Dean P. Alderucci et al.Download PDFPatent Trials and Appeals BoardSep 9, 201913540128 - (D) (P.T.A.B. Sep. 9, 2019) Copy Citation 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. Appeal 2019-000230 Application 13/540,128 2 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. Appeal 2019-000230 Application 13/540,128 3 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.”). Appeal 2019-000230 Application 13/540,128 4 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 Appeal 2019-000230 Application 13/540,128 5 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- Appeal 2019-000230 Application 13/540,128 6 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. Appeal 2019-000230 Application 13/540,128 7 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. Appeal 2019-000230 Application 13/540,128 8 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 Copy with citationCopy as parenthetical citation