Ex Parte Burnside

Patent Trial and Appeal Board

Jul 16, 2018

13952318 (P.T.A.B. Jul. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/952,318 07/26/2013
25962 7590 07/18/2018
SLATER MATSIL, LLP
17950 PRESTON RD, SUITE 1000
DALLAS, TX 75252-5793
FIRST NAMED INVENTOR
Robert Burnside
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
JTS-003 1115
EXAMINER
RADA,ALEXP
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
07/18/2018 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@slatermatsil.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT BURNSIDE 1
Appeal2017-007741
Application 13/952,318
Technology Center 3700
Before: LEE L. STEPINA, RICHARD H. MARSCHALL, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 21--40. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 The Appeal Brief indicates that the real party in interest is Jack Ten Suited.
Appeal Br. 2.
Appeal2017-007741
Application 13/952,318
CLAIMED SUBJECT MATTER
The claims are directed to a method and apparatus for electronic
gaming. Claims 21, 28, and 35 are independent. Appeal Br. 11 (Claims
App.). Claim 21, reproduced below, is illustrative of the claimed subject
matter:
21. A method comprising:
receiving, by a gaming system, a first plurality of
tournament entries corresponding to a first plurality of players,
each of the first plurality of tournament entries being for a same
type of game and for a predetermined duration;
tracking, by the gaming system, play of the first plurality
of players;
determining, by the gaming system, when a first set of the
first plurality of players has completed the predetermined
duration, the first set being less than an entirety of the first
plurality of players, the first set defining entrants in a first
tournament;
after determining the first set of the first plurality of
players, determining, by the gaming system, a first winner of a
first tournament among the first set;
after determining the first set of the first plurality of
players, determining, by the gaming system, when a second set
of the first plurality of players has completed the predetermined
duration, the second set being less than the entirety of the first
plurality of players, the second set defining entrants in a second
tournament;
after determining the second set of the first plurality of
players, determining, by the gaming system, a second winner of
a second tournament among the second set;
wherein a first player of the first set plays one or more
hands against players in the second set during the duration of the
first tournament, the one or more hands counting in play for the
first player in the first tournament and for the second player in
the second tournament; and
wherein determining the first set and determining the
second set is performed independently of an order the first
plurality of tournament entries are received.
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Id. at 11.
REJECTION
Claims 21--40 are rejected under 35 U.S.C. § 101 as being directed to
patent ineligible subject matter.
OPINION
Appellant argues for the patentability of claims 21--40 as a group. See
Appeal Br. 6. We take claim 21 as representative. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
In Alice, the Supreme Court applied the framework set forth
previously in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.
Ct. 1289 (2012), "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l.,
134 S. Ct. 2347, 2355. The first step in the analysis is to "determine whether
the claims at issue are directed to one of those patent-ineligible concepts."
Id. If so, the second step in the analysis is to consider the elements of the
claims "individually and 'as an ordered combination' to determine whether
[ there are] additional elements" that "'transform the nature of the claim' into
a patent-eligible application." Id. (quoting Mayo, 132 S. Ct. at 1297).
Step 1
Addressing the first step of the Alice inquiry, the Examiner states that
the claims are directed to "a system without any other recited computer
components, to perform a series of mental steps that people aware of each
step, can and regularly do perform a series of mental steps that people, aware
of each step, can and regularly do perform in their heads." Final Act. 2-3.
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Application 13/952,318
The Examiner concludes that, "[ w ]hatever the boundaries of the 'abstract
ideas' category, the claim[ s] at issue here involve[] a mental process
excluded from section 101: the mental steps of comparing new and stored
information and using rules to identify options." Id. at 4.
Appellant contends, "Claims 21--40 are not directed to an abstract
idea. Each of the claims is instead directed to a concrete improvement in the
technological environment of online gaming tournaments." Appeal Br. 6.
In support of this contention, Appellant states:
The claimed embodiments further improve the operation of
online gaming tournaments by allowing players to independently
decide whether to play in a non-tournament 'cash' game, a
tournament, or both by allowing play in the cash game to count
towards performance in a tournament. See, e.g., claims 22, 29,
and 35. Because players in tournaments are not assigned to a
player pool until the player meets the predetermined duration, the
claimed embodiments provide for a level and convenience of
play not previously achieved in the art.
Id. at 6-7 (emphases added). Thus, Appellant touts the benefits provided by
the claimed methods in the area of online gaming.
In response, the Examiner determines that the claims do not require
online play and do not require the use of a computer, much less new
computer hardware. Ans. 8. The Examiner also determines that the claims
are similar to the claims at issue in In re Smith, 815 F .3d 816 (Fed. Cir.
2016) in that they are directed to a method of exchanging financial
obligations, specifically, by specifying rules for conducting a wagering
game. Ans. 6.
In reply, Appellant contends, "The subject matter of the present
invention relates to online gaming. For example, the very first paragraph of
the Specification sets out that the 'present disclosure relates generally to
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Application 13/952,318
electronic gaming devices and systems, and more particularly to a system
and method for online gaming."' Reply Br. 2. Appellant goes on to cite and
quote other portions of the Specification and Figure 1 in support of this
contention. See id. at 2--4.
The Examiner has the better position on this point. We agree with the
Examiner that the claims do not require on-line play. The Specification
supports this determination. See Spec. ,r 16 ("Any network components
capable of exchanging audio, video or other data using frames, packets or
otherwise may be included within the scope of particular embodiments.")
(Emphases added). However, even assuming, arguendo, that the gaming
system used in the method of claim 21 requires a computer network, the use
of a computer network (including the internet) does not require a conclusion
that the claims are not directed to an abstract idea. See Internet Patents
Corp. v. Active Network, Inc., 790 F3d 1343, 1348 (finding the idea of
retaining information in the navigation of online forms to be abstract).
We also agree with the Examiner that the claims are analogous to the
claims at issue in Smith, which recited rules for playing a game of Blackjack.
See Smith, 815 F .3d at 817-818. In this regard, Appellant states that claims
21--40 "are directed to the improved management of online gaming
tournaments for enhanced player experience." Appeal Br. 7. Although the
specific rules of the games that are part of the tournaments are recited only
in dependent claims (see, e.g., dependent claim 23 requiring the type of
game to be "Hold 'Em"), representative claim 21 provides general rules for
tracking play of players. Id. at 11-12 (Claims App.). In Appellant's words,
"Players are able to apply their performance in cash games to their
tournament play, and they are placed in a playing pool only when they
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Application 13/952,318
complete the selected duration, so they can play at their leisure while still
participating in tournament play." Id. at 3. The recited rules for tracking the
play of players and applying portions of this play toward a tournament are
analogous to the specific rules for game play recited in the claims at issue in
Smith, albeit the claims in the present appeal are more generic. Specifically,
the recited rules manage whether a player's gameplay in a game also applies
to a tournament rather than only to whether a player wins or loses a
particular game. See claim 21; see also Smith, 815 F .3d at 817.
Accordingly, we agree with the Examiner that claim 21 is directed to an
abstract idea, similar to the claims at issue in Smith.
Step 2
Appellant relies on DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014) and asserts that, like the claims at issue in that case,
the present claims recite "something more" than an abstract idea. Appeal
Br. 8-10. In this regard, Appellant contends "the present claims do not
attempt to preempt every application of the idea of managing online gaming
tournaments." Id. at 8.
In response, the Examiner states, "the [ claims on appeal] do not
address problems unique to the Internet, so contrary to Applicant's
arguments, DDR Holdings has no applicability." Ans. 5. The Examiner
finds that the method recited in claim 21 does not recite significantly more
than the abstract idea discussed above, and, specifically, to the extent the use
of a computer is required, conventional computers may be used. See Ans. 9.
In reply, Appellant states that the "gaming system" required by claim
21 "should be understood in light of the Specification as reciting a gaming
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system which includes computer hardware components and network
interface." Reply Br. 6.
This argument is unavailing, because, as the Examiner correctly finds,
to the extent a computer and network are required by claim 21, this hardware
may be generic.
Appellant also argues that the method recited in claim 1 provides "an
unconventional result and achieves an improvement in the gaming system by
supporting non-traditional outcomes of tournaments. Also, as explained
above, there is no real-world analogue to this outcome, so it must be that the
claims perform steps which are more than routine." Reply Br. 7 ( emphasis
added); see also id. at 5 (stating, "there can be no doubt, given the context of
the Specification ( as applied to a group of online players), the claims provide
tournament play which provides the benefit that players can come and go as
they please").
We disagree with Appellant's argument on this point because the
"improved management of online gaming tournaments" (Appeal Br. 7) does
not improve the computer or network itself. If we were to accept
Appellant's contention in this regard, then any new content provided via a
computer or network could be considered such an "improvement."
Appellant contends that "the prosecution history of the current
application under appeal includes prior art rejections under§§ 102 and 103,
which were overcome with amendments to the claims," "the Examiner
[essentially] admits that the claims recite new non-obvious limitations," and,
therefore, "the Examiner's naked assertion that the claims recited 'purely
conventional steps' is unfounded and inconsistent." Reply Br. 7-8.
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We disagree with Appellant on this point because even a novel and
non-obvious claim directed to an abstract idea may be, nonetheless, patent-
ineligible. See Mayo Collaborative Services v. Prometheus Laboratories,
Inc., 566 U.S. 66, 90 (2012); see also Diamond v. Diehr, 450 U.S. 175, 188-
89 (1981) ("The 'novelty' of any element or steps in a process, or even of
the process itself, is of no relevance in determining whether the subject
matter of a claim falls within the § 101 categories of possibly patentable
subject matter."). Appellant does not dispute that the hardware Appellant
alleges allows the method of claim 21 to be performed online is
conventional. As for the particular order of the steps recited in claim 21,
these steps and their sequence pertain to the abstract idea itself, i.e., these
steps are analogous to the rules for the game claimed in Smith. Under such
circumstances, the fact that these steps may patentably distinguish over prior
art, obviating a rejection under sections 102 or 103, does not mean that they
amount to significantly more than the abstract idea itself.
We have considered all of Appellant's arguments regarding steps 1
and 2 of the Alice test for patent eligible subject matter, but find them
unavailing. Accordingly, we sustain the Examiner's rejection of these
claims under 35 U.S.C. § 101.
DECISION
The Examiner's decision to reject claims 21--40 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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