Reuben DupuisDownload PDFPatent Trials and Appeals BoardAug 6, 201914287629 - (D) (P.T.A.B. Aug. 6, 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. 14/287,629 05/27/2014 Reuben Dupuis 7770-61/GTC0061-001 1100 141947 7590 08/06/2019 Sage Patent Group/IGT PO BOX 30789 RALEIGH, NC 27622-0789 EXAMINER DOSHI, ANKIT B ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 08/06/2019 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): instructions@sagepat.com patents@igt.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte REUBEN DUPUIS ____________ Appeal 2018-0086391 Application 14/287,6292 Technology Center 3700 ____________ Before CYNTHIA L. MURPHY, BRUCE T. WIEDER, and KENNETH G. SCHOPFER, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the rejection of claims 1–46. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1. Our decision references the Appeal Brief (“Appeal Br.,” filed Feb. 23, 2018), the Reply Brief (“Reply Br.,” filed Sept. 4, 2018), the Examiner’s Answer (“Ans.,” mailed July 11, 2018), and the Final Office Action (“Final Act.,” mailed July 27, 2017). 2. According to Appellant, the real party in interest is IGT Canada Solutions, ULC. Appeal Br. 1. Appeal 2018-008639 Application 14/287,629 2 BACKGROUND The Specification discloses embodiments related “to techniques for manipulating a display of reels in a reel-spinning wagering game.” Spec. 5, ll. 31–32. CLAIMS Claims 1, 16, 31, and 46 are the independent claims on appeal. Claim 1 is illustrative of the appealed claims and recites: 1. A method of manipulating a display of reels in a reel- spinning wagering game, the method comprising: accessing, in one or more data structures stored in one or more processor-readable storage media, data representing a plurality of reels of symbols in a starting set of reels, and one or more replacement reels of symbols; displaying on a display screen a depiction of at least a portion of each of the plurality of reels in the starting set; receiving, via a machine-user interface, user input indicating a wager; and executing stored instructions via at least one processor to: execute a first reel spin by modifying the depiction on the display screen to portray the plurality of reels in the starting set spinning, computing a first stopping position for each of the plurality of reels in the starting set, and then modifying the depiction on the display screen to portray each of the plurality of reels in the starting set stopped at its respective first stopping position; replace the depiction on the display screen of at least one of the plurality of reels in the starting set with a depiction of at least a portion of at least one of the one or more replacement reels to form a modified set of reels depicted on the display screen, the modified set of reels comprising at least one reel from the starting set and at least one replacement reel, wherein replacing the depiction on the display screen includes adding the at least a portion of the at least one of the one or more replacement reels Appeal 2018-008639 Application 14/287,629 3 in a different location on the display screen than a location of the at least one of the plurality of reels in the starting set; execute a second reel spin by modifying the depiction of the modified set of reels on the display screen to portray the reels in the modified set spinning, computing a second stopping position for each of the reels in the modified set, and then modifying the depiction on the display screen to portray each of the reels in the modified set stopped at its respective second stopping position; and determine a payout based on the second stopping positions of the reels in the modified set. Appeal Br. 27–28. REJECTION3 The Examiner rejects claims 1–46 under 35 U.S.C. § 101 as claiming a judicial exception without significantly more. DISCUSSION Standard for Patent Eligibility 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. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (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 3 The Examiner has withdrawn the rejection of claims 1–46 under 35 U.S.C. § 103. Appeal 2018-008639 Application 14/287,629 4 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, 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 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); 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 Appeal 2018-008639 Application 14/287,629 5 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. (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. The United States Patent and Trademark Office (USPTO) recently published revised guidance on the application of the Alice and Mayo framework. USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Under that guidance, we first look to whether the claim recites: (1) (see Revised Guidance Step 2A – Prong One) 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 2018-008639 Application 14/287,629 6 (2) (see Revised Guidance Step 2A – Prong Two) additional elements that integrate the judicial exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h) (9th ed. 2019).4 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 (see Revised Guidance Step 2B): (3) adds a specific limitation beyond the judicial exception that are 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 Revised Guidance. Analysis Appellant groups all claims together in arguing against this rejection. See Appeal Br. 15–25. We select independent claim 1 as representative. The remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Step 2A, Prong One The Examiner determines that the claims are directed to a method of manipulating a display of reels and are similar to other claims that have been 4. We acknowledge that some of these considerations could instead be evaluated under Step 2 of Alice (Step 2B of Office guidance). In the interest of maintaining consistent treatment within the Office, we evaluate them under Step 1 of Alice (Step 2A of Office guidance). See USPTO’s January 7, 2019 Revised Guidance, “2019 Revised Patent Subject Matter Eligibility Guidance.” Appeal 2018-008639 Application 14/287,629 7 found to be abstract, such as wagering game concepts. Final Act. 2; Ans. 5 (citing In re Smith, 815 F.3d 826 (Fed. Cir. 2016)). We agree with the Examiner that the claims recite a judicial exception in the form of an abstract idea. Claim 1 recites “[a] method of manipulating a display of reels in a reel-spinning wagering game” including steps for “accessing . . . data representing a plurality of reels of symbols in a starting set of reels, and one or more replacement reels of symbols;” “displaying . . . a depiction of at least a portion of each of the plurality of reels in the starting set;” “receiving . . . user input indicating a wager;” and “executing instructions.” Further, the executed instructions “execute a first reel spin” resulting in a “first stopping position;” “replace . . . at least one of the plurality of reels in the starting set with . . . one or more replacement reels to form a modified set of reels;” “execute a second reel spin . . . of the modified set of reels” resulting in a “second stopping position;” and “determine a payout based on the second stopping positions of the reels in the modified set.” Each of these steps is part of a process for playing a reel-spinning wagering game in which wagers are received, two wheel spins occur with first and modified reels, and a payout is determined based on the stopping position of the reels. We agree with the Examiner this concept of wagering is substantially similar to the concept of “rules for conducting a wagering game” in In re Smith, 815 F.3d at 818–19. Wagering is a commercial interaction, which is a method of organizing human activity and, therefore, an abstract idea. See Revised Guidance, 84 Fed. Reg. at 52. Appeal 2018-008639 Application 14/287,629 8 Step 2A, Prong Two Having determined that claim 1 recites a judicial exception, we next consider whether there are additional elements in the claim that integrate the judicial exception into a practical application. See Revised Guidance Step 2A–Prong Two. Here we look to see if, for example, (i) any additional elements of the claims reflects an improvement in the functioning of a computer or to another technological field, (ii) an application of the judicial exception with, or by use of, a particular machine, (iii) a transformation or reduction of a particular article to a different state or thing (iv) or a use of the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See Revised Guidance, 84 Fed. Reg. at 55; See also MPEP § 2106.05(a)–(c), (e)–(h). In addition to the claim limitations addressed above as part of the recited abstract idea, claim 1 also recites the use of “data structures stored in one or more processor-readable storage media;” “a display screen;” “a machine-user interface;” and various depictions on the display screen related to portraying spinning, stopping, and replacing sets of reels. The Examiner determines that the additional elements in the claim “amount[] to no more than mere instructions to implement the idea on a computer.” Final Act. 2– 3. And “[v]iewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim[] amounts to significantly more than the abstract idea itself.” Id. at 3. We agree with the Examiner, and we determine that the claim does not integrate the judicial exception into a practical application under Step 2A, prong two. Appeal 2018-008639 Application 14/287,629 9 We determine that claim 1, unlike the claims found non-abstract in prior cases, uses generic computer technology to store, process and transmit data, and does not recite an improvement to a particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314–15 (Fed. Cir. 2016) (finding claims not abstract because they “focused on a specific asserted improvement in computer animation”). In particular, we find that the structural limitations, noted above, are used for basic computer functions, i.e., accessing data, displaying data, receiving user input, and executing stored instructions, that may be performed by any computer system. See In re Katz, 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ discussed below, those functions can be achieved by any general purpose computer