Binh T. Nguyen

Patent Trials and Appeals Board

Sep 16, 2019

13800917 - (D) (P.T.A.B. Sep. 16, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/800,917 03/13/2013 BINH T. NGUYEN 902-P002X1C1 8446
68803 7590 09/16/2019
TI Law Group, PC
1055 E Brokaw Road
Suite 30-355
San Jose, CA 95131-2116
EXAMINER
MOSSER, ROBERT E
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
09/16/2019 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):
TILGDocket@yahoo.com
aspence@tipatents.com
dthomas@tipatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BINH T. NGUYEN1
____________

Appeal 2018-008465
Application 13/800,917
Technology Center 3700
_______________

Before JOHN C. KERINS, ANNETTE R. REIMERS, and
BRENT M. DOUGAL, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE CLAIMED SUBJECT MATTER

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Nguyen
Gaming LLC. Appeal Br. 1.
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Appellant’s invention relates to a method for transferring funds to
play a game of chance, and a program storage device embodying a program
of instructions to carry out a method of this type. Claim 1, reproduced
below, is illustrative:
1. A method for transferring funds to play a game of
chance on a portable electronic device, comprising:

detecting, by a value transfer device, input of a monetary value;

detecting, at least in part by the value transfer device, the
presence of a portable electronic device;

authenticating the portable electronic device;

transmitting, by the portable electronic device, a request to
transfer at least a portion of the monetary value to the portable
electronic device;

receiving, at the value transfer device, the request to transfer at
least a portion of the monetary value to the portable electronic
device;

transferring the at least a portion of the monetary value to the
portable electronic device; and

playing a game of chance on the portable electronic device, using
at least a portion of the monetary value transferred to the portable
electronic device as a wager to play the game of chance.

THE REJECTIONS
The Examiner rejects:
(i) claims 1–20 under 35 U.S.C. § 101, as being drawn to patent-
ineligible subject matter;
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(ii) claims 1–9 and 15 under 35 U.S.C. § 103(a) as being unpatentable
over Agarwal (US 2011/0263318 A1, published Oct. 27, 2011) in view of
Thorn (US 2009/0153342 A1, published June 18, 2009) and Nguyen (US
2005/0130728 A1, published June 16, 2005);
(iii) claims 10–14, 16–18, and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Agarwal in view of Thorn; and
(iv) claim 19 under 35 U.S.C. § 103(a) as being unpatentable over
Agarwal in view of Nguyen.

