Ex Parte Burza et al

Patent Trial and Appeal Board

Jul 24, 2018

13787229 (P.T.A.B. Jul. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/787,229 03/06/2013
65375 7590 07/26/2018
BALLY (DELIZIO LAW)
C/0 DELIZIO LAW, PLLC
15201 MASON ROAD
SUITE 1000-312
CYPRESS, TX 77433
FIRST NAMED INVENTOR
Keith J. Burza
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.
100.235US1 1092
EXAMINER
UTAMA, ROBERT J
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
07/26/2018 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):
USPTO@DELIZIOLA W.COM
USPT02@DELIZI0LA W.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEITH J. BURZA, DAMONE. GURA,
PATRICK M. GUSTAFSON, and DAVID W. HASSON
Appeal2017-008296
Application 13/787 ,229
Technology Center 3700
Before EDWARD A. BROWN, WILLIAM A. CAPP, and
LISA M. GUIJT, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection2 of claims 1-5, 16-20, and 26-30. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Bally Gaming, Inc. Appeal
Br. 1.
2 Appeal is taken from the Final Office Action dated May 9, 2016.
Appeal2017-008296
Application 13/787,229
STATEMENT OF THE CASE
Claims 1, 16, and 26 are the independent claims on appeal. Claim 1,
reproduced below, is exemplary of the subject matter on appeal.
1. A computer-implemented method for providing tutorial
content explaining a live casino table game, the method
compnsmg:
capturing, by a camera, a video stream of the live table
game, wherein the live casino table game involves a game table
and game pieces including at least one of a die, a spinning wheel
or a ball,
determining, by one or more processors, a game state for
the live casino table game;
determining, by the one or more processors, the tutorial
content based on the game state for the live casino table game,
wherein the tutorial content includes information explaining
strategy for the live casino table game;
transmitting, over a network for presentation on a display
device of a remote computing device, a content stream including
the video stream of the live casino table game and the tutorial
content.
THE REJECTIONS
I. Claims 1-5, 16-20, and 26-30 stand rejected under 35 U.S.C. § 101.
II. Claims 1-5, 16-20, and 26-30 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
ANALYSIS
Rejection I
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
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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'!, 134 S. Ct. 2347, 2355 (2014). The first step in that analysis is to
"determine whether the claims at issue are directed to one of those patent-
ineligible concepts." Id. If the claims are not directed to a patent-ineligible
concept, e.g., an abstract idea, the inquiry ends; otherwise, the inquiry
proceeds to the second step where the elements of the claims are considered
"individually and 'as an ordered combination'" to determine whether the
additional elements "'transform the nature of the claim' into a patent-
eligible application." Id. (quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312 (Fed.
Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)).
Here, the Examiner determines that claim 1 is directed to an abstract
idea of "the use of a computer and presumably [a] computer algorithm to
provide tutorial information in a live casino game." Final Act. 3. The
Examiner also determines that the limitations of claim 1 are "directed to an
implementation of an abstract idea using generic computer component[ s]
that are considered to be well-understood, routine and conventional activities
previously known in the industry." Id. The Examiner further determines
that there is no evidence on the record that the limitations of claim 1 recite
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an improvement to another technology or technical field, and therefore, the
limitations of claim 1 fail to "add additional elements that amount to
significantly more than the judicial exception" (i.e., the abstract idea). Id.
at 3--4.
First, Appellants argue that
[ e ]mbodiments of claim 1 overcome problems in electronic
network-based tutorial content delivery systems. As spectators
watch a live table game, embodiments enable them to view, on
their mobile phones, the live game and tutorial content
immediately relevant to the live table game (see Figure 1 ). As a
result, embodiments dynamically select and deliver relevant
tutorial content that is visually integrated with images of the live
table game, giving spectators an unparalleled learning
experience. Without such novel embodiments, casino-based
tutorial content delivery systems are left delivering generic
content that is likely irrelevant to current game situations, and
that is visually disjointed from live games.
Appeal Br. 5 ( emphasis added); see also id. at 7 ("claim 1 addresses issues
related to electronically selecting situation-appropriate tutorial content and
delivering it over a computer network to a smart phone," and "[t]hese issues
are necessarily rooted in computer technologies, just as the claims in DDR
Holdings." 3).
The problem addressed by Appellants' invention is to provide tutorial
content to a patron that is relevant to a live casino game, rather than generic
content that may not be relevant to live play. Spec. ,r 16. However,
Appellants' argument, without evidence, does not apprise us of how claim 1
overcomes problems in electronic network-based tutorial content delivery
3 DDR Holdings, LLC V. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
2014).
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systems that are necessarily rooted in computer technology. See, e.g., DDR
Holdings, LLC V. Hotels.com, L.P., 773 f.3D 1245, 1257 (Fed. Cir. 2014)
( determining that "the claimed solution is necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks"). Although claim 1 requires a camera, processors, a
network, and a display device of a remote computing device to augment a
live casino table game, Appellants have not identified a problem specifically
arising in the realm of computer networks addressed by claim 1. Rather, the
claimed method uses a conventional camera to capture a video stream of a
live casino table game, conventional processors to determine both a live
game state and tutorial content based on the live game state, and a
conventional network, whereby a content stream including the live game
video stream and relevant tutorial content are transmitted to a conventional
display device of a conventional remote computing device. See Spec. ,r 28
("wagering game network 400 includes a plurality of casinos 412 connected
to a communications network 414"); ,r 29 ("[ e Jach casino 412 includes a
local area network 416, which includes an access point 404, a wagering
game server 406, and wagering game machines 402," wherein "access point
404 provides wireless communication links 410 and wired communications
links 408 ... employ[ing] any suitable connection technology"); ,r 30
("wagering game network 400 includes a table game server 422 connected to
a camera 418 ... positioned over a wagering game table 424," wherein
camera 418 can transmit video to the table game server 422, which can store
the video" and "table game server 422 can include a web server capable of
distributing the video and [tutorial] content ... over the Internet to mobile
phones"); ,r 36 ("[a]ny of the wagering game network components (e.g., the
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wagering game machines 402) can include hardware and computer readable
medial including instructions for performing the [ claimed] operations").
Appellants' advance, to the extent there may be one, lies entirely within the
realm of abstract ideas, which realm is not eligible for patenting. See
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352 (Fed. Cir. 2014)
( abstract idea is ineligible even if it is groundbreaking, innovative, or
brilliant).
Thus, we are not apprised of error in the Examiner's determination
that claim 1, considering the character of claim 1 as a whole, is directed to
the abstract idea of using computer technology to provide tutorial
information in a live casino game, or that claim 1, when its elements are
considered individually and as an ordered combination, fails to recite
additional elements that transform the nature of the claim into a patent-
eligible application.
Appellants also argue that
[l]ike McRO, claim 1 provides improvements to computer-
related technology. Claim 1 's improvements relate to visually
determining a game state for a live casino table game, and
providing a video stream showing the live table game and tutorial
content relevant to a situation in the table game. At the time of
filing, the prior art did not teach or suggest the claimed method.
This novel functionality improves tutorial content delivery
system by electronically recognizing game states, and providing
selected tutorial content relevant to those game states. Because
the system can select and provide tutorial content related to
contemporaneous game events, the system delivers relevant
tutorial content at relevant times.
Appeal Br. 6 (citing McRO v. Bandai Namco Games America, 837 F.3d
1299 (Fed. Cir. 2016)) ( emphasis added); see also id. at 7 ("[ claim 1] recites
non-trivial instructions that improve the existing technology and address a
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problem of effectively selecting and timely providing, over a computer
network, tutorial content relevant to currently-occurring game states").
As discussed supra, Appellants do not provide evidence that claim 1
improves any computer-related technology, but rather uses generic
computing components to implement the method for providing tutorial
content relevant to a live video game. See In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984) ("Arguments and conclusions unsupported by factual
evidence carry no evidentiary weight"). Further, a novel and non-obvious
claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See
1',fayo, 566 U.S. at 90. 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 clairn falls within the§ 101 categories of possibly patentable subject
matter."). Notab 1y, augmenting entertainment games with computer
technologies is well known and conventional, as evidenced by Okada. 4
Okada p. 1 ("Applications of computer technologies to various
entertainments have been researched, known as 'entertainment
computing."'). Okada specifically discloses "[an] augmented reality (AR)
user interface for playing table games," wherein a system "captures cards in
the player's view via a camera, recognizes the current state, and visually
4 Application and Evaluation of Augmented Reality User Interface to a Card
Game "Scopa," by Hidehiko Okada and Takashi Matsuse, SICE Annual
Conference, 2011, as cited in the Non-Final Office Action dated November
5, 2015.
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augments cards to guide the user [to] perform appropriate actions ( e.g.,
discard an unwanted card)."5 Id.
Thus, we are not apprised of error in the Examiner's determination
that claim 1, considering the character of claim 1 as a whole, is directed to
the abstract idea of using computer technology to provide tutorial
information in a live casino game, or that claim 1, when its elements are
considered individually and as an ordered combination, fails to recite
additional elements that transform the nature of the claim into a patent-
eligible application.
Although Appellants further argue that "claim 1 recites additional
elements that transform the nature of claim 1 into a patent-eligible
application," Appellants fail to identify with any specificity which elements
recited in claim 1 are purportedly transformative. See Appeal Br. 6-7. We
agree with the Examiner that the recitation of generic computing
components is insufficient.
Appellants also argue that "[ w ]hen taken as a whole, each claim does
not preempt all embodiments of any abstract idea," for example, "claim 1
does not preempt all methods of providing tutorial content that explains a
live casino table game." Reply Br. 2. 6 We also are not persuaded by
Appellants' argument that the § 101 rejection cannot be sustained because
5 See Amendment dated March 8, 2016, whereby Appellants amended claim
1 to recite "wherein the live casino table game involves a game table and
game pieces including at least one of a die, a spinning wheel, or a ball," and
to also include the recitation of "processors" and the functional language
"for presentation on a display device of a remote computing device," in
response to the Examiner's reliance on Okada.
6 The Reply Brief omits page numbers; we refer to pages 1 to 5.
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there is no preemption. Although the Supreme Court has described "the
concern that drives [the exclusion of abstract ideas from patent eligible
subject matter] as one of pre-emption," Alice Corp., 134 S. Ct. at 2354,
characterizing pre-emption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
"The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability" and "[ f]or this reason,
questions on preemption are inherent in and resolved by the§ 101 analysis."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice Corp., 134 S. Ct. at 2354). "[P]reemption may signal
patent ineligible subject matter, [but] the absence of complete preemption
does not demonstrate patent eligibility." Id.
Accordingly, we sustain the Examiner's rejection of independent
claim 1. Appellants chose not to present separate arguments for the
patentability of claims 2--4 and 16-20, and therefore, for the reasons stated
supra, we also sustain the rejection of claims 2--4 and 16-20. Appeal Br. 8.
Re} ection II
The Examiner determines, inter alia, that claim 1 does not comply
with the written description requirement of 35 U.S.C. § 112, first paragraph,
because Appellants fail to "show the steps or procedures the inventors used
to accomplish the claimed function." Final Act. 4. For example, the
Examiner determines that "the [S]pecification as originally filed does not
provide a teaching of the steps or procedures the inventors use[d] to
accomplish the function of ... determining game state includes employing
computer vision to determine the wagers and results." Id. at 4--5.
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Appellants submit that claim 1 as originally filed provides written
description support for "determining, by one or more processors, a game
state for the live casino table game," as presently claimed, by disclosing
"determining a game state for the live casino table game." Appeal Br. 9.
Appellants also submit that Figure 5 of the Specification provides support
for "determining, by one or more processors, a game state for the live casino
table game," as recited in claim 1, in that box 504 discloses "determin[ing] a
game state for each player," in addition to the corresponding description in
paragraph 50, which discloses that "[ a ]t block 504, the table game server
422 processes the video stream and determines a game state for each
player," wherein "[i]n some embodiments, the table game server 422
employs computer vision to determine wagers/moves made by each player."
Id. at 10-11. Id.
The Examiner responds that the claims as originally filed, Figure 5 of
the Specification, and specifically, paragraph 42 of the Specification, "do[]
not provide any algorithm that determine[ s] the state of the game," but
rather, "only provides the exact same language that the game state should be
determined by the server."7 Ans. 11.
Appellants reply that "one of ordinary skill could perform the method
of claim 1 without undue experimentation," and that, "[ f]or example, one of
ordinary skill in the art would know how to capture a video stream using a
camera." Reply Br. 4. Appellants submit that "[a] for determining game
7 Although the Examiner references a rejection under 35 U.S.C. § 112,
second paragraph, regarding the indefiniteness of claims 1-5 and 6-20
"[d]ue to the deficiencies of the [S]pecification and the breadth of the claim
limitations," such a rejection does not appear to be formally entered. Ans.
13.
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state, the [S]pecification explains alternative ways for determining game
state - computer vision or data entered by attendant." Id.
The proper inquiry is "whether the disclosure of the application relied
upon reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date." Ariad
Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en
bane). Here, Appellants have not demonstrated, nor can we find in the
Specification, a disclosure of how the computer-implemented method
determines, by one or more processors, a game state for the live casino table
game, as claimed, notwithstanding having received input from a camera.
Accordingly, we sustain the Examiner's rejection of claim 1, and
therefore, also claims 2-5, as failing to comply with the written description
requirement. Independent claim 16 similarly recites "instructions to
determine a game state of the casino table game" (Appeal Br. 19), and
independent claim 26 similarly recites "determining, by one or more
processors, a game state for the live casino table game" (id. at 20). Because
the Examiner relies on the same determinations with respect to independent
claims 16 and 26 (see Final Act. 4--5; Ans. 9-13) and Appellants present the
same arguments as presented with respect to the written description support
of this limitation as recited in claim 1 (see Appeal Br. 14--16; Reply Br. 3--4)
for independent claim 16, while omitted arguments for independent claim 26
(see Appeal Br. 8-17; Reply Br. 3--4), we also sustain the Examiner's
rejection of claims 16-20 and 26-30 for the same reasons stated supra with
respect to claim 1.
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DECISION
The Examiner's decision rejecting claims 1-5, 16-20, and 26-30
under 35 U.S.C. § 101 is affirmed.
The Examiner's decision rejecting claims 1-5, 16-20, and 26-30
under 35 U.S.C. § 112 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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