Lance LietzauDownload PDFPatent Trials and Appeals BoardJun 14, 20212021000205 (P.T.A.B. Jun. 14, 2021) Copy Citation 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. 15/782,445 10/12/2017 Lance Lietzau MINN1095 1086 44088 7590 06/14/2021 KAUFHOLD DIX PATENT LAW P. O. BOX 89626 SIOUX FALLS, SD 57109 EXAMINER SKAARUP, JASON M ART UNIT PAPER NUMBER 3700 NOTIFICATION DATE DELIVERY MODE 06/14/2021 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): jason@kaufholdlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LANCE LIETZAU Appeal 2021-000205 Application 15/782,445 Technology Center 3700 Before STEFAN STAICOVICI, GEORGE R. HOSKINS, and MICHAEL L. WOODS, Administrative Patent Judges. WOODS, 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 1–20. Appeal Br. 1. 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 Lance Lietzau as the real party in interest. Appeal Br. 2. Appeal 2021-000205 Application 15/782,445 2 CLAIMED SUBJECT MATTER The application is titled “System and Method of Combining a Lottery Game and a Table Game.” Spec. 1. Claims 1, 6, and 13 are independent. Appeal Br. 10–14 (Claims App.). We reproduce independent claim 6, below: 6. A method of presenting a lottery and table game combination allowing multiple players to selectively play a lottery game while simultaneously playing a table game, said method comprising: receiving wagers from the players playing a primary game on one of a plurality of table games, each of said table games having a plurality of player positions, each player playing said primary game is associated with at least one of said player positions to define an active position; presenting a second game to said active positions; receiving betting units from the players desiring to play said second game; entering said betting units and an associated player position into one of a plurality of interface assemblies, at least a portion of said betting units being totaled to define a pool, said interface assemblies being in communication with each other, each of said table games having one of said interface assemblies positioned thereon; assigning each betting unit an identifier such that each betting unit has a unique identifier; and randomly selecting one of said unique identifiers and awarding said pool [to] the player associated with said unique identifier. Appeal Br. 11 (Claims App.). REJECTION The Examiner rejects claims 1–20 under the judicial exception to 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 4. Appeal 2021-000205 Application 15/782,445 3 OPINION The Examiner rejects claims 1–20 as unpatentable under 35 U.S.C. § 101. Final Act. 4. Appellant argues these claims as a group. See Appeal Br. 7–8. We select independent claim 6 as the representative claim, with claims 1–5 and 7–20 standing or falling with claim 6. 37 C.F.R. § 41.37(c)(1)(iv). 1. Governing Law and Guidance 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 Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental Appeal 2021-000205 Application 15/782,445 4 economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (internal citation omitted)); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221. “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. In 2019, the USPTO published revised guidance on the application of § 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (USPTO Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and Appeal 2021-000205 Application 15/782,445 5 (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)-(c), (e)-(h) (9th ed. Rev. 08.2017, Jan. 2018)). See Guidance, 84 Fed. Reg. at 51–55. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance, 84 Fed. Reg. at 54–56. The Federal Circuit’s decisions in Guldenaar and Smith further guide our analysis. In re Marco Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. 2018); In re Smith, 815 F.3d 816 (Fed. Cir. 2016). In Guldenaar, the appellant appealed an ex parte decision by the Board affirming the examiner’s rejection of pending claims under 35 U.S.C. § 101. Claim 1 at issue in Guldenaar recited: 1. A method of playing a dice game comprising: providing a set of dice, the set of dice comprising a first die, a second die, and a third die, wherein only a single face of the first die has a first die marking, wherein only two faces of the second die have an identical second die marking, and wherein only three faces of the third die have an identical third die marking; placing at least one wager on at least one of the following: that the first die marking on the first die will appear face up, that the second die marking on the second die will appear face up, that the third die marking on the third die will appear face up, or any combination thereof; Appeal 2021-000205 Application 15/782,445 6 rolling the set of dice; and paying a payout amount if the at least one wager occurs. Guldenaar, 911 F.3d at 1159. The Federal Circuit found that, Appellant’s claimed “method of playing a dice game,” including placing wagers on whether certain die faces will appear face up, is, as with the claimed invention in Smith, directed to a method of conducting a wagering game, with the probabilities based on dice rather than on cards. Given the strong similarities to the ineligible claims in Smith, Appellant’s claims likewise are drawn to an abstract idea. Id. 2. Step 1—Statutory Category Claim 6 recites a “method of presenting a lottery and table game combination . . . .” Appeal Br. 11 (Claims App.). The method of claim 6 is directed to one of the statutory classes of subject matter eligible for patenting, namely, a process. See 35 U.S.C. § 101 (“Whoever invents or discovers any new and useful process . . . .”). 3. Step 2A, Prong 1—Recitation of Judicial Exception We next look to whether the claim recites any judicial exceptions, including certain groupings of abstract ideas, i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes. The Examiner found that claim 6 recites set of instructions or steps (i.e., rules) for conducting a game and collecting, analyzing and transmitting game data including, for example, receiving wagers from the players playing a primary game on one of a plurality of table games, each Appeal 2021-000205 Application 15/782,445 7 of said table games having a plurality of player positions, each player playing said primary game is associated with at least one of said player positions to define an active position; presenting a second game to said active positions; receiving betting units from the players desiring to play said second game; entering said betting units and an associated player position into one of a plurality of interface assemblies, defining a pool by totaling at least a portion of said betting units; assigning each betting unit an identifier such that each betting unit has a unique identifier; randomly selecting one of said unique identifiers to define a winning position; transmitting said winning position to the player associated with the randomly selected unique identifier; and awarding said pool [to] the player associated with said unique identifier. Final Act. 4–5. The Examiner further found that claim 6 “recites a series of steps instructing how to conduct a wagering game, which is a fundamental economic practice, and thus grouped as a certain method of organizing human activity.” Id. at 5. Appellant argues that “the claim provides more than an abstract idea.” Appeal Br. 7. Appellant explains that “the claims provide for an inventive concept which is significantly more than a computer implementing generic functions.” Id. Appellant further explains that in “the claimed invention, players in table games (not specified to be the same game but only a table game) can participate in a second game simultaneous to the participation in the respective table game, and otherwise unrelated to the table games” and that “[t]he mechanical devices are coupled to the table games and interact in a manner not yet known to provide for a combination of gaming in a way not previously known.” Id. Appellant argues, “[t]he mechanics and physical devices are not used in a conventional manner alone as the core concept includes and relies on incorporation of the mechanical devices into a first Appeal 2021-000205 Application 15/782,445 8 game (table game) unrelated to the actual game for which the mechanical devices are being specifically used.” Id. at 8. Appellant further argues that “this is a demonstration of more than a mere abstract idea itself.” Id. Appellant’s argument is not persuasive. The general requirement that the lottery game is played along with a table game does not remove claim 6 from the realm of abstraction. As explained below, Guldenaar and Smith are instructive in our analysis of claim 6. The steps recited in claim 6 are similar to the wagering games that the Federal Circuit determined are abstract. See Guldenaar, 911 F.3d at 1160–61 (holding that a claimed “method of playing a dice game” was drawn to an abstract idea); see also Smith, 815 F.3d at 819 (holding that a “method of conducting a wagering game” using a deck of playing cards was drawn to an abstract idea). Turning to the first recited step in claim 6, the step of “receiving wagers from the players playing a primary game on one of a plurality of table games, each of said table games having a plurality of player positions, each player playing said primary game is associated with at least one of said player positions to define an active position,” this step is part of a method of conducting a wagering game. This step is similar to a step discussed in Smith, in which the dealer accepts a wager from each player. See Smith, 815 F.3d at 817–18. A method of conducting a wagering game entails randomly determining an outcome and informing the player of the outcome. Turning to the step of “presenting a second game to said active positions,” the second game is part of a wager, described in the Specification as a “lottery draw between participating players.” See, e.g., Spec. 2:6–7. Appeal 2021-000205 Application 15/782,445 9 As to the claimed step of “receiving betting units from the players desiring to play said second game,” the betting units are simply the monetary part of the wager. See, e.g., id. at 5:9–10 (“The term ‘betting units’ is being utilized as each betting unit is discrete with respect to each other and are monetarily equal to each other.”). Turning to the claimed step of entering said betting units and an associated player position into one of a plurality of interface assemblies, at least a portion of said betting units being totaled to define a pool, said interface assemblies being in communication with each other, each of said table games having one of said interface assemblies positioned thereon, nothing in the Specification leads us to believe that the recited “interface assemblies” are anything more than a generic computer or, specifically, a conventional tablet (e.g., an IPad) to assist in the performance of the wagering game. See infra Part 4 (Step 2A, Prong 2). Indeed, the Specification describes that the “interface assemblies 18 are to be used to play a second game, or lottery game, between players.” Spec. 4:12–14. Turning to the claimed step of “assigning each betting unit an identifier such that each betting unit has a unique identifier,” the Specification describes “the betting units may be synonymous with the unique identifier” and that the “unique identifier includes information related to who placed the wager.” Spec. 7:12–14. Thus, the step of assigning betting units an identifier includes associating information about the people making the wager and is, therefore, also part of the wagering game. As to the final step of “randomly selecting one of said unique identifiers and awarding said pool [to] the player associated with said unique identifier,” the Specification describes that its database “is Appeal 2021-000205 Application 15/782,445 10 programmed to randomly select one of the betting units, or the unique identifier, to define a winning bet and thereafter communicate the winning bet and the pool to at least the interface assembly positioned on the table game 12 associated with the player position having the winning bet.” Spec. 7:15–19. Thus, this step is simply randomly selecting a winner and awarding the winner the pool, which is part of the wager, in which at least one person wins a pool, which is simply defined as “at least a portion of . . . betting units totaled.” See Appeal Br. 11 (Claims App.). Accordingly, and just like in Guldenaar and Smith, claim 6 recites a method of conducting a wagering game, in which the probabilities of winning are based on chance. Considered as a whole, the recited steps, under their broadest reasonable interpretation, contribute to the rules of playing a wagering game and for managing interactions between people, which are certain methods of organizing human activity. 4. Step 2A, Prong 2—Practical Application of Judicial Exception Having agreed with the Examiner that claim 6 recites a judicial exception, namely, certain methods of organizing human activity, we next consider whether the claims recite “additional elements [that] integrate the exception into a practical application.” See Guidance, 84 Fed. Reg. at 54. Under our Guidance, this determination involves: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception; and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. See id. at 54–55. An exemplary consideration indicative of an additional element (or a combination of elements) that may Appeal 2021-000205 Application 15/782,445 11 integrate the exception into a practical application is an additional element that reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field. See id. at 55. This evaluation requires one to determine whether an additional element or a combination of additional elements in the claim applies, relies on, or uses 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 exception. Id. If the recited judicial exception is integrated into a practical application, the claim is not “directed to” the judicial exception. Id. We agree with the Examiner that the additional elements do not provide improvements to the functioning of a computer, or to any other technology or technical field . . . ; or apply the abstract idea with, or by use of, a particular machine . . . ; or apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. Ans. 11 (citing in part MPEP § 2106.05(a), (b), (e)). Claim 6 recites “a plurality of interface assemblies . . . said interface assemblies being in communication with each other, each of said table games having one of said interface assemblies positioned thereon.” Appeal Br. 11 (Claims App.) (emphasis added). The interface assemblies are recited generically and encompass any computing device that can be used to input data, store and run software, and communicate with other interface assemblies during the performance of a wagering game. Appeal 2021-000205 Application 15/782,445 12 In a particular embodiment, the Specification provides that “interface assembly 18, as described above, may be what is conventionally known as an electronic tablet.” Id. at 6:4–5 (emphasis added). To further illustrate an embodiment of an interface assembly, we reproduce Figure 3 of the Specification, below: The Specification describes Figure 3 as a “front view of an interface assembly of an embodiment of the disclosure” (Spec. 3:13–14) that “will typically include a housing 22 and a processor 24 that is mounted within the housing 22” (id. at 5:24–25). The Specification states that “interface assemblies 18 are to be used to play a second game, or lottery game, between players who desire to play such while also playing the primary Appeal 2021-000205 Application 15/782,445 13 game [(e.g., blackjack or roulette)].” Id. at 4:12–14. The Specification further provides that, As can be seen in Figure 3, a specific input location 20 may exist for each player position 14. The term “betting units” is being utilized as each betting unit is discrete with respect to each other and are monetarily equal to each other. For example, a single betting unit may be equal to a monetary amount such as $1, $5, $10 and onward. However, the casino may decide to award players 16 who are playing the primary game with betting units in the form of electronic awards or award markers/chips. If the minimum wager for the second game is $1 per play and a player wagers $4, that player 16 will have purchased four betting units. Id. at 5:8–15. Thus, claim 6 simply requires that the “interface assemblies” be generic computers, such as conventional tablets, to communicate with one another so that the players at various tables can participate in the wagering/lottery game. We find nothing in the Specification, nor does Appellant direct us to anything in its argument (see Appeal Br. 7–8), to persuade us that steps recited in claim 6 require inventive programming, require any specialized computer hardware or other inventive computer components (i.e., a particular machine), or that the claimed invention is implemented using anything other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. 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.”). The claims do not recite any additional elements that (1) improve the functioning of a computer or other technology, (2) are applied with any particular machine, (3) effect a transformation of a particular article to a different state, or (4) are applied in any meaningful Appeal 2021-000205 Application 15/782,445 14 way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See MPEP § 2106.05(a)–(c), (e)–(h). Accordingly, claim 6 is directed to an abstract idea. 5. Step 2B—Inventive Concept The next consideration is whether claim 6 adds a specific limitation beyond the judicial exception that is not “well-understood, routine, [or] conventional” in the field. See Guidance, 84 Fed. Reg. at 56. The Examiner determines, When viewed as a combination, the additional limitations of Claims 1 to 20 identified above simply instruct the practitioner to implement the concept of managing a game at a high level of generality in a particular technological environment. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. Ans. 8. Appellant argues that “the claims provide for an inventive concept which is significantly more than a computer implementing generic functions.” Appeal Br. 7 (emphasis added). Appellant explains, “the mechanical devices are incorporated into table games not to manage or control aspects of the table game to which the device is associated, but for an altogether different game.” Id. Appellant further explains that the “mechanics and physical devices are not used in a conventional manner alone as the core concept includes and relies on incorporation of the mechanical devices into a first game (table game) unrelated to the actual Appeal 2021-000205 Application 15/782,445 15 game for which the mechanical devices are being specifically used.” Id. at 8 (emphasis added). Appellant’s argument is not persuasive. As noted above, the general requirement that the lottery game is played along with a table game does not remove claim 6 from the realm of abstraction. Thus, the combination of two games as recited in claim 6 cannot serve as adding a specific limitation beyond the judicial exception to make the claim eligible. Further, the “mechanics and physical devices” recited in claim 6 are the “plurality of interface assemblies.” Claim 6 requires the “interface assemblies” to: (1) be “programmed to receive one or more betting units”; (2) be in “communication with” a database; and (3) be “positioned on the table game associated with the player position having said winning bet.” See Appeal Br. 11 (Claims App.); see also Spec. 2:14–21 (describing the same). Contrary to Appellant’s assertion (see Appeal Br. 7–8), these additional elements, when considered individually and as an ordered combination, do not add a specific limitation or combination of limitations that are not well- understood, routine, conventional activity in the field. 6. Summary For the foregoing reasons, we sustain the rejection of independent claim 6, and of claims 1–5 and 7–20, which fall therewith (see 37 C.F.R. § 41.37(c)(1)(iv)), as unpatentable under 35 U.S.C. § 101. CONCLUSION Claims 1–20 stand rejected. Appeal 2021-000205 Application 15/782,445 16 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 101 Eligibility 1–20 TIME PERIOD FOR 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 Copy with citationCopy as parenthetical citation