UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GSN Games, Inc., f/k/a Worldwinner.com, Inc.
`Petitioner,
`
`v.
`
`Arcade Planet, Inc.
`
`Patent Owner.
`
`U.S. Patent No. 5,816,918
`Filing Date: November 14, 1996
`Issue Date: October 6, 1998
`Title: Prize Redemption System for Games
`
`Covered Business Method Case No. (Pending)
`
`DECLARATION OF WILLIAM K. BERTRAM, PH.D.
`
`GSN Ex. 1002
`GSN v. Bally Gaming
`U.S. Patent 5,816,918
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GSN Games, Inc., f/k/a Worldwinner.com, Inc.
`Petitioner,
`
`v.
`
`Arcade Planet, Inc.
`
`Patent Owner.
`
`U.S. Patent No. 5,816,918
`Filing Date: November 14, 1996
`Issue Date: October 6, 1998
`Title: Prize Redemption System for Games
`
`Covered Business Method Case No. (Pending)
`
`DECLARATION OF WILLIAM K. BERTRAM, PH.D.
`
`GSN Ex. 1002
`GSN v. Bally Gaming
`U.S. Patent 5,816,918
`
`
`
`I, Dr. William K. Bertram, declare as follows:
`
`1.
`
`I have been retained by Knobbe, Martens, Olson & Bear, LLP
`
`(“Knobbe Martens”) on behalf of GSN Games, Inc. (“GSN”), to provide my
`
`opinion regarding the validity or invalidity of claims 1, 15-22, 24, 25, 28, 32-34,
`
`39, 73-75, 77 of U.S. Patent No. 5,816,918 (“the ’918 Patent”).
`
`2.
`
`My time in connection with this matter is being billed at my
`
`customary consulting rate of $390 per hour. My compensation is not contingent on
`
`the outcome of this matter or the specifics of my testimony. The fact that I am
`
`being compensated has not altered the opinions I have given or will give in this
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`case.
`
`3.
`
`Since 1997, I have been President and founder of WKB Associates,
`
`providing engineering development, mathematical analysis, and consulting
`
`services for the gaming industry. I am very familiar with the gaming industry and
`
`have experience with many types of games and game equipment, including those
`
`described in the ’918 Patent.
`
`4.
`
`I have attached a copy of my CV to this declaration. As detailed in
`
`my CV, I have worked in the gaming industry for over 32 years as an employee
`
`and a consultant. I received my Ph.D. degree in physics from the University of
`
`Michigan and spent several years in the academic world conducting research in
`
`high-energy electromagnetic interactions while on the faculty at the Massachusetts
`
`-1-
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`
`
`Institute of Technology, in Cambridge, MA. While working in the gaming
`
`business, I have had fifteen patents issued, many of which are related to gaming. I
`
`have also served as a technical expert in numerous patent infringement and trade
`
`secret cases, including in cases before the P.T.A.B.
`
`5.
`
`In preparing this declaration, I reviewed the ’918 Patent and its file
`
`history.
`
`6.
`
`I understand that GSN will include all the documents I identified
`
`above as exhibits to its petition for covered business method patent review in this
`
`matter.
`
`7.
`
`In forming my opinion, I have relied upon my experience, education
`
`and knowledge related to gaming machine systems. GSN’s counsel has also
`
`explained certain legal principles to me that I have relied upon.
`
`8.
`
`I understand that my opinion must be undertaken from the perspective
`
`of what would have been known or understood by a person having ordinary skill in
`
`the art at the time of the filing of the ’918 Patent in November of 1996. From
`
`analyzing the’918 Patent and the prior art, it is my opinion that a person having
`
`ordinary skill in the art for the ’918 Patent would have had a technical degree, such
`
`as a Bachelor of Science degree in either science or engineering, and at least two
`
`years of experience designing and developing gaming machine systems, or
`
`equivalent training or industry experience. A person with education in and
`
`-2-
`
`
`
`experience using general principles of engineering and computers would have
`
`ordinary skill in the technological area of the ‘918 Patent. A person who had
`
`worked in the gaming machine industry for a couple of years would have ordinary
`
`skill in the subject matter of the ‘918 Patent.
