Ex Parte Lutnick et al

Patent Trial and Appeal Board

Sep 7, 2018

13936731 (P.T.A.B. Sep. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/936,731 07/08/2013
63710 7590 09/11/2018
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
FIRST NAMED INVENTOR
Howard W. Lutnick
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
07-2183-C2 5466
EXAMINER
DEODHAR, OMKAR A
ART UNIT PAPER NUMBER
3714
NOTIFICATION DATE DELIVERY MODE
09/11/2018 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):
patentdocketing@cantor.com
lkorovich@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOWARD W. LUTNICK, DEAN P. ALDER UCCI,
GEOFFREY M. GELMAN, and KEVIN BURMAN
Appeal2017-001342
Application 13/936,731
Technology Center 3700
Before STEFAN STAICOVICI, BRANDON J. WARNER, and
SEAN P. O'HANLON, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
CFPH, LLC ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from the
Examiner's decision rejecting claims 26-50, which are all the pending
claims. Appeal Br. 3. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We AFFIRM.
CFPH, LLC is the applicant, as provided in 37 C.F.R. § 1.46, and is
identified as the real party in interest. Appeal Br. 3.
Appeal2017-001342
Application 13/936,731
CLAIMED SUBJECT MATTER
Appellant's disclosed invention relates to a game of virtual roulette.
See, e.g., Appeal Br. 3---6. Claims 26, 38, 49, and 50 are independent.
Claim 26, reproduced below, is illustrative of the subject matter on appeal.
26. A method comprising:
presenting, through a first presentation platform, a first
roulette spin;
presenting, through a second presentation platform, a
second roulette spin;
receiving, by a computing device, a first wager on the
first roulette spin from a first mobile device;
determining, by the computing device, an outcome of the
first wager based on an outcome of the first roulette spin;
receiving, by the computing device, a second wager that
a pattern of outcomes of roulette spins will occur from a second
mobile device;
determining, by the computing device, an outcome of the
second wager based on whether the pattern of outcomes occurs
in the first roulette spin and the second roulette spin;
receiving, by the computing device, a third wager on an
aggregate of outcomes from a plurality of roulette spins over a
period from a third mobile device; and
determining an outcome of the third wager based on the
outcome of the first roulette spin and an outcome of the second
roulette spin.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Lutnick US 8,480,471 B2 July 9, 2013
2
Appeal2017-001342
Application 13/936,731
REJECTIONS
The following rejections are before us for review:
I. Claims 26-50 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 3--4;
see also Ans. 2-8 ( explaining same basis for rejection in light
of updated examination guidelines).
II. Claims 26-50 stand rejected on the basis of obviousness-type
double patenting as being unpatentable over claims 1-25 of
Lutnick. Final Act. 6.
ANALYSIS
Rejection I - Ineligible Subject Matter
A patent may be obtained for "any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof." 35 U.S.C. § 101. The Supreme Court has consistently held that
this provision contains an important implicit exception: laws of nature,
natural phenomena, and abstract ideas are not patentable. See Alice Corp. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409
U.S. 63, 67 (1972) ("Phenomena of nature, though just discovered, mental
processes, and abstract intellectual concepts are not patentable, as they are
the basic tools of scientific and technological work.").
Notwithstanding that a law of nature or an abstract idea, by itself, is
not patentable, an application of these concepts may be deserving of patent
protection. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132
S. Ct. 1289, 1293-94 (2012). In Mayo, the Court stated that "to transform
an unpatentable law of nature into a patent-eligible application of such a
3
Appeal2017-001342
Application 13/936,731
law, one must do more than simply state the law of nature while adding the
words 'apply it."' Mayo, 132 S. Ct. at 1294 ( citation omitted).
In Alice, the Court reaffirmed the framework set forth previously in
Mayo "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts." Id. If the claims are directed to a
patent-ineligible concept, then the second step in the analysis is to consider
the elements of the claims "individually and 'as an ordered combination"' to
determine whether there are additional elements that "'transform the nature
of the claim' into a patent-eligible application." Id. (quoting Mayo, 132
S. Ct. at 1298, 1297).
In other words, the second step is to "search for an 'inventive
concept'-i.e., an element or combination of elements that is 'sufficient to
ensure that the patent in practice amounts to significantly more than a patent
on the [ineligible concept] itself."' Id. (brackets in original) (quoting Mayo,
132 S. Ct. at 1294). The prohibition against patenting an abstract idea
"cannot be circumvented by attempting to limit the use of the formula to a
particular technological environment or adding insignificant postsolution
activity." Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (citation and
internal quotation marks omitted). The Court in Alice noted that "[ s ]imply
appending conventional steps, specified at a high level of generality," was
not "enough" [in Mayo] to supply an "'inventive concept."' Alice, 134
S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
4
Appeal2017-001342
Application 13/936,731
The claimed invention at issue here is directed to methods and
systems for rules for conducting a wagering game involving multiple spins
of a roulette wheel. See Appeal Br., Claims App. In other words, the claims
