Monday, April 2, 2018

Slots o' Fun: Reply brief improvement arguments rescue claims on networked casino game presentation control from Alice rejections

Takeaway: Finding improvement arguments set forth in a reply brief to be persuasive, the Patent Board reversed Alice rejections of claims directed to controlling content presentation on banks of networked casino game machines (the better to attract your attention to all those flashing lights and screens when you set foot in the casino).


Ex parte Greenberg

Appeal No. 2016-006337; Application No. 13/382,783; Tech. Center 3700
Decided: Sep. 29, 2017

A representative claim on appeal read:

1.     A computer-implemented method of operating a gaming system primarily dedicated to providing at least one casino wagering game, the gaming system including a plurality of wagering game machines and one or more controllers, the method comprising:
        selecting, by one or more processors of the one or more controllers, a plurality of content presentation devices for presentation of a gaming effect, wherein the plurality of content presentation devices comprise video, sound production or lighting devices associated with a plurality of wagering game machines, wherein each of the plurality of content presentation devices has an identifier, and wherein a portion of the gaming effect is configured to be synchronized across the plurality of content presentation devices and the plurality of wagering game  machines, and wherein the portion of the gaming effect is presented without interruption via the plurality of content presentation devices during a time interval;
        receiving, into a non-transitory machine-readable medium coupled to the one or more content controllers, presentation status information for at least one of the plurality of content presentation devices, wherein the presentation status indicates a state of availability of the at least one of the video, sound production or lighting devices;
        determining, by the one or more controllers, based on the presentation status information, that the at least one of the plurality of content presentation devices is unavailable to present the portion of the gaming effect during the time interval; and
        utilizing, by the one or more processors of the one or more controllers, the presentation status information and the identifier for each of the plurality of content presentation devices to generate a transmission schedule in the non-transitory machine-readable medium, that synchronizes timing of transmissions of content control data for the gaming effect to the plurality of content presentation devices, wherein the transmission schedule is configured to schedule content control data to be sent to eligible content presentation devices using the identifier for each eligible content presentation device of the eligible content presentation devices, and wherein the transmission schedule omits the at least one of the plurality of content presentation devices that is unavailable to present the portion of the gaming effect based, at least in part, on the presentation status information and the identifier of the at least one of the plurality of content presentation devices that is unavailable to present the portion of the gaming effect.
(Emphasis added.)

The application was filed by inventors for WMS Gaming, a subsidiary of WMS industries, then the third-largest manufacturer of slot machines.  The disclosure explains that since "players are likely to be attracted to the most entertaining and exciting machines . . . there is a continuing need for wagering game machine manufacturers to continuously develop . . . gaming enhancements that will attract frequent play."  To this end, game presentation features such as sound effects, music, voices, and animation in wagering game systems are provided from various sources to banks of networked gambling machines (e.g., slot machines) and need to be controlled in a coordinated way via the casino network.  In particular, the invention strives to provide a way for bank-wide effects to exclude unavailable machines in the bank from coordinated content presentations.

After the applicants submitted amendments and arguments to overcome anticipation and obviousness rejections, a notice of allowance was issued in July 2014, but the application was withdrawn from issue the following month, before the issue fee could be paid, for reconsideration in view of the Supreme Court's decision in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014).

Upon reopening of prosecution, the examiner found the claims to be directed to the abstract idea of "determining a transmission plan for a plurality of devices based on determining if the devices are available", and so rejected them as subject-matter ineligible as a judicial exception to § 101.  Under step two of the Alice analysis, the examiner held that the additional elements in the claims amounted "to no more than a recitation of a generic gaming machine and generic computer network including a gaming network", and thus did "not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself."

In the final rejection, the examiner cited to the Internet video ad case of Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014), wherein the Federal Circuit found the claims to be directed to an abstract idea, specifically, a method of using advertising as an exchange or currency, on the court's second reconsideration of the case, made with the benefit of the Alice decision.  (The appeals court had twice previously held the claims to be eligible after Supreme Court decisions came down in Bilski v. Kappos, 561 U.S. 593 (2010), see 657 F.3d 1323, and Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), see 722 F.3d 1335.)  One of the holdings of Ultramercial was that the mere inclusion of the Internet in a claim would not render an otherwise ineligible claim allowable.  Here, the examiner found that "a network based gaming means is a well-known game concept . . . as much as the use of the Internet within the computer art and therefore would be considered a general purpose computer and not a novel machine or apparatus."  Thus, the examiner found the claims to be "directed to an abstract idea in regards to scheduling machines in a network to carry out a task, if available, which is both well-known and obvious in order to have a task be carried out the machine must be free and available," and, in support of this finding cited to the prior art reference relied upon in the already-overcome anticipation and obviousness rejections.  Even after consideration of the claims' recitations of the changing the communication paths and the inclusion of status identifiers, "applicant's claims are still directed to the abstract idea of determining when to display content on machines based on availability with the only modifications being to which part talks to which part of the system and how the system identifies when a part of the system is busy or how to schedule the transmission.  This does not amount to a significant change over the current gaming network art."

The applicants requested a pre-appeal conference, arguing that, "viewed as a whole, the claims

are not of a scope to broadly pre-empt any of the concepts that the courts have found abstract", such as fundamental economic practices, methods of organizing human activities, idea of themselves, or mathematical relationships or formulas.  The applicants compared and contrasted their claims to claims analyzed in USPTO guidance examples, and concluded that the claims "go far beyond" the alleged abstract idea.  The pre-appeal panel was not persuaded and the applicants appealed.

In the appeal brief, the appellants set forth what has become the standard panoply of typically ineffective arguments: the examiner failed to examine the claims "as a whole"; the claims were lumped into a specious and overbroad category of abstract idea; the rejection did not properly determine what the claims were "directed to".  The appellants again argued that the claims did not tie up any concept that courts have identified as abstract, and that the wagering game machines, gaming network, and other features were not generic and amounted to significantly more.  Finally and most critically, the appeal brief contained the germ of an improvement argument, asserting that the claims were "directed to an improvement in a specific technology or technical field."

The examiner answered that "the method performed is a well-known and well-understood one wherein a check should be made to determine if a machine is available before assigning a task thereby insuring that the assignment is either carried out or not interfered with."  Moreover, "a gaming machine is a broad and generic category of computers and includes many well-known embodiments and therefore is still a generic machine."  Further, "just adding a network or computer to perform the basic abstract idea does not add significantly more since it is well-understood to automate a process using a network to communicate the automation so as to avoid assigning personal [sic] to perform the task which makes the operation more expensive."  The examiner referred in passing to the case of Planet Bingo, LLC v. VKGS LLC, 576 F. App'x 1005 (Fed. Cir. 2014).

In the reply brief, the appellants protested that the claims found to be abstract in Planet Bingo were directed to solving a tampering problem and minimizing security risks during bingo ticket purchases, which the Federal Circuit found similar to the consumer-transaction risk hedging held abstract in Bilski, but which, according to the appellants, were nothing like "determining a transmission plan" (the allegedly abstract idea to which the examiner found the appellants' claims were directed).

More significantly, as happened in the Vortman case discussed last week, by the time of the reply brief, the Federal Circuit had decided Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), holding software claims directed to a self-referential table subject-matter eligible under step one of Alice framework.  The appellants seized on the new holding, arguing that the alleged abstract idea was untethered from the claim language, and explicating an improvement argument:

The claimed invention is a specific implementation of an improvement in the functioning of a computer system by allowing a controller to synchronize the presentation of a gaming effect on a plurality of presentation devices spread across a plurality of wagering game machines, where the gaming effect is to be presented without interruption. . . . [It] does not comprise "simply adding conventional computer components to well-known business practices."  . . . [G]ame developers can face the problem that controlling content from multiple different sources can be challenging.  . . . [The claims] recite a solution implemented by a controller that synchronizes the presentation of a gaming effect on a plurality of available presentation devices spread across a plurality of wagering game machines, where the gaming effect is to be presented without interruption. Because the controller implements the solution, the game developer is freed from developing all of the software necessary to control the presentation.  Further, the functioning of the gaming system is improved by providing gaming effects that are presented without interruption by using available presentation devices and omitting unavailable presentation devices.
(Emphasis added.)

With the further benefit of the Federal Circuit's approval of software claims as a patent-eligible improvement in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), the PTAB panel agreed
that the claims on appeal are directed to a technological improvement rather than an abstract idea such as organizing human activity or a fundamental economic practice.  The claims employ status information and identifiers for content presentation devices to generate a transmission schedule to send to a plurality of content presentation devices in order to synchronize a gaming effect across a plurality of content presentation devices in a specific time interval.  Although the process claimed for synchronizing the gaming effect is perhaps simple and logical, the Examiner does not provide evidence that the claimed process is merely the automation of the same process previously performed by a human.
(Emphasis added.)  The Board thus reversed the § 101 rejections.

My two cents:

The examiner's final rejection and answer brief provided a judicial exception analysis of the type upheld by the Board in countless other cases.  The appellants won in this case thanks to the improvement arguments introduced in their reply brief.  This blog's recent post forecasting the growing importance of improvement arguments in overcoming Alice rejections set out some practice tips on when and how best to use such arguments.  This appeal win illustrates some of those tips in action.

The appellants made it explicit that they were arguing an asserted improvement (practice tip #3) and had the prescience or good luck to include at least the beginnings of an improvement argument in the appeal brief.  (It is not clear that the timing of the decision in Enfish would have been good enough cause to skirt the general rule that arguments not presented in the appeal brief are waived.  See Ex parte Borden, No. 2008-004312 (B.P.A.I. Jan. 7, 2010) (informative); Ex parte Nakashima, 93 USPQ2d 1834, 1840-41 (B.P.A.I. Jan. 7, 2010) (informative).)  They appropriately rebutted examiner efforts to characterize the claims as ineligibly directed to solving "an entrepreneurial rather than a technological" problem, to use the language of the Ultramercial case cited by the examiner (practice tip #2).  They explained the problem and were able to point to description in their specification as evidence of the problem, its substantiality, the intent to solve it, and thus the specific improvement rendered (practice tips #2, #4, #5, and #7).  Finally, the appellants had the examiner on record as to the closest prior art and were able to show a difference over that art, having already overcome art-based rejections that relied upon the reference (practice tip #8).

The appellants might also have had a bit of an upper hand over the examiner in this case, given that Enfish was decided between the time of the appeal brief and the reply brief and the examiner did not have the ability to respond to the improvement arguments.  In the time of the old MPEP § 1208.02, the examiner could have withdrawn the case to prosecution to address the improvement argument, but that appears to no longer be the case.  See MPEP § 1208(II) (jurisdiction passes to the Board after filing of a reply brief and the examiner will not "normally" have an opportunity for further argument without a Board remand with instructions to furnish a substitute examiner’s answer).

Next time we'll look at another software case in which the appellants managed to retrieve claims from the jaws of Alice rejections thanks to Board recognition of improvement arguments.

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