`
`9. With over 32 years of experience with gaming machines and the
`
`gaming industry, I am well acquainted with the level of ordinary skill required to
`
`implement the subject matter of the ’918 Patent. My opinion regarding the ’918
`
`Patent in this declaration is from the perspective of a person having ordinary skill
`
`in the art.
`
`10. GSN’s counsel has informed me that, in a covered business method
`
`patent review, the claims of the ’918 Patent are to be given their broadest
`
`reasonable constructions in light of the specification of the ’918 Patent.
`
`11.
`
`I understand that a patent claim is invalid under 35 U.S.C. § 101 if it
`
`claims a law of nature, natural phenomenon, or an abstract idea. I further
`
`understand that a patent claim would be ineligible for patent protection, and
`
`therefore invalid under 35 U.S.C. § 101, if it claims a “building block of human
`
`ingenuity,” or if it merely recites a generic computer implementation of an abstract
`
`idea. I further understand that a patent claim is invalid under 35 U.S.C. § 101, if,
`
`setting aside any insignificant computer-based or field of use limitations, the claim
`
`is directed solely to an abstract idea. Limiting an abstract idea to a single field of
`
`-3-
`
`
`
`use or adding token post-solution elements does not make an abstract concept
`
`patentable.
`
`12.
`
`I understand that a patent claim involving an abstract idea must
`
`contain “other elements or combination of elements, sometimes referred to as an
`
`‘inventive concept,’” that are “sufficient to ensure that the patent in practice
`
`amounts to significantly more than a patent upon the [abstract idea] itself.” I
`
`understand that an abstract idea with nothing more than “well-understood, routine,
`
`conventional activity” added is not patentable. Similarly, merely requiring a
`
`generic computer implementation fails to transform an abstract idea into a patent-
`
`eligible invention.
`
`13.
`
`I also understand that the “machine or transformation” test can be an
`
`important tool in determining the patent eligibility of claims. The “machine or
`
`transformation” test examines whether the claims are tied to a particular machine
`
`or apparatus, or transform a particular article into a different state or thing. If
`
`neither, then the test points to unpatentability.
`
`14.
`
`I further understand that in determining whether a patent claim recites
`
`patentable subject matter, the claim must be considered as a whole.
`
`15.
`
`I understand that a general purpose computer is not a “particular
`
`machine or apparatus” under this test.
`
`-4-
`
`
`
`16.
`
`I have considered these factors to determine if the challenged claims
`
`of the ’918 Patent are directed to patentable subject matter. After considering all of
`
`these factors, it is my opinion that the challenged claims are drawn to abstract ideas
`
`with, at most, the addition of well-understood, routine, and conventional elements
`
`that do not meaningfully limit the claim, and are therefore not patentable, as
`
`discussed below.
`
`17.
`
`In my opinion, the challenged claims are unpatentable under 35
`
`U.S.C. § 101 because they are directed to ineligible subject matter—in particular,
`
`the abstract idea of profitably operating games that award prizes. The challenged
`
`claims are directed to the general concept of profitably operating gaming devices
`
`that dispense redeemable prize vouchers to players. This basic concept is not
`
`patentable and was well-known in the prior art.
`
`18.
`
`The basic concept of profitably operating games that award prizes is
`
`well-known. It has been the building block of the gaming machine industry for
`
`more than a century. An old example of such activity is the operation of lotteries,
`
`which has been done in the United States since the 19th century. States often run
`
`for-profit lotteries to supplement tax revenue. In order for the lottery to be
`
`profitable, the amount of money paid out in prizes plus the cost of running the
`
`lottery must be less than the income from lottery ticket sales.
`
`-5-
`
`
`
`19.
`
`The abstract concept of profitably operating games that award prizes
`
`is one of the most basic concepts of the gambling and gaming machine industries.
`
`Without it, this country would never have witnessed the rise of gambling meccas
`
`such as Las Vegas and Atlantic City. The ubiquitous slot machine is a game itself,
`
`and one that, over time, takes in more money than it gives out in awards (unless it
`
`is broken).
`
`20.
`
`The general concept of profitably operating games that award prizes
`
`was the basic concept behind prize redemption games that have been staples at
`
`arcades and amusement parks for decades. This is recognized in the specification
`
`of the patent at 1:34-48. Popular party and social entertainment establishments
`
`such as Chuck-E-Cheese’s and Dave & Buster’s, founded in the 1970’s and 1980’s
`
`respectively, have built their companies in part on prize redemption gaming.
