Ex Parte Patterson

Patent Trial and Appeal Board

Jun 27, 2018

12945946 (P.T.A.B. Jun. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/945,946 11/15/2010
92668 7590 06/27/2018
The Law Office of Robert E. Purcell, PLLC
211 West Jefferson Street
Suite 24
Syracuse, NY 13202
FIRST NAMED INVENTOR
Thompson B. Patterson JR.
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
8927
EXAMINER
GARNER, WERNER G
ART UNIT PAPER NUMBER
3714
MAIL DATE DELIVERY MODE
06/27/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMPSON B. PATTERSON JR. 1
Appeal2017-009198
Application 12/945,946
Technology Center 3700
Before: JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Thompson B. Patterson Jr. ("Appellant") appeals under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 22, 25-34, 50, and
51. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellant's Appeal Brief (hereinafter "Appeal Br.") the real
parties in interest are Thompson B. Patterson Jr. and eMARKER, LLC.
Appeal Br. 4.
Appeal2017-009198
Application 12/945,946
THE CLAIMED SUBJECT MATTER
The claimed invention is directed to methods of electronically
handling a casino marker. Spec. ,r 2. Claims 22 and 50, reproduced below,
are illustrative of the claimed subject matter:
22. A method of redeeming a marker issued by a gaming
establishment to a patron comprising:
(a) receiving first identifying information about the patron
that essentially uniquely identifies the patron and distinguishes
the patron from other patrons;
(b) electronically storing said first identifying information
in an electronic database;
( c) electronically storing marker information about the
patron in said electronic database, said marker information
comprising a time when markers were issued to the patron and
an amount of the markers;
( d) after steps (a) - ( c) receiving a request from the patron
to redeem said marker;
( e) after steps (a) - ( d), at least partially electronically
obtaining and storing second identifying information from the
patron;
(f) after steps (a) - (e), at least partially electronically
comparing said stored first identifying information with said
second identifying information obtained in step ( e );
(g) determining whether to redeem said marker based on
said comparison;
(h) electronically displaying said stored marker
information;
(i) if a determination has been made to redeem said marker
in step (g), obtaining something of value from the patron; and
(j) electronically storing a time when said something of
value was obtained from the patron and a value of said something
of value.
50. A method of processing a marker request by a patron of a
table game played by utilizing chips at a gaming establishment
having a group of hired personnel members at least one of whom
2
Appeal2017-009198
Application 12/945,946
oversees an operation of said table game, said method
compnsmg:
(a) receiving by a first member of said group first
identifying information about the patron that essentially uniquely
identifies the patron and distinguishes the patron from other
patrons;
(b) electronically storing said first identifying information
in an electronic database;
( c) electronically storing financial information about the
patron in said electronic database, said financial information
selected from the group consisting of credit available to the
patron and funds the patron has on deposit with the gaming
establishment;
(d) after steps (a)- (c), receiving by a second member of
said group who oversees the operation of the table game said
marker request orally from the patron;
( e) step for approving the marker request including
assessing a location where the patron is making the marker
request; and
( f) if the marker request has been approved in step ( e ),
then, in response to the approval, distributing to the patron for
the patron's use chips that will enable the patron to play the table
game.
THE REJECTION ON APPEAL
Claims 22, 25-34, 50, and 51 are rejected under 35 U.S.C. § 101 as
being directed to patent ineligible subject matter.
OPINION
Procedural History
This is the second appeal in the present application. We previously
issued a decision in the present application (Appeal 2014-004786, mailed
May 31, 2016, hereinafter "the Decision"). In the Decision, claims 22--4 7
were appealed, and the Examiner's decision to reject claims 22, 25-34, 37,
3
Appeal2017-009198
Application 12/945,946
and 39 was reversed and the Examiner's decision to reject claims 23, 24, 35,
36, 38, and 40-47 was affirmed.
Appellant filed an amendment on June 17, 2016, with previously
presented claims 22, 25-34, and new claims 48 and 49 (which were previous
claims 37 and 39) rewritten in independent form to include the limitations
presented in previous independent claim 35. Because claims having the
numbers 48 and 49 had previously been presented and canceled, it was
improper for new claims to have these numbers. Thus, the Examiner
renumbered new claims 48 and 49 as claims 50 and 51. See Non-Final Act.
2 (mailed Aug. 10, 2016). The Examiner also issued a rejection of claims
22, 25-34, 50, and 51 under 35 U.S.C. § 101. See id. at 3.
Appellant filed a response on August 17, 2016, asserting that the
Examiner did not obtain proper permission to reopen prosecution. In
response, the Examiner issued a second Non-Final Action on September 14,
2016, noting that the signature of the Technology Center Director
authorizing reopening of prosecution was inadvertently omitted. Appellant
again submitted a response arguing that prosecution was improperly
reopened. See Response to Office Action submitted Aug. 20, 2016. The
Examiner then issued a Final Office Action on October 7, 2016, from which
the present appeal is taken.
In the present Appeal, Appellant initially argues that the Examiner
improperly reopened prosecution without proper authority and without
sufficient cause. See Appeal Br. 10-17; see also Reply Br. 2--4. We note
that the decision to reopen prosecution is a petitionable matter, not an
appealable matter, and is not within the jurisdiction of the Board. See
4
Appeal2017-009198
Application 12/945,946
MANUAL OF PATENT EXAMINING PROCEDURE (MPEP)
§§ 1002.02(c)(l) and 1201.
Turning to the rejection, under the Mayo/Alice two-part analysis for
patent subject matter eligibility, the Examiner finds that the claims are
directed to an abstract idea that may be classified as "fundamental economic
practices." See Final Act. 2-7; see also the two-step test set forth in Alice
Corp. Party, Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2350 (2014)
and Mayo Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 88
(2012). For step 2B of the Mayo/Alice analysis, the Examiner concludes that
the claims are directed to "no more than obtaining information, comparing
the information, and identifying options," and do not recite "a specific
limitation other than what is well-understood, routine and conventional in
the field." Final Act. 10-12.
Appellant does not contest that the claims are directed to an abstract
idea. See Appeal Br. passim. The central issue in this case is whether the
claims contain an "inventive concept" to "transform" the claimed abstract
idea into patent-eligible subject matter. Alice, 134 S. Ct. at 2357 (quoting
Mayo, 566 U.S. at 72, 80). As the Examiner notes, this determination
requires a finding that the claim includes "additional features" that amount
to "significantly more" than "well-understood, routine, conventional
activity." See Final Act. 10-11; see also Mayo, 566 U.S. at 77-80.
Appellant argues that the Patent Trial and Appeal Board (hereinafter
"PT AB"), in the Decision, "concluded that the pending claims recite features
that are not just different from, but are both novel and non-obvious, in view
of the prior art," and that therefore, the claims include limitations that are not
"well-known, routine, or conventional in the field." Appeal Br. 18-19.
5
Appeal2017-009198
Application 12/945,946
Appellant's argument that the Decision settles this issue is misplaced
because that decision addresses only the rejection on appeal, not novelty and
non-obviousness per se, and not whether the claims recite an inventive
concept in the context of a patent eligibility analysis. Even a novel and non-
obvious claim directed to a purely abstract idea may be, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S.
17 5, 188-89 (1981) ("The 'novelty' of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.").
Thus, we must consider whether the pending claims recite features
that are other than well-known, routine, or conventional. "Whether
something is well-understood, routine, and conventional to a skilled artisan
at the time of the patent is a factual determination." Berkheimer v. HP Inc.,
881 F. 3d 1360, 1369 (Fed. Cir. 2018).
Claims 22, 25-34, and 51
Each of independent claims 22, 25, and 51 recites, in part, "after steps
(a)- (d), at least partially electronically obtaining and storing second
identifying information about the patron."
Viewing this claim element separately, the step of obtaining and
storing second identifying information is purely conventional. The prior art
cited by the Examiner in the rejection addressed in the Decision, namely,
Greenlees (E. Malcom Greenlees, Casino Accounting and Financial
Management, University of Nevada Press (1988)) and Huizinga
(US2007 /0243935 Al, pub. Oct. 18, 2007) both disclose patron
6
Appeal2017-009198
Application 12/945,946
identification as a basic procedure. Specifically, Greenlees discloses that
"[t]he basic procedure is to have the customer fill out a credit application
and bank reference form." Greenlees, 239. Greenlees also discloses that the
pit boss checks the marker to assure that "[ t ]he signature matches the credit
application of the customer. This is accomplished in some casinos by
showing the marker on a TV camera connected to the main credit cashier
where the signature is compared to other credit records." Id. at 266.
Huizinga discloses, in a similar electronic verification procedure, that
"a photograph of the authorized or registered smartcard user may be
displayed by a wireless communications device 44 used by a casino
employee ... [which] may be enhanced with the use of biometric data ...
include[ing] iris scan, finger or thumbprints, voice samples, or other
biometric measures." Huizinga ,r 74. Huizinga's wireless communications
device 44 also allows the employee to coordinate the customer identification
with the buy back or redemption of a marker. Id. ,r,r 106, 107, 116, and 117
("the user may enter a marker request amount or buy back amount. This may
facilitate the issuing and buy back of markers."). Thus, obtaining a signature
and storing it and later comparing it to verify identity, as taught by
Greenlees, and the more recent development of electronically obtaining
unique identifying information for comparison and verification, as taught by
Huizinga as part of a marker redemption process, are well-understood,
routine, conventional activities previously known to the industry.
Considered as an ordered combination, Appellant's method steps add
nothing significantly more than when the steps are considered separately.
The sequence of data reception (obtain identifying information)-analysis
( comparing)-access (whether to redeem) is equally generic and conventional
7
Appeal2017-009198
Application 12/945,946
or otherwise held to be abstract. 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
recited order of the steps is, therefore, ordinary and conventional. We
conclude that the limitations of the claims do not transform the abstract idea
that they recite into patent-eligible subject matter because the claims simply
instruct the practitioner to implement the abstract idea with routine,
conventional activity.
