Andreas Etelk¿zi et al.

Patent Trials and Appeals Board

Jul 30, 2020

15483722 - (D) (P.T.A.B. Jul. 30, 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.
15/483,722 04/10/2017 Andreas L Etelközi ETE-P-2 5316
49578 7590 07/30/2020
SIMMONS PATENTS
P.O. BOX 1560
LENOIR, NC 28645
EXAMINER
HULL, JAMES B
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
07/30/2020 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 ANDREAS L. ETELKÖZI and DIANE C. ETELKÖZI
Appeal 2019-006529
Application 15/483,722
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. See Final Act. 1.2 We have
jurisdiction under 35 U.S.C. § 6(b).

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 Andreas L. Etelközi.
Appeal Br. 3.
2 Appellant states that “[c]laim 17 has been canceled” and in the Claims
Appendix of the Appeal Brief, claim 17 is indicated as having been
canceled. Appeal Br. 3, 20. However, the last entered amendment indicates
that claim 17 was added and the prosecution history does not appear to show
that claim 17 has been canceled. See Amendment filed Nov. 21, 2017.
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We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a method and apparatus for increasing a
person’s knowledge in a particular field using an electronic word based
game. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An electronic based gaming system for providing an
entertaining environment for enhancing a person’s knowledge in
a particular area, such system comprising:
a first computing device configured to communicate with
a plurality of slave computing devices over at least one of a wide
area network and a local area network;
wherein said first computing device is configured for
generating display data and transmitting said display data to said
plurality of slave computing devices, said display data
comprising information necessary for each of said plurality of
slave computing devices to generate at least part of a display
image needed to play and document game status, said display
data including board data defining a game board defining a
playing area comprising a plurality of adjacent cells with each
cell defining a cell-perimeter;
wherein said first computing device is configured to
maintain a plurality of topic specific dictionaries comprising
character images used to form words wherein each topic specific
dictionary contains a collection of said words associated with
its respective topic;
wherein said first computing device is further configured
to dynamically generate a topic specific dictionary using an
information source in communication with said first computing
device in response to criteria defined by a player;
wherein said first computing device is further configured
to maintain a list of players that are allowed access to the gaming
system;
wherein said first computing device is further configured
to associate at least one of said plurality of topic specific
dictionaries to each player;
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wherein said first computing device further maintains a set
of game parameters including a set of rules for playing the game
and a list of game ending events;
wherein said first computing device maintains a collective
dictionary, comprising at least 95% of all said words defined in
the topic specific dictionaries associated with a player;
a game-tile-set generated by said first computing device
and comprising a plurality of tiles wherein at least one outer
surface of said game tile defines tile data wherein said tile data
includes a character image needed to form at least part of a word;
wherein said first computing device is configured to
determine the frequency of the character images in said
collective dictionary and generate said game-tile-set where the
frequency of each character image in such game-tile-set is
reflective of its respective frequency in said collective dictionary;
wherein said first computing device is further configured
to randomly assign to each player a predefined number of tiles
from said game-tile-set; and
wherein said first computing device is configured to
electronically place game tiles on said game board in response to
user input to form words according to said rules and document
each player’s accumulated points until a game ending event has
been detected.
REJECTIONS
Claims 13 and 14 are rejected under 35 U.S.C. § 112 (pre-AIA),
second paragraph, as being indefinite. Final Act. 2.
Claims 1–20 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to a judicial exception (i.e., a law of nature, a natural
phenomenon, or an abstract idea) without significantly more. Final Act. 2.
OPINION
Indefiniteness
The Examiner finds that the terms “the step of” and “the steps of”
recited in claims 13 and 14, respectively, lack antecedent basis. Final Act. 2.
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Appellant asserts that “amendments to claims 13 and 14 have been requested
to correct matters of form as consistent with the Examiner’s suggestions
presented in the final office action.” Appeal Br. 8.3
As this rejection is not contested, we summarily affirm the rejection.
See In re Berger, 279 F.3d 975 (Fed. Cir. 2002) (Affirming the Board’s
affirmance of an uncontested rejection, holding that the appellant had
waived the right to contest the rejection by not presenting arguments on
appeal to the Board); Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008)
(“the applicant can waive appeal of a ground of rejection”).

Eligibility
Principles of Law
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) (internal quotation marks and 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. See Alice, 573 U.S. 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.”
Id. at 219 (“On their face, the claims before us are drawn to the concept of

3 The Examiner correctly points out that no such amendments have been
filed. Ans. 5.
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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
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 182 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))).
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 (internal 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].’” Id. (alteration in the 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.
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In January of 2019, the PTO published revised guidance on the
application of § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter “Memorandum”).
Step 2A of that guidance involves determining whether the claim recites:
(1) 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) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) §§ 2106.05(a)–(c), (e)–(h) (9th Ed., Rev.
08.2017, 2018)).
If a claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application, Step 2B of that guidance involved
determining whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is 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 Memorandum.

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Analysis
Claim Grouping
The claims are argued as a group for which we select claim 1 as
representative under 37 C.F.R. § 41.37(c)(1)(iv).

Statutory Category
Claim 1 recites “An electronic based gaming system.” A large portion
of Appellant’s arguments appear to be devoted to asserting the § 101 inquiry
ends there because the claim is directed to a “system” comprising a “topic
specific dictionary” generator “that may be stored on a central computer or a
remote computer such as a smartphone” and includes “dynamic algorithms
that can respond to user input.” Appeal Br. 10–12. However, our reviewing
court has made clear “the basic character of a process claim drawn to an
abstract idea is not changed by claiming only its performance by computers,
or by claiming the process embodied in program instructions on a computer
readable medium.” See CyberSource Corp v. Retail Decisions, Inc. 654 F.3d
1366, 1375–76 (Fed. Cir. 2011) (citing In re Abele, 684 F.2d 902 (CCPA
1982)).4 Other than the basic componentry recited that can be found in
nearly any electronic based gaming system, including “a first computing
device configured to communicate with a plurality of slave computing

4 Granted that independent claim 1 recites a “system,” claim 1 nonetheless
recites steps that are carried out by the system. We note that those recited
steps are similar to the recited steps of independent claim 11, which recites a
“method.” See also Clarilogic v. Formfree Holdings, 681 Fed. Appx. 950,
954 (Fed Cir. 2017) (“merely reciting the use of a generic computer or
adding the words ‘apply it with a computer’ cannot convert a patent-
ineligible abstract idea into a patent-eligible invention” (referencing Alice,
573 U.S. at 222)).
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devices over at least one of a wide area network and a local area network,”
claim 1 predominantly recites the acts of each of those elements, particularly
what the “first computing device,” performs. “[T]he Supreme Court has
explained, the form of the claims should not trump basic issues of
patentability. See Flook, 437 U.S. at 593 (advising against a rigid reading of
§ 101 that ‘would make the determination of patentable subject matter
depend simply on the draftsman’s art’); see also Mayo, 132 S. Ct. at 1294.”
Bancorp Servs., L.L.C. v Sun Life Assurance Co. of Can.(U.S.), 687 F.3d
1266, 1277 (Fed Cir, 2012). In light of its broad and functionally-defined
nature, holding claim 1 necessarily passes muster under § 101 simply
because it is a system claim would “exalt form over substance.” It is noted
that Appellant does not appear to regard this distinction in the styling of the
claim preamble as particularly profound, as Appellant relies only on the
arguments presented for alleged system claim 1 (or system claim 15) but
does not address claim 11, which is unequivocally directed to a method.

Recitation of Judicial Exception
The Examiner reasonably determined that:
(1) claim 1 is “directed to rules for organizing game play” and recites
the steps of “providing information necessary for playing a game . . . [,]
defining a game board . . ., dynamically generating and maintaining a
plurality of dictionaries including topic specific dictionaries . . ., associating
each dictionary to each player, maintaining a set of rules for how to play the
game . . ., [and] generating a game-tile-set.” (Final Act. 2–3);
(2) the rules of organizing game play recited in claim 1 “consist solely
of steps capable of being performed by human analog (i.e., which can be
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carried out mentally, or alternatively by a human using pen and paper[)]”
(id. at 3, citing Planet Bingo5); and
(3) “the claimed steps are akin to the rules for conducting a wagering
game[,]” which is “directed to an abstract idea” (id. at 4, citing In re Smith6).
“[Appellant] respectfully traverse[s] the ‘abstract idea’ rejection” and
“[Appellant] further submits the claims are not direct[ed] to a judicial
exception ending the abstract idea analysis.” Appeal Br. 9. However,
Appellant does not direct our attention to any specific limitations that
supposedly fall outside the judicial exception realm other than limitations
discussed above concerning a statutory category. Id. at 10–12. Mental
processes involve the use of human observation, evaluation, judgment (e.g.,
“evaluate” and “determine” steps). See In re Prater 415 F. 2d 1393, 1402 n.
22 (CCPA 1969). “[M]ental processes . . . are not patentable, as they are the
basic tools of scientific and technological work.” Gottschalk, 409 U.S. at 67
(quoted with approval in Mayo, 566 U.S. at 71). Receiving wagers,
increasing credit, conducting a game according to certain rules, and
determining changes to the credit based on the outcome under those rules,
are fundamental economic practices. See, e.g., In re Smith, 815 F.3d at 818–
19 (describing a new set of rules for conducting a wagering game as a
“fundamental economic practice”); MPEP § 2106.04(a)(2).
The incidental use of “a first computing device” does not make a
claim otherwise directed to a process that “can be performed in the human
mind, or by a human using a pen and paper” patent eligible. CyberSource
Corp., 654 F.3d at 1372.

5 Planet Bingo, LLC v. VKGS LLC, 576 F. App’x. 1005 (Fed. Cir. 2014).
6 In re Smith, 815 F.3d 816 (Fed. Cir. 2016).
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Practical Application
Appellant argues patent eligibility largely by repeating claim language
with little supporting analysis. Appeal Br. 9–11. We are not apprised of how
the limitations Appellant identifies impose any meaningful limits on the
abstract ideas themselves. The absence of any claim recitations that
specifically indicate how, for example, “a computer [is] designed to make . .
. learning ‘fun’ [by] using hardware, software, and computer code that
executes dynamic algorithms . . . to provide a unique learning experience
tailored to each user” (Appeal Br. 11), raises serious preemption concerns.
Contrary to Appellant’s argument, the claims would preempt nearly any and
all techniques for carrying out these steps without contributing any particular
structure or method to the state of the art. This includes both mental
techniques and physical, technological ones. Such a monopoly is
inconsistent with the basic quid pro quo that is the heart of the patent grant.
Further, the recitation of the “first computing device” coupled with the steps
reiterated above, equates to reciting the abstract idea and applying it. See
MPEP 2106.05(f) (“As explained by the Supreme Court, in order to
transform a judicial exception into a patent-eligible application, the
additional element or combination of elements must do ‘more than simply
stat[e] the [judicial exception] while adding the words ‘apply it’” (quoting
Alice, 573 U.S. at 222–26) (alteration in original). Thus, the claimed subject
matter is not limited in some meaningful way so as to recite a practical
application.

Well-Understood, Routine, Conventional Activity
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In the Final Office Action, the Examiner asserts that “the claimed
additional elements are interpreted as a recitation of generic computer
components.” Final Act. 4. In the Answer, the Examiner states that
using a computer/smartphone to store information for later
retrieval by a user is a basic computer function, which again does
not in itself improve the functionality of the computer or another
technology, but is rather a well-known, routine and conventional
function, as evidenced by Appellant’s own disclosure describing
the invention as performed on a general purpose device (pg. 14,
lines 4–9).
Ans. 6.
Thus, the Examiner correctly found that the recited use of the generic
componentry, typically associated with any electronic based gaming system,
both individually and as an ordered combination, relates only to subject
matter that is well-understood, routine and conventional. We do not find
within Appellant’s briefing any arguments that inform or apprise us of error
in the Examiner’s analysis quoted above.

Conclusion
We have considered all of Appellant’s arguments in support of the
patent eligibility of claim 1, but find them unpersuasive. Accordingly, we
sustain the Examiner’s rejection of claims 1–20 under 35 U.S.C. § 101.
CONCLUSION
The Examiner’s rejection is AFFIRMED.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
13, 14 112, second
paragraph
Indefiniteness 13, 14
1–20 101 Eligibility 1–20
Overall
Outcome
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).
AFFIRMED