Bally Gaming, Inc.

Patent Trials and Appeals Board

Apr 1, 2022

2021004449 (P.T.A.B. Apr. 1, 2022)

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. 16/573,431 09/17/2019 CHRISTOPHER GUERRERO P7606-US-ORG 3843 55136 7590 04/01/2022 SG GAMING, INC. 6601 S. BERMUDA ROAD LAS VEGAS, NV 89119 EXAMINER COBURN, CORBETT B ART UNIT PAPER NUMBER 3799 NOTIFICATION DATE DELIVERY MODE 04/01/2022 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): ddebello@lnw.com ddebello@lnw.com mhein@lnw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHRISTOPHER GUERRERO ____________ Appeal 2021-004449 Application 16/573,431 Technology Center 3700 ____________ Before STEFAN STAICOVICI, MICHAEL J. FITZPATRICK, and LISA M. GUIJT, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in the Final Office Action (dated Mar. 16, 2021, hereinafter “Final Act.”) to reject claims 1-4, 7-11, 14-18, and 21-24 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.2,3 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. SG Gaming, Inc. is identified as the real party in interest in Appellant’s Appeal Brief (filed May 11, 2021, hereinafter “Appeal Br.”). Appeal Br. 2. 2 Claims 5, 6, 12, 13, 19, and 20 are canceled. Appeal Br. 4. 3 The rejection of claims 1-4, 7-11, 14-18, and 21-24 under 35 U.S.C. § 112(b) as being indefinite is withdrawn by the Examiner. See Examiner’s Answer (dated July 7, 2021, hereinafter “Ans.”) 5. Appeal 2021-004449 Application 16/573,431 2 SUMMARY OF DECISION We AFFIRM. INVENTION Appellant’s invention relates to a gaming apparatus and method employing “a modifier symbol to modify awards associated with a subset of displayed bonus symbols in a wagering game.” Spec. para. 2. Claims 1, 8, and 15 are independent. Claim 1 (with reference indicators in brackets) is illustrative of the claimed invention and is reproduced below: 1. A gaming system comprising: [a] a gaming machine primarily dedicated to playing at least one casino wagering game, the gaming machine including an electronic display device and one or more electronic input devices; and [b] game-logic circuitry configured to: [i] detect, via at least one of the one or more electronic input devices, a physical item associated with a monetary value that establishes a credit balance; [ii] initiate the casino wagering game in response to an input indicative of a wager drawn from the credit balance; [iii] randomly select an outcome of the casino wagering game; [iv] direct the electronic display device to display a plurality of symbol-bearing reels that are spun and stopped a number of times to land symbols borne by the reels in visual association with an array, the number of times that the reels are spun and stopped being greater than one, the landing symbols including value-bearing symbols and at least one modifier- bearing symbol that are held in the array for the number of times, wherein any reel spin resulting in an additional one or more of the value-bearing symbols or the modifier-hearing symbols landing in the array increases the number of times; Appeal 2021-004449 Application 16/573,431 3 [v] after the number of times that the reels are spun and stopped, direct the electronic display device to display a modifier zone relative to the modifier-bearing symbol, to move the modifier zone to vary which of the value-bearing symbols are within the modifier zone, and to stop the modifier zone such that the zone encompasses a subset of the value-bearing symbols, the subset consisting of less than all of the value- bearing symbols; [vi] modify the values borne by the value-bearing symbols in the subset by the modifier borne by the modifier- bearing symbol; [vii] award the modified values; and [viii] receive, via at least one of the one or more electronic input devices, a cashout input that initiates a payout from the credit balance. Appeal Br. 31-32 (Claims App.). ANALYSIS Section 101 states, “[w]hoever 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. However, the Supreme Court has “long held that this provision contains an important implicit exception: [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. See Alice, 573 U.S. at 217-18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with Appeal 2021-004449 Application 16/573,431 4 that framework, we first determine what concept the claim is “directed to.” Id. 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)). 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 (quotation marks omitted). “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. (alteration in the 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. The PTO has published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 Appeal 2021-004449 Application 16/573,431 5 (Jan. 7, 2019) (hereinafter “2019 Guidance”).4 Under Step 2A of that 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 MPEP § 2106.05(a)-(c), (e)-(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, in Step 2B, to whether the claim: (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. Appellant does not present arguments for the patentability of claims 2-4, 7-11, 14-18, and 21-24 apart from claim 1. See Appeal Br. 25- 28. Therefore, in accordance with 37 C.F.R. § 41.37(c)(1)(iv), we select claim 1 as the representative claim to decide the appeal of the rejection of 4 The Manual of Patent Examining Procedure (“MPEP”) now incorporates this revised guidance and subsequent updates at § 2106 (9th ed. Rev. 10.2019, rev. June 2020). Appeal 2021-004449 Application 16/573,431 6 these claims, with claims 2-4, 7-11, 14-18, and 21-24 standing or falling with claim 1. Step 1 - Statutory Category We first determine whether independent claim 1 recites one or more of the enumerated statutory classes of subject matter, i.e., process, machine, manufacture, or composition of matter, eligible for patenting under 35 U.S.C. § 101. Independent claim 1 recites “[a] gaming system,” which includes a series of elements, and, therefore, is an apparatus. See Appeal Br. 31-32 (Claims App.). Step 2A, Prong 1 - Recitation of Judicial Exception We next look to whether independent claim 1 recites any judicial exceptions, including certain groupings of abstract ideas, i.e., mathematical concepts, certain methods of organizing human activity, or mental processes. In determining that claim 1 “recites an abstract idea,” the Examiner determines that the claim is “drawn to a fundamental economic practice of long standing (i.e., determining financial obligations using probability)” and “to a method of contract formation (i.e., forming a gambling contract),” which, the Examiner contends, are “within the category of methods of organizing human activities.” Final Act. 2 (citing In re Smith, 815 F.3d 816 (Fed. Cir. 2016)), 4. Appellant does not argue against the Examiner’s determination that claim 1 “recites an abstract idea.” See Appeal Br. 25 (“assuming arguendo such [financial/gambling] aspects are an abstract idea, the crux of the claim recites numerous meaningful limitations that integrate such abstract idea into Appeal 2021-004449 Application 16/573,431 7 a practical application.”). Accordingly, Appellant has waived any argument of error, and, thus, we proceed to Prong 2 of Step 2A. Step 2A, Prong 2 - Integrated Into a Practical Application If a claim recites a judicial exception, then, in Prong 2, we determine whether the recited judicial exception is integrated into a practical application of that exception by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. See 2019 Guidance 54-55. This evaluation requires an additional element or a combination of additional elements in the claim to 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 exception. See id. at 54. The Examiner finds that “[t]he judicial exception is not integrated into a practical application.” Final Act. 2. According to the Examiner, claim 1 does “not include additional elements that are sufficient to amount to significantly more than the judicial exception because the invention is implemented on a generic computer or (at most) a generic gaming machine as described.” Id. at 3. Appellant argues that limitations [iv], [v], and [vi] of claim 1 “are separate from the alleged abstract idea, and cannot reasonably be ignored and considered part of the abstract idea” as they “are not generic and are separate and distinct from a generic computer.” Appeal Br. 26. As support, Appeal 2021-004449 Application 16/573,431 8 Appellant relies on (1) claims 1 and 2 of Example 37 of PEG;5 (2) Ex Parte Burghard;6 and Ex Parte Fujisawa7 to conclude that claim 1 is patent- eligible because it integrates the abstract idea into a practical application. Appeal Br. 26-28. We are not persuaded by Appellant’s arguments because the question here is whether the claims as a whole “focus on a specific means or method that improves the relevant technology” or are “directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). In this case, Appellant’s claim 1 is distinguished from those claims that our reviewing court has found to be patent eligible by virtue of reciting technological improvements to a computer system because claim 1 employs generic elements, such as, “display device,” “input devices,” and “game-logic circuitry” to implement the abstract idea without any improvement to the gaming machine itself. Stated differently, the judicial exception is not integrated into a practical application because the “display device,” “input devices,” and “game-logic circuitry” represent generic elements. The Examiner is correct that “Appellant is arguing that his abstract idea is so novel that it is no longer abstract.” Ans. 6. However, “the abstract idea itself cannot provide the ‘inventive concept’ required to make a claim 5 2019 Patent Eligibility Guidance, issued January 7, 2019, which can be found at https://www.uspto.gov/sites/default/files/documents/101_examples_37to42_ 20190107.pdf 6 Appeal 2018-001861, Pat. App. LEXIS 1879 (PTAB, Nov. 22, 2019) 7 Appeal 2018-003650, 2019 WL 1789753 (PTAB Mar. 25, 2019) Appeal 2021-004449 Application 16/573,431 9 patent-eligible.” Id. We appreciate that Appellant’s invention improves a bonus play by providing a GUI8 animation, namely, a “modifier zone,” to determine a bonus payout, as per limitations [iv], [v], and [vi] of claim 1. See Reply Brief (filed July 12, 2021, hereinafter “Reply Br.”) 3. However, displaying a GUI animation for determining a bonus is not an improvement to the claimed gaming machine; rather, it is part of the abstract idea. In other words, the improvement is not grounded in improvements to the claimed gaming machine; rather, the improvement is in the abstract idea of certain methods of organizing human activity, namely, “determining financial obligations using probability” and “forming a gambling contract.” Regarding Appellant’s reliance on Example 37 of PEG, we agree with the Examiner that Example 37 of PEG “solves a technical problem with GUIs,” whereas the “invention [of claim 1] solves no technical problem at all.” Ans. 7. Specifically, Example 37 of PEG solves the technical problem of rearranging icons on a GUI based on the amount of use of each icon. See PEG 1; Appeal Br. 26. In contrast, Appellant’s invention solves a business problem, namely, “[s]triking the right balance between yield versus randomness and volatility to create a feeling of luck” in the player. Spec. para. 4; see also Ans. 7 (Appellant’s “‘technical problem’ is ‘how does the casino make a profit while enticing players to put their money into machine that they know is programmed to cause the players to lose in the long run?’.”). We are also not persuaded that either Burghard or Fujisawa supports patent eligibility of Appellant’s claimed invention. See Appeal Br. 26-28. 8 “GUI” stands for graphical user interface. Appeal 2021-004449 Application 16/573,431 10 As the Examiner points out, Burghard and Fujisawa are not precedential. Ans. 7. Moreover, the Examiner is correct that they “bear no real resemblance to the [instant] case.” Id. at 7-8. In particular, with respect to Fujisawa, we appreciate that the Board stated that “‘the structure of a conventional slot machine is patent eligible under 35 U.S.C. § 101; and operating such a conventional slot machine with a new set of wagering rules does not suddenly strip this structure of its patent-eligible status.’” Appeal Br. 28 (emphasis added); see also Fujisawa 3. However, Appellant fails to adequately explain how the gaming machine of claim 1 constitutes a “conventional” slot machine as the recited elements are “electronic,” namely, “electronic display device,” electronic input devices,” and “game- logic circuitry.” See Ans. 8 (“Appellant has failed explain how . . . [the claimed] invention is eligible when implemented on a ‘gaming machine.’”); see also Appeal Br. 31 (Claims App.). As to Burghard, Appellant merely reiterates the claim limitations that the Board determined integrate the judicial exception into a practical application. See Appeal Br. 27. However, Appellant fails to adequately explain how such limitations in Burghard are similar to limitations [iv], [v], and [vi] of Appellant’s claim 1. See Ans. 8 (“Appellant . . . does not argue that these cases are in any way similar to Appellant’s case.”). Just because the display in Burghard represents an improvement to gaming machine technology, does not mean that limitations [iv], [v], and [vi] of Appellant’s claim 1 likewise provides such an improvement. See Reply Br. 3. As discussed supra, Appellant’s invention solves a business, rather than a technical, problem. Hence, the focus of claim 1, as a whole, does not purport to improve the claimed gaming machine, but merely uses generic electronic elements as Appeal 2021-004449 Application 16/573,431 11 tools to perform the abstract idea. See 2019 Guidance 55. We also find no indication in Appellant’s 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 technology and/or a technical field to the claimed invention or that otherwise indicates that the claimed invention integrates the abstract idea into a “practical application,” as that phrase is employed in the 2019 Guidance. As noted supra, the Specification states that the improvement is “[s]triking the right balance between yield versus randomness and volatility to create a feeling of luck” in the player. Spec. para. 4. Accordingly, for the foregoing reasons, we determine that claim 1 of Appellant’s invention: (1) does not improve the functioning of a computer or other technology; (2) is not applied with any particular machine; (3) does not affect 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 a particular technological environment. See MPEP § 2106.05(a)-(c), (g), (h). In conclusion, for the foregoing reasons, we are not persuaded of error in the Examiner’s determination that claim 1 recites an abstract idea, and we find that the claimed additional elements do not integrate the abstract idea into a practical application. Step 2B - Well-Understood, Routine, Conventional Activity Having determined that claim 1 recites a judicial exception, and does not integrate that exception into a practical application, under Step 2B we consider whether the claim adds a specific limitation beyond the judicial Appeal 2021-004449 Application 16/573,431 12 exception that is not “well-understood, routine, conventional” in the field. See 2019 Guidance 56. Here, the Specification indisputably shows that the recited “electronic display device,” electronic input devices,” and “game-logic circuitry” were conventional at the time of filing. See Spec. paras. 17 (“The display 16 may be a mechanical-reel display device, a video display device, or a combination thereof in which a transmissive video display is disposed in front of the mechanical-reel display to portray a video image superimposed upon the mechanical-reel display.”), 19 (“value input devices include . . . a coin acceptor, bill/ticket acceptor/dispenser 22, a card reader/writer, a wireless communication interface for reading cash or credit data from a nearby mobile device, and a network interface for withdrawing cash or credits from a remote account via an electronic funds transfer.”), 20 (“The game-logic circuitry 40 includes a central processing unit (CPU) 42 connected to a main memory 44 that comprises one or more memory devices. The CPU 42 includes any suitable processor(s), such as those made by Intel and AMD.”). Hence, no genuine issue of material fact exists as to the well-understood, routine, or conventional nature of the claimed elements. As such, we are not persuaded that the Examiner erred in determining that the elements of claim 1, considering all elements both individually and as an ordered combination, do not amount to significantly more than the abstract idea of certain methods of organizing human activity, i.e., “a fundamental economic practice of long standing (i.e., determining financial obligations using probability)” and “a method of contract formation (i.e., forming a gambling contract).” In other words, the elements of claim 1, both individually and as an ordered combination, are not sufficient to amount Appeal 2021-004449 Application 16/573,431 13 to significantly more that the abstract idea itself. Hence, claim 1 fails to add a specific limitation beyond the judicial exception that is not “well- understood, routine, conventional” in the field. Accordingly, for the foregoing reasons, we conclude that none of the limitations of claim 1, viewed “both individually and as an ordered combination,” amount to significantly more than the judicial exception in order to sufficiently transform the nature of the claims into patent-eligible subject matter. See Alice, 573 U.S. at 217 (internal quotations omitted) (quoting Mayo, 566 U.S. at 77-78). Therefore, we sustain the rejection of independent claim 1 under the judicial exception to 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Claims 2-4, 7-11, 14-18, and 21-24 fall with claim 1. CONCLUSION Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-4, 7-11, 14-18, 21-24 101 Eligibility 1-4, 7-11, 14-18, 21-24 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