`
`Players pay to play games and earn tickets which can be redeemed for prizes,
`
`usually at a prize booth. The prizes on offer are always, by design, worth
`
`significantly less than the money generally required to be spent to earn the tickets
`
`needed to earn those prizes. For decades, prize redemption games have been a
`
`popular alternative to traditional video arcade games which generally only keep
`
`track of points and high scores and do not award physical prizes to players.
`
`21. With respect to the abstract concept of redemption of game credits,
`
`slot machines, which had traditionally paid out in coins every time a player won
`
`-6-
`
`
`
`anything, began tracking earned and purchased credits as early as the mid-1980’s.
`
`Players would put money into the machine and receive credit. Then, as they
`
`played, the machine would deduct money spent to play and add any money won to
`
`the credit total. When the player wanted to leave the machine, redeeming the
`
`credits required only hitting the “cash out” and collecting the resulting dispensed
`
`coins.
`
`22.
`
`In 1993, International Game Technology debuted its cashless ticket-in
`
`ticket-out (“TITO”) technology at the MGM Grand in Las Vegas. Machines with
`
`TITO technology can accept cash or a ticket from a player who wants to play on
`
`that machine. When the player is finished, however, a TITO machine outputs a
`
`ticket with a credit amount. That ticket can be inserted by the player into another
`
`machine, which will take note of the credit amount and continue to keep track just
`
`like the first machine. Or, if the player is finished playing and wishes to “cash-
`
`out,” the player can redeem the ticket for cash either at a cash redemption machine
`
`or at a cashier station.
`
`23. Machines using “smart” cards were already in development in the
`
`1980’s. According to I. Nelson Rose in his seminal 1986 book Gambling and the
`
`Law, “[t]he credit card slot would allow players to buy special cards from the slot
`
`cashier and record their winnings and losses electronically on the card itself.” (p.
`
`-7-
`
`
`
`84). This was a valuable advance because the handling of coins was the major
`
`point of failure for mechanical slot machines.
`
`24. Redemption of tickets has been the mechanism by which lotteries
`
`have functioned since the beginning. In a lottery, a player redeems a ticket for a
`
`prize. The redemption of tickets, or more generally, the redemption of credit, is
`
`another long-standing commercial practice which the ‘918 Patent attempts to
`
`claim. The basic concept of redeeming credit—like the basic concept of profitably
`
`operating games that award prizes—is a long-standing financial practice and a
`
`building block of economic activity.
`
`25.
`
`The language of independent claim 1, for example, is entirely abstract,
`
`with the only possible exception being the recitation of a generic, undefined “game
`
`apparatus.” Claim 1 claims in its entirety:
`
`1. A method for providing a prize redemption system for a
`game apparatus, said prize redemption system being customizable by
`an operator, said method comprising:
`
`receiving a prize list on a game apparatus, said prize list
`including names of a plurality of prizes available to be won by
`playing said game apparatus, wherein said game apparatus receives
`monetary income from players in exchange for use of said game
`apparatus, and wherein said players may win prize credits by playing
`said game apparatus;
`
`receiving a cost of each of said prizes on said game apparatus;
`
`and
`
`determining on said game apparatus a prize cost to be
`associated with each of said plurality of prizes, said prize cost being
`in terms of prize credits and determined in view of a desired
`
`-8-
`
`
`
`profitability of said game apparatus, and wherein a player of said
`game apparatus may select one of said prizes by exchanging a
`number of prize credits equal to said prize cost of said selected prize.
`(43:33-52)
`
`26.
`
`The broad language of claim 1 appears to cover the playing of any
`
`game that could conceivably be thought of to include an “apparatus” that “receives
`
`monetary income.” An “apparatus” will include slot machines, “skee-ball” lanes,
`
`whack-a-mole games, pinball machines, video games, and some pool tables, but
`
`also could be read to include any physical game that costs money to play and
`
`awards a prize, including casino games such as craps and roulette or carnival
`
`games like ring-toss.
