David MahonDownload PDFPatent Trials and Appeals BoardMay 11, 202015716844 - (D) (P.T.A.B. May. 11, 2020) Copy Citation 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. 15/716,844 09/27/2017 David Mahon 347_004US1 2335 97462 7590 05/11/2020 Mark A. Litman & Associates, P.A. 7001 Cahill Road, Ste. 15A Edina, MN 55439 EXAMINER GARNER, WERNER G ART UNIT PAPER NUMBER 3715 MAIL DATE DELIVERY MODE 05/11/2020 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DAVID MAHON ____________ Appeal 2020-000776 Application 15/716,844 Technology Center 3700 ____________ Before JENNIFER D. BAHR, JOHN C. KERINS, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the rejection of claims 1, 2, 4–11, and 13–21 under 35 U.S.C. § 101 as being directed to patent ineligible subject matter. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Full Color Gaming, LLC as the real party in interest. Appeal Br. 3. Appeal 2020-000776 Application 15/716,844 2 THE INVENTION Appellant’s invention relates to “games and more particularly to wagering games and method[s] of playing wagering games.” Spec. ¶ 2. Claims 1, 18, and 19 are the independent claims on appeal. Claim 1, reproduced below, with reference numerals (i) to (iv) added for clarity, is illustrative of the subject matter on appeal. 1. A method of initiating execution of wagering event in a point count event using playing card symbols comprising: [(i)] providing a set of randomized playing cards comprising five distinct sets of face-colored playing cards, four of the five distinct sets having numeric values evenly distributed among sets of 1, 2, 3, 4, 5, 6, 7, 8, 9, 10 and 11, with only one of the five distinct sets valued as negative numeric values of -1, -2, -3, -4, -5, -6, -7, -8, -9, -10 and -11; [(ii)] delivering two random playing cards from the set of randomized playing cards to each of a player position hand as an initial player position hand and a banker position hand as an initial banker position hand; [(iii)] summing respective numeric values of the two random playing cards in each of the player position hand and the banker position hand, including any negative numeric values; [(iv)] determining if there is a concluding outcome in a comparison of respective summed numeric values in the player position hand and the banker position hand according to determination of whether a game ending condition exists of: a) at least one the initial player position hand and the initial banker position hand has a summed numeric value of less than zero and an absolute numeric value difference from the summed numeric value of the banker hand and the summed numeric value of the player hand, respectively, of more than 11; or b) both the initial player position hand and the initial banker position hand have 0 or positive summed respective numeric values by modulo 10 counting and at Appeal 2020-000776 Application 15/716,844 3 least one of the initial player position hand and the initial banker position hand has a positive summed value of 8 or 9. OPINION Appellant argues claims 1, 2, 4–11 and 13–21 as a group. Appeal Br. 9–37. We select claim 1 as representative, and claims 2, 4–11 and 13–21 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2018). An invention is patent eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” See 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. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). 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 Services v. Prometheus 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); Appeal 2020-000776 Application 15/716,844 4 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 (1854))); 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 176, 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 of our patent laws, . . . and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Diehr, 450 U.S. 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.”), and id. at 191 (citing Benson and Flook). 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 Appeal 2020-000776 Application 15/716,844 5 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. (quoting Mayo, 566 U.S. at 77). “[M]erely [requiring] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. The PTO published revised guidance on the application of 35 U.S.C. § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter “Revised 2019 Guidance, 84 Fed. Reg.”). Under that guidance, we first look to whether the claim recites: (1) 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 (2) additional elements that integrate the judicial exception into a practical application (see Manual of Patent Examining Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th Ed., Rev. 08.2017 (Jan. 2018))). 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; (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field; 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 generally Revised 2019 Guidance, 84 Fed. Reg.; see also MPEP § 2106.05(d)). Appeal 2020-000776 Application 15/716,844 6 Analysis under the Revised Guidance Step 1: Does claim 1 fall within a statutory category of § 101? We examine whether the claim recites one of the enumerated statutory classes of subject matter, i.e., process, machine, manufacture, or composition of matter, eligible for patenting under 35 U.S.C. § 101. Claim 1 recites a method of initiating execution of a wagering event in a point count event using playing card symbols; therefore, claim 1 recites one of the statutory classes: a process under 35 U.S.C. § 101. Step 2A, Prong One: Does claim 1 recite a judicial exception? Next, we determine whether claim 1 recites subject matter falling within a judicial exception, for example, an abstract idea, wherein a grouping of subject matter within the category of abstract ideas is certain methods of organizing human activity. See Revised 2019 Guidance, 84 Fed. Reg. at 50–52. As an initial matter, only the preamble of claim 1 involves a wagering event, whereas the remainder of claim 1 recites rules for playing a card game. Generally, a preamble is not limiting where an applicant defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention. See Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). Here, we consider whether rules for playing a card game—apart from placing and resolving wagers—is an abstract idea. In In re Smith, the court concluded that “the rejected claims, a set of rules for a game, are drawn to an abstract idea.” In re Smith, 815 F.3d 816, 819 (Fed. Circ. 2016). Here, the limitations of claim 1 are rules for a game. In particular, step (i) of claim 1 requires the dealing cards (i.e., (i) Appeal 2020-000776 Application 15/716,844 7 “delivering two random playing cards from the set of randomized playing cards to each of a player position hand as an initial player position hand and a banker position hand as an initial banker positing hand”), and steps (iii) and (iv) determine game outcomes according to summing and comparing values (i.e., (iii) “summing respective numeric values of the two random playing cards in each of the player position hand and the banker position hand, including any negative numeric values” and (iv) “determining if there is a concluding outcome in a comparison of respective summed numeric values in the player position hand and the banker position hand according to determination of whether a game ending condition exists of” the values as calculated pursuant to options (a) or (b), as claimed). Thus, claim 1 recites, individually and as a whole, an abstract idea, and further, a method of organizing human activity by describing interactions between people including following rules or instructions. See Revised 2019 Guidelines, 84 Fed. Reg. at 52; see also In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160 (Fed. Cir. 2019) (wherein the court agreed that rules for playing games may be characterized as “one type of method of organizing human activity”). Appellant argues that Smith and Guldenaar assert patent-ineligibility for wagering games “without legal foundation.” Appeal Br. 14. However, we follow the precedence and guidance of our reviewing court. Additionally, we are unpersuaded that there is any basis to adopt Appellant’s “balanced approach,” wherein “patent-eligibility should be applied based on a graded valuation of the potential for impacting the ‘…the basic tools of scientific and technologic work.’” Appeal Br. 15; see also id. at 24–26. Appeal 2020-000776 Application 15/716,844 8 Appellant also argues that the subgrouping of “certain methods of organizing human activity” as an abstract idea pertains to “social” activity, “rather than small group . . . activity,” such as “a dealer versus a player competition.” Appeal Br. 29. We refer to the Revised 2019 Guidance: (b) Certain methods of organizing human activity—fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). 2019 Revised Guidance, 84 Fed. Reg. at 52. Thus, we do not find support for Appellant’s argument that certain methods of organizing human activity requires organizing a large group of people; notably, teaching may involve a single teacher and a single student. In sum, we find that claim 1 recites an abstract idea, and more particularly, a method of organizing human activity, namely, instructions for playing a card game. Step 2A, Prong Two: Does claim 1 recited additional elements that integrate the judicial exceptions into a “practical application”? Following our Office guidance, having found that claim 1 recites a judicial exception, we next determine whether the claim recites “additional elements that integrate the exception into a practical application” (see MPEP §§ 2106.05(a)-(c), (e)-(h)). See 2019 Revised Guidance, 84 Fed. Reg. at 54. Limitation (i) of claim 1 recites providing a set of randomized playing cards comprising five distinct sets of face-colored playing cards, four of the five Appeal 2020-000776 Application 15/716,844 9 distinct sets having numeric values evenly distributed among the sets of 1, 2, 3, 4, 5, 6, 7, 8, 9, 10 and 11, with only one of the five distinct sets valued as negative numeric values -1, -2, -3, -4, -5, - 6, -7, -8, -9, -10 and -11. Thus, the playing cards are not a standard deck of fifty-two cards including values of one to ten, jack, queen, and king, in each of four suits. In Smith, the court acknowledged that “appending purely conventional steps to an abstract idea does not supply a sufficiently inventive concept,” and the court held that “[j]ust as the recitation of computer implementation fell short in Alice, shuffling and dealing a standard deck of cards are ‘purely conventional’ activities,” which are not inventive concepts sufficient to transform the claimed abstract idea into a patent-eligible application.2 Smith, 815 F.3d at 819 (emphasis added). The court stated that “[t]hat is not to say that all inventions in the gaming arts would be foreclosed from patent protection under § 101,” and that the court “could envisage, for example, claims directed to conducting a game using a new or original deck of cards potentially surviving step two of Alice.” Id. Here, claim 1 recites such a non-standard deck of cards. Subsequently, in Guldenaar, the court recognized that, “[a]ccording to Appellant, the primary novelty of the claimed invention is the markings (or lack thereof) on the dice, which have only particular faces marked.” 