Lee M. Amaitis et al.Download PDFPatent Trials and Appeals BoardAug 14, 201913346133 - (D) (P.T.A.B. Aug. 14, 2019) 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. 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. Appeal 2019-001502 Application 13/346,133 2 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). Appeal 2019-001502 Application 13/346,133 3 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 Appeal 2019-001502 Application 13/346,133 4 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 Appeal 2019-001502 Application 13/346,133 5 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. Appeal 2019-001502 Application 13/346,133 6 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 Appeal 2019-001502 Application 13/346,133 7 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. Appeal 2019-001502 Application 13/346,133 8 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 Appeal 2019-001502 Application 13/346,133 9 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. Appeal 2019-001502 Application 13/346,133 10 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). Appeal 2019-001502 Application 13/346,133 11 AFFIRMED Copy with citationCopy as parenthetical citation