Under governing precedent, these claims do not contain enough to
transform an abstract idea into a patent-eligible invention. See Alice Corp.
Pty. Ltd., 134 S. Ct. at 2360.
Claim 50
Claim 50 recites, in part, "( e) step for approving the marker request
including assessing a location where the patron is making the marker
request."
The Federal Circuit has treated collecting information, including when
limited to particular content (which does not change its character as
information), as within the realm of abstract ideas. See, e.g., Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015); OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015);
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n,
8
Appeal2017-009198
Application 12/945,946
776 F.3d 1343, 1347 (Fed. Cir. 2014); Digitech Image Techs., LLC v. Elecs.
for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011); Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
Here, claim 50 is focused on a process of gathering and analyzing
information of a specified content (based on location), and not any particular
assertedly inventive technology for performing those functions. It is
therefore directed to an abstract idea. Specifically, "merely selecting
information, by content or source, for collection, analysis, and display does
nothing significant to differentiate a process from ordinary mental processes,
whose implicit exclusion from § 101 undergirds the information-based
category of abstract ideas." Elec. Power Grp., 830 F.3d at 1355.
Nor does claim 50 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 information collection, 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--52, (Fed. Cir. 2016). The Specification discloses obtaining "a
signature, or digital signature capture, preferably on a touch pad," or
obtaining "biometric data include retinal scans, infrared facial readings,
feature spacing, fingerprint scans, and the like." Spec. ,r 31. The data is
"digitally stored on the gaming establishment's internal computer network,
or associated service model as software as a service active server pages
(ASP), and associated with the instant marker request." Spec. ,r 32. Nothing
in the claims, understood in light of the Specification, requires anything
9
Appeal2017-009198
Application 12/945,946
other than off-the-shelf, conventional computer, network, and biometric data
technology for gathering and presenting the desired information. The
Federal Circuit has repeatedly held that such invocations of computers and
networks that are not even arguably inventive are "insufficient to pass the
test of an inventive concept in the application" of an abstract idea. Elec.
Power Grp., 830 F.3d at 1355.
Additionally, we conclude that claim 50 is analogous to the method
claims considered by the court in Content Extraction, which looked to
whether the claims involved "more than performance of 'well-understood,
routine, [and] conventional activities previously known to the industry."'
Content Extraction, 776 F.3d at 1347--48 (quoting Alice, 134 S.Ct. at 2359).
The court held that they did not. Rather, it noted, the claims merely recited
the use of existing scanning and processing technology to recognize and
store data from specific data fields. Id. at 1348. Because it concluded that
"the basic character of [ the plaintiff's] claims is the abstract idea of
extracting and storing data from hard copy documents using generic
scanning and processing technology," the court held the claims patent-
ineligible. Id. at 1349. Here, Appellant is obtaining and storing data using
conventional technology and assessing the data based on known data fields
(see Huizinga ,r,r 92-97; Fig. 1 lB, i.e., location fields 242, 244, 246, player
identification fields 248, 250, and time fields 252, 254). Thus, although we
appreciate Appellant's argument that the type of data being assessed is not
disclosed by Huizinga and Greelees, the claims are still directed to assessing
data to verify whether a user should be granted a marker, which is disclosed
by Huizinga, and thus do not add "significantly more" to transform an
abstract idea into a patent-eligible invention. See Huizinga, ,r,r 74 and 205.
10
Appeal2017-009198
Application 12/945,946
On pages 19-23 of the Appeal Brief, Appellant presents additional
arguments disparaging the Supreme Court's decisions in Bilski v. Kappas,
561 U.S. 593 (2010), Mayo, and Alice and urging us to refuse to follow these
decisions. See Appeal Br. 19 ("Applicant urges the PT AB to disregard any
stare decisis effect of [Alice] based on the doctrine of anticipatory overruling
of that decision either by the Supreme Court itself or via statutory
amendment."), id. at 23 ("Applicant hopes the PTAB will have the courage
and fort[h ]rightness to refuse to follow the stupid and unworkable Bilski,
Mayo, and Alice line of decisions, as is permitted under the anticipatory
overruling doctrine."). However, we are constrained to follow that
precedent unless and until the Bilski/Mayo/Alice line of decisions is
overruled.
Having considered all of Appellant's arguments, we are not apprised
of error in the Examiner's determination that the claims do not recite an
element or combination of elements that is sufficient to ensure that the
patent in practice amounts to significantly more than a claim upon the
abstract idea. Accordingly, we sustain the Examiner's rejection of claims
22, 25-34, 50, and 51 as being directed to patent-ineligible subject matter.
DECISION
The Examiner's rejection of claims 22, 25-34, 50, and 51 is affirmed.
No time period for taking any subsequent action in connection with
11
Appeal2017-009198
Application 12/945,946
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37
C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
12