Douglas M. Okuniewicz

Patent Trials and Appeals Board

Jul 2, 2020

13726295 - (D) (P.T.A.B. Jul. 2, 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.
13/726,295 12/24/2012 Douglas M. Okuniewicz 0A9658-301006 4268
32009 7590 07/02/2020
BRADLEY ARANT BOULT CUMMINGS LLP
200 CLINTON AVE. WEST
SUITE 900
HUNTSVILLE, AL 35801
EXAMINER
PANDYA, SUNIT
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
07/02/2020 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):
HSVIPDOCKETING@bradley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS M. OKUNIEWICZ
Appeal 2018-006967
Application 13/726,295
Technology Center 3600
Before ANNETTE R. REIMERS, BRANDON J. WARNER, and
BRENT M. DOUGAL, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–22. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real parties in interest as Douglas M.
Okuniewicz and AIM Management. Appeal Brief (“Appeal Br.”) 2, filed
Jan. 2, 2018.
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CLAIMED SUBJECT MATTER
The claims are directed to data-based awards for an electronic gaming
device. Claims 1 and 2, the independent claims, reproduced below, are
representative of the claimed subject matter:
1. A method for electronic gambling, comprising:
receiving a wager from a player at an electronic gaming
device;
generating an outcome for the wager with the electronic
gaming device;
displaying an outcome associated with the wager by the
electronic gaming device; and
step for emailing an email attachment, where the
attachment comprises an award comprised entirely of data as a
payment to the player.

2. A method for electronic gambling, comprising:
receiving a wager from a player at an electronic gaming
device;
generating an outcome for the wager with the electronic
gaming device;
displaying an outcome associated with the wager by the
electronic gaming device;
paying the player with a computer file; and
step for electronically delivering the payment into a
player’s possession via a network connection.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Walker US 6,364,765 B1 Apr. 2, 2002
Murray US 2002/0094870 A1 July 18, 2002
LeMay US 6,942,574 B1 Sept. 13, 2005

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REJECTIONS
Claims 1–22 are rejected under 35 U.S.C. § 101 as being directed to
ineligible subject matter.
Claims 1–20 and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Walker and Murray.
Claim 21 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Walker,2 Murray, and LeMay.
ANALYSIS
101 Rejection
Appellant presents arguments for claims 1 and 2, but does not present
arguments for claims 3–22 separate from those presented for claims 1 and 2.
See Appeal Br. 9–14. We select claims 1 and 2 as the representative claims,
and claims 3–22 stand or fall with claims 1 and 2. See 37 C.F.R.
§ 41.37(c)(1)(iv).
As an initial matter, Appellant contends that
the Examiner has cited two cases that do not appear to have any
relation to the Appellant’s claims absent any argument to the
contrary, while providing an incorrect summation of the claims
(i.e. “generating gameplay video in a cloud computing
network”), and has therefore failed to provide Appellant

2 The Examiner stated that “[t]he combination of Walker and Murray teach
receiving a wager from a player at an electronic gaming device . . .
generating an outcome and step for paying the player with an award
comprised entirely of data . . . . However, the combination of Brossard and
Murray fails to teach that the machine event is based on a player tracking
measure.” Non-Final Office Action (“Non-Final Act.”) 11 (emphasis
added), dated Dec. 29, 2016. We consider the Examiner’s statement of
“Brossard” to be an inadvertent typographical error. See id. (“It would have
been obvious for one with ordinary skill in the art, at the time of the
invention, to have modified the combination of Walker and Murray, . . . .”).
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“sufficient notice of reasons for [ineligibility] [to] enable the
[Appellant] to effectively respond” (Robert Bahr, Memorandum
on Subject Matter Eligibility, May, 4 2016 [(sic)], p. 2).
Appeal Br. 10; see also id. at 11 (“[W]ithout any explanation as to how
Affinity v. Amazon3 might apply to . . . Appellant’s claims, the Examiner
only instructs Appellant to ‘see’ Affinity v. Amazon. Appellant is
res[pec]tfully unable to effectively respond to such a rejection.”) (emphases
added).
We disagree with Appellant for the following reasons. To the extent
Appellant is arguing that the Examiner failed to provide Appellant sufficient
notice “to effectively respond to” the ineligible subject matter rejection (see
Appeal Br. 10–11), the proper recourse for Appellant would have been to
file a petition to the Director under 37 C.F.R. § 1.181. See 37 C.F.R.
§ 1.113. Appellant’s failure to file a petition and Appellant’s filing of an
Appeal Brief constitute a waiver of any procedural arguments that the
Examiner failed to provide Appellant sufficient notice to effectively respond
to the ineligible subject matter rejection.
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. Claims 1
and 2 fall within the literal scope of this provision because each recites a
process.
The Supreme Court, however, has long recognized implicit exceptions
to this section: “Laws of nature, natural phenomena, and abstract ideas are
not patentable.” Alice Corp. v. CLS Bank lnt’l, 573 U.S. 208, 216 (2014)

3 Affinity Labs of Texas v. Amazon.com Inc., 838 F.3d 1266 (2016) (“Affinity
v. Amazon”).
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(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.” Id. (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,” meaning “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 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 51 (Jan. 7, 2019)
(“2019 Eligibility Guidance”).4 Concepts that have been 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 v. Kappos, 561 U.S. 593, 611 (2010));
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and

4 An update to the 2019 Revised Patent Subject Matter Eligibility Guidance
issued in October 2019 (“October 2019 Update,” available at https://
www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf).
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mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). 2019
Eligibility Guidance at 52.
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-understood, routine, conventional activities
previously known to the industry.” 2019 Eligibility Guidance at 56.
Step 2A, Prong One – Recitation of Judicial Exception
The Examiner determines that the claims are “directed to the abstract
idea of generating gameplay video in a cloud computing network.” Non-
Final Act. 7. The Examiner further determines that
the claims, when analyzed as a whole, are held to be [ineligible]
because they are considered to be drawn to an abstract idea (i.e.,
Certain methods of organizing human activities, using categories
to organize, store, and transmit information) without any
limitation(s) which qualify as “significantly more” than the
abstract idea itself, but which are merely implemented/applied
on a computer.

Id. The Examiner also determines that “[t]he claimed invention relates to
providing an award via email to a player as an outcome to a wagering game”
and that “[t]his describes an abstract concept similar to those found by the
courts [to] be abstract, such as a fundamental economic practice and method
of organizing human activity, emphasizing on using categories to organize,
store, and transmit information.” Id.
Citing In re Smith, 815 F.3d 816 (2016), the Examiner further
determines that the Federal Circuit “has affirmed that a wagering game is
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roughly identical to fundamental economic practices that the Supreme Court
held to be abstract idea in Alice and Bilski.” Ans. 4.5 The Examiner reasons
that “[s]ince claim 1 recites a method for electronic gambling, the claim[ed]
invention is patent-ineligible,” and that “the method of claim 2 fails to set
for the patent-eligible subject matter for substantially the same reason.” Id.
Appellant contends that the claims are “directed toward methods of
payment by electronic gaming devices such as a slot machine, for example,
where players are paid awards via email attachments and a network
connection, for example.” Appeal Br. 10. Appellant also contends that the
“claims are not directed to a mere card game.” Reply Br. 2.6 Appellant
alleges that “In re Smith is directed toward conducting a simple game of
cards (blackjack), which could be executed either manually or by a standard
computer, and respectfully has no bearing on the Appellant’s claims.” Id.
Appellant further alleges that, in contrast to In re Smith, the claims of the
subject application “are directed toward the electronic delivery of
electronically deliverable awards, and not to any underlying gambling game,
let alone a simple game of cards.” Id.
The 2019 Eligibility Guidance provides that “[c]ertain methods of
organizing human activity” including “managing personal behavior or
relationships or interactions between people (including social activities,
teaching, and following rules or instructions)” are abstract ideas. 2019
Eligibility Guidance at 50, 52 (emphasis added). Here, we agree with the

5 Examiner’s Answer (“Ans.”), dated Apr. 24, 2018.
6 Reply Brief (“Reply Br.”), filed June 25, 2018. We note that the Reply Brief
is not paginated. We refer to the Reply Brief as if it is numbered consecutively
starting from page 1.

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Examiner that claim 1 recites such an abstract idea of organizing human
activity. Non-Final Act. 7. In particular, claim 1 recites steps of organizing
human activity, i.e., (1) “receiving a wager from a player,” (2) “generating
an outcome for the wager,” (3) “displaying an outcome associated with the
wager,” and (4) “step for emailing an email attachment . . . as a payment to
the player.” See Appeal Br. 18 (Claims App.). The limitations of claim 1,
under the broadest reasonable interpretation, are steps that recite a method of
organizing human activity in the area of gambling, and, thus, constitute a
method of organizing human activity under the 2019 Eligibility Guidance,
and, thus, an abstract idea.
Claim 2 recites steps (1) through (3) listed above for claim 1 and
further recites the steps of (4) “paying the player with a computer file,” and
(5) “step for electronically delivering the payment into a player’s possession
via a network connection.” See id. Similar to that discussed above for claim
1, the limitations of claim 2, under the broadest reasonable interpretation, are
steps that recite a method of organizing human activity in the area of
gambling, and, thus, constitute a method of organizing human activity under
the 2019 Eligibility Guidance, and, thus, an abstract idea.
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 Eligibility Guidance at 54–55. This evaluation requires an
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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.
We note the 2019 Eligibility Guidance indicates that, in the context of
Prong 2 of Step 2A, an exemplary consideration indicative that an additional
element (or combination of elements) may have integrated the exception into
a practical application is that the additional element reflects an improvement
in the functioning of a computer, or an improvement to other technology or
technical field. See 2019 Eligibility Guidance at 55.
In this case, any new functions in the technical field of delivering a
payment to a player (such as emailing, paying the player with a computer
file, or electronically delivering via a network connection) are not an
improvement to a technical field, but, at best, an improvement in one of
certain methods of organizing human activity (i.e., a fundamental economic
practice), which is an abstract idea. See Ans. 5–6; See Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (showing an advertisement
before delivering free content is abstract); In re Ferguson, 558 F.3d 1359,
1364 (Fed. Cir. 2009) (methods of organizing business or legal relationships
in the structuring of a sales force are abstract); Credit Acceptance Corp. v.
Westlake Servs., 859 F.3d 1044, 1054 (Fed. Cir. 2017) (processing an
application for financing a purchase is abstract); Interval Licensing LLC v.
AOL, Inc., 896 F.3d 1335, 1348 (Fed. Cir. 2018) (providing additional
information without disrupting the ongoing provision of an initial set of
information is abstract); and Accenture Global Servs., GmbH v. Guidewire
Software, Inc., 728 F.3d 1336, 1338 (Fed. Cir. 2013) (generating tasks to be
performed in an insurance organization is abstract); see also the 2019
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Eligibility Guidance at 52 (identifying “fundamental economic principles or
practices (including hedging, insurance, mitigating risk)” as among the
certain methods of organizing human activity that are abstract ideas).
Accordingly, the additional elements of claim 1 or claim 2 of the
subject invention do not integrate the judicial exception into a practical
application. For these reasons, each of claims 1 and 2 are directed to an
abstract idea, which is a judicial exception to patent-eligible subject matter
under 35 U.S.C. § 101.
Step 2B – Well-Understood, Routine, Conventional Activity
Having determined that both claims 1 and 2 recite a judicial
exception, and neither claim integrates that exception into a practical
application, under Step 2B, we consider whether claim 1 or claim 2 adds a
specific limitation beyond the judicial exception that is not “well-
understood, routine, conventional” in the field.
Appellant contends that “[t]he United States Court of Appeals for the
Federal Circuit has also addressed the Alice/Mayo test in several decisions,
including DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (2014),
upholding the patent claims at issue in that case.” Appeal Br. 12.
Additionally, Appellant contends that the Patent Trial and Appeal Board
(“PTAB”) “has also issued several opinions concerning the Alice/Mayo
framework, including Google, Inc. v. Simpleair, Inc., CBM 2014-00170
(Jan. 22, 2015),” “wherein the PTAB found that although the claims at issue
were directed toward an abstract idea, they contained meaningful limitations
that amounted to significantly more than the abstract idea itself.” Appeal Br.
13–14. However, Appellant fails to direct us to any limitations in claim 1 or
claim 2 that amount to significantly more than the abstract idea itself. See
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Appeal Br. 12–14; see also Non-Final Act. 8. In this case, the Examiner
determines that “the physical components including gaming devices and
displays considered individually and as an ordered combination merely
implement the abstract idea at a high level of generality and fail to impose
meaningful limitations to impart patent eligibility.” Non-Final Act. 8.
Appellant does not apprise us of error as to these determinations by the
Examiner. See Appeal Br. and Reply Br., passim.
As such, the claimed use of “an electronic gaming device” to carry out
the abstract idea “simply appends well-understood, routine, conventional
activities previously known to the industry.” See 2019 Eligibility Guidance
at 56. Indeed, the Specification suggests that the electronic gaming device is
well-known, routine, and conventional. See, e.g., Spec. ¶¶ 3, 17. The
Specification also suggests that the data based award could be any file, or
code and the like, which can be sent electronically to a player via any PC
and any suitable network. See, e.g., Spec. ¶¶ 26–30, 39, 46, 56.
Accordingly, neither claim 1 nor claim 2 of the subject invention adds
a sufficient inventive concept to the underlying abstract idea discussed
above.
Appellant contends that the subject invention, “[o]n its own, . . .
demonstrates at least novelty and [is] not seeking to tie up a market,
additionally, the invention is useful at least insofar as it affords an additional
payment method for the highly regulated gaming industry.” Appeal Br. 12.
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
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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. 2015) (“[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract.”). Appellant’s argument as to
absence of preemption does not apprise us of error in the Examiner’s
rejection.
Based upon the findings and legal conclusions above, on this record
and in consideration of the 2019 Eligibility Guidance, we agree with the
Examiner that each of claims 1 and 2 is directed to patent-ineligible subject
matter, such that we sustain the Examiner’s rejection of claims 1 and 2 as
being directed to patent-ineligible subject matter. We further sustain the
rejection of claims 3–22, which fall with claims 1 and 2.

Obviousness over Walker and Murray
Claims 1–20 and 22
Appellant does not present arguments for claims 2–20 and 22 separate
from those presented for claim 1. See Appeal Br. 14–17. We select claim 1
as the representative claim, and claims 2–20 and 22 stand or fall with claim
1. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Walker discloses a method of electronic
gambling having all the limitations of claim 1, except that “Walker does not
disclose emailing the award.” Non-Final Act. 8–9. However, the Examiner
notes that Walker “discloses presenting the award to the player on a game
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display located at a gaming establishment or on a client device located via a
server.” Id. at 9. The Examiner also finds that Murray discloses “emailing
an award to one of [a] plurality of remotely located players (email being a
vessel for a delivery system).” Id. (citing Murray ¶ 92). The Examiner
reasons that it would have been obvious to a skilled artisan to modify the
game device of Walker to include emailing an award to players, as taught by
Murray, in order to “prevent players from receiving duplicate awards.” Id.
Appellant contends that Walker fails to disclose “a data based award.”
Appeal Br. 14. In particular, Appellant contends that “no teaching or
disclosure in the entirety of Walker . . . suggest[s] an electronic award as
claimed by Appellant” and that “[i]n contrast, Walker merely discloses
kiosks that print game instructions and dispense currency.” Id. (citing
Walker, cols. 9–11). Appellant also contends that “Walker’s instructions on
how a player is to go about receiving an award are simply not the award as
claimed by Appellant” because “they are merely directions on how a player
is to receive his or her payment.” Id. Appellant further contends that
column 6 lines 4–20 of Walker “merely disclose[s] a kiosk that outputs
currency, prints ‘coupons, reports, game instructions and coupons
redeemable for free games, dinner merchandise, or cash.’” Id.
As an initial matter, we note that claim 1 does not recite “a data based
award.” Appeal Br. 18 (Claims App.).7 Rather, claim 1 more broadly
recites “an award comprised entirely of data.” See id. “[L]imitations are not
to be read into the claims from the specification.” In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993); see also In re Self, 671 F.2d 1344, 1348

7 We note that claim 2 likewise does not recite “a data based award.”
Appeal Br. 18 (Claims App.).
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(CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . .
they are not based on limitations appearing in the claims.”).
Appellant’s Specification provides examples of a data-based award
(DBA) that include a digital key, player tracking points, bonus games, image
files, or any digitized or data based items, etc. Spec. ¶ 25. Appellant’s
Specification describes that a digital key may also be a code or password
that allows access to a web page that provides the appropriate downloads.
Id. ¶ 26. Appellant’s Specification also describes that “[t]he key could be in
the form of a bar code printed from the player's printer” and that “[a]t the
casino, the data key may be verified by an attendant, a device for that
purpose, or by a properly equipped EGD [(electronic gaming device)] prior
to displaying an outcome or redeeming credits.” Spec. ¶ 72. In light of
Appellant’s disclosure, we agree with the Examiner’s broadest reasonable
interpretation that Walker’s disclosure of “print receipts, reports, . . . and
coupons redeemable for free games, dinner, merchandise or cash” satisfies
the limitation of “an award comprised entirely of data.” See Walker 6:12–
17; see also Non-Final Act. 9; Ans. 7 (“As indicated by Walker, the awards
provided to the players include data transmitted to the gaming kiosk’s
printer, used by the players, to be printed and redeemed.”); Appeal Br. 18
(Claims App.).
Appellant contends that Murray “does not deliver an award comprised
entirely of data.” Appeal Br. 15. In particular, Appellant contends that (1)
“Murray simply notifies a person that they have won an award via email.
The award itself is not delivered via email as claimed,” (2) “Murray’s real
award is either discounted merchandise or money provided by the
advertiser/sponsor, which are not things that can be emailed or electronically
delivered into a player’s possession,” and (3) “Murray teaches pop-up
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windows or emails linking a player to a third party vendor with whom the
player can arrange delivery of an award. Murray’s awards are never
delivered electronically.” Appeal Br. 15.
As an initial matter, the Examiner relies on the teachings of Walker,
not Murray, for disclosure of “an award comprised entirely of data.” See
Non-Final Act. 9. The Examiner relies on the teaching of Murray merely for
disclosure of “emailing the award.” See id. Murray discloses “[b]ecause all
players must have email, they are eligible to receive payment through
email.” Murray ¶ 92 (emphases added); see also Non-Final 9; Ans. 7. As
Murray discloses that because all players must have email, they are eligible
to receive payment through email, we disagree with Appellant that
“Murray’s awards are never delivered electronically.” Murray ¶ 92; see also
Appeal Br. 15.
Appellant contends that “[t]he combination of Walker and Murray
cannot deliver an electronic gambling award comprised entirely of data as
payment to a player simply because Walker never generates a deliverable
award that could be emailed, let alone provides it to Murray’s system for any
kind of electronic delivery” and that “[n]either Walker nor Murray, either
alone or in combination, disclose, teach, or otherwise suggest generating an
award comprised entirely of data and then emailing or electronically
delivering it to a player as a payment to the player.” Appeal Br. 14–16.
As an initial matter, the Examiner proposes to modify Walker in view
of Murray, not Murray in view of Walker. See Non-Final Act. 9. As
discussed above, in light of Appellant’s disclosure, we agree with the
Examiner’s broadest reasonable interpretation that Walker’s disclosure of
“print receipts, reports, . . . and coupons redeemable for free games, dinner,
merchandise or cash” satisfies the limitation of “an award comprised entirely
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of data.” See Walker 6:12–17; see also Non-Final Act. 9; Ans. 7; Appeal
Br. 18 (Claims App.). Additionally, the Examiner notes that Walker
“discloses presenting the award to the player on a game display located at a
gaming establishment or on a client device located via a server.” Non-Final
Act. 9. Appellant does not apprise us of Examiner error in this finding by
the Examiner. See Appeal Br. 14–17. The Examiner also correctly finds
that Murray discloses “emailing an award to one of [a] plurality of remotely
located players (email being a vessel for a delivery system).” Non-Final
Act. 9 (citing Murray ¶ 92). The Examiner reasons that it would have been
obvious to a skilled artisan to modify the game device of Walker to include
emailing an award to players, as taught by Murray, in order to “prevent
players from receiving duplicate awards” Id. Appellant does not apprise us
of error in the Examiner’s findings or reasoning. See Appeal Br. 14–17.
We also are not persuaded the Examiner engages in impermissible
hindsight in combining the teachings of the references. See Appeal Br. 16.
The Examiner cites specific teachings in Walker and Murray themselves, not
Appellant’s disclosure, in support of the Examiner’s articulated reasoning
for combining Walker and Murray as proposed in the rejection. See Non-
Final Act. 8–9; see also Ans. 6–8. We further are not persuaded of error,
because Appellant has not made a showing that the Examiner’s rationales
were outside of the knowledge within the level of ordinary skill in the art at
the time the claimed invention was made or were gleaned only from
Appellant’s disclosure. See Appeal Br. 14–17.
Appellant contends that the Examiner took Official Notice in
combining the teachings of Walker and Murray for claim 1. See Appeal Br.
16. We disagree. The Examiner does not take Official Notice in rejecting
claim 1. See Non-Final Act. 8–9. Rather, the Examiner cites to specific
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teachings in Walker and Murray and, in particular, cites to paragraph 92 of
Murray, for why a skilled artisan would modify the game device of Walker
to include emailing an award to players, namely, “to prevent players from
receiving duplicate awards.” Non-Final Act. 9; see also Murray ¶ 92
(“Because all players must have email, they are eligible to receive payment
through email. This payment scheme also allows an additional crosscheck
against individuals having duplicate enrollments in the same team (using
more than one email address) and duplicate enrollments in more than one
team in the same contest.”) (emphases added). Appellant does not apprise
us of error in the Examiner’s findings or reasoning. See Appeal Br. 14–17.
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 1 as unpatentable over
Walker and Murray. Accordingly, we sustain the Examiner’s rejection of
claim 1. We further sustain the rejection of claims 2–20 and 22, which fall
with claim 1.

Obviousness over Walker, Murray, and LeMay
Claim 21
Appellant does not present arguments for claim 21 separate from
those presented above against Walker and Murray. See Appeal Br. 17. As
we find no deficiencies in the Examiner’s rejection over Walker and Murray
for the reasons discussed above, we likewise sustain the Examiner’s
rejection of claim 21 over Walker, Murray, and LeMay.
Appeal 2018-006967
Application 13/726,295
18
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–22 101 Eligibility 1–22
1–20, 22 103(a) Walker, Murray 1–20, 22
21 103(a) Walker, Murray, LeMay 21
Overall
Outcome
1–22
TIME PERIOD FOR RESPONSE
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