Ex Parte Kadlec et al

Patent Trial and Appeal Board

Dec 13, 2017

14273535 (P.T.A.B. Dec. 13, 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.
14/273,535 05/08/2014 Gary F. Kadlec BCG2760-003B 2851
8698 7590 12/15/2017
STANDLEY LAW GROUP LLP
6300 Riverside Drive
Dublin, OH 43017
EXAMINER
CUFF, MICHAEL A
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
12/15/2017 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):
standley docketing @ standleyllp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY F. KADLEC and CRAIG R. SEDORIS1
Appeal 2016-007670
Application 14/273,535
Technology Center 3700
Before DANIEL S. SONG, WILLIAM A. CAPP, and
BRANDON J. WARNER, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1-3, 5-23, and 25-27 as unpatentable as being directed
to patent ineligible subject matter under the judicial exception to 35 U.S.C.
§ 101. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest is the applicant and assignee of the present
application, Phrazzing Games, LLC.
Appeal 2016-007670
Application 14/273,535
THE INVENTION
Appellants’ invention relates to systems and methods for
administering a wagering lottery game. Spec. ^ 2. Claim 1, reproduced
below, is illustrative of the subject matter on appeal.
1. A method of administrating a lottery game that
comprises a wagering portion and a resolution portion,
comprising the steps of:
establishing a lottery game by defining a set of game
parameters, including a termination parameter and a set of valid
wager parameters, on an administration server, and wherein one
of the valid wager parameters is that wager information
received is a sequence having a predetermined number of
characters selected from a set of possible characters;
opening an instance of the lottery game for play on the
administration server;
establishing a wager pool by conducting, with a plurality of
users of gaming devices, a wagering portion of the lottery game
on the administration server, comprising the steps of:
establishing an interactive communication between the
administration server and the gaming device;
providing game rules and information to the gaming
device;
requesting wager and payment information;
receiving, provisionally, the wager and payment
information from the eligible player;
validating the received wager and payment information;
rejecting the received wager and payment information if
either or both of the received wager and payment
information are not valid;
rejecting the received and validated wager and payment
information if accepting the received and validated wager
and payment information would cause the termination
parameter to be exceeded; and
accepting the received and validated wager and payment
information as an accepted entry by storing the received and
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Appeal 2016-007670
Application 14/273,535
validated wager and payment information in a wager pool;
and
conducting a resolution portion of the lottery game,
comprising the steps of:
closing the wager pool;
establishing a prize payout; and
drawing a winner from the accepted entries.
OPINION
Claims 1 and 23
Claims 1 and 23 are independent claims and Appellants argue them
together. Appeal Br. 7-16. We select claim 1 as representative. See 37
C.F.R. §41.37(c)(l)(iv).
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. CLSBankInt’l, 134 S. Ct. 2347, 2355 (2014) (citingMayo
Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 72-73 (2012)).
According to the Supreme Court’s framework, we must first determine
whether the claims at issue are directed to one of those concepts (i.e., laws of
nature, natural phenomena, and abstract ideas). Id. If so, we must 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. The Supreme
Court characterizes the second step 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. (brackets in original)
(quoting Mayo, 566 U.S. at 72-73).
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Application 14/273,535
With respect to the first step, the Examiner explains:
The claim(s) is/are directed to the abstract idea of wagering or
fundamental economic practice and the mathematical
relationship or formula guiding wagering ....
Final Action 2. The Examiner correctly determines that the claims are
directed to an abstract idea. Final Action 2. Our supervising court maintains
that claims directed to rules for conducting a wagering game compare to
other fundamental economic practices found abstract by the Supreme Court.
See In re Smith, 816 F.2d 816 (Fed. Cir. 2016).
With respect to the second step of the Alice/Mayo analysis, the
Examiner finds:
The additional element(s) or combination of elements in the
claim(s) other than the abstract idea per se amount(s) to no
more than mere instructions to implement the idea on a
computer, and/or recitation of generic computer structure that
serves to perform generic computer functions that are well
understood, routine, and conventional activities previously
known to the pertinent industry. Viewed as a whole, these
additional claim element(s) do not provide meaningful
limitation(s) to transform the abstract idea into a patent eligible
application of the abstract idea such that the claim(s) amounts
to significantly more than the abstract idea itself.
Final Action 2.
Appellants argue that claim 1 amounts to “significantly more” than
the abstract idea. Appeal Br. 13. Appellants argue that the claim language
is direct to “how” the invention is implemented. Id. at 15. Appellants point
out that the claims require devices such as an administration server and
gaming devices. Id. Appellants also point out that the claims require
“specific parameter information.” Id. Appellants also point out that the
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Appeal 2016-007670
Application 14/273,535
claims require a computer to compare wager and payment information with
a wager pool. Id.
In response, the Examiner explains that administering a lottery game
merely involves data gathering and subsequent processing by internal
mathematical relations within a computer. Ans. 4. According to the
Examiner, the claims involve insignificant pre-solution activity because such
activity is necessary and routine in implementing a fundamental economic
practice such as wagering or more specifically a lottery game. Id.
It is now well settled that mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.
Alice, 134 S.Ct. at 2358. Thus, merely stating an abstract idea while adding
the words “apply it” is not enough to confer patent eligibility. Id.
If that were the end of the § 101 inquiry, an applicant could
claim any principle of the physical or social sciences by reciting
a computer system configured to implement the relevant
concept.
Id. at 2359. Essentially, all Appellants have done here is devise a set of
rules and procedures for administering a lottery wagering game using
generic computer equipment and functions. Id. (“each step does no more
than require a generic computer to perform generic computer functions”).
We sustain the Examiner’s rejection of claims 1 and 23.
Claims 2, 3, 5—22, and 25—27
These claims depend, directly or indirectly, from either claim 1 or
claim 23. Claims App. Appellants’ separate argument(s) for the
patentability these claims is set forth in a single paragraph that bridges
pages 15 and 16 of the Appeal Brief. See Appeal Br. 15-16. Appellants
argue that claims 9-19 and 27 specify “particular variations” of the lottery
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Application 14/273,535
game. Id. Appellants argue that claim 22 requires a display device. Id.
at 16. Appellants argue that claims 20 and 21 are directed to alternative
methods of selecting a winner. Id. Appellants’ arguments do not persuade
us that these claims amount to “significantly more” than claiming an
invention upon the ineligible concept itself. Alice, 134 S.Ct. at 2355.
We sustain the rejection of claims 2, 3, 5-22, and 25-21.
DECISION
The decision of the Examiner to reject claims 1-3, 5-23, and 25-27 is
affirmed.
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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