Ex Parte Corbo

Patent Trial and Appeal Board

Jan 30, 2018

14284378 (P.T.A.B. Jan. 30, 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.
14/284,378 05/21/2014 Dana Corbo 356543-991103 2159
26379 7590
DLA PIPER LLP (US )
2000 UNIVERSITY AVENUE
EAST PALO ALTO, CA 94303-2248
EXAMINER
COBURN, CORBETT B
ART UNIT PAPER NUMBER
3714
NOTIFICATION DATE DELIVERY MODE
02/01/2018 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):
PatentDocketingU S -Palo Alto @ dlapiper. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANA CORBO
Appeal 2017-003192
Application 14/284,378
Technology Center 3700
Before: CHARLES N. GREENHUT, JILL D. HILL and, LISA M. GUIJT,
Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
16. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2017-003192
Application 14/284,378
CLAIMED SUBJECT MATTER
The claims are directed to a method and system for providing real
time sports betting information. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A method for providing sporting event odds and information,
for sports books, in substantially real time where the sports
books, gamblers and enthusiasts want real time odds and
information on the sports books computer, the method
comprising:
providing a program that utilizes an Internet connection to
provide real time sports bet odds and information for a plurality
of sports games from a sport book, said real time sports bet odds
and information being downloaded and stored on a user's
computer, and wherein said program being incapable of placing
bets;
the program displaying real time odds and information
including a major line move alert indicating when the sport book
change their odds for a bet for a sports game with a user settable
period of time; and
navigating said display in order to acquire real time sports
bet odds and information using a menu made up of various
menus, and for any particular game or bet, the program being
capable of visually cycling through the odds.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Corbo
Corbo
Corbo
US 7,699,701 B2 Apr. 20, 2010
US 8,057,300 B2 Nov. 15, 2011
US 8,764,556 B2 July 1,2014
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Appeal 2017-003192
Application 14/284,378
REJECTIONS
Claims 1-16 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1-16 are rejected on the ground of nonstatutory double
patenting as being unpatentable over the claims of U.S. Patent Numbers
8,764,556, 8,057,300 and 7,699,701.
OPINION
Because the double-patenting rejection is not argued, it is summarily
sustained.1
Appellant argues claims 1-16 as a group, for which we select claim 1
as representative. See 37 C.F.R. § 41.37(c)(l)(iv). We agree with, and
adopt as our own, the Examiner’s analysis under § 101. See Ans. 3-10. We
add the following discussion only for emphasis.
“The Examiner determines that claim 1 is directed “to the abstract
idea of providing odds to potential betters.” Final Act. 2. The Examiner
also determines that the additional limitations of claim 1 amount to no more
than “(i) mere instructions to implement the idea on a computer, and/or
1 See e.g. In re Berger, 279 F.3d 975 (Fed. Cir. 2002) (in which the Board
affirmed an uncontested rejection of claims under 35 U.S.C. § 112, second
paragraph, and on appeal the Federal Circuit affirmed the Board’s decision
and found that the appellant had waived his right to contest the
indefmiteness rejection by not presenting arguments as to error in the
rejection on appeal to the Board). See also, Hyatt v. Dudas, 551 F.3d 1307,
1314 (Fed. Cir. 2008) (“the applicant can waive appeal of a ground of
rejection”)
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Appeal 2017-003192
Application 14/284,378
(ii) recitation of generic computer structure that serves to perform generic
computer functions that are well-understood, routine, and conventional
activities previously known to the pertinent industry.” Final Act. 2.
Initially, we cannot agree with Appellant that the cited examination
guidelines regarding § 101 (App. Br. 5-6) created a de facto rule that the
Examiner must identify some case or example in which similar claims were
held ineligible under § 101 to support a § 101 rejection. First, rejections at
the PTO must necessarily be able to antedate cases in which the
particular legal principles involved undergo judicial review. Second, such a
requirement would run counter to the principle of not allowing eligibility
determinations to hinge on the so-called draftsman’s art. See Alice Corp. v.
