Simon Butler et al.

Patent Trials and Appeals Board

Mar 9, 2020

14733407 - (R) (P.T.A.B. Mar. 9, 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.
14/733,407 06/08/2015 Simon Butler 286679 8299
23460 7590 03/09/2020
LEYDIG VOIT & MAYER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON AVENUE
CHICAGO, IL 60601-6731
EXAMINER
YEN, JASON TAHAI
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
03/09/2020 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte SIMON BUTLER, ALEX BURSTEIN, and NICK GREEN
________________

Appeal 2019-002761
Application 14/733,407
Technology Center 3700
________________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
BRETT C. MARTIN, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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STATEMENT OF THE CASE
Appellant1 filed a Request for Rehearing (“Req. Reh’g”) dated
February 6, 2020, of the Decision on Appeal mailed December 6, 2019
(“Decision”). This Decision affirmed the Examiner’s rejection of claims 1,
3–7, 11, 13, 14, and 16–21 (all the claims on appeal) under 35 U.S.C. § 101
because we agreed with the Examiner that the claimed invention was
“directed to non-statutory subject matter.” Final Act. 2; see also Decision
5–10. The Decision also reversed the rejections of these same claims under
35 U.S.C. § 102(a)(1) and 35 U.S.C. § 103. See Decision 10–12. Thus,
“Appellant’s Rehearing request is directed solely to the Section 101
rejection of Appellant’s claims (independent as well as dependent).” Req.
Reh’g 3.
Upon consideration of Appellant’s Request, we do not modify our
opinion.
A REQUEST FOR REHEARING
A request for rehearing “must state with particularity the points
believed to have been misapprehended or overlooked by the [Patent Trial
and Appeal Board, hereinafter “Board”].” See 37 C.F.R. § 41.52(a)(1). This
section also states that arguments not raised in the briefs before the Board
and evidence not previously relied upon in the briefs “are not permitted in
the request for rehearing except as permitted by paragraphs (a)(2) through
(a)(4) of this section.” In addition, a request for rehearing is not an
opportunity to express disagreement with a decision without setting forth

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 “Abacus
Solutions International IP B.V.” Appeal Br. 1.
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points believed to have been misapprehended or overlooked by the Board in
rendering its Decision. The proper course for an Appellant dissatisfied with
a Board decision is to seek judicial review, not to file a request for rehearing
to reargue issues that have already been decided. See 35 U.S.C. §§ 141, 145.
ANALYSIS
The first matter we interpret from Appellant’s Request as allegedly
being misapprehended or overlooked by the Board is Appellant’s assertion
that “[t]he current rejections under Section 101/Alice are based upon
comparisons to claims that are directed to games that are nothing at all like
Appellant’s claims.” Req. Reh’g 1. To be clear, Appellant’s claim 1 (the
claim selected for review, see Decision 5) recites, in the preamble, “an
electronic gaming arrangement operatively connectable to a random number
generator.” Appellant’s Specification provides additional guidance that the
recited gaming arrangement refers to “a system and parts thereof that are
arranged for providing a different type of lottery game.” Spec. 1:18–19.
Thus, as understood, Appellant’s contention above is that their lottery game
differs from “Smith’s2 ‘playing cards’ or Guldenaar’s3 ‘dice,” which were
addressed in the Decision. Decision 6 (the Decision also addressed Planet
Bingo’s4 “game of Bingo,” (Decision 6–7)). Indeed, Appellant is correct
that Smith, Guldenaar, and even Planet Bingo each pertain to a game
different from Appellant’s, but the reference to these earlier cases “does not
alter or invalidate the Examiner’s analogy” of their use to find that
Appellant’s claim pertains to non-statutory subject matter. Decision 6. We

2 In re Smith, 815 F.3d 816 (Fed. Cir. 2016).
3 In re Guldenaar, 911 F.3d 1157 (Fed. Cir. 2018).
4 Planet Bingo, LLC v. VKGS LLC, 576 Fed. App’x 1005 (Fed. Cir. 2014).
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do not change our agreement with the Examiner that Smith (and Guldenaar’s
description thereof), as well as the games described therein, are a proper
analogy to Appellant’s lottery game, and thus could be properly relied upon
for the guidance they contain. See Non-Final Act. 3–4, Decision 6–7.
Accordingly, Appellant’s above contention regarding a difference in the
games being addressed is not persuasive that the Board misapprehended or
overlooked this distinction when rendering its Decision.
Appellant next asserts, “none of the examples of unpatentable games
provides a technological improvement/enhancement over the existing art.”
Req. Reh’g 1; see also id. at Req. Reh’g 3–7. Fortunately, our reviewing
court has provided guidance as to the scope of a “technological
improvement” in the realm of a Section 101 analysis. For example, Finjan,
Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018) references an
earlier holding (i.e., Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016)) stating:
In Enfish, for instance, the court determined that claims related
to a database architecture that used a new, self-referential
logical table were non-abstract because they focused on “an
improvement to computer functionality itself, not on economic
or other tasks for which a computer is used in its ordinary
capacity.” Id. at 1336.
Finjan, 879 F.3d at 1304–5. Hence, our reviewing court distinguishes
between improvements that affect the “computer functionality itself” with
“economic or other tasks for which a computer is used in its ordinary
capacity.”
In the matter before us, Appellant contends that the “claimed
invention is directed to a technological improvement to (a practical
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application of) known ‘rules for playing a wagering game.’”5 Req. Reh’g 4.
Appellant does not explain how “rules for playing a wagering game” can be
properly equated to “computer functionality itself,” and are not, instead,
more properly directed to “economic or other tasks for which a computer is
used.” Finjan, 879 F.3d at 1305. In other words, Appellant’s attempt to
characterize claim 1 in terms of providing “a technological improvement” is
not persuasive in view of the guidance our reviewing court has supplied on
that point.
Appellant also “notes that, while not new, the evidentiary record does
not support a conclusion that a ‘random value generator’ is a conventional
and ordinary component -- at least in the context of a general purpose
computer.” Req. Reh’g 6. The Decision addressed this matter of whether or
not the recited “random number generator” is an additional element that
integrates the judicial exception into a practical application. See Decision 7–
8. The Decision referenced Appellant’s Specification where a description of
“random number generator server 150” was provided. Decision 7
(referencing Spec. 4:12–5:30). Such passage addresses this generator in the
following terms, “random number generator server 150 comprises a number
generator communication module 152 for communicating with the server
communication module” and “[t]he random number generator 150 further

5 Appellant further alleges, “Appellant’s claimed invention defines a
practical application of gaming rules that enables a single user input terminal
to support a virtually unlimited range of user-specified prize amounts” and
also, “[f]rom a technology prospective, Appellant’s claimed invention
provides a more efficient way (i.e. reducing a need for several distinct
gaming terminal interfaces to support a wide variety/range of winning
amounts) of presenting an odds-based payout gaming arrangement that
supports a wide range of payout amounts.” Req. Reh’g 5.
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comprises a random number microprocessor 154 as a randomizer module for
providing a random number.” Spec. 5:17–22. Based on this, the Board, in
its Decision, stated,
these additional elements are employed as generic tools merely
to perform the above steps. Thus, the claims do not apply, rely
on, or use these additionally recited elements in a manner that
imposes a meaningful limit on those steps.
Decision 7. Appellant is not persuasive of any error in this analysis, or that
such topic was misapprehended or overlooked by the Board in rendering its
Decision.
CONCLUSION
Appellant’s request for rehearing has been granted to the extent that
the board reconsidered its decision in light of the statements made in this
request, but is denied with respect to the board making any modification to
the decision.
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