Ex Parte Kadlec et al

Patent Trial and Appeal Board

Sep 15, 2017

14458753 (P.T.A.B. Sep. 15, 2017)

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.
14/458,753 08/13/2014 Gary F. Kadlec BCG2760-003C 5777
8698 7590 09/19/2017
STANDLEY LAW GROUP LLP
6300 Riverside Drive
Dublin, OH 43017
EXAMINER
CUFF, MICHAEL A
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
09/19/2017 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):
standley docketing @ standleyllp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY F. KADLEC and CRAIG R. SEDORIS
Appeal 2017-008596
Application 14/458,753
Technology Center 3700
Before DANIEL S. SONG, WILLIAM A. CAPP, and
BRANDON J. WARNER, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1—3, 5—22, and 24—26. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
Appeal 2017-008596
Application 14/458,753
THE INVENTION
Appellants’ invention relates to lottery, wagering games. Spec. 12.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A method of administrating a lottery game that comprises a
wagering portion and a resolution portion, comprising the steps
of:
establishing a lottery game by defining a set of game
parameters, including a termination parameter and a set of
valid wager parameters, on an administration server, and
wherein one of the valid wager parameters is that wager
information received is a sequence having a predetermined
number of characters selected from a set of possible
characters;
opening an instance of the lottery game for play on the
administration server;
establishing a wager pool based on the set of valid wager
parameters;
conducting, with a user of a gaming device, a wagering portion
of the lottery game on the administration server, comprising
the steps of:
establishing an interactive communication between the
administration server and the gaming device;
providing game rules and information to the gaming device;
requesting wager and payment information;
receiving, provisionally, the wager and payment
information from the gaming device;
validating the received wager and payment information
against the set of valid wager parameters;
rejecting the received wager and payment information if
either or both of the received wager and payment
information are not valid;
rejecting the received and validated wager and payment
information if accepting the received and validated
wager and payment information would cause the
termination parameter to be exceeded; and
2
Appeal 2017-008596
Application 14/458,753
accepting the received and validated wager and payment
information as an accepted entry by storing the received
and validated wager and payment information in a
wager pool; and
conducting a resolution portion of the lottery game, comprising
the steps of:
closing the wager pool by appending one or more house
entries wherein the number of the one or more house
entries appended is based on the set of valid wager
parameters and the set of the termination parameters;
establishing a prize payout; and
drawing a winner from the wager pool.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Sails
Meckenzie
Shi
Fotevski
Damnjanovic
US 2002/0152130 A1
US 2009/0017905 A1
US 7,539,483 B2
US 2013/0143634 A1
US 2014/0032378 A1
Oct. 17, 2002
Jan. 15,2009
May 26, 2009
June 6, 2013
Jan. 30, 2014
www.rafflemine.com (hereinafter “Rafflemine”) NPL archived
pages from 6/24/2012).
The following rejections are before us for review:
1. Claims 1—3, 5—22, and 24—26 are rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
2. Claims 1—3, 5, 7—13, 21, 22, 24, and 26 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Sails, Fotevski, Damnjanovic,
and Rafflemine.
3. Claims 6 and 25 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sails, Fotevski, Damnjanovic, Rafflemine, and Shi.
3
Appeal 2017-008596
Application 14/458,753
4. Claims 1—3, 5—22, and 24—26 are provisionally rejected on the
ground of nonstatutory double patenting as being unpatentable over
claims 1—27 of co-pending Application 14/273,535.
OPINION
35 U.S.C. § 101 - Non-Statutory Subject Matter
Claims 1 and 22
Appellants argue independent claims 1 and 22 together. Br. 7—17.
We select claim 1 as representative. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that claim 1 is directed to the abstract idea of
wagering or, in other words, the fundamental economic practice and
mathematical relationship or formula guided wagering. Final Action 2. The
Examiner further finds that the additional elements in the claim are mere
instructions to implement the idea on a computer. Id. The Examiner further
finds that the claim elements directed to a computer entail well-understood,
routine, and conventional activities previously known in the industry. Id.
Consequently, the Examiner concludes that the claim does not amount to
significantly more than the abstract idea itself. Id. The Examiner analogizes
the instant application to case authorities such as Alice Corp. v. CLS Bank
Inti, 134 S.Ct. 2347 (2014) and Planet Bingo, LLCv. VKGSLLC, 576 Fed.
Appx. 1005 (Fed. Cir. 2014).
Appellants first argue that claim 1 is not directed to an abstract idea.
Br. 12—15. Appellants attempt to distinguish Planet Bingo by arguing that
the claimed method steps cannot be carried out mentally. Id. at 9.
Appellants characterize the Examiner’s rejection as being comprised of
multiple abstract ideas and argue that the Examiner errs by failing to point
out, with specificity, a single abstract idea that the invention subsumes. Id.
4
Appeal 2017-008596
Application 14/458,753
at 12. Appellants also argue that the claims do not “tie up” the abstract idea
of wagering. Id. at 13. Appellants further argue that, unlike Planet Bingo,
the claimed invention does not implement a known game, like bingo, but
instead is directed to a method of administering a novel and nonobvious
game. Id. at 14 (“the claims are directed specifically at networked device-
implemented methods of administering a novel and nonobvious game that
has heretofore been unknown to the industry”).
In addition, and as detailed more fully below, Appellants also argue
that claim 1 exhibits an “inventive concept” that amounts to “significantly
more” that a patent upon the ineligible concept itself. Id. at 15 (“Applicant’s
claims are not simply instructions to apply the abstract idea of wagering,
without more”).
Section 101 defines patent-eligible subject matter as “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” 35 U.S.C. § 101. The Supreme Court
maintains that this provision contains an important implicit exception,
namely, that laws of nature, natural phenomena, and abstract ideas are not
patentable. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct.
1289, 1293 (2012).
To determine whether an invention claims ineligible subject matter,
we apply the two-step test of Mayo, id. at 1296—97, which has been further
explained in Alice, 134 S.Ct. at 2355. First, we determine whether the
claims at issue are directed to a patent-ineligible concept such as an abstract
idea. Id. Second, we “examine the elements of the claim to determine
whether it contains an ‘inventive concept’ sufficient to ‘transform’ the
5
Appeal 2017-008596
Application 14/458,753
claimed abstract idea into a patent-eligible application.” Id. at 2357 (quoting
Mayo, 132 S.Ct. at 1294, 1298).
Appellants’ argument that claim 1 is not directed to an abstract idea is
without merit. Claim 1 is directed to: “a method of administrating a lottery
game.” Claims App. The claim then proceeds to define a set of game
parameters and procedures for playing and administering the lottery game.
Id. The Federal Circuit has previously found that similar gaming methods
entail an abstract idea.
[W]e conclude that Applicants’ claims, directed to rules for
conducting a wagering game, compare to other “fundamental
economic practice^]” found abstract by the Supreme Court, [cit
omitted]. As the Board reasoned here, “[a] wagering game is,
effectively, a method of exchanging and resolving financial
obligations based on probabilities created during the
distribution of the cards.” . . . Here, Applicants’ claimed
“method of conducting a wagering game” is drawn to an
abstract idea much like Alice’s method of exchanging financial
obligations . . .
In re Smith, 815 F.3d 816, 818—19 (Fed. Cir. 2016); see also Planet Bingo,
576 Fed. Appx. at 1007-08 (determining that methods of managing a game
of bingo are abstract ideas). The Examiner observes, correctly, that just
because wagering related data has a complex label including a
predetermined number of characters, such does not make the storing and
matching of data less abstract. Ans. 17. The Examiner correctly relies on
Alice for the proposition that mere instructions to implement an abstract idea
on a computer cannot impart patent eligibility. Id. at 19.
Having resolved the first step of Mayo in favor of the Examiner’s
position, we turn now to step two to see if claim 1 contains an “inventive
6
Appeal 2017-008596
Application 14/458,753
concept” sufficient to transform the abstract idea into patent-eligible subject
matter. Alice 134 S.Ct. at 2357.
In the instant case, Appellants argue that the claims are not simply
instructions to apply the abstract idea of wagering without more. Br. 15.
With respect to the “something more” requirement of part two of the Mayo
test, Appellants contend that the claims contain language directed to “how”
the invention is implemented and incorporate “something more” than
merely implementing the idea of wagering generally. Id. at 16. Specifically,
Appellants argue that the claims require: (1) devices such as an
administration server and gaming devices; (2) game parameters; (3) a
termination parameter; (4) valid wager parameters; and (5) a comparison of
wager and payment information with a wager pool. Id.
In response, the Examiner takes the position that Appellants’ claim
merely entails a lottery game with instructions to implement the game on a
computer. Id. at 19—20. The Examiner finds that Appellants’ administration
server and gaming devices are merely components of a generic computer
network. Ans. 21. The Examiner directs our attention to paragraphs 43—47
of Appellants’ Specification as evidence demonstrating the lack of any
“inventive concept” in the structure needed to perform the method. Id. We
have reviewed paragraphs 43—47 of the Specification and agree with the
Examiner that it merely describes known, generic, computer equipment.
The Examiner further finds that specific, claimed parameter information,
individually or in combination, fails to rise to the level of the “significantly
more” criterion. Id. \ Mayo, 132 S.Ct. at 1294.
Reviewing the elements of claim 1, we note that Appellants’ method:
(1) conducts a lottery game; (2) provides games rules; (3) requests, receives,
7
Appeal 2017-008596
Application 14/458,753
and validates wager and payment information; (4) establishes a prize payout;
and (5) determines a game winner. Claims App., claim 1. Such steps are
well-understood, routine, conventional activities in the playing of a typical
wagering game. Alice, 1134 S.Ct. at 2359. We agree with the Examiner that
such steps, individually or in combination, do not amount to the “something
more” inventive concept criterion of Mayo and Alice.
We sustain the Examiner’s Section 101 rejection of claims 1 and 22.
Claims 2, 3, 5—21, and 24—26
These claims depend from either claim 1 or claim 22. Claims App.
The Examiner finds that each of these claims, while being more specific than
the independent claims from which they depend, nevertheless fails to
provide “significantly more” than the underlying abstract idea to rise to the
level of an inventive concept. Final Action 4.
Appellants fault the Examiner for not providing more detail and
underlying analysis in the rejection. Br. 17 (“a proper rejection of 22
pending claims . . . cannot be made with such brevity while remaining
within the bounds of a lawful examination”). However, Appellants’ entire
briefing on these claims, in the aggregate, comprises a single, seven-line
paragraph. Id. Appellants do not argue for the separate patentability of
these claims individually by presenting evidence or argument as to why the
content of each or any individual claim contains subject matter rising to the
level of a “something more” inventive concept under Mayo and Alice.
In other appropriate circumstances, not present here, we might expect
the Examiner to support a rejection with more detailed analysis on a claim-
by-claim basis. However, in the instant case, we note that dependent claim 2
merely adds a limitation directed to disbursing the prize payout to the
8
Appeal 2017-008596
Application 14/458,753
winner. Claims App. claim 2. Claims 3, 5, 6, 24 and 25 merely add
limitations directed to the type of characters (e.g., alphanumeric) used in
playing the lottery game. Id. Claims 9, 10, 11, 12, and 26 merely add
limitations directed to the opening and closing of the wagering pool for an
individual lottery game. Id.
Under the circumstances, we will not require the Examiner to recite
the additional limitations of each dependent claim and then separately notify
the Appellants that each such limitation fails to satisfy the “something more”
criterion. If the “something more” is simply not there, it is sufficient for the
Examiner to so state. Here, nothing is to be gained from requiring the
Examiner to engage in repetition of essentially the same finding for each
claim. The Patent and Trademark Office satisfies its initial burden of
presenting a prima facie case of unpatentability by adequately explaining the
shortcomings it perceives so that the applicant is properly notified and able
to respond. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). In our
opinion, that standard has been met by the Examiner in this case.
Having been properly notified of the Examiner’s rejection, the
responsibility devolved upon Appellants to present arguments that explain
why the Examiner erred. See 37 C.F.R. § 41.37(c)(l)(iv). Appellants have
been presented with a full and fair opportunity to present evidence and
argument as to why each or any of the dependent claims rise to the level of a
“something more” inventive concept. The cursory paragraph provided in
Appellants’ brief fails to apprise us of Examiner error in the rejection of
each or any of these claims.
Under the circumstances, we sustain the Examiner’s Section 101
rejection of claims 2, 3, 5—21, and 24—26.
9
Appeal 2017-008596
Application 14/458,753
Unpatentability of Claims 1—3, 5—22, and 24—26
Under 35 U.S.C. § 103(a) as Obvious
Our decision to sustain the Examiner’s Section 101 rejection disposes
of all the claims on appeal. Accordingly, we do not reach the Examiner’s art
rejection of the claims under 35 U.S.C. § 103(a). 37 C.F.R. § 41.50(a) (“The
affirmance of the rejection of a claim on any of the grounds specified
constitutes a general affirmance of the decision of the examiner on that
claim, except as to any ground specifically reversed”).
Non-Statutory Double Patenting
We do not reach the Examiner’s provisional rejection of claims 1—3,
5—22, and 24—26 on the ground of non-statutory obviousness-type double­
patenting. See Ex parte Moncla, 95 U.S.P.Q.2d 1884 (BPAI 2010)
(precedential).
DECISION
The decision of the Examiner to reject claims 1—3, 5—22, and 24—26,
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
10