Lee M. Amaitis et al.

Patent Trials and Appeals Board

Oct 2, 2020

2018008835 (P.T.A.B. Oct. 2, 2020)

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.
10/836,077 04/29/2004 Lee M. Amaitis 04-7109 9520
63710 7590 10/02/2020
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
LIDDLE, JAY TRENT
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
10/02/2020 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
mcatarino@cgolaw.com
patentdocketing@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 and JOSEPH M. ASHER
Appeal 2018-008835
Application 10/836,077
Technology Center 3700
Before BARRY L. GROSSMAN, ERIC C. JESCHKE, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
GROSSMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals, under 35 U.S.C. § 134(a), from the Examiner’s
rejection of claims 1–39, 42, 43, and 61, as set forth in the Final Office
Action dated December 4, 2017. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm the Examiner’s rejections.

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. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to a method or system of wagering or gaming.
(Spec. ¶¶ 3, 4).2 Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. An electronic wagering system to communicate over a
communication network with input and output portions of
graphical user interfaces of client electronic devices, the system
comprising:
a slot machine coupled to at least one controller;
the at least one controller configured to:
detect a presence of a first data source that includes data
representing a computer-based bet that includes a timestamp
representing when the computer-based bet is placed;
detect a presence of a second data source that includes data
representing a computer-based period of time having a duration
to determine one or more financial market information;
after detecting the second data source representing
the computer-based period of time, receive from an input
portion of a graphical user interface of a client electronic
device a computer-based bet, in which the computer-based
bet is associated with the computer-based bet timestamp;
determine whether a first financial market indicator is
available;
if the first financial market indicator is available, obtain a
value of at least one digit of the first financial market indicator,
in which the value includes a value that occurs at the moment
during or at the end of the identified computer-based period of
time and after the computer-based bet timestamp;
if the first financial market indicator is available: (1)
automatically determine a first value for a first reel of the slot

2 Our Decision refers to the Specification (“Spec.”) filed April 29, 2004, as
published on Nov. 3, 2005 (Pub. No. 2005/0245308 A1) because Appellant
cites to this version (e.g., Appeal Br. 11); the Final Office Action (“Final
Act.”) mailed December 4, 2017; the Appeal Brief (“Appeal Br.”) filed June
5, 2018; the Examiner’s Answer (“Ans.”) mailed June 20, 2018; and the
Reply Brief (“Reply Br.”) filed August 20, 2018.
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machine based at least in part upon the value of the at least one
digit of the first financial market indicator; and (2) automatically
determine a second value for a second reel of the slot machine;
determine an outcome of the computer-based bet based at
least in part upon the first value and the second value;
store in at least one memory of the slot machine a data
structure that includes data representing a determination of the
outcome of the computer-based bet;
generate an electronic signal to communicate a
command representing the determined outcome of the
computer-based bet; and
generate an electronic signal to cause a display on a
graphical payline on an output portion of the graphical
user interface of the client electronic device an indication
of the outcome.
REJECTIONS
The Final Office Action rejected all pending claims, which are claims
1–39, 42, 43, and 61, as amended on November 2, 2017, under each of three
grounds:
1. 35 U.S.C. § 101 as directed to patent-ineligible subject matter;
2. 35 U.S.C. § 112, first paragraph, for failing to provide a written
description of the invention, as required; and
3. 35 U.S.C. § 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the subject
matter which the inventors regards as the invention.
Final Act. ¶¶ 1–11. There are no rejections based on prior art references.
Final Act. ¶ 16.
Appellant presents arguments addressing only the rejections based
upon 35 U.S.C. §§ 101 and 112, first paragraph. Appeal Br. 4. Appellant
does not present arguments addressing the rejection based on 35 U.S.C.
§ 112, second paragraph.
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OPINION
Section 101 Analysis
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
Accordingly, we review the Examiner’s § 101 determinations concerning
patent eligibility under this standard.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, 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) (quoting Ass’n for Molecular Pathology v. Myriad Genetics,
Inc., 569 U.S. 576, 589 (2013)).
“[F]or distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts,” we are guided by the Supreme Court’s two-
step framework, described in Alice. Id. at 217–18 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)).
Under the two-step framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Alice, 573 U.S.
at 218. If the claims are determined to be directed to a patent-ineligible
concept, e.g., an abstract idea, then, under the second step of the framework,
we 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. Id. at 221 (citing Mayo, 566 U.S. at 72–73, 79).
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In January 2019, the U.S. Patent and Trademark Office adopted
revised guidance on the application of § 101. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Revised Guidance”).3 The Revised Guidance applies to all applications,
and to all patents resulting from applications, filed before, on, or after
January 7, 2019. Id. In this case, the Revised Guidance was published after
all briefing was completed. Thus, neither Appellant nor the Examiner
specifically addressed the analysis required in the Revised Guidance.
Under the Revised Guidance and the October 2019 Update, 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) (“Step 2A, Prong One”); and
(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)) (“Step 2A, Prong Two”).4
Revised Guidance, 84 Fed. Reg. at 52–55.

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the Revised Guidance. October
2019 Update: Subject Matter Eligibility (the “October 2019 Update”)
(available at https://www.uspto.gov/sites/default/files/documents/peg_oct_
2019_update.pdf).
4 This evaluation is performed by (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 the claim as a whole integrates the exception into a
practical application. See Revised Guidance, 84 Fed. Reg. at 54–55
(§ III(A)(2)).
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, 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.
Revised Guidance, 84 Fed. Reg. at 52–56.
In our § 101 analysis, we group all claims together and select claim 1
as representative of the group, as Appellant has done. See Appeal Br. 7
(“The claimed subject matter was amended to recite as in representative
claim 1 . . . .”); 37 C.F.R. § 41.37(c)(1)(iv). Accordingly, eligibility under
§ 101 of all pending claims turns on our analysis of claim 1. Any reference
to particular claim language is to language in claim 1.
Step 1
In accordance with the Revised Guidance, we determine whether a
claim satisfies the criteria for subject matter eligibility by evaluating the
claim in accordance with the criteria discussed in MPEP § 2106, i.e.,
“whether the claim is to a statutory category (Step 1) and the Alice/Mayo test
for judicial exceptions (Steps 2A and 2B).” Revised Guidance, 84 Fed. Reg.
at 53.
Step 1 of the Revised Guidance (which is unchanged from the prior
guidance) is to review the claims to determine whether they fall within one
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of the enumerated categories of invention under § 101, i.e., a process,
machine, manufacture, or composition of matter. Id. at 53–54.
The preamble of independent claim 1 refers to a “wagering system,”
which qualifies as a “machine” under § 101. The preamble of independent
claim 17 refers to a “method of gaming,” which qualifies as a process under
§ 101. The preamble of independent claim 23 refers to a “method of
wagering,” which also qualifies as a process under § 101. Evaluation of this
step is made by construing the claims in accordance with their broadest
reasonable interpretation. See MPEP § 2106.03 (II). Here, we will assume
the claims fall within a statutory category and, thus, must be further
analyzed at Step 2A to determine if the claim is directed to a judicial
exception. Id.; see also MPEP § 2106.04 (“Determining that a claim falls
within one of the four enumerated categories of patentable subject matter
recited in 35 U.S.C. 101 (i.e., process, machine, manufacture, or
composition of matter) in Step 1 does not end the eligibility analysis,
because claims directed to nothing more than abstract ideas (such as a
mathematical formula or equation), natural phenomena, and laws of nature
are not eligible for patent protection.”).5 This is consistent with the
Examiner’s analysis, which found that the claims fit within a statutory class.
See Final Act. ¶ 4 (“While the claims themselves are system and method

5 Cf. In re Smith, 815 F.3d 816, 818, 819 (Fed. Cir. 2016) (concluding that
“Applicants’ claims, directed to rules for conducting a wagering game,
compare to other ‘fundamental economic practice[s]’ found abstract by the
Supreme Court” and are “drawn to an abstract idea”); see also October 2019
Update at 5 n.24 (citing In re Smith in a discussion of the sub-grouping
“fundamental economic practices or principles”). The claims at issue in the
case before us do not address “rules” of a wagering game; they address a
computer-based system or method of wagering.
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claims that fit within a statutory class, the core of the invention is toward the
abstract idea of picking numbers.”).
Thus, we proceed to Step 2A of the Revised Guidance, which is the
first step in the Alice/Mayo test.
Step 2A
In Step 2A of the Revised Guidance, we determine if the claims are
“directed to” a “judicial exception.” Step 2A of the Revised Guidance
corresponds to the first step of the Alice/Mayo test but is in part changed
from the 2014 Interim Guidance on Patent Subject Matter Eligibility, 79
Fed. Reg. 74,618–33 (Dec. 16, 2014), by separating the first step into two
prongs. We address these prongs in order below.
Under this step, we “look at the ‘focus of the claimed advance over
the prior art’ to determine if the claim’s ‘character as a whole’ is directed to
excluded subject matter.” Affinity Labs of Texas, LLC v. DIRECTV, LLC,
838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural
phenomenon . . . . Rather, the “directed to” inquiry applies a
stage-one filter to claims, considered in light of the specification,
based on whether “their character as a whole is directed to
excluded subject matter.” Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In
other words, the first step of the Alice framework “asks whether the focus of
the claims is on the specific asserted improvement in [the relevant
technology] or, instead, on a process that qualifies as an ‘abstract idea’ for
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which computers are invoked merely as a tool.” Id. at 1335–36; see also
Revised Guidance, 84 Fed. Reg. at 54–55.
In the Final Office Action, the Examiner rejected claims 1–39, 42, 43,
and 61 under 35 U.S.C. § 101 because they are “directed to the abstract idea
of using a financial market as a random number generator for a wagering
game.” Final Act. ¶ 4. The Examiner acknowledged that “[w]hile the
claims themselves are system and method claims that fit within a statutory
class,” the Examiner held that “the core of the invention is toward the
abstract idea of picking numbers.” Id. The Examiner also held that the
claims “do not include additional elements that are sufficient to amount to
significantly more than the judicial exception because beyond the abstract
idea the only physical item claimed is ‘a client electronic device’ and ‘a
processor’ each of which are parts of a general purpose computer.” Id.
Additionally, the Examiner determined that “a graphical user interface,” also
recited in the claims, “is notoriously part of a general purpose computer and
thus does not rise to the level of significantly more than the abstract idea.”
Id.
Appellant argues that the Examiner fails to make a prima facie
showing of unpatentability under § 101 (Appeal Br. 5) and makes numerous
errors in rejecting the claims under § 101 (id. at 6).
Step 2A, Prong 1
In Step 2A, Prong 1, of the Revised Guidance we determine whether
the claims recite a judicial exception including (a) mathematical concepts;
(b) certain methods of organizing human activity; or (c) mental processes.
Revised Guidance, 84 Fed. Reg. at 54.
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As described in the Specification, the disclosed and claimed invention
recites a slot machine. E.g., Spec. ¶ 3 (“The client communicates a bet
regarding a spin of the reels of a slot machine.”). A controller determines a
first value for a first reel of the slot machine based at least in part upon the
value of a digit of a first financial market indicator. Id. The controller
continues to determine a second value for a second reel of the slot machine,
and a third value for a third reel of the slot machine. Id. The controller then
determines the outcome of the bet based at least in part upon the first value,
the second value, and the third value. Id.
In prior slot machines, the combination of symbols that line up on the
reels of a slot machine are determined by a “Random Number Generator.”
Spec. ¶ 2. A “Random Number Generator” is a computer program inside the
machine that is used to generate a sequence of numbers in milliseconds. Id.
Each random number it generates corresponds to a reel combination of the
slot machine. Id. In the disclosed and claimed invention, the inputs for the
game are determined based on the value of financial market indicators, or
some other type of non-random but unpredictable event, rather than the
numbers generated by a Random Number Generator. Id. ¶ 5. As stated in
the Specification, “the inputs for the game are determined based on the value
of financial market indicators rather than the numbers generated by a
Random Number Generator.” Spec. ¶ 5. When financial market indicators
are unavailable, such as on the weekends and holidays when financial
markets are typically closed, the system determines inputs for the game
based on some other type of non-random but unpredictable event. Id.
Representative claim 1 states that the claimed system uses “at least
one controller” to “determine whether a first financial market indicator is
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available” and if so, the controller “automatically determine[s] a first value
for a first reel of the slot machine based at least in part upon the value of the
at least one digit of the first financial market indicator,” and “automatically
determine[s] a second value for a second reel of the slot machine.” As in a
typical slot machine using a traditional Random Number Generator, these
values are used to determine the outcome of the bet.
