Reuben Dupuis

Patent Trials and Appeals Board

Aug 6, 2019

14287629 - (D) (P.T.A.B. Aug. 6, 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.
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.
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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
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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.
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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
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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
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(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.”
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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.

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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.
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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
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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.
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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
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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
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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
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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
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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