James P. Janniello et al.

Patent Trials and Appeals Board

Feb 4, 2020

14535123 - (D) (P.T.A.B. Feb. 4, 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.
14/535,123 11/06/2014 James P. Janniello 3431.041US1 6229
21186 7590 02/04/2020
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
ZHANG, YINGCHUAN
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
02/04/2020 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):
SLW@blackhillsip.com
uspto@slwip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES P. JANNIELLO, STEVEN W. LUNDBERG, and
ANDRE L. MARAIS

Appeal 2018-008542
Application 14/535,123
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–15. 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. The Appellant identifies the real party in interest as
Numerals LLC. Appeal Br. 3.
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STATEMENT OF THE CASE
Subject Matter on Appeal
The Appellant’s invention “relates generally to electronic gaming, and
more specifically, in one example, to driving gaming activity based on work
events, including work tasks, work results, and work status.” Spec. ¶ 2.
Claims 1, 6, and 11 are the independent claims on appeal. Claim 6,
reproduced below, is illustrative of the claimed subject matter.
6. A method for performing a work-driven game,
comprising:
obtaining, using a hardware processor, an indication of a
completion of a performance of a work event from a work
processing system associated with a user, the work event
contributing to a production of a work product; and
awarding, using the hardware processor, a gaming asset
associated with the game in a game processing system in
response to the indication of the completion of the performance
of the work event from the work processing system, the gaming
asset advancing a state of a user during the game toward
achieving a gaming objective.

Rejections
Claims 1–15 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter.
Claims 1–15 are rejected under 35 U.S.C. § 102(a)(1) as anticipated
by Stoner (US 4,611,996, iss. Sept. 16, 1986).

