Lee M. Amaitis et al.

Patent Trials and Appeals Board

Aug 14, 2019

13346133 - (D) (P.T.A.B. Aug. 14, 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.
13/346,133 01/09/2012 Lee M. Amaitis 04-7121-C1 8518
63710 7590 08/14/2019
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
HSU, RYAN
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
08/14/2019 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 LEE M. AMAITIS, JOSEPH M. ASHER,
HOWARD W. LUTNICK, DARRIN M. MYLET, and ALAN B. WILKINS
____________

Appeal 2019-001502
Application 13/346,133
Technology Center 3700
_______________

Before LINDA E. HORNER, LISA M. GUIJT, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–7, 9–12, 14–16, 20, and 21.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 Interactive Games LLC is identified as the real party in interest. Appeal
Br. 3.
2 Appeal is taken from the Final Office Action dated January 25, 2018.
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CLAIMED SUBJECT MATTER
Claims 1, 14, and 20 are the independent claims on appeal. Claim 1,
reproduced below, is exemplary of the subject matter on appeal.
1. An apparatus, comprising:
a memory;
at least one processor to:
communicate information with a mobile device
over a private cellular communications network
comprising at least one base station, the information being
associated with at least one gaming activity, the at least
one base station being operable to communicate the
information within boundaries of a permitted gaming area;
determine whether the mobile device is in
communication with the at least one base station operable
to communicate the information with a gaming server via
a dedicated, secure land line; and
in response to determining that the mobile device is
in communication with the at least one base station,
communicate the information to the mobile device.

THE REJECTIONS
I. Claims 1–7, 9–12, 14–16, 20, and 21 stand rejected under
35 U.S.C. § 101 as directed to ineligible subject matter.
II. Claims 1–3, 5, 6, 11, 12, 14–16, 20, and 21 stand rejected under
35 U.S.C. § 102(b) as anticipated by Mages (US 2003/0006931 A1;
published Jan. 9, 2003).
III. Claims 4, 7, 9, and 10 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Mages and Wells (US 6,846,238 B2; issued Jan. 25,
2005).

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ANALYSIS
Rejection I
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. Pty. Ltd. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014) (quotation marks and citation omitted).
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
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, 69 (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
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rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
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 (citation omitted). “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. (quoting Mayo, 566 U.S. at 77
(alterations in original)). “[M]erely requir[ing] generic computer
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implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“2019 Guidance”).3 Under that 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 (2) additional elements that integrate the
judicial exception into a practical application (see MPEP § 2106.05(a)–(c),
(e)–(h)). 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 2019 Guidance.
The Examiner determines that the although the claims recite a
process, which is a statutory category for an invention, the claims are
“directed to the abstract idea of collecting information, analyzing the
information, and communicat[ing] the analyzed and collected information
for display” (Final Act. 6–7) for the purpose of determining “access to play

3 Although the Examiner issued the rejection before the Guidance was
published, because the document provides the PTO’s guidance for
evaluating subject matter eligibility under existing law, the methodology set
forth in the Guidance applies to examinations of all pending claims,
including those at issue in this Appeal.
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of a wagering game,” which, as a whole, is a mental process (Ans. 3). The
Examiner also finds that “the additional elements [of the claims] do not
amount to significantly more than the . . . abstract idea,” because the
“collective functions” of the additional claim elements “merely provide
conventional computer implementation which are . . . invoked as a tool to
implement the abstract idea.” Final Act. 7; see also Ans. 4 (determining that
the additional claim limitations “do[] not require any nonconventional
computer, network, or general computing components but rather call[] for
performance of collection, analysis, and a functional desired result”).
Appellants argue that the Examiner’s analysis “oversimplifies the
claims by looking at them generally and fails to account for the specific
requirements recited in the claims.” Appeal Br. 8–9 (citation omitted).
Appellants submit that the claims are “directed to communications between
a mobile device within a gaming area and a base station interacting with
a gaming server,” and therefore, the claims do not “merely recite ‘steps for
a wagering game,’” or an abstract idea. Id. at 9.
Appellants also argue that
the claims recite significantly more than the [Examiner’s] . . .
characterization. The combination of elements recite specific
computer operations that are not generic computer functions.
Moreover, the claim language shows the magnitude and
complexity of the network communication [such] that a human
could not possibl[y] carry out the claimed operations manually.
The technical structure recited in the claims expedites the process
in a way that a person making these computations could not.
Appeal Br. 9. Appellants conclude that “the improvement is made to the
computer itself.” Id. at 10. Appellants argue that “the claims recite
features that are inherently mechanical structures, including a ‘mobile
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device’ and a ‘base station.’” Id. Appellants argue that “the combination
of elements are not ‘well-understood, routine, and conventional.’” Reply Br.
2.
Step 2A, Prong One: Do the claims recite a judicial exception?
Pursuant to Step 2A, Prong 1 of the 2019 Guidance, we analyze the
individual limitations of independent claims 1, 14, and 20 to determine
whether any limitations of these claims recite an abstract idea, such as a
mental process. We determine that the claims do not recite a mental process
or any other abstract idea. Rather, the claims require, inter alia, the
communication of gaming information with a mobile device over a private
cellular communications network comprising a base station, wherein the
base station is operable to communicate the information via a dedicated,
secure land line, and further, either determining if the mobile device is
accessing the base station, or receiving a network address over the private
communications network that indicates that the mobile device is accessing
the base station. These steps involve more than merely determining access
to play of a wagering game, as determined by the Examiner, because they
also require communicating information via a particular computer network,
namely, a certain land line. Although using a base station to determine
boundaries for a wireless device and also using land lines to transmit
information may be known functions of a cellular network, these steps
cannot be performed in the human mind or by pen and paper. In sum,
independent claims 1, 14, and 20 do not recite a mental process or other
category of abstract idea, and therefore, these claims are not directed to an
abstract idea.
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Notably, the claims of the present application are distinguishable from
claims determined to be patent ineligible by the Federal Circuit in In re
Smith, 815 F.3d 816, 819 (Fed. Cir. 2016) and In re Marco Guldenaar
Holding B.V., 911 F.3d 1157 (Fed. Cir. 2019). In In re Smith, the court held
that a method of conducting a wagering game using a deck of cards was an
abstract idea similar to a fundamental economic practice (In re Smith, 815
F.3d at 818–819), and in In re Marco Guldenaar, the court held that a
method of playing a wagering dice game was a method of organizing human
activity (e.g., an abstract idea) (In re Marco Guldenaar, 911 F.3d at 1160).
Although claims 1, 14, and 20 of the present application characterize the
information that is being communicated as “associated with gaming
activities,” the claims are not directed to a method of conducting gaming
activities. Instead, the claims are directed to an apparatus having a processor
to communicate the gaming information via specific network components,
and further, based on whether a communication between a mobile and base
station exists. In other words, claim 1, 14, and 20 of the present application
do not merely recite rules for a playing a game.
Step 2A, Prong Two: Is there an integration into a practical application?
Alternatively, we determine that the claims recite “additional elements
that integrate the exception into a practical application.” See Revised
Guidance, 84 Fed. Reg. at 54; see also MPEP §§ 2106.05(a)–(c), (e)–(h)).
In particular, the claims require the communication of information
associated with a gaming activity to be performed via a mobile device over a
private cellular communications network comprising at least one base station
operable to communicate the information within boundaries of a permitted
gaming area and with a gaming server via a dedicated, secure land line. In
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other words, the independent claims of the present application recite
meaningful limits on the use of gaming information.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1, 14, and 20 and claims 2–7, 9–12, 15,16, and 21
depending therefrom under 35 U.S.C. § 101.

Rejection II
Appellants argue claims 1–3, 5, 6, 11, 12, 14–16, 20, and 21 as a
group. Appeal Br. 12–13. We select claim 1 as representative, and claims 2,
3, 5, 6, 11, 12, 14–16, 20, and 21 stand or fall with claim 1. See 37 C.F.R. §
41.37(c)(1)(iv).
The Examiner finds, inter alia, that Mages discloses a processor that
communicates information with a mobile device over a private cellular
communications network, as claimed. Final Act. 9–10 (citing Mages ¶¶ 7,
41, 44, 45, 48). The Examiner relies, inter alia, on “Mages[’s] disclosure of
the . . . server associated with a casino [as] . . . indicat[ing] that the
communication network is a private cellular network (e.g., privately
owned).” Ans. 8 (citing Mages ¶ 41).
Appellants argue that “Mages[’s] mobile device 12 preferably
communicates with transmitter 14 using Bluetooth technology” and that
“[e]ven the broadest reasonable interpretation of ‘private cellular network’
does not correspond to ‘Bluetooth.’” Appeal Br. 13. Appellants do not
address the Examiner’s alternative reliance on the CDMA server or server
associated with a casino as meeting the limitation of a private cellular
network. See Reply Br. 2.
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Mages discloses that “the device connects to the Internet or a server
associated with the casino to allow gaming activities to be played on the
[wireless] device[s].” Mages ¶ 12 (emphasis added). Appellants’ argument
does not apprise us of error in the Examiner’s finding that a server
associated with a casino is a private cellular network.
Accordingly, we sustain the Examiner’s rejection of claim 1, and
claims 2, 3, 5, 6, 11, 12, 14–16, 20, and 21 fall therewith.

Rejection III
Regarding the Examiner’s rejection of claims 4, 7, 9, and 10,
Appellants’ argument that Wells fails to cure the deficiencies in the
Examiner’s reliance on Mages is unpersuasive, because we do not agree that
the Examiner’s reliance on Mages is in error. Appeal Br. 14. Thus, for the
reasons stated supra, we also sustain the Examiner’s rejection of claims 4, 7,
9, and 10.

DECISION
The Examiner’s rejection of claims 1–7, 9–12, 14–16, 20, and 21
rejected under 35 U.S.C. § 101 is REVERSED.
The Examiner’s rejection of claims 1–3, 5, 6, 11, 12, 14–16, 20, and
21 rejected under 35 U.S.C. § 102(b) is AFFIRMED.
The Examiner’s rejection of claims 4, 7, 9, and 10 rejected under
35 U.S.C. § 103(a) 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
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AFFIRMED