ANALYSIS
Claims 1–20--35 U.S.C. § 101
Appellant presents arguments for the patent eligibility of claims 1–18
as a group. Appeal Br. 6–9. We select claim 1 as the representative claim,
and claims 2–18 stand or fall with claim 1. Appellant makes the same
arguments for independent claims 19 and 20, and additionally argues that
these claims recite a “non-transitory computer readable medium” that is an
article of manufacture. A response to this argument appears in the analysis
below, as well.
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) (citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
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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
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)). 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.
(15 How.) 252, 267-68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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 ensure ‘that the
[claim] is more than a drafting effort designed to monopolize the [abstract
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idea].”’ Id. (quoting Mayo, 566 U.S. at 77) (alteration in original). “[M]erely
requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
In January of 2019, the PTO published revised guidance on the
application of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter “Guidance”). 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.
See Guidance.
Step 1 -- Statutory Category
Claims 1 and 10 recite methods of transferring funds to a portable
electronic device, and, therefore, are in the category of being processes.
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Appeal Br., Claims App. Claims 19 and 20 recite program storage devices,
and, therefore, are in the category of articles of manufacture.
Step 2A, Prong 1 -- Recitation of Judicial Exception
In determining that claim 1 is directed to a judicial exception to patent
eligibility, the Examiner takes the position that the claims recite fundamental
economic practices (transferring monetary values or funds) and organizing
human activity (managing game play). Final Act. 4. The Examiner notes
that both of these types of actions have been held to be ineligible as judicial
exceptions in the form of abstract ideas. Id.
Appellant maintains that “transferring funds between a value transfer
device, such as a gaming machine, and [a] portable electronic device are
much more than an ‘abstract idea.’” Appeal Br. 6. According to Appellant,
the claims involve specific steps in specific fields, none of which are
widespread and fundamental, unlike the basic banking practices in Alice.”
Id. Relatedly, Appellant asserts that the claims address a particular
challenge involved in the transfer of funds in a gaming environment. Id. at
7. Appellant further argues that various limitations present in the claims
evidence that preemption of all transferring of funds in a gaming
environment would not result. Id. at 8.
The steps in claim 1 of “detecting, by a value transfer device, input of
a monetary value;” “detecting, at least in part by the value transfer device,
the presence of a portable electronic device;” “authenticating the portable
electronic device” to which funds (monetary value) are to be transferred;
“transmitting, by the portable electronic device, a request to transfer at least
a portion of the monetary value to the portable electronic device;”
“receiving, at the value transfer device, the request to transfer at least a
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portion of the monetary value;” and complying with the request by
“transferring the at least a portion of the monetary value to the portable
electronic device,” are all are operations that generally occur when initiating
and completing wire transfers between devices. Detecting an input of
monetary value is necessary to establish an account balance. Detecting and
authenticating the portable electronic device to which funds are to be
transferred is necessary to ensure that the transferred funds end up where the
user wants them to be. These and the remaining steps thus perform a
fundamental economic practice, a type of method of organizing human
activity, of moving funds from one location to another. The playing of a
game further involves organizing human activity, and/or may be carried out
using purely mental steps or with pen and paper. Collectively, the steps in
claim 1 involve a method for organizing human activity in the context of
playing a game of chance on a device onto which funds for playing the game
have been provided.
We conclude that claim 1, as a whole, recites a judicial exception of a
method of organizing human activity, i.e., a fundamental economic practice,
and thus recites an abstract idea.
Claims 19 and 20 recite similar steps involving the achieving of a
funds transfer between two devices and playing a game of chance with the
funds thus transferred. Thus, these claims also recite a judicial exception of
a certain method of organizing human activity, i.e., a fundamental economic
practice, and thus recite an abstract idea.
Step 2A, Prong 2 -- Integrated Into a Practical Application
In Step 2A, Prong 2, we determine whether the recited judicial
exception is integrated into a practical application of that exception by: (a)
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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 generally, Guidance.
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.
Appellant argues, in pertinent part, that the present claims
are linking a value transfer device and a portable electronic
device, and providing funds transfer to the portable device if
authenticated, and thereafter being able to participate in a game
of chance on the portable electronic device with a wager funded
by the funds transfer.
Reply Br. 8. Appellant also maintains, citing AmDocs (Israel) Ltd. v.
Openet Telecom, Inc.,2 that “the claims herein recite a technological solution
to a technological problem specific to funds transfer to a mobile electronic
device for facilitating wager-based gaming via the portable electronic
device.” Id. at 9.
Appellant, however, does not identify in the briefing on appeal what
exactly is the technological problem associated with funds transfer to a
mobile electronic device allowing for wager-based gaming on the device.
The Specification is equally devoid of any disclosure of a particular problem
brought about by the use of the transferred funds for gaming purposes.
Spec., passim. Nor do we see any evidence that anything found in the claim

