Dean P. Alderucci et al.

Patent Trials and Appeals Board

Sep 9, 2019

13540128 - (D) (P.T.A.B. Sep. 9, 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.
13/540,128 07/02/2012 Dean P. Alderucci 07-2169-C1 6909
63710 7590 09/09/2019
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
MCCLELLAN, JAMES S
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
09/09/2019 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):
lkorovich@cantor.com
patentdocketing@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DEAN P. ALDERUCCI and GEOFFREY M. GELMAN
____________________

Appeal 2019-000230
Application 13/540,128
Technology Center 3700
____________________

Before JAMES P. CALVE, MICHAEL J. FITZPATRICK, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
Final Decision rejecting claims 2–8, 10–18, 22–28, 30–38, and 40–57 under
35 U.S.C. § 101. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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Application 13/540,128

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CLAIMED SUBJECT MATTER
Claims 5, 10, 11, 27, 30, and 31 are independent. Claims 2–4, 6–8,
12–18, 22–26, 28, 32–38, and 40–57 depend from claim 5, 10, 11, 27, 30, or
31. Claim 5 is illustrative of the claims on appeal, and is reproduced below:
5. A method, comprising the steps of:
by a computer of an electronic wagering system,
receiving registration information of a wagering bettor, and
funds of the bettor to be held in an account-based wagering
account for the bettor for multiple wagering events;
by a computer of the electronic wagering system,
receiving tax withholding form information of the bettor;
by computer of the electronic wagering system, receiving
a wager from the bettor against the wagering account,
by computer of the electronic wagering system,
determining a loss or winnings of the received wager; and
paying out winnings to the bettor, less withholding
payable to tax authorities, the withholding computed based at
least in part on the winnings and on the bettor’s tax withholding
form information,
wherein the bettor’s tax withholding form information
records the bettor not providing certain information related to
the bettor’s tax withholding, and the paying out of winnings
reflects a high withholding rate when the bettor’s tax
withholding form information records the bettor not providing
the certain information.

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OPINION
Appellants address claims 2–8, 10–18, 22–28, 30–38, and 40–57 as a
group. Appeal Br. 7–14.12 We select claim 5 as representative. See
37 C.F.R. § 41.37(c)(1)(iv).
Appellants do not argue the limitations of any particular claim.
Rather, Appellants contend that the Examiner erred by “include[ing] no
citation to corresponding cases and no explanation of how the claim might
be similar to those cases,” which “is in clear disregard to the binding
examination procedure endorsed by the courts and the PTO.” Appeal Br. 9.
Appellants conclude, therefore, that “no prima facie showing has been
made.” Id. Appellants further allege that “[t]hese claims clearly add
functionality to a computer that was previously not available,” but fail to
explain what that alleged functionality is, let alone how it relates to any
particular claim limitation. Id. at 11. Appellants proceed to reproduce what
appears to be the limitations from claim 5, although no reference to a
specific claim is made, and contend that “[t]he Office has provided no

1 Appellants reproduce the language of claims 5 and 25, but do not provide
argument directed to specific limitations of those claims. We do not
consider reproduction of claim language, without more, to be a separate
argument for patentability. See 37 C.F.R. § 41.37(c)(iv) (“A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.”).
2 Although Appellants contend that “[t]he Examiner does not even mention a
single limitation of a single dependent claim,” Appellants do not argue any
particular dependent claim. Appeal Br. 12. The Examiner addresses those
claims in the Final Action. See Final Act. 3–4 (explaining that those claims
“are rejected based on the same detailed analysis as set forth . . . [regarding]
claim 5” and noting that “[a]dditional computer hardware, such as, memory
and a database do not add significantly more to the claim than the underlying
abstract idea.”).
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evidence that these limitations are not substantially more than the alleged
abstract idea.” Id. at 12. Appellants further contend, without explanation
related to particular claim or claim limitation(s), that “like in DDR holdings,
the claims clearly recite improvements to technology and electronic gaming
that are rooted in networking and computers” and “override the routine and
conventional manner of operation of those technologies as is evidenced by
the lack of a lawful prior art rejection.” Id. at 14. Finally, Appellants
contend, again, without further explanation, that “the claims here apply ideas
related to computerized gaming that operate in a more efficient and usable
manner creating an invention that improves the performance of
computerized gaming.” Id.
We have considered each of Appellants’ arguments when reaching
our decision below. Initially, we note that Appellants do not apprise us of
error in the Examiner’s rejection because they do not address the rejection
with any particularity, and the arguments are not tied to any particular
limitations found in the claims. Moreover, as explained below, the
Examiner’s rejection is consistent with recently issued guidance from the
Patent Office. See 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Eligibility Guidance”).
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101.
Independent claim 5, which is representative, falls within the literal scope of
this provision because it claims a process.
The Supreme Court, however, has long recognized an implicit
exception to this section: “Laws of nature, natural phenomena, and abstract
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ideas are not patentable.” Alice Corp. v. CLS Bank lnt’l., 573 U.S. 208, 216
(2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013)). To determine whether a claim falls within one of
these excluded categories, the Court has set out a two-part framework. The
framework requires us first to consider whether the claim is “directed to one
of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If so, we then
examine “the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at
217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 78, 79 (2012)). That is, we examine the claims for an “inventive
concept,” “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 (alteration
in original) (quoting Mayo, 566 U.S. at 72–73).
Under the 2019 Eligibility Guidance, to decide whether a claim is
“directed to” an abstract idea, we evaluate whether the claim (1) recites an
abstract idea grouping listed in the guidance and (2) fails to integrate the
recited abstract idea into a practical application. See 2019 Eligibility
Guidance, 84 Fed. Reg. at 51. If the claim is “directed to” an abstract idea,
as noted above, we then determine whether the claim recites an inventive
concept. The guidance explains that when making this determination, we
should consider whether the additional claim elements add “a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field” or “simply append[] well-
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understood, routine, conventional activities previously known to the
industry.” 2019 Eligibility Guidance, 84 Fed. Reg. at 56.
Step 2(A), Prong 1
The Examiner explains that “claim [5] recites a multi-step process for
mitigating tax risk and managing a wagering game, which are each abstract
ideas,” and “is similar to the concepts involving human activity relating to
mitigating settlement risk and managing a game of bingo that have each
been found by the courts to be an abstract idea.” Final Act. 2. We agree.
Claim 5 recites subject matter that falls within an abstract idea
grouping listed in the guidance: “Certain methods of organizing human
activity—fundamental economic principles or practices (including . . .
mitigating risk).” See 2019 Eligibility Guidance, 84 Fed. Reg. at 52. Claim
5 recites:
paying out winnings to the bettor, less withholding
payable to tax authorities, the withholding computed based at
least in part on the winnings and on the bettor’s tax withholding
form information,
wherein the bettor’s tax withholding form information
records the bettor not providing certain information related to
the bettor’s tax withholding, and the paying out of winnings
reflects a high withholding rate when the bettor’s tax
withholding form information records the bettor not providing
the certain information.
These steps recite a fundamental economic practice. Namely, withholding
taxes from a paycheck based on available withholding information to
comply with applicable tax laws. See Spec. 10:25–11:13, 15:18–16:34,
23:10–26:32; Appeal Br. 3–4 (Summary of Claimed Subject Matter).
Accordingly, claim 1 recites an abstract idea.
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Step 2(A), Prong 2
The remaining limitations (those not included in the recited abstract
idea noted above) specify various information collected by a computer. We
agree with the Examiner that there is nothing in the claim that integrates the
recited abstract idea into a practical application. See Final Act. 3. The
additional limitations are no more than insignificant extra-solution activity.
See 2019 Eligibility Guidance, 84 Fed. Reg. at 55 n.31 (providing an
example of insignificant extra-solution activity as “a mere data gathering
such as a step of obtaining information about credit card transactions so that
the information can be analyzed in order to detect whether the transactions
were fraudulent”). Those limitations simply collect bettor information so
that information can be analyzed to determine tax withholding.
Accordingly, claim 5 is directed to an abstract idea.
Step 2(B)
Because we determine that claim 5 is directed to an abstract idea, we
next determine whether the claim provides an inventive concept. See 2019
Eligibility Guidance, 84 Fed. Reg. at 56. As noted by the Examiner (Final
Act. 3), the additional claim element (a “computer of an electronic wagering
system”) “simply appends well-understood, routine, conventional activities
previously known to the industry” (see 2019 Eligibility Guidance, 84 Fed.
Reg. at 56). Indeed, the Specification explains that “[i]t will be readily
apparent to one of ordinary skill in the art that the various processes
described herein may be implemented by, e.g., appropriately programmed
general purpose computers, special purpose computers and computing
devices.” Spec. 36:10–12.
Accordingly, the claim does not add any inventive concept.
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For at least these reasons, after applying the 2019 Eligibility
Guidance, we sustain the Examiner’s decision to reject claims 2–8, 10–18,
22–28, 30–38, and 40–57 under 35 U.S.C. § 101.

DECISION
We AFFIRM the Examiner’s decision to reject claims 2–8, 10–18,
22–28, 30–38, and 40–57.
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)(l)(iv).

AFFIRMED