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ANALYSIS
Patent Eligibility
The Appellant argues claims 1–15 as a group. Appeal Br. 10–21. We
select claim 6 as representative of the group with the remaining claims
standing or falling therewith. See 37 C.F.R. 41.37(c)(1)(iv).
35 U.S.C. § 101 Framework
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. 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
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mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
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 (citation omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
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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.
After the Appellant’s briefs were filed and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (“USPTO”) published revised
guidance on the application of § 101. 2019 REVISED PATENT SUBJECT
MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
Revised Guidance”). That guidance revised the USPTO’s examination
procedure with respect to the first step of the Mayo/Alice framework by
(1) providing groupings of subject matter that are considered an abstract
idea; and (2) clarifying that a claim is not “directed to” a judicial exception
if the judicial exception is integrated into a practical application of that
exception. Id. at 50. The 2019 Revised Guidance, by its terms, applies to all
applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id. 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) (9th Ed., Rev.
08.2017, Jan. 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, 84 Fed Reg. at 54, 56.
Step One of the Mayo/Alice Framework
Under the first step of the Mayo/Alice framework, the Examiner
determines that claim 6 is “directed to ‘electronic gaming, and more
specifically, in one example, to driving gaming activity based on work
events, including work tasks, work results, and work status[.]’” Final Act. 4
(citing Spec. ¶ 2). The Examiner determines that this concept involves “a
set of rules for conducting a game.” Id. at 5. When viewed through the lens
of the 2019 Revised Guidance, the Examiner’s analysis depicts the claimed
subject matter as a “[c]ertain method[] of organizing human activity—. . .
managing personal behavior or relationships or interactions between people
(including social activities, teaching, and following rules or instructions)”
under Prong One of Revised Step 2A. 2019 Revised Guidance, 84 Fed. Reg.
at 52.
The Appellant characterizes claim 6 as “reward[ing] an asset in a
gaming environment (the game processing system) based on a work event
from outside the gaming environment and in a work environment (the work
processing system).” Appeal Br. 12 (emphasis omitted).
Before determining whether the claims at issue are directed to an
abstract idea, we first determine to what the claims are directed. The Federal
Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter
to claims, considered in light of the specification, based on whether ‘their
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character as a whole is directed to excluded subject matter.’” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See id. at 1335–36.
Here, it is clear from the Specification, including the claim language, that
claim 6 focuses on an abstract idea, and not on any improvement to
technology and/or a technical field.
The Specification provides for “METHODS, SYSTEMS, AND
APPARATUS FOR WORK-DRIVEN GAMING.” Spec., Title. In the
“Background” section, the Specification provides for an electronic gaming
system/processor that accepts information from inputs (i.e., data) from a
game player using an input device (e.g., a joystick, an electronic mouse), and
based on the data awarding the game player with a gaming asset, initiating a
gaming action, and/or achieve a gaming objective. See id. ¶ 4. “[A]
‘gaming asset’ may comprise a virtual asset, a clue, an action within a
gaming environment, an input to a gaming environment, an advancement to
another level in a game, an action of an avatar, and the like.” Id. ¶ 18. The
Specification describes, “a ‘work-driven’ game is a game that is driven
partially or completely based on work events” and may include games of
skill, chance, intellect, etc. Id. ¶ 20. For example, based upon the
completion of a work task, a player maybe awarded a letter in a conventional
phrase guessing game. See id. ¶¶ 19, 22, 56–60, Figs. 6, 8.
Consistent with the disclosure, claim 6 recites “[a] method for
performing a work-driven game, comprising” the steps of obtaining data,
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(i.e., “obtaining . . . an indication of a completion of a performance of a
work event from a work processing system associated with a user, the work
event contributing to a production of a work product”) and awarding a
gaming asset based on the obtained data (i.e., “awarding . . . a gaming asset
associated with the game in a game processing system in response to the
indication of the completion of the performance of the work event from the
work processing system, the gaming asset advancing a state of a user during
the game toward achieving a gaming objective”).
When considered collectively and under the broadest reasonable
interpretation of the claim’s limitations, we agree with the Examiner that the
claim recites a method for driving gaming activity based on work events,
i.e., “a set of rules for conducting a game.” The limitations of obtaining and
awarding are functionally recited without any detail regarding how the
results are accomplished, i.e., in what way(s) technologically or by what
algorithm, and thus can be done by any known method.
The Specification describes the “game” as “conventional.”
Spec. ¶¶ 18, 20, 22, 33, 35–36, 45. The “hardware processor” is not
structurally defined in claim 6 or in the Specification. The Specification
describes a “hardware-implemented module,” which includes a generic
processor. See id. ¶¶ 62–68; see also id. ¶¶ 69–74. The “work processing
system” and the “game processing system” are described functionally in
claim 6 and the Specification, and are generic. See Ans. 12–13. The
Specification describes, “work processing systems 112 may collaborate with
a user or group of users in performing work related tasks.” Spec. ¶ 26,
Fig. 1; see also id. ¶¶ 29–31 (“work interface module 210 may obtain the
work events from a wide variety of conventional work-based systems and
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databases”). The Specification describes, “game processing systems 108
may be informed of and/or detect a work event, such as an update to a status
of a work item, a change in a status of a work item, a milestone for a work
item, and the like.” Id. ¶ 27, Fig. 1. The work processing system and the
game processing system are able to communicate by use of a network. See
id. ¶ 28, Fig. 1. Additionally, awarding gaming assets is described in the
Specification as part of generic electronic gaming. See id. ¶ 4. The
Specification describes, “a ‘gaming asset’ may comprise a virtual asset, a
clue, an action within a gaming environment, an input to a gaming
environment, an advancement to another level in a game, an action of an
avatar, and the like.” Id. ¶ 18. Awarding a gaming asset may be performed
by mapping a work event to gaming input based on a rule base and/or
translating a work event to gaming input by use of a formula. See id. ¶¶ 33,
37–39, 43, 46, Figs. 3A–C.
A method for driving gaming activity based on work events, i.e., “a
set of rules for conducting a game” is similar to the concept of rules for
playing a game.2 In re Smith, 815 F.3d 816 (Fed. Cir. 2016), held a claimed
“method of conducting a wagering game” using a deck of playing cards was
drawn to an abstract idea. In re Marco Guldenaar Holding B.V., 911 F.3d
1157 (Fed. Cir. 2018), held that a method of playing a dice game with a
wager was an abstract concept. In that case, it was held that claims directed
to “rules for playing a dice game” were directed to an abstract concept. Id at

