IGT

Patent Trials and Appeals Board

Oct 15, 2020

2018005263 (P.T.A.B. Oct. 15, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/169,869 01/31/2014 Cameron A. Filipour 025094-7449/P001845-001 3659
29159 7590 10/15/2020
Neal, Gerber & Eisenberg LLP (IGT)
2 N. LaSalle Street
Suite 1700
Chicago, IL 60602-3801
EXAMINER
COBURN, CORBETT B
ART UNIT PAPER NUMBER
3799
NOTIFICATION DATE DELIVERY MODE
10/15/2020 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):
amasia@ngelaw.com
ipusmail@ngelaw.com
patents@igt.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CAMERON A. FILIPOUR
Appeal 2018-005263
Application 14/169,869
Technology Center 3700
Before JENNIFER D. BAHR, LINDA E. HORNER, and
MICHELLE R. OSINSKI, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON REHEARING
STATEMENT OF THE CASE
Appellant1 filed a request for rehearing under 37 C.F.R. § 41.52
(“Request”) of our decision of February 13, 2020 (“Decision”). In the
Decision, we affirmed the Examiner’s rejection of claims 1‒20 under
35 U.S.C. § 101. Appellant argues in the Request that the Board
“misapprehended significant portions of representative claim 1 as being
directed to abstract ideas, when those portions of claim 1 are in fact not
abstract ideas but instead are ‘additional elements’ that integrate the judicial

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as IGT. Appeal Br. 2.
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exception into a practical application.” Request 1. Appellant also argues that
the Board “failed to review the claim as a whole” when it determined
whether claim 1 recites such additional elements, and the Board
“misapprehended [Appellant’s] arguments” advanced in its Supplemental
Brief and at the oral hearing. Id. at 1‒2.
For the reasons provided below, Appellant’s Request is denied.
ANALYSIS
A request for rehearing “must state with particularity the points
believed to have been misapprehended or overlooked by the Board.” 37
C.F.R. § 41.52(a).
Step 2A, Prong 1
Appellant first argues in its Request that the Board erred in finding
each of steps (a) through (h) of claim 1 to be a “fundamental part of
exchanging and resolving financial obligations based on probabilities” akin
to the “fundamental economic practice” in Alice.2 Request 4. Specifically,
Appellant argues that steps (f) and (g) of claim 1 are not directed to a
fundamental economic practice. Id. at 4‒6. We address each of the
specifically argued steps below.
Step (f)
As to step (f), Appellant argues that the “specificity” of step (f), which
“is carried out in software and results in a special-purpose gaming
system/machine, takes step (f) outside of the realm of an abstract idea.”3 Id.

