Tuesday, May 3, 2016

PTAB Deems Method for Providing Funds to a Player at a Gaming Facility as Patent-Ineligible Subject Matter

Takeaway: A PTAB panel affirmed an Examiner's rejection of the claimed subject matter as being directed to patent-inelgible subject matter.  In part, the panel found the claimed subject matter was directed to the abstract idea of transferring funds between various institutions and that the claimed subject matter did not include additional elements that would provide an "inventive concept" transforming an otherwise patent-ineligible abstract idea into a patent-eligible application of the concept.  (Ex parte Nicholas, No. 2016-003046, PTAB Apr. 22, 2016)


Ex parte Nicholas
Appeal 2016-003046; Appl. No. 14/186,522; Technology Center 3700
Decided: April 22, 2016
In a recent decision, the PTAB upheld an Examiner's rejection that a method for providing funds to a player (using a portable electronic device) for providing funds to a player at a gaming facility as directed to patent-ineligble subject matter.  Claim 18, which was illustrative of the subject matter claimed, recited:
A method of providing funds to a player at a gaming facility comprising:

a portable electronic device sends a wireless communication to a funding establishment that supports a financial card;

the funding establishment supporting the financial card by storing an authorized level of credit available to the player from the financial card in memory;

the wireless communication containing data that identifies a) a specific financial card and a specific electronically-stored account established at the gaming facility on a server and b) an amount of funds to be applied against the financial card and transferred to the specific financial account;

the specific financial account receiving the transferred amount of funds and the gaming facility allowing electronic transfer of the transferred amount of funds; and

the specific financial account electronically transferring funds to a fund-providing electronic apparatus in the gaming facility.

In upholding the Examiner's rejection under 35 U.S.C. § 101 as directed to patent-ineligible subject matter, the PTAB analyzed the claim utilizing the Mayo framework set forth in Alice v. CLS Bank.  In its analysis, the PTAB agreed with the Examiner that the claim was directed to the patent-ineligible abstract idea of "the fundamental economic practice of funds transfers" under Mayo Step 1.
The Appellant disagreed with this characterization by stating “there is no substantive evidence according to any authoritative definition that supports the [Examiner’s] assertion [that claim 18 is directed to an abstract idea].” Then, the Appellant asserted that the claimed subject matter did “not represent a fundamental economic [practice], but encompasses a series of steps among multiple defined apparatus in which distinct lines of communication and specific steps are performed . . . in a specific field of actual transfer of value in a specific business field.”
The PTAB dismissed this characterization by finding that the claimed limitations of transferring funds between various institutions and facilities as "well-established and fundamental building block of the modern financial system."
The PTAB then moved its analysis to Mayo Step 2 to determine whether the claimed subject matter recited any additional elements that would transform the subject matter into "a patent-eligible application of the abstract idea."  However, the PTAB utilized the Appellant's specification and prior art to find that the recited elements of "a portable electronic wireless device capable of wireless communication, a gaming facility server, and a financial institution memory are generic electronic components that are well-understood, routine, and conventional in the industry."  For instance, the PTAB cited to the Appellant's specification to find that casino patrons routinely carry portable electronic devices on their persons and that gaming kiosks were “mainstays within casinos."
Appellant argued that the claimed subject matter recited "three or more distinct and separate electronic elements (personal data transmitter, electronic gaming machine, local gaming server with accounting functions, and financial institution server) which 'represent far more than an abstract idea in itself'" and that the claimed subject matter increased the speed and the security of financial transactions "in which value is immediately made available for wagering[, which] has been a long felt business need improved by the present technology.”
The PTAB quickly dismissed with this argument by reiterating that the Appellant's specification described electronic components that were well-understood, routine, and conventional in the industry and that the speed/security of the claimed subject matter were "merely characteristic of electronic funds transfers generally."
Based upon these findings, the Board sustained the Examiner's rejection of the claimed subject matter as being directed to patent-ineligible subject matter.
My two cents:  This decision provides a lesson that the any specification should include as much technical detail as possible such that an Applicant can rebut any assertions that the specification merely describes devices/components that are well-understood, routine, and conventional.  

1 comment:

  1. This decision provides a lesson that the any specification should include as much technical detail as possible
    No level of technical detail would have saved this claim -- the invention was not in the "technical details." However, that alone shouldn't disqualify a claim.

    The problem with the Board's analysis (following on the Examiner's analysis) is that the claim is not "directed to" the "fundamental economic practice of funds transfers." The clams do not simply instruct a practitioner to perform "funds transfers" without anything substantially more.

    However, this is the mess that SCOTUS left us. They choose not to define "abstract idea" or what it means to be "directed to" an abstract idea. If you don't know what constitutes a claimed directed to an abstract idea, you cannot know what is a claim that constitutes "significantly more" than that abstract idea.

    There was probably a better "abstract idea" that could have been identified by the Examiner/Board -- however, both were too lazy to figure it out.