Michael Casey et al.

Patent Trials and Appeals Board

Jun 26, 2020

2018005418 (P.T.A.B. Jun. 26, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/866,922 09/26/2015 Michael Casey 777-1640 5370
92852 7590 06/26/2020
Everi Games, Inc.
Attn: Ms. Harper Ko, Chief Legal Officer - GC
206 Wild Basin Road South
Building B, Suite 400
Austin, TX 78746
EXAMINER
YEN, JASON TAHAI
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
06/26/2020 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):
daniel.oneill@everi.com
docket@tcg-ipl.com
peggy.zaongo@everi.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL CASEY and
MICHAEL JASON WABSCHALL
____________

Appeal 2018-005418
Application 14/866,922
Technology Center 3700
____________

Before JOHN C. KERINS, ERIC C. JESCHKE, and
RICHARD H. MARSCHALL, Administrative Patent Judges.

JESCHKE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks review, under 35 U.S.C. § 134(a), of the Examiner’s
decision, as set forth in the Final Office Action dated April 13, 2017,
rejecting claims 1–18. 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 Everi Games, Inc. as the real party in
interest. Appeal Br. 3.
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BACKGROUND
The disclosed subject matter “relates to wagering games, gaming
devices, networked gaming systems, and associated methods including
games with player selectable symbols.” Spec. 1:17–19. Claims 1, 7, and 13
are independent. Claim 1 is reproduced below:
1. A method including:
(a) receiving a player input from a card reader
or bill acceptor/printer of a player tracking unit
associated with a gaming machine, and in response
activating player credits to be wagered, and
receiving one or more play initiation inputs for a
base wagering game through a player interface of a
gaming machine and, in response to a respective
one of the one or more play initiation inputs for the
base wagering game, causing a display system of
the gaming machine to, under control of a data
processing system, display a respective result in the
base wagering game for the respective play
initiation input;
(b) under control of the data processing
system, causing the display system to display a
sequence of prize levels with one or more of the
prize levels corresponding to a progressive prize;
(c) under control of the data processing
system and in response to a triggering event,
causing the display system to display a set of player
selectable elements each corresponding a respective
concealed award, at least one of the awards
comprising a change in position along the sequence
of prize levels;
(d) under control of the data processing
system and in response to receiving a player
selection of one of the player selectable elements
corresponding to the change in position along the
sequence of prize levels, causing the display system
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to display a description of the respective change in
position;
(e) under control of the data processing
system, conducting the change in position
corresponding to the selected player selectable
element, the change in position resulting in a
designation of one of the sequence of prize levels;
and
(f) under control of the data processing
system, making payment to the player by
incrementing a credit meter by an amount
corresponding to the designated prize level.

REJECTIONS
1. Claims 1–18 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter.
2. Claims 1, 7, and 132 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Causley (US 2012/0289322 A1, published Nov. 15, 2012).
3. Claims 3, 9, and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Causley, Gomez (US 2006/0068873 A1, published Mar.
30, 2006), and Baerlocher (US 2007/0155466 A1, published July 5, 2007).
4. Claims 4, 10, and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Causley and Cuddy (US 2003/0060254 A1, published
Mar. 27, 2003).
5. Claims 6, 12, and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Causley and Noda (US 2011/0300950 A1, published Dec.
8, 2011).

2 We agree with Appellant that this rejection applies to independent
claims 1, 7, and 13 (see Appeal Br. 12 n.1) rather than claims 1, 7, and 12, as
listed by the Examiner in the lead paragraph (see Final Act. 6).
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DISCUSSION
Rejection 1 – The rejection of claims
1–18 under 35 U.S.C. § 101
A. 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 U.S. 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 Court’s two-part framework, described in Mayo and Alice.
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.” See 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,
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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
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the 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. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
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566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4
2019 Revised Guidance, 84 Fed. Reg. at 52–55.

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”), https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf.
4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 54–55
(§ III(A)(2)).
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, 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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
B. The Examiner’s Rejection
The Examiner rejects representative5 claim 1 under 35 U.S.C. § 101
because the claim is directed to an abstract idea and does not recite
additional elements that amount to significantly more than the judicial
exception itself. Final Act. 2–6. For the reasons below, we are not
persuaded that the Examiner erred.

C. Does Claim 1 Recite a Judicial Exception?
The claimed subject matter relates to a method for a wagering game
with player selectable symbols. Spec. 1:17–19. Specifically, claim 1
recites, among other steps, (in clause a) “receiving a player input . . . and in

5 Appellant argues claims 1–18 as a group, with only one statement
addressing independent claims 7 and 13. See Appeal Br. 6–11; Reply Br. 2–
5; see also Appeal Br. 7:16–17 (discussing claims 7 and 13). We select
claim 1 as representative, with the remaining claims standing or falling with
claim 1. 37 C.F.R. § 41.37(c)(1)(iv) (2017). We address the statement
regarding claims 7 and 13 on pages 15–16 below.
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response activating player credits to be wagered” and “receiving one or more
play initiation inputs for a base wagering game . . . and, in
response . . . display[ing] a respective result in the base wagering game for
the respective play initiation input.” In addition, claim 1 recites additional
aspects for display “under control of a data processing system”: (in clause b)
“a sequence of prize levels with one or more of the prize levels
corresponding to a progressive prize;” (in clause c) “a set of player
selectable elements each corresponding [to] a respective concealed award, at
least one of the awards comprising a change in position along the sequence
of prize levels”; and (in clause d) “a description of the . . . change in
position” “along the sequence of prize levels” “in response to receiving a
player selection of one of the player selectable elements corresponding to the
change in position.” Further, claim 1 recites additional steps performed
“under control of the data processing system”: (in clause e) “conducting the
change in position corresponding to the selected player selectable element,
the change in position resulting in a designation of one of the sequence of
prize levels” and (in clause f) “making payment to the player by
incrementing a credit meter by an amount corresponding to the designated
prize level.” Appeal Br. 15–16 (Claims App.).
The limitations above, under their broadest reasonable interpretation,
recite steps for practicing (i.e., the rules for) a wagering game. For example,
claim 1 requires “activating player credits to be wagered” (in clause a),
displaying various features of the wagering game (in clauses b, c, and e),
including (in clause c) “a set of player selectable elements” and then, based
on a “player selection of one of the player selectable elements” (in clause d),
“making payment to the player” (in clause f). Appeal Br. 15–16 (Claims
App.). In this way, claim 1 recites a method for managing personal behavior
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or relationships or interactions between people, which is one of the certain
methods of organizing human activity identified in the 2019 Revised
Guidance, and thus an abstract idea. See In re Marco Guldenaar Holding
B.V., 911 F.3d 1157, 1160 (Fed. Cir. 2018) (“[W]here the Patent Office
further articulates a more refined characterization of the abstract idea (e.g.,
‘rules for playing games’), there is no error in also observing that the
claimed abstract idea is one type of method of organizing human activity.”);
2019 Revised Guidance, 84 Fed. Reg. at 52; see also October 2019 Update
at 6 (listing “a set of rules for playing a dice game, In re Marco Guldenaar
Holding B.V.” as an example of the sub-grouping “managing personal
behavior or relationships or interactions between people”); Final Act. 2–3
(“The claims is/are directed to the abstract idea of rules of playing a
wagering game, which is similar to . . . certain methods of organizing human
activity.”).
In the alternative, claim 1 can also be viewed as reciting a
fundamental economic principle or practice, which is another of the certain
methods of organizing human activity identified in the 2019 Revised
Guidance, and thus an abstract idea. See In re Smith, 815 F.3d 816, 818, 819
(Fed. Cir. 2016) (concluding that “Applicants’ claims, directed to rules for
conducting a wagering game, compare to other ‘fundamental economic
practice[s]’ found abstract by the Supreme Court” and are “drawn to an
abstract idea”); 2019 Revised Guidance, 84 Fed. Reg. at 52; see also
October 2019 Update at 5 n.24 (citing In re Smith in a discussion of the sub-
grouping “fundamental economic practices or principles”); Final Act. 2–3
(“The claims is/are directed to the abstract idea of rules of playing a
wagering game, which is similar to concepts of fundamental economic
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practices . . . .”), 3–4 (discussing how various limitations “are similar to the
concept(s) of rules for playing a wagering game in In re Ray Smith”).
Appellant contends that “the claims are clearly not directed to the
rules of a game” because “[t]he actual rules of the game, that is, how the
game defines a win or loss and what events and results qualify for a prize,
are not specifically addressed in the claim.” Reply Br. 2. According to
Appellant, “the claim concerns novel steps for interacting with a player
through the gaming machine to provide interactive game steps.” Id. Even