2 Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014).
3 According to Appellant, step (f) “introduces the concept of a secondary
game” and “makes clear [that] the secondary game progresses based at least
in part on certain events that randomly occur during play of the primary
game.” Request 4.
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at 4. Appellant explains that this specificity is directed to the “structure and
functionality” of the gaming system:
The structure is the components found in the claim (e.g.,
primary game, secondary game having object visitation areas
(each area being associated with one of the primary themes
from the primary game), a secondary game object, etc.), while
the function describes the operation of the components (e.g.,
displaying the secondary game object in association with the
determined object visitation area, determining if the primary
theme associated with the determined object visitation area is
different than the primary theme of the current primary theme
of the primary game, and changing the theme of the primary
game to the theme associated with the determined object
visitation area).
Id. at 5. Appellant argues that “[s]tep (f) is not some fundamental economic
practice like hedging or mitigating settlement risk.” Id.
Appellant argues that the Board “tacitly admitted as much” by finding
that even if step (f) goes beyond exchanging and resolving financial
obligations based on probabilities, the recited limitations pertain to
managing personal behavior. Id. at 5 (citing Decision 12). Appellant argues
that this alternative finding by the Board also is erroneous because “step (f)
has nothing to do with ‘managing’ the player;” it pertains to “how the
gaming system software is designed and constructed.” Id.
Appellant also takes issue with the Board’s finding that step (f) recites
“merely ‘rules’ for how to play the game.” Request 6. Appellant argues that
“[t]he specificity in the claim is directed to how the gaming system/machine
is structured and functions, not on any rules that the player has to follow.”
Id.
In the Decision, we found that step (f), including substeps (A) through
(D), “amounts to instructions for determining a particular award, i.e., the
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award of a secondary game, based on play of the primary game.” Dec. 12
(discussing steps as described in Spec. ¶¶ 44, 46). Based on the description
provided in the Specification, we determined that “[t]his step and its
subordinate steps are merely rules of conducting the wagering game,
including how the game is displayed to the user based on the user’s past
play” and, thus, “[t]his step and its subordinate steps are a fundamental part
of exchanging and resolving financial obligations based on probabilities.”
Id.
Contrary to Appellant’s characterization, our Decision made no “tacit
admission” that the steps are more than exchanging and resolving financial
obligations based on probabilities. Rather, in our Decision we further noted
the limitations also are directed to “managing personal behavior” by
awarding a secondary game and selection of theming based on the user’s
past play. Id. at 12‒13.
Appellant’s arguments on rehearing simply reiterate arguments
presented in its briefs and at oral hearing. We considered these arguments in
reaching our Decision. Specifically, we understood that step (f) introduces a
secondary game that progresses based on events occurring during play of a
primary game. Dec. 12. Appellant has not pointed out any aspect of
Appellant’s arguments that we misapprehended or overlooked as to step (f)
in our Decision.
Step (g)
As to step (g), Appellant argues that “[d]etermining which video
segment to play based on the location of the secondary game object upon a
second triggering event that happens during the play of the primary game
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can hardly be considered a fundamental economic practice like ‘mitigating
settlement risk’ or ‘hedging risk.’” Request 6.
Appellant argues that the Board “tacitly admitted as much” by finding
that even if step (g) goes beyond exchanging and resolving financial
obligations based on probabilities, the recited limitations pertain to
managing personal behavior. Id. (citing Decision 13). Appellant argues that
this alternative finding by the Board also is erroneous because “step (g) has
nothing to do with ‘managing’ the player;” it pertains to “how the gaming
system software is designed and constructed.” Id.
Appellant also takes issue with the Board’s finding that step (g)
recites “merely ‘rules’ for how to play the game.” Request 6. Appellant
argues that “[t]he specificity in the claim is directed to how the gaming
system is structured and functions, not on any rules that the player has to
follow.” Id.
In the Decision, we found that step (g), including substeps (A) and
(B), “amounts to instructions for determining a particular award for the
secondary game, i.e., the award of display of a video segment, based on play
of the primary game.” Dec. 13 (discussing steps as described in Spec. ¶ 59).
Based on the description provided in the Specification, we determined that
“[t]his step and its subordinate steps are merely rules of conducting the
wagering game and how awards are provided to the user based on the user’s
play” and, thus, “[t]his step and its subordinate steps are a fundamental part
of exchanging and resolving financial obligations based on probabilities.”
Id.
Contrary to Appellant’s characterization, our Decision made no “tacit
admission” that the steps are more than exchanging and resolving financial
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obligations based on probabilities. Rather, in our Decision we further noted
the limitations also are directed to “managing personal behavior” by
awarding a video segment for play of a secondary game so as to keep the
player interested in playing the game. Id.
Appellant’s arguments on rehearing simply reiterate arguments
presented in its briefs and at oral hearing. We considered these arguments in
reaching our Decision. Specifically, we understood that step (g) determines
which video segment to play (an award) based on certain conditions recited
in the claim. Dec. 13. Appellant has not pointed out any aspect of
Appellant’s arguments that we misapprehended or overlooked as to step (g)
in our Decision.
Step 2A, Prong Two
Appellant argues that because the Board misapprehended steps (f) and
(g) of claim 1, the Board further erred by not considering these steps in its
analysis of whether claim 1 recites additional elements that integrate the
alleged abstract idea into a practical application. Request 7. Appellant
argues that steps (f) and (g) integrate the wagering game into a practical
application that is “a special-purpose gaming system/machine configured to
operate in a very particular manner.” Id. As discussed above, we do not
find error in our determination, discussed above under Step 2A, Prong One,
that the claimed subject matter of steps (f) and (g), when considered
individually and as a whole, recite a judicial exception. See also Dec. 14‒15
(considered the claimed steps individually and in combination).
Appellant argues that the Board misapprehended Appellant’s
argument. Request 8‒9. Specifically, Appellant argues that the Board did
not understand Appellant’s reliance on the specificity of steps (f) and (g).
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Id. For instance, Appellant asserts that the Board misapprehended its
argument distinguishing the claimed subject matter from the claims found
patent eligible in Smith.4 Id. at 9. Appellant argues “that the gaming system
in claim 1 is analogous to a new, unique and unconventional deck of cards
that the Federal Circuit said would not be abstract.” Id.
Rather than misapprehend or overlook this asserted distinction, we
considered and specifically addressed this argument on pages 18‒20 of our
Decision and concluded:
Appellant’s argument that the combination of its specific
rules for conducting a wagering game on a general-purpose
computer creates a special purpose computer that amounts to a
practical application of the abstract idea misses the mark.
Appellant is asking us to ignore the holding of Smith. In Smith,
the court did not find that the combination of the new rules for
playing a game with a conventional deck of cards creates a
special purpose deck of cards. Likewise, in this case, Appellant
has not imposed meaningful limits on the rules for playing a
game simply by programming a general-purpose computer to
perform them.
Dec. 20.
Appellant’s arguments in rehearing reiterate arguments presented in
the briefs and at oral argument. As shown from the excerpt of our Decision
provided above, we understood Appellant’s arguments in these pleadings but
disagreed with them. Appellant has not persuaded us that we
misapprehended these arguments.
Appellant also argues that the Board misapprehended Appellant’s
focus in the Supplemental Appeal Brief and at oral hearing on other aspects
of claim 1 as an abandonment of previous arguments made in its earlier

4 In re Smith, 815 F.3d 816, 817–18 (Fed. Cir. 2016).
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briefs about the physical elements of the claim. Request 9‒10. Appellant
argues that just because it chose not to emphasize these physical components
at the hearing does not mean that it abandoned the argument. Id. at 10.
At the oral hearing, Appellant was asked to clarify its position on
appeal, and Appellant responded that the basis of its argument for patent
eligibility of the claimed subject matter was not based on the claimed
“physical components” of “an acceptor or an input or an output device”:
MS. HORNER: So you’re not contesting -- I understood
your argument to say that this had to be, because of the way the
claim was written, it had to be performed on a I’ll call it a
dedicated gaming machine because there’s an acceptor. So are
you changing that? Are you conceding that the examiner’s
position, this could be done with a general purpose computer
and a scanner is a correct interpretation of the claim language?
MR. GANNON: I think that part of it using a, you know,
an acceptor or an input or an output device, those physical
components, those were added to the claim, but that’s not the
basis of the argument.
The basis of the argument is what’s new, again, is the
new 52 card deck. It’s the new software carried out -- the new
system carried out in the software is our argument on step 2.
Tr. 10:17‒11:8 (emphasis added). Appellant’s belated attempt to
characterize this statement as something other than a shift in its argument
away from reliance on components of an asserted dedicated gaming machine
is disingenuous.
Even if we treat these arguments as not conceded, we agree with the
Examiner’s claim construction that the “physical components” are broadly
recited to encompass a general purpose computer, and are not limited to a
dedicated gaming machine. The basis for this claim construction is set forth
in detail on pages 7‒8 and 13–15 of the Examiner’s Answer. See also Dec.
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16‒18 (adopting the Examiner’s interpretation of the claim language as
reading on a general-purpose computer, and determining, alternatively, that
these components are not adequate to impose a meaningful limit on the
judicial exception).
CONCLUSION
For the reasons provided above, Appellant’s Request for Rehearing is
denied.
DECISION SUMMARY
Final Outcome of Decision on Rehearing
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Denied Granted
1‒20 101 Patent ineligible
subject matter
1‒20
Final Outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1‒20 101 Patent ineligible
subject matter
1‒20
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).
DENIED