Amaitis, Lee et al.Download PDFPatent Trials and Appeals BoardNov 16, 20202019003866 (P.T.A.B. Nov. 16, 2020) Copy Citation 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. 12/687,980 01/15/2010 Lee Amaitis 09-2326 2631 63710 7590 11/16/2020 INNOVATION DIVISION CANTOR FITZGERALD, L.P. 110 EAST 59TH STREET (6TH FLOOR) NEW YORK, NY 10022 EXAMINER VAN BRAMER, JOHN W ART UNIT PAPER NUMBER 3621 NOTIFICATION DATE DELIVERY MODE 11/16/2020 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 mcatarino@cgolaw.com patentdocketing@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 2019-003866 Application 12/687,980 Technology Center 3600 ____________ Before ANTON W. FETTING, PHILIP J. HOFFMANN, and KENNETH G. SCHOPFER, Administrative Patent Judges. FETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Lee Amaitis and Andrew Garrood (Appellant2) seeks review under 35 U.S.C. § 134 of a final rejection of claims 1–27, the only claims pending 1 Our decision will make reference to the Appellant’s Appeal Brief (“Appeal Br.,” filed October 1, 2018) and Reply Brief (“Reply Br.,” filed April 22, 2019), and the Examiner’s Answer (“Ans.,” mailed February 25, 2019), and Final Office Action (“Final Act.,” mailed April 23, 2018). 2 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, L.P. (Appeal Br. 3). Appeal 2019-003866 Application 12/687,980 2 in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). The Appellant invented a way of playing a game. Spec. 19 (Section XIV, first paragraph). An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below (bracketed matter and some paragraphing added). 1. An apparatus comprising: a processor; and a non-transitory machine-readable medium having stored thereon a set of instructions, which when executed by the processor, cause the apparatus to: [1] identify a wager that may be placed at a first wagering venue; [2] receive a plurality of respective indications, in which each respective indication indicates a respective odds for the wager at a respective one of a plurality of second wagering venues; [3] for each of the second wagering venues, determine a respective effect on a market in which the first wagering venue competes; [4] determine a consensus odds based on the respective odds for the wager at each of the second wagering venues such that each of the respective odds has an impact on the consensus odds that is proportional to the respective Appeal 2019-003866 Application 12/687,980 3 effect of the respective one of the second wagering venues on the market; and [5] transmit an indication of the consensus odds to the first wagering venue. The Examiner relies upon the following prior art: Name Reference Date Cannella US 2004/0229675 A1 Nov. 18, 2004 Asher US 2005/0003888 A1 Jan. 6, 2005 Claims 1–27 stand rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Claims 1–27 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Asher and Cannella. ISSUES The issues of eligible subject matter turn primarily on whether the claims recite more than abstract conceptual advice of results desired. The issues of obviousness turn primarily on whether the prior art describes the claim limitations. FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. Facts Related to the Prior Art Asher 01. Asher is directed to betting on events and, more particularly, to generating customized odds bets for an event. Asher, para. 2. 02. Asher describes identifying a field of participants for an event, each participant associated with particular odds to finish in a Appeal 2019-003866 Application 12/687,980 4 particular position in the event. Asher further describes identifying customized odds for a bet, and identifying a lead participant from the field of participants, selecting one or more additional participants from the field of participants such that the odds associated with the lead participant combined with the odds associated with the one or more selected additional participants at least approximates the customized odds for the bet, and establishing the bet on a group of participants. Asher, para. 5. Cannella 03. Cannella is directed to betting methods, and more particularly, to para-mutual betting methods based on the outcomes of multiple events. Cannella, para. 2. 04. Cannella describes wagering on a plurality of outcomes where the outcomes are based on a series of events where each event includes a result having a number of items in a finishing order. This includes selecting picks to predict the finishing order for at least one of a series of events, comparing the picks to each item in each event to determine an accuracy of the picks, and determining a prize based upon a number of correct picks. Cannella, para. 7–8. ANALYSIS Claims 1–27 rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more All of the claims are nominal apparatus claims. The only structure recited in each independent claim, however, is the combination of a conventional generic processor with software on media. The remainder, which is the substance, of each independent claim recites process steps Appeal 2019-003866 Application 12/687,980 5 performed as per the software instructions. All dependent claims only recite further process steps and no further structure. Accordingly, all claims are method claims in substance, and we refer to them as such below. STEP 13 Claim 1, as a method claim, nominally recites one of the enumerated categories of eligible subject matter in 35 U.S.C. § 101. The issue before us is whether it is directed to a judicial exception without significantly more. STEP 2 The Supreme Court set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, . . . determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, “[w]hat else is there in the claims before us? To answer that question, . . . consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent- eligible application. [The Court] described step two of this analysis as a search for an “‘inventive concept’”—i.e., an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citations omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66 (2012)). To perform this test, we must first determine what the claims are directed to. This begins by determining whether the claims recite 3 For continuity of analysis, we adopt the steps nomenclature from 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Appeal 2019-003866 Application 12/687,980 6 one of the judicial exceptions (a law of nature, a natural phenomenon, or an abstract idea). Then, if the claims recite a judicial exception, we must determine whether the claims at issue are directed to the recited judicial exception, or whether the recited judicial exception is integrated into a practical application of that exception, i.e., that the claims “apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Revised Guidance, 84 Fed. Reg. at 54. If the claims are directed to a judicial exception, then finally we must determine whether the claims provide an inventive concept because the additional elements recited in the claims provide significantly more than the recited judicial exception. STEP 2A Prong 1 At a high level, and for our preliminary analysis, we note that method claim 1 recites identifying wager data, receiving indication data, determining some effect and odds data, and transmitting odds data. Identifying data is receiving and analyzing data. Determining effect and odds are mathematical data analysis. Thus, claim 1 recites receiving, analyzing, and transmitting data. None of the limitations recites technological implementation details for any of these steps, but instead recite only results desired by any and all possible means. From this we see that claim 1 does not recite the judicial exceptions of either natural phenomena or laws of nature. Under Supreme Court precedent, claims directed purely to an abstract idea are patent ineligible. As set forth in the Revised Guidance, which extracts and synthesizes key concepts identified by the courts, abstract ideas Appeal 2019-003866 Application 12/687,980 7 include (1) mathematical concepts,4 (2) certain methods of organizing human activity,5 and (3) mental processes6. Among those certain methods of organizing human activity listed in the Revised Guidance are managing personal behavior or relationships or interactions between people. Like those concepts, claim 1 recites the concept of managing game play odds among participants. Specifically, claim 1 recites operations that would ordinarily take place in advising one to base one party’s game playing odds on other parties’ odds. The advice to base one party’s game playing odds on other parties’ odds involves sending such other odds to the first party’s location, which is a social game play act, and determining odds, which is an act ordinarily performed in the stream of social betting play. For example, claim 1 recites “transmit[ting] an indication of the consensus odds to the first wagering venue,” which is an activity that would take place whenever one is computing odds for social betting. Similarly, claim 1 recites “determine a consensus odds,” which is also characteristic of social betting play. The Examiner determines the claims to be directed to managing risk in a wagering system. Final Act. 2. The preamble to claim 1 does not recite 4 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v. Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018). 5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir. 2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed. Cir. 2018). 6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016). Appeal 2019-003866 Application 12/687,980 8 what it is to achieve, but the steps in claim 1 result in managing game play odds among participants by basing one party’s game playing odds on other parties’ odds absent any technological mechanism other than a conventional computer for doing so. As to the specific limitations, limitation 2 recites receiving data. Limitations 1 and 3–5 recite generic and conventional receiving, analyzing, and transmitting of game play data, which advise one to apply generic functions to get to these results. The limitations thus recite advice for basing one party’s game playing odds on other parties’ odds. To advocate basing one party’s game playing odds on other parties’ odds is conceptual advice for results desired and not technological operations. The Specification, at page 19, Section XIV, describes the invention as relating to playing a game. Thus, all this intrinsic evidence shows that claim 1 recites managing game play odds among participants. This is consistent with the Examiner’s determination. This in turn is an example of managing personal behavior or relationships or interactions between people as a certain method of organizing human activity because managing game play is a way of managing personal game playing behavior. The concept of managing game play odds among participants by basing one party’s game playing odds on other parties’ odds is one idea for managing the coordination of participants. The steps recited in claim 1 are part of how this might conceptually be premised. Our reviewing court has found claims to be directed to abstract ideas when they recited similar subject matter. In re Smith, 815 F.3d 816 (Fed. Cir. 2016) (rules for conducting wagering game). Appeal 2019-003866 Application 12/687,980 9 Alternately, this is an example of concepts performed in the human mind as mental processes because the steps of receiving, analyzing, and transmitting data mimic human thought processes of observation, evaluation, judgment, and opinion, perhaps with paper and pencil, where the data interpretation is perceptible only in the human mind. See In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016). Claim 1, unlike the claims found non-abstract in prior cases, uses generic computer technology to perform data reception, analysis, and transmission and does not recite an improvement to a particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314–15 (Fed. Cir. 2016) (finding claims not abstract because they “focused on a specific asserted improvement in computer animation”). As such, claim 1 recites receiving, analyzing, and transmitting data, and not a technological implementation or application of that idea. From this we conclude that at least to this degree, claim 1 recites managing game play odds among participants by basing one party’s game playing odds on other parties’ odds, which is managing personal behavior or relationships or interactions between people, one of certain methods of organizing human activity identified in the Revised Guidance, and, thus, an abstract idea. STEP 2A Prong 2 The next issue is whether claim 1 not only recites, but is more precisely directed to this concept itself or whether it is instead directed to Appeal 2019-003866 Application 12/687,980 10 some technological implementation or application of, or improvement to, this concept, i.e., integrated into a practical application.7 At the same time, we tread carefully in construing this exclusionary principle lest it swallow all of patent law. At some level, “all inventions ... embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept. “[A]pplication[s]” of such concepts “ ‘to a new and useful end,’ ” we have said, remain eligible for patent protection. Accordingly, in applying the § 101 exception, we must distinguish between patents that claim the “ ‘buildin[g] block[s]’ ” of human ingenuity and those that integrate the building blocks into something more. Alice, 573 U.S. at 217 (citations omitted). Taking the claim elements separately, the operation performed by the computer at each step of the process is expressed purely in terms of results, devoid of implementation details. Step 2 is a pure data gathering step. Limitations describing the nature of the data do not alter this. Step 5 is insignificant post solution activity, such as storing, transmitting, or displaying the results. Steps 1, 3, and 4 recite generic computer processing expressed in terms of results desired by any and all possible means and so present no more than conceptual advice. All purported inventive aspects reside in how the data is interpreted and the results desired, and not in how the process physically enforces such a data interpretation or in how the processing technologically achieves those results. Viewed as a whole, Appellant’s claim 1 simply recites the concept of managing game play odds among participants by basing one party’s game 7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S. 175 (1981). Appeal 2019-003866 Application 12/687,980 11 playing odds on other parties’ odds as performed by a generic computer. This is no more than conceptual advice on the parameters for this concept and the generic computer processes necessary to process those parameters, and do not recite any particular implementation. Claim 1 does not, for example, purport to improve the functioning of the computer itself. Nor does it effect an improvement in any other technology or technical field. The Specification only spells out different generic equipment8 and parameters that might be applied using this concept and the particular steps such conventional processing would entail based on the concept of managing game play odds among participants by basing one party’s game playing odds on other parties’ odds under different scenarios. It does not describe any particular improvement in the manner a computer functions. Instead, claim 1 at issue amounts to nothing significantly more than an instruction to apply managing game play odds among participants by basing one party’s game playing odds on other parties’ odds using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26. None of the limitations reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field, applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, implements a judicial 8 The Specification describes microprocessors, central processing units (CPUs), computing devices, microcontrollers, digital signal processors, or like devices or any combination thereof, regardless of the architecture. Specification 10:V. Computing, second paragraph. Appeal 2019-003866 Application 12/687,980 12 exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, effects a transformation or reduction of a particular article to a different state or thing, or applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. We conclude that claim 1 is directed to achieving the result of managing game play odds among participants by advising one to base one party’s game playing odds on other parties’ odds, as distinguished from a technological improvement for achieving or applying that result. This amounts to managing personal behavior or relationships or interactions between people, which fall within certain methods of organizing human activity that constitute abstract ideas. The claim does not integrate the judicial exception into a practical application. STEP 2B The next issue is whether claim 1 provides an inventive concept because the additional elements recited in the claim provide significantly more than the recited judicial exception. The introduction of a computer into the claims does not generally alter the analysis at Mayo step two. the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea “while adding the words ‘apply it’” is not enough for patent eligibility. Nor is limiting the use of an abstract idea “‘to a particular technological environment.’” Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent’s recitation of a computer Appeal 2019-003866 Application 12/687,980 13 amounts to a mere instruction to “implement[t]” an abstract idea “on . . . a computer,” that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional feature[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice, 573 U.S. at 223–24 (citations omitted). “[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. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a computer for receiving, analyzing, and transmitting data amounts to electronic data query and retrieval—one of the most basic functions of a computer. All of these computer functions are generic, routine, conventional computer activities that are performed only for their conventional uses. See Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). See also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming”). None of these activities is used in some unconventional manner nor does any produce some unexpected result. Appellant does not contend it invented any of these activities. In short, each step does no more than require a generic computer to perform generic computer functions. As to the data operated upon, “even if a process of collecting and analyzing information is ‘limited to particular Appeal 2019-003866 Application 12/687,980 14 content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” SAP America, Inc. v. InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). Considered as an ordered combination, the computer components of Appellant’s claim 1 add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis- transmission is equally generic and conventional. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis, modification, generation, display, and transmission), Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and monitoring). The ordering of the steps is therefore ordinary and conventional. We conclude that claim 1 does not provide an inventive concept because the additional elements recited in the claim do not provide significantly more than the recited judicial exception. REMAINING CLAIMS Claim 1 is representative. The other independent claims are substantially similar at least as regards to this analysis. The remaining claims merely describe process parameters. We conclude that the claims at issue are directed to a patent-ineligible concept itself, and not to the practical application of that concept. As to the recitation of these claims as structural claims, they Appeal 2019-003866 Application 12/687,980 15 are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea. This Court has long “warn[ed] ... against” interpreting § 101“in ways that make patent eligibility ‘depend simply on the draftsman’s art.’” Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any particular machine. LEGAL CONCLUSION From these determinations we further determine that the claims do not recite an improvement to the functioning of the computer itself or to any other technology or technical field, a particular machine, a particular transformation, or other meaningful limitations. From this we conclude the claims are directed to the judicial exception of the abstract idea of certain methods of organizing human activity as exemplified by managing personal behavior or relationships or interactions between people by managing game play odds among participants by advising one to base one party’s game playing odds on other parties’ odds, without significantly more. APPELLANT’S ARGUMENTS We are not persuaded by Appellant’s argument that The rejection cites a series of decisions that are different from the facts of the instant case: Bilski, Electric Power Group, Grams, and Perkin-Elmer. The concepts claimed in these decisions: Hedging (Bilski); collecting information, analyzing it, and displaying certain results of the collection (Electric Power Group); and diagnosing an abnormal condition by performing clinical tests and thinking about the results (Grams); are not reasonably tied to determining consensus odds among wagering venues. Appeal 2019-003866 Application 12/687,980 16 Appeal Br. 8. The analysis, supra, shows how various pertinent cases apply to the instant claims. We are not persuaded by Appellant’s argument that “the instant claims do recite a ‘set of rules...that improve computer-related technology by allowing the computer to perform a function not previously performable by a computer.’ An improvement to the operation of the computer per se is not required.” Appeal Br. 9 (emphasis omitted). As we determine, supra, the functions performed are those of receiving, analyzing, and transmitting data. All of these are both conventional and generic. No technological implementation details are recited. The overall function of managing game play odds among participants by advising one to base one party’s game playing odds on other parties’ odds is not a computer function, but a conceptual idea. At that level of generality, the claims do no more than describe a desired function or outcome, without providing any limiting detail that confines the claim to a particular solution to an identified problem. The purely functional nature of the claim confirms that it is directed to an abstract idea, not to a concrete embodiment of that idea. Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016). Appellant cites Berkheimer for the proposition that evidence of something being conventional is necessary. Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018). Appeal Br. 10. Such evidentiary support is provided under Step 2B, supra. Appeal 2019-003866 Application 12/687,980 17 Claims 1–27 rejected under 35 U.S.C. § 103(a) as unpatentable over Asher and Cannella We are persuaded by Appellant’s argument that neither reference describes the claim limitations regarding a second venue because neither reference describes a second venue. Appeal Br, 12, CONCLUSIONS OF LAW The rejection of claims 1–27 under 35 U.S.C. § 101 as directed to a judicial exception without significantly more is proper. The rejection of claims 1–27 under 35 U.S.C. § 103(a) as unpatentable over Asher and Cannella is improper. CONCLUSION The rejection of claims 1–27 is affirmed. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–27 101 Eligibility 1–27 1–27 103 Asher, Cannella 1–27 Overall Outcome 1–27 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) (2011). AFFIRMED Copy with citationCopy as parenthetical citation