Alexander Stern

Patent Trials and Appeals Board

Dec 9, 2019

13936197 - (D) (P.T.A.B. Dec. 9, 2019)

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.
13/936,197 07/07/2013 Alexander Stern 1669
104929 7590 12/09/2019
Alexander Stern
74 Weizman Blvd., Ap.4
Netanya, 42253
ISRAEL
EXAMINER
PIERCE, WILLIAM M
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
12/09/2019 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 ALEXANDER STERN

Appeal 2018-000599
Application 13/936,197
Technology Center 3700
____________

Before BRUCE T. WIEDER, KENNETH G. SCHOPFER, and
MATTHEW S. MEYERS, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 2, 29–47, and 55–58. 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 Alexander
Stern. Appeal Br. 2.
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BACKGROUND
The Specification discloses that the field of the invention “belongs
generally to lotto games, and more particularly to lotto games allowing [a]
player to choose bet combinations and sequences.” Spec. 1.

ILLUSTRATIVE CLAIM
Independent claim 22 is illustrative of the appealed claims and recites
(with bracketed material and certain formatting added):
2. A non-transitory computer readable storage medium with
an executable program stored thereon, wherein said program
comprises computer-based tools for playing lotto games, said
tools comprising:
[a] sets of betting elements of different types comprising
main and auxiliary sets of said betting elements, each type
comprises single betting elements and sub-elements of at least
two kinds, forming said single betting elements;
[b] tables for putting betting elements at the beginning and
during the games constituting the present method and tables
representing random events being created in these games, which
are used for writing down results of these random events;
[c] tables for making and writing down bets, representing
different kinds of bets and comprising tables being used in a
casino style game and tables being used in a lottery;
[d] virtual tokens of two kinds - with numbers and without
numbers and additional indicating tools, such as “X”;
[e] combo boxes for writing down results of the games and
for making and writing down bets;
[f] lists of symbols, letters and numbers, which are
distinguishing marks of said betting elements of each type, being
used by said program for designating columns and rows of said
tables and spaces of said combo boxes representing said sub-

2 We refer to the claims as amended on April 29, 2016.
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elements of each of said types, and for writing down bets made
by players and said results of the games;
said tables and combo boxes are selected according to the
type of betting elements from the following list:
- sets of numbered and non-numbered tables having
a number of spaces according to the number of single
betting elements of each type, arranged in rows and
columns according to numbers of sub-elements, such that
each single betting element is represented by a particular
space of each of said tables as a combination of two sub-
elements;
- sets of tables having a number of columns or rows
according to the number of sub-elements of the first kind
with numbered and non-numbered rows or columns
respectively and with one row or column;
- sets of tables having a number of columns or rows
according to the number of sub-elements of the second
kind with numbered and non-numbered rows or columns
respectively and with one row or column;
- sets of tables having equal numbers of columns or
rows representing sub-elements and numbered rows or
columns respectively;
- sets of tables having a number of spaces according
to the number of single betting elements, arranged in rows
and columns according to numbers of sub-elements, with
columns representing the first sub-element and numbered
rows and with rows representing the second sub-element
and numbered columns, said tables are used with auxiliary
sets of betting elements;
- sets of numbered and non-numbered combo boxes
showing lists of sub-elements;
- sets of numbered and non-numbered pairs of
combo boxes, one combo box of each pair shows a list of
the first sub-element and the other shows a list of the
second sub-element, such that each single betting element
is represented by a pair of combo boxes as a combination
of two sub-elements.
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Appeal Br. 76–78.3
REJECTIONS4
1. The Examiner provisionally rejects claims 2, 29–47, and 55–58 on the
ground of nonstatutory double patenting as unpatentable over claims 37–
58 of U.S. Patent Application No. 12/934,291.
2. The Examiner rejects claims 2, 29–47, and 55–58 under 35 U.S.C.
§ 112(a) as failing to comply with the written description requirement.
3. The Examiner rejects claims 2, 29–47, and 55–58 under 35 U.S.C.
§ 112(a) as failing to comply with the enablement requirement.
4. The Examiner rejects claims 2, 29–47, and 55–58 under 35 U.S.C.
§ 112(b) as indefinite.
5. The Examiner rejects claims 2, 29–47, and 55–58 under 35 U.S.C. § 101
as claiming ineligible subject matter.
6. The Examiner rejects claims 2, 29–47, and 55–58 under 35 U.S.C.
§ 102(a)(1) as anticipated by Dargue.5
7. The Examiner rejects claims 2, 29–47, and 55–58 under 35 U.S.C. § 103
as unpatentable over Dargue.
DISCUSSION
Double Patenting
We do not sustain this rejection because U.S. Patent Application No.
12/934,291 has been abandoned.

3 We reference the Supplemental Appeal Brief’s listing of claims filed on
April 30, 2017.
4 To the extent Appellant addresses issues regarding the Examiner’s
restriction requirement or objections to the Specification, we note that those
are petitionable issues that are not properly before us on appeal.
5 Dargue, US 2007/0052172 A1, pub. Mar. 8, 2007.
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Written Description
The Examiner finds that the claims lacks written description support
in the Specification as originally filed because they “recite that the processor
is programmed to allow a player to write and place wagers.” Final Act. 7.
The Examiner finds that “the structure used for writing down bets, picking
out betting elements, writing down random sequences, picking out and
returning single betting elements and comparing results for example cannot
be determined from the specification.” Id. at 8.
Whether a specification complies with the written description
requirement is a question of fact and is assessed on a case-by-case basis.
See, e.g., Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed.
Cir. 2000) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed.
Cir. 1991)). The disclosure, as originally filed, need not literally describe
the claimed subject matter (i.e., using the same terms or in haec verba) in
order to satisfy the written description requirement. But the specification
must convey with reasonable clarity to those skilled in the art that, as of the
filing date, Appellant was in possession of the claimed invention. See id.
As an initial matter, we note that the claims do not recite a processor
as the Examiner indicates. Further, the Examiner does not precisely indicate
the language in the claim that is problematic, instead referring generally to
programming that allows a player to write and place wagers. To the extent
the claims refer to placing and writing wagers, we agree with Appellant that
the Specification reasonably discloses a computer that is programmed to
perform the functions disclosed. Appeal Br. 54–55. The Specification
discloses, inter alia, a “kit of tools for playing lotto games” that includes
“tokens and tables [] used by a player to make one or more bets in a casino
and by a dealer or lottery operator to write down the results of the game by
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putting said tokens on appropriate spaces.” Spec. 8.6 The Specification
further discloses that the kit of tools includes a “computer version of the
method to make” bets and that the computer version includes a “program to
write down” aspects of the betting games. Id. at 12–13. Further, the
Specification discloses that the methods disclosed “can be implemented as
lotteries, as casino games or as computer games.” Id. at 14. We also note
that the Examiner acknowledges that “programming a computer to display
indicia as called for by claim 2 is considered disclosed.” Final Act. 7.
We find that this evidence reasonably conveys to one of ordinary skill
in the art that the inventor was in possession of the claimed invention at the
time the Specification was filed. We disagree with the Examiner that further
disclosure is needed regarding the disclosed software to show that the
inventors were in possession of the claimed invention to the extent the
claims require writing down bets, picking betting elements, writing down
number sequences, and comparing results. See Final Act. 8. Rather, as
noted by Appellant, these elements represent basic computer functions that
do not require further explanation to show that the inventors were in
possession of the invention as claimed. See Appeal Br. 58.
Accordingly, we do not sustain this rejection.
Enablement
The Examiner determines that claim 2 “contains subject matter [that]
was not described in the [S]pecification in such a way as to enable one
skilled in the art to which it pertains, or with which it is most nearly
connected, to make and/or use the invention.” Final Act. 8. More
specifically, the Examiner finds that the Specification “fails to show any

6 “Spec.” refers to the Specification as originally filed on July 7, 2013.
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algorithms, disclose which features are controlled by a computer or which
tools are used to interface with a user and how the computer is to implement
each feature of the claim.” Id. The Examiner finds that “one skilled in the
art would have to guess that tables either exist entirely in computer memory,
displayed electronically or printed.” Id. The Examiner indicates that the
claims require specific functions that are not enabled by the disclosure of a
general purpose computer. Id. at 9.
The test for compliance with the enablement requirement is whether
the disclosure, as filed, is sufficiently complete to enable one of ordinary
skill in the art to make and use the claimed invention without undue
experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). The
Federal Circuit has adopted a set of eight factors to be considered when
evaluating whether a disclosure would require undue experimentation. Id.
The Examiner’s analysis must consider all the evidence related to each of
these factors, and any conclusion regarding enablement must be based on the
evidence as a whole. Id.
We find reversible error in this rejection because the rejection does
not adequately consider the factors delineated by the Federal Circuit in order
to determine whether the disclosure would require undue experimentation.
Rather, the rejection only raises general allegations that the Specification
does not specifically disclose which of the claimed features are controlled by
a computer and that the claim requires specific functions that are not enabled
by the disclosure of a general purpose computer without sufficient
explanation regarding whether undue experimentation would be required to
make or use the claimed invention. Accordingly, we do not sustain this
rejection.
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Indefiniteness
The Examiner finds that the claims are indefinite because they “are
not clearly directed to a single class of invention.” Final Act. 9.
Specifically, the Examiner finds that the claims “recite both an apparatus in
a combination of a display, input and processor and a process by which they
are to be used to play a game.” Id. We agree with and will sustain this
rejection to the extent the claim recites “tables for putting betting elements at
the beginning and during the games constituting the present method.”
The claim is unclear insofar as it refers to “the present method,”
which lacks antecedent basis. Although it may be possible to define “a
present method” in a claim, no such basis is provided in claim 2. Here, the
recitation of “the present method” might be interpreted to mean that the
claim as a whole, or some part of the claim, is considered a method, and yet,
the claim is directed to “[a] non-transitory computer readable storage
medium,” which is a device. Thus, the reference to “the present method”
may indicate that the claim includes multiple classes of invention, as found
by the Examiner. On the other hand, the reference to “the present method”
may refer to some other method that is not defined by the claim itself.
Either way, one of ordinary skill in the art cannot be certain of the full
scope of the claim because it includes this language. Because this limitation
is amenable to several plausible claim constructions, the USPTO is justified
in requiring the Appellant to more precisely define the metes and bounds of
the claimed invention. See Ex parte Miyazaki, 89 USPQ2d 1207, 1211
(BPAI 2008) (Precedential).
The Examiner also finds that claim 2 is indefinite to the extent it
recites “such as an ‘X’.” Final Act. 10. Specifically, the Examiner finds
that “one cannot determine what other indicating tools would be included.
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Things that resemble an ‘X’ are indefinite and subjective such that one
cannot determine the metes and bounds for the claim.” Id. However, we
agree with Appellant that one of ordinary skill in the art would understand
that placing tokens, as required by the claim, means marking appropriate
spaces on a table. Appeal Br. 60.
Nonetheless, we agree with the Examiner that the claim language
“virtual tokens of two kinds – with numbers and without numbers and
additional indicating tools, such as ‘X’” is indefinite because it is amenable
to multiple plausible constructions. Specifically, as presently worded one
might interpret this language to require that one kind of virtual token is
“with numbers and without numbers” and the other kind is an “additional
indicating tool[].” Alternatively, one might interpret the claim to require the
selection of any two kinds of tokens from the list including tokens with
numbers, tokens without numbers, or tokens of any “additional indicating”
type. Thus, as presently worded, one of ordinary skill in the art cannot be
certain as to whether the claim reads on any specific set of two tokens.
Accordingly, we sustain the rejection of claim 2 as indefinite based on this
claim language.
Finally, the Examiner indicates that claim 2 is indefinite because it
recites “a casino style game,” which “is subjective to those skilled in the
art.” Final Act. 15. The Examiner finds that this “term is used to further
limit the ‘tables being used’ . . . as being ‘casino style’ [which] suggests that
the term is intending to further limit the tables to some structure and style of
game in a casino which has no definite standard.” Ans. 19. We disagree
with the Examiner. One of ordinary skill in the art would understand this
term according to its plain meaning, which is, as the Examiner states the
“style of game in a casino” or of the type of gambling games typically found
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in a casino. Without further explanation from the Examiner, we are not
persuaded that this term is so subjective that one of ordinary skill in the art
would not understand the metes and bounds of the claim.
Based on the foregoing, we sustain the rejection of claim 2 as
indefinite. We also sustain the rejection of claims 29–47 and 55–58 on this
ground based on their dependency from claim 2.
Means Plus Function
The Examiner also determines that claim 2 is indefinite because it
recites means plus function elements without sufficiently setting forth
corresponding structure in the Specification. Specifically, the Examiner
finds that claim 2 “uses a generic placeholder of a processor coupled with
functional language without reciting sufficient structure to achieve the
function.” Final Act. 11. The Examiner finds that the language “tools for”
and “a program for” are placeholders such that “there is considered a
sufficient presumption that means plus function limitation is being relied
upon.” Id.
We are persuaded of reversible error by Appellant’s arguments. As
noted above, the Examiner appears to be incorrect in determining that the
claim recites a processor. Further, to the extent the claim recites “tools for
playing lotto games,” we disagree that there is a sufficient presumption that
the claim is using means plus function language. Specifically, we agree with
Appellant that the claim itself provides sufficient structure to achieve this
function. See Appeal Br. 62. The claim provides the tables and combo
boxes that are the claimed “tools for playing lotto games” including sets of
betting elements, tables for putting betting elements; tables for making and
writing down bets, virtual tokens, combo boxes, and lists of symbols, letters,
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and numbers. See Appeal Br. 76–77. Further, the claim does not
specifically recite “a program for” as the Examiner indicates.
Based on the foregoing, we do not interpret the claims as reciting
means plus function language under 35 U.S.C. § 112(f).
Subject Matter Eligibility
Standard for Patent Eligibility
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014) (citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice,
573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
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determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 183 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an inventive concept
sufficient to transform the claimed abstract idea into a patent-eligible
application.” Alice, 573 U.S. at 221 (citation omitted). “A claim that recites
an abstract idea must include ‘additional features’ to ensure ‘that the [claim]
is more than a drafting effort designed to monopolize the [abstract idea].’”
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Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely
requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
The United States Patent and Trademark Office (“USPTO”) recently
published revised guidance on the application of the Alice and Mayo
framework. USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Under that
guidance, we first look to whether the claim recites:
(1) (see Revised Guidance Step 2A – Prong One) any judicial
exceptions, including certain groupings of abstract ideas (i.e.,
mathematical concepts, certain methods of organizing human activity
such as a fundamental economic practice, or mental processes); and
(2) (see Revised Guidance Step 2A – Prong Two) additional elements
that integrate the judicial exception into a practical application7 (see
MPEP §§ 2106.05(a)–(c), (e)–(h) (9th ed. 2019).8
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim
(see Revised Guidance Step 2B):

7 “A claim that integrates a judicial exception into a practical application
will apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Revised
Guidance at 54.
8. We acknowledge that some of these considerations could instead be
evaluated under Step 2 of Alice (Step 2B of Office guidance). In the interest
of maintaining consistent treatment within the Office, we evaluate them
under Step 1 of Alice (Step 2A of Office guidance). See USPTO’s
January 7, 2019 Revised Guidance, “2019 Revised Patent Subject Matter
Eligibility Guidance.”
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(3) adds a specific limitation beyond the judicial exception that are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Revised Guidance.
Analysis
With respect to this rejection, Appellant groups all claims together.
See Appeal Br. 27–50. We select claim 2 as representative of this group of
claims, and claims 29–47 and 55–58 will stand or fall with claim 2. See 37
C.F.R. 41.37(c)(1)(iv).
Step 2A, Prong One
The Examiner finds that claim 2 recites an abstract idea in the form of
rules for playing a game. Final Act. 16. The Examiner finds that the claims
are directed to nothing more than “indicia for playing a game” and that the
“indicia does not present a substrate having any new and non-obvious
functional relationship.” Id. at 15. The Examiner further finds that the
claims do not include a sufficient recitation of a machine or transformation
and the limitations “only amount to a change in position or location of the
article.” Id. at 16. The Examiner also finds that the claimed “computer
readable medium fails to render the underlying invention attempting to be
claimed patent eligible.” Id.
Claim 2 recites a computer readable storage medium including a
program with “tools for playing lotto games.” Appeal Br. 76. The claimed
tools include sets of betting elements, tables for putting betting elements;
tables for writing down results; tables for making and writing down bets;
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virtual tokens; combo boxes for writing down results and bets; and lists of
symbols for distinguishing betting elements. Id. The claim also includes a
list of the types of tables and combo boxes that may be used for a type of
betting element. Id. at 76–77. We agree with the Examiner that these
elements encompass indicia for playing a game and that “the indicia only
has meaning attributed to it by the rules for any game being played upon it.”
Final Act. 15. For example, the rules for playing a lotto game would include
providing tables to players on which bets may be placed and providing the
tools for indicating such bets. These rules for playing a lotto game are
substantially similar to the concept of “rules for conducting a wagering
game” in In re Smith, 815 F.3d at 818-19 (Fed. Cir. 2016). See also In re
Marco Guldenaar Holdings B.V., 911 F.3d 1157 (Fed. Cir. 2018) (holding
ineligible claims directed to a set of rules for playing a dice game). Thus,
we find that each of elements [a]-[f] in claim 2 recite rules for playing a
wagering game. Wagering is a commercial interaction, which is a method of
organizing human activity and, therefore, an abstract idea. See Revised
Guidance, 84 Fed. Reg. at 52.
We are not persuaded otherwise by Appellant’s argument that the
claims do include “a set of instructions how players should follow the rules
in order to play the games” and the claims are “neither directed to human
behavior nor interpersonal interactions.” Appeal Br. 35. First, we disagree
to the extent Appellant indicates that these are not rules for a human user to
follow. The fact that certain game rules may be processed by a computer
rather than a human does not make those rules any less abstract. Second, as
discussed above, we determine that the indicia created in the claim do
constitute the rules for playing the game, regardless of whether the claimed
rules are implemented using a computer. Third, we disagree that playing a
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wagering game does not represent a form of human interaction, as discussed
above.
Step 2A, Prong Two
Having determined that claim 2 recites a judicial exception, we next
consider whether there are additional elements in the claim that integrate the
judicial exception into a practical application. See Revised Guidance Step
2A–Prong Two. Here we look to see if, for example, (i) any additional
elements of the claims reflects an improvement in the functioning of a
computer or to another technological field, (ii) an application of the judicial
exception with, or by use of, a particular machine, (iii) a transformation or
reduction of a particular article to a different state or thing (iv) or a use of
the judicial exception in some other meaningful way beyond generally
linking the use of the judicial exception to a particular technological
environment. See Revised Guidance, 84 Fed. Reg. at 55; see also MPEP
§ 2106.05(a)–(c), (e)–(h).
Here, the Examiner determines that the claim does not include the
application of the abstract idea to a particular machine; the transformation of
an article to a different state or thing; and that the recitation of a computer
does not use the judicial exception beyond linking it to a technical
environment. See Final Act. 16–17, 19. Further, the Examiner finds that the
claim is “directed to the presentation and arrangement of the tables and their
indicia” and that the specific form of the tables and indicia are akin to the
arrangement of printed matter that “does not appear to carry any weight in
the consideration of patent eligible subject matter.” Id. at 17–18.
We agree with the Examiner. Beyond the rules of playing a game
recited in elements [a]–[f], the claim recites the use of a computer readable
storage medium with an executable program for implementing the rules for
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playing a lotto game and specific sets of tables and combo boxes for use
with betting elements. To the extent the claim requires the use of a
computer and a computer readable storage medium, the use of the computer
represents only a general link between the rules for playing a lotto game and
a particular technological environment. The Specification supports this
determination. The Specification refers only to a generic computer version
or computer implementation of the lotto games disclosed therein without
describing any particular machine or components for implementation.
Rather, the Specification discloses only that the “lotto games can be
implemented in a casino, for an entertainment program or on a computer.”
Spec. 26.
Thus, we find no indication in the Specification, nor does Appellant
direct us to any indication, that (1) these elements (a) require any specialized
computer hardware or other inventive computer components, i.e., a
particular machine (b) invoke any assertedly inventive programming; or (2)
that the claimed invention is implemented using other than generic computer
components to perform generic computer functions. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.”).
Further, to the extent the claim recites sets of tables and combo boxes,
we agree with the Examiner that this merely represents a form of printed
matter. Such printed matter generally falls outside the scope of patent-
eligible subject matter under § 101. Marco Guldenaar, 911 F.3d at 1161.
Here, we see no indication that the printed matter should be treated
otherwise, and we are not persuaded otherwise by Appellant’s arguments.
See Appeal Br. 39–48.
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Based on the foregoing, we determine that the claim does not include
additional elements reflecting an improvement in the functioning of a
computer or another technical field; the application of the abstract idea to a
particular machine; a transformation or reduction of a particular article; or
the use of the abstract idea in any meaningful way beyond merely linking it
to a computer and the environment of a dice game. As such, we determine
that the claim does not set forth a practical application of the abstract ideas
recited.
Thus, we determine that claim 2 is directed to an abstract idea, and as
discussed below, we are not persuaded otherwise by Appellant’s other
arguments.
Appellant argues that the steps of the claims cannot be implemented
without the apparatus recited. See Appeal Br. 29, 33–37. Appellant asserts
that because the computer readable medium is necessary to implement the
claim limitations, it imposes a meaningful limit on the claim and represents a
practical application. Id. at 30. Appellant also asserts that the indicia
provided in the claim cannot be used with other games. Id. We are not
persuaded. First, we fail to see why the recited limitations of the claim
require the use of computer readable medium. Rather, the claimed sets of
betting elements, tables, and combo boxes can be implemented without a
computer on paper under a broad, but reasonable interpretation.9 To the
extent the claim requires creating random number sequences, those too can

9 We are also not persuaded by Appellant’s assertion that “[i]f it is done by
hand, human mistakes will surely be made.” Appeal Br. 31. The “mere
automation of manual processes using generic computers does not” confer
patent eligibility. Credit Acceptance Corp. v. Westlake Servs., 859 F.3d
1044, 1055 (Fed. Cir. 2017).
Appeal 2018-000599
Application 13/936,197
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be created without the aid of a computer, such as with dice or a deck of
cards. Second, the fact that a computer might be required to implement
certain claim limitations does not necessarily indicate that the claim recites a
practical application. Rather, regarding the recitation of a computer in a
claim, the inquiry here focuses on whether any specialized or inventive
computer components or any inventive programming are required.
Step 2B
Turning to Step 2B of the Revised Guidance, we determine whether
the additional elements (1) add a specific limitation or combination of
limitations that is not well-understood, routine, and conventional activity in
the field, which is indicative that an inventive concept may be present or (2)
simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception, which is indicative that an inventive concept may not be present.
See Revised Guidance, 84 Fed. Reg. at 56. This step has been described “as
a search for an ‘“inventive concept”’ —i.e., an element or combination of
elements that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.’” Alice,
573 U.S. at 217–18 (citing Mayo, 566 U.S. at 72–73).
Here, the Examiner determines that the use of a computer or computer
program in the claim is generic and merely appends conventional steps at a
high level of generality to the abstract idea such that no inventive concept is
supplied. Final Act. 16–17. We agree and determine that the claim does not
include any limitation or a set of limitations that are not well-understood,
routine, or conventional. Rather, the claim merely relies on well-
understood, routine, and conventional functions in managing a set of rules
for a lotto game. Specifically, the claim merely sets forth indicia for playing
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a lotto game that are implemented using a computer and computer readable
storage medium, which are described in the claim and Specification at a high
level of generality. We see no indication in the claim or Specification that
the claim represents anything other than that which is well-understood,
routine, and conventional in the presentation and marking of tables for
wagering games. We make this determination both with respect to the claim
limitations individually and with respect to the claim limitations as an
ordered combination.
We are not persuaded otherwise by Appellant’s argument that the
claim is “not directed to a computer programmed to perform generic
computer functions.” Appeal Br. 33. Appellant asserts that the computer
used to implement the claim is a special purpose computer designed to
implement the specific tools claimed. Id. at 33–34. But Appellant does not
explain why the claimed tools require a special purpose computer and by
Appellant’s logic any computer running a new program would become a
special purpose computer. The relevant inquiry here is whether the claim
requires specific hardware or programming that transforms the basic nature
of the computer into something more than generic. For the reasons
discussed above, we see no indication that such hardware or programming is
present here. Rather, the claim only amounts to the mere application of the
recited abstract idea to a generic computer. See Alice, 573 U.S. at 223.
Determination Regarding Patent Eligibility
Based on the foregoing, we are not persuaded of error in the
Examiner’s rejection of independent claim 2. We are also not persuaded of
error in the rejection of the dependent claims for the same reasons.
Accordingly, we sustain this rejection.
Anticipation and Obviousness
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With respect to claim 2, the Examiner finds:
Dargue is considered to show a computer capable of playing lotto
games and displaying indicia according to the number of single
betting elements arranged in rows and columns according to sub-
elements such as the suits on the cards. Claim 2 is written
broadly in open language such that the prior art showing a single
arrangement of indicia in the claimed list is considered to meet
the claim.
Final Act. 20. The Examiner also finds that “[Dargue] shows a table and
combo boxes in his fig. 5 with virtual tokens such as an ‘X’ for putting
betting elements in a lotto game and for writing down bets made by
players.” Id.
We are persuaded of reversible error by Appellant’s argument that the
Examiner has not explained adequately why the tools recited in claim 2 are
not patentably distinct from the elements disclosed in Dargue. See Appeal
Br. 51. Claim 2 recites a computer program that includes “tools for playing
lotto games” including sets of betting elements; tables for putting betting
elements; tables for making and writing down bets; virtual tokens of two
kinds; combo boxes for writing down results; and lists of symbols. Appeal
Br. 2. The Examiner does not address these elements of the claim
individually, and we find that the Examiner’s general allegation that the
claim is written broadly and that Dargue’s computer is capable of playing
lotto games and displaying indicia is not sufficient to show that Dargue
anticipates the claim or otherwise renders it obvious. We note that the
Examiner indicates that certain elements of the claim are non-functional
descriptive material or recite intended uses, but the Examiner does not
precisely point to which limitations are considered as such in the context of
this rejection. And to the extent the Examiner refers to Dargue’s Figure 5,
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the Examiner does not explain adequately how that figure relates to each of
the claimed computer-based tools recited in the claim.
Accordingly, on the record before us, we do not sustain the
anticipation or obviousness rejection of claim 2. We also do not sustain the
anticipation or obviousness rejections of dependent claims 29–47 and 55–58.
CONCLUSION
We AFFIRM the rejections of claims 2, 29–47, and 55–58 under 35
U.S.C. § 101 and § 112(b). We REVERSE the remaining rejections.
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).

In summary:
Claims
Rejected
35 U .S.C. § Basis Affirmed Reversed
2, 29–47, 55–
58
Provisional
non-statutory
double
patenting
2, 29–47,
55–58
2, 29–47, 55–
58
112(a) Written
description
2, 29–47,
55–58
2, 29–47, 55–
58
112(a) Enablement 2, 29–47,
55–58
2, 29–47, 55–
58
112(b) Indefiniteness 2, 29–47,
55–58

2, 29–47, 55–
58
101 Eligibility 2, 29–47,
55–58

2, 29–47, 55–
58
102(a)(1) Dargue

2, 29–47,
55–58
2, 29–47, 55–
58
103 Dargue 2, 29–47,
55–58
Overall
Outcome
2, 29–47,
55–58

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AFFIRMED