Howard W. Lutnick et al.

Patent Trials and Appeals Board

Sep 10, 2019

13964633 - (D) (P.T.A.B. Sep. 10, 2019)

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.
13/964,633 08/12/2013 Howard W. Lutnick 07-2177CIP-C1 9634
63710 7590 09/10/2019
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
YOO, JASSON H
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
09/10/2019 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):
lkorovich@cantor.com
patentdocketing@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HOWARD W. LUTNICK
and ZOE CHARLOTTE GREENBERG
____________

Appeal 2019-001396
Application 13/964,633
Technology Center 3700
____________

Before DANIEL S. SONG, JAMES P. CALVE, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant,1 CFPH, LLC, seeks our review under 35 U.S.C. § 134(a)
of the final rejection of claims 1, 3–5, 7–13, and 16–26. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as CFPH,
LLC. App. Br. 3.
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THE INVENTION
Appellant’s invention relates to keeping track of points allocated
among people. Spec. ¶ 63. Claim 1, reproduced below, is illustrative of the
subject matter on appeal.
1. A method comprising:
receiving, by at least one processor, from a plurality of devices
an indication of a wager based on an outcome of a first event, the
wager including an amount of points wagered, wherein the at least
one processor communicates with the plurality of devices over an
electronic communications network;
determining, by the at least one processor, a first allocation of
points among the plurality of devices;
generating in a memory, by the at least one processor, a table
with a points column;
associating, by the at least one processor, a first row of the
table with a first subset of the plurality of devices and a second
row of the table with a second subset of the plurality of devices;
receiving, by the at least one processor, at least one indication
of a point adjustment from at least one of the plurality of devices;
and
updating, by the at least one processor, the points column in
the memory of the first row and the second row, in response to
receiving the at least one indication of the point adjustment.
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1, 3–5, 7–13, and 16–26 are rejected for being directed to a
judicial exception to patent eligible subject matter under 35 U.S.C. § 101.
2. Claims 1, 3–5, 7–13, and 16–26 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Walker (US 2003/0064807 Al, pub.
Apr. 3, 2003) (hereinafter “Walker”).
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3. Claims 1, 3–5, 7–13, and 16–26 are rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1–32 of
Lutnick ’423 (U.S. 8,454,423 B2, iss. June 4, 2013) and Walker.
4. Claims 1, 3–5, 7–13, and 16–26 are rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1–32 of
Lutnick ’465 (U.S. 8,262,465 B2, iss. Sept. 11, 2012) and Walker.
5. Claims 1, 3–5, 7–13, and 16–26 are rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1–32 of
Lutnick ’854 (US 9,192,854 B2, iss. Nov. 24, 2015) and Walker.
6. Claims 1, 3–5, 7–13, and 16–26 are rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1–32 of
Lutnick ’393 (U.S. Patent US 8,506,393 B2, iss. Aug. 13, 2013) and Walker.
OPINION
35 U.S.C. § 101
Judicial Exception to Patent Eligible Subject Matter
Appellant argues claims 1, 3–5, 7–13, and 16–26 as a group. Appeal
Br. 8–9. We select claim 1 as representative. 37 C.F.R. §41.37(c)(1)(iv).
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the courts recognize certain judicial exceptions to Section 101,
namely: (1) laws of nature, (2) natural phenomena, and (3) abstract ideas.
See Mayo Collaborative Svc. v. Prometheus Labs, Inc., 566 U.S. 66, 70–71
(2012).
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
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Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 72–73 (2012)).
According to the Supreme Court’s Alice/Mayo 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. (quoting Mayo,
566 U.S. at 72–73).
The Examiner determines that claim 1 is directed to an abstract idea.
Final Action 2–5. More particularly, the Examiner finds that claim 1 entails:
(a) a management scheme by which wager points are received and
adjusted for a plurality of participants, and
(b) acts enabled by the program for effecting the scheme (e.g.
processor, devices, memory).
