Ex Parte Amaitis et al

Patent Trial and Appeal Board

Nov 30, 2016

13561335 (P.T.A.B. Nov. 30, 2016)

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.
13/561,335 07/30/2012 Lee M. Amaitis 04-7121-C5 7438
63710 7590 12/02/2016
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
HSU, RYAN
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
12/02/2016 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):
patentdocketing @ cantor.com
lkoro vich @ c antor. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEE M. AMAITIS, JOSEPH M. ASHER, HOWARD W. LUTNICK,
DARRIN M. MYLET, and ALAN B. WILKINS
Appeal 2015-003002
Application 13/561,335
Technology Center 3700
Before LINDA E. HORNER, THOMAS F. SMEGAL, and LISA M. GUIJT,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’s
decision2 rejecting claims 1—30. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as CFPH, LLC. App. Br. 2.
2 Appeal is taken from the Final Office Action dated June 21, 2013 (“Final Act.”).
Appeal 2015-003002
Application 13/561,335
CLAIMED SUBJECT MATTER
Claims 1 and 16 are the independent claims on appeal. Claims 1 and 16,
reproduced below, are representative of the subject matter on appeal.
1. A method comprising:
responsive to a user using a device to access a gaming system to
engage in at least one gaming activity, determining by at least one
server whether the user’s device is located within a pre-defmed
location; and
allowing, by the at least one server, the user to engage in the at
least one gaming activity from the user’s device based upon the
determination that the user’s device is located in the pre-defmed
location, and
wherein responsive to the user accessing the gaming system,
certain functionality of the device is altered to ensure wagers received
by the at least one server from the device, while the device is located in
the pre-defmed location, did not originate from outside boundaries of
the pre-defmed location.
16. An apparatus, comprising:
at least one processor; and
at least one memory device electronically coupled to the at least
one processor, in which the memory device stores instructions which,
when executed by the at least one processor, direct the at least one
processor to:
responsive to a user using a device to access a gaming system to
engage in at least one gaming activity, determining whether the user’s
device is located within a pre-defmed location; and
allowing the user to engage in the at least one gaming activity
from the user’s device based upon the determination that the user’s
device is located in the pre-defmed location, and
wherein responsive to the user accessing the gaming system,
certain functionality of the device is altered to ensure wagers received
by the at least one processor from the device, while the device is located
in the pre-defmed location, did not originate from outside boundaries
of the pre-defmed location.
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REJECTIONS
I. Claims 1—30 are provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1—3 of
copending Application 13/616,268, and claims 1—19 of copending Application
13/346,133. Final Act. 4.
II. Claims 1, 4, 5, 8—16, 19, 20, and 23—30 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Steelberg (US 7,460,863 B2; iss. Dec. 2, 2008) and
Nguyen (US 7,828,652 B2; iss. Nov. 9, 2010). Final Act. 5—8.
III. Claims 2, 3, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Steelberg, Nguyen, and Paravia (US 6,508,710 Bl; iss. Jan. 21,
2003). Final Act. 8—9.
IV. Claims 6, 7, 21, and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Steelberg, Nguyen, and Valentine (US 6,011,973; iss. Jan. 4,
2000). Final Act. 9-10.
V. Claims 1—30 stand rejected under 35 U.S.C. § 101 as being directed to
ineligible subject matter. Ans. 2—5.3
ANALYSIS
Rejection I
The Examiner finds that regarding the subject matter of claims 1—30 of the
application on appeal (filed July 20, 2012) and claims 1—3 of copending
Application 13/616,268 (the ’268 Application, filed Sept. 14, 2012) and 1—19 of
copending Application 13/346,133 (the ’133 Application, filed Jan. 9, 2012),
3 The Examiner states this rejection in the Examiner’s Answer as a new ground of
rejection.
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Application 13/561,335
“[although the conflicting claims are not identical, they are not patentably distinct
from each other.” Final Act. 4.
First, Appellants argue that the Examiner’s rejection is “incomplete and
therefore not a valid rejection,” because the Examiner failed to “identify a one-to-
one pair of claims between the current application and the reference application.”
App. Br. 9 (citing, i.e., MPEP § 804(B)(1)). However, the Examiner responds by
providing the one-to-one pair of the claims, which Appellants fail to address in
their Reply Brief. See Ans. 12—14 (chart); Reply Br. 5. Second, Appellants argue
that the Final Action “sets out no obviousness analysis.” App. Br. 10. However,
the Examiner responds by reasoning that “[t]he differences in the invention would
have been obvious geo-fencing variants to one of ordinary skill in the art,” and
Appellants fail to address the Examiner’s analysis in their Reply Brief. Ans. 14;
Reply Br. 5.
The Examiner’s claim chart on pages 12—14 of the Answer does not include
the claims from the ’268 Application as currently pending. See Ans. 12—14; cf
’268 Application, Amendment, filed Aug. 16, 2016. Because the claims of the
’268 Application have changed since institution of the double patenting rejections
in the instant ’335 Application, we decline to reach the rejection, and leave it to the
Examiner to determine whether the obviousness-type double patenting rejection is
still proper. However, with respect to the ’133 Application, the Examiner provided
Appellants with a sufficiently detailed basis for the double patenting rejection, and
Appellants have not addressed the rejection in their Reply Brief. Reply Br. 5
(“Applicant respectfully submits that a valid rejection has not been raised for at
least the reasons set forth in the Appeal Brief.”) On this basis, and further upon
our own review of the patented claims, we sustain the Examiner’s double patenting
rejection of claims 1—30, in view of the ’133 Application.
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Rejection II
The Examiner finds, inter alia, that
[t]he gaming system of Steelberg implements a method where a
location determination is made based upon whether the user is
physically located within an authorized bounded region (see col. 8: In
61-col. 9: Ini). Once the determination is made that the user’s device
is located within the pre-defmed location; the user is allowed to engage
in the gaming activity (see col. ll.In 1-16). It is implicit in the
disclosure of Steelberg that the purpose of the location determination
circuit is to ensure that the user’s gaming activities did not originate
outside boundaries of the authorized gaming area (ie: pre-defmed
location).
Ans. 7. The Examiner also finds that Steelberg teaches
a simple “bit” set in a microprocessor [] allows the microprocessor to
activate the game software (see col. 11: In 17-20). Otherwise if the bit
is not set, then game play is not allowed to proceed which is analogous
to certain functionality of the device being altered to ensure that wagers
received by the at least one server from the device are located within
the pre-defmed location.
Ans. 8—9.
The Examiner also finds that
[although Steelberg does not specifically teach ensuring wagers
received by the at least one server from the device to be located in the
pre-defmed area[,] it does teach utilizing a bit to verify that the remote
gaming device is located within an authorized gaming area (see col. 11:
In 1-21). As wagers are generally understood in the art to be place[d]
to initiate a game[,] it would have been obvious to one of ordinary skill
in the art to modify the system of Steelberg to utilize the location
verification bit to ensure wagers originated form within the pre-defmed
location.
Final Act. 6 (emphasis added).
Alternatively, the Examiner determines that Nguyen teaches “the use of
location for a remote gaming terminal to conform with jurisdictional laws and
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requirements of a particular player or remote gaming terminal.” Final Act. 6
(citing Nguyen 11:64—12:3). The Examiner reasons that it would have been
obvious “to modify Steelberg with the teachings of [Nguyen] to [alter a] certain
functionality of the device ... to ensure wagers received by at least one server
from the device did not originate from outside boundaries of the pre-defmed
location.” Final Act. 6—7.
Appellants argue that
[mjerely allowing game play by a user based upon the determination
that the user/user device is located in an authorized location, as
disclosed by the cited portions of Steelberg and Nguyen, is not ensuring
that while the device is located in the authorized location[,] wagers
received by a server from the device did not originate from outside
boundaries of the authorized location, as [recited in] claim[ ] 1.
Reply Br. 4; see also App. Br. 5. Appellants explain that
[according to the cited portions of Steelberg, game play is
allowed to take place only if a device in use by a user is determined to
be within an authorized area. There is no discussion of functionality of
the device being altered to ensure wagers received by a server from the
device, while the device is located in the authorized area, did not
originate from outside boundaries of the authorized area, as [recited in]
claim 1.
App. Br. 6.
Appellants explain that
the cited portions of Steelberg at most ensure that a user/device in use
by the user is located in an authorized location, which does not ensure
that while the device is located in the authorized location[,] wagers
received by a server from the device did not originate from outside
boundaries of the authorized location.
Reply Br. 4.
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In their Appeal Brief, Appellants direct us to the Specification, page 8, line
20 to page 9, line 4, in support for the claim limitations of independent claims 1
and 16, which states:
[a]s subscribers launch their specific gaming application, the
handset will only talk to certain base stations with cells or sectors that
have been engineered to be wholly within the gaming jurisdiction. For
example, if a base station is close enough to pick up or send a signal
across state lines, it will not be able to communicate with the device.
When a customer uses the device for gaming, the system may prohibit,
if desired, the making or receiving [of] voice calls. Moreover, voice
can be eliminated entirely if required. Further, the devices are
preferably not allowed to “connect” to the Internet. This ensures a high
level of certainty that bets/wagers originate and terminate within the
boundaries of the gaming jurisdiction and the “private” wireless system
cannot be circumvented or bypassed.
App. Br. 3 (citing, i.e., 8:20-9:4).4 Thus, we understand that, according to
Appellants’ Specification, when a customer is using the device for gaming to
access the gaming system, the voice call and/or Internet connectivity functions of
the device are altered to ensure wagers [placed], while the device is located in the
pre-defmed location, did not originate from outside of the pre-defmed location.
See also App. Br. 11 (Claims App.) (claims 6 and 21: “wherein the altered
functionality includes making voice calls”; claims 7 and 22: wherein the altered
functionality includes receiving voice calls”; claims 8 and 23: wherein the altered
functionality includes Internet connectivity).
In a similar manner, Steelberg discloses that “[i]f a location is verified as
being an authorized location, a simple ‘bit’ is set in a microprocessor register
which allow[s] the microprocessor to activate the game software. If there is no co-
4 The other citations identified by Appellants in support of the subject matter of
claims 1 and 16 do not discuss the functionality of the device. See App. Br. 3
(citing Spec. 3:4—28, 11:3—13, Fig. 1).
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location match, the ‘bit’ is not set and game play is not allowed to proceed.”
Steelberg 11:17—21. Thus, we are not apprised of error in the Examiner’s
determination that Steelberg discloses altering a certain functionality of the device
(i.e., by setting the “bit”), wherein the functionality of the device is the ability to
engage in game play.
We also agree with the Examiner’s reasoning, as stated supra, that game
play includes placing wagers. Steelberg discloses that
[t]he player device includes electronic game play means for enabling a
player to make a wager by inputting wager data, and to commence game
play by causing an activation signal to be received and processed. In
one particular aspect, the player device is placed in condition to receive
said activation signal by the device’s first location being within a
bounded authorized area.
Steelberg 2:55—61.
In addition, similar to the disclosure in Appellants’ Specification, as stated
supra, wherein “the handset will only talk to certain base stations . . . within the
gaming jurisdiction” and “[w]hen a customer uses the device for gaming, the
system [alters the functionality],” Steelberg discloses, as stated supra, that the
game playing functionality is altered only if the location is verified as being within
an authorized location (and therefore, by definition, not outside of the boundaries
of the pre-defmed location). Thus, we are not apprised of error in the Examiner’s
finding that “it is implicit in the disclosure of Steelberg that the purpose of the
location determination circuit is to ensure that the user’s gaming activities did not
originate outside boundaries of the authorized gaming area,” as stated supra, or
that “[the] functionality of the device is altered to ensure wagers [placed] while the
device is located in the pre-defmed location did not originate from outside
boundaries of the pre-defmed location,” as claimed. App. Br. 11 (Claims App.)
(emphasis added). In other words, we see no difference in altering the
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functionality of a device to make voice calls, for example, based on location
verification, and altering the functionality of a device to engage in game play based
on location verification, wherein, in each case, the functionality is altered to ensure
wagers [placed] while the device is located in the pre-defmed location did not
originate from outside boundaries of the pre-defmed location. To the extent
Appellants are arguing that more is required by the claims, Appellants are arguing
limitations that are not recited in the claims.
Regarding the Examiner’s alternative reliance on Nguyen, Appellants argue
that Nguyen fails to discuss “functionality of a device being altered to ensure
wagers received by a server from the device, while the device is located in a
jurisdiction where gaming is allowed, did not originate from outside boundaries of
the jurisdiction,” as required by claim 1. App. Br. 7. However, as stated supra, the
Examiner relies on Steelberg, not Nguyen, for altering the functionality of the
device. Thus, Appellants’ argument does not address the Examiner’s proposed
combination. Moreover, we do not agree with Appellants that Steelberg fails to
teach altering the functionality of the device, as stated supra.
Accordingly, we sustain the Examiner’s rejection of independent claim 1 as
unpatentable over Steelberg and Nguyen. Appellants chose not to present separate
arguments for patentability of claims 4, 5, and 8—15, which depend from claim 1,
and thus, we also sustain the Examiner’s rejection of claims 4, 5, and 8—15. App.
Br. 5. Appellants also rely on the arguments set forth supra with respect to claim 1
for the patentability of independent claim 16 and claims 19, 20, and 23—30
depending therefrom (id. at 7), and for the same reasons stated supra, we sustain
the Examiner’s rejection of claims 16, 19, 20, and 23—30.
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Rejections III—IV
Appellants chose not to present separate arguments for the patentability of
claims 2, 3, 6, 7, 17, 18, 21, and 22, which depend from independent claims 1 and
16, and therefore, because we sustain the Examiner’s rejection of claim 1 and 16,
we also sustain the Examiner’s rejections of claims 2, 3, 6, 17, 18, 21, and 22.
App. Br. 8-9.
Rejection VI
The Examiner rejects claims 1—30 under 35 U.S.C. § 101 “as being directed
to ineligible subject matter.” Ans. 3. In particular, the Examiner finds that claims
1 to 30 “are directed towards a method comprising authenticating the user,
authenticating the device and determining whether the user’s device is located
within a pre-defmed location.” Id. at 5. The Examiner determines that these claims
“are similar to claims at issue in Bilski v. Kappos, 130 S. Ct. 3218 (2010) and
Alice] Corp. Pty Ltd. v. CLS Bank Inti], 134 S. Ct. 2347 [(2014)], which the
Supreme Court held were directed to ‘abstract ideas.’” Id. More specifically, the
Examiner finds that “the claims are directed to the abstract idea of (i) a method of
organizing human activities in a gaming environment, [and] (ii) and idea of itself
for determining that the user’s device is located within the pre-defmed location.”
Id. Appellants argue, inter alia, that the Examiner’s finding is a conclusory
opinion that lacks sufficient evidence to show that “the alleged abstract idea is
abstract.” Reply Br. 2.
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a “new
and useful process, machine, manufacture, or composition of matter.” 35 U.S.C.
§101. The Supreme Court, however, has long interpreted § 101 to include an
implicit exception: “laws of nature, natural phenomena, and abstract ideas” are not
patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354
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(2014). In analyzing patent eligibility questions under 35 U.S.C. § 101, the
Supreme Court instructs us to “first determine whether the claims at issue are
directed to a patent-ineligible concept.” Id. at 2355. Alice provides several broad
examples of what might constitute an abstract idea, including: (1) fundamental
economic practices; (2) certain methods of organizing human activities; (3) an idea
of itself and (4) mathematical relationships or formulae. See id. at 2350; 2356.
We determine that the subject matter of independent claims 1 and 16 are not
merely directed to organizing human activities in a gaming environment, but
rather, the claims more specifically address a gaming environment which includes
a user device, a gaming system, a server, and a pre-defmed location, wherein a
determination is made, responsive to a user using the device to access the gaming
system, whether a gaming device is in a pre-defmed area and altering the
functionality of the device accordingly. Unlike risk hedging in Bilski, the concept
of determining whether a gaming device is in a pre-defmed area and altering the
functionality of the device is not a fundamental practice of organizing human
activity within a certain environment. We also find the recitations of claims 1 and
16 sufficiently concrete as to set them outside the broad definition of an abstract
idea itself as set forth in Alice. Thus, we conclude that the Examiner did not
establish by a preponderance of the evidence that independent claims 1 and 16, and
claims 2—15 and 17—30 depending therefrom are unpatentable under 35 U.S.C.
§101.
DECISION
We do not reach the Examiner’s provisional rejection of claims 1—30 based
on nonstatutory obviousness-type double patenting, in view of the ’268
Application; however, the Examiner’s decision to provisionally reject claims 1—30
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on the ground of nonstatutory obviousness-type double patenting is AFFIRMED,
in view of the ’133 Application.
The Examiner’s decisions to reject claims 1—30 under 35 U.S.C. § 103(a) are
AFFIRMED.
The Examiner’s decision to reject claims 1—30 under 35 U.S.C. § 101 is
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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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