without special programming”); Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that considering claims reciting data retrieval, analysis, modification, generation, display, and transmission as an “‘ordered combination’” reveals that they “amount to ‘nothing significantly more’ than an instruction to apply [an] abstract idea” using generic computer technology) (internal citation omitted). The Specification supports this finding. For example, the Specification discloses that “techniques described . . . may be applied to any type of gaming device, including . . . a casino machine (e.g., a slot machine), a PC, a laptop, a tablet, a smartphone, glasses with augmented reality technology, etc.” Spec. 7, ll. 7–10. The Specification also discloses that The embodiments are operational with numerous other general purpose or special purpose computing system environments or configurations. Examples of well-known Appeal 2018-008639 Application 14/287,629 10 computing systems, environments, and/or configurations that may be suitable for use with the described techniques include, but are not limited to, personal computers, server computers, hand-held or laptop devices, multiprocessor systems, microprocessor-based systems, set top boxes, programmable consumer electronics, network PCs, minicomputers, mainframe computers, distributed computing environments that include any of the above systems or devices, and the like. Id. at 23, ll. 12–19. Thus, we see nothing in the Specification that indicates the method steps are performed by any specialized computer equipment, and the descriptions of the components used do not indicate that the claims reflect any improvement in the functioning of a computer or the use of a particular machine,5 which, if present, may indicate that the additional elements represent a practical application of the abstract. We also find nothing in the record indicating that the claim effects a transformation or reduction of a particular article to a different state or thing. Nor do we find anything of record, short of attorney argument, that attributes any improvement in computer technology and/or functionality to the claimed invention or that otherwise indicates that the claimed invention “appl[ies], rel[ies] on, or us[es] 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 judicial exception.” See Revised Guidance, 84 Fed. Reg. at 55. 5. Appellant argues that the claimed “machine-user interface” represents “structure and functionality that go well beyond the concept of a general computer.” Appeal Br. 23. We disagree as this only represents the means in which input is received from the user, a function performed by any general purpose computer with an attached input device. Appeal 2018-008639 Application 14/287,629 11 Appellant argues that the “claimed subject matter improves computer- related technology by allowing computer performance of a function not previously performable by a computer.” Appeal Br. 19. Appellant asserts that these functions are related to “novel features that can add layers of excitement and anticipation to a player’s gaming experience, thereby retaining and enhancing the player’s interest in the game” and include manipulating reels in way that builds player interest. Id. Appellant indicates that these functions are claimed as a set of rules similar to those presented in McRO. See id. (citing McRO, 837 F.3d 1299). We disagree that the claims here represent a set of rules in the same manner as those presented in McRO such that they represent an improvement in computer-related technology. In McRO the court asked whether the claim as a whole “focus[es] on a specific means or method that improves the relevant technology” or is “directed to a result or effect that itself is the abstract idea and merely invoke[s] generic processes and machinery.” McRO, 837 F.3d at 1314–15 (Claims determined not abstract because they “focused on a specific asserted improvement in computer animation.”). The claims in McRO were directed to a system of lip synchronization and facial expressions of animated characters, and the court concluded that the computerized system in McRO operated by rules whose implementation was not previously available manually. Id. at 1316. We are not persuaded that the claims here are similar to those presented in McRO. In particular, we fail to see, and Appellant does not explain, how claim 1 includes any specialized process that reflects an improvement in computer-related technology, like the process of computer animation at issue in McRO. We also fail to see how claim 1 includes any functions that were not previously performable by a computer. As Appeal 2018-008639 Application 14/287,629 12 discussed, the claim requires only accessing data, displaying data, receiving user input, and executing instructions regarding how data is displayed. Appellant also argues that the claims here recite more than a mere result and instead “recite specific steps that accomplish a desired result.” Appeal Br. 24 (citing Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305 (Fed. Cir. 2018)). In Finjan, the court found that a claim was not directed to an abstract idea because it “employs a new kind of file that enables a computer security system to do things it could not do before.” Finjan, 879 F.3d at 1305. The court likened this claim to the claims found eligible in Enfish because they represent an improvement to computer functionality itself. Id. at 1304–05 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016)). The court also found the claims recite more than the mere result and provide specific steps for achieving that result. Id. However, we do not understand Finjan to have held that any claim which recites specific steps for receiving any result is not directed to an abstract idea. Rather, the court found that the claims were not directed to an abstract idea both because they improved the functionality of the computer itself and recited more than a mere a result. As discussed above, we do not find that claim 1 represents an improvement in the functionality of the computer itself. Based on the foregoing, we determine that claim 1 does not include any practical application of the recited abstract idea, and thus is directed to an abstract idea under Alice Step one. Step 2B Turning to Step 2B of the Revised Guidance, we must determine whether the additional elements (1) add a specific limitation or combination Appeal 2018-008639 Application 14/287,629 13 of limitations that is not well-understood, routine, and conventional activity in the field, which is indicative that an inventive concept may be present or (2) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present. See Revised Guidance, 84 Fed. Reg. at 56. As discussed above, the additional elements of the claim are the use of “data structures stored in one or more processor-readable storage media;” “a display screen;” “a machine-user interface;” and various depictions on the display screen related to portraying spinning, stopping, and replacing sets of reels. Also as discussed, the method steps in which these elements are used, i.e. the accessing, displaying, receiving, and executing steps, are described in the Specification as capable of being performed by “well-known computing systems.” Spec. 23, ll. 23–14. The Specification further discloses that the “computing environment may execute computer-executable instructions, such as program modules . . . [that] include routines, programs, objects components, data structures, etc. that perform particular tasks or implement particular abstract data types.” Id. at ll. 20–23. Thus, the Specification indicates that the additional elements in claim 1, and the processes performed thereby, are well-understood, routine, and conventional. See In re Katz, 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming”); Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that considering claims reciting data retrieval, analysis, modification, generation, display, and transmission Appeal 2018-008639 Application 14/287,629 14 as an “‘ordered combination’” reveals that they “amount to ‘nothing significantly more’ than an instruction to apply [an] abstract idea” using generic computer technology) (internal citation omitted). Appellant indicates that “the recitations implementing the claim are non-conventional and non-generic” and thus, the claims include unconventional limitations and unconventional steps other than what is well- understood, routine, and conventional. Appeal Br. 21–23. However, in support of this argument Appellant only repeats the specific limitations of the claim and asserts that the claims are patentable over the art of record. Id. Without further explanation, this does not persuade us that the claims include any method steps that are not well-understood, routine, or conventional. Although the second step in the Mayo/Alice framework is termed a search for an “inventive concept,” the analysis is not an evaluation of novelty or non-obviousness, but rather, a search for “an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Alice Corp., 573 U.S. at 217–18. A novel and non- obvious claim directed to a purely abstract idea is, nonetheless, patent- ineligible. See Mayo, 566 U.S. at 90. Finally, Appellant argues that the “claims do not preempt the alleged abstract idea of manipulating a display of a reel.” Appeal Br. 20. “While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“[T]hat the claims do not preempt all price optimization or Appeal 2018-008639 Application 14/287,629 15 may be limited to price optimization in the e-commerce setting do not make them any less abstract”). And, “[w]here a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot.” Ariosa, 788 F.3d at 1379. We consider any relevant analysis related to preemption to be subsumed under our analysis with respect to Alice/Mayo and the Revised Guidance above. Determination Regarding Patent Eligibility Based on the foregoing, we are not persuaded of error in the Examiner’s rejection of claim 1 as claiming ineligible subject matter. Accordingly, we sustain the rejection of claim 1 and claims 2–46, which fall with claim 1. CONCLUSION We AFFIRM the rejection of claims 1–46. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation