IGT

Patent Trials and Appeals Board

Jul 24, 2020

14693362 - (D) (P.T.A.B. Jul. 24, 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.
14/693,362 04/22/2015 Brian Book 025094-7591/P001885-001 1567
29159 7590 07/24/2020
Neal, Gerber & Eisenberg LLP (IGT)
2 N. LaSalle Street
Suite 1700
Chicago, IL 60602-3801
EXAMINER
ZHANG, YINGCHUAN
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
07/24/2020 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):
amasia@ngelaw.com
ipusmail@ngelaw.com
patents@igt.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRIAN BOOK
____________

Appeal 2020-000081
Application 14/693,362
Technology Center 3700

____________

Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
BRUCE T. WIEDER, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks review under 35 U.S.C. § 134 from the Examiner’s
final rejection of claims 1–3, 5–7, 9–12, 14–16, and 18–24. 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. Appellant identifies the real party in interest as IGT.
(Appeal Br. 2.)
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CLAIMED SUBJECT MATTER
Appellant’s invention “relates generally to gaming systems and
methods for providing one or more awards based on one or more predictive
player inputs, such as one or more side-wagers placed.” (Spec. ¶ 7.)
Claims 1, 10, and 21 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. An electronic gaming machine comprising:
an interface configured to communicate with a lottery
authority server;
at least one display device;
a plurality of input devices including a payment acceptor;
at least one processor; and
at least one memory device which stores a plurality of
instructions, which when executed by the at least one processor,
cause the at least one processor to:
responsive to a physical item being received via the
payment acceptor, modify a credit balance based, at least
in part, on a monetary value associated with the received
physical item, said physical item being selected from the
group consisting of: a ticket associated with the monetary
value and a unit of currency,
thereafter, receive, via at least one of the input
devices, an input on a predicted final amount of an award
pool of a lottery associated with a lottery authority,
wherein:
the predicted final amount of the award pool
of the lottery is independent of any wager placed on
any predicted final amount of the award pool of the
lottery and independent of any wager placed on any
play of any game displayed by the at least one
display device,
the award pool of the lottery has a first value
at a first point in time, said first value being
independent of any wager placed on any predicted
final amount of the award pool of the lottery and
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independent of any wager placed on any play of any
game displayed by the at least one display device,
the award pool of the lottery has a second,
different value at a second, subsequent point in
time, said second, different value being independent
of any wager placed on any predicted final amount
of the award pool of the lottery and independent of
any wager placed on any play of any game
displayed by the at least one display device,
the award pool of the lottery is maintained by
the lottery authority independent from the electronic
gaming machine, and
the award pool of the lottery is maintained
independent from any play of any game displayed
by the at least one display device,
after an actual final amount of the award pool of the
lottery has been determined by the lottery authority at a
predetermined time and after data associated with the
determined actual final amount of the award pool of the
lottery has been received, via the interface, from the lottery
authority server:
determine if any awards are associated with a
relationship between the predicted final amount of
the award pool of the lottery and the actual final
amount of the award pool of the lottery, and
cause the at least one display device to
display any determined awards associated with the
relationship between the predicted final amount of
the award pool of the lottery and the actual final
amount of the award pool of the lottery, wherein the
actual final amount of the award pool of the lottery
is independent of any wager placed on any predicted
final amount of the award pool of the lottery and
independent of any wager placed on any play of any
game displayed by the at least one display device,
and
responsive to a cashout input being received, cause
an initiation of any payout associated with the credit
balance.
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REJECTIONS
Claims 1–3, 5–7, 9–12, 14–16, and 18–24 are rejected under
35 U.S.C. § 101 as directed to a judicial exception without significantly
more.
Claims 1–3, 5–7, 9–12, 14–16, and 18–202 are rejected under
35 U.S.C. § 103 as unpatentable over Van Ly (US 2009/0191960 A1, pub.
July 30, 2009) and Jackson (US 2010/0203958 A1, pub. Aug. 12, 2010).
Claims 21–24 are rejected under 35 U.S.C. § 103 as unpatentable over
Van Ly, Jackson, and Baerlocher (US 2007/0218982 A1, pub.
Sept. 20, 2007).

ANALYSIS
The § 101 rejection
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. Section 101, however,
“contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n or Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), “for distinguishing patents that claim laws of nature, natural

2 We treat the inclusion of cancelled claims 8 and 17 in the list of rejected
claims on page 7 of the Final Action as harmless and inadvertent error.
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phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 573 U.S. at 217.
Under the two-step framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. at 218. If the
claims are determined to be directed to a patent-ineligible concept, e.g., an
abstract idea, then the second step of the framework is applied to determine
if “the elements of the claim . . . contain[] an ‘inventive concept’ sufficient
to ‘transform’ the claimed abstract idea into a patent-eligible application.”
Id. at 221 (citing Mayo, 566 U.S. at 72–73, 79).
With regard to step one of the Alice framework, we apply a “directed
to” two prong test to: 1) evaluate whether the claim recites a judicial
exception, and 2) if the claim recites a judicial exception, evaluate whether
the claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, such that the claim
is more than a drafting effort designed to monopolize the judicial
exception.” See USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter “2019 Guidance”).
Here, the Examiner determines that claim 1 “recite[s] rules for
providing one or more awards based on one or more predictive player
inputs” and that “[t]hese rules are directed to commercial or legal
interactions. Therefore, the claimed invention is grouped as certain methods
or organizing human activity.” (Answer 4, 5.)
Appellant argues that “the electronic gaming machine of Claim 1
integrates the specialized component of at least a payment acceptor (which
receives a physical item . . . that causes a credit balance of the electronic
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gaming machine to be modified) to ensure that the electronic gaming
machine of Claim 1 qualifies as a particular machine.” (Reply Br. 3.)
Under step one of the Alice framework, we “look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural phenomenon
. . . . Rather, the “directed to” inquiry applies a stage-one filter
to claims, considered in light of the specification, based on
whether “their character as a whole is directed to excluded
subject matter.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015).

Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In
other words, the first step of the Alice framework “asks whether the focus of
the claims is on the specific asserted improvement in [the relevant
technology] or, instead, on a process that qualifies as an ‘abstract idea’ for
which computers are invoked merely as a tool.” Id. at 1335–36; see also
2019 Guidance at 54–55.
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the invention
“relates generally to gaming systems and methods for providing one or more
awards based on one or more predictive player inputs, such as one or more
side-wagers placed.” (Spec. ¶ 7.) Claim 1 provides further evidence.
Claim 1 recites “an interface configured to communicate,” “at least one
display device,” “a plurality of input devices including a payment acceptor,”
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“at least one processor,” “and at least one memory device.” This computer
system performs the steps recited in the remainder of claim 1, i.e.,
“responsive to a physical item being received via the payment acceptor,
modify a credit balance,” “receive . . . an input on a predicted final amount
of an award pool of a lottery,” “and after data associated with the determined
actual final amount of the award pool of the lottery has been received . . .
determine if any awards are associated with a relationship between the
predicted final amount of the award pool . . . and the actual final amount,”
“cause the at least one display to display any determined awards,” “and
responsive to any cashout input being received, cause an initiation of any
payout associated with the credit balance.”
In short, claim 1 recites receiving data, modifying data, receiving
additional data, determining values based on the received data, displaying
data, and outputting data/authorization (“cause an initiation of any payout”).
Receiving data, modifying data, determining values, displaying data, and
outputting data have been determined to be directed to an abstract idea. See,
e.g., Univ. of Florida Research Found., Inc. v. General Elec. Co., 916 F.3d
1363, 1367 (Fed. Cir. 2019) (“[T]he claims are directed to the abstract idea
of ‘collecting, analyzing, manipulating, and displaying data.’”); see also
Content Extraction and Transmission LLC v. Well Fargo Bank, Nat’l Ass’n,
776 F.3d 1343, 1347 (Fed. Cir. 2014) (treating as an abstract idea
“1) collecting data, 2) recognizing certain data within the collected data set,
and 3) storing that recognized data . . . .”).
Claim 1 performs the claimed steps through the recited generic
communications interface, at least one display device, input devices
including a payment acceptor, at least one processor, and at least one
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memory device. In other words, the steps are performed using a generic
computer system. (See Spec. ¶¶ 81–83.)
Appellant, however, argues that “unlike a general purpose computer,
the electronic gaming machine of Claim 1 integrates the specialized
component of at least a payment acceptor.” (Reply Br. 3.) We do not find
this argument persuasive.
Appellant’s claim 1 does not recite any details regarding the payment
acceptor or how it operates. The “payment acceptor” in claim 1 is simply
recited as a generic component. Moreover, in Smart Systems Innovations,
LLC v. Chicago Transit Authority, 873 F.3d 1364 (Fed. Cir. 2017), claim 13
of U.S. Patent Number 7,568,617 was one of the claims at issue. Claim 13
recited, in relevant part, “[a] method for validating entry into a first transit
system using a bankcard terminal, the method comprising: . . . receiving,
from a bankcard reader, bankcard data” and that “the bankcard comprises
one of a credit card and a debit card.” Smart Sys. Innovations, 873 F.3d at
1369 (emphasis added). The Federal Circuit determined that the asserted
claims, including claim 13, “disclose the use of generic computer
components and machinery.” Id. at 1375. The generic recitation in claim 13
of a “bankcard reader,” “a bankcard,” and the use of data obtained by the
reader from the bankcard did not change this determination. Similarly, the
recitations in Appellant’s claim 1 of “a payment acceptor,” “a physical item
being received via the payment acceptor,” and “modify[ing] a credit balance
based . . . on a monetary value associated with the received physical item”
do not persuade us that the claimed steps are performed using anything other
than a generic computer system using generic computer components.
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Claim 1 does not recite technological implementation details or “a
particular way of programming or designing the software . . . , but instead
merely claim[s] the resulting system[].” Apple, Inc. v. Ameranth, Inc., 842
F.3d 1229, 1241 (Fed. Cir. 2016). For example, claim 1 does not recite how
the processor modifies the credit balance, how the processor determines if
any awards are associated with a relationship between the predicted and
actual final amounts of the award pool, how the processor causes the display
device to display determined awards, or how the processor causes initiation
of a payout. Claim 1 does not recite a specific asserted improvement to
computer technology.
Even if we consider claim 1 to be limited to a particular technological
environment, “limiting the claims to [a] particular technological
environment . . . is, without more, insufficient to transform them into patent-
eligible applications of the abstract idea at their core.” Elec. Power Grp.,
830 F.3d at 1354.
Additionally, we do not find indication in the Specification that the
claimed invention effects a transformation or reduction of a particular article
to a different state or thing. Nor do we find anything of record that attributes
an improvement in computer technology or functionality to the claimed
invention or that otherwise indicates that the claimed invention “appl[ies],
rel[ies] on, or use[s] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” (See 2019
Guidance at 54–55.)
Appellant argues that “Claim 1 is directed to an improved way to
operate a computerized machine by integrating predictive input
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opportunities presented in association with a lottery authority server to an
electronic gaming machine.” (Appeal Br. 9.) Appellant’s argument, as we
understand it, is that a new game is made available on the computerized
machine, i.e., new gaming software is made available on the machine. But
claim 1 does not positively recite the operation of another game on the
claimed machine. At best, claim 1 recites the possibility of the display
device displaying information regarding another game. Moreover, claim 1
does not recite how any such additional game would be implemented on the
claimed machine. We do not find Appellant’s argument persuasive.
In cases involving software innovations, such as Appellant argues
here, the inquiry as to whether the claims are directed to an abstract idea
“often turns on whether the claims focus on ‘the specific asserted
improvement in computer capabilities ... or, instead, on a process that
qualifies as an “abstract idea” for which computers are invoked merely as a
tool.’” Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir.
2018) (quoting Enfish, LLC, 822 F.3d at 1335–36). Here, “the claimed
invention merely improves the abstract concept . . . using a computer only as
a tool. This is not what the Supreme Court meant by improving the
functioning of the computer itself nor is it consistent with [Federal Circuit]
precedent applying this concept.” Customedia Techs., LLC v. Dish Network
Corp., 951 F.3d 1359, 1963 (Fed. Cir. 2020).
Appellant seeks to analogize claim 1 to the claims in Data Engine
Technologies LLC v. Google LLC, 906 F.3d 999 (Fed. Cir. 2018). (Appeal
Br. 9–10.) Specifically, Appellant argues that “Claim 1 operates provides
[sic] a solution to the particular problem of players having to cut short a
gaming session to travel to a lottery terminal to make a predictive input in
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association with a lottery which is being run independent of the electronic
gaming machine.” (Id. at 10.) We do not find this argument persuasive.
“Representative claim 12 [in Data Engine] recites . . . [a] technical
solution and improvement in computer spreadsheet functionality.” Data
Engine, 906 F.3d at 1008. Specifically, the claimed invention in Data
Engine “allowed computers, for the first time, to provide rapid access to and
processing of information in different spreadsheets, as well as easy
navigation in three-dimensional spreadsheets.” Id.
Appellant does not persuasively argue how claim 1 improves
computer functionality. Rather, as noted above, Appellant argues that
claim 1 “provides a solution to the particular problem of players having to
cut short a gaming session to travel to a lottery terminal.” (Appeal Br. 10.)
Appellant’s argument relies on the ineligible concept itself to establish that
the claim recites an inventive concept. But “[i]t has been clear since Alice
that a claimed invention’s use of the ineligible concept to which it is directed
cannot supply the inventive concept that renders the invention ‘significantly
more’ than that ineligible concept.” BSG Tech LLC v. BuySeasons, Inc., 899
F.3d 1281, 1290 (Fed. Cir. 2018). Additionally, Appellant does not indicate
where claim 1 refers to or addresses travel or reduced time in a gaming
session. Appellant’s argument is not commensurate with the scope of the
claim and for this additional reason is not persuasive.
Appellant seeks to analogize claim 1 to the claims in DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). (Appeal Br. 10.)
Appellant argues that “Claim 1 includes the inventive concept of introducing
alternative lottery terminal functionality to an electronic gaming machine to
enable such lottery-centric predictive inputs directly from the gaming
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machine and thus enhance the efficiency of time spent using the electronic
gaming machine to yield a desired result.” (Id.) We do not find this
argument persuasive.
The claims in DDR Holdings “specify how interactions with the
Internet are manipulated to yield a desired result –– a result that overrides
the routine and conventional sequence of events ordinarily triggered by the
click of a hyperlink.” DDR Holdings, 773 F.3d at 1258. Appellant’s
claim 1 specifies receiving an input, modifying a credit balance, receiving a
predicted final amount of an award pool of a lottery, receiving data
associated with the determined actual final amount of the award pool,
determining if any awards are associated with a relationship between the
predicted final amount of the award pool and the actual final amount,
causing the display of any determined awards, and initiating any appropriate
payout. Appellant does not persuasively argue how this is analogous to
overriding the routine and conventional sequence of events ordinarily
triggered by the click of a hyperlink.
Appellant seeks to analogize claim 1 to the claims in BASCOM
Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed.
Cir. 2016). (Appeal Br. 10.) Specifically, Appellant argues that “Claim 1
recites . . . an improved way to introduce alternative lottery terminal
functionality to an electronic gaming machine to enhance the efficiency of
time spent using the electronic gaming machine by eliminating the need to
have to interact with different machines at different locations.” (Appeal
Br. 10.) We do not find this argument persuasive.
In BASCOM, the court determined that “an inventive concept can be
found in the non-conventional and non-generic arrangement of known,
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conventional pieces.” BASCOM, 827 F.3d at 1350. Specifically,
BASCOM’s content filter could be “installed remotely in a single location”
and “this particular arrangement of elements is a technical improvement
over the prior art ways of filtering.” Id. Here, however, claim 1 does not
recite any particular configuration of the communications interface, display
device, input devices, processor, and memory device. Additionally,
Appellant does not indicate where claim 1 refers to or addresses enhancing
the efficiency of time spent using the gaming machine. Appellant’s
argument is not commensurate with the scope of the claim and for this
additional reason is not persuasive.
Appellant seeks to analogize the claims to the claims in McRO, Inc. v.
Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016).
(Appeal Br. 10.) Appellant argues that the improvement is to the
“employment of alternative lottery terminal functionality at an electronic
gaming machine to both save player time … and potentially increase player
safety.” (Id.) But Appellant does not explain how this improves the
communications interface, the display device, the input devices, the
processor, or the memory device. In contrast, “[t]he claimed improvement
[in McRO] was to how the physical display operated (to produce better
quality images).” SAP Am., Inc., 898 F.3d at 1167. We do not find
Appellant’s argument persuasive. Appellant’s argument is also not
commensurate with the scope of the claim and for this additional reason is
not persuasive.
Moreover, we do not see how the recitation of a generic
communications interface, display device, input devices including a payment
acceptor, processor, and memory device, even in conjunction with the
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recited functions, “ensure[s] ‘that the [claim] is more than a drafting effort
designed to monopolize the [abstract idea].’” Alice, 573 U.S. at 221 (second
and third brackets in original) (quoting Mayo, 566 U.S. at 77).
In view of the above, we determine that claim 1 is directed to gaming
systems and methods that provide awards based on player and other inputs.
The method recited in claim 1 “is, effectively, a method of exchanging and
resolving financial obligations.” In re Smith, 815 F.3d 816, 818 (Fed. Cir.
2016).3 In other words, claim 1 is directed to “commercial or legal
interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or behaviors; business
relations.” (See 2019 Guidance at 52.) Therefore, we agree with the
Examiner that claim 1 is directed to the abstract idea of certain methods of
organizing human activity. (See Answer 5; see also 2019 Guidance at 52.)
Under prong one of the two prong test in the 2019 Guidance, claim 1
recites an abstract idea, i.e., certain methods of organizing human activity;
and, under prong two, additional elements in claim 1 do not “apply, rely on,
or use the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception.” (See id. at 54.) As such,
under step one of the Alice framework, claim 1 is directed to an abstract
idea, and we move to step two.

3 Although we describe to what the claims are directed at a different level of
abstraction than the Examiner, it is recognized that “[a]n abstract idea can
generally be described at different levels of abstraction.” Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in
this case does not, “impact the patentability analysis.” See id. at 1241.
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Step two of the Alice framework has been described “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.’” Alice, 573 U.S.
at 217–18 (brackets in original) (quoting Mayo, 566 U.S. at 72–73). Under
step two, we examine, inter alia, whether a claim element or combination of
elements “[a]dds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field, which is
indicative that an inventive concept may be present.” (2019 Guidance
at 56.)
As an initial matter, we note that it is well settled that “the use of a
computer to obtain data, adjust account balances, and issue automated
instructions; all of these computer functions are well-understood, routine,
conventional activit[ies] previously known to the industry.” Alice, 573 U.S.
at 225 (quoting Mayo, 566 U.S. at 73).
Taking the claim elements separately, the functions performed in
claim 1 by the generic communications interface, display device, input
devices including a payment acceptor, processor, and memory device are
purely conventional. Receiving data, modifying data, determining values,
displaying data, and outputting data are well-understood, routine, and
conventional functions previously known to the industry. See, e.g., Elec.
Power Grp., 830 F.3d at 1356 (The claims “do not include any requirement
for performing the claimed functions of gathering, analyzing, and displaying
in real time by use of anything but entirely conventional, generic technology.
The claims therefore do not state an arguably inventive concept . . . .”); see
also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303,
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1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming.”).
Considered as an ordered combination, the generic computing
components of Appellant’s claimed invention add nothing that is not already
present when the limitations are considered separately. For example,
claim 1 does not, as discussed above, purport to improve the functioning of
the communications interface, display device, input devices including a
payment acceptor, processor, and memory device themselves. Nor does it
effect an improvement in any other technology or technical field. Instead,
claim 1 amounts to nothing significantly more than an instruction to apply
the abstract idea using generic computer components performing routine
computer functions. That is not enough to transform an abstract idea into a
patent-eligible invention. See Alice, 573 U.S. at 225–26.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1 under § 101. Claims 2, 3, 5–7, 9–12, 14–16, and 18–24 are not
separately argued and fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).

The § 103 rejections
Obviousness is a legal conclusion involving a determination of
underlying facts.
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
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light to the circumstances surrounding the origin of the subject
matter sought to be patented.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966)).
With regard to the scope and content of the prior art, the Examiner
finds that
[i]n Fig. 5 of Van Ly, Van Ly demonstrates two independent
games. One is the well-known existing jackpot controllers which
operate with EGMs [(electronic gaming machines)] (520 and
521), in which the jackpot pool 521 is analogous to the lottery
pool as claimed in the claimed invention. The other game is the
new side bet on the final value of the jackpot pool (530, 540, and
541), which teaches most of the features recited in the gaming
machine of claim 1, the gaming method of claim 10 and the
gaming system of claim 21. The value of 521 is independent on
the amounts wagered at 530, which is towards 541 controlled by
540.

(Answer 26–27 (emphasis added).)
Van Ly discloses:
A method of gaming comprising conducting a jackpot
having a jackpot prize awarded from a jackpot pool; receiving at
least one player prediction of a final value of a parameter
characterizing the jackpot prize when the jackpot is awarded
determining that a jackpot prize is to be awarded; determining a
final value of the parameter corresponding to the award of the
jackpot; and determining whether to award one or more prizes
from a prediction prize pool based on each player prediction and
the final value.

(Van Ly, Abstract.) Figure 5 of Van Ly is reproduced below.
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Figure 5 “is a block diagram showing how a plurality of gaming terminals
are networked and in data communication with a jackpot controller.” (Van
Ly ¶ 66.)
Appellant argues that the predictions wagered on in
Van Ly pertain to the final value of the jackpot pool (maintained
by the jackpot controller 520) and do not pertain to the final value
of the prediction prize pool (maintained by the jackpot prediction
controller 540). As such, Van Ly (as well as the combination of
Van Ly and Jackson and the combination of Van Ly and Jackson
and Baerlocher) fails to disclose receiving an input on a predicted
final amount of the prediction prize pool (i.e., the interpreted
award pool of a lottery associated with a lottery authority).

(Reply Br. 6.) We understand Appellant’s argument to be that Van Ly
discloses receiving an input on a predicted final amount of the jackpot or
mystery prize pool (520 or 521 in Figure 5), but does not disclose receiving
an input on a predicted final amount of the prediction prize pool (540, 541 in
Figure 5).
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Claim 1 recites “receive . . . an input on a predicted final amount of an
award pool of a lottery associated with a lottery authority.”4 The Examiner
analogizes the award pool of the lottery to the jackpot pool stored in
database 521. (Answer 26–27.) Van Ly discloses that
jackpot contributions are configured in accordance with the
techniques known in the art and are transmitted to the jackpot
controller 520 via the PMM [(player marketing module)] 50 from
the electronic gaming machine 10. This process occurs
irrespective of whether the jackpot controller 520 is
implementing a mystery jackpot or a game triggered progressive
jackpot. The jackpot controller 520 is arranged to aggregate and
store the contributions to the prize pools in database 521.

(Van Ly ¶ 85.)
In the Examiner’s analogy, the input on a predicted final value of the
jackpot (i.e., the jackpot stored in database 521) corresponds to the input on
the predicted final amount of the award pool (as recited in claim 1). The
jackpot value stored in database 521 is not independent of wagers placed on
any play of any game displayed by the at least one display device, i.e., not
independent of games on the EGMs. (See Van Ly ¶¶ 85–87.) However, the
Examiner finds that the value stored in database 521 is independent of the
value stored in 541, and it is in database 541 that the predicted final values
of the jackpot are stored. (Answer 26–27.) But claim 1 also requires that
the award pool of the lottery be “independent of any wager placed on any
play of any game displayed by the at least one display device.”

4 We note that the term “lottery authority” does not appear in Appellant’s
Specification. However, in multiple locations the Specification refers to “a
state run or multi-state lottery.” (See, e.g., Spec. ¶ 9.)
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In other words, in claim 1, the bet is on a predicted final amount of a
lottery, independent of bets on games played on the EGM, i.e., “receive . . .
an input on a predicted final amount of an award pool of a lottery . . .
wherein: the predicted final amount of the award pool . . . is . . . independent
of any wager placed on any play of any game displayed by the at least one
display device.” (See Claim 1.) In Van Ly, the bet is on a predicted final
amount of a jackpot pool, where the jackpot pool depends, in part, on bets on
games played on the EGM. But, as noted above, claim 1 requires that the
award pool of the lottery be “independent of any wager placed on any play
of any game displayed by the at least one display device.” That is not the
case in the portions of Van Ly relied on by the Examiner.
However, the Examiner determines that
it would have been obvious to one of ordinary skill in the art
before the time of invention to have applied the gaming machine
disclosed by Van Ly to the bet on the final outcomes of
traditional lottery pool, since the structure in Figure 5 fits
perfectly fine to bet on the final outcomes of traditional lottery
pool when replacing the jackpot controller 520 with the
traditional lottery pool.

(Final Action 12; see also Answer 27–28.)
Appellant argues that
modifying Van Ly (based on simply what the Office considers to
be obvious and not on any disclosure from Van Ly or Jackson or
any other prior art reference) such that the value of the mystery
or game triggered progressive jackpot is independent on the
amounts wagered at the gaming machines which have been
aggregated into the mystery or game triggered progressive
jackpot of Van Ly would improperly render Van Ly
unsatisfactory for its intended purpose. . . .
Specifically, since the purpose of Van Ly is to enable
player predictions on a final value of a pool of portions of bet
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amounts placed at gaming machines (see paragraph [0016]), one
of ordinary skill in the art would not modify Van Ly such that
the player predictions are specifically not on such a pool of bet
amounts placed at the gaming machines because such a
modification renders Van Ly unsatisfactory for its intended
purpose.

(Appeal Br. 18.)
The Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398 . . . (2007), explained that, “because inventions in most,
if not all, instances rely upon building blocks long since
uncovered, and claimed discoveries almost of necessity will be
combinations of what, in some sense, is already known,” “it can
be important to identify a reason that would have prompted a
person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does.” Id. at 418–
19.

Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 991–92 (Fed. Cir.
2017). Here, the Examiner does not sufficiently explain the reasoning with
rational underpinnings to modify Van Ly from a system that adds a side bet
to a jackpot pool for games associated with the gaming machine, to a system
that incorporates a bet on an award pool “independent of any wager placed
on any play of any game displayed by the at least one display device,” as
recited in claim 1. See KSR Int’l Co., 550 U.S. at 418, citing In re Kahn,
441 F.3d 997, 988 (Fed. Cir. 2006). Therefore, we will reverse the rejection
of independent claim 1. For similar reasons we will also reverse the
rejections of independent claims 10 and 21, and dependent claims 2, 3, 5–7,
9, 11, 12, 14–16, 18–20, and 22–24.

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CONCLUSION
The Examiner’s rejection of claims 1–3, 5–7, 9–12, 14–16, and 18–24
under 35 U.S.C. § 101 is affirmed.
The Examiner’s rejections of claims 1–3, 5–7, 9–12, 14–16, and 18–
24 under 35 U.S.C. § 103 are reversed.
Specifically:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5–7, 9–
12, 14–16,
18–24
101 Eligibility 1–3, 5–7, 9–
12, 14–16,
18–24

1–3, 5–7, 9–
12, 14–16,
18–20
103 Van Ly, Jackson 1–3, 5–7,
9–12, 14–
16, 18–20
21–24 103 Van Ly, Jackson,
Baerlocher
21–24
Overall Outcome 1–3, 5–7, 9–
12, 14–16,
18–24

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