Howard W. Lutnick et al.

Patent Trials and Appeals Board

Feb 5, 2020

11868013 - (D) (P.T.A.B. Feb. 5, 2020)

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.
11/868,013 10/05/2007 Howard W. Lutnick 07-2170 1135
63710 7590 02/05/2020
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
LIDDLE, JAY TRENT
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
02/05/2020 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):
lkorovich@cantor.com
patentdocketing@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOWARD W. LUTNICK, DEAN P. ALSERUCCI,
GEOFFREY M. GELMAN, and KEVIN BURMAN
____________

Appeal 2018-008423
Application 11/868,013
Technology Center 3700
____________

Before CHARLES N. GREENHUT, MICHAEL L. WOODS, and
ARTHUR M. PESLAK, Administrative Patent Judges.

WOODS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 14–18 and 23–42, which represent all
claims pending in the application. Appeal Br. 3. Claims 2–13 and 20–22
have been cancelled and claims 1 and 19 have been withdrawn. Id. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). The Real Party in Interest is CFPH, LLC. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Appellant’s specification discloses an embodiment in which “a first
player may make a bet that a second player will fare better than does a third
player.” Spec. 9 (Relative Bet). Of the rejected claims, claim 14 is the sole
independent claim. Appeal Br. 21–28 (Claims App.). We reproduce claim
14, below, with emphases added to particular limitations discussed in this
Decision.
14. An apparatus comprising:
A computer device configured to:
determine a first bet made by a first player;
receive from the first player a designation of a
second player that is a first part of the first bet;
receive from the first player a designation of a
third player that is a second part of the first bet;
receive from the first player an indication that the
first bet wins if the second player has a superior
performance to the third player in play of games, in
which the games include a plurality of different game
types that may be played by each of the second and third
player;
associate the second player with a first identity
token;
associate the third player with a second identity
token;
receive, from a first gaming device, a first
indication that the first identity token is associated with a
first gaming activity through the first gaming device;
in response to receiving the first indication, determine a
second bet made by the second player in a first type of game of
the plurality of different game types and determine a first
outcome stemming from the second bet;
receive, from a second gaming device, a second
indication that the second identity token is associated with a
second gaming activity through the second gaming device;
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in response to receiving the second indication, determine
a third bet made by the third player in a second type of game of
the plurality of different game types and determine a second
outcome stemming from the third bet;
determine a first performance metric for the
second player based on at least one of (a) the second bet
and (b) the first outcome and further based on at least one
of (a) a plurality of fourth bets in at least one game types
of the plurality of different game types that is different
from the first and second game types and that is tracked
using the first identity token; and (b) a plurality of third
outcomes in at least one game type of the plurality of
different game types that is different from the first and
second games types and that is tracked using the first
identity token;
determine a second performance metric for the
third player based on at least one of (a) the third bet and
(b) the second outcome and further based on at least one
of (a) a plurality of fifth bets in at least one game types of
the plurality of different game types that is different from
the first and second game types and that is tracked using
the second identity token, and (b) a plurality of fourth
outcomes in at least one game type of the plurality of
different games types that is different from the first and
second game types and that is tracked using the second
identity token;
determine that the first performance metric is
superior to the second performance metric; and
facilitate to the first player a payment based on the
first bet, the indication that the first bet wins if the second
player has a superior performance to the third player, and
the first performance metric being superior to the second
performance metric.
Id. at 21–23 (emphases added).

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kelly US 6,015,344 Jan. 18 2000
Ochi US 2001/0019965 A1 Sept. 6, 2001
Nguyen US 2004/0053675 A1 Mar. 18, 2004
Cannon US 2005/0233794 A1 Oct. 20, 2005
Platis US 2006/0252520 A1 Nov. 9, 2006
White US 2006/0264252 A1 Nov. 23, 2006
REJECTIONS
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
14–18, 23–42 101 Eligibility
14–18, 23–42 112, ¶ 1 Written Description
14–17, 23–26, 30–
36, 39–41
103 Ochi, Cannon
18 103 Ochi, Cannon, Platis
27–29 103 Ochi, Cannon, Kelly
37 103 Ochi, Cannon, White
38 103 Ochi, Cannon, Kelly, White
42 103 Ochi, Cannon, Nguyen
OPINION
With the exception of the Examiner’s rejection of claims 15 and 35 as
unpatentable over Ochi and Cannon (Final Act. 7, 9; Ans. 5), we agree with
the Examiner’s findings, reasoning, and analysis as set forth in the Final
Office Action and Answer and adopt these as our own.