Other claim limitations recite a controller configured to: detect “a first
data source that includes data representing a computer-based bet;”
“determine an outcome of the computer-based bet based at least in part” on
the value of the random number; “generate an electronic signal to
communicate” the “determined outcome of the computer-based bet;” and
“generate an electronic signal to cause a display on a graphical payline on an
output portion of the graphical user interface of the client electronic device.”
Thus, the claim as a whole, under its broadest reasonable interpretation,
recites steps for practicing a wagering game. In this way, claim 1 recites a
method for managing personal behavior or relationships or interactions
between people, which is one of the certain methods of organizing human
activity identified in the Revised Guidance, and thus an abstract idea. See In
re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160 (Fed. Cir. 2018)
(“[W]here the Patent Office further articulates a more refined
characterization of the abstract idea (e.g., ‘rules for playing games’), there is
no error in also observing that the claimed abstract idea is one type of
method of organizing human activity.”); Revised Guidance, 84 Fed. Reg. at
52; see also October 2019 Update at 6 (listing “a set of rules for playing a
dice game, In re Marco Guldenaar Holding B.V.” as an example of the sub-
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grouping “managing personal behavior or relationships or interactions
between people”).
In the alternative, claim 1 can also be viewed as reciting a
fundamental economic principle or practice, which is another of the certain
methods of organizing human activity identified in the Revised Guidance,
and thus an abstract idea. See In re Smith, 815 F.3d 816, 818, 819 (Fed. Cir.
2016) (concluding that “Applicants’ claims, directed to rules for conducting
a wagering game, compare to other ‘fundamental economic practice[s]’
found abstract by the Supreme Court” and are “drawn to an abstract idea”);
Revised Guidance, 84 Fed. Reg. at 52; see also October 2019 Update at 5
n.24 (citing In re Smith in a discussion of the sub-grouping “fundamental
economic practices or principles”).
Under this analysis, claim 1 is properly viewed as reciting either a
method for managing personal behavior or relationships or interactions
between people, or a fundamental economic principle or practice. Thus, for
the reasons discussed above, claim 1 recites at least one of the subgroupings
of the certain methods of organizing human activity identified in the 2019
Revised Guidance, and thus is an abstract idea.
The limitations in representative claim 1 are similar to the kind of
gaming system limitations found unpatentable in Planet Bingo, LLC v.
VKGS LLC, 576 F. App’x 1005, 1007–08 (Fed. Cir. 2014), which
determined that the steps of selecting, storing, and retrieving two sets of
numbers, assigning a player identifier and a control number, and then
comparing a winning set of bingo numbers with a selected set of bingo
numbers was an unpatentable abstract idea.
Accordingly, the claims recite an abstract idea.
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We thus proceed to Step 2A, Prong 2, of the Alice/Mayo test to
determine whether the abstract idea embodied in the claims is integrated into
a practical application.
Step 2A-Prong 2
Under Step 2A, Prong 2, of the Revised Guidance, we (a) identify
whether there are any additional elements recited in the claim beyond the
judicial exception, and (b) evaluate those additional elements individually
and in combination to determine whether the claim as a whole integrates the
judicial exception into a practical application. See Revised Guidance,
84 Fed. Reg. at 54–55. This step requires an additional element(s) or a
combination of additional elements in the claim to 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 exception. Id. at 54. The analysis in this step excludes
consideration of whether the additional elements represent well-understood,
routine, conventional activity. Id. at 55.
Appellant asserts that the claimed subject matter is “drawn to an
improved interface which provides advantages over the prior art
systems which improves the efficiency of the electronic devices, thereby
overcoming disadvantages of prior systems.” Appeal Br. 9 (citing Core
Wireless Licensing S.A.R.L. v. LG Elecs. Inc., 880 F.3d 1356 (Fed. Cir.
2018)). The Examiner responded that “Appellant here has not invented a
new user interface, but rather, in the claims, is merely using an interface . . . .
This is not an improvement to the interface itself, but rather just using
known interfaces as a tool.” Ans. 4.
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The Revised Guidance recognizes that “an improvement in the
functioning of a computer or other technology or technological field may
render a claim patent eligible at step one of the Alice/Mayo test even if it
recites an abstract idea, law of nature, or natural phenomenon.” 84 Fed.
Reg. 53 (citations omitted).
The Federal Circuit’s determination in Core Wireless turned on how
the claims were “directed to an improvement in the functioning of
computers, particularly those with small screens.” Core Wireless, 880 F.3d
at 1363 (emphasis added); see also id. (“Like the improved systems claimed
in Enfish, Thales [Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir.
2017)], Visual Memory [LLC v. NVIDIA Corp., 867 F.3d 1253 (Fed. Cir.
2017)], and Finjan [Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir.
2018)], these claims recite a specific improvement over prior systems,
resulting in an improved user interface for electronic devices.”).
Similarly, the claims in DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245 (Fed. Cir. 2014), and BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), were determined to be
patent eligible not merely because they were implemented in software or
displayed information, but because they reflected an improvement in an
underlying technology. See DDR Holdings, 773 F.3d at 1257 (stating that
“the claimed solution is necessarily rooted in computer technology in order
to overcome a problem specifically arising in the realm of computer
networks”); BASCOM, 827 F.3d at 1350–51 (stating that the “claims may be
read to ‘improve[] an existing technological process’” (quoting Alice, 573
U.S. at 223)).
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Appellant has not pointed us to any persuasive evidence that supports
its argued “advantages” over prior art systems. Appeal Br. 9. Argument in
the brief “does not take the place of evidence in the record.” Garrido v.
Holt, 547 F. App’x 974, 979 n.3 (Fed. Cir. 2013) (citing In re Schulze, 346
F.2d 600, 602 (CCPA 1965)); see also October 2019 Update at 13 (“If the
examiner concludes the disclosed invention does not improve technology,
the burden shifts to applicant to provide persuasive arguments supported by
any necessary evidence to demonstrate that one of ordinary skill in the art
would understand that the disclosed invention improves technology.”).
The only reference in the Specification to an “advantage” of the
disclosed or claimed invention is that the “systems and methods provide
bettors with gaming based upon the value of financial market indicators” or
“some other type of non-random but unpredictable event.” Spec. ¶ 5. There
is no persuasive evidence that the claimed invention provides “an
improvement in the functioning of a computer or other technology or
technological field.” See Revised Guidance, 84 Fed. Reg. at 53. Moreover,
even assuming that the claimed subject matter does enhance the gaming
experience, that would indicate an improvement in the abstract idea itself,
rather than an improvement in the relevant technology. See McRO, Inc. v.
Bandai Namco Games Am., Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (“We
therefore look to whether the claims in these patents focus on a specific
means or method that improves the relevant technology or are instead
directed to a result or effect that itself is the abstract idea and merely invoke
generic processes and machinery.” (citing Enfish, 822 F.3d at 1336)).
Thus, we find that the evidence before us supports that the claimed
subject matter, as a whole, does not reflect an improvement in the
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functioning of a computer, or an improvement to another technology or
technical field, or that the claims integrate the judicial exception into a
practical application. Appellant provides no persuasive argument or
evidence to the contrary.
The Guidance also discusses other considerations indicative of
whether the additional elements may have integrated the judicial exception
into a practical application—e.g., effecting a transformation, linking the use
of the judicial exception to a particular technological environment, etc. See
Revised Guidance, 84 Fed. Reg. at 55. Appellant does not raise any such
considerations. Thus, the claims do not recite additional elements
individually or in combination that integrates the judicial exception into a
practical application.
Appellant argues that the “claimed techniques may help improve
computer performance by providing a virtual slot machine with an interface
to a user including displaying a payline which may help control computer
workload including computer resources.” Appeal Br. 7 (emphasis added).
Appellant also argues that the “claimed subject matter allows the computer
to perform a function not previously performable by a computer.” Id.
According to Appellant, “Paragraphs [0005, 0010 and 0011] of Applicants
published application, US 2005-0245308 describes [sic] problems with
current systems as well as advantages to solutions to problems and contains
‘a teaching in the specification about how the claimed invention improves a
computer or other technology’” Id. (bracketed paragraph numbers included
in original).
Paragraph 5 of the Specification, as discussed above, states that “the
inputs for the game are determined based on the value of financial market
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indicators rather than the numbers generated by a Random Number
Generator.” Spec. ¶ 5. Paragraph 10 of the Specification identifies a generic
controller, communication network, and data sources to provide for
“wagering based at least in part upon event information . . . , such as
financial market indicators.” Id. ¶ 10. Paragraph 11 of the Specification
states that the disclosed invention may be implemented in a standard,
generic “physical slot machine” or a “virtual slot machine.” Spec. ¶ 11.
The Examiner responds to Appellant’s asserted “improved computer
performance” arguments by stating that “Appellant has provided no
evidence from the specification of how the elements of claim one ‘may help
control computer workload.’” Ans. 2. The Examiner also notes “it appears
that Appellant is unsure if such is actually the case as Appellant states, ‘it
may help.’ Appellant does not even seem to be sure whether this would
provide any benefit to the computer or not, and is merely suggesting it
might.” Id. at 2–3.
The Examiner also notes, correctly, that “the specification is
completely silent on this matter as far as the purpose of the invention being
to aid in computer resources management and this appears to be merely an
afterthought presented by the attorney after receiving a rejection rather than
the actual intent of the invention.” Id. at 3. The Examiner emphasizes that
“there is no evidence showing that using a number from a financial market
would expend any less resources than creating a random number in the
machine.” Id.
We agree with the Examiner’s analysis.
Representative claim 1 recites generic “graphical user interfaces” and
a “controller,” each performing purely conventional functions, i.e., receiving
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requests/information, analyzing information, and displaying results. As
discussed above, the claim limitations do not recite technological
implementation details for any of the recited system elements or method
steps or a particular way of programming. The functions performed in claim
1 by the generic graphical user interface and controller are purely generic.
Receiving requests/information, analyzing information, and displaying
results are generic functions previously known to the industry. See Final
Act. 3 (noting that that “‘a client electronic device’ and ‘a processor’” are
each “parts of a general purpose computer” and that “a graphical user
interface” “is notoriously part of a general purpose computer”); see also
Spec. ¶ 1 (stating that “[t]he rules to playing slot machines are quite simple,”
and then summarizing those well-known, simple rules). The claims,
therefore, do not state an arguably inventive concept. For example, claim 1
does not, as discussed above, purport to improve the functioning of the
graphical user interface and controller themselves. Nor does it effect an
improvement in any other technology or technical field. Instead, claim 1
amounts to nothing significantly more than an instruction to apply the
abstract idea using generic computer components performing routine
computer functions. That is not enough to transform an abstract idea into a
patent-eligible invention. See Alice, 573 U.S. at 225–26.
When considered as a whole, claim 1 is recites an abstract idea
performed on systems used in their ordinary capacity, performing well-
understood, routine, and conventional activities. Thus, the limitations of
claim 1 do not integrate the judicial exception into a practical application.
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Step 2B
In Step 2B, we consider whether the claimed invention amounts to an
“inventive concept.” See, e.g., Revised Guidance, 84 Fed. Reg. 56.
Appellant neither argues this step nor cites any evidence in support of Step
2B. We determine, based on our analysis of the claims above, that the
claims do not amount to an inventive concept.
Conclusion Regarding Section 101
Accordingly, based on our analysis above, we affirm the Examiner’s
§ 101 rejection of claims 1–39, 42, 43, and 61.
We note that our analysis does not consider whether the claims are
novel or would have been obvious based on prior art. Diamond v. Diehr,
450 U.S. 175, 188–89 (1981) (“The ‘novelty’ of any element or steps in a
process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter.”); Myriad, 569 U.S. at 591
(“Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry.”). Instead, novelty and obviousness are addressed
through §§ 102 and 103, which are not involved in this case.
Section 112 Analysis
In the Final Rejection, the Examiner rejected the claims under § 112,
first and second paragraphs. Final Act. 3–5.
Section 112, First Paragraph – Written Description
Regarding the rejection under § 112, first paragraph, the Examiner
stated: “Applicant has claimed a ‘graphical user interface’ performing
distinction functions. However, there is no mention of a graphical user
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interface in the specification and further no mention of it performing the
functions as claimed.” Final Act. 3–4.
Appellant argues that reference in paragraph 11 of Appellant’s
published patent application that “clients 20 comprise devices, such as those
described above, that can display a virtual slot machine to a user” provide
sufficient written description support for the limitations in the claims to
input and output portions of “a graphical user interface.” Appeal Br. 11.
We disagree. The devices described in paragraph 11 “include a computer, a
personal digital assistant, a mobile phone, a kiosk or point of sale terminal.”
Spec. ¶ 11.
Generic reference in the Specification does not support specific and
distinct recitations of the graphical user interface in representative claim 1:
(1) to receive a computer bet from “an input portion of a graphical user
interface of a client electronic device,” and (2) to generate an electronic
signal to cause a display on a graphical payline on “an output portion of the
graphical user interface of the client electronic device.” See Appeal Br. 12
(Claims Appendix). Moreover, Appellant has not demonstrated that the
devices disclosed in paragraph 11 necessarily have graphical user interfaces.
The Examiner:
notes that GUIs [graphical user interfaces] were notoriously well
known at the time of filing, Applicant never actually mentioned
[in the Specification] using a GUI, but rather only added the GUI
to the claims on February 6, 2017, in what appears to be an
attempt to overcome the 35 USC 101 rejection by implying that
because it had a GUI it must therefore be patent eligible (at the
time citing Trading Technologies International, Inc. v. CQG[,
675 F. App’x 1001 (Fed. Cir. 2017))].
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Ans. 8. Trading Technologies affirmed a District Court decision holding
that the claims in that case, which included a GUI, were patentable subject
matter under Section 101.
Paragraph 11 of the published application, on which Appellant relies
for written description support (Appeal Br. 11) states only that the various
devices referred to in the Specification “can display a virtual slot machine to
a user.” Neither the word “interface” nor the phrase “graphical user
interface” appear in the written description, as noted by the Examiner. Ans.
7. The Specification then states that “Fig. 2 illustrates one example of such
a slot machine.” Spec. ¶ 11. We have not been directed to any persuasive
evidence that Figure 2, or any other disclosure in the Specification,
illustrates or discloses “an input portion of a graphical user interface of a
client electronic device,” or “an output portion of the graphical user interface
of the client electronic device,” as recited in representative claim 1.
Accordingly, we affirm the Examiner’s decision rejecting the claims
under Section 112, first paragraph.
Section 112, Second Paragraph – Indefinite Claims
Section 112, second paragraph requires “claims particularly pointing
out and distinctly claiming the subject matter which the applicant regards as
his invention.” The Examiner determined that the claims were “indefinite”
for failing to meet this requirement. Final Act. ¶ 8.6 The Examiner stated,

6 The Final Action was responsive to Appellant’s “communication filed on
11/02/2017.” Final Act. 1 (cover Summary sheet). This communication
amended the claims. It is these amended claims that are subject to the final
rejection. The Examiner stated in the Final Action that “Previous rejections
based upon 35 USC 112(b) that are not repeated above are withdrawn based
upon Applicant amending the claim.” The Examiner maintained the
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“[t]he independent claims of the present invention cont ain many errors
under 35 USC 112(b), while claim 1 will be used as an example, the errors
appear to apply to all independent claims.” Id. The Examiner then
specifically identified these “many errors.” Id. at 4–5.
Appellant does not address this rejection. See Appeal Br. 4 (stating
the grounds for rejection to be reviewed on appeal are whether the claims are
“unpatentable as being directed to a judicial exception to 35 USC 101
statutory subject matter,” and “unpatentable as lacking written description
under 35 USC 112, first paragraph”). The Examiner noted the failure to
address this ground of rejection in his Answer. Ans. 9. Appellant also does
not address this ground of rejection in its Reply Brief. The entirety of the
Reply Brief is the following paragraph:
Applicants maintain all relevant arguments presented in the
Appeal Brief. The Examiner has done nothing to correct the
defects identified in the Appeal Brief. Applicants do not agree
with any statements made in the Examiner’s Answer or surrender
any arguments made in the Appeal Brief.
Reply Br. 2.
As stated in our rules, “any arguments or authorities not included in
the appeal brief will be refused consideration by the Board for purposes of
the present appeal.” 37 C.F.R. § 41.37(c)(1)(iv). Under the circumstances,
we deem Appellant to have waived any arguments as to this Rejection. See
Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (“When the appellant
fails to contest a ground of rejection to the Board, . . . the Board may treat

rejections under Section 112(b), or second paragraph, of the amended claims
that were “repeated above” in the Final Action. Paragraph 8 of the Final
Action clearly rejected all pending claims under Section 112(b), or second
paragraph.
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any argument with respect to that ground of rejection as waived.”); see also
In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (holding that the Board did
not err in sustaining a rejection under 35 U.S.C. § 112, second paragraph,
when the applicant failed to contest the rejection on appeal). Accordingly,
we summarily sustain this Rejection.
CONCLUSION
The Examiner’s rejection under Section 101 is affirmed. The
Examiner’s rejection under Section 112, 1st paragraph, is affirmed. The
Examiner’s rejection under Section 112, 2nd paragraph, is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–39, 42,
43, 61
101 Eligibility 1–39, 42,
43, 61

1–39, 42,
43, 61
112 ¶ 1 Written
Description
1–39, 42,
43, 61

1–39, 42,
43, 61
112 ¶ 2 Indefiniteness 1–39, 42,
43, 61

Overall
Outcome
1–39, 42,
43, 61

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).
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AFFIRMED