2 Regarding the specific, contextual meaning of the term “conventional” relative to the 2019 Revised Guidance, we evaluate claim elements, which are in addition to claim elements reciting the judicial exception, both individually and in combination, under Step 2B herein to determine whether an inventive concept (i.e., a concept that amounts to significantly more than the judicial exception itself) is recited. See 2019 Revised Guidance, 84 Fed. Reg. at 56. In particular, we consider whether a limitation or combination of elements simply append well-understood, routine, or conventional activities to the claim. Id. (emphasis added). Appeal 2020-000776 Application 15/716,844 10 Guldenaar, 911 F.3d at 1159. Regarding whether the non-standard markings on the dice was an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application, the court reasoned that [t]he markings on Appellant’s dice . . . constitute printed matter . . . , and this court has generally found printed matter to fall outside the scope of § 101. See AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1064 (Fed. Cir. 2010. “Claim limitations directed to the content of information and lacking a requisite functional relationship are not entitled to patentable weight because such information is not patent eligible subject matter under 35 U.S.C. § 101.” Praxair Distrib., Inc. v. Mallinckrodt Hosp. Prod. IP Ltd., 890 F.3d 1024, 1032 (Fed. Cir. 2018). Each die’s marking or lack of marking communicates information to participants indicating whether the player has won or lost a wager, similar to the markings on a typical die or deck of cards. Accordingly, the recited claim limitations are directed to information. Additionally, the printed indicia on each die are not functionally related to the substrate of the dice. Unlike in In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983), where digits were printed on a band in such a manner that the digits exploited the endless nature of the band, and the particular sequence of digits was critical to the invention disclosed in the claims, or in re Miller, 418 F.2d 1392 (CCPA 1969), where the volumetric indicia on the side of a cup created a specialized measuring cup, the markings on each of Appellant’s dice do not cause the die itself to become a manufacture with new functionality. Guldenaar, 911 F.3d at 1161. The court concluded that “[b]ecause the only arguably unconventional aspect of the recited method of playing a dice game is printed matter, which falls outside the scope of § 101, the rejected claims do not recite an ‘inventive concept’ sufficient to ‘transform’ the claimed subject matter into a patent-eligible application of the abstract idea.” Id. at 1162. Appeal 2020-000776 Application 15/716,844 11 Similarly, we find that the claimed set of non-standard playing cards, as defined in claim 1, communicates information to the player and banker indicating a point count—akin to markings on a typical deck of cards, standard dice, and even non-standard dice. Thus, the claim limitations reciting the non-standard playing cards are directed to information, and for the same reasons discussed supra regarding the dice in Guldenaar, we determine that the printed indicia on each card of the set of cards is not functionally related to the substrate of the card. Appellant argues that the claimed set of non-standard playing cards have “unique functional capabilities” including “the negative point count from only a single color in the set of cards.” Appeal Br. 28. Appellant concludes that [t]he fact that this functionality is provided by the informational content on the playing cards (as specifically required by In re Miller and debatably sidetracked by In re Guldenaar . . .) must be upheld as consistent with the holdings in In re Smith . . . and In re Miller . . . . Unless both Smith and Miller are to be ignored or overruled, the rejection under 35 USC 101 must be overturned based on the specific evidence of this case. Id. at 29. Appellant also submits that the subject matter of dependent claims 3 and 5 “add[] weight of functional benefit into the claims.” Id. at 32. See Appeal Br. 40 (Claims App.) (wherein claim 3 is cancelled; and wherein claim 5, which depends from claim 1, recites, in relevant part, an option “c” for determining an outcome for the game based on point count). We are not persuaded by Appellant’s argument. “Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.” In re Gulack, at 1385 (citing In re Miller, 418 F.2d 1392 (CCPA 1969)). In Appