, and reasons that “[o]ne
would be motivated to incorporate the teachings of Letovsky with the
method of Steelberg to use a known technique to improve similar devices in
the same way.” Id. at 19–20 (citations omitted).
Appellants argue that Mages does not disclose the steps of
transmitting gaming information, as claimed, and that Steelberg does not
cure the deficiencies in Mages. Appeal Br. 14–16.
The Examiner correctly responds that Appellants’ arguments fail to
address the Examiner’s proposed combination of Steelberg and Letovsky.
Ans. 13.
Appellants reply that “Appellants inadvertently omitted arguments
addressing [Letovsky]” and argue that Letovsky fails to teach the steps of
transmitting gaming information, as claimed. Reply Br. 2 (“The system of
Letovsky does not bifurcate the game into wagering and non-wagering
information as claimed.”).
We decline to consider arguments raised for the first time by
Appellants in the Reply Brief. See 37 C.F.R. § 41.41(b)(2) (“Any argument
raised in the reply brief which was not raised in the appeal brief, or is not
responsive to an argument raised in the examiner’s answer, . . . will not be
considered by the Board for purposes of the present appeal, unless good
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cause is shown.”) Appellants’ inadvertent omission of arguments directed to
the rejection as clearly articulated by the Examiner in the Final Office
Action is not good cause as to why Appellants’ arguments in the Reply Brief
were not raised earlier. Further, without the benefit of having the
Examiner’s response to these new arguments, we decline to consider them.
Accordingly, we sustain the Examiner’s rejection of claim 1, and
claims 2–4 and 6–16 fall therewith.
Rejection V
Appellants do not present arguments for the patentability of claims 5,
17, and 18, apart from the arguments presented for the patentability of
independent claim 1. Appeal Br. 17.
Accordingly, for essentially the reasons stated supra with respect to
claim 1, we also sustain the Examiner’s rejection of claims 5, 17, and 18.

DECISION
The Examiner’s rejection of claims 1–18 under 35 U.S.C. § 101 as
directed to ineligible subject matter is REVERSED.
The Examiner’s rejection of claims 1–18 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement is
AFFIRMED.
The Examiner’s rejection of claims 1–18 under 35 U.S.C. § 112,
second paragraph, as indefinite, is REVERSED.
The Examiner’s rejections of claims 1–18 under 35 U.S.C. § 103(a)
are AFFIRMED.
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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