assuming the correctness of the alternative characterization proposed by
Appellant—i.e., that claim 1 recites “interactive game steps” rather than
“rules of a game” (id.)—claim 1 is still properly viewed as reciting either a
method for managing personal behavior or relationships or interactions
between people or a fundamental economic principle or practice. Thus, for
the reasons discussed above, claim 1 recites at least one of the subgroupings
of the certain methods of organizing human activity identified in the 2019
Revised Guidance, and thus an abstract idea.
D. Is Claim 1 “Directed To”
the Recited Judicial Exception?
Because claim 1 recites an abstract idea, we now determine whether
the claim recites “additional elements” that integrate the judicial exception
into a practical application. 2019 Revised Guidance, 84 Fed. Reg. at 51, 54;
see also id. at 55 n.24 (defining “additional elements” as “claim features,
limitations, and/or steps that are recited in the claim beyond the identified
judicial exception” and noting that “whether an additional element or
combination of elements integrate the exception into a practical application
should be evaluated on the claim as a whole”). If a claim recites a judicial
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exception and fails to integrate the exception into a practical application, the
claim is “directed to” the judicial exception. Id. at 51, 54.
Here, the additional elements recited in claim 1 include “a card reader
or bill acceptor/printer of a player tracking unit associated with a gaming
machine,” “a player interface of a gaming machine,” “a display system of
the gaming machine,” and “a data processing system.” See Appeal Br. 15
(Claims App.) (claim 1 – clause a); see also Final Act. 4–5 (discussing these
features). We turn now to certain relevant considerations indicative of
whether the additional elements may have integrated the judicial exception
into a practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 55
(listing “exemplary considerations”).
1.
An additional element may integrate the judicial exception into a
practical application if it reflects an improvement in the functioning of a
computer, or an improvement to another technology or technical field. 2019
Revised Guidance, 84 Fed. Reg. at 55; see MPEP § 2106.05(a) (providing
further discussion of this consideration).
Appellant asserts that the claimed subject matter is similar to that in
Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356
(Fed. Cir. 2018), in which, according to Appellant, “novel user interface
menu elements were held to be not abstract because the claim disclosed ‘a
specific manner of displaying a limited set of information to the user, rather
than using conventional user interface methods to display a generic index on
a computer.’” Appeal Br. 8:21–9:5 (quoting Core Wireless, 880 F.3d at
1363). Appellant also quotes from the Federal Circuit’s decision in Finjan,
Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018), which
states: “Our cases confirm that software-based innovations can make ‘non-
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abstract improvements to computer technology’ and be deemed patent-
eligible subject matter at step l.” Finjan, 879 F.3d at 1304 (quoting Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016)), quoted
at Appeal Br. 9:5–8. Appellant contends that
[t]he present claims not only specify the apparatus for
performing the method steps or functions, but also specify how
the steps/functions are performed with a specific grid taking on
varying display states, and a selection through those states, the
revealing of actions and a description, and the movement on a
sequence of prize levels.
Appeal Br. 9:8–11. In the Reply Brief, Appellant for the first time also cites
the Federal Circuit’s decisions in DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014), and BASCOM Global Internet Services, Inc.
v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), as a basis for patent
subject matter eligibility of claim 1. See Reply Br. 3.
We are not apprised of error by these arguments. Although the
highlighted sentence in Core Wireless notes the “specific manner of
displaying a limited set of information,” the claims were not deemed patent
eligible merely due to their specificity. Core Wireless, 880 F.3d at 1363.
Instead, the Federal Circuit’s determination turned on how the claims were
“directed to an improvement in the functioning of computers, particularly
those with small screens.” Id. (emphasis added); see also id. (“Like the
improved systems claimed in Enfish, Thales [Visionix Inc. v. United States,
850 F.3d 1343 (Fed. Cir. 2017)], Visual Memory [LLC v. NVIDIA Corp.,
867 F.3d 1253 (Fed. Cir. 2017)], and Finjan, these claims recite a specific
improvement over prior systems, resulting in an improved user interface for
electronic devices.”). Similarly, the claims in DDR Holdings and BASCOM
were determined to be patent eligible not merely because they were
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implemented in software or displayed information (cf. Reply Br. 3), but
because they reflected an improvement in an underlying technology. See
DDR Holdings, 773 F.3d at 1257 (stating that “the claimed solution is
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks”); BASCOM, 827
F.3d at 1350–51 (stating that the “claims may be read to ‘improve[] an
existing technological process’” (quoting Alice, 573 U.S. at 223)).
Here, addressing the alleged improvement under the relevant Federal
Circuit case law, Appellant contends that claim 1 “provide[s] a specific
improvement over prior gaming systems by enhancing the player’s gaming
experience.” Reply Br. 2:17–19. According to Appellant, “[t]his
improvement . . . is no less technical and no less an improvement in the
functioning of the underlying hardware than the user interface improvement
found patent eligible under Alice Corp. Step 2A in Core Wireless.” Id. at
2:19–22.
The Examiner maintains the position that the claimed subject matter
does not provide an “improvement” of the type required under Federal
Circuit law. See Final Act. 5 (“There is no indication that the combination
of elements improve the functioning of a computer or improves any other
technology.”); Ans. 14–15 (stating that “the claimed invention merely
displays various game element in accordance with the recited game rules”
and “does not provide any improvement in the functioning of computers
such as an improved user interface” as in Core Wireless and stating that “the
claimed invention fails to improve any computer functionality” as in
Finjan).
As an initial matter, we note that Appellant has not provided any
evidence to support its assertion as to an enhanced gaming experience. See,
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e.g., October 2019 Update at 13 (“If the examiner concludes the disclosed
invention does not improve technology, the burden shifts to applicant to
provide persuasive arguments supported by any necessary evidence to
demonstrate that one of ordinary skill in the art would understand that the
disclosed invention improves technology.”). Moreover, even assuming that
the claimed subject matter does enhance the gaming experience, that would
indicate an improvement in the abstract idea itself, rather than an
improvement in the relevant technology. See McRO, Inc. v. Bandai Namco
Games Am., Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (“We therefore look
to whether the claims in these patents focus on a specific means or method
that improves the relevant technology or are instead directed to a result or
effect that itself is the abstract idea and merely invoke generic processes and
machinery.” (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336
(Fed. Cir. 2016)); see also Spec. 2:5–7 (“There continues to be a need for
wagering games which maintain the player’s interest and generate
excitement to enhance the player’s gaming experience.”).
Indeed, in a discussion citing a USPTO memorandum on patent
eligibility, Appellant relies on “[t]he selectable element tied to a change in
position in the sequence of prize levels” as allegedly indicating an
“improvement in computer-related technology.” Reply Br. 4:9–16 (citing
Memorandum from Robert W. Bahr, Deputy Commissioner for Patent
Examination Policy to the Patent Examiner Corps at 3 (Nov. 2, 2016),
https://www.uspto.gov/sites/default/files/documents/McRo-Bascom-
Memo.pdf (“Bahr Memo”)). That limitation (e.g., in clause c of claim 1),
however, is merely one aspect of the recited abstract idea. And, Appellant
concludes, but has not adequately explained how, this aspect—when
considering the claim as a whole—actually provides “an improvement in
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computer-related technology.” See Bahr Memo at 2 (“An ‘improvement in
computer-related technology’ is not limited to improvements in the
operation of a computer or a computer network per se, but may also be
claimed as a set of ‘rules’ (basically mathematical relationships) that
improve computer-related technology by allowing computer performance of
a function not previously performable by a computer.”).
For these reasons, the record supports that the claimed subject matter,
as a whole, does not reflect an improvement in the functioning of a
computer, or an improvement to another technology or technical field.
2.
An additional element may integrate the judicial exception into a
practical application if it implements the judicial exception with, or uses the
judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim. 2019 Revised Guidance, 84 Fed. Reg. at 55; see
MPEP § 2106.05(b) (providing further discussion of this consideration).
Appellant argues that the “[t]he claims include a card reader or bill
acceptor/printer arrangement of a special purpose gaming machine” and that
these limitations “require hardware elements and qualify the claims (at least
for system and machine claims 7 and 13) under the ‘machine or
transformation’ test, because they include special purpose hardware for
receiving and processing currency or vouchers.” Appeal Br. 7:12–18.
According to Appellant, these “claimed hardware limitations are . . .
‘central’ to the claimed invention’s ability to receive wagers and pay
winnings, an integral purpose of providing a wagering game.” Id. at 7:21–
22.
Although the machine-or-transformation test remains a “useful and
important clue . . . for determining whether some claimed inventions are
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processes under § 101,” Bilski, 130 S. Ct. at 3227, the “machine” prong
requires the process to be “tied to a particular machine or apparatus.” Id. at
3225 (emphasis added); see also MPEP § 2106.05(b) (titled “Particular
Machine”). Here, Appellant has not shown error in the Examiner’s position
that the recited “card-reader or bill acceptor/printer” “merely provide[s] a
generic environment in which to carry out the abstract idea of rules for
playing a wagering game.” Final Act. 5 (emphasis added); Ans. 13 (same).
This position by the Examiner is supported by the Specification,
which describes this feature briefly and in general terms. See Spec. 18:1–3
(“Generally, activity at gaming machine 200 is initiated by a player inserting
currency and/or a player card into an appropriate receiving device such as a
bill acceptor for currency and card reader for the player card. Upon
insertion, a signal is sent to game processor 301.”), 23:14–16 (“In one or
more embodiments, the player menu may be programmed to display after a
player inserts a player card into the card reader. When the card is inserted,
an identification code may be read from the card and transmitted to player
account server 409.”). Moreover, the Specification identifies a
“commercially available player tracking interface unit” that “may include a
card reader [and] bill acceptor/printer,” but the claims do not require the
presence of that particular unit. Compare Spec. 12:1–9, with Appeal Br.
15:3–9 (clause a in claim 1).
Appellant argues that “the claims in Smith were directed purely to the
rules and did not contain any of the concrete machine, display, or data
processing steps as recited in the claims.” Appeal Br. 8:16–17. Appellant
has not shown error, however, in the Examiner’s position that the “player
interface,” “display system,” and “data processing system” are “generic
computer components performing generic computer functions at a high level
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of generality such as displaying, transmitting, storing, retrieving and
processing data through the program that enables the operation of managing
a wagering game.” Final Act. 4; Ans. 13–14 (“Here, the recitation of a
gaming machine, a display, or a data processing is not enough by itself to
transform the exception into a patentable invention, because these
limitations are generic computer components performing generic computer
functions at a high level of generality.”); see also Alice, 573 U.S. at 223
(“[T]he mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.”). The generic
(rather than “particular”) nature of the “player interface,” “display system,”
and “data processing system” is supported by the Specification. See Spec.
6:19–7:5, 10:15–11:11 (discussing, e.g., how “display device 100 may be a
conventional video display device . . . with a touch-sensitive user interface”),
13:19–14:10, 16:18–17:3 (discussing, e.g., how, “[i]n one or more
embodiments, the game processor operating the wagering game . . . as a
microprocessor, such as an Intel Pentium® or Core® microprocessor”).
For these reasons, the record supports that the claimed subject matter,
as a whole, does not implement the judicial exception with, or use the
judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim.
3.
An additional element has not integrated the judicial exception into a
practical application if it adds insignificant extra-solution activity to the
judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 55; see MPEP
§ 2106.05(g) (providing further discussion of this consideration). The
Examiner found that the “card reader or bill acceptor/printer” (also discussed
in the prior subsection) “appear[s] to [provide] extra-solution activity in that
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these limitations are in no way tied [to] what appears to be Applicant’s
invention.” Final Act. 5.
Appellant argues that, “under MPEP [§] 2106[,] the standard for
insignificant extra-solution activity is explicitly defined as ‘activity that is
not central to the purpose of the method invented by the Appellant.’”
Appeal Br. 7.6 According to Appellant, “[t]he claimed hardware limitations
are indeed ‘central’ to the claimed invention’s ability to receive wagers and
pay winnings, an integral purpose of providing a wagering game.” Id.
We are not persuaded of error based on this argument. Although
Appellant appears correct to the extent that the player credit information
provided by the recited “card reader or bill acceptor/printer” is necessary7,
the recited step of “receiving a player input from a card reader or bill
acceptor/printer” is merely necessary data gathering for use in the claimed
process. See, e.g., In re Grams, 888 F2d 835, 840 (Fed. Cir. 1989) (“The
presence of a physical step in the claim to derive data for the algorithm will
not render the claim statutory.”); OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1363 (Fed. Cir. 2015) (presenting offers and gathering statistics
amounted to mere data gathering); see also 2019 Revised Guidance at 55
n.31 (“For example, a mere data gathering such as a step of obtaining

6 Appellant appears to quote from the Eighth Edition, Revision 9, which
issued in August 2012.
7 For example, to increment the “credit meter” recited in clause f, the
system would need an initial value. See, e.g., Spec. 18:12–15
(“Concurrently, the bill acceptor sends a signal to game processor 301 which
may include an identification of the currency that has been read, and game
processor 301 in accordance with its coding may convert the currency
amount to credits and transmit a store and display signal to a credit meter
and its associated display (‘Credits’, in Figure 1 for example).”).
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information about credit card transactions so that the information can be
analyzed in order to detect whether the transactions were fraudulent.” (citing
MPEP § 2106.05(g))). For these reasons, when considering the claimed
subject matter as a whole, the identified aspects merely add insignificant
extra-solution activity to the judicial exception.
4.
The Guidance also discusses other considerations indicative of
whether the additional elements may have integrated the judicial exception
into a practical application—e.g., effecting a transformation, linking the use
of the judicial exception to a particular technological environment, etc. See
2019 Revised Guidance, 84 Fed. Reg. at 55. Appellant does not raise any
such considerations.
5.
In conclusion, for the reasons above, the relevant considerations show
that the additional elements—when considering claim 1 as a whole—do not
integrate the abstract idea into a practical application. See 2019 Revised
Guidance, 84 Fed. Reg. at 55 nn.25 & 27–32 (citing MPEP §§ 2106.05(a)–
(c), (e)–(h)). Thus, claim 1 is directed to the recited abstract idea.
E. Does Claim 1 Provide an Inventive Concept?
To determine whether a claim provides an inventive concept, the
additional elements are considered—individually and in combination—to
determine whether they (1) add a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional” in the field or
(2) simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 56. Also,
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we reevaluate our conclusions about the additional elements discussed in the
previous step. Id.
The Examiner found that “the addition of limitations such as ‘a player
interface of a gaming machine, a display system, a data processing
system . . . amount(s) to no more than . . . recitation of generic computer
structure that serves to perform generic computer functions that are well-
understood, routine, and conventional activities previously known to the
pertinent industry.” Final Act. 4 (emphasis omitted).
Appellant argues that
the present claims include many and significant limitations in
addition[] to the abstract idea of rules for playing a wagering
game. Specifically, the claims provide a specific process which
includes displaying a set of player selectable elements,
displaying a sequence of prize levels, and taking certain specific
actions with regard to the player selectable elements and the
sequence of prize levels in response to player selections of the
selectable elements, including displaying a description of a
respective change in position, and making a payment based on
the results thereof.
Appeal Br. 10:14–20. According to Appellant, “[t]hese limitations are more
than simply linking the wagering game to a particular technological
environment, they are limitations that go to the novelty of the invention as
discussed below with regard to the Section 102 rejections.” Id. at 10:20–22.
Even assuming that the claims at issue recite novel and nonobvious
subject matter (under sections 102 and 103), that does not show that the
claims are directed to patent-eligible subject matter (under section 101). See
SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (“We
may assume that the techniques claimed are [g]roundbreaking, innovative, or
even brilliant, but that is not enough for eligibility. Nor is it enough for
subject-matter eligibility that claimed techniques be novel and nonobvious in
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light of prior art, passing muster under 35 U.S.C. §§ 102 and 103.” (citations
and quotations omitted)). Rather, to determine whether claim 1 provides an
inventive concept, we consider the additional elements, individually and in
combination, to determine whether they (1) add a specific limitation beyond
the judicial exception that is not “well-understood, routine, conventional”
activity in the field or (2) simply append well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. 2019 Revised Guidance, 84
Fed. Reg. at. 56.
Here, as noted by the Examiner, the limitations highlighted by
Appellant merely provide further detail as to the abstract idea identified
above. See Ans. 16 (stating that a “specific abstract idea is still an abstract
idea” and that the “Examiner finds that despite being specific, the claims are
still drawn to an abstract idea”); see also Reply Br. 4 (“The selectable
element tied to a change in position in the sequence of prize levels is not a
conventional, well understood, or routine technique in the gaming
industry.”). Moreover, the Specification supports that the additional
elements are well-understood, routine, and conventional. See. e.g., Spec.
10:15–11:11 (discussing, e.g., how “display device 100 may be a
conventional video display device . . . with a touch-sensitive user interface”),
12:1–9 (identifying a “commercially available player tracking interface unit”
that “may include a card reader [and] bill acceptor/printer”), 16:18–17:3
(discussing, e.g., how, “[i]n one or more embodiments, the game processor
operating the wagering game . . . as a microprocessor, such as an Intel
Pentium® or Core® microprocessor”). Because these elements add nothing
more than well-understood, routine, conventional activities, when
reevaluating our conclusions about whether these elements integrate the
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judicial exception into a practical application (see supra Rejection 1 § D),
our prior conclusions stand.
Appellant contends that the Examiner erroneously “identifies certain
claim limitations as game rules and then leaves those limitations out of the
Step 2B analysis.” Reply Br. 3:1–3. According to Appellant, “[a] proper
analysis recognizes the limitations involving computer-performed steps that
include displaying, receiving player inputs, and the like” and, “[a]s such,
these steps should be part of the ‘inventive concept’ analysis of Step 2B.”
Id. at 3:3–5 (emphasis added). As discussed above, however, the Examiner
expressly addressed the identified aspects of claim 1 in the Step 2B analysis,
determining that they did not lead to subject matter eligibility. See Final
Act. 4–5; Ans. 13–14. For the reasons above, the record supports the
Examiner’s determination on those issues.
As to the combination, the Examiner stated: “Looking at the
limitations as an ordered combination adds nothing that is not already
present when looking at the elements taken individually.” Final Act. 4–5.
Appellant does not identify any inventive concept in the recited combination
of steps here or any specific arrangement of the recited hardware. And the
record does not reflect any such inventive concept not raised by Appellant.
When considered as a whole, claim 1 is directed to an abstract idea
performed on systems used in their ordinary capacity, performing well-
understood, routine, and conventional activities. Thus, the limitations of
claim 1, considered individually and in combination, do not provide an
inventive concept. See 2019 Revised Guidance, 84 Fed. Reg. at. 56.
F. Other Arguments
Appellant argues that “the issue of preemption is indeed a core to the
analysis, and the claims here do not preempt even the abstract rules of the
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technically implemented game employed in the claims.” Appeal Br. 9:18–
19. According to Appellant, “[b]ecause the claims specify how and where
the various steps or functions are performed and do not simply require that
the various steps or functions are performed generically, Appellant
maintains that the claims are not directed to any abstract idea, and are
directed to patent eligible subject matter under the case law.” Id. at 9:20–23.
The Supreme Court has stated that “patents that . . . integrate the
building blocks [of human ingenuity] into something more, []thereby
transform[ing] them into a patent-eligible invention . . . pose no comparable
risk of pre-emption, and therefore remain eligible for the monopoly granted
under our patent laws.” Alice, 573 U.S. 217 (citations and quotations
omitted). Although preemption “might tend to impede innovation more than
it would tend to promote it, ‘thereby thwarting the primary object of the
patent laws”’ (id. at 216 (citing Mayo, 132 S. Ct. at 1293)), “the absence of
complete preemption does not demonstrate patent eligibility.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63
(Fed. Cir. 2015) (“[T]hat the claims do not preempt all price optimization or
may be limited to price optimization in the e-commerce setting do not make
them any less abstract.”); Reply Br. 4 (arguing that “the cited
pronouncement in Ari[os]a Diagnostics cannot be read consistently with
Alice Corp. as carte blanche for simply ignoring the preemptive effect of the
given claim in the analysis under Section 101”). Thus, that the claims here
may “specify how and where the various steps or functions are performed
and do not simply require that the various steps or functions are performed
generically” (Appeal Br. 9:20–22)—i.e., possess a certain level of
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specificity—does not demonstrate that the claims are directed to patent-
eligible subject matter.
G. Conclusion
On the record here, Appellant has not persuaded us of error in the
rejection of representative claim 1 under 35 U.S.C. § 101. Thus, we sustain
the rejection of claims 1–18, which are argued as a group. See supra note 5.
Rejection 2 – The rejection of claims
1, 7, and 13 under 35 U.S.C. § 102(e)
Each of independent claims 1, 7, and 13 recites a display system to
display a “sequence of prize levels” and recites, after “a designation of one
of the sequence of prize levels,” paying a player “an amount corresponding
to the designated prize level.” Appeal Br. 15:10–12, 15:23, 16:1–2, 17:14–
15, 18:1–4, 19:19–20, 20:6–9.
As the “sequence of prize levels,” the Examiner identified levels 409,
414–418, and 420 shown in the pyramid in, for example, Figure 4D of
Causley. See Final Act. 7 (addressing the independent claims together,
stating, for clause b of claim 1, “Fig 4C-4E, ¶0047; the bonus game has
seven levels where the top level is the jackpot award level”). As to the
“amount corresponding to [a] designated prize level,” the Examiner
highlighted Causley’s teaching: “If an award is selected at a specific level,
credits are accumulated and added to the total number of credits won to that
point in the bonus game. The total credits won are displayed on the gaming
machine monitor.” Causley ¶ 47, cited at Final Act. 14; see also Final Act.
8 (citing, for clause f in claim 1, Causley Figs. 4A–4E, ¶¶ 37, 47).
Appellant argues “that the Causley pyramid layers do not directly
correspond to prize levels, which are claimed to be awarded if the level is
reached at [clause] (f) of present claim 1, for example.” Appeal Br. 11:8–10.
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According to Appellant, Causley “does not designate ‘one of the sequence of
prize levels’ which then has a corresponding prize awarded of ‘an amount
corresponding to the designated prize level’ as claimed” because, instead,
“Caus[le]y teaches a game in which a level is achieved and within that level
prizes may be uncovered by player selection.” Id. at 11:17–20.
The Examiner responds that “each level of Causley[’s] bonus game
provides its own prizes that can be won by the player (i.e. a sequence of
prizes level), wherein the award associated with each tile and accumulated
by the player during each level’s game play is considered as an amount
corresponding to the prize levels.” Ans. 17.
With this position, the Examiner does not adequately address the term
“designated” in clause f or the requirement in clause e that the “change in
position result[] in a designation of one of the sequence of prize levels.” We
agree with Appellant that, when considering each of the independent claims
as a whole, the “prize level” in, for example, clause e of claim 1 is a “single,
designated [prize] level (‘the change in position resulting in a designation of
one of the sequence of prize levels’) and this level in [clause f] corresponds
to a prize amount.” Appeal Br. 11:15–17. Stated differently, each “prize
level” in the “sequence of prize levels” has only a single “corresponding”
prize “amount.” This understanding aligns with the Specification, which
consistently refers to illuminating a floor level (i.e., “prize level”) and its
“associated award” amount. See, e.g., Spec. 8:10–13 (discussing how Figure
1J shows “the third floor level . . . illuminated together with the associated
award” of 5,000 points (emphasis added)), 9:8–11 (similar for Figure 1K
and the sixth floor level), 9:18–21 (similar for Figure 1L and the eighth floor
level). In contrast, in Causley (as argued by Appellant), each level of the
pyramid includes several different possible prize amounts. See, e.g.,
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Causley Fig. 4D (showing multiple possible amounts and one selected
amount for level one); Appeal Br. 11:10–11 (arguing that Causley “makes
many prizes available at each pyramid layer reached”).
For these reasons, we do not sustain the rejection of independent
claims 1, 7, and 13.
Rejections 3–5 – The rejection of claims 3, 4, 6,
9, 10, 12, 15, 16, and 18 under 35 U.S.C. § 103(a)
Claims 3, 4, and 6 depend from claim 1; claims 9, 10, and 12 depend
from claim 7; and claims 15, 16, and 18 depend from claim 13. Appeal Br.
15–21 (Claims App.). The Examiner’s added reliance on Gomez and
Baerlocher (regarding Rejection 3), Cuddy (regarding Rejection 4), and
Noda (regarding Rejection 5) does not remedy the deficiencies in the
rejection based on Causley, discussed above (see supra Rejection 2). Thus,
for the same reasons discussed above, we do not sustain the rejection of
claims 3, 4, 6, 9, 10, 12, 15, 16, and 18 under 35 U.S.C. § 103(a).

CONCLUSION
We affirm the Examiner’s rejection of claims 1–18. More
specifically, we (1) affirm the decision to reject claims 1–18 under 35 U.S.C.
§ 101, (2) reverse the decision to reject claims 1, 7, and 13 under 35 U.S.C.
§ 102(e), and (3) reverse the decision to reject claims 3, 4, 6, 9, 10, 12, 15,
16, and 18 under 35 U.S.C. § 103(a).

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–18 101 Eligibility 1–18
1, 7, 13 102(e) Causley 1, 7, 13
3, 9, 15 103(a) Causley, Gomez,
Baerlocher
3, 9, 15
4, 10, 16 103(a) Causley, Cuddy 4, 10, 16
6, 12, 18 103(a) Causley, Noda 6, 12, 18
Overall
Outcome
1–18

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