CLS Bank Inti, 134 S.Ct. 2347, 2358-59(2014) (quoting Parker v. Flook,
437 U.S. 584, 593 (1978)). Here, the Examiner followed the Alice
framework and correctly concluded that claim 1 was directed to ineligible
subject matter under § 101.
Appellant next argues the claims do not tie up an abstract idea. App.
Br. 6; Reply. Br 5. We cannot agree with the Appellant that claim 1 does
not have a preemptive effect, foreclosing basic tools of gambling.
In Gottschalkv. Benson, 409 U.S. 63, 93 S. Ct. 253, 68 (1972), the
Court, citing O’Reilly v. Morse (56 U.S. 62 (1853)), cautioned that a claim
“so abstract and sweeping as to cover both known and unknown uses” is not
directed to patent-eligible subject matter under 35 U.S.C. § 101. In Alice at
2354 , the Supreme Court reaffirmed this principle:
We have long held that this provision contains an important
implicit exception: Laws of nature, natural phenomena, and
abstract ideas are not patentable. We have interpreted § 101 and
its predecessors in light of this exception for more than 150 years.
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Appeal 2017-003192
Application 14/284,378
We have described the concern that drives this exclusionary
principle as one of pre-emption. Laws of nature, natural
phenomena, and abstract ideas are ‘the basic tools of scientific
and technological work. [Monopolization of those tools through
the grant of a patent might tend to impede innovation more than
it would tend to promote it, thereby thwarting the primary object
of the patent laws. We have repeatedly emphasized this concern
that patent law not inhibit further discovery by improperly tying
up the future use of these building blocks of human ingenuity.
Alice Corp. Pty. Ltd, v. CLS Bank Intern., 134 S. Ct. at 2354 (quotations and
citations omitted).
In arguing that the claims lack a preemptive effect, Appellant quotes
the claim language and summarily concludes the claim does not tie up an
abstract idea. App. Br. 6; Reply. Br. 5. The claim is comprised of three
steps, and the first step involves providing real time sports bet odds and
information. The only structures recited are: a program that cannot place
bets; an Internet connection; a sports book; and a computer. The only
manipulative steps are: providing odds and information; and downloading
and storing it on a computer. No specific structures, algorithms, or
manipulative steps are set forth in the first step of the claim, only generic
structures and actions. The structure in the second step includes the program
and the alert. The acts are displaying the odds and information and
providing an alert when the odds change with a user settable period of time.
Without the “program,” this step could be, and has been, performed in many
typically wagering scenarios. All that is required is that the information
flows from the odds maker to the gambler. Like the first step, this clause
lacks any specific structure or algorithm so as to avoid a preemptive effect.
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Appeal 2017-003192
Application 14/284,378
The third step, navigating the display2, again contains generic and well-
known components such as “menus” that allow the user to visually inspect
the odds. This is insignificant post-solution display with no specific
structure or algorithm recited. The claim, read as an ordered sequence and
as a whole contains nothing but generic computer recitations such as “a
program,” “an Internet connection,” “a user’s computer,” “[a] display”
surrounding the basic tools of sports betting: the ability to acquire odds and
related information and be alerted to odds changes. See Alice at 2358-59
(Generic recitations “cannot transform a patent-ineligible abstract idea into a
patent-eligible invention.”). Thus, we cannot agree with Appellant that the
claim contains significantly more than an abstract idea. See App. Br. 7-8.
Rather, claim 1 is an improper attempt to tie up a basic tool of the gambling
arts.
We have considered the claims in the cases cited by Appellant (App.
Br. 6-7; Reply. Br. 2-3, 5-6, 8-9), but do not find the specific language of
those claims to be similar to the language of claim 1.
DECISION
The Examiner’s rejections are 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
2 Although the claim recites the step of “displaying” there is no antecedent
basis for the structure of a “display” specifically.
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