Konami Gaming, Inc.

Patent Trials and Appeals Board

Feb 2, 2022

2021003818 (P.T.A.B. Feb. 2, 2022)

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. 16/152,747 10/05/2018 Adam Bland 060518.04400 6033 27305 7590 02/02/2022 HOWARD & HOWARD ATTORNEYS PLLC 450 WEST FOURTH STREET ROYAL OAK, MI 48067 EXAMINER RADA, ALEX P ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 02/02/2022 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): IPDocket@HowardandHoward.com dtrost@HowardandHoward.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ADAM BLAND and YUJI OHNO Appeal 2021-003818 Application 16/152,747 Technology Center 3700 Before CHARLES N. GREENHUT, WILLIAM A. CAPP, and MICHAEL L. WOODS, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-7, 9-15, and 17-19. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Konami Gaming, Inc. Appeal Br. 1. Appeal 2021-003818 Application 16/152,747 2 CLAIMED SUBJECT MATTER The claims are directed to a gaming machine, control method for machine, and program for gaming machine. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A gaming machine, comprising: an operation unit; a display unit; a memory device storing a game execution program including computer instructions for generating a game using computer-generated images; and a game control unit including a processor programmed to execute the game execution program to: display a game screen on the display unit including a primary game area and a bonus feature event area; display the primary game area including a grid, a plurality of primary game reels being displayed within the grid, and a plurality of bonus reel columns, the grid including a plurality of cells arranged in a plurality of reel columns, each primary game reel being displayed within a corresponding reel column, each bonus reel column is displayed with a corresponding primary game reel and includes a plurality of modifiable cells configured to operate in a hidden mode in which game symbols of the corresponding primary game reel are obscured and a reveal mode in which game symbols of the corresponding primary game reel are visible; display the bonus feature event area including a plurality of bonus prize cells, each bonus prize cell is configured to display a randomly selected bonus prize, each bonus prize cell being operable as one of an active bonus prize cell and an inactive bonus prize cell, each bonus prize cell being associated with a wager amount value; and initiate an instance of the game by: receiving a signal from the operation unit indicating a wager being placed on the game by the player; determining a wager amount of the received wager; selecting bonus prize cells having a wager amount values equal to or less than the wager amount of the received wager; Appeal 2021-003818 Application 16/152,747 3 operating the selected bonus prize cells as active bonus prize cells; initiating a spin of the primary game reels with each modifiable cell being displayed in the hidden mode and stopping the primary game reels to display an outcome of the primary game; randomly selecting a number of modifiable cells upon detecting a reveal trigger condition occurring during the primary game and operating the randomly selected modifiable cells from the hidden mode to the reveal mode; detecting a bonus event trigger condition occurring in the outcome of the primary game based on the randomly selected modifiable cells operating in the reveal mode; and initiate a bonus feature event upon detecting the bonus event trigger condition by: identifying a plurality of active bonus prize cells associated with the bonus event trigger condition; and randomly selecting a bonus prize for each active bonus prize cell associated with the trigger condition and displaying each randomly selected bonus prize in a corresponding active bonus prize cell; and providing a bonus feature award based on a value associated with each randomly selected bonus prize. REJECTION Claims 1-7, 9-15, and 17-19 are rejected under 35 U.S.C. § 101. Final Act. 2. OPINION I. Claims 1, 11, and 18 are in independent form. Claims 1 and 18 are styled as apparatus claims, and claim 11 as a Beauregard2 claim. Other than the basic componentry recited that can be found in nearly any electronic wagering game device, including a broad “operation unit” associated with 2 Named for In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995). Appeal 2021-003818 Application 16/152,747 4 receiving a wager or input; a “display”; a “memory”; and a “control unit” including a “processor,” the claims predominantly recite the steps or acts each of those elements, particularly the processor, performs. Our reviewing court has made clear “the basic character of a process claim drawn to an abstract idea is not changed by claiming only its performance by computers, or by claiming the process embodied in program instructions on a computer readable medium.” CyberSource Corp v. Retail Decisions, Inc., 654 F.3d 1366, 1375-76 (Fed. Cir. 2011) (citing In re Abele, 684 F.2d 902 (CCPA 1982)). Appellant and the Examiner do not appear to regard the particular statutory category associated with the claim preamble as particularly profound in the context of this § 101 analysis and neither do we. Appellant sets forth three groups of arguments based on each of the independent claims. Appellant’s arguments focus on prongs one and two of Step 2A in the patent subject matter eligibility tests set forth in MPEP § 2106, which incorporates the USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“101 Guidance”) which was applied by the Examiner in the Final Action. Final Act. 2-6 (citing 101 Guidance). Appellant’s most detailed arguments are set forth in connection with the grouping including claim 1. Appeal Br. 34-54. In particular, Appellant argues the claim is not a method of organizing human activity, and therefore not a judicial exception under Step 2A, Prong 1 (Appeal Br. 46-50) and further, that the claim sets forth a specific algorithm which amounts to a practical application under Step 2A Prong 2 (Appeal Br 50-52). With regard to claims 11 and 18, Appellant makes reference to the arguments advanced with respect to claim 1 and summarizes the arguments previously set forth. Appeal Br. 55-67. Appellant does not appear to draw any specific Appeal 2021-003818 Application 16/152,747 5 distinctions between claims 1, 11, and 18, and, therefore, neither will we. Only issues and findings of fact contested by the Appellant will be addressed. See Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010) (precedential). Appellant includes comments with respect to a number of dependent claims that do not amount to arguments because they do no more than repeat what the claim recites and couple such language with the naked assertion that the claims do not recite a judicial exception and/or further define a practical application. Arguments of this nature were held not to comply with the substantively identical predecessor to 37 C.F.R. § 41.37(c)(1)(iv) in In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011), and are also not presented under separate subheadings as also required by the current version of rule. Accordingly, we do not regard the dependent claims as being separately argued for purposes of the present appeal. See, e.g., In re Marco Guldenaar Holding BV, 911 F. 3d 1157, 1162 (Fed. Cir. 2018) (affirming the Board’s reliance on Lovin to the context of a § 101 rejection). The Examiner provided a thorough and comprehensive analysis of the claims under § 101, as well as a thorough and comprehensive response to Appellant’s arguments. We adopt the Examiner’s analyses in these regards (Final Act. 2-6; Ans. 3-7) as our own and do not repeat them here for the sake of brevity. See, e.g., In re Paulsen, 30 F.3d 1475, 1478 n.6 (Fed. Cir. 1994); accord In re Cree, Inc., 818 F.3d 694, 698 n.2 (Fed. Cir. 2016). We include the following discussion concerning certain points only for emphasis. Appeal 2021-003818 Application 16/152,747 6 II. The Examiner correctly determined that claims 1, 11, and 18 are, at their core, ultimately directed to game rules. Final Act. 3. We do not find within Appellant’s briefing any attempt to dispute this characterization. The only mention of rules by Appellant is associated with Appellant’s attempt to analogize the present case to that of McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016). Appeal Br. 48; Reply Br. 7-8. This case is clearly distinguishable from McRO. First, although “rules” played a role in the claimed method in McRO, the rules themselves were not the subject matter to which the claim, read as a whole, was ultimately directed. 837 F.3d at 1316. We cannot say the same here. Second, the rules in McRO, did not, as is the case here, involve a set of constraints by which parties to a financial transaction, a wagering game, decided to abide. Rather, the rules in McRO allowed for an improvement in the way the computer and display actually functioned to produce images. 837 F.3d at 1313. Again, we are not apprised of analogous subject matter here. Ans. 4. With regard to the later point regarding improvements to computer functionality Appellant also attempts to draw an analogy with Core Wireless Licensing, S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018).3 Appeal Br. 49. Again, however, that case is easily distinguishable. In Core the court determined there existed improvements to the user interface enabling more efficient input. 880 F.3d at 1362-63. Appellant does not appear to set forth any cogent arguments apprising us of what the alleged 3 It is noted that the topic of improvements to computer functionality is addressed in the MPEP mainly in connection with Step 2A Prong 2 (MPEP § 2106.04(d)(1)) or Step 2B (MPEP § 2106.05(a)) as opposed to Step 2A Prong 1 (MPEP § 2106.04(a)). Appeal 2021-003818 Application 16/152,747 7 improvement to computer technology consists of in the present case. It is undisputed that the claims before us ultimately amount to an attempt to secure a monopoly on a conventional gaming machine programmed with a particular set of rules governing game play. Appellant does not direct our attention to any subject matter which could be regarded as technological improvements to the machine itself or the componentry thereof. Rather, a purportedly novel game is recited in the claim only as a series of rules associated with the game’s play. Put simply, Appellant’s invention is directed to rules for playing a game. It is an idea that is conjured up entirely in the human mind and then communicated to other persons orally or in writing, or in this case via an electronic gaming machine. Claims 1, 11, and 18 are directed to nothing more than a sequence of human actions involving financial obligations performed in accordance with a certain protocol or set of rules, and using conventional gaming technology. Even if recited game rules themselves are novel, a claim directed to a conventional gaming machine coupled with a set of rules for play, without any technological improvements associated with the claimed device or process, is ineligible for patenting because it amounts to an improper attempt to reserve for the prospective patentee exclusive rights to an abstract idea- the game rules themselves. In re Smith, 815 F.3d 816, 818 (Fed. Cir. 2016). Appellant acknowledges In re Smith in their brief. Appeal Br. 30. However, Appellant does not offer any cogent explanation as to how the present case is distinguishable therefrom. We are mindful that, in contrast to Smith, the context here is a programmed electronic machine. However, “[c]laims can remain abstract [] even when they call for human activity to be conducted through computer hardware and software.” In re Marco Guldenaar Holding BV, 911 F. 3d at 1165 (Mayer, J. concurring) (citing Appeal 2021-003818 Application 16/152,747 8 Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347 (2014); Intellectual Ventures I LLC v. Capital One Bank, 792 F.3d 1363, 1371 (Fed. Cir. 2015). The issues in the present case are much more similar to those presented in Konami Gaming, Inc. v. High 5 Games, LLC4 than McRO and Core. Appellant was the plaintiff in Konami, which involved a number of claims directed to the specific rules associated with reel-based electronic games. The analysis set forth there is similar to that of the Examiner and, although it is not necessarily controlling on this Board,5 is compelling: The Court finds that the patents at issue in this case are directed toward a patent-ineligible concept regarding “rules of a game,” i.e. slot machine game rules. . . . As the Federal Circuit found in In re Smith, claims directed to new game rules or variations of a game are directed to an abstract patent-ineligible concept. 815 F.3d at 818. The Court thus finds that the four patents at issue in this case are directed to altering the rules of the game regarding slot games and are thus directed to a patent-ineligible concept. . . . Changes to game rules of a generic slot machine using conventional technology are not patentable. Konami, 2018 WL 1020120, at *19. The same result should follow here. 4 2018 WL 1020120 (D. Nev. Feb. 22, 2018), aff'd, 756 F. App’x 994 (Fed. Cir. 2019) (unpublished). 5 See Rates Technology, Inc. v. Mediatrix Telecom, Inc., 688 F.3d 742, 750 (Fed. Cir. 2012): Since there is no opinion, a Rule 36 judgment simply confirms that the trial court entered the correct judgment. It does not endorse or reject any specific part of the trial court’s reasoning. In addition, a judgment entered under Rule 36 has no precedential value and cannot establish “applicable Federal Circuit law.” Appeal 2021-003818 Application 16/152,747 9 For the foregoing reasons, we agree with the Examiner’s analysis that claims 1, 11, and 18 are directed to game rules, a method of organizing human activity. Final Act. 2-3. With regard to the supposed practical application argued by Appellant, Appellant essentially just asserts that because the claim defines a specific algorithm performed by the machine to display a sequence of images there exists a practical application. Appeal Br. 51, 60, 66; Reply Br. 2-7. The question of whether a claim integrates an abstract idea into a “practical application” involves, according to the PTO’s guidance, determining whether there are “additional elements recited in the claim beyond the judicial exception(s) . . . to determine whether they integrate the exception into a practical application.” MPEP § 2106.04(d)(II). The functional aspects of the claim language that Appellant points out amount to rules of game play, which amount to the exception itself. Refinement of the idea might reduce the preemptive effect of the claim, but “the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). MPEP § 2106.04(d)(I) instructs: “[A] specific way of achieving a result is not a stand-alone consideration in Step 2A Prong Two. However, the specificity of the claim limitations is relevant to the evaluation of several considerations including the use of a particular machine . . . .” Appellant does not appear to present any arguments associated with the “particular machine” inquiry (MPEP § 2106.05(b)) per se in that Appellant never ties any of the steps mentioned in Appellant’s arguments to any particular aspects of the machine itself. Appellant’s recited machine or media appear to merely play host to the method. Appellant does not apprise us of how there is any integral use of a machine to achieve performance of the method. Appeal 2021-003818 Application 16/152,747 10 Rather, the machine is merely an object on which the method operates, which does not integrate the exception into a practical application. See CyberSource, 654 F.3d at 1370. For the foregoing reasons, we sustain the Examiner’s rejection. CONCLUSION The Examiner’s rejection is AFFIRMED. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-7, 9-15, 17-19 101 Eligibility 1-7, 9-15, 17-19 RESPONSE 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)(1)(iv). AFFIRMED