Ex Parte Peters et al

Patent Trial and Appeal Board

Jun 26, 2018

14324264 (P.T.A.B. Jun. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/324,264 07/07/2014
97510 7590 06/26/2018
The Law Office of James Baudino, PLLC
2313 ROOSEVELT DRIVE
SUITE A
ARLINGTON, TX 76016
FIRST NAMED INVENTOR
Darin L. Peters
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.
1002.00006 1492
EXAMINER
LAYNO, BENJAMIN
ART UNIT PAPER NUMBER
3711
MAILDATE DELIVERY MODE
06/26/2018 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 DARREN L. PETERS and LARRY SEGEBARTH
(Applicant: Gaming Properties, LLC)
Appeal2016-003401
Application 14/324,264
Technology Center 3700
Before STEVEN D.A. McCARTHY, LISA M. GUIJT and
PAUL J. KORNICZKY, Administrative Patent Judges.
McCARTHY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
At least one pending claim having been twice rejected, the
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision
rejecting claims 1-6 under 35 U.S.C. § 101 as being ineligible for patent
protection; claims 1---6 on the ground of nonstatutory double patenting, as
being unpatentable over claims 13-19 of Peters (US 7,464,933 B2, issued
Dec. 16, 2008) in view of Lewis (US 6,656,044 Bl, issued Dec. 2, 2003);
The Appellants identify the real party in interest as the Applicant,
Gaming Properties, LLC, of Dallas, Texas. (See Appeal Brief, dated June 6,
2015, at 2).
Appeal2016-003401
Application 14/324,264
claims 7-17 on the ground of nonstatutory double patenting, as being
unpatentable over Segebarth (US 8,770,583 B2, issued July 8, 2014); claims
7-17 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Lees
(US 4,775,155, issued Sept. 4, 1998) and Yacenda (US 2001/0003100, publ.
June 7, 2001); and claims 1-6 under§ 103(a) as being unpatentable over
Lees, Yacenda and Lewis. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The claims on appeal relate to games of chance, such as "bingo." (See
Spec. 2). The Specification addresses the problem that such games may
have multiple winners, resulting either in the house having to make
unexpectedly high payouts; or in each winner receiving an unexpectedly low
payout. (See Spec. 6).
Claims 1, 4, 7 and 12 are independent. Claims 1 and 7 are illustrative:
1. A method for administering a game of chance,
compnsmg:
storing a pool of indicators in a memory unit;
creating, by a processor, a plurality of electronic virtual
game pieces, each game piece having a unique combination of
the indicators, the plurality of electronic virtual game pieces
equal to a number of unique combinations of the indicators;
electronically associating the plurality of electronic virtual
game pieces to one or more players; and
selecting a winning combination of indicators matching
one and only one of the unique combinations.
7. A game of chance comprising:
a plurality of game pieces distributable to a plurality of
players, each game piece having associated therewith one or
more unique combinations of indicators, and wherein one and
only one game piece wins the game of chance based on the one
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or more unique combinations of indicators based on one of the
unique combinations of indicators being identified as a winning
combination of indicators.
ISSUES
Although the Appellants argue the patentability of independent claims
1 and 4 under separate subheadings in the briefs, the arguments the
Appellants present regarding each of the two independent claims are
essentially the same. (Compare Appeal Brief, dated June 29, 2015 ("App.
Br."), at 5-8 & 20-24; Reply Brief, dated Feb. 17, 2016 ("Reply Br."), at 2-
4, 18 & 19 with App. Br. 9-12 & 24--28; Reply Br. 5-7, 19 & 20).
Therefore, we group claims 1---6 for purposes of the rejections under§ 101
and§ 103(a). See 37 C.F.R. § 41.37(c)(l)(iv). The Appellants argue claims
1---6 as a group for purposes of the rejection for obviousness-type double
patenting. (See App. Br. 28 & 29; Reply Br. 20 & 21 ).
Likewise, although the Appellants argue the patentability of
independent claims 7 and 12 under separate subheadings in the briefs, the
arguments the Appellants present regarding each of the two independent
claims are essentially the same. (Compare App. Br. 12-15; Reply Br. 7-9
with App. Br. 16-19; Reply Br. 13-15). Therefore, we group claims 7-9,
12-14 and 17 for purposes of the rejection under§ 103(a). See 37 C.F.R.
§ 41.37(c)(l)(iv). We group claim 10 with claim 15, and claim 11 with
claim 16, for purposes of the rejection under§ 103(a). (Compare App. Br.
15 & 16; Reply Br. 11 & 12 with App. Br. 19 & 20; Reply Br. 17 & 18).
The Appellants present no argument contesting the rejection of claims
7-17 on the ground of nonstatutory double patenting, as being unpatentable
over Segebarth. We summarily affirm the rejection.
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This appeal turns on four issues:
First, does Yacenda teach a solution to the problem of multiple
winners in bingo or bingo-type games?
Second, does Lees teach away from the claimed subject matter?
Third, is the subject matter of claim 1 patentably distinguishable from
the subject matter of claim 18 of Peters?
Fourth, is appealed claim 1 ineligible for patent protection under the
holdings of In re Smith, 815 F .3d 816 (Fed. Cir. 2016), and Planet Bingo,
LLC v. VKGS LLC, 576 Fed. Appx. 1005 (Fed. Cir. 2014)?
FINDINGS OF FACT
The record supports the following findings of fact ("FF") by a
preponderance of the evidence.
Lees
1. Lees describes a "bingo line-type" game auxiliary to a regular
bingo game. Referring to Figure 1, Lees describes a bingo display board as
follows:
FIG. 1 shows a conventional bingo display board or flash board
B which is provided with a plurality of vertical columns 10 and
horizontal rows 12. As is conventional, sixteen vertical columns
are provided with the first column containing the letters B-I-N-
G-0 and the other columns containing a series of five numbers
that are headed, respectively, by one of the numbers 1-15.
Numbers 1-7 5 are conventionally used in the bingo game with
the numbers being divided in five horizontal rows, such that the
first row next to the letter "B" ranges from 1-15, the second row
next to the letter "I" ranges from 16-30 and so on. The columns
and rows divide the display board B into a plurality of squares
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14 each of which contains an alphanumeric character or indicium
16.
(Lees, col. 3, 11. 22-36).
2. Lees describes a card A 'for use in the auxiliary game. As
depicted in Figure 3, one side 70 of the card A 'is obscured by a removable
cover means 80. Beneath the cover means 80 is a first column 78, featuring
the letters B-I-N-G-0. In addition, beneath the cover means 80, a second
column 7 4 links each of the letters B-I-N-G-0 with a number selected from
the row of the bingo display board B associated with that letter. (See Lees,
col. 4, 11. 14--16, 19-22, 29 & 30; & Fig. 3).
3. Lees teaches distributing the cards A 'to bingo players to permit
players to simultaneously play both conventional bingo and the bingo line-
type game. Once the players receive the cards, they strip off the cover
means 80 to reveal the letters B-I-N-G-0 and the numbers linked to each of
those letters. During the conventional bingo game, a sequence of numbers
within the range 1-7 5 are called and marked on the bingo display board B.
When all five numbers in any one of the columns of the bingo display board
B are marked, the player or players having cards A 'with numbers
corresponding to the numbers in that column on the display board win. (See
Lees, col. 4, 11. 39--46).
4. Lees teaches printing the cards A 'in batches and marking each
card in the batch with a serial number 54. (See Lees, col. 3, 11. 53-58 & Fig.
2). For security reasons, only cards bearing one particular serial number
would be distributed for use in a particular bingo line-type game. (See Lees,
col. 4, 11. 53-59).
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5. Lees teaches printing the cards A 'in batches of six-hundred-
and-sixty (see Lees, col. 3, 11. 53-58), although no reason is given for this
number. As the Appellants correctly point out, there are only fifteen unique
columns on a bingo display board B. Hence, Lees suggests distributing
more cards than there are unique winning combinations of the numbers 1-
75, thereby permitting multiple winners. (See App. Br. 13). Lees teaches
that the size of the batch may be varied depending on the anticipated number
of players in a game. (See Lees, col. 4, 11. 59---65). Lees does not teach
limiting the number of cards A 'distributed to players to fifteen so as to
ensure that each game will have only a single winner.
Yacenda
6. Yacenda describes an interactive, electronic gaming system 10
in which a player uses either a computer or a telephone, or both, the
purchase a ticket of a "draw 6" lottery game. (See generally Yacenda, paras.
42 & 52---62).
7. In paragraph 61, Y acenda teaches that:
An exclusive-number type lottery is also contemplated. A
subscriber subscribes to a number or a series of numbers to enter
into a lottery, for example. A set of numbers is selected by the
subscriber. The set may be made exclusive to the subscriber, i.e.,
only a single subscriber can have the set of numbers selected and
reserved by gaming system 10. These numbers are stored in
memory for each subscriber. In this way, a lottery game that
selects a reserved number can have only one winner. This is
guaranteed by gaming system 10.
(Yacenda, para. 61 ).
8. Yacenda teaches granting the subscriber exclusivity with
respect to the number or set of numbers for life (that is, until the subscription
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is terminated) or, in the alternative, for a fixed period, such as six or twelve
months. (See id.)
Lewis
9. Lewis describes an electronic device 10 for playing bingo and
another, auxiliary game. More specifically, Lewis criticizes conventional
bingo because a bingo game typically has only one winner: "[a] drawback
with Bingo is that in a game, usually only one player is the winner. Thus,
unless that player has a winning card, they lose. This can be frustrating."
(Lewis, col. 1, 11. 39--41 ). Lewis addresses this problem by providing the
player with an additional, auxiliary game such as video poker, played at
substantially the same time: "There is a need to provide a device and
method where a Bingo player has at least one other opportunity, unrelated to
his Bingo card, to obtain a winning outcome." (Lewis, col. 1, 1. 66- col. 2,
1. 1 ).
10. Lewis's electronic device 10 includes a processor to control the
play of the bingo game and the auxiliary game; and a memory. (See Lewis,
col. 3, 11. 31-33; cf id. col. 4, 11. 44--47 (referring to the "processor's
memory")). The processor creates a plurality of virtual game pieces,
namely, virtual bingo cards and poker playing cards. (See, e.g., Lewis, col.
4, 11. 44--52 & col. 4, 1. 65 - col. 5, 1. 4). In addition, the processor
electronically associates the plurality of electronic virtual game pieces to one
or more players. (See id.) The processor selects a winning combination of
indicators (either numbers, in the case of the bingo game; or cards, in the
case of the auxiliary poker game). (See, e.g., Lewis, col. 5, 11. 23-39 & col.
6, 11. 7-28).
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First and Second Issues
ANALYSIS
Turning first to the rejection of independent claims 7 and 12, the
Examiner correctly finds that Lees describes a game of chance including a
plurality of game pieces, namely, cards A~ distributable to a plurality of
players, each game piece having associated therewith a combination of
indicators, that is, a column 7 4 of numbers derived from the bingo display
board B. (See Non-Final Office Action, mailed Jan. 27, 2015 ("Non-Final
Act."), at 7; FF 2). Lees also discloses that one or more of the game pieces,
that is, one or more of the cards A ~ wins the game of chance when the
combination of indicators, that is, the column 7 4 of numbers associated with
the one or more cards, is identified as a winning combination of indicators.
(See Non-Final Act. 7; FF 3).
The Examiner finds that Y acenda teaches providing an exclusive-
number type lottery, in which a subscriber is assigned a unique combination
of indicators, namely, a unique set of lottery numbers. Any lottery game in
which the unique combinations of indicators assigned to the subscriber is
identified as a winning combination of indicators can have only one winner.
(See Non-Final Act. 7 & 8; FF 6). The Examiner concludes that it would
have been obvious "to modify [Lees's] bingo [line-type] game such that
each game piece A' ha[ d] associated therewith a unique combination of
indicators 74, numbers ranging from 1 to 75," in order to make the game
more exciting for the players. (Non-Final Act. 8). The Appellants disagree.
The Appellants point out that Y acenda itself does not describe, in
clear terms, a lottery card or other game piece having a unique set of lottery
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numbers. (See App. Br. 14; Reply Br. 9). In addition, the Appellants point
out that multiple players may win one of the bingo line-type games
described by Lees. (See App. Br. 13; see also FF 4 & 5). In addition, the
Appellants point out that Lees teaches obscuring the combination of
indicators, that is, the column 7 4 of numbers, associated with a particular
card A 'until after the card is distributed to a player (see FF 2 & 3); and that
Y acenda teaches providing a player a unique combination of indicators, that
is, a unique set of lottery numbers, only when the player purchases a
subscription for those numbers for a period of time (see FF 8). The
Appellants argue that Lees' practice of not permitting a player to know
which numbers the layer is assigned in a bingo line-type game would have
taught away from Yacenda's teaching regarding subscriptions allowing the
players to play unique sets of numbers in multiple games over a period of
time. (See App. Br. 14; Reply Br. 8 & 9).
