Bradley Berman et al.

Patent Trials and Appeals Board

Jan 24, 2020

11301242 - (D) (P.T.A.B. Jan. 24, 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.
11/301,242 12/12/2005 Bradley Berman SKLY.009.PAT1 6981
111790 7590 01/24/2020
Sklansky Games, LLC
10275 Wayzata Blvd.
Suite 300
Minnetonka, MN 55305
EXAMINER
MOSSER, ROBERT E
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
01/24/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ip@ksg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRADLEY BERMAN and JACOB LAMB
Appeal 2018-005887
Application 11/301,242
Technology Center 3700
Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claim 70. See Final Act. 3. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Sklansky Games,
LLC, the assignee of the above referenced patent application. Br. 2.
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BACKGROUND
Appellant’s invention relates to an apparatus for facilitating play in
gaming activities and providing manipulation of payout awards based on
partial game criteria. Sole claim 70 is reproduced below:
70. A gaming device comprising:
a display configured to display a plurality of card
positions;
a wager input device structured to receive physical items
associated with currency values;
a memory configured to store a credit amount; and
a processor operable to:
receive a signal from the wager input device
indicating that a physical item associated with a currency value
has been received;
increase the credit amount stored in the memory
based on the currency value of the received physical item;
receive a signal to initiate a gaming activity in
response to placement of a wager, the wager decreasing the credit
amount stored in the memory;
randomly designate one or more card positions in
the plurality of card positions displayed on the display, wherein
the one or more card positions are randomly designated prior to
presenting cards face-up in the card positions on the display;
present an initial draw poker hand on the display by
dealing cards face-up to each of the plurality of card positions;
identify a partial hand as one or more cards of the
initial draw poker hand that are respectively presented on the
display in the designated one or more card positions;
award a bonus value when the partial hand meets a
predefined condition, wherein the bonus value is awarded prior
to completion of a final draw poker hand;
complete the final draw poker hand by replacing
zero or more cards discarded from the initial draw poker hand;
determine whether a poker hand payout is awarded
based on the final draw poker hand; and
modify the poker hand payout when the partial hand
satisfied the predefined condition.
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REJECTION2
Claim 70 stands rejected under 35 U.S.C. § 101 as directed to non–
statutory subject matter because the claim as a whole, considering all claim
elements both individually and in combination, does not amount to
significantly more than an abstract idea. Final Act. 3.
OPINION
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice, 573 U.S. at 217. The
first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements

2 A rejection of claims 1, 4–11, 14, 20, 22, and 24–36 under 35 U.S.C. § 101
as being directed to non-statutory subject matter, and a rejection of claims 1,
4–11, 14, 20, 22, and 24–36 under 35 U.S.C. § 103(a) as unpatentable over
Sanduski (US 6,149,521, iss. Nov. 21, 2000) and Feola (US 6,793,220 B1,
iss. Sept. 21, 2004) are withdrawn in the Answer. Ans. 6–7.
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of the claims are considered “individually and ‘as an ordered combination’
to determine whether there are additional elements [that] ‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78).
The Examiner determined that the claims, considering all elements
both individually and in combination, do not amount to significantly more
than the abstract idea of “determining gaming payouts using partial game
criteria.” Final Act. 5. The Examiner further determined that any additional
elements, or combination(s) thereof, amount to no more than a “recitation of
generic computer structure” (e.g., a display, a wager input mechanism, and a
processor) performing “generic computer functions that are well-understood,
routine, and conventional activities previously known to the pertinent
industry,” and thus, fail to “provide meaningful limitation(s) to transform the
abstract idea into a patent eligible application of the abstract idea.” Id. at 6.
Appellant argues that claim 70 is not directed to an abstract idea, and
“is directed to a specific type of gaming device that is operable to play a
novel game using a unique combination of processes to provide
entertainment and excitement not found on any other known gaming
device.” Br. 8. In support of this assertion, Appellant notes that the
Examiner did not formulate a prior art rejection against claim 70. Id.
Appellant contends, moreover, that claim 70 “is not simply the generalized
use of a computer as a tool to conduct a known or obvious process, but
instead is an improvement to the capability of the system as a whole.” Br. 9;
see Enfish LLC v. Microsoft Corp., 822 F. 3d 1327, 1336 (Fed. Cir. 2016).
Appellant argues also that claim 70 is distinguishable from the claims found
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ineligible in prior gaming cases because it is “directed to a particular gaming
device having novel, non-obvious elements.” Id.
Appellant further argues that “claim 70 recites specific elements
directed to a special purpose gaming device, rather than simply
implementing an abstract idea on a generic computer.” Id. at 10.
Specifically, Appellant contends:
claim 70 recites the gaming device having a wager input device
structured to receive physical items associated with currency
values, and a processor operable to receive a signal from the
wager input device indicating that a physical item associated
with a currency value has been received, increase the credit
amount stored in the memory based on the currency value of the
received physical item, and receive a signal to initiate a gaming
activity in response to placement of a wager, the wager
decreasing the credit amount stored in the memory.
Id. Appellant concludes that, similar to the Federal Circuit’s finding in
Bascom, “the new novel claim elements of claim 70 provide a new gaming
device that is different and a potential improvement over conventional
gaming devices.” Id. (citing Bascom Global Internet Services Inc. v. AT& T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)).
The Examiner responds that claim 70 uses “generic computer
structure that serves to perform generic computer functions that are well-
understood, routine, and conventional activities previously known to the
pertinent industry.” Ans. 9. The Examiner notes that whereas Enfish
describes “a specific improvement to the way computers operate,” claim 70
is based “on an improved algorithm and rules for determining a game state
for which a computer is utilized in its ordinary capacity.” Ans. 12. The
Examiner states that, in contrast to Bascom in which “a non-conventional
and non-generic arrangement of the additional elements” was found patent
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eligible, Appellant does “not identify how the claim when considered as an
ordered combination provides significantly more than a conventional or
generic arrangement of known hardware.” Ans. 15–16.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (“2019 Guidance Memorandum”). We
have reviewed the eligibility of the pending claims through the lens of the
2019 Guidance Memorandum, but we are not persuaded the Examiner erred
in concluding that the pending claims are directed to a judicial exception
without significantly more.
Under that guidance, in conducting step one of the Alice framework,
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
interactions 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)).

Step 1 -- Statutory Category
Claim 70 recites a gaming device, and, therefore, is a machine. See
Br. 12 (Claims App.).

Step 2A, Prong 1
The 2019 Guidance Memorandum identifies three key concepts
identified as abstract ideas: (a) mathematical concepts including
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“mathematical relationships, mathematical formulas or equations,
mathematical calculations”; (b) certain methods of organizing human
activity, such as “fundamental economic principles or practices,”
“commercial or legal interactions,” and “managing personal behavior or
relationships or interactions between”; and (c) mental processes including
“observation, evaluation, judgment, [and] opinion.”
Here, claim 70 is directed to a gaming device that introduces
“anticipation and excitement for players participating in gaming activities at
earlier stages in the card hand or other gaming activity.” Spec. 2:19–21.
Claim 70 recites, inter alia, a processor operable to “receive a signal
to initiate a gaming activity in response to placement of a wager,” “randomly
designate one or more card positions in the plurality of card positions
displayed on the display,” “present an initial draw poker hand on the display
by dealing cards face-up to each of the plurality of card positions,” and
“determine whether a poker hand payout is awarded based on the final draw
poker hand.” Thus, claim 70 recites rules for playing a wagering game.
Following rules or instructions, and, specifically, providing rules of a
game such as the one recited in claim 70, amounts to managing personal
behavior or relationships or interactions between people (including social
activities, teaching, and following rules or instructions), which is one of
certain methods of organizing human activity. See 2019 Guidance
Memorandum; In re Smith, 815 F.3d 816, 818 (Fed. Cir. 2016). Such
methods of organizing human activity are abstract ideas. See Smith, 815
F.3d at 818. Thus, claim 70 recites an abstract idea, one of the judicial
exceptions. See Alice, 573 U.S. at 216. Accordingly, the outcome of our
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analysis under Step 2A, Prong 1, requires us to proceed to Step 2A, Prong 2.
See 2019 Guidance Memorandum.

Step 2A, Prong 2
We next consider whether the claimed gaming device includes
additional elements that integrate the judicial exception into a practical
application. The Examiner finds that the claimed display, wager input
device, memory, and processor perform “generic computer functions that are
well-understood, routine, and conventional activities previously known to
the pertinent industry,” failing “to transform the abstract idea into a patent
eligible application of the abstract idea.” Final Act. 6.
We agree with the Examiner that the display, wager input device,
memory, and processor are each recited in a generic manner. We find no
indication in Appellant’s Specification, nor does Appellant direct us to any
indication, that the claimed invention is implemented using other than
generic devices. As the Examiner correctly notes, the Specification lists
various known displays (Spec. 33:29–30; 36:19–20) that generically display
a plurality of card positions; mechanisms to enter wages that “are known in
the art” (Spec. 33:17–22) and which perform the known function of
receiving physical items associated with currency values; and generic
memory and processors (Spec. 35:21–27). The operations (receive a signal,
randomly designate one or more card positions, present an initial draw poker
hand, and determine whether a poker hand payout is awarded) performed by
the processor are merely generic computer functions of receiving data,
comparing the received data, and presenting the data. Thus, the claimed
invention does not improve the functioning of the computer (processor) or
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the display, wager input device, or memory and does not use a particular, or
special, machine. In other words, the claims “are not tied to any particular
novel machine or apparatus” capable of rescuing them from the realm of
abstraction. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed.
Cir. 2014).
In summary, we do not find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention, or otherwise indicates that the
claimed invention integrates the abstract idea into a “practical application,”
as that phrase is used in the USPTO’s “2019 Revised Patent Subject Matter
Eligibility Guidance,” 84 Fed. Reg. 50, 55 (January 7, 2019).

Step 2B
In Step 2B, we determine whether the claim adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field. See 2019 Guidance Memorandum. The portions
of claim 70 Appellant asserts are directed to a particular gaming device
having novel, non-obvious elements, (wager input device and processor –
see Br. 10) are generic devices that do not perform other than well-known,
routine, and conventional activity, as discussed above.
Appellant argues that claim 70 does not preempt all methods of
playing games. See Br. 10. However, as our reviewing court has explained,
“the principle of preemption is the basis for the judicial exceptions to
patentability” and “[f]or this reason, questions on preemption are inherent in
and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 573 U.S. at 216).
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Although “preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.” Id.
Moreover, “[w]here a patent’s claims are deemed only to disclose patent
ineligible subject matter under the [Alice/Mayo] framework . . ., preemption
concerns are fully addressed and made moot.” Id.; 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.”) cert. denied, 136 S. Ct. 701 (2015).
Although claim 70 specifically limits, in various ways, the recited
display of cards, and, therefore, would seem to exclude numerous other card
games, we do not agree that claim 70 recites anything significantly more
than the abstract ideas discussed above in Step 2A. In particular, the various
actions recited in claim 70 that differentiate the recited method from other
card games relate to the abstract idea, not to an innovation of the kind that
benefits the claimed subject matter under a Step 2B analysis. Thus, the
Examiner’s lack of a prior art rejection does not make claim 70 any less
abstract. A novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90–91.
Appellant’s attempt to analogize claim 70 to the claims in Enfish is
unavailing. Br. 9. In Enfish, the court found that “the self-referential table
recited in the claims on appeal is a specific type of data structure designed to
improve the way a computer stores and retrieves data in memory.” Enfish,
822 F.3d at 1339. The court found they were “not faced with a situation
where general-purpose computer components are added post-hoc to a
fundamental economic practice or mathematical equation,” but “[r]ather, the
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claims are directed to a specific implementation of a solution to a problem in
the software arts.” Id. The question becomes whether the claims as a whole
“focus on a specific means or method that improves the relevant technology”
or are “directed to a result or effect that itself is the abstract idea and merely
invoke[s] generic processes and machinery.” McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). For the reasons
discussed above, Appellant’s claim 70 falls into the latter category –– claim
70 merely invokes generic processes and machinery (generic display, wager
input device, memory, and processor) to achieve the result (determine
whether a poker hand meets a predefined condition, i.e., includes certain
cards for increasing the award value for a winning hand) that is itself the
abstract idea.
Appellant’s reliance on Bascom is also misplaced. See Br. 10. Claim
70 does not require any nonconventional computer, network, or display
components, or even a “non-conventional and non-generic arrangement of
known, conventional pieces,” but merely calls for performance of the
claimed wager collection, hand analysis, and display functions “on a set of
generic computer components” and display devices. Bascom Global
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349–50, (Fed.
Cir. 2016).
For the above reasons, the recited elements of claim 70, considered
individually and as an ordered combination, do not constitute an “inventive
concept” that transforms independent claim 70 into patent-eligible subject
matter. See Alice, 134 S. Ct. at 2355. On this record, we affirm the
Examiner’s § 101 rejection of claim 70.
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DECISION SUMMARY
Claim
Rejected
35 U.S.C. § Reference/Basis Affirmed Reversed
70 101 Eligibility 70

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