`
`27. Claim 1 recites as one of its limitations “receiving a prize list.” The
`
`inclusion of such a limitation necessarily requires that the game apparatus also be
`
`able to display the prize list, otherwise a player would not be able to “select one of
`
`said prizes.” (43: 36, 50). “Displaying a prize table,” is, in fact, an explicit
`
`limitation in the next independent claim, claim 15. Whether implicit or explicit,
`
`the limitation of displaying a prize list or prize table is a long-standing, common-
`
`sense method of informing a game player of the potential rewards for playing.
`
`Displays of prizes are the main method by which players are incentivized to play
`
`games. Casino slot machines advertise prizes in multiple ways: first, in the form of
`
`payout tables for particular combinations that are usually displayed physically or
`
`electronically on the machines, and second, in the form of bright running tickers on
`
`-9-
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`
`
`top of the machine or machines touting mega jackpots towards which thousands of
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`other machines may be contributing. In arcades, prize redemption booths have
`
`always displayed prizes and their corresponding ticket costs to advertise to players
`
`what they could potentially win. And at carnivals, prizes often cascade from the
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`ceilings of game booths, arranged in terms of relative size and relative difficulty to
`
`win.
`
`28.
`
`In fact, because these generic limitations do little, if anything, to
`
`narrow the scope of claim 1, under the broadest reasonable interpretation, the
`
`claims can be read to preempt the offering of any prize in connection with the
`
`operation of a game for profit. The offering of a prize to a potential player as an
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`enticement for playing a physical game, under
`
`the broadest reasonable
`
`interpretation, appears to satisfy the “receiving a prize list on a game apparatus.”
`
`Such preemption would completely sideline the prize gaming industry.
`
`29.
`
`In claim 1, the limitation of “receiving a cost of said prizes on said
`
`game apparatus” is a recitation of yet more generic elements. Game operators
`
`know how much their prizes cost. That the game operator might put this
`
`information on the game apparatus is not novel. The specification acknowledges
`
`that communicating information to a game apparatus was well-known: “The game
`
`units can
`
`include appropriate network software
`
`to
`
`implement
`
`required
`
`communication protocols, as is well known to those skilled in the art.” (15:57-60).
`
`-10-
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`
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`The limitation is also abstract and recites no use of any physical structure or
`
`technology, other than that the costs are received at the “game apparatus.” Under
`
`the broadest reasonable interpretation standard, the “receiving” limitation could
`
`cover the simple act of physically placing the receipts for the purchase of the prizes
`
`on the game apparatus. It could similarly cover the operator of the gaming
`
`establishment shouting to an employee at the game apparatus what each prize had
`
`cost so that the employee could then set the prize cost appropriately.
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`30.
`
`Similarly, the limitation of “determining on said game apparatus a
`
`prize cost” associated with the prizes so that the game may be operated as a
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`“desired profitability” does not render the claim any less abstract or any more
`
`inventive. In fact, it does not appear to limit the claim at all under the broadest
`
`reasonable interpretation. The idea of “determining on said game apparatus a prize
`
`cost to be associated with each of said plurality of prizes” is a wholly abstract one.
`
`It is also a conventional practice in the industry, as game owners have long been
`
`setting prize costs profitably. The language of the claim would preempt any
`
`manual or mental calculation of prize costs by the operator of a game apparatus as
`
`long as that manual or mental calculation is done “on” the game apparatus. The
`
`use of such a broad term (“on”) may mean this limitation is not actually limiting in
`
`a significant sense. Even under a narrow reading of what it means to determine
`
`-11-
`
`
`
`prize costs “on” the apparatus, the claim would still entirely preempt the practice
`
`of having prize costs and payouts calculated at the machine level.
`
`31.
`
`For example, claim 1 would be satisfied in the following situation.
`
`An owner of a pinball machine decides to offer prize credits for points scored on
`
`the machine. He does this to encourage more players to play, thereby earning him
`
`more money. The owner purchases prizes, and, knowing what he paid for them,
`
`tapes a list of prizes to the machine and determines prize costs for each prize based
`
`on his assessment of the difficulty of attaining certain scores. The owner writes
`
`those prize costs onto the list of prizes.
`
`32. As another, and even more simple example, claim 1 would be
`
`satisfied by the operator of a ring-toss booth at a Carnival simply assigning
`
`numbers of successful tosses required for various categories of prizes, basing those
`
`numbers on how many ring tosses the average player would take to amass the
`
`score needed for each category.
`
`33.
`
`It should be noted the preceding examples read on claim 1 if the
`
`owner of the pinball machine or the operator of the ring-toss booths decides cost of
`
`the prizes “in view of a desired profitability.” Adding the limitation that
`
`something should be done “profitably” is the application of a purely abstract idea
`
`and fundamental financial practice.
`
`-12-
`
`
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`34.
`
`There is nothing in these limitations that would limit the claim to any
`
`particular technical environment. Nor are the recited structures specialized in any
`
`way. The recited “apparatus” is wholly generic as described in the specification.
`
`For example, in the description of Figure 1, the specification teaches that the game
`
`apparatus is a “generic game apparatus or ‘game unit’” with a “generic architecture
`
`using components typical to game apparatuses.” (5:49-50,55-56). Under the
`
`broadest reasonable interpretation, a “game apparatus” is any generic device on
`
`which games may be played. These recitations do not transform the claim into
`
`anything more than an attempt to preempt the idea of profitably awarding prizes to
`
`players for playing games.
`
`35. As explained, claim 1 is directed to an abstract idea, and worryingly
`
`so. Because the recited limitations in claim 1 are generic, abstract, or both, a broad
`
`reading of claim 1 could potentially encompass large numbers of gaming
`
`establishment operations. Any profitable operation of a prize redemption game,
`
`even those that have existed for scores of years, in which the costs for the prizes
`
`are determined “on” the machine, could be subject to a claim for infringement of
`
`the ‘918 Patent. Without the ability to offer prizes for profit, there would be no
`
`incentive to continue offering prizes. Thus, the gaming industry would generally
`
`stop awarding prizes at all. It is absurd that a patent that was not filed until 1996
`
`-13-
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`
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`could purport to claim inventorship of such long-standing gaming industry
`
`practices.
`
`36. Claim 1 does not recite any inventive technological features, nor can I
`
`identify any technological problem or solution. In fact, the claim seems wholly
`
`divorced from technology. The abstract idea which the game is directed to –
`
`profitably operating games that award prizes – is accomplished using the abstract
`
`steps of providing a list of prizes to and determining prize costs on the apparatus.
`
`As discussed above, receiving a list of costs at the apparatus is an abstract and
`
`generic limitation. It is my opinion that claim 1 is not patentable under 35 U.S.C.
`
`§ 101.
`
`37.
`
`Independent claim 15 is directed to a method similar to the method of
`
`claim 1. Claim 15 recites additional physical limitations, but under any reading, it
`
`is readily apparent that these limitations are well-known, conventional elements.
`
`Claim 15 claims:
`
`A method for providing a prize redemption system for a game
`apparatus, said prize redemption system being customizable by an
`operator, the method comprising:
`
`displaying a prize table on a display of said game apparatus;
`
`receiving prize input from said operator which is stored on a
`storage medium of said game apparatus and displayed in said prize
`table, said prize input describing a plurality of prizes that are to be
`available in said redemption system to players of said game
`apparatus, wherein said game apparatus receives monetary income
`from players in exchange for use of said game apparatus;
`
`-14-
`
`
`
`receiving payout input from said operator which is stored on
`said storage medium, said payout input indicating a desired amount
`of payout that said operator wishes to provide back to players of said
`game apparatus in terms of a monetary value of said plurality of
`prizes;
`
`determining a prize cost for each of said plurality of prizes in
`terms of said prize credits winnable by playing a game on said game
`apparatus, wherein said prize cost is determined in accordance with
`said desired amount of payout and is stored in said storage medium;
`
`receiving monetary input from a player on said game
`apparatus;
`
`implementing a game process and receiving input from said
`player during said game process, wherein said player is provided with
`a game score based on an outcome of said game process, wherein
`said player is provided with a number of prize credits based on said
`game score;
`
`displaying a prize selection screen on said display, said prize
`selection screen portraying a plurality of prizes and a prize cost for
`each of said prizes;
`
`receiving a selection from said player selecting at least one of
`said prizes, wherein said selected prize has a prize cost less than or
`equal to said number of prize credits provided to said player; and
`
`dispensing a physical indication of said selected prize to said
`player, wherein said player is able to redeem at least one of said
`prizes with said dispensed indication.
`
`38.
`
`In claim 15, the generic steps of “displaying… on a display,”
`
`“receiving… input… which is stored on a storage medium,” were well-known,
`
`routine activities performed by general purpose computers. The generic element of
`
`a “storage medium” was a well-known component of a general purpose computer
`
`in 1996. In fact, in the late 1970’s and early 1980’s, slot machines were required
`
`-15-
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`
`
`to have a battery-backed CMOS random access memory chip to store data so that
`
`in the event of a power failure, the data wouldn’t be lost and the game could
`
`continue exactly where it was when the power went out. As described, the
`
`“storage medium” component is entirely generic and is not limited to a particular
`
`machine or apparatus for performing the claimed method. Furthermore, the
`
`challenged claim does not require a specific type of component – any conventional
`
`“storage medium” may be used to perform the claimed steps. The challenged
`
`claim does not recite a particular machine or apparatus for performing the steps of
`
`the claimed method. Further, displaying prizes to induce players to play a game is
`
`well known in the game industry and has long been practiced by carnivals, arcades,
`
`and casinos.
`
`39.
`
` Furthermore, under the broadest reasonable interpretation, a “storage
`
`medium” need not be a component of a general purpose computer at all. The term
`
`“storage medium” does not require a hardware implementation, but could be any
`
`storage of data. The claim’s recitation of “receiving monetary input” similarly
`
`does not require a hardware implementation—“receiving monetary input” need not
`
`be computer-based, but could be something as simple and well-known as a coin
`
`slot.
`
`40.
`
`The generic step of “dispensing a physical indication of said selected
`
`prize wherein said player is able to redeem at least one of said prizes with said
`
`-16-
`
`
`
`dispensed indication,” is a generic feature long part of redemption games, as
`
`described in the specification of the ‘918 Patent at Col. 1:34-49. While this
`
`limitation recites the dispensing of a “physical” indication, the limitation is clearly
`
`directed to the concept of providing a physical indication, rather than any particular
`
`method of doing so. This is plain to see, as the limitation is devoid of any
`
`particular structure or technology.
`
`41. When stripped of generic and well-known limitations, claim 15 boils
`
`down to an attempt to claim the same abstract idea as claim 1, with the added
`
`details that the prize credits are to be awarded based on a “game score,” and a
`
`“physical indication” of the prize selected is dispensed. Awarding players money
`
`or credit based on performance while playing a game has been a fundamental
`
`aspect of gaming machines since they game into existence. For example, awarding
`
`prize credits based on a score has long been the basis for simple prize redemption
`
`games like skee ball. And as described above, the idea of dispensing a physical
`
`indication of a prize has been done for a long time in the carnival, arcade, and
`
`gaming industries, and is abstract and not protectable. These recitations recite
`
`nothing new and do little to limit the expansive scope of the claim. Further, having
`
`a player select prizes whose prize cost is less than the amount of prize credits that
`
`the player simply conforms to the longstanding and fundamental rule of commerce
`
`that a seller only provides a customer with a selected good if the customer has the
`
`-17-
`
`
`
`means to purchase. Thus, like claim 1, claim 15 is an attempt to disproportionately
`
`preempt the use of the concept of profitably operating games that award prizes.
`
`Claim 15, in my opinion, is not patentable under 35 U.S.C. § 101.
`
`42.
`
`Independent claim 21 recites a “game apparatus” that generally
`
`follows the same lines as the method of claim 15. The physical elements recited
`
`are all generic, well-known game machine features. Specifically, “a game
`
`processor for controlling a game on said game apparatus,” “an input device
`
`coupled to said game processor and providing commands to said game from said
`
`player,” “an output display device coupled to said game processor for providing
`
`visual feedback for said game,” and “a prize output device coupled to said game
`
`processor for outputting an indication of said selected prize to said player,”
`
`represent common game machine elements with normal capabilities. As described,
`
`these components are entirely generic, well-known, and are not limited to a
`
`particular machine or apparatus for performing the claimed method. Furthermore,
`
`the challenged claim does not require any specific types of components - all of the
`
`requirements of the claim can be met with the use of ordinary game system
`
`technology well-established before the filing date of the ‘918 Patent. Any
`
`conventional “processor,” “input device,” “output display device,” and “output
`
`device” may be used to perform the claimed steps.
`
`-18-
`
`
`
`43.
`
`Furthermore, with respect to claim 21, the “receiving means for
`
`receiving monetary input from said player, said receiving means being coupled to
`
`said game processor,” is supported in the specification only by well-known ways
`
`for a game apparatus to accept money. “Monetary input device 14,” is the
`
`corresponding structure for this limitation, which, according to the specification,
`
`can be a coin slot, a card reader, a bill acceptor, or a player ID or password. These
`
`are all generic features with nothing inventive. (6:34-59).
`
`44.
`
`Finally, the “means for providing a prize selection menu on said
`
`display device,” while somewhat unclear, is parallel to the general concept of
`
`listing prizes and their corresponding costs. This limitation appears to correspond
`
`to Figures 6b and 6c, according to the specification: “A game unit 10a or 10b may
`
`also request information such as a prize selection menu, as described below with
`
`respect to FIGS. 6b and 6c.” (19:20-22). This limitation, again, is only supported
`
`by generic recitations of well-known technology. For example, according to the
`
`written description, “[t]he prize selection menu can be implemented as a ‘web
`
`page’ in HTML or other standard formats.” (19:23-25). The prize selection menu
`
`itself is described in extraordinarily broad terms to cover, essentially, any possible
`
`way of presenting prizes and prize costs to a player: “[i]n the described
`
`embodiment, a prize is identified by a text name/description in a table format. In
`
`other embodigments, other text information related to the prize can also be
`
`-19-
`
`
`
`provided, as well as pictorial descriptions of prizes, as shown in FIG. 6c.” (26:63-
`
`67). The presentation of redeemable prizes to game players was done long before
`
`the ’918 Patent was filed. This claim recites the implementation of such a
`
`presentation on a generic game apparatus with generic technology. Nothing new is
`
`provided. It is clear to me that claim 21 does not add anything beyond “well-
`
`understood, routine, conventional activity” to the abstract and non-innovative idea
`
`to which it is directed.
`
`45.
`
`Independent claim 34, as amended during ex parte reexamination,
`
`contains many of the same limitations as claims 1 and 15, but in the context of
`
`providing a tournament game. See Ex Parte Reexamination Certificate for the
`
`’918 Patent, (1:24-45). The claim is still directed to the same general abstract idea
`
`as the other method claims, i.e. profitably operating games that award prizes,
`
`except claim 34 recites additional common sense adjustments to provide for a
`
`tournament. In this claim, money is received from multiple players who are
`
`participating in the tournament. The value of the tournament prize, which is
`
`eventually awarded to the winner, is a portion of the money received. The claim
`
`includes additional generic computer technology in limitations that recite the
`
`playing of the tournament over a network and the tournament prize value being
`
`stored on a server on that network.
`
`-20-
`
`
`
`46. Using computer networks for the operation of games was well-known
`
`in 1996, as was storing game information on servers. Electronic pull-tab machines
`
`have been operating since the early nineties. A traditional paper pull-tab ticket
`
`required opening perforated windows on the back of the ticket to reveal symbols,
`
`and then comparing those symbols to winning combinations listed on the front of
`
`the ticket. A winning ticket was redeemable for a monetary prize such as money,
`
`or a non-monetary prize like sports memorabilia. Electronic pull-tab game
`
`machines operate by accepting a wager from a player, in exchange for enrolling the
`
`player in a simulated pull-tab game. Communicating the wager to a central server
`
`which then ran a randomized process to determine if the wager was a winner and,
`
`if so, what the prize was. The result was communicated back to the electronic pull-
`
`tab machine running the simulated game to deliver the result. Because computer
`
`networks and servers were well-known before the filing date of the ‘918 Patent,
`
`neither limitation was an inventive idea or application. Thus, the claim does not
`
`provide anything that takes it beyond an attempt to claim the abstract idea itself of
`
`profitably operating games that award prizes.
`
`47. Based on my experience in gaming systems, the dependent claims fail
`
`to describe further any concept that would have been inventive in 1996. Instead,
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`each describes known, routine, and conventional steps in gaming systems. Several
`
`of these dependent claims add further abstract limitations. The subject
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