2 We note 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). The Board’s “slight revision of its abstract idea analysis
does not impact the patentability analysis.” Id. at 1241.
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1160, 1161. Accordingly, we conclude that claim 6 recites rules for playing
a game, which is a way of following rules or instructions, one of the certain
methods of organizing human activity identified in the 2019 Revised
Guidance, 84 Fed. Reg. at 52, and thus an abstract idea.
The Appellant argues that the subject matter of claim 6 is not similar
to managing/playing the game of Bingo in Planet Bingo, LLC v. VKGS LLC,
576 F. App’x 1005 (Fed. Cir. 2014). Appeal Br. 12–13. The Appellant’s
argument is not persuasive. The Specification of the present invention
instructs that work-driven games may include games of chance. Spec. ¶ 20.
The game of Bingo is a game of chance.
Under Step 2A, Prong Two of the 2019 Revised Guidance, 84 Fed.
Reg. at 54, we look to whether the claims “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,” i.e., “integrates a judicial exception into
a practical application.” Here, the Appellant contends, “[l]ike the claims of
Enfish, the claims of the present case have a specific asserted improvement
in computer capabilities and they do not simply invoke the computer as a
tool.” Appeal Br. 15 (emphasis added). The Appellant asserts that claim 6
recites an improvement to the functioning of the processing system itself by
the use of the claimed integration of the work processing system and the
game processing system to provide an enhanced work and gaming
experience. See id. at 10 (citing BASCOM Glob. Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1351 (Fed. Cir. 2016)). Similarly, the
Appellant argues that Planet Bingo “does not stand for the proposition that
all claims that somehow provide a game on a computer are directed to an
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abstract idea.” Id. at 13. When viewed through the lens of the 2019 Revised
Guidance, the Appellant contends that under Prong Two, the elements of the
claim integrate the abstract idea into a practical application because the
combination of the elements “reflects an improvement in the functioning of
a computer, or an improvement to other technology or technical field.” 84
Fed. Reg. at 55 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014)). We disagree.
In Enfish, the court held that the focus of the claims was to “a specific
improvement to the way computers operate, embodied in the self-referential
table.” 822 F.3d at 1336. Specifically, “the claims [were] not simply
directed to any form of storing tabular data, but instead [were] specifically
directed to a self-referential table for a computer database.” Id. at 1337.
The Specification provided that “the self-referential table function[ed]
differently than conventional database structures” (id.) and improved “the
way a computer stores and retrieves data in memory” (id. at 1339).
Claim 6, however, is not focused on how databases and tables
function. Under the claimed method information is obtained and a gaming
asset is awarded by use of a generic processor. Although “the work-game
interface processing module 214 may generate the gaming input by mapping
and/or translating a work event to gaming input” (Spec. ¶ 33), claim 6 does
not require this interface. The “focus” of the claim is not “on the specific
asserted improvement in computer capabilities” (Enfish, 822 F.3d at 1336),
but rather on using the hardware processor as a tool to implement the rules
of the game, including awarding a gaming asset based on obtained data. See
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed.
Cir. 2016) (“The Supreme Court and [the Federal Circuit] have repeatedly
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made clear that merely limiting the field of use of the abstract idea to a
particular existing technological environment does not render the claims any
less abstract.”). This alleged improvement lies in the abstract idea itself (i.e.,
the rules of conducting/playing a game), not to any technological
improvement. See BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1287–88 (Fed. Cir. 2018).
Thus, we are not persuaded of error in the Examiner’s determination
that claim 6 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework
Under the second step in the Alice framework (corresponding to
Step 2B of the 2019 Revised Guidance), we find supported the Examiner’s
determination that claim 6’s limitations, taken individually or as an ordered
combination, do not amount to significantly more than the judicial exception
because, the claims lack additional features that are more than well-
understood, routine, conventional activity. Final Act. 6. The Examiner
finds that the claimed recitations of the “method for performing a work-
driven game, comprising” the steps of “obtaining, using a hardware
processor, an indication of a completion of a performance of a work event
from a work processing system associated with a user, the work event
contributing to a production of a work product” and “awarding, using the
hardware processor, a gaming asset associated with the game in a game
processing system in response to the indication of the completion of the
performance of the work event from the work processing system, the gaming
asset advancing a state of a user during the game toward achieving a gaming
objective” are generic data handling. See Ans. 12–15.
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The Appellant argues that “[t]he integration of a work processing
system and a game processing system is a nonconventional and non-generic
arrangement of elements.” Appeal Br. 18; see Reply Br. 6–7.
Taking the claimed elements separately, the functions performed by
the hardware processor are purely conventional. A generic hardware
processor, a generic work processing system, and a generic game processing
system implement the method (see supra) and operate in their ordinary and
conventional capacities to perform the well-understood, routine, and
conventional functions of obtaining data and awarding a gaming asset based
on the obtained data. See Elec. Power, 830 F.3d at 1355 (gathering, sending,
monitoring, analyzing, selecting, and presenting information does not
transform the abstract process into a patent-eligible invention); In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 612 (Fed. Cir. 2016) (“storing,
receiving, and extracting data” are generic computer functions); SAP
America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1169–70 (Fed. Cir. 2018)
(“selecting certain information, analyzing it using mathematical techniques,
and reporting or displaying the results of the analysis” were “basic
functions” of a computer).
Considered as an ordered combination, the components of claim 6 add
nothing that is not already present when the steps are considered separately.
The sequence of obtaining data and awarding a gaming asset based on the
obtained data is equally generic and conventional or otherwise held to be
abstract. See Intellectual Ventures I LLC v. Capital One Fin. Corp., 850
F.3d 1332, 1341 (Fed. Cir. 2017) (holding that the sequence of collecting,
organizing, identifying, mapping, organizing, defining, and detecting was
abstract).
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The Appellant contends that the integration of a work processing
system and a game processing system is not shown in the prior art and
therefore not well understood, routine, and conventional activity. See
Appeal Br. 18, 21. We disagree. An abstract idea does not transform into an
inventive concept just because the prior art does not disclose or suggest it.
See Mayo, 566 U.S. at 78. “Groundbreaking, innovative, or even brilliant
discovery does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). Indeed,
“[t]he ‘novelty’ of any element or steps in a process, or even of the process
itself, is of no relevance in determining whether the subject matter of a claim
falls within the § 101 categories of possibly patentable subject matter.”
Diehr, 450 U.S. 188–89; see also Mayo, 566 U.S. at 91 (rejecting “the
Government’s invitation to substitute §§ 102, 103, and 112 inquiries for the
better established inquiry under § 101”).
The Appellant contends that the Examiner’s determination does not
comply with the standards of evidence set forth in the Administrative
Procedure Act and Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018).
See Appeal Br. 19–21. We disagree. The Examiner cites intrinsic evidence
(see Ans. 6, 12–14) for the findings and determinations made.
Thus, we are not persuaded of error in the Examiner’s determination
that the limitations of claim 6 do not transform the claim into significantly
more than the abstract idea.
The Appellant’s other arguments, including those directed to now-
superseded USPTO guidance (see, e.g., Appeal Br. 10, 11, 12, 13, 16), have
been considered but are not persuasive of error. See 2019 Revised
Guidance, 84 Fed. Reg. at 51 (“Eligibility-related guidance issued prior to
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the Ninth Edition, R–08.2017, of the MPEP (published Jan. 2018) should
not be relied upon.”)).
For at least the reasons above, we sustain the Examiner’s rejection
under 35 U.S.C. § 101 of independent claim 6. Claims 1–5 and 7–15 fall
with claim 6. See 37 C.F.R. 41.37(c)(1)(iv).

Anticipation
Claim 6 calls for a step of awarding a gaming asset that advances a
state of a user during the game toward achieving a gaming objective.
Appeal Br., Claims App. Independent claims 1 and 11 each call for a similar
requirement. Id.
The Examiner finds Stoner discloses the awarding step of claim 6 and
the similar requirement of independent claims 1 and 11. Final Act. 8–9, 10
(citing Stoner col. 3, ll. 59–65, col. 4, ll. 13–16). The Examiner’s finding is
based on Stoner’s disclosure of a teaching machine that motivates students
by rewarding them with a chance to play a video game for answering a
question correctly. See Stoner Abstract, col. 1, ll. 7–11, col. 3, ll. 59–65.
Stoner discloses that the reward may include “more exciting game
segments.” Id. at col. 4, ll. 13–16.
The Examiner determines that “one of the ordinary skill in the art
would agree that ‘more exciting game segments’ in Stoner certainly can
encompass a gaming asset that ‘advance[s] a state of a user during the game
toward achieving a gaming objective.’” Ans. 15 (emphasis omitted).
Additionally, the Examiner determines that the claims are written broadly
and lack detail as “to how the gaming asset advances a state of a user during
the game toward achieving a gaming objective.” Id. Here, the Examiner
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suggests that the lack of specificity in the claims concerning the award does
not require specificity in Stoner’s disclosure beyond the description that a
reward may include “more exciting game segments.” We note the Examiner
does not elaborate on the meaning of Stoner’s description of a reward of
“more exciting game segments.”
The Appellant argues that Stoner does not teach the awarding step of
claim 6 and the similar requirements of claims 1 and 11. See Appeal Br. 22–
24; Reply Br. 8–10. The Appellant contends that the chance to play a video
game does not advance a state of a user during the game toward achieving a
gaming objective. Appeal Br. 23. The Appellant also contends that “‘more
exciting game segments’ do not necessarily . . . advance a state of a user
toward achieving a gaming objective.” Id.; see also Reply Br. 9 (“For
example, regarding a phrase guessing game, the present disclosure states that
a ‘user may be awarded, for example, one or more letters of the phrase in
response to a work event.’” (emphasis omitted)). We agree. Stoner’s
description of having a reward of “more exciting game segments” may
include a gaming asset advancing a state of a user during the game toward
achieving a gaming objective, but such is not necessarily the case –– i.e., it
is not inherent.
Therefore, we determine that the Examiner’s finding that Stoner
discloses awarding a gaming asset that advances a state of a user during the
game toward achieving a gaming objective as called for by independent
claims 1, 6, and 11 is supported inadequately. Thus, we do not sustain the
Examiner’s rejection of independent claims 1, 6, and 11, and dependent
claims 2–5, 7–10, and 12–15.

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CONCLUSION
We AFFIRM the Examiner’s decision rejecting claims 1–15 under
35 U.S.C. § 101 because the claimed invention is directed to non-statutory
subject matter.
We REVERSE the Examiner’s decision rejecting claims 1–15 under
35 U.S.C. § 102(a)(1) as anticipated by Stoner.
In summary:
Claims
Rejected
35 U.S.C. § Reference/Basis Affirmed Reversed
1–15 101 Eligibility 1–15

1–15 102(a)(1) Stoner 1–15
Overall
Outcome
1–15

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