Id. at 3. The Examiner finds that such management scheme can be
performed mentally or in a computer, similar to the organizing of human
activity in the Alice case. Id. The Examiner further finds that allocating
points based on an exchange of goods, service, and money entails organizing
human activity in general and, more particularly, that adjusting a price,
correcting a payment, or providing a refund are well-known human activities
that can be performed mentally. Id. at 3–4. The Examiner also analogizes
the claim to the abstract rules for conducting a wagering game that was
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determined to involve a patent ineligible abstract idea in the case of In re
Smith, 815 F.3d 816 (Fed. Cir. 2016). Id. at 4.
The Examiner further determines that any additional elements in the
claims other than the abstract idea, when considered separately and in
combination, are not sufficient to amount to significantly more than the
abstract idea. Id. at 5–6.
Appellant argues that claim 1 does not recite an abstract idea and that
the Examiner’s rejection is not in accordance with certain patent eligibility
guidelines published by the PTO in May of 2016. Appeal Br. 8. Appellant
further argues that the cases of In re Bilski, 561 U.S. 593 (2010) and In re
Smith, 815 F.3d 816, 819 (Fed. Cir. 2016), relied on by the Examiner, do not
reasonably correspond to Appellant’s point allocation data structures. Id.
The PTO recently published revised guidance on the application of
Section 101. See USPTO’s January 7, 2019 Memorandum, 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (“2019
Guidelines”). Under that guidance, in conducting step one of the Alice
framework, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas; and
(2) additional elements that integrate the judicial exception
into a practical application.
Step 1, Prong 1
The 2019 Guidelines identifies three key concepts identified as
abstract ideas:
(a) mathematical concepts such as mathematical relationships,
formulas, equations, or calculations;
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(b) certain methods of organizing human activity, such as
“fundamental economic principles or practices,” “commercial or legal
interactions,” and “managing personal behavior or relationships or
interactions between”; and
(c) mental processes including observation, evaluation, judgment,
and opinion.
Id.
Claim 1 recites a number of computerized method steps that are
reproduced, in abbreviated form, below:
(1) receiving . . . a wager . . . [of] points:
(2) determining . . . [an] allocation of points;
(3) generating . . . a table with a points column;
(4) associating . . . [table rows] with . . . devices;
(5) receiving . . . a point adjustment from . . . [a] device;
(6) updating . . . the points column.
See Claims App. claim 1. Summarized succinctly, Appellant’s invention
uses computer technology to manage information related to wagering in a
group environment.2 More particularly, it uses computers to help keep score
among gamblers, including making allocations of gambling payoffs among
group participants. This type of score keeping can be performed entirely
within the human mind. Furthermore, tabulating scores in a table format
with columns for points and rows for devices can be performed by a human
with pen and paper.

2 “[T]able 201 may be useful, for example, to track points among a group of
individuals that share a common point pool (e.g., people in a common
participant group). For example, PERSON 1, PERSON 2, and PERSON 3
may agree that points may be assigned and adjusted among all three of them
together. PERSON 1, PERSON 2, and PERSON 3 may for example be
friends, co-workers, acquaintances or otherwise associated.” Spec. ¶ 43.
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Methods which can be performed entirely in the human mind
are unpatentable not because there is anything wrong with
claiming mental method steps as part of a process containing
non-mental steps, but rather because computational methods
which can be performed entirely in the human mind are the
types of methods that embody the “basic tools of scientific and
technological work” that are free to all men and reserved
exclusively to none.
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed.
Cir. 2011) (also noting, at page 1372, that the mental processes can be
performed by a human using pen and paper).
In the case of In re Guldenaar, 911 F.3d 1157 (Fed. Cir. 2018), the
Federal Circuit held that a method of playing a wagering game falls under
the concept of methods of organizing human activity. Id. at 1160. In the
Bilski case, the Supreme Court held that a method of hedging market risk
entailed a patent ineligible abstract idea. In the Alice case, the patent
ineligible abstract idea, entailed a computer implemented method of
mitigating against the risk that only one party to a financial exchange will
satisfy its obligation.
The instant case entails at least two abstract ideas under the 2019
Guidelines: (1) mental processes (in the form of score keeping); and (2)
methods of organizing human activity (facilitating gambling in a group
environment). Appellant’s naked assertion that claim 1 does not entail an
abstract idea has no foundation in the evidentiary record before us. In
Appellant’s method, data is obtained, calculations are performed on the data,
results of the calculations are tabulated, and points are apportioned among a
group of participants. See Smart Systems Innovations, LLC v. Chicago
Transit Authority, 873 F.3d 1364, 1372 (Fed. Cir. 2017) (“claims directed to
the collection, storage, and recognition of data are directed to an abstract
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idea”). We are mindful that merely performing the method on a computer
does not remove it from the realm of abstract ideas. See Bancorp Servs.,
L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 127778 (Fed.
Cir. 2012) (performance by computer does not convert an abstract idea into
eligible subject matter). Apart from using generic computer technology,
Appellant identifies nothing of a “concrete” nature that is added to its
abstraction.
Appellant’s attempt to distinguish the instant case from Bilski and
Smith is not persuasive. Essentially, all claim 1 does is what every risk
based economic practice does, namely: (1) determines a probabilistic
outcome; (2) generates a payout scheme based on the probabilistic outcome;
and (3) apportions the payout among participants in accordance with a
predetermined scheme. We agree with the Examiner that claim 1 recites an
abstract idea.
Step 1, Prong 2
Under Prong 2 of Step 1 of the 2019 Guidelines, we do not assume
that such claims are directed to patent ineligible subject matter because “all
inventions at some level embody, use, reflect, rest upon, or apply laws of
nature, natural phenomena, or abstract ideas.” In re TLI Commc’ns LLC
Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) quoting Alice. Instead,
“the claims are considered in their entirety to ascertain whether their
character as a whole is directed to excluded subject matter.” McRO, Inc. v.
Bandai Namco Games America Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016).
If the claims are not directed to an abstract idea, the inquiry ends. 2019
Guidelines. If the claims are “directed to” an abstract idea, then the inquiry
proceeds to the second step of the Alice framework. Id.
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Consequently, we consider whether the claimed method of allocating
points among gamblers includes additional elements that integrate the
judicial exception into a practical application. A claim that integrates a
judicial exception into a practical application will 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 judicial exception. See 2019 Guidelines.
Here, Appellant essentially rests its case after making a naked and
unsupported assertion that claim 1 does not recite an abstract idea. See
Appeal Br. 8–9. If there is a practical application of the abstract idea recited
in claim 1, Appellant does not tell us what it is. Id. In particular, there is no
indication that Appellant’s abstract idea furthers an advance in technology.
See McRO, 837 F.3d at 1314 (finding that claim focused on a specific
asserted improvement in computer animation); see also Thales Visionix Inc.
v. United States, 850 F.3d 1343, 1348–49 (Fed. Cir. 2017) (finding that
claims are directed to using inertial sensors in a non-conventional manner to
measure position and orientation of a moving object on a moving reference
frame); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed.
Cir. 2016) (finding that claims were directed to a specific improvement to
the way computers operate).
In the Enfish case, the court explained that the claims are not simply
directed to any form of storing tabular data, but instead are specifically
directed to a self-referential table for a computer data that functions
differently than conventional databases. Enfish, at 1336–37. Enfish, and
cases like it, are in direct contrast to the instant case where there is no
evidence that the use of database technology and tabulation of point data
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occurs in a manner that functions differently, much less better, than
conventional computer database technology.
Where, as here, Appellant fails to identify any evidence to support a
contention that the claim is directed to a practical application, we are hard
pressed to do little more than recognize the absence of a practical
application. We find no additional elements in claim 1 that tie the abstract
ideas to a particular machine that is integral to claim 1, transform or reduce a
particular article to a different state or thing, or apply the abstract ideas in a
meaningful way beyond merely linking them to a particular technological
environment. See 2019 Guidelines. Consequently, we determine that
Appellant’s method fails to integrate the judicial exception into a practical
application and, therefore, is “directed to” an abstract idea.
Step 2
Turning to step two of the Alice/Mayo framework, we 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. Alice Corp., 573 U.S. at 217. Here, we
search for an inventive concept such that the claim, in practice, amounts to
significantly more than the abstract idea itself. Id.
With respect to Step 2, the Examiner provides the following findings
of fact and accompanying analysis.
A person or persons can perform the steps of determining a first
allocation of points; generating a table with a points column,
associating a first row and second row with plurality of devices,
receiving an indication of point adjustments, and updating the
points column, resulting a third allocation of points. These steps
can be performed mentally. In addition, Applicant’s
specification discloses that the steps of “determining” does not
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imply that a particular device must be used . . . Information may
be determined by a person or computing device from the
indication of the information (paragraph 17 of published
specification). The use of a computer is not integral to the
claimed invention and does not facilitate the process in a way
that a person making calculations or computations could not
because each of the claim limitations can be implemented by a
person without the computer system.
Final Action 6.
As previously discussed, Appellant essentially “rested its case” at the
Step 1, abstract idea stage of the Alice analysis. Appellant offers neither
evidence nor argument that claim 1 provides an ordered combination of
elements that amounts to something “significantly more” than the abstract
idea itself. See Appeal Br. 8–9.
We have independently reviewed Appellant’s Specification and find
that the Examiner’s position is amply supported by the record. Elements
such as computers, processors, servers are described in a generic manner.
The term “determining” does not imply that mathematical
processing must be performed, and does not imply that
numerical methods must be used, and does not imply that an
algorithm or process is used. The term “determining” does not
imply that any particular device must be used. For example, a
computer need not necessarily perform the determining.
Spec. ¶ 14.
[W]here more than one device or article is described herein . . .,
a single device/article may alternatively be used in place of the
more than one device or article that is described. For example,
a plurality of computer-based devices may be substituted with a
single computer-based device.
Id. ¶ 22.
It should be appreciated that the various processes described
herein may be implemented by, e.g., appropriately programmed
computer systems, e.g., general purpose computers 101 and/or
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computing devices 103, such as those illustrated in Figure 1.
A computing device 103 may include a specialized or general
purpose computing device such as a cellular phone, a personal
digital assistant, and/or any other portable or non-portable
computing system that is not a general purpose computer.
Id. ¶ 34.
The processor and operating system together may define a
computer platform for which programs stored on a machine-
readable medium may be written in various programming
languages.
Id. ¶ 39.
Various embodiments may include a network environment
including one or more computing systems (e.g., general purpose
computers 101, other computing devices 103) in
communication through one or more communication networks
(e.g., a LAN 119, the Internet 121). The computer systems may
communicate directly or indirectly, via any wired or wireless
medium.
Id. ¶ 40.
[O]ne or more computer systems may act as one or more
database servers. The database server may respond to database
requests such as structured query language (SQL) queries by
providing access to a database (e.g., searching of the database,
writing to the database). The database server may maintain one
or more database tables having information stored therein to
facilitate the operation of some embodiments.
Id. ¶ 42.
Where databases are described, it will be understood by one of
ordinary skill in the art that . . . alternative database structures
to those described may be readily employed.
Id. ¶ 54.
Any descriptions of any sample databases presented herein are
illustrative arrangements for stored representations of
information. Any number of other arrangements may be
employed besides those suggested herein.
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Id.
Computers, processors, computing devices and like products
are structures that can perform a wide variety of functions.
Such products can be operable to perform a specified function
by executing one or more programs, such as a program stored
in a memory device of that product or in a memory device
which that product accesses. Unless expressly specified
otherwise, such a program need not be based on any particular
algorithm, such as any particular algorithm that might be
disclosed in the present application.
Id. ¶ 58.
It is well known to one of ordinary skill in the art that a
specified function may be implemented via different
algorithms, and any of a number of different algorithms would
be a mere design choice for carrying out the specified function.
Id.
In summary, the computer implementation of Appellant’s abstract
idea is described at a high level of generality that presumes familiarity with
the underlying technology on the part of the reader. In essence, Appellant
lists a number of method steps that could be performed manually and then
claims that the steps be performed by a “processor.” Claims App. claim 1.
It is now well settled that mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.
See Alice, 573 U.S. at 223. Thus, merely stating an abstract idea while
adding the words “apply it” is not enough to confer patent eligibility. Id.
[I]f 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 224. There is nothing in claim 1 or in the accompanying Specification
description of the computer equipment, software, and user interface
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components that purports to be a breakthrough or advancement in computer
technology. Alice, 573 U.S. at 224–25.
A patent applicant is required to submit a specification that contains a
written description of the invention in “full, clear, concise, and exact terms.”
See 35 U.S.C. § 112(a). For purposes of the Alice/Mayo analysis, a
specification demonstrates the well-understood, routine, conventional nature
of step 2 “additional elements” when it describes them in a manner that
indicates they are sufficiently well-known that they need not be described
with particularity to satisfy 35 U.S.C. § 112(a).3 That is the case here.
Essentially, all Appellants have done here is use generic computer
data gathering and processing technology to manage the financial aspects of
gambling in a group environment.4 As in Alice, “each step does no more
than require a generic computer to perform generic computer functions.”
Alice, 573 U.S. at 225. Accordingly, we sustain the Examiner’s Section 101
rejection of claims 1, 3–5, 7–13, and 16–26.
Unpatentability of Claims 1, 3–5, 7–13, and 16–26
over Walker
Appellant argues claims 1, 3–5, 7–13, and 16–26 as a group. Appeal
Br. 11–13. Again, claim 1 is representative. 37 C.F.R. § 41.37(c)(1)(iv).

3 Memorandum from the U.S. Patent & Trademark Office, Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) (Apr. 19, 2018).
4 “PERSON 1, PERSON 2, and PERSON 3 may for example be friends, co-
workers, acquaintances or otherwise associated. PERSON 1, PERSON 2,
and PERSON 3 may be participants in a single wager or a common group of
wagers. PERSON 1, PERSON 2, and PERSON 3 may agree to be in a
grouping before being placed in such a grouping.” Spec. ¶ 43.
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The Examiner finds that Walker discloses the invention substantially
as claimed except for a table with a points column that is updated as
claimed. Final Action 12–13. The Examiner concludes that it would have
been obvious to a person of ordinary skill in the art at the time the invention
was made to so modify Walker. Id. at 13. According to the Examiner, a
person of ordinary skill in the art would have done so as only ordinary skill
is required to change the contents of a database table according to a user’s
preference. Id. at 14.
Appellant argues that the rejection is deficient because Walker fails to
disclose “every” feature of the claim. Appeal Br. 12. This argument is
tantamount to asserting that any single reference rejection under 35 U.S.C.
§ 103 must also anticipate a claim under 35 U.S.C. § 102. This assertion
does not comport with prevailing law.
The obviousness analysis contemplates that there will be differences
between the prior art and the claimed invention and yet the claimed
invention may be unpatentable. See U.S.C. § 103. It is well settled that a
determination of obviousness does not require the claimed invention to be
expressly suggested by any one or all of the references. See e.g., In re
Keller, 642 F.2d 413, 425 (CCPA 1981). Furthermore, what a reference
teaches a person of ordinary skill is not limited to what a reference
specifically “talks about” or what is specifically “mentioned” or “written” in
the reference. Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380
(Fed. Cir. 2005). Thus, a “reference must be considered not only for what it
expressly teaches, but also for what it fairly suggests.” In re Baird, 16
F.3d 380, 383 (Fed. Cir. 1994) (quoting In re Burckel, 592 F.2d 1175, 1179
(CCPA 1979)).
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In light of the foregoing, “we do not ignore the modifications that one
skilled in the art would make to a device borrowed from the prior art.” In re
Icon Health & Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007).
Therefore, “the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
This follows from the observation a person of ordinary skill is also a person
of ordinary creativity, not an automaton. Id. at 421. Moreover, “[t]he
diversity of inventive pursuits and of modern technology counsels against
confining the obviousness analysis by . . . overemphasizing the importance
of published articles and the explicit content of issued patents.” Id. at 419.
Therefore, a claim can be obvious even where all of the claimed features are
not found in specific prior art references, where there is a suggestion or
motivation to modify the teachings of the prior art to the claimed invention.
Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1307 (Fed. Cir. 2006).
In the Answer, the Examiner explains that the only difference between
Appellant’s claimed invention and Walker is the format or layout of the
table. Ans. 20. The Examiner finds that Walker explicitly discloses using a
single table and using different table layouts. Id. The Examiner concludes
that:
[It] would have been obvious to one of ordinary skilled art at
the time the invention was made to modify Walker's invention
and incorporate the table arrangement as claimed since Walker
discloses any number of tables and functionally equivalent
databases can be used with different number and content. In
addition, it would have been obvious to one of ordinary skilled
in the art to change the number and contents of the database/
table as claimed according to a user’s preference.
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Id. (citing Walker ¶ 81).
In reply, Appellant, in abbreviated and conclusory fashion,
“disagrees” with the Examiner’s Answer. Reply Br. 2.
Walker discloses gaming in a group environment. Walker, Abstract.
Walker discloses a server in communication with gaming devices via a
network. Id. ¶ 62, Fig. 2. The server includes a processor that
communicates with gaming devices and a data storage device. Id. ¶¶ 76–77.
The data storage device stores a program that, among other things, executes
routines to identify players at gaming devices, register a group, and associate
players within the group. Id. ¶¶ 78–79. The program determines whether
group objectives were achieved. Also, the program controls databases that
track information regarding users, gambling results, group data, gaming
devices, and awarding prizes. Id. The storage device stores user database
information, group database information, and group session information. Id.
¶ 81. Thus, Walker collects and processes the same basic types of
information as that of Appellant’s invention.
Contrary to Appellant’s position, we do not view Appellant’s use of
“points” as imparting patentability to the claimed invention. Appeal
Br. 11–12. A “point” is merely a unit of value that may be accumulated or
expended in the course of engaging in a wagering game. It is nothing more
than a medium of exchange as is every other form of cash or currency. It is
no more or less a medium of exchange in a casino gambling environment
than the use of poker chips or slot machine tokens.
Furthermore, we do not view the specifically claimed tabular column
and row format as imparting patentability to Appellant’s invention. Walker
processes and associates user/gaming device data and reward/point data in a
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Application 13/964,633
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manner that is substantially similar to that of claim 1. Thus, in view of
Walker, it would have been obvious to one of ordinary skill in the art to
utilize the claimed tabular column and row format. Moreover, we note that
claim 1 contains no limitation directed to how the information is displayed
to users, if at all. Claims App. claim 1. Thus, as long as the computer can
internally correlate user/device data to reward/point data, we see no
patentable distinction in how the data is formatted into rows and columns.
Thus, although we agree with Appellant that there is a difference
between the prior art and the claimed invention, we agree with the Examiner
that bridging that difference would have required no more than ordinary
skill. For the foregoing reasons, we determine that the Examiner’s findings
of fact are supported by a preponderance of the evidence and that the
Examiner’s legal conclusion of unpatentability is well-founded.
Accordingly, we sustain the Examiner’s unpatentability rejection of
claims 1, 3–5, 7–13, and 16–26 over Walker.
Double Patenting Rejections
Appellant’s application is part of a parent/child chain of continuation
and continuation-in-part applications. Spec. ¶ 1. The Examiner rejects all
pending claims under the doctrine of nonstatutory double patenting over the
claims of various issued patents in the aforementioned parent/child chain
(i.e., Lutnick ’423, Lutnick ’465, Lutnick ’854, and Lutnick ’393) each in
combination with Walker. Final Action 6–10.
Appellant’s sole argument in traverse of all four grounds of double
patenting rejections is contained in a single, half-page, paragraph. Appeal
Br. 7. Appellant’s sole argument is that the double patenting rejections are
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Application 13/964,633
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improper because the Walker reference is not commonly owned with the
instant application. Id. citing MPEP § 805.
In response, the Examiner observes that Section 805 is irrelevant to
the instant rejections. Appeal Br. 17. The Examiner notes, correctly, that
the double patenting rejections before us are proper under MPEP § 804. It is
well settled that, in determining whether there is a patentable difference,
prior art may be considered and that fact does not convert a double patenting
rejection to a Section 103 rejection so as to exclude consideration of patents
issued on applicant’s own co-pending applications. See In re Ornitz, 347
F.2d 586, 590 (CCPA 1965).
Appellant’s argument does not comport with controlling legal
authority and, therefore, fails to apprise us of Examiner error. Accordingly,
we sustain each of the Examiner’s four grounds of double patenting
rejections over a Lutnick related patent considered in combination with
Walker.

DECISION
The decision of the Examiner to reject claims 1, 3–5, 7–13, and 16–26
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)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED