Ex Parte Gingher

Patent Trial and Appeal Board

Oct 17, 2017

14045547 (P.T.A.B. Oct. 17, 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.
14/045,547 10/03/2013 Robert G. Gingher GING-002 4611
26897 7590 10/19/2017
RORFRT TtINGHFR
EXAMINER
29 Magoun Road
West Islip, NY 11795
LANEAU, RONALD
ART UNIT PAPER NUMBER
3714
NOTIFICATION DATE DELIVERY MODE
10/19/2017 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):
gingherl @ verizon.net
rggingher @ gmail .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT G. GINGHER
Appeal 2016-002184
Application 14/045,5471
Technology Center 3700
Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 2—16. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
According to Appellant, the “invention relates generally to the field of
mixed games of chance and skill, such as for example poker, whose
outcomes depend in part on the skill of the players, and in particular to the
use of a computer to reduce or eliminate the element of chance from a
1 According to Appellant, the real party in interest is Robert Gingher.
Appeal Br. 1.
Appeal 2016-002184
Application 14/045,547
game.” Spec. 12. Claims 2, 9, and 16 are the only independent claims on
appeal. Below, we reproduce claim 2 as illustrative of the appealed claims.
2. A computer system for substantially reducing
chance in a mixed contest of luck and skill between two or more
players played on the computer system, comprising:
a processor;
a memory;
software stored on a non-transitory, computer-readable
medium which, when loaded into the memory and run by the
processor, causes the processor to perform steps of:
providing the players with first elements to play one or
more first rounds in the contest;
determining a highest possible score based on skillful play
of the elements provided to each player to play in each of the one
or more first rounds;
maintaining a record of the highest possible score of each
player in the memory;
creating second elements to play one or more second
rounds in the contest, such that a total highest possible score of
each player for the one or more first rounds and the one or more
second rounds are substantially the same for each player; and
providing the players with the second elements to play in
a second round.
REJECTION
The Examiner rejects claims 2—16 under 35 U.S.C. § 101 as directed
to ineligible subject matter.
ANALYSIS
Based on our review of the record, we are not persuaded by Appellant
that the Examiner erred in determining that claims 2—16 are directed to
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Application 14/045,547
ineligible subject matter. Thus, for the reasons we discuss below, we sustain
the rejection.
As a general matter, we determine whether a claim is directed to
patent-eligible subject matter based on the Supreme Court’s framework, as
articulated in Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), which
follows the two-part test set forth in Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66 (2012). That is, a claim fails to recite
patent-eligible subject matter if, in accordance with the first part of the Alice
test, the claim is directed to an abstract idea, and if, in accordance with the
second part of the test, the claim lacks any further claim limitations that,
when “consider[ed] . . . both individually and ‘as an ordered combination’
. . . ‘transform the nature of the claim’ into a patent-eligible application.”
Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78, 79).
Turning to Appellant’s arguments, we are not persuaded that the
Examiner’s rejection is in error because the Examiner does not provide
adequate evidentiary support for the finding that the claims recite an abstract
idea, and because the claims are not, in fact, directed to an abstract idea. See
Appeal Br. 5—9. Appellant does not cite any controlling authority that
requires the Examiner to provide factual evidence to support a finding that a
claim is directed to an abstract idea. Instead, the Federal Circuit has
repeatedly noted that, initially, the Examiner only need establish a prima
facie case, and a “prima facie case is merely a procedural device that enables
an appropriate shift of the burden of production.” Hyatt v. Dudas, 492 F.3d.
1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992)). The court has held that the USPTO carries its procedural
burden of establishing a prima facie case when its rejection satisfies the
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Application 14/045,547
requirements of 35 U.S.C. § 132 by notifying Appellant of the reasons for
rejection, “together with such information ... as may be useful in judging of
the propriety of continuing the prosecution of [the] application.” See In re
Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Therefore, all that is required is
that the Examiner sets forth the statutory basis of the rejection in a
sufficiently articulate and informative manner as to meet the notice
requirement of § 132. Id.', see also Chester v. Miller, 906 F.2d 1574, 1578
(Fed. Cir. 1990) (“Section 132 is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.”).
In this case, in rejecting claims 2—16 under § 101, the Examiner
analyzes the claims using the two-step framework set forth in Mayo,
566 U.S. at 77—79, “for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 134 S. Ct. at 2354. Specifically, the
Examiner notifies Appellant that the pending claims “are directed to the
abstract idea of reducing ‘chance in a mixed contest of luck and skill,’” in
accordance with the first step in Alice. Final Action 3 (emphasis omitted).
Further, the Examiner finds that there are no meaningful limitations that
transform the claims into something significantly more than the abstract idea
itself, but, rather, that
the claim[s] do[] not effect an improvement to another
technology or technical field[,] . . . do[] not amount to an
improvement to the functioning of a computer itself[,] . . . and
. . . do[] not move beyond a general link of the use of an abstract
idea to a particular technological environment. The processor as
described is nothing more than a standard/generic processor
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Application 14/045,547
performing standard steps and storing/processing information
thus lacks the addition of ‘significantly more’ in the claims,
in accordance with the second step in Alice. Id. at 4—5. In this regard, the
Examiner finds that the claim elements viewed individually and as a whole
amount to no more than mere instructions to implement an abstract idea
using a generic processor. Id. Thus, the Examiner sets forth a proper
rejection under § 101 such that the burden shifts to Appellant to explain why
the claims are patent-eligible.
Appellant argues that even “[i]f. . . the Examiner is of the opinion
that the mere presence of an abstract idea in the claims, i.e., reducing
‘chance in a mixed contest of luck and skill,’ necessarily places the claim
into part 2 of the Alice test,... the claim[s] pass[] muster under part 2 [of
the Alice test] as well.” Appeal Br. 9; see also id. at 9—11. Based on our
review of the claim, Appellant does not persuade us that the claims recite
significantly more, such that the claims include an “inventive concept” in
accordance with Alice’s second step.
“[Appellant’s] claims are directed to maintaining ‘a record of the
highest possible score of each player in the memory,’ and creating and
providing the players with second elements that the computer created that
were determined by the computer such that each player has the same
opportunity to achieve substantially the same total highest score as his
competitors.” Appeal Br. 10—11. However, this is nothing more than
collecting, analyzing, and outputting data—steps that the Federal Court has
repeatedly held constitute an abstract idea. See, e.g., Elec. Power Grp. LLC
v. Alstom, 830 F.3d 1350, 1353—54 (Fed. Cir. 2016) (collecting information
and “analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, [are] essentially mental processes
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Application 14/045,547
within the abstract-idea category”); see also Cybersource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) (methods that can be
performed entirely in the human mind are unpatentable). Further, the claims
appear to recite, as structure, only generic computer components, which are
not enough for patent-eligibility. See, e.g., Final Action 5; see also, e.g.,
DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir.
2014) (“[A]fter Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible.”). Appellant does not show how the claims are technically
performed such that they are not routine, conventional functions of a generic
computer or processor.
Appellant further argues that “the Examiner has acknowledged that
the claim as a whole recites novel and non-obvious (and therefore otherwise
patentable) subject matter.” Appeal Br. 11. Even assuming Appellant is
correct, such is not dispositive. Although the second step in the Alice/Mayo
framework is termed a search for an “inventive concept,” the analysis is not
an evaluation of novelty or non-obviousness, but rather, a search for “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, 134 S. Ct. at 2355 (alteration in original)
(quoting Mayo, 566 U.S. at 73). “The ‘novelty’ of any element or steps in a
process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188—
89 (1981). A novel and nonobvious claim directed to a purely abstract idea
is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90-91.
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Further, we are not persuaded of Examiner error by Appellant’s
argument that “the claim does not pre-empt the broad field of online
gaming.” Appeal Br. 12; see also id. at 10—11. There is no requirement for
the Examiner to establish pre-emption, and it is well established that “the
absence of complete preemption does not demonstrate patent eligibility.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.
Cir. 2015) (citing Alice, 134 S. Ct. at 2354); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015) (“[Tjhatthe
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.”).
Thus, based on the foregoing, Appellant does not demonstrate error in
the Examiner’s rejection of claims 2—16 as directed to ineligible subject
matter. Therefore, we sustain the rejection.
DECISION
We AFFIRM the Examiner’s rejection of claims 2—16.
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
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