2 841 F.3d 1288 (Fed. Cir. 2016)
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limitations gives rise to an improvement in the functioning of the value
transfer device or portable electronic device.
Further, the value transfer device and portable electronic device
provided in claim 1 (steps (i) and (iii)) do not amount to a particular machine
or manufacture that is integral to the claim. Rather, such components are
broadly recited generic items. Nor is there any transformation recited in
claim 1 sufficient to impart patent eligibility.
On this record, claim 1 does not integrate the recited judicial
exception into a practical application. The claim therefore is directed to the
judicial exception. The same analysis applies to claims 19 and 20, which
recite the judicial exception as executable steps in a generic program storage
device.
Step 2B -- Well-Understood, Routine, Conventional Activity
In Step 2B, we determine whether the claim adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field. See Guidance. Appellant asserts that the
hardware components recited in the claims, “such as portable electronic
device, display, value transfer device, and sensory device, are not ‘generic
computer structures’. The claims are not directed to a computer . . .”. Reply
Br. 6. Appellant further remarks that “a value transfer device that detects
input of a monetary value and that detects, at least in part, the presence of a
portable electronic device is not ‘generic computer structure’ nor is it
‘routine or conventional.’” Id.
The claimed “value transfer device” is described as being any of “a
gaming machine, an automated teller machine, a kiosk, a portable electronic
device, or the like.” Spec. ¶ 75. The portable electronic device” of claim 1
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is described as being “any portable computing device such as a cellular
phone, portable media player, personal digital assistant (PDA), and the like,
as well as “a smart phone, a tablet computer, PDA, a laptop computer, a
handheld media player . . . and the like.” Id. ¶¶ 37, 46. A “sensory device”
is not recited in claim 1, but, nevertheless, is described as being “any known
device configured to detect and/or receive a sensory input.” Id. ¶ 36. There
is no additional disclosure in the Specification evidencing any unique or
special features attendant to these devices.
The Specification thus evidences that the limitations directed to
physical structure employed to carry out the judicial exception and recited in
claim 1 are well understood and conventional. The same analysis applies to
claims 19 and 20, which recite the judicial exception as executable steps in a
generic program storage device.
Appellant additionally argues that claim 1 does not preempt the
judicial exception. See Appeal Br. 8; Reply Br. 3–5. However, as our
reviewing court has explained, “the principle of preemption is the basis for
the judicial exceptions to patentability,” and “[f]or this reason, questions on
preemption are inherent in and resolved by the § 101 analysis.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice, 573 U.S. at 216). Although “preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Id. Moreover, “[w]here a patent’s claims
are deemed only to disclose patent ineligible subject matter under the
[Alice/Mayo] framework . . ., preemption concerns are fully addressed and
made moot.” Id.; see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362–63 (Fed. Cir.), (“[T]hat the claims do not preempt all price
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optimization or may be limited to price optimization in the ecommerce
setting do not make them any less abstract.”) cert. denied, 136 S.Ct. 701
(2015).
Although claim 1 limits the recited method to using a value transfer
device and portable electronic device, we do not agree that claim 1 recites
anything significantly more than the judicial exception/abstract idea
discussed above in Step 2A. The same analysis applies to claims 19 and 20,
which recite the judicial exception as executable steps in a generic program
storage device.
We have considered all of Appellant’s arguments in support of the
patent eligibility of claims 1, 19, and 20, but find them unpersuasive.
Accordingly, we sustain the rejection of these claims under 35 U.S.C. § 101.
Claims 2–18 fall with claim 1.

Claims 1–9 and 15--35 U.S.C. § 103(a)--Agarwal/Thorn/Nguyen
As discussed above, claim 1 requires the presence of two devices,
namely a “value transfer device” and a “portable electronic device,” and
recites several method steps related to transferring funds to play a game of
chance. The Examiner finds that mobile phone 702 of Agarwal (Figure 6)
corresponds to the claimed “value transfer device,” and that handheld
gaming unit 202, 704 of Agarwal (Figures 2, 7) corresponds to the claimed
“portable electronic device.” Ans. 7–8. The Examiner provides a discussion
as to how Agarwal is interpreted as meeting the process steps set forth in
claim 1, which the exception of the steps of device detection, for which the
Examiner relies on Thorn, and the authentication step, for which the
Examiner relies on Nguyen. Id. at 7–13. For the most part, in Agarwal, the
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Examiner relies on Figure 7, reproduced below, and various disclosures in
Agarwal related thereto. Figure 7 of Agarwal is a flow diagram of a funds
transfer process involving a mobile phone and a wagering game machine, as
follows:

Figure 7 of Agarwal, reproduced above, is a flow chart involving a mobile
phone, a wagering game machine, and funds transfer flow associated with
playing the wagering game.
The Examiner takes the position that the step of “detecting . . . input
of a monetary value” is achieved in Agarwal by a user inputting a specific
monetary amount or value into the mobile phone/value transfer device, with
the phone thus “detecting” the value, in order to send the funds transfer
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request at step 1 in Figure 7 above.3 Ans. 7. The Examiner further takes the
position that the step of “receiving, at the value transfer device, the request
to transfer at least a portion of the monetary value to the portable electronic
device,” is performed in Agarwal by the mobile phone/value transfer device,
in that it is “implicitly require[s] the input of a monetary value in order for it
to be subsequently forwarded” to wagering game machine 704. Id. at 11–12.
It thus appears that the Examiner not only takes the “receiving” step
out of the order of the steps presented, and couples it with the “detecting” of
the input of monetary value at the start of the process, the Examiner’s
position also results in the two separate steps being found to be met by the
same single action of a user inputting, as by typing, an amount into a mobile
phone to initiate a funds transfer request. Although there may be situations
in which is it appropriate and reasonable to find that a single action
constitutes two different steps in a method claim, that is not the case here.
A fair and reasonable reading of claim 1 evidences that there is, first,
a “monetary value” inputted to the value transfer device. Appeal Br. A–1
(Claims Appendix). Separately recited are three steps associated with “at
least a portion of the monetary value,” and moving that “portion” to the
electronic device: transmitting of a request to transfer the “at least a
portion;” receiving the request at the value transfer device; and transferring
the funds to the portable electronic device. Id. For the transmitting of the
funds transfer request by the electronic device, the Examiner cites to step 2
in Figure 7 of Agarwal. Ans. 11. That very request is the subject of the

3 Appellant disagrees with this finding and interpretation, but, for other
reasons set forth in this analysis, we need not reach this issue, and apply the
Examiner’s interpretation.
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limitation requiring “receiving, at the value transfer device, the request to
transfer at least a portion of the monetary value.” Appeal Br. A–1 (Claims
Appendix) (emphasis added). As evidenced in Agarwal Figure 7, that
request is not forwarded to the mobile phone/value transfer device, as
required by claim 1. Because claim 1 ties the receiving step to the
transmitting step, it is not reasonable to interpret the receiving step as taking
place prior to the transmitting step, i.e., at the time the user is inputting a
value or amount of funds for which transfer is desired.
Moreover, Agarwal does not appear to disclose the functionality of
handling funds transfer requests for less than the full “monetary value”
inputted by the user on the mobile phone. The value inputted is the amount
of funds requested to be transferred. As far as claim 1 is concerned, even
though “at least a portion of the monetary value” would include the entire
amount of the monetary value, the manner in which the Examiner has
applied Agarwal to the claimed steps appears to read out of the claim the
possibility of requesting less than the full monetary value to be transferred.
Accordingly, we do not sustain the rejection of claim 1 as being
unpatentable over Agarwal, Thorn, and Nguyen. For the same reasons, the
rejection of claims 2–9 and 15 is not sustained.

Claims 10–14, 16–18, and 20--35 U.S.C. § 103(a)--Agarwal/Thorn
Independent claim 10 is somewhat different in scope than is
independent claim 1. In particular, instead of reciting the “detecting, by a
value transfer device, input of a monetary value,” as in claim 1, claim 10
recites “receiving a fund amount at the first value transfer device.” Appeal
Br. A1–A3 (Claims Appendix). Claim 10 continues, requiring that fund
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amount to be transferred to the portable electronic device after the fund
amount is received by the value transfer device, and playing a game of
chance using at least a portion of that fund amount. Id. at A3.
Claim 10 therefore treats the recited “fund amount” as representative
of actual funds that are received (deposited) and transferred to the electronic
device by the value transfer device. As Appellant states, “the value transfer
device is able to store and transfer value to the portable electronic device.”
Appeal Br. 16.
The Examiner, as with claim 1, finds that the step of receiving a fund
amount is taught be Agarwal “implicit[ly] to forwarding a player monetary
value request, and the value transfer device must in some form receive that
request into the device in order for it to be subsequently forwarded by the
device.” Final Act. 12. The user of the mobile phone/value transfer device
in Agarwal is merely inputting a numerical representation as to the amount
of funds to be transferred to the portable electronic device, but, as Appellant
notes, the actual fund transfer is from the wagering game account server to
the wagering game machine/portable electronic device. Appeal Br. 16. As
such, the Examiner has not adequately established that Agarwal discloses the
limitations in claim 10 addressed above.
The rejection of claim 10 as being unpatentable over Agarwal and
Thorn is not sustained. The rejection of dependent claims 11–14 and 16–18
is also not sustained. Independent claim 20 includes essentially the same
limitations addressed above, in a format in which a program storage device
is configured to perform the method steps. The rejection is not sustained as
to claim 20 as well.

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Claim 19--35 U.S.C. § 103(a)--Agarwal/Nguyen.
The Examiner employs the same unreasonably broad claim
construction as was used in rejecting claim 1, in rejecting claim 19 as being
unpatentable over Agarwal and Nguyen. The rejection is not sustained.

DECISION
The Examiner’s rejection of claims 1–20 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejections of claims 1–20 under 35 U.S.C. § 103(a)
are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED