David Colvin et al.

Patent Trials and Appeals Board

Aug 30, 2019

13788055 - (D) (P.T.A.B. Aug. 30, 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.
13/788,055 03/07/2013 David Colvin GAMA92PUSP4 7334
144762 7590 08/30/2019
BROOKS KUSHMAN P.C./Gaming Arts, Z4 Poker
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
EXAMINER
SKAARUP, JASON M
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
08/30/2019 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID COLVIN and ERIC D. COLVIN
____________

Appeal 2018-009242
Application 13/788,055
Technology Center 3700
____________

Before JENNIFER D. BAHR, EDWARD A. BROWN, and
WILLIAM A. CAPP, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 1–36 under 35 U.S.C. § 101 as directed to patent-
ineligible subject matter. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Gaming Arts, LLC (“Appellant”) is the Applicant and also identified as the
real party in interest. 37 C.F.R. § 1.46; Br. 1.
Appeal 2018-009242
Application 13/788,055

2
CLAIMED SUBJECT MATTER
Claims 1 and 19 are independent claims. Claim 19 illustrates the
claimed subject matter on appeal and is reproduced below with reference
letters added in brackets.
19. A method of providing a game of chance, said
method comprising:
[A] receiving a first physical item associated with a first
monetary value using a first input device of a first electronic
gaming machine;
[B] adding the first monetary value to a first credit balance
for a first player;
[C] receiving a first input from the first player to select a
first wager for an instance of the game of chance using a first
user interface of the first electronic gaming machine;
[D] deducting the first wager from the first credit balance;
[E] storing a first plurality of player indicia for use in the
instance of the game of chance;
[F] randomly selecting, by the first electronic gaming
machine, a first plurality of house indicia for use in the instance
of the game;
[G] presenting, by the first electronic gaming machine, the
instance of the game to a first player;
[H] determining, by the first electronic gaming machine,
whether the first player satisfies a first winning criterion based
on a determination of whether the first plurality of house indicia
matches at least a portion of the first plurality of player indicia;
[I] receiving a second physical item associated with a
second monetary value using a second input device of a second
electronic gaming machine;
[J] adding the second monetary value to a second credit
balance for a second player;
[K] receiving a second input from the second player to
select a second wager for the instance of the game of chance
using a second user interface of the second electronic gaming
machine;
[L] deducting the second wager from the second credit
balance;
Appeal 2018-009242
Application 13/788,055

3
[M] storing a second plurality of player indicia for use in
the instance of the game;
[N] randomly selecting, by the second electronic gaming
machine, a second plurality of house indicia for use in the
instance of the game;
[O] presenting, by the second electronic gaming machine,
the instance of the game to the second player;
[P] determining, by the second electronic gaming
machine, whether the second player satisfies a second winning
criterion based on a determination of whether the second
plurality of house indicia matches at least a portion of the second
plurality of player indicia;
[Q] awarding at least a first portion of a prize to the first
player upon the determination that the first player satisfies the
first winning criterion;
[R] awarding at least a second portion of the prize to the
second player upon the determination that the second player
satisfies the second winning criterion;
[S] enabling the first player to initiate a first cash out
operation using the first user interface;
[T] decreasing the first credit balance in response to the
first cash out operation;
[U] enabling the second player to initiate a second cash out
operation using the second user interface; and
[V] decreasing the second credit balance in response to the
second cash out operation.

Br. (Claims App.).
ANALYSIS
Patent-Ineligible Subject Matter
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
Appeal 2018-009242
Application 13/788,055

4
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
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.
Concepts that have been 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 v.
Kappos, 561 U.S. 593 (2010)); mathematical formulas (Parker v. Flook, 437
U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409
U.S. 63, 69 (1972)).
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 (quotation marks 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. (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.
On January 7, 2019, the PTO issued revised guidance on the
application of § 101. See 2019 Revised Patent Subject Matter Eligibility
Appeal 2018-009242
Application 13/788,055

5
Guidance, 84 Fed. Reg. 50 (hereinafter “2019 Guidance”). The 2019
Guidance includes steps 2A and 2B. Under Step 2A, Prong One, of the
guidance, we first look to whether the claim recites any judicial exceptions,
including certain groupings of abstract ideas (i.e., mathematical concepts,
certain methods of organizing human activities such as a fundamental
economic practice, or mental processes). See id. at 54.
If a claim recites a judicial exception, we proceed to Step 2A, Prong
Two, and determine whether the claim recites additional elements that
integrate the judicial exception into a practical application. See id.; see also
MPEP § 2106.05(a)–(c), (e)–(h).
Only if a claim both recites a judicial exception and fails to integrate
the judicial exception into a practical application, do we proceed to Step 2B
of the guidance. At this step, we determine whether the claim adds a
specific limitation beyond the judicial exception that is not “well-
understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or
simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception. See 84 Fed. Reg. 56.
Claim Grouping
Appellant argues claims 1–36 as a group (Br. 4–12). We select
claim 19 as representative of the group, and claims 1–18 and 20–36 stand or
fall with claim 19. See 37 C.F.R. § 41.37(c)(1)(iv).2

2 Appellant also presents arguments under separate headings for claims 1–18
as a group (Br. 12–13) and claims 19–36 as a group (id. at 13–14).
However, there is no meaningful difference between these arguments, or
between the process recited in claim 19 and the system (i.e., apparatus)
recited in claim 1. Claim 1 recites substantially the same basic process (in
Appeal 2018-009242
Application 13/788,055

6
Step One – Statutory Category
Claim 19 is directed to a method. Accordingly, claim 19 is directed to
one of the statutory classes of subject matter eligible for patenting under 35
U.S.C. § 101 (i.e., a process).
Step 2A, Prong One – Recitation of Judicial Exception
We next look to whether the claims recite any judicial exceptions,
including certain groupings of abstract ideas, that is, mathematical concepts,
certain methods of organizing human activities such as a fundamental
economic practice, or mental processes.
The Examiner determines that claims 1–36 recite an abstract idea,
namely “rules for conducting a wagering game” and “managing a game.”
Final Act. 9–10. The Examiner determines that these abstract ideas are
similar to the kind of “organizing human activity” and “fundamental
economic practices” at issue in Alice. Id. The Examiner determines that the
abstract idea of managing a game is similar to the abstract ideas of:
managing risk (hedging) during consumer transactions (Bilski); mitigating
settlement risk in financial transactions (Alice); managing a game of bingo
(Planet Bingo); and rules for conducting a wagering game (In re Smith3). Id.
Claim 19 recites a method of providing a game of chance, which is a
wagering game. Step A recites “receiving a first physical item associated
with a first monetary value.” Appellant indicates the first physical item
corresponds to element 610. Br. 3. The Specification describes 610 as cash

functional language) as claim 19. Planet Bingo, LLC v. VKGS LLC, 576 F.
App’x 1005, 1007 (Fed. Cir. 2014).
3 In re Smith, 815 F.3d 816 (Fed. Cir. 2016).
Appeal 2018-009242
Application 13/788,055