The record supports a finding that Yacenda suggests a solution to the
problem of multiple winners, namely, that assigning a unique set of lottery
numbers to a player will produce a single winner of that unique set of lottery
numbers is identified as a winning combination. This is true even though
Y acenda describes a subscription lottery game rather than a bingo game; and
even assuming, as the Appellants assert, that Yacenda's suggestion to assign
subscribers unique sets of lottery numbers is "more directed toward
convenience or the ability of the player to continually play with his/her
favorite set(s) of numbers." (Reply Br. 9).
Lees' s practice of obscuring the column 7 4 of numbers on a bingo
line-type game card A 'using a cover means 8 0 prior to receipt of the card by
a player would not have discouraged one of ordinary skill in the art from
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modifying Lees' s game to solve the problem of multiple winners. One of
ordinary skill in the art would have had reason to implement Y acenda' s
suggestion to provide each card with a unique column of numbers in order to
provide a single winner without adopting Y acenda' s teaching to sell
subscriptions for particular sets of numbers. See In re Sovish, 769 F.2d 738,
742 (Fed. Cir. 1985)(the issue in an obviousness analysis is not whether one
of ordinary skill in the art somehow could have combined the embodiments
described by the references, but whether the claimed subject matter would
have been obvious from the teachings of those references.
Therefore, we sustain the rejection of claims 7-9, 12-14 and 17 under
§ 103(a) as being unpatentable over the combined teachings of Lees and
Yacenda. 2 Furthermore, the Appellants contest the rejection of claims 1 and
4 under§ 103(a) by means of the same arguments, adding only their
assertion that the teachings of Lewis fail to remedy perceived deficiencies in
the combined teachings of Lees and Y acenda. Finding no such deficiencies,
we sustain the rejection of claims 1---6 under§ 103(a) as being unpatentable
over the combined teachings of Lees, Y acenda and Lewis.
Claim 10 recites the "game of claim 7, wherein the plurality of game
pieces comprise a plurality of scratch-off game pieces." Claim 15 similarly
recites the "game of claim 12, wherein the first and second quantities of
game pieces comprise first and second quantities of scratch-off game
pieces." Claim 11 recites the "game of claim 7, wherein the plurality of
2 Our analysis does not rely on characterizing any limitation of claims
7-9, 12-14 and 17 as either printed matter or a games rule incapable of
patentably distinguishing the claimed subject matter from the prior art. (See
Examiner's Answer, dated Dec. 17, 2015, at 11-13).
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game pieces comprise a plurality of pull-tab tickets." Claim 16 similarly
recites the "game of claim 12, wherein the first and second quantities of
game pieces comprise first and second quantities of pull-tab tickets." The
Examiner finds that Lees's description of the cover means 80 suggests that
the card A 'might be implemented as either as a scratch-off game piece or as
a pull-tab ticket. (See Non-Final Act. 7). The Appellants do not appear to
contest this finding.
Instead, the Appellants argue that Lees teaches away from the claimed
subject matter because the use of either a scratch-off game piece or a pull-
tab ticket that obscures a player's assigned column of numbers 74 would
have been inconsistent with the subscription lottery game described by
Yacenda. (See App. Br. 15, 16, 19 & 20; Reply Br. 11, 12, 17 & 18). For
reasons similar to those invoked in connection with the rejection of claims 7
and 12, this argument is not persuasive. We sustain the rejection of claims
10, 11, 15 and 16 under§ 103(a) as being unpatentable over the combined
teachings of Lees and Y acenda.
Third Issue
The Examiner rejects claims 1-6 as unpatentable over claims 13-19
of Peters. The judicial doctrine of obviousness-type double patenting
precludes an applicant from extending the term of protection for a patented
invention by claiming an obvious variant of the patented invention in a
subsequent patent application. See In re Langi, 759 F.2d 889, 892 (Fed. Cir.
1985).
Generally, an obviousness-type double patenting analysis entails
two steps. First, as a matter of law, a court construes the claim
in the earlier patent and the claim in the later patent and
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determines the differences. Second, the court determines
whether the differences in subject matter between the two claims
render the claims patentably distinct. A later claim that is not
patentably distinct from an earlier claim in a commonly owned
patent is invalid for obvious-type double patenting.
Eli Lilly & Co. v. Barr Labs., Inc., 251F.3d955, 968 (Fed. Cir. 2001)
(internal citations and footnote omitted).
Claims 13, 15, 16 and 18 of Peters recite the following:
13. A game of chance played between a plurality of
players and a House, wherein a winner is determined by
matching a combination of indicators associated with a game
piece with a winning combination of indicators determined by
the House, wherein the game is adapted so that there can be only
a single winner, said game comprising:
means for calculating, for combinations of a given number
of indicators, the number of unique combinations of
indicators of the given size from a larger pool of
indicators of a predetermined size;
a plurality of game pieces equal to the number of unique
combinations of indicators, each game piece having
one of the unique combinations of indicators
associated therewith, and all of the game pieces
being distributed to the plurality of players; and
means for the House to determine a winning combination
of indicators matching one and only one of the
unique combinations associated with one and only
one of the game pieces.
15. The game of chance according to claim 13, wherein
the means for calculating the number of unique combinations
includes:
means for dividing the numbers from 1 to 7 5 into fifteen
groups of five numbers each; and
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means for calculating for each group of five numbers, the
number of unique 3-number combinations of the
five numbers in the group.
16. The game of chance according to claim 15, wherein
the means for dividing the numbers from 1 to 7 5 into fifteen
groups of five numbers each includes means for dividing the
numbers in a manner equivalent to a bingo flashboard.
18. The game of chance according to claim 16, wherein
the means for the House to determine a winning combination of
indicators includes means for randomly drawing numbers one at
a time in the range from 1 to 7 5 until three numbers associated
with a single player's game piece have been drawn.
The Examiner details, on pages 15 and 16 of the Examiner's Answer,
mailed December 17, 2015 ("Answer" or "Ans."), how limitations of claims
1 and 4, excluding limitations relating to a processor and a memory, are
recited, expressly or by incorporation, in claim 18 of Peters. The Examiner
concludes that it would have been obvious to modify the subject matter of
claim 18 in the fashion claimed in appealed claims 1 and 4 in view of the
teachings of Lewis. (See Non-Final Act. 4 & 5; see also FF 9 & 10).
The Appellants argue as follows:
Peters appears to disclose using a dashboard having fifteen
5-number columns, and there are 150 unique 3-number
combinations. (Peters, column 3, lines 41--43). Peters appears
to disclose that 1,000 cards are distributed to the players, 850 of
which are printed with an indication that the card is not a HOLD
card, and 150 cards are printed with a HOLD indication. (Peters,
col. 3, lines 44--48). Peters appears to disclose that the game is
then played with the HOLD cards only. (Peters, col. 3, lines 50-
52).
Thus, Appellant[ s] respectfully [submit] that it would not
[have] be[ en] obvious to modify Peters as proposed by the
Examiner because the game of Peters appears to use select
printed cards from a greater quantity of distributed printed cards,
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which does not appear to lend itself to the electronic device of
Lewis.
(App. Br. 28 & 29; Reply Br. 20 & 21).
As noted earlier, a claim is subject to rejection for obviousness-type
double patenting when the claim subject to rejection is not patentably
distinct from a claim of an earlier patent. Claim 18 of Peters does not recite,
either expressly or by incorporation, the distinction between HOLD cards
and non-HOLD cards on which the Appellants rely in seeking to distinguish
appealed claims 1---6 from claim 18 of Peters. The Appellants do not
identify any formal definition or clear disclaimer that might limit the scope
of claim 18 of Peters to a game played using only HOLD cards to the
exclusion of non-HOLD cards. As such, claim 18 is broader than the
embodiment in Peters's written description. The subject matter of appealed
claims 1 and 4 is not patentably distinct from subject matter within the scope
of claim 18 of Peters, viewed in light of the teachings of Lewis, even
assuming that claims 1 and 4 are not obvious variations of an embodiment
played using only HOLD cards to the exclusion of non-HOLD cards. We
sustain the rejection of claims 1-6 on the ground of nonstatutory double
patenting, as being unpatentable over claims 13-19 of Peters in view of
Lewis.
Fourth Issue
Under 35 U.S.C. § 101, "[w]hoever invents or discovers any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof, [to] obtain a patent therefor."
Nevertheless, the courts have recognized three exceptions to this general
rule, excluding from patentability laws of nature, physical phenomena and
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abstract ideas. See Bilski v. Kappas, 561 U.S. 593, 601 (2010). The
Examiner correctly concludes that claims 1---6 fall within the "abstract idea"
exception.
Independent claim 1 is representative of claims 1---6 for purposes of
this rejection. In particular, independent claim 4 is properly analyzed as a
method claim. Claim 4 recites a "system, comprising: a processor; and a
memory unit accessible by the processor unit." Nevertheless, in assessing a
rejection for ineligible subject matter under§ 101, we look not to the name
or intended use assigned to the claimed subject matter in the preamble, but
to the nature of the claimed subject matter as a whole, to determine whether
the claim falls within the "abstract idea" exception. See CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1374 (Fed. Cir. 2011) ("Regardless
of what statutory category ('process, machine, manufacture, or composition
of matter,' 35 U.S.C. § 101) a claim's language is crafted to literally invoke,
we look to the underlying invention for patent-eligibility purposes"). The
Appellants do not appear to contend that either the processor or the memory
unit differs from available, general-purpose processors and memory units
other than with respect to the pool of indicators stored in the memory unit or
with respect to the instructions by which the processor is configured to
operate. Because the method of claim 1 recites "storing [the] pool of
indicators in [the] memory unit;" as well as the three process steps that the
processor of claim 4 is operable to perform, claim 1 is representative for
purposes of the rejection for ineligible subject matter.
A two-step analysis is used to determine whether the subject matter of
a claim falls within one of the exceptions to patent eligibility. First, one
must determine whether the claim is "directed to one of [the] patent-
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ineligible concepts." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S.Ct.
2347, 2355 (2014). Second, if so, one must determine if the remainder of
the claim recites an "inventive concept," such that the claim as a whole
recites a specific application of the patent-ineligible concept. Id. at 2357-
58.
Turning to the first step of the analysis, neither the Supreme Court,
nor our reviewing court, has defined the term "abstract." See, e.g., Alice at
2357; Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859, 868
(Fed. Cir. 2010). Instead, the contours of what constitutes an "abstract idea"
have developed on a case-by-case basis.
The Examiner correctly concludes that claim 1 is directed to an
abstract idea, namely, the management or conduct of a game. The subject
matter of claim 1 is analogous to that at issue in In re Smith, 815 F .3d 816
(Fed. Cir. 2016), and Planet Bingo, LLC v. VKGS LLC, 576 Fed. Appx.
1005 (Fed. Cir. 2014). In particular, a panel of our reviewing court held in
the latter case that claim 7 of Wei (US 6,398,646 Bl, issued June 4, 2002)
was directed to the abstract idea of managing a game of bingo (see Planet
Bingo at 1008):
7. A method for playing a game of Bingo which
comprises the steps of:
(a) providing a system for managing a game of Bingo
which comprises: a computer with a central
processing unit (CPU) and with a memory and with
a printer connected to the CPU; an input and output
terminal connected to the CPU and memory of the
computer; and a program in the computer enabling:
(i) input of at least two sets of Bingo numbers
which are preselected by a player for
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repetitive play in games of Bingo over a
period of time;
(ii) storage of the sets of Bingo numbers which
are preselected by the player as a group in the
memory of the computer;
(iii) assignment of a player identifier unique to the
player for the group having the sets of Bingo
numbers which are preselected by the player
wherein the player identifier is assigned to
the group for multiple sessions of Bingo;
(iv) retrieval of the group using the player
identifier;
(v) selection from the group by the player of at
least one of the sets of Bingo numbers
preselected by the player and stored in the
memory of the computer as the group for play
in a selected game of Bingo in a specific
session of Bingo wherein a number of sets of
Bingo numbers selected for play in the
selected game of Bingo is less than a total
number of sets of Bingo numbers in the
group;
(vi) addition by the computer of a control number
for the set of Bingo numbers which is
selected by the player for play in the selected
game of Bingo;
(vii) output of a receipt with the control number,
the set of Bingo numbers which is selected
for play in the selected game of Bingo, a price
for the set of Bingo numbers which is
selected for play in the selected game of
Bingo, a date of the selected game of Bingo
and optionally a computer identification
number; and
(viii) output for verification of a winning set of
Bingo numbers by means of the control
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number which is input into the computer by a
manager of the game of Bingo;
(b) playing the game of Bingo using the set of Bingo
numbers wherein the player signals a Bingo to
indicate the set of Bingo numbers which is selected
for play in the selected game of Bingo is the
winning set of Bingo numbers; and
( c) verifying the winning set of Bingo numbers with the
control number with the program.
(Wei, col. 9, 1. 33 - col. 10, 1. 13).
Appealed claim 1 is sufficiently analogous to claim 7 of the patent at
issue in Planet Bingo to justify concluding that claim is directed to the
abstract idea of managing or playing a bingo game. For example, although
the preamble of appealed claim 1 recites a "method for administering a game
of chance" rather than a "method for playing a game of Bingo," as recited in
the preamble of claim 7 of Wei, the two preambles are similar in that both
relate to the management or play of a class of games of chance that includes
bingo.
The step of "output[ting] ... a receipt with [a] control number, the set
of Bingo numbers which is selected for play in the selected game of Bingo, a
price for the set of Bingo numbers which is selected for play in the selected
game of Bingo, a date of the selected game of Bingo and optionally a
computer identification number," as recited in claim 7 of Wei, is analogous
to the step of "creating, by a processor, a plurality of electronic virtual game
pieces, each game piece having a unique combination of the indicators, the
plurality of electronic virtual game pieces equal to a number of unique
combinations of the indicators," as recited in appealed claim 1. Although
the recitation in appealed claim 1 that each game piece has "a unique
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combination of the indicators" has no analog in claim 7 of Wei, this
difference in the recitations of the two claims relates directly to the
management of a bingo game and, as such, does not diminish the abstract
nature of the claimed subject matter as a whole. As the Examiner correctly
determines, the step recited in claim 7 of Wei is at least as concrete and
tangible as that recited in appealed claim 1, if not more so, because the step
recited in claim 7 is sufficiently broad to produce a tangible receipt as
opposed to electronic virtual game pieces. (See Ans. 10). 3
The steps of:
storage of the sets of Bingo numbers which are preselected by
the player as a group in the memory of the computer; [and]
assignment of a player identifier unique to the player for the
group having the sets of Bingo numbers which are preselected by
the player wherein the player identifier is assigned to the group
for multiple sessions of Bingo,
as recited in claim 7 of Wei, are analogous to the step of "electronically
associating the plurality of electronic virtual game pieces to one or more
players," as recited in appealed claim 1. Likewise, the recitation of a
"winning set of Bingo numbers" in step (b) of claim 7 of Wei implies the
step of "selecting a winning combination of indicators matching one and
only one of the unique combinations," as recited in appealed claim 1. In
short, given the analogy between claim 7 of Wei and appealed claim 1, the
holding of our reviewing court that claim 7 of Wei was directed to the
3 The Appellants direct our attention to the final decision in Ex parte
Segebarth, Appeal 2011-012997, SIN 12/316,313 (PTAB Nov. 27, 2013).
(See App. Br. 6 & 7). Although the application underlying this appeal is a
continuation of another application that was a continuation of Application
12/316,313, the present application is separate. Ex parte Segebarth is not
"law of the case" in this appeal.
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abstract idea of managing a game of bingo, see Planet Bingo at 1008,
implies that appealed claim 1 is directed to the same abstract idea.
Step 2 may be addressed briefly. Adding "conventional computer
components to well-known business practices" does not, in general, provide
the "something more" necessary to characterize the subject matter of a claim
as an application of an abstract idea to which the claim is directed. Affinity
Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1270 (Fed. Cir. 2016)
(quoting Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1338 (Fed. Cir.
2016)). The steps recited in claim 7 of Wei are more detailed, and the
computer equipment recited therein, no more generic, than the processor and
memory recited in appealed claim 1. Furthermore, each step recited in claim
1 has an analog in claim 7 of Wei, with the possible exception of the step of
"storing a pool of indicators in a memory unit." Storing predetermined
indicators or numbers in a computer memory is a conventional computer-
related task. See Planet Bingo at 1009. Without more, the step of "storing a
pool of indicators in a memory unit" is insufficient to distinguish appealed
claim 1 from the holding of our reviewing court that claim 7 of Wei failed to
recite "something more." We sustain the rejection of claims 1---6 under
§ 101 as being ineligible for patent protection.
DECISION
We sustain all grounds of rejection entered by the Examiner.
We AFFIRM the Examiner's decision rejecting claims 1-17.
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)(l )(iv).
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AFFIRMED
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