are directed to presenting roulette spins having spin outcomes, receiving
wagers, and determining wager outcomes based on the spin outcomes, all
implemented on a computing device that receives data (wagers) from mobile
devices. See id.; see also Ans. 3.
The Examiner determines that the claims are directed to patent-
ineligible subject matter because, considering all elements both individually
and in combination, the claims are directed to "rules for wagering on roulette
spins, implemented using only generic computing devices," which "is an
unpatentable abstract idea without 'significantly more."' Ans. 2; see id.
at 2-8; see also Final Act. 3--4 (same conclusion). Further, the Examiner
explains that the elements of the claims other than the abstract idea amount
to no more than "merely applying the abstract idea using conventional
computing devices," which the court found problematic in Alice. Ans. 5; see
id. at 5-7. In light of the principles above, and for the reasons discussed
below, we agree with the Examiner's conclusion that the claims are directed
to patent-ineligible subject matter.
Appellant argues that the structure of the claims-namely, using
"computer technology"----ensures that the claims are directed to more than
an abstract idea. See Appeal Br. 8-9; Reply Br. 4--5. Appellant also takes
issue with the form of the rejection as being insufficient. See Appeal
Br. 6-7; Reply Br. 2--4. We are not persuaded by Appellant's arguments.
In the first step of the Alice analysis, "the decisional mechanism
courts now apply is to examine earlier cases in which a similar or parallel
5
Appeal2017-001342
Application 13/936,731
descriptive nature can be seen-what prior cases were about, and which way
they were decided." Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d
1288, 1294 (Fed. Cir. 2016), cert. denied, 138 S. Ct. 469 (2017) (citing Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016).
To this end, the Examiner calls attention to In re Smith, 815 F.3d 816 (Fed.
Cir. 2016), where the Federal Circuit already considered claims similar to
structure of this type-namely, "rules for playing a wagering game" (id.
at 817}-and affirmed a determination of patent-ineligibility for similarly
structured claims directed to rules for conducting a wagering game.
Ans. 3--4.
Contrary to Appellant's assertion, the claims here do not present a
new or original set of game inputs akin to a new or original deck of cards
(see Reply Br. 3--4); rather, the claims here present rules for playing a
wagering game via receiving and resolving wagers from generic devices
(see Appeal Br., Claims App.). And, in Smith, the Federal Circuit has
already decided that rules for playing a wagering game, implemented using
conventional elements, constitutes ineligible subject matter. Thus, Appellant
does not apprise us of a meaningful distinction in the form or type of the
claims between those presently recited and those previously adjudicated in
Smith.
Further, to the extent that Appellant suggests that the alleged novelty
of some particularities of the wagering game rules should indicate that the
claims are transformed into patent-eligible subject matter, this suggestion is
misplaced. See Appeal Br. 8-9; Reply Br. 2--4. An allegation that claims
are novel in light of an absence of evidence does not conflict with the
Examiner's conclusion of ineligibility under § 101 because "a claim for a
6
Appeal2017-001342
Application 13/936,731
new abstract idea is still an abstract idea." Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (citing Mayo, 132
S. Ct. at 1304). Whether the claimed concept is "[g]roundbreaking,
innovative, or even brilliant ... does not by itself satisfy the§ 101 inquiry."
Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107,
2117 (2013). Consequently, under the second step of the Alice analysis, an
abstract idea does not transform into an eligible inventive concept just
because the Examiner has not found prior art that discloses or suggests it.
Indeed, "[t]he '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." Diamondv. Diehr, 450 U.S. 175, 188-89 (1981).
Given the binding precedent of our reviewing courts, we agree with
the Examiner's ultimate conclusion that the present claims are directed to
patent-ineligible subject matter, particularly in light of the explanation
provided at pages 2-8 of the Examiner's Answer, where the Examiner
applies the principles outlined above.
In short, Appellant does not apprise us of a material difference in the
form, structure, or substantive content of the recitations, between the claims
recited and those claims already determined to be patent-ineligible by our
reviewing courts. Thus, for this reason and those explained above, we are
obliged to sustain the Examiner's rejection.
Rejection II - Double Patenting
Appellant does not address the double patenting rejection in the
Appeal Brief. See, e.g., Appeal Br. 6 (omitting this rejection from the
7
Appeal2017-001342
Application 13/936,731
grounds to be reviewed on appeal). Therefore, we summarily sustain the
obviousness-type double patenting rejection of claims 26-50. See MPEP
§ 1205.02 (An appellant may, of course, choose not to present arguments or
rely upon particular evidence as to certain claim rejections; however, such
arguments and evidence are waived for purposes of the appeal and the Board
may summarily sustain any grounds of rejections not argued.); see also In re
Berger, 279 F.3d 975 (Fed. Cir. 2002) (confirming same).
DECISION
We AFFIRM the Examiner's decision rejecting claims 26-50 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
We AFFIRM the Examiner's decision rejecting claims 26-50 on the
basis of obviousness-type double patenting as being unpatentable over
claims 1-25 of Lutnick.
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)(l )(iv).
AFFIRMED
8