Ex Parte Caldwell et al

Patent Trial and Appeal Board

Mar 13, 2018

14656478 (P.T.A.B. Mar. 13, 2018)

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.
14/656,478 03/12/2015 Timothy Oliver Caldwell 43656/09077CON 5193
27530 7590 03/15/2018
Nelson Mullins Riley & Scarborough LLP
IP Department
One Wells Fargo Center
301 South College Street, 23rd Floor
Charlotte, NC 28202
EXAMINER
SKAARUP, JASON M
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
03/15/2018 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):
ip@nelsonmullins.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY OLIVER CALDWELL,
STEVEN WESLEY DAVIS, and WILLIAM CRISS MARTIN
Appeal 2017-005961
Application 14/656,4781
Technology Center 3700
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal under 35 U.S.C.
§ 134(a) from the rejection of claims 1—21. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is the Applicant, Epic
Tech, LLC. Appeal Br. 1.
Appeal 2017-005961
Application 14/656,478
According to Appellants, the invention “generally relate[s] to software
systems for skill-based redemption games.” Spec. 12. Claims 1, 10, and 18
are the only independent claims on appeal. Appeal Br., Claims App. We
reproduce claim 1, below, as illustrative of the appealed claims.
1 A computer-implemented method for providing a skill-
based game, comprising the steps of:
receiving, by at least one processor, an indication of a user
desire to participate in the skill-based game;
decreasing, by the at least one processor, an account
balance associated with the user;
simulating, by the at least one processor, a first rotation of
at least one displayed simulated reel comprising a first plurality
of symbols;
prior to the next simulated rotation of the displayed at least
one simulated reel, generating, by the at least one processor, a
second plurality of symbols in one or more areas separate from
the displayed at least one simulated reel;
also prior to the next simulated rotation of the displayed at
least one simulated reel, generating, by the at least one processor,
a single third symbol in an area separate from the displayed at
least one simulated reel and separate from the second plurality of
symbols;
requiring, by the at least one processor, a user selection of
one of the second plurality of symbols to be replaced by the third
symbol in order to win the game;
replacing, by the at least one processor, the user-selected
second symbol with the third symbol;
determining, by the at least one processor and based on the
user selection, if the second plurality of symbols matches a
winning combination of symbols;
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increasing, by the at least one processor, the account
balance associated with the user for a winning combination
determined by the processor; and
repeating the steps for at least one subsequent game.
REJECTION
The Examiner rejects claims 1—21 under 35 U.S.C. § 101 as reciting
patent-ineligible subject matter.
ANALYSIS
Initially, we note that Appellants argue against the rejection of
claims 1—21 under a single heading. Appeal Br. 4. We choose claim 1 as
representative of all of these claims, such that claims 2—21 stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(1).
Appellants first argue that the Examiner has not established a prima
facie case that the claims are directed to abstract ideas, because the
Examiner has not presented a sufficient “analysis or explanation” of why the
cases by the Examiner—i.e., Planet Bingo, LLC v. VKGSLLC, 576 F.
App’x 1005 (Fed. Cir. 2014) and In re Smith, 815 F.3d 816 (Fed.
Cir. 2016)—are analogous to the claimed invention, the Examiner has
presented no claim construction, and the Examiner has not analyzed
preemption, or whether the claims are improvements in technology. Appeal
Br. 5—6. Although we have carefully reviewed Appellants’ arguments,
based on our review, Appellants do not persuade us of error.
All that is required to meet the notice requirement of 35 U.S.C. § 132
is that the Examiner set forth the statutory basis of the rejection, and any
references on which the Examiner relies, in a sufficiently articulate and
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informative manner. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011);
see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)
(Section 132 “is violated when a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection.”). In this case, the Examiner indicates that “[cjlaims 1—21 are
not patent eligible[,] and [are] rejected under 35 U.S.C. [§] 101 as being
directed to abstract ideas implemented on a generic computer.” Answer 7.
The Examiner also provides reasoning supporting these determinations, such
as that the claims are similar to claims in other cases found to be directed to
abstract ideas, including “managing a game of bingo (Planet Bingo), and
rules for conducting a wagering game (In re Smith).” Id. 4. Furthermore,
Appellants have not apprised us of a specific error or omission in the above
information set forth by the Examiner, where such an error or omission
deprives Appellants of proper notice as to why the Examiner concludes the
claims are directed to an abstract idea. Therefore, we determine that the
Examiner’s rejection meets the requirements of Section 132.
We determine whether a claim is directed to patent-eligible subject
matter based on the Supreme Court’s framework, as articulated in Alice
Corp. v. CLSBankInt’l, 134 S. Ct. 2347 (2014), which follows the two-part
test set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.
Ct. 1289, 1293 (2012). That is, a claim fails to recite patent-eligible subject
matter if, in accordance with the first part of the Alice/Mayo test, the claim is
directed to an abstract idea, and if, in accordance with the second part of the
test, the claim lacks any further claim limitations that, when “considered]
. . . both individually and ‘as an ordered combination[] ’ . . . ‘transform the
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nature of the claim’ into a patent-eligible application.” Alice, 134 S. Ct.
at 2355 (quoting Mayo, 132 S. Ct. at 1297).
Appellants argue that the “claims are not generically directed to a
skill-based game with no particular characteristics, [which is] merely
implemented on a computer. The claims, when viewed as a whole, in
conjunction with the specification, are directed to a particular and specific
skill-based game.” Appeal Br. 8.
The Examiner finds, however, that “because the current claims
decrease an account balance to play a skill-based game[,] and increase the
account balance for winning outcomes achieved during that skill-based
game, both the claims at issue in In re Smith and the current claims are
directed to the abstract idea of rules for conducting a wagering game.”
Answer 4. Appellants respond that the “claims are not similar to the In re
Smith claims because under [the second step of the Alice/Mayo test],
Appellants’] claims are not directed to a wagering game.” Appeal Br. 20.
Instead, according to Appellants, “[t]he only way to win Appellants’] game
is through application of human skill.” Id. at 17; see also Reply Br. 2-4.
First, even assuming we agree with Appellants that “[t]he only way to
win Appellants’] game is through application of human skill” (Appeal
Br. 17), we disagree with Appellants’ implication that the method recited in
Appellants’ claim 1, for example, is not a wagering game. Specifically,
Appellants do not persuade us that a “wagering game,” as the term is used in
Smith, must be a game based solely on chance. Therefore, Appellants’
argument does not persuade us that the Examiner errs. Even if we agree
with Appellants that claim 1 does not recite a “wagering game,” however,
Appellants do not persuade us that the Court in Smith limited the abstract
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idea only to “wagering games,” as the Court concluded “that the rejected
claims, describing a set of rules for a game, are drawn to an abstract idea.”
In re Smith, 815 F.3d at 819.’
As stated above, Appellants also argue the “claims would not preempt
all of the techniques for providing skill-based games.” Appeal Br. 11. It is
true that the Supreme Court has described “the concern that drives this
exclusionary principle[—i.e., the exclusion of abstract ideas from patent
eligible subject matter—]as one of pre-emption.” See Alice, 134 S. Ct.
at 2354. But characterizing pre-emption as a driving concern for patent
eligibility is not the same as characterizing pre-emption as the dispositive
test for patent eligibility. Instead, “[t]he 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, 134 S.
Ct. at 2354). Yet although “preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.” Id.
Appellants further argue that, even if the claims are abstract, they
recite specific steps that represent an “inventive concept,” specifically at
least:
(a) spinning a first simulated reel that contains symbols, (b)
generating a second set of symbols in a separate area from the
reel, (c) generating a third symbol in an area separate from the
reel and the second set of symbols, (d) requiring the player to
replace one of the second symbols with the third symbol, (e)
determining whether or not the user has won and, if so,
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Application 14/656,478
increasing an account balance, and then (f) repeating each step
for each subsequent game.
Appeal Br. 14.
However, the claims recite simulating spinning, which, as illustrated
in Appellants’ Figure 3, is the display of images corresponding to a
conventional deck of playing cards. See Fig. 3. The claims also recite no
functional effect of the first simulated spin, other than being performed
before the remaining steps. Each of dependent claims 5 and 13 recites
language substantially similar to “wherein the second plurality of symbols
includes one or more symbols in the first plurality of symbols.” But there is
no other function recited in claims 1—21 corresponding to the simulated
spinning of the first symbols, as in (a) above. Based on Appellants’ Figure
3, this simulation in (a) appears to correspond to the operation of a
conventional slot machine, while having no other relationship to the second
and third symbols, and their generation, display, and use.
The generation of the second and third symbols, as in steps (b), (c),
and (d) above, as illustrated in Appellants’ Figure 3, resembles a poker
game, with five cards dealt as the second set of symbols, and the third
symbol as a community card. Although in poker a player is not required to
use the community card, as claimed, we are unpersuaded that this is
anything more than a minor variation of the conventional set of rules for
poker, and different poker games exhibit such minor rule variations.2
2 Although not discussed by the Examiner, Appellants’ rules recited in
claim 1 are similar to the first round in Courchevel Poker, notwithstanding
that in Courchevel a player is not required to use the community card, as
claimed. See
https://en.wikipedia.Org/wiki/Omaha_hold_%27em#Courchevel. Regardless
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Finally, steps (e) and (f), are common elements in conventional games
with a payout and repeating rounds. None of the six recitations identified by
Appellants represent unconventional variations in common game features
which would transform the abstract idea into patent-eligible subject matter.
Appellants further argue the claimed game “is the electronic
equivalent of conducting a new game with a new and original deck of
cards.” Reply Br. 5. Appellants essentially are arguing that novelty and
non-obviousness are evidence that the claims recite an “inventive concept”
that transforms the abstract ideas the claims are directed to into eligible
subject matter. Even assuming Appellants are correct that the claims are
novel and unobvious, such is not persuasive. Although the second part of
the Alice!Mayo test is termed a search for an “inventive concept,” the
analysis is not an evaluation of novelty or non-obviousness, but rather, the
second part a search for “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, 134 S. Ct. at 2355
(alteration in original) (quoting Mayo, 566 U.S. at 73). “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.” Diamond v.
Diehr, 450 U.S. 175, 188-89 (1981). A novel and nonobvious claim directed
to a purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 566
U.S. at 90-91.
of the difference, Appellants’ rules are nothing more than a minor variation
of Courchevel poker.
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Thus, based on the foregoing, Appellants do not demonstrate error in
the Examiner’s rejection of claims 1—21 as reciting patent-ineligible subject
matter. Therefore, we sustain the rejection.
DECISION
We AFFIRM the Examiner’s rejection of claims 1—21.
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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