7
or credits. Spec. ¶ 155, Fig. 6. Step A describes an act relating to the first
player in the game of chance (i.e., providing a first physical item).
Conducting and managing wagering games relates to following rules or
instructions, which is an example of managing personal behavior or
relationships or interactions between people. This example is one of certain
methods of organizing human activity identified in the 2019 Guidance. See
2019 Guidance at 52 n. 13.
Step B recites “adding the first monetary value to a first credit balance
for a first player.” Under its broadest reasonable interpretation, step B
involves performing a mathematical calculation, that is, addition, to affect
the first player’s first credit balance. According to the 2019 Guidance,
mathematical calculations fall within the abstract idea exception grouping of
mathematical concepts. See 2019 Guidance at 52.
Alternatively, step B recites no limitation as to how the “adding” is
performed. We find that the act of adding the first monetary value to a first
credit balance can be performed through human observation, evaluation, or
judgment in the human mind or on paper. Acts that can be performed in the
human mind fall within the abstract idea exception grouping of mental
processes. See id. Thus, step B also recites a mental process, which is a
judicial exception.
Step C recites “receiving a first input from the first player to select a
first wager for an instance of the game of chance.” Step C describes an act
of the first player in playing the game of chance (i.e., providing a first input
related to a first wager). Conducting and managing wagering games relates
to following rules or instructions, which is an example of managing personal
behavior or relationships or interactions between people. This example is
Appeal 2018-009242
Application 13/788,055

8
one of certain methods of organizing human activity identified in the 2019
Guidance. See 2019 Guidance at 52 n. 13.
Alternatively, providing a first input relating to a first wager by the
first player can be performed through human observation, evaluation, or
judgment in the human mind or on paper. Acts that can be performed in the
human mind fall within the abstract idea exception grouping of mental
processes. See 2019 Guidance at 52. Thus, step C also recites a mental
process, which is a judicial exception.
Step D recites “deducting the first wager from the first credit
balance.” Under its broadest reasonable interpretation, step D refers to
performing a mathematical calculation, that is, subtraction, to affect the first
player’s first credit balance. According to the 2019 Guidance, mathematical
calculations fall within the abstract idea exception grouping of mathematical
concepts. See 2019 Guidance at 52 n. 12.
Alternatively, step D does not recite how the “deducting” is
performed. We find that subtracting the first wager from the first credit
balance can be performed through human observation, evaluation, or
judgment in the human mind or on paper. Acts that can be performed in the
human mind fall within the abstract idea exception grouping of mental
processes. See 2019 Guidance at 52. Thus, step D also recites a mental
process, which is a judicial exception.
Step E recites “storing a first plurality of player indicia for use in the
instance of the game of chance.” The Specification describes that a player
can select all player indicia for a game of chance. See, e.g., Spec. ¶ 157.
We understand step E refers to the act of placing the selected player indicia
in a location for use in the game of chance. This act can be performed
Appeal 2018-009242
Application 13/788,055

9
through observation, evaluation, or judgment in the human mind or on
paper, and thus, falls within the abstract idea exception subgrouping of
mental processes. See 2019 Guidance at 52. Thus, step E recites a mental
process, which is a judicial exception.
Step F recites “randomly selecting . . . a first plurality of house indicia
for use in the instance of the game.” We understand step F involves
randomly choosing house indicia. The Specification describes that house
indicia can be selected by an operator of a game. See Spec. ¶ 73.
Accordingly, step F refers to the act of randomly choosing house indicia,
which can be performed by a person operating the game, where the chosen
house indicia are used in the game of chance. Conducting and managing
wagering games relates to following rules or instructions, which is an
example of managing personal behavior or relationships or interactions
between people. This example is one of certain methods of organizing
human activity identified in the 2019 Guidance. See 2019 Guidance at 52 n.
13.
Alternatively, the act of randomly choosing house indicia can be
performed through observation, evaluation, or judgment in the human mind
or on paper, and thus, falls within the abstract idea exception subgrouping of
mental processes. See 2019 Guidance at 52. Thus, step F also recites a
mental process, which is a judicial exception.
Step G recites “presenting . . . the instance of the game to a first
player.” We understand step G involves the act of showing or displaying
information to the first player. This act can be performed through
observation, evaluation, or judgment in the human mind or on paper. Acts
that can be performed in the human mind fall within the abstract idea
Appeal 2018-009242
Application 13/788,055

10
exception subgrouping of mental processes. See 2019 Guidance at 52.
Thus, step G recites a mental process, which is a judicial exception.
Step H recites “determining . . . whether the first player satisfies a first
winning criterion based on a determination of whether the first plurality of
house indicia matches at least a portion of the first plurality of player
indicia.” We understand step H involves the act of comparing the house
indicia to the player indicia to determine whether these indicia match.
Under their broadest reasonable interpretation, this limitation involves
concepts performed in the human mind including observation, evaluation,
judgment, and opinion, which are mental processes. See 2019 Guidance at
52. Thus, step H recites a mental process, which is a judicial exception.
Alternatively, we find step H involves mathematical concepts, namely
using mathematical relationships in determining whether there is matching
(correspondence) between the house indicia and the player indicia.
Mathematical relationships are a mathematical concept, one of the groupings
of abstract ideas. See 2019 Guidance at 52 n. 12.
In claim 19, steps I–P recite the same limitations as steps A–H,
respectively, except steps I–P recite “a second player,” “a second input
device,” “a second user interface,” and “[a] second electronic gaming
machine.” Accordingly, we find that steps I–P recite the same abstract ideas
as steps A–H, respectively.
Step Q recites “awarding at least a first portion of a prize to the first
player upon the determination that the first player satisfies the first winning
criterion” and step R similarly recites “awarding at least a second portion of
the prize to the second player upon the determination that the second player
satisfies the second winning criterion.” We understand steps Q and R to
Appeal 2018-009242
Application 13/788,055

11
involve the acts of awarding at least some portion of a prize to the first
player and the second player, respectively, when the act of “determining” in
steps H and P, respectively, finds the required matching. Under their
broadest reasonable interpretation, this act involves concepts performed in
the human mind including observation, evaluation, judgment, and opinion,
which are mental processes. See 2019 Guidance at 52. Thus, step H also
recites a mental process, which is a judicial exception.
Alternatively, steps Q and R involve acts of conducting and managing
wagering games relates to following rules or instructions, which is an
example of managing personal behavior or relationships or interactions
between people. This example is one of certain methods of organizing
human activity identified in the 2019 Guidance. See 2019 Guidance at 52 n.
13.
Step S recites “enabling the first player to initiate a first cash out
operation” and step U similarly recites “enabling the second player to initiate
a second cash out operation.” We understand steps S and U to refer to the
acts of paying the first player and second player any remaining credits or
money from playing the game of chance. See, e.g., Spec. ¶ 163 (“the player
is paid any remaining credits or money”). Under their broadest reasonable
interpretation, steps S and U involve acts of conducting and managing
wagering games relating to following rules or instructions, which is an
example of managing personal behavior or relationships or interactions
between people. This example is one of certain methods of organizing
human activity identified in the 2019 Guidance. See 2019 Guidance at 52
n. 13.
Appeal 2018-009242
Application 13/788,055

12
Alternatively, steps S and U refer to a fundamental economic practice
involving resolving financial obligations in a game of chance. This example
is one of certain methods of organizing human activity identified in the 2019
Guidance. See 2019 Guidance at 52 n. 13.
Lastly, step T recites “decreasing the first credit balance in response to
the first cash out operation” and step V similarly recites “decreasing the
second credit balance in response to the second cash out operation.” Under
their broadest reasonable interpretation, steps T and V both refer to
performing a mathematical calculation, that is, subtraction, to affect the
player’s credit balance. According to the 2019 Guidance, mathematical
calculations fall within the abstract idea exception grouping of mathematical
concepts. See 2019 Guidance at 52 n. 12.
Alternatively, steps T and V recite no limitations as to how the
“decreasing” is performed. We find that this act can be performed through
human observation, evaluation, or judgment in the human mind or on paper.
Acts that can be performed in the human mind fall within the abstract idea
exception grouping of mental processes. See 2019 Guidance at 52. Thus,
step D also recites a mental process, which is a judicial exception
Appellant contends that “each of . . . [the] claims includes a number of
features or steps that are not mental steps, and cannot be carried out by a
human using pen and paper,” or by a general-purpose computer. Br. 11.
But Appellant does not clearly identify which recited “features or steps” are
not mental steps, and cannot be carried out by a human using pen and paper,
or by a general-purpose computer. In claim 19, step A “use[s] a first input
device of a first electronic gaming machine”; step C and step S “use[] a first
user interface of the first electronic gaming machine”; steps F, G, and H use
Appeal 2018-009242
Application 13/788,055

13
the first electronic gaming machine; step I and step U “use[] a second input
device of a second electronic gaming machine”; step K “use[s] a second user
interface of the second electronic gaming machine”; and steps N, O, and P
use the second electronic gaming machine. The recitation of computer
components does not, by itself, establish that the claim does not recite
mental steps. See, e.g., Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306,
1335 (Fed. Cir. 2015) (“Courts have examined claims that required the use
of a computer and still found that the underlying, patent-ineligible invention
could be performed via pen and paper or in a person’s mind.”). We also
note that “performance of a claim limitation using generic computer
components does not necessarily preclude the claim limitation from being in
the mathematical concepts grouping, Benson, 409 U.S. at 67, or the certain
methods of organizing human activity grouping, Alice, 573 U.S. at 219–20.”
See 2019 Guidance at 52 n. 14 (emphasis omitted). “If a claim, under its
broadest reasonable interpretation, covers performance in the mind but for
the recitation of generic computer components, then it is still in the mental
processes category unless the claim cannot practically be performed in the
mind.” Id. Accordingly, Appellant’s contention is not persuasive.
We therefore determine that claim 19 recites the abstract ideas of
mathematical concepts, mental processes, and certain methods of organizing
human activity, which are judicial exceptions to patent-eligible subject
matter. We proceed to Prong Two to determine whether the claim is
“directed to” the judicial exception.

Appeal 2018-009242
Application 13/788,055

14
Step 2A, Prong Two – Practical Application
We next determine whether the recited judicial exception is integrated
into a practical application of that exception by: (a) identifying whether
there are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application. This evaluation requires an additional element or a
combination of additional elements in the claim to 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 exception. When the judicial exception is integrated into
a practical application of the exception, the claim is not “directed to” the
judicial exception. See 2019 Guidance at 54.
Appellant contends that claim 19 is not directed to a “fundamental
economic practice” or “organizing human activity” as claimed in Alice, or
managing a game of bingo as claimed Planet Bingo, or conducting a
wagering game as claimed in Smith. Br. 5. Instead, Appellant contends,
claim 19 is directed to “a statutory [process or method] for providing a game
of chance on an electronic gaming machine, not a general purpose
computer.” Id. Appellant acknowledges that the claims “include
components that may be found on a general purpose computer,” but
contends that “the claims taken as a whole as an ordered combination are
clearly a special-purpose electronic gaming machine that work together with
components that are NOT found on a general purpose computer.” Id.
Appellant contends that its position is supported by the absence of any
rejection under 35 U.S.C. § 102 or § 103. Br. 6. According to Appellant,
Appeal 2018-009242
Application 13/788,055

15
the claims “are directed to a novel and non-obvious system having electronic
gaming machines connected to a computer to provide a wagering game of
chance and associated method.” Id. In contrast, Appellant contends, Smith’s
claimed method is directed to purely conventional activity performed by a
dealer. Id. Appellant asserts that Smith states, “‘[a]bstract ideas, including a
set of rules for a game, may be patent-eligible if they contain an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.’” Id. at 7. Appellant contends that the “claims are not
merely directed to ‘rules for conducting a wagering game’ and are not
performed by a dealer as recited in the rejected claims [in Smith].” Id. at 8.
According to Appellant, the claimed method is essentially a new method and
includes “features . . . sufficient to transform the abstract idea into a patent-
eligible machine and process based on the Court’s decision in [Smith].” Id.
at 9.
These contentions are not persuasive. Applying the 2019 Guidance,
the additional elements in claim 19 beyond the judicial exceptions identified
above are “a first electronic gaming machine” including “a first input
device” and “a first user interface,” and “a second electronic gaming
machine” including “a second input device” and “a second user interface.”
Appellant does not explain persuasively, or provide any evidence that
shows, why claim 19 recites a special purpose (or particular) element or
machine. Regarding the recited first and second input devices, we note
paragraph 130 of the Specification describes that bill acceptor 404 receives
paper currency, that is, a physical item having a monetary value. Appellant
appears to contend that these claimed first and second input devices are
more than generic elements. Br. 11. The Examiner disagrees and, in
Appeal 2018-009242
Application 13/788,055