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I. Rejection under 35 U.S.C. § 101
Appellant argues claims 14–18 and 23–42 as a group. See Appeal Br.
18–20. We select claim 14 as the representative claim, with claims 15–18
and 23–42 standing or falling with claim 14. 37 C.F.R. § 41.37(c)(1)(iv).
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”). Concepts determined to be abstract ideas, and thus patent
ineligible, include certain methods of organizing human activity, such as
fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S.
at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95
(1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67
(1972)).
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If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221. “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].”’ Id.
(alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely
requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
In 2019, the U.S. Patent and Trademark Office (“USPTO”) published
revised guidance on the application of § 101. USPTO’s 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
Revised Guidance”). Under the 2019 Revised Guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examining Procedure (“MPEP”)
§ 2106.05(a)–(c), (e)–(h) (Rev. 08.2017 2018)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
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(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception.
See 2019 Revised Guidance.

a. Step 2A, Prong One: Does the Claim Recite a Judicial Exception?
Appellant contends that the Examiner fails to identify what the
abstract idea is. Appeal Br. 19.
We disagree.
The Examiner determines that claim 14 is “directed to making a bet
by a first player whether the second or third player wins at a game (based on
various metrics) and resolving the bet made by the first player in accordance
with the determination.” Final Act. 2. The Examiner further determines that
“[s]uch limitations are similar to limitations that have been decided to be
abstract.” Id. at 3 (citing In re Smith, 815 F.3d 816 (Fed. Cir. 2016)).
Claim 14 contains limitations reciting rules for conducting a wagering
game, namely, “determin[ing] a first bet made by a first player”; designating
second and third players that are “part of the first bet”; providing that the
“first bet wins if the second player has a superior performance to the third
player”; “determin[ing] a second bet made by the second player”;
“determin[ing] a third bet made by a third player”; determining performance
metrics based on bets and outcomes; and “facilitat[ing] to the first player a
payment based on the first bet.” Appeal Br. 21–23 (Claims App.); see also
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supra Claimed Subject Matter. Thus, claim 14 recites a method of
organizing human activity because it recites rules for conducting a wagering
game.
As the Federal Circuit has found, “rules for conducting a wagering
game” are abstract. Smith, 815 F.3d at 818. And rules for conducting a
wagering game fall within the grouping of “[c]ertain methods of organizing
human activity,” and, more particularly, under the subgrouping involving
“following rules.” 2019 Revised Guidance at 52.
For at least the foregoing reasons, we are persuaded that
representative claim 14 recites rules for conducting a wagering game, which
is an abstract idea.

b. Step 2A, Prong Two: Is the Judicial Exception Identified Integrated
into a Practical Application?
Claim 14 recites a certain method of organizing human activity, and in
particular, following rules or instructions.
Although the claim recites “[a]n apparatus comprising: a computing
device configured to . . .” (Appeal Br. 21 (Claims App.)), The Examiner
finds that the additional limitation of a “computing device” is generic and
“not deemed to be significantly more than the abstract idea.” Final Act. 3.
Claim 14 further recites first and second “gaming devices,” that
respectively send first and second “indications” that first and second
“identity tokens” are associated with first and second “gaming activities.”
See Appeal Br. 22 (Claims App.).
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Appellant argues that the “the use of identity tokens . . . would render
these claims patent eligible” (Appeal Br. 19) and the claimed “gaming
devices similarly transforms these claims into something more” (id. at 20).
We disagree. Even if we acknowledge that “gaming devices” and
“identity tokens” are not necessarily general-purpose computers, the realm
of abstract ideas is not limited by using a computer.
As to the claimed “identity token,” Appellant does not discuss, let
alone define, what an “identity token” is. See generally Appeal Br.; see
generally Reply Br. Upon reviewing the record on our own, we find no
reference to “identity token” in the Specification to aid in our understanding
of the term. We agree with the Examiner’s interpretation that the claimed
“identity token” may broadly be interpreted to include a player’s
identification (“ID”) number. See Answer 3 (“Ochi explicitly discloses that
there are IDs, or in other words, ‘identity tokens.’”).
As to the claimed “gaming device,” again, Appellant does not discuss
or define what a “gaming device” is (see generally Appeal Br.; see generally
Reply Br.) and, upon reviewing the record on our own, we find that the plain
language of the claim means that a gaming device is simply a device for
gaming.
We find nothing in the record that attributes “gaming devices” or
“identity tokens” to an improvement in any technology or functionality, to
implementing the abstract idea with a particular machine that is integral to
the claim, which effects a transformation or reduction of a particular article
to a different state or thing, which applies the abstract idea in some other
meaningful way beyond linking the use of the abstract idea to a particular
technological environment, or which otherwise indicates that the claimed
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invention integrates the abstract idea into a “practical application,” as that
phrase is used in the 2019 Revised Guidance.
We further determine that the additional elements of a “computing
device,” a “first gaming device,” a “second gaming device,” a “first identity
token,” and a “second identity token” are simply attempts to limit the
abstract idea to a particular environment (i.e., a wagering game
environment). We agree with the Examiner that the claim merely requires a
set of rules (Ans. 10), and when viewed as a combination, simply
implements the concept of managing or conducting a wagering game with
routine, conventional activity specified at a high level of generality to the
wagering game environment.
In accordance with the 2019 Revised Guidance, and looking to MPEP
§§ 2106.05(a)–(c) and (e)–(h), the additional elements of claim 14, both
individually and as an ordered combination, do not integrate the abstract
idea into a practical application. The additional claim limitations do not
impose any meaningful limits on practicing the abstract idea, as claim 14 (1)
does not improve the functioning of a computer or other technology, (2) is
not applied with any particular machine (except for generic gaming
components), (3) does not effect a transformation of a particular article to a
different state, and (4) is not applied in any meaningful way beyond
generally linking the use of the judicial exception to the particular wagering
game environment, such that the claim, as a whole, is more than a drafting
effort designed to monopolize the exception. See MPEP
§§ 2106.05(a)–(c), (e)–(h).

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c. Step 2B: Are Additional Limitations Well-Understood, Routine, or
Conventional?
We next consider whether claim 1 recites an “inventive concept.” As
discussed above (supra Part I.b), the Examiner determined that claim 14
does not recite an inventive concept because the additional elements in the
claim do not amount to “significantly more” than an abstract idea. See Final
Act. 3.
We agree with the Examiner’s determination in this regard. The
additional elements recited in claim 14 include “computing device,” a “first
gaming device,” a “second gaming device,” a “first identity token,” and a
“second identity token.” Appeal Br. 21–23 (Claims App.). These additional
elements were considered as part of an ordered combination, discussed
above. See supra Part I.b. Claim 14 recites these elements at a high level of
generality, and as discussed above, the record supports a determination that
these components are generic components. Id. Additional elements that
invoke computers or other machinery merely as a tool to perform an existing
process will generally not amount to significantly more than a judicial
exception. See, e.g., Versata Dev. Grp. v. SAP Am., 793 F.3d 1306, 1335
(Fed. Cir. 2015) (explaining that in order for a machine to add significantly
more, it must “play a significant part in permitting the claimed method to be
performed, rather than function solely as an obvious mechanism for
permitting a solution to be achieved more quickly”). Thus, these elements,
taken individually or together, do not amount to “significantly more” than
the abstract idea itself.
As the Examiner correctly notes, “the claims require merely a set of
rules.” Ans. 10. We agree with the Examiner that “[t]hese are the rules of
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the game that are directly related to In Re Smith.” Id. at 11; see also Smith,
815 F.3d 816. Adding hardware, such as “gaming devices” and a
“computing device,” that performs “well understood, routine, conventional
activit[ies] previously known to the industry,” will not make claims patent-
eligible. In re TLI Commc’ns LLC, 823 F.3d 607, 614–15 (Fed. Cir. 2016).
Accordingly, for these reasons, we sustain the Examiner’s rejection
under 35 U.S.C. § 101 of claim 14 as being directed to an abstract idea, and
of claims 15–18 and 23–42, which fall with claim 14.

II. Rejection Under 35 U.S.C. § 112, First Paragraph
The Examiner rejects claims 14–18 and 23–42 under 35 U.S.C. § 112,
¶ 1, for failing to comply with the written description requirement. Final
Act. 3.
Sole independent claim 14 recites, inter alia:
a plurality of fourth bets in at least one game types of the
plurality of different game types that is different from the first
and second game types and that is tracked using the first
identity token;
. . .
a plurality of fifth bets in at least one game types of the plurality
of different game types that is different from the first and
second game types and that is tracked using the second identity
token.
Appeal Br. 22 (Claims App.) (emphasis added).
The Examiner finds that the “limitations regarding fourth bets and
fifth bets [] cannot be found in the originally filed specification, specifically
what the bets relate to (i.e. that the fourth and fifth bets must relate to a
different type of game than a game that [is from] a previous bet(s)[)].” Final
Act. 3–4 (emphasis added).
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In response to the rejection, Appellant argues that a skilled artisan
would have understood that applicants had possession of the claimed
limitations, citing several excerpts from the specification. Appeal Br. 16–18
(citations omitted).
Having reviewed the cited excerpts from the Specification, we are not
persuaded by Appellant’s arguments. As determined correctly by the
Examiner, “the claims specifically require that a bet on a third different type
of game, and such a specific bet is not supported by the specification.” Ans.
9.
Although the cited portions of the Specification provide that the
“[d]isclosed embodiments may apply to table games, video games, boxing
matches, sporting events, the price movements of equities, the price
movement of bonds, the movements of other market securities, the results of
elections, the weather, the temperature, the average test scores of a body of
students, and so on” (Spec. 353:32–354:9), we find nothing in the cited
portion of the Specification that supports the claimed limitation of “a
plurality of fourth bets in at least one game types . . . that is different from
the first and second game types” or “a plurality of fifth bets in at least one
game types . . . that is different from the first and second game types,” as
recited in the claims. See Appeal Br. 22 (Claims App., emphases added).
For example, if the first game type is blackjack and the second game type is
poker, the third game type must be different. The Specification does not
support this limitation.
For the foregoing reasons, we affirm the rejection of claims 14–18 and
23–42 under 35 U.S.C. § 112, first paragraph.

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III. Rejected Under 35 U.S.C. § 103(a)
The Examiner rejects claims 14–17, 23–26, 30–36, and 39–41 as
unpatentable over a combination Ochi and Cannon. Final Act. 5.
Appellant contests the rejection of claims 14, 23–26, 31, 32, 39, and
40 collectively. See Appeal Br. 8–15. Appellant presents additional
arguments for dependent claims 15–17, 30, 34–36, and 41. See id. at 9–15.
We select claim 14 as representative, treating claims 23–26, 31, 32,
39, and 40 as standing or falling with representative claim 14. See 37 C.F.R.
§ 41.37(c)(1)(iv). We also address Appellant’s separate arguments
contesting the rejection of dependent claims 15–17, 30, 33–36, and 41.

a. Claims 14, 23–26, 31, 32, 39, and 40
In rejecting independent claim 14, the Examiner finds that Ochi
discloses the majority of the claimed limitations. See Final Act. 5 (citations
omitted).
As to the claimed “associate the second player with a first identity
token,” the Examiner cites to Ochi’s paragraphs 70, 78, and 79 and further
adds that “this would also be inherent in order to be able to track winners
and losers in a spectator bet type game as disclosed.” Id. (emphasis added).
As to the claimed “receiving, from a first gaming device, a first
indication that the first identity token is associated with a first gaming
activity through the first gaming device,” the Examiner cites to Ochi’s
paragraphs 74–79, 103–105. Id. The Examiner further finds that Ochi
discloses the claimed “receiving, from a second gaming device, a second
indication that the second identity token is associated with a second gaming
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activity through the second gaming device.” Id. at 6 (citing Ochi ¶¶ 74–79,
103–105).
The Examiner finds that Ochi does not disclose a plurality of different
game types, and instead relies on Cannon for teaching this feature. Id. at 5.
In combining Ochi and Cannon, the Examiner reasons that it would have
been obvious to a skilled artisan “to require players in a competition to have
to play a variety of games . . . thus making the game more challenging.” See
id. at 10 (citing Cannon ¶¶ 151–152; Ochi ¶ 120).
In contesting the rejection, Appellant presents two arguments. See
Appeal Br. 8.
First, Appellant argues that the Examiner’s finding that Ochi
inherently discloses a second player with a first identity token is in error. Id.
Second, Appellant argues that the Examiner’s cited portions of Ochi
“do not teach or suggest anything regarding receiving information from a
gaming device or more specifically receiving a first indication that the first
identity token is associated with a first gaming activity.” Id.
We find Appellant’s two arguments unavailing.
As to Appellant’s first argument that Ochi does not inherently disclose
this limitation (id.), Appellant mischaracterizes the Examiner’s findings.
Although the Examiner found that the limitation “would also be inherent,”
the Examiner first finds that Ochi expressly discloses the limitation through
Ochi’s ID number. See Final Act. 5; see also Ans. 2. In particular, the
Examiner cites to Ochi’s disclosure that each player has an ID number. See
Final Act. 5 (citing in relevant part Ochi ¶ 70). Indeed, paragraph 70 of
Ochi discloses that “the function of the personal information storage unit
119 is to store for each player such data as ID number, identification
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number . . . .”) (emphasis added). We agree with the Examiner that Ochi’s
disclosure that each player has an ID number satisfies the claimed “associate
the second player with a first identity token.” See id.; see also Ans. 3 (“Ochi
explicitly discloses that there are IDs, or in other words, ‘identity tokens’
that are coordinated to each player.”). We further point out that Appellant
does not offer a construction of “identity token” that conflicts with this
finding.
As to Appellant’s second argument, we agree with the Examiner’s
finding that Ochi’s system receives, from each player’s gaming device, an
indication that the player’s “identity token” (the discussed-above ID
number) is associated with a first gaming activity. See Ans. 3–5. To
illustrate this point, we reproduce Ochi’s Figure 10, below:

Figure 10 depicts a “general configuration of a game system.” Ochi ¶ 51. In
particular, Figure 10 illustrates game system 100 to multiple game machines
130, each with terminal management devices 131 linked to game machines
130. See id. ¶ 94. Game machines 130 are connected to network 102 via
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terminal management devices 131 (id.) and each terminal management
device 131 is connected to an ID card reader (id. ¶ 95, Fig. 11). Terminal
management device 131 sends data that is input including information from
the ID card reader. Id. ¶ 95, Fig. 11; see also id. ¶ 96 (“The ID card reader
136 reads the data stored in an ID card 141, sending the data to the terminal
management device.”). Ochi explains that entry-processing device 139 is
connected to network 102 and “sends the personal identification information
of the player . . . to the central administrator 110.” Id. ¶ 96. Ochi further
discloses that when an ID card is connected to the ID card reader and a game
application signal is input with the input device, then the terminal
management device 131 performs a game execution entry process. Id. ¶ 97.
Because each player has a game machine with a terminal management
device (see, e.g., id. at Fig. 10, ¶ 94), and the terminal management device
reads the player’s ID number from an ID card reader (id. ¶ 96, Fig.11), and
sends the data and a game application signal (id. ¶ 97) to the central
administrator system (id. ¶¶ 95, 96), we agree with the Examiner that Ochi
discloses the claimed limitations. In other words, Ochi’s central
administrator 110 “receive[s], from a first gaming device [130, 131], a first
indication that the first identity token [player ID number and information] is
associated with a first gaming activity [game application signal] through the
first gaming device [130, 131],” as claimed. See Appeal Br. 22 (Claims
App.).
For the foregoing reasons, we affirm the rejection of claim 14 and of
claims 23–26, 31, 32, 39, and 40, which fall with representative claim 14, as
unpatentable over Ochi and Cannon.

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b. Claims 15 and 352
Claim 15 depends from claim 14 and further recites, “in which to
facilitate to the first player a payment includes to provide to the first player a
payment of twice the amount of the first bet.” Appeal. Br. 23 (Claims App.)
(emphasis added).
Claim 35 indirectly depends from claim 14 and further recites, “in
which the plurality of different game types include different table games but
not slot games.” Id. at 26.
To address these limitations, the Examiner determines that the
limitations of these claims are not critical, and are thus deemed to be design
choice and thus would have been obvious. Final Act. 7, 10.
Appellant contends that the rejections are incomplete. Appeal Br. 9.
We agree with Appellant. The Examiner bears the burden to identify
a reason that would have prompted a person of ordinary skill to modify Ochi
and Cannon, and merely stating that it would have been an obvious design
choice, without more, falls short of that burden.
For the foregoing reason, we reverse the rejection of claims 15 and 35
as unpatentable over Ochi and Cannon.

2 Appellant’s brief groups claim 30 with claim 15. See Appeal Br. 23. We
understand this to be an inadvertent error, however, as the Examiner does
not rely on “design choice” in rejecting claim 30 (see Final Act. 8) and
Appellant contends the rejection of claim 30 in a separate portion of its brief
(see Appeal Br. 11–12). We also understand that the Examiner relies on the
same “design choice” rationale in rejecting claim 35. Final Act. 9. As such,
we limit the “design choice” analysis to claims 15 and 35.
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c. Claim 16
Claim 16 depends from claim 14 and further recites, “in which to
determine a first performance metric for the second player includes to:
determine a first payout associated with the first outcome; and determine a
difference between the first payout and the second bet.” Appeal Br. 23
(Claims App.) (emphasis added).
In addressing this limitation, the Examiner cites to Cannon’s
paragraphs 151 and 152. Final Act. 7.
Appellant contends that nothing in Cannon’s paragraphs 151 and 152
teaches or suggests the claimed limitation. See Appeal Br. 10.
Appellant’s argument is not persuasive. Cannon discloses, “play one
or more of a variety of games for a predetermined time period, at the end of
which the winner will be the player with the most tournament credits
earned.” Cannon ¶ 151. In other words, after the game is completed, the net
payout will be the earned credits minus the waged credits, and “a difference
between the first payout and the second bet” will be satisfied.
For the foregoing reasons, we affirm the rejection of claim 16 as
unpatentable over Ochi and Cannon.

d. Claim 17
Claim 17 depends from claim 14 and further recites, “to determine a
first performance metric for the second player includes to: determine an
amount won by the second player over a first time period identified by the
first bet.” Appeal Br. 23 (Claims App.) (emphasis added).
The Examiner finds that Cannon teaches this limitation, citing to
Cannon’s paragraphs 151 and 152. Final Act. 7.
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Appellant disagrees with the Examiner’s finding. See Appeal Br. 10–
11.
We agree with the Examiner. Cannon discloses that “players will
simultaneously play one or more of a variety of games for a predetermined
period of time.” Cannon ¶ 151 (emphasis added). We find that the
“predetermined period of time” satisfies the claimed “first time period.”
For the foregoing reasons, we affirm the rejection of claim 17 as
unpatentable over Ochi and Cannon.

e. Claims 30 and 41
Claim 30 recites, “in which the first performance metric and the
second performance metric pertain to a same first period of time identified
by the first bet.” Appeal Br. 25 (Claims App.) (emphasis added).
Claim 41 recites, “in which the first bet identifies the first period of
time and the second period of time.” Id. at 28.
In addressing these limitations, the Examiner finds that Ochi’s
paragraph 114 discloses the limitation of claim 30 and that Ochi’s
paragraphs 114 and 115 disclose the limitations of claim 41. Final Act. 9,
10.
Appellant contends that Ochi’s paragraphs 114 and 115 neither teach
nor suggest identification of a time period and that “[n]o time period id [is]
mentioned at all.” Appeal Br. 12.
We disagree with Appellant’s assertion. Ochi’s discloses, “a plurality
of players play a match-type game in real-time or that the players execute
the game at different times.” Ochi ¶ 114 (emphasis added). For example, if
the first player wishes to play a game in “real-time” under similar metrics
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(e.g., most money won in one hour), the first bet “identifies” the one-hour of
real-time as the “first period of time and the second period of time,” as
recited in claim 41, and the first performance metric and the second
performance metric pertain to a same first period of time, that is, the one-
hour of “real-time,” as recited in claim 30.
For the foregoing reasons, we affirm the rejection of claims 30 and 41
as unpatentable over Ochi and Cannon.

f. Claim 33
Claim 33 depends from claim 14 and further recites, “in which the
second bet includes a bet in a slot machine game, and in which the third bet
includes a bet in a table game.” Appeal Br. 25 (Claims App.) (emphasis
added).
The Examiner finds that Cannon discloses this limitation citing
Cannon’s paragraphs 151 and 152. Final Act. 9.
Appellant contends that although the cited portion of Cannon
discloses slot machines and video poker type games, the cited “portions do
not teach or suggest table games.” Appeal Br. 13 (emphasis added).
We disagree with Appellant.
Appellant offers no claim construction analysis or reference to the
Specification to support the argument that “table games” require a physical
table. Id.
Cannon discloses “that one player may choose one type or class of
game by chance, e.g., a reel slot machine game of chance, while a second
player may choose a different type or class of a game of chance, e.g., video
poker.” Cannon ¶ 152 (emphasis added). We find that Cannon’s “reel slot
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machine game” satisfies the claimed “slot machine game” and Cannon’s
“video poker” satisfies the claimed “table game.” We conclude that a broad,
but reasonable, interpretation of the claimed “table game” includes poker,
including poker games played with a video interface, or video poker.
For the foregoing reasons, we affirm the rejection of claim 33 as
unpatentable over Ochi and Cannon.

g. Claim 34
Claim 34 depends from claim 14 and further recites, “in which
determining the first performance metric includes determining that the
second bet qualifies for inclusion in the first performance metric based on a
type of game in which the second bet is placed being one of the plurality of
different game types.” Appeal Br. 26 (Claims App.) (emphasis added).
The Examiner finds that Cannon teaches the claimed limitation. Final
Act. 9 (citing Cannon ¶¶ 151, 152). The Examiner explains it is “inherent
that it must be the types of games allowed if it is allowed to be played.” Id.
(emphasis added).
Appellant contends that the “Examiner claims that the limitations are
inherent from these cited portions . . . but does not comply with the doctrine
of inherency’s requirements.” Appeal Br. 14.
Appellant’s argument is not persuasive.
Cannon teaches that a player is allowed to choose the type of games to
be played for a mini-tournament. Cannon ¶ 151 (disclosing that the players
may choose to play a “winner-take-all” mini-tournament, “wherein the
players will simultaneously play one or more of a variety of games for a
predetermined time period, at the end of which the winner will be the player
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with the most tournament credits earned.”). We agree with the Examiner’s
explanation that “[b]ecause a player is allowed to choose what type of game
they are wanting to play, the machine will inherently only include that type
of game in the minitournament.” Ans. 8. Therefore, the player’s bets
qualify for inclusion in their respective “performance metric” based on the
type of game played, that is, a mini-tournament.
For the foregoing reasons, we affirm the rejection of claim 34 as
unpatentable over Ochi and Cannon.

h. Claim 36
Claim 36 depends from claim 14 and further recites, “in which the
computing device is configured to provide each of a plurality of players with
a fixed amount of money to be used to determine respective performance
metrics . . . .” Appeal Br. 26 (Claims App.)(emphasis added).
The Examiner finds that Cannon’s paragraphs 151 and 152 teach the
limitation. Final Act. 9–10.
Appellant argues that the portions of Cannon cited by the Examiner
do not teach or suggest “that any players are provided with a fixed amount
of money.” Appeal Br. 15.
Appellant’s argument is unavailing.
Cannon discloses that, after paying an entry fee, a player may play
one of many different games, including a “reel slot machine.” Cannon ¶¶
151, 152. We agree with the Examiner’s findings that a skilled artisan
would have understood that “the game must include some sort of currency in
that players win and lose credits” and that a skilled artisan would have
understood “that in order for the players to actually make a wager that the
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players must be given an amount of credits to begin with.” Ans. 8. As such,
Cannon teaches providing each of the players with some “fixed amount of
money,” as recited in the claim.
For the foregoing reasons, we affirm the rejection of claim 36 as
unpatentable over Ochi and Cannon.

i. Rejection of Claims 18, 27–29, 37, 38, and 42
Claims 18, 27–29, 37, 38, and 42 depend from independent claim 14.
Appeal Br. 23–28 (Claims App.). The Examiner rejects these claims as
unpatentable over Ochi, Cannon, as applied above, and at least one of Platis,
Kelly, White, and Nguyen. See Final Act. 10–15.
Appellant does not present additional arguments contesting the
rejection of these claims. See Appeal Br. 6–15.
As such, Appellant does not persuade us of Examiner error in the
rejection of claims 18, 27–29, 37, 38, and 42 as unpatentable over Ochi,
Cannon, and the other cited art. Accordingly, we affirm the rejection of
these claims.
CONCLUSION
The Examiner’s rejection of claims 14–18 and 23–42 under 35 U.S.C.
§ 101 is affirmed.
The Examiner’s rejection of claims 14–18 and 23–42 under 35 U.S.C.
§ 112, fourth paragraph, is affirmed.
The Examiner’s rejection of claims 14, 16, 17, 23–26, 30–34, 36, and
39–41 under 35 U.S.C. § 103(a) as unpatentable over Ochi and Cannon is
affirmed. The Examiner’s rejection of claims 15 and 35 under 35 U.S.C. §
103(a) as unpatentable over Ochi and Cannon is reversed.
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The Examiner’s rejection of claim 18 as unpatentable under 35 U.S.C.
§ 103(a) over Ochi, Cannon, and Platis is affirmed.
The Examiner’s rejection of claims 27–29 as unpatentable under 35
U.S.C. § 103(a) over Ochi, Cannon, and Kelly is affirmed.
The Examiner’s rejection of claim 37 as unpatentable under 35 U.S.C.
§ 103(a) over Ochi, Cannon, and White is affirmed.
The Examiner’s rejection of claim 38 as unpatentable under 35 U.S.C.
§ 103(a) over Ochi, Cannon, Kelly, and White is affirmed.
The Examiner’s rejection of claim 42 as unpatentable under 35 U.S.C.
§ 103(a) over Ochi, Cannon, and Nguyen is affirmed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
14–18,
23–42
101 Eligibility 14–18, 23–42
14–18,
23–42
112, ¶ 1 Written Description 14–18, 23–42
14–17,
23–26,
30–36,
39–41
103 Ochi, Cannon 14, 16, 17, 23–
26, 30–34, 36,
39–41
15, 35
18 103 Ochi, Cannon, Platis 18
27–29 103 Ochi, Cannon, Kelly 27–29
37 103 Ochi, Cannon, White 37
38 103 Ochi, Cannon, Kelly,
White
38
42 103 Ochi, Cannon,
Nguyen
42
Overall
Outcome
14–18, 23–42

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TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED