Ex Parte FUJISAWA et al

Patent Trial and Appeal Board

Aug 1, 2017

13275011 (P.T.A.B. Aug. 1, 2017)

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.
13/275,011 10/17/2011 Masumi FUJISAWA 151173 9692
25944 7590
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
EXAMINER
LIDDLE, JAY TRENT
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
08/03/2017 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):
OfficeAction25944@oliff.com
j armstrong @ oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASUMI FUJISAWA, KENTA KITAMURA, and
TAKEHISAITAGAKI
Appeal 2016-003507
Application 13/275,011
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Masumi Fujisawa et al. (“Appellants”)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 1, 2, 4, 5, 8, and 9.2
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real parties in interest are Universal
Entertainment Corporation and Aruze Gaming America, Inc. Appeal Br. 1.
2 Claim 10 is withdrawn (see Final Act. 3), and claims 3, 6, and 7 are
cancelled (see Amendment (May 15, 2015)).
Appeal 2016-003507
Application 13/275,011
THE CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below and is
representative of the claimed subject matter on appeal.
1. A gaming machine in which a prize is determined based on
rearranged symbols, the gaming machine comprising:
at least one media entry configured to receive game media
providing credits to be bet to play a game;
a display having a display region in which symbols that
are associated with each of a plurality of scroll lines are to be
displayed; and
a controller for controlling a unit game in which the
symbols that are associated with said each scroll line are moved
and then the moved symbols are rearranged in the display region,
the controller being programmed to execute processing
operations of:
(1 -1 -1) randomly determining symbols to be rearranged on
the plurality of scroll lines;
(1-1-2) determining whether a WILD symbol is selected
on each of the plurality of scroll lines;
(1-1-3) as a result of the processing operation (1-1-2), any
of the plurality of scroll lines on which a WILD symbol is not
selected are displayed in the display region and move in a first
direction;
(1-1-4) as a result of the processing operation (1-1-2), any
of the plurality of scroll lines on which a WILD symbol is
selected are displayed in the display region and move in a second
direction different from the first direction, any of the plurality of
scroll lines on which a WILD symbol is selected being different
from any of the plurality of scroll lines on which a WILD symbol
is not selected;
(1-1-5) after a predetermined period of time has elapsed
subsequent to the processing operation of (1-1-4), displaying a
WILD symbol associated with any of the plurality of scroll lines
on which a WILD symbol is selected in the display region in a
stopped state while any of the plurality of scroll lines on which a
WILD symbol is not selected continue to move in the first
direction; and
2
Appeal 2016-003507
Application 13/275,011
(1-1-6) displaying the symbols associated with any of the
plurality of scroll lines on which a WILD symbol is not selected
in the display region, as triggered by the WILD symbol being
displayed in the stopped state,
wherein when the WILD symbol is not selected on any of
the stopped scroll lines, continuing to rotate any of the scroll lines
on which the WILD symbol is not selected in the first direction
according to a normal mode, and when the WILD symbol is
selected on any of the stopped scroll lines, continuing to rotate
any of the scroll lines on which the WILD symbol is not selected
in the first direction according to a modified mode, and
the modified mode is a mode in which the controller stops
any of the scroll lines on which the WILD symbol is not selected
sequentially and gradually to control the inevitability of an
outcome displayed to the display region.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Sines US 5,934,672 Aug. 10, 1999
Power US 2008/0096634 A1 Apr. 24, 2008
Tam US 2009/0291740 A1 Nov. 26, 2009
Friedman US 8,257,159 B1 Sept. 4, 2012
REJECTIONS3
I. Claim 9 stands rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement based on
particular language found in dependent claim 9. Final Act. 5.
3 A rejection of claims 1, 2, 4, 5, 8, and 9 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement
based on language found in independent claim 1 (and thus incorporated into
the dependent claims) (Final Act. 5—6) has been withdrawn (Ans. 2).
3
Appeal 2016-003507
Application 13/275,011
II. Claims 1, 2, 4, 5, 8, and 9 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Id. at 3^4.
III. Claims 1,2, 8, and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Power and Sines. Id. at 6—10.
IV. Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Power, Sines, and Friedman. Id. at 10.
V. Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Power, Sines, and Tam. Id. at 10-11.
OPINION
Rejection I
The stated basis for the Examiner’s rejection of claim 9 under
35 U.S.C. § 112, first paragraph, is that there is no support in the
Specification for the limitation “wherein the plurality of scroll lines in the
display region only contains one special symbol[,] the special symbol being
the WILD symbol.” Final Act. 6. The Examiner explains that “it appears
that the claim language requires a single special symbol shared among a
plurality of paylines and NOT a single special symbol on each of the
plurality of paylines.” Ans. 3. According to the Examiner, Figure 86 of the
Specification shows “TWO special symbols, i.e. there is a WILD appearing
on the 2nd scroll line and on the 4th scroll line.” Id.
Appellants argue that the Specification provides written description
support “in at least paragraphs [0651]—[0668] and Figs. 65, 73 and 86, which
only ever refer to a single type of special symbol, i.e., a WILD symbol, in
describing the operation and various modes of the gaming machine.” Reply
Br. 3. According to Appellants, “those skilled in the art would understand
4
Appeal 2016-003507
Application 13/275,011
that claim 9 requires that the WILD symbol is the only special symbol (and
to exclude the plurality of scroll lines from containing two such special
symbols, such as WILD and JOKER symbols).” Id.
We agree with Appellants that the Specification provides support for
the limitation in question sufficient to satisfy the written description
requirement of 35 U.S.C. § 112, first paragraph. Namely, Figure 86 and
paragraphs 651—668 of the Specification reasonably convey to one having
ordinary skill in the art that Appellants had possession of a gaming machine
having a plurality of scroll lines in the display region containing only one
special symbol in the form of a wild symbol. See Ariad Pharms., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). Accordingly, we do not
sustain the Examiner’s rejection of claim 9 under 35 U.S.C. § 112, first
paragraph.
Rejection II
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1294
(2012)). Under that framework, we first “determine whether the claims at
issue are directed to one of those patent-ineligible concepts”—i.e., a law of
nature, a natural phenomenon, or an abstract idea. Id. If so, we secondly
“consider 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,
132 S. Ct. at 1298, 1297). The Supreme Court has described the second part
5
Appeal 2016-003507
Application 13/275,011
of the analysis as “a search for an ‘inventive concept’—i.e., 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.”’ Id. (alteration in original) (quoting Mayo, 132 S. Ct. at
1294).
Part one
The Examiner determines that “the claims[,] when analyzed as a
whole, are held to be non-statutory because they are considered to be drawn
to an abstract idea of an idea of itself (i.e. game rules/mechanics).” Final
Act. 4—5 (citing 2014 Interim Guidance on Patent Subject Matter Eligibility,
79 Fed. Reg. 74618, 75622 (Dec. 16, 2014) (hereafter “Guidance”)). The
Examiner also explains that “the claims are directed towards a different
manner of displaying information on a display” and that the displaying of
information in a different format is also an abstract idea. Ans. 8.
Appellants argue that, “when the subject matter is understood for what
it really is, it becomes clear that the claims are not ‘directed to’ an abstract
idea.” Appeal Br. 16. In particular, Appellants assert that “claim 1 is
directed to a gaming machine,” which “is explicitly one of the four statutory
categories under § 101.” Id. at 17. According to Appellants, “claim 1 does
not recite an abstract idea” and “does not recite any game rules.” Reply Br.
10. We are not persuaded by Appellants’ argument.
Instead, we agree with the Examiner that Appellants’ claim 1 is
directed to instructions (i.e., rules) for conducting a game and displaying
game data. Claim 1, which recites “[a] gaming machine in which a prize is
determined based on rearranged symbols,” includes “at least one media entry
configured to receive game media providing credits to be bet to play a
6
Appeal 2016-003507
Application 13/275,011
game” and a controller programmed to “control [] a unit game” by executing
a set of operations (i.e., steps) that call for randomly determining an
arrangement of symbols to be displayed on a plurality of scroll lines,
determining which scroll lines will display a wild symbol, displaying scroll
lines that do not contain a wild symbol by moving them in a first direction,
displaying scroll lines that contain a wild symbol by moving them in a
second direction, displaying wild symbols associated with scroll lines that
contain a wild symbol in a stopped state while continuing to move scroll
lines that do not contain a wild symbol in the first direction, and displaying
scroll lines that do not contain a wild symbol by stopping them sequentially
and gradually. Appeal Br. A-l—A-2 (Claims App.). Appellants’
Specification describes “a gaming machine that is capable of broadcasting a
status of a game to a player by means of a reel action.” Spec. 12. In
particular, the Specification describes:
Conventionally, in gaming machines, games to be played by
rearranged symbols have been performed. Specifically, a unit
game[4] is repeatedly performed in such a manner that a plurality
of symbols are displayed after [being] movably displayed during
a predetermined period of time and then a predetermined prize is
awarded to a winning player, in accordance with a combination
or the number of symbols having been rearranged.
Id. 13. According to the Specification, “it is an object of the present
invention to provide a gaming machine that is capable of prompting a player
4 The Specification describes a “unit game” as “a series of operation[s] from
start of acceptance of BET to a state in which a winning prize is
established.” Spec. 159. In particular, “a unit game in a normal game
designates a state including a respective one of a BET time for accepting a
BET, a game time for rearranging stopped symbols 501, and a payout time
for payout processing to award a prize.” Id.
7
Appeal 2016-003507
Application 13/275,011
to pay his or her attention to a unit game that is attractive to the player.” Id.
110. The Specification further describes that
rotation directions of the five reels first rotate alternately
differently, thus enabling a player to be surprised and to expect
what happens next. Further, a wild symbol is displayed in a
stopped state to be thus able to enhance a sense of expectation.
Lastly, the reels are stopped slowly to be thus able to bring a
player into a tense atmosphere and attract the player’s interest to
reel movement from start of rotation to symbol rearrangement.
Id. 1 668.
In a decision issued after the briefing in this appeal, the Federal
Circuit addressed a § 101 rejection of claims directed to a “method of
conducting a wagering game.” In re Smith, 815 F.3d 816, 817 (Fed. Cir.
2016). There, the court stated: “On the first step, we conclude that
Applicants’ claims, directed to rules for conducting a wagering game,
compare to other ‘fundamental economic practice^]’ found abstract by the
Supreme Court.” Id. at 818. In addition, the court found that the claims
compared to other “concepts” found to be abstract by the Federal Circuit,
including methods of managing a game of bingo. Id. at 819 (citing Planet
Bingo, LLCv. VKGSLLC, 576 Fed. Appx. 1005, 1007-08 (Fed. Cir. 2014)).
The court “conclude[d] that the rejected claims, describing a set of rules for
a game, [we]re drawn to an abstract idea.” Id. at 819. Here, as in Smith, the
claims are directed to a set of rules for conducting a game.
With respect to the displaying of game data, in our view, following
rules for displaying game data (e.g., symbols) in a game that involves
rearranged symbols is not distinct from the abstract idea of following a set of
rules for playing the game. The display of the symbols as claimed is part
and parcel with the rules of playing the game. Additionally, the controller of
8
Appeal 2016-003507
Application 13/275,011
claim 1 is programmed to determine an arrangement of symbols, determine
whether the arrangement contains any wild symbols, and display the
symbols on scroll lines according to a set of operations in a manner that is
intended to increase player expectation and excitement. Our reviewing court
has held claims ineligible as directed to an abstract idea when they merely
collect information, analyze it, and display certain results. See, e.g., Electric
Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)
(holding that “collecting information, analyzing it, and displaying certain
results of the collection and analysis” are “a familiar class of claims
‘directed to’ a patent-ineligible concept”); see id. at 1354 (explaining that
the claims were not patent eligible because “[t]he advance they purport to
make is a process of gathering and analyzing information of a specified
content, then displaying the results, and not any particular assertedly
inventive technology for performing those functions”). The operations of
determining and displaying recited in claim 1 are akin to the subject matter
of such claims determined to be an abstract idea. Moreover, claim 1 does
not recite an improvement to a particular computer technology. See,
e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314—15
(Fed. Cir. 2016) (finding claims not abstract because they “focused on a
specific asserted improvement in computer animation”).
Appellants also argue that,
[ujnder the Streamlined Eligibility Analysis set forth in the
Guidance and further clarified in the Update [(i.e., July 2015
Update on Subject Matter Eligibility, 80 Fed. Reg. 45429 (July
30, 2015)], a streamlined analysis is appropriate when “a claim
that may or may not recite a judicial exception but, when viewed
as a whole, clearly does not seek to tie up any judicial exception
9
Appeal 2016-003507
Application 13/275,011
such that others cannot practice it.” See Guidance at Section
I.B.3.
Reply Br. 6. In particular, Appellants assert that “claim 1 is similar to the
robotic arm assembly example provided in the Guidance as an example of a
claim that qualifies for the streamlined analysis” because it “is clearly not an
attempt to tie up use of the mathematical relationships.” Id. at 7. This
argument by Appellants that the claims do not “tie up” the basic tools of
scientific and technological work, but rather are directed to a very specific
machine (see, e.g., Appeal Br. 15—16; Reply Br. 6—8), relates to preemption
and is unpersuasive.
Regarding preemption, the Supreme Court has stated that “patents that
. . . integrate the building blocks [of human ingenuity] into something more,
[Jthereby ‘transform[ing] ’ them into a patent-eligible invention, . . . pose no
comparable risk of pre-emption, and therefore remain eligible for the
monopoly granted under our patent laws.” Alice, 134 S. Ct. at 2354—55
(citations and quotations omitted). Although a concern regarding
preemption is one that “undergirds [the Supreme Court’s] § 101
jurisprudence” overall (id. at 2358), it is not an issue addressed in the first
step of the analysis. Cf, e.g., DDR Holdings, LLC v. Hotels.com, LLC, 773
F.3d 1245, 1259 (Fed. Cir. 2014) (discussing preemption in the context of
the second step of the analysis). In other words, in the first step of the
analysis, the issue is not whether the claims preempt all possible
implementations of the identified abstract idea; rather, the issue is “the
‘focus’ of the claims, their ‘character as a whole.’” Elec. Power Grp. v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (quoting Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335—36 (Fed. Cir. 2016) and Internet
10
Appeal 2016-003507
Application 13/275,011
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)).
In contrast, the second step, when reached, looks “more precisely at
what the claim elements add.” Id. Moreover, characterizing preemption as a
driving concern for patent eligibility is not the same as characterizing
preemption as the dispositive test for patent eligibility. Instead, “[t]he
Supreme Court has made clear that 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, 134 S. Ct. at 2354). Although “preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Id.
Therefore, when read as a whole, independent claim 1 is directed to a
set of instructions (i.e., rules) for conducting a game and displaying game
data, and, for the reasons discussed above, constitutes an abstract idea. The
question to be settled next is whether claim 1 recites an element, or
combination of elements, that is enough to ensure that the claim is directed
to significantly more than an abstract idea.
Step two
The Examiner determines that the claims do not recite “any
limitation(s) which qualify as ‘significantly more’ than the abstract idea
itself, but rather are merely implemented/applied on a computer.” Final Act.
5. In particular, the Examiner explains that “the ‘media entry’ is not claimed
in such a way that would exclude electronic input of credits.” Id. According
to the Examiner, “a generic computer still reads on the gaming machine in
11
Appeal 2016-003507
Application 13/275,011
that a person can still input electronic funds that qualify as game media, thus
reading on the limitations.” Id.
Appellants argue that, “even if the claims involve an abstract idea,. . .
the whole of the claims are clearly directed to a far more specific application
than any alleged abstract idea itself.” Appeal Br. 16. In particular,
Appellants assert that “[cjlaim 1 requires a gaming machine comprising at
least one media entry, a display and a controller configured to execute the
claimed operations,” and “these are interrelated elements that clearly amount
to significantly more than the claimed operations, the alleged gaming
rules/mechanics.” Reply Br. 11. According to Appellants, “[although the
machine relies on a controller to operate (like virtually any electronic
product on the market today), the device is far more than just some ‘generic
computer.’” Appeal Br. 19. We do not find this argument persuasive. The
recited elements of a media entry, display, and controller are generic
components that are well-understood, routine, and conventional in the
computer and gaming industries.
Furthermore, the media entry, display, and controller elements are
described in Appellants’ Specification and claimed only in a wholly
generic and functional manner, much like the computer components
in Alice. See Alice, 134 S. Ct. at 2358—60. In other words, these elements
function in a conventional manner to receive input data (i.e., the media
entry), output data (i.e., the display), and execute operations (i.e., the
controller). See id. at 2359-60 (holding patent-ineligible claims that
“amount to ‘nothing significantly more’ than an instruction to apply the
abstract idea . . , using some unspecified, generic computer” and in which
“each step does no more than require a generic computer to perform generic
12
Appeal 2016-003507
Application 13/275,011
computer functions”) (internal quotation marks, citation omitted). The fact
that these generic computer functions are applied to the particular
environment of a gaming machine is not sufficient to circumvent the
prohibition against patenting an abstract idea. See Bilski, 561 U.S. at 610—
11.
Appellants argue that “the claims here specify that the symbols that
are associated with each of a plurality of scroll lines are to be displayed on
the display.” Appeal Br. 19. According to Appellants, “[s]uch display of
results was noted by the PTO, in its January 2015 patent-eligibility
Examples,[5] as one of the reasons the claims at issue in SiRF Technology
Inc. v. International Trade Commission, 601 F.3d 1319 (Fed. Cir. 2010)
were patent-eligible.” Id.', see Example 4 (Global Positioning System).
Appellants’ reliance on SiRF is unavailing. In SiRF, certain method claims
were determined to be patent eligible, in part, because “without a GPS
receiver it would be impossible to generate pseudoranges or to determine the
position of the GPS receiver whose position is the precise goal of the
claims.” SiRF, 601 F.3d at 1332. That is, the Court found the claims were
not directed to performing mathematical operations on a computer alone, but
rather that the GPS receiver was “essential to the operation of the claimed
methods.” Id. at 1333. In contrast, we are not persuaded that anything other
than a computer having conventional components would be essential to the
operation of the claimed methods. As the Examiner explains, “the claims in
SiRF [we]re found eligible because they ‘improve an existing technology
5 Examples: Abstract Ideas (Jan. 27, 2015), available at
https://www.uspto.gov/patents/law/exam/abstract_idea_examples.pdf
(hereinafter “Examples”).
13
Appeal 2016-003507
Application 13/275,011
(global positioning) by improving the signal-acquisition sensitivity of the
receiver to extend the usefulness of the technology into weak-signal
environments and providing the location information for display on the
mobile device.’” Ans. 9 (quoting Examples, 12—13). In other words, we
agree with the Examiner in that “it [wa]s not merely the displaying of
information that made the claims in SiRF eligible.” Id.
Appellants also argue that claim 1 is patent eligible for the reasons
identified in Example 2 (E-Commerce Outsourcing System/Generating a
Composite Web Page), which is based on a claim in DDR. Reply Br. 10;
see Examples, 4— 6. In particular, Appellants assert that “claim 1 recites
structural features of a gaming machine, the controller of which is
configured to execute specific operations, the alleged game ‘mechanics,’ that
are necessarily rooted in gaming technology to overcome a problem
specifically arising in gaming, i.e., the lack of suspense.” Reply Br. 10.
This argument is unpersuasive.
The claims at issue in DDR address the problem of retaining website
visitors who would otherwise be transported away from the host website
after clicking on an advertisement on the host website and activating a
hyperlink. DDR, 773 F.3d at 1257. The DDR claims call for a web server
that “directs the visitor to an automatically-generated hybrid web page that
combines visual ‘look and feel’ elements from the host website and product
information from the third-party merchant’s website related to the clicked
advertisement.” Id. The system claimed in DDR “stores ‘visually
perceptible elements’ corresponding to numerous host websites” each
“displaying at least one link associated with a product or service of a third-
party merchant,” automatically identifies the host when this link is activated,
14
Appeal 2016-003507
Application 13/275,011
and instructs a “server of an ‘out-source provider’ to construct and serve to
the visitor a new, hybrid web page that merges content associated with the
products of the third-party merchant with the stored ‘visually perceptible
elements’ from the identified host website.” Id.
In other words, the DDR claims automatically generate a hybrid web
page that permits users visiting a host website to view and purchase products
from a third-party merchant, whose ads are displayed with hyperlinks on the
host website, without leaving the host website and entering that merchant’s
website. Thus, the solution set forth in the DDR claims “is necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks.” Id.
In contrast, upon determining which of the scroll lines will display a
wild symbol, Appellants’ claim 1 displays wild and non-wild scroll lines
moving in different directions before stopping the wild scroll lines to display
the wild symbols, and then gradually and sequentially stopping the non-wild
scroll lines to display the non-wild symbols. Appeal Br. A-1--A-2 (Claims
App.). Unlike the “visually perceptible elements” of the DDR claims, the
scroll lines and wild image display operations in Appellants’ claim 1 are
not rooted in computer technology to overcome a problem arising in the
realm of computer networks. Even assuming that the claimed display
operation does increase expectation and excitement for a player, providing
such aesthetic features to products and sendees generally to make them
attractive to consumers is a conventional and fundamental concept in
commerce. This concept is not unique to the Internet, and is not rooted in
15
Appeal 2016-003507
Application 13/275,011
Moreover, unlike Example 2 in which “[n]o idea similar to those
previously found by the courts to be abstract has been identified in the
claim” (Examples, 6), we have outlined in part one how Appellants’ claims
are similar to rules for conducting a game and/or the collection, analysis, and
display of certain results of collection and analysis determined by the
Federal Circuit to be abstract. In addition, Example 2 instructs that the
“additional limitations [in that case] amount to more than simply stating
‘apply the abstract idea on the Internet.’” Id. In contrast, we find that the
additional limitations in this case, directed to a media entry, display, and
controller, are conventional computer components. We further find that the
claims amount to nothing more than applying the abstract ideas of rules for
conducting a game and for displaying game data for the game using a
generic computer to perform the generic computer functions of receiving
input data, generating output data, and executing operations.
Accordingly, we find nothing in independent claim 1 to be sufficiently
transformative to render the claim patent eligible. For these reasons, we
sustain the Examiner’s decision rejecting claim 1, and its dependent claims
2, 4, 5, 8, and 9, for which Appellants provide no separate arguments, under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
Rejection III
The Examiner finds the combination of Power and Sines teaches or
suggests all of the limitations of independent claim I. Final Act. 6—8. With
respect to the teachings of Power, the Examiner finds that Power teaches,
inter alia, a controller programmed to execute operations that include
(1-1-2) determining whether a WILD symbol is selected on each
of the plurality of scroll lines ([0060]); (1-1-3) as a result of the
processing operation (1-1 -2)[,] any of the plurality of scroll lines
16
Appeal 2016-003507
Application 13/275,011
on which a WILD symbol[] is not selected, are displayed in the
display region and move in a first direction ([0060]); (1-1-4) as
a result of the procession operation (1 -l-2)[,] any of the plurality
of scroll lines on which a WILD symbol is selected are displayed
in the display region and move in a second direction different
from a first direction ([0060]; [0078]) any of the plurality of
scroll lines on which a WILD symbol is selected being different
from any of the plurality of scroll lines on which a WILD symbol
is not selected ([0060]); [and] (1-1-5) after a predetermined
period of time has elapsed subsequent to the processing operation
of (1-1-4), displaying a WILD symbol associated with any of the
plurality of scroll lines on which a WILD symbol is selected in
the display region in a stopped state ([0060]; [0078]).
Id. at 7.
Appellants argue that Power does not teach the above combination of
operations. Appeal Br. 10-14. In particular, Appellants assert that claim 1
requires that “the first and second directional spinning occurs before
displaying a WILD symbol associated with any of the plurality of scroll
lines on which a WILD symbol is selected in the display region in a stopped
state.” Appeal Br. 12. Appellants explain that, “[i]n contrast, Power does
not activate suspense mode (i.e., the alleged spinning in the second
direction) until after a wild symbol appears on a stopped reel.” Id.
According to Appellants, “[although Power discloses multiple suspense
conditions, including a wild symbol, Power still does not activate suspense
mode until after a wild symbol appears on a stopped reel.” Reply Br. 5
(citing Power | 88, Fig. 5).
The ultimate question of patentability is one of law. Graham v. John
Deere Co., 383 U.S. 1, 17 (1966). Nevertheless, the ultimate legal
conclusion must be decided on the basis of underlying factual findings. The
Examiner must provide sufficient facts to support the conclusion of
17
Appeal 2016-003507
Application 13/275,011
obviousness by a preponderance of the evidence. See In re Caveney, 761
F.2d 671, 674 (Fed. Cir. 1985). In order to satisfy this standard, the
evidence must demonstrate that it is more likely than not that the alleged
facts are actually true. See Bosies v. Benedict, 27 F.3d 539, 542 (Fed. Cir.
1994) (the preponderance of the evidence standard requires the finder of fact
to believe that the existence of a fact is more probable than its nonexistence).
We are persuaded by Appellants’ argument that the Examiner has not
established by a preponderance of the evidence that Power teaches that the
wild scroll lines and non-wild scroll lines move in different directions before
any wild symbol is displayed in a stopped state, as required by claim l.6
Although Power teaches that displayed reels can be adjusted to move in
different directions in a suspense mode based on a wild symbol condition
(e.g., Power || 60, 64, 78), the Examiner does not point to, nor do we
discern, any teaching in Power that the suspense mode is initiated before
displaying wild symbols in a stopped state. Moreover, the Examiner does
not appear to take a position that it would have been obvious to modify (i.e.,
program) Power’s controller to operate in such a way, much less articulate
6 An order of the operations executed by the controller recited in claim 1 is
logically implied due to the language in the claim. For example, operations
(1-1-3) and (1-1-4), which specify that wild and non-wild scroll lines move
in different directions, execute “as a result of the processing operation (1-1-
2),” and operation (1-1-5), which specifies that any wild scroll lines stop to
display a wild symbol, executes “after a predetermined period of time has
elapsed subsequent to the processing operation of (1-1-4).” Appeal Br. A-l—
A-2 (Claims App.). Thus, claim 1 requires a controller programmed to
move wild and non-wild scroll lines in different directions in operations (1-
1-3) and (1-1-4) before any wild scroll line is stopped to display a wild
symbol in operation (1-1-5).
18
Appeal 2016-003507
Application 13/275,011
any reasoning to explain why one of ordinary skill in the art would have
been led to make such a modification.
For the foregoing reasons, we are persuaded that the Examiner erred
in concluding that the subject matter of independent claim 1 would have
been obvious. Accordingly, we do not sustain the rejection of independent
claim 1, and its dependent claims 2, 8, and 9, under 35 U.S.C. § 103(a) as
unpatentable over Power and Sines.
Rejections IV and V
The rejections of claims 4, 5, and 9 rely on the same unsupported
finding as to the disclosure of Power discussed above. Final Act. 10—11.
The Examiner does not explain how Friedman and Tam would cure this
underlying deficiency. Accordingly, for the reasons discussed above, we do
not sustain the rejections, under 35 U.S.C. § 103(a), of: claims 4 and 5 as
unpatentable over Power, Sines, and Friedman; and claim 9 as
unpatentable over Power, Sines, and Tam.
DECISION
The Examiner’s decision to reject claim 9 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement is
reversed.
The Examiner’s decision to reject claims 1, 2, 4, 5, 8, and 9 under
35 U.S.C. § 101(a) as being directed to patent-ineligible subject matter is
affirmed.
The Examiner’s decision to reject claims 1, 2, 8, and 9 under
35 U.S.C. § 103(a) as unpatentable over Power and Sines is reversed.
19
Appeal 2016-003507
Application 13/275,011
The Examiner’s decision to reject claims 4 and 5 under 35 U.S.C.
§ 103(a) as unpatentable over Power, Sines, and Friedman is reversed.
The Examiner’s decision to reject claim 9 under 35 U.S.C. § 103(a) as
unpatentable over Power, Sines, and Tam 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)(l)(iv).
AFFIRMED
20