16
support, cites evidence (i.e., Parker4 and Walker5) to show that “an
electronic gaming machine having . . . an input device configured to receive
a physical item associated with a monetary value (e.g., acceptor) . . . to be
conventional hardware or conventional activity.” Ans. 11–12. We agree
with the Examiner that Appellant has not shown that the recited first and
second input devices are particular elements or machines and more than
generic elements.
And, as described at paragraph 125 of the Specification, the recited
first and second user interfaces are not limited. Absent persuasive evidence
to the contrary, we determine that claim 19 merely uses generic input
devices and user interfaces as tools to perform the abstract ideas. See MPEP
§ 2106.05(f).
Even if the first and second electronic gaming machines, first and
second input devices, or first and second user interfaces recited in claim 19
may be “novel,” which Appellant does not establish with persuasive
evidence, “[t]he ‘novelty’ of . . . the . . . [claim] itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.” See Diamond v. Diehr,
450 U.S. 175, 188–189 (1981).
As for Planet Bingo, Appellant contends that the “claims include[]
features that are significantly more than the generically claimed computer
[with generic] input and output terminals recited in the rejected claims of
Planet Bingo.” Br. 11. Appellant mentions “an input device that receives a
physical item associated with a monetary value.” Id. As discussed above,

4 US 5,016,879, issued May 21, 1991.
5 US 2004/0147308 A1, published July 29, 2004.
Appeal 2018-009242
Application 13/788,055

17
however, Appellant does not show that the recited input devices are a special
purpose or particular element or machine.
Appellant’s contentions also do not persuade us that the method
claims provide an improvement in the functioning of a computer, or an
improvement to other technology or technical field, making them patent-
eligible. Appellant asserts that “[t]he recitations of the instant claims solve a
domain-specific problem related to electronic gaming [machines].” Br. 11.
Yet, Appellant does not identify the purported “domain-specific problem,”
or show how the claimed subject matter solves it.
Appellant also contends that the claims “do not attempt to pre-empt
every application of the alleged abstract idea” or “every system or method of
playing bingo, or playing a conventional game of bingo on a general-
purpose computer.” Br. 11. Even if this contention is correct, “preemption
may signal patent ineligible subject matter, [but] the absence of complete
preemption does not demonstrate patent eligibility.” Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Accordingly,
this argument is unpersuasive.
Considered as a whole, steps A through V of claim 19, under their
broadest reasonable interpretation, involve conducting and managing a
wagering game following rules or instructions and recite processes and
concepts that can be performed in the human mind or by hand. These steps
are similar to other processes that courts have determined are mental
processes. See, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1373 (Fed. Cir. 2011) (determining that a claim whose “steps can all
be performed in the human mind” is directed to an unpatentable mental
process).
Appeal 2018-009242
Application 13/788,055

18
Further, in Smith, the court concluded that the claimed “method of
conducting a wagering game” was drawn to an abstract idea. Smith, 815
F.3d at 818 (“[a]pplicants’ claims, directed to rules for conducting a
wagering game” are abstract). The court likened the claimed method to the
method of exchanging financial obligations at issue in Alice. Id. at 819.
Additionally, the court found that the method of conducting a wagering
game was similar to the subject matter held to be patent-ineligible in Planet
Bingo, 576 F. App’x at 1008, in which the court determined that the claims
recite methods for “managing a game of Bingo” “similar to the kind of
‘organizing human activity’ at issue in Alice.” Id. And, in In re Guldenaar,
911 F.3d 1157, 1160 (Fed. Cir. 2018), the court concluded that the claimed
“method of playing a dice game” is directed to a method of conducting a
wagering game, which like the patent-ineligible claims in Smith is drawn to
an abstract idea. Claim 19 is, like the claims found to be patent-ineligible in
these decisions, directed to conducting a wagering game. Claim 19 involves
conducting and managing a game of chance played by players using
electronic gaming machines. The recited limitations involve the player
selecting wagers, managing the players’ credit balances based on the
selected wagers and cash out operations, matching the player indicia
associated with the selected wagers, and determining whether the players
win a portion of a prize based on the results of the matching. Absent
persuasive evidence to the contrary, we determine that claim 19 merely uses
generic components as a tool to perform the abstract idea. See MPEP
§ 2106.05(f).
Here, we determine that, apart from the limitations reciting an abstract
idea, claim 19 does not recite additional claim elements that integrate the
Appeal 2018-009242
Application 13/788,055

19
judicial exception into a practical application of the exception. Accordingly,
we proceed to determine whether these claims recite an “inventive concept.”

Step 2B – Inventive Concept
For Step 2B of the analysis, we determine whether the claim adds a
specific limitation beyond the judicial exception that is not “well-
understood, routine, conventional” in the field. See 2019 Guidance.
The Examiner concludes that claim 19 does not include any additional
elements that are sufficient to amount to significantly more than the abstract
idea itself. Final Act. 10–12.
Appellant disagrees. Br. 13. According to Appellant, the claim
requires at least two electronic gaming machines and includes steps that go
beyond playing a conventional game on a computer and hardware specific to
the electronic gaming machines. For example, Appellant contends, claim 19
requires receiving a first physical item associated with a first monetary value
using a first input device of a first electronic gaming machine, receiving a
first input from a first player to select a first wager using a user interface of
the first electronic gaming machine, randomly selecting, by the first
electronic gaming machine, a first plurality of house indicia for use in the
instance of the game, and similar limitations for the second electronic
gaming machine. Id. at 13–14.
We are not persuaded that the electronic elements used in the method
of claim 19 are more than generic or conventional components. The
Examiner has provided evidence to show that electronic gaming machines
having an input device configured to receive a physical item associated with
a monetary value are conventional. Ans. 12–13. Also, the Specification
Appeal 2018-009242
Application 13/788,055

20
describes that the recited first and second user interfaces are not limited.
Absent persuasive evidence to the contrary, claim 19 merely uses generic
input devices and user interfaces as tools to perform the abstract ideas.
Further, Appellant does not show, with persuasive evidence, that randomly
selecting house indicia, as claimed, requires a special-purpose electronic
gaming machine rather than a generic machine. In fact, the Specification
describes that the randomization device can be “any . . . suitable device or
machine that enables numbers or other house indicia to be randomly
generated.” See Spec. ¶ 102. We are not persuaded by Appellant’s
contention that “[t]he claimed steps cannot be performed by pen and paper,
are not directed to organizing human activity, and cannot be performed by a
generic general-purpose computer.” Br. 14.
We agree with the Examiner that the claimed method merely uses
generic components as a tool to perform the abstract idea(s). The
application of an abstract idea using generic computer components does not
transform the claim into a patent-eligible application of the abstract idea.
Alice, 573 U.S. at 212. Thus, we sustain the rejection of claim 19 under 35
U.S.C. § 101. Claims 1–18 and 20–36 fall with claim 19.

DECISION
The rejection of claims 1–36 under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended according to 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED