Ex Parte Shaw

Patent Trial and Appeal Board

Sep 28, 2017

13076221 (P.T.A.B. Sep. 28, 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.
13/076,221 03/30/2011 Edwin W. Shaw 113969.000004 3176
39564 7590 10/02/2017
FisherBroyles, LLP
945 East Paces Ferry Road NE
Suite 2000
Atlanta, GA 30328
EXAMINER
RENWICK, REGINALD A
ART UNIT PAPER NUMBER
3714
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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):
docketing @ fisherbroyles .com
patent @ fisherbroyles. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWIN W. SHAW
Appeal 2016-006766
Application 13/076,221
Technology Center 3700
Before LISA M. GUIJT, JEFFREY A. STEPHENS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-006766
Application 13/076,221
STATEMENT OF THE CASE
Appellant Edwin W. Shaw1 appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision, as set forth in the Final Office Action dated May 8,
2015 (“Final Act.”), rejecting claims 1—3 and 7—9 under 35 U.S.C. § 101
because the claimed invention is directed to non-statutory subject matter.2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claims are directed to a skilled-based, finite pool wagering game
and method of conducting the same. Spec. 1 (Title). Claims 1 and 7 are the
independent claims on appeal. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A method of conducting a skill-based electronic game
comprising:
establishing an electronic finite pool of game outcomes
and associated an electronic monetary prize amounts, said finite
pool comprising a fixed aggregate amount of electronic monetary
prizes;
accepting player wagers or ticket purchases via a player
terminal in communication with a central system, said central
system in communication with a plurality of player terminals
forming a game network, said player terminals including at least
a display and player interface;
selecting an electronic monetary prize amount and
electronic game outcome from said finite pool of electronic game
outcomes;
1 Appellant identifies Kodiak Entertainment as the real party in interest.
Appeal Brief, dated October 20, 2015 (“Appeal Br.”), at 4.
2 Claims 4—6 and 10-12 are cancelled. Appeal Br. 14—15 (Claims
App.).
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presenting to the player an electronic monetary prize
amount that will be won if the player wins the skill-based
electronic game in an allotted time period;
via the display, presenting the skill-based electronic game
to the player;
providing an allotted time period for the player to attempt
to accomplish said skill-based electronic game via said player
interface;
if the player wins the skill-based electronic game in the
allotted time period, awarding the player said electronic
monetary prize amount and any electronic bonus prize pool
amount;
if the player fails to win the skill-based electronic game in
the allotted time period, not awarding the player said electronic
monetary prize amount and adding said electronic monetary
prize amount to said electronic bonus prize pool, said electronic
bonus prize pool awarded in each instance to a next player on
any player terminal on the game network to win a skill-based
electronic game in an allotted time period; and
wherein aggregate electronic monetary prize amounts and
aggregate electronic bonus prize pool amount equal said fixed
aggregate electronic amount of prizes in said electronic finite
prize pool.
DISCUSSION
The Rejection of Claims 1—3 and 7—9
as Directed to Non-statutory Subject Matter
The Examiner finds that claims 1—3 and 7—9 are directed to an abstract
idea for the “steps to perform a skill based competition” or “game rules.”
Final Act. 2—3; see also Answer, dated April 21, 2016 (“Ans.”), at 3 (“the
claimed invention is a wagering game, [and] a method of exchanging
financial obligations based upon the completion of a skill based game”).
The Examiner also finds that using the physical objects recited in the claims
such as a “centralized server,” “display,” and “[player] user interface” is “a
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generic computer implementation of the covered abstract idea” (Ans. 4—5)
that does not impart patent eligibility.
In response to the Examiner’s rejection, Appellant argues:
While a method of conducting a wagering game, whether
facilitated with physical cards or a processor, involves a wager
and resolution of the wager, the claims herein are directed to
manner in which the wagering game itself is conducted and the
system which facilitates the method. In this instance, players
have the opportunity to play a skill-based game and, if
successful, win a prize and, if unsuccessful, the prize pool grows
until a next player completes the skill-based task. The financial
exchange is ancillary to the underlying method/system.
Reply Brief, dated June 21, 2016 (“Reply Br.”), at 4. Appellant argues that
the claims “do not preempt a significant amount of inventive activity.”
Appeal Br. 11. Appellant also argues that the claims are patent eligible
because (1) “[cjlaims 1—3 herein are directed to an electronically
implemented method while claims 7—9 herein are directed to an electronic
system” (Reply Br. at 4), and (2) claims 1 and 7 recite “storing the monetary
prize associate with any player not completing the skill-based task, [so that]
the prize pool can be increased significantly while maintaining a finite prize
pool” (id. at 4—5).
The Supreme Court set forth a “framework 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 Inti, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1294
(2012)). According to the Supreme Court’s framework, we must first
determine whether the claims at issue are directed to one of those concepts
(i.e., laws of nature, natural phenomena, and abstract ideas). Id. If so, we
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must secondly “consider the elements of each claim both individually and
‘as an ordered combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Id.
The Supreme Court characterizes the second step of the analysis as “a search
for an ‘inventive concept’ — i.e., 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.’” Id.
(alteration in original). To transform an abstract idea into a patent-eligible
concept, the claims require “more than simply stating the abstract idea while
adding the words ‘apply it.’” Id. at 2357 (citations omitted).
Vox Alice step one, the Examiner finds that claims 1—3 and 7—9 are
directed to an abstract idea for the “steps to perform a skill based
competition” or “game rules.” Final Act. 2—3; see also Ans. 3 (“the claimed
invention is a wagering game, [and] a method of exchanging financial
obligations based upon the completion of a skill based game”). Appellant
does not directly contest the Examiner’s determination in this regard.
Appeal Br. 9—12; see also Reply Br. (“the claims herein are directed to [a]
manner in which the wagering game itself is conducted and the system
which facilitates the method.”) Rather, Appellant argues that because “it is
not physically possible to undertake the claimed method without a
computer” and because the claimed system “requires a specially
programmed computer processor,” all pending claims “are not directed to an
abstract idea.” Appeal Br. 11.
We note that Appellant’s claims compare to other “rules” for human
activity found abstract by the Federal Circuit. See, e.g., In re Smith, 815
F.3d 816 (Fed. Cir. 2016) (determining that rules for playing physical cards
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are abstract ideas); Planet Bingo, LLC v. VKGS LLC, 576 Fed. Appx. 1005,
1007—08 (Fed. Cir. 2014) (non-precedential) (determining that methods of
managing a bingo game are abstract ideas); In re Brown, 645 Fed. Appx.
1014, 1016—17 (Fed. Cir. 2016) (non-precedential) (determining that a
method of cutting hair using scissors is an abstract idea).
Thus, we agree with the Examiner’s determination that the claims are
directed to the abstract idea of “steps to perform a skill based competition”
or “game rules,” and we consider, infra, whether the recitation of a computer
(or specially programmed computer processor) transforms the claimed
subject matter into a patent-eligible concept and is sufficient to ensure that
the patent in practice amounts to significantly more than a patent upon the
ineligible concept itself.
For Alice step two, having determined that claims 1—3 and 7—9 are
directed to an abstract idea, we must determine whether the claims contain
additional elements that transform the claims into patent-eligible subject
matter.
We determine that the Appellant has not provided adequate support
from the Specification to establish that, to the extent claimed, a specially
programmed computer processor is required. Further, the recitation of a
general purpose computer, as argued by Appellants—to the extent
claimed— does not transform the claims into patent-eligible subject matter.
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
(relying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent-eligible).
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Appellant also argues that the recitation of the “physical objects,”
such as a “computer” and “display” recited in the claims brings the claims
within patent-eligible territory. See Appeal Br. 11. According to Appellant,
It is the computer that presents the game on a display, stores the
electronic prizes and distributes the prize to the player first
achieving the skill within an allotted time period. It is not
physically possible to undertake the claimed method without a
computer. The management of the skill-based method and
system requires a specially programmed computer/processor to
facilitate the prize pool and disbursement of the same given the
network nature of the method and system.
Reply Br. 4 (“Claims 1—3 herein are directed to an electronically
implemented method while claims 7—9 herein are directed to an electronic
system.”).
Appellant’s arguments are not persuasive. In Smith, for example, the
Federal Circuit determined that using, shuffling and dealing physical playing
cards (i.e., Appellant’s selecting and presenting a potential award to player
and presenting a skill-based game to a player on a display), and determining
a winner by comparing a player’s physical cards to a dealer’s reference cards
(i.e., Appellant’s central system for determining if player wins and
presenting an award) are “purely conventional” activities. See Smith, 815
F.3d at 819. Appending purely conventional steps to an abstract idea does
not supply a sufficiently inventive concept. Id. In Planet Bingo, the Federal
Circuit also determined that using generic implementation of a computer
(e.g., Appellant’s central system, display, terminal, and player interface) to
apply an abstract idea related to rules of a game does not impart patent
eligibility. Planet Bingo, 576 Fed. Appx. at 1007-08. Here, Appellant’s
“physical objects” are not the type of additional features Alice envisioned as
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imparting patent eligibility. See Alice, 134 S. Ct. at 2358 (“[T]he mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention. Stating an abstract idea while adding
the words ‘apply it’ is not enough for patent eligibility.”) (quoting Mayo,
132 S. Ct. at 1294 (internal quotation marks omitted)). Here, as was the case
in Alice, for purposes of analyzing claims 1—3 and 7—9 under § 101, “the
system claims are no different in substance from the method claims.” See
Alice, 134 S. Ct. at 2360; see also Final Act. 8 (citing CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1374 (Fed. Cir. 2011)).
Although Appellant argues that, in Smith, “the claims were limited to
physical cards,” wherein the pending claims 1 to 3 “are directed to an
electronically implemented method” (Reply Br. 4), Appellant has not
provided any evidence that Appellant’s electronically implemented method
involves anything other than purely conventional activities, or more
precisely, applying the wagering game by the use of a computer.
Appellant also argues that the following limitations “appropriately
limit the claimed invention such that they do not preempt a significant
amount of inventive activity:”
if the player fails to win the skill-based electronic game in
the allotted time period, not awarding the player said monetary
prize amount and adding said monetary prize amount to said
bonus prize pool, said bonus prize pool awarded in each instance
to a next player on any player terminal on the game network to
win a skill-based game in an allotted time period; and
wherein aggregate monetary prize amounts and aggregate
bonus prize pool amount equal said fixed aggregate amount of
prizes in said electronic finite prize pool.
Appeal Br. 11—12; see also Reply Br. 4—5. However, we agree with the
Examiner that “these [limitations] are merely more rules that instruct^ a
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game manager on how to manage and distribute the prize pool, which is thus
another part to the overall abstract idea of the invention and not significantly
more.” Ans. 5.
Claims 1—3 and 7—9, when considered “both individually and ‘as an
ordered combination,’” amount to nothing more than an attempt to patent the
abstract ideas embodied in the steps of the claim. See Alice, 134 S. Ct. at
2355 (quoting Mayo, 132 S. Ct. at 1298). Accordingly, the limitations of
these claims fail to transform the nature of this claim into patent-eligible
subject matter. See id. (citing Mayo, 132 S. Ct. at 1297—98).
The rejection of claims 1—3 and 7—9 under 35 U.S.C. § 101 is
sustained.
DECISION
For the above reasons, the Examiner’s rejection of claims 1—3 and 7—9
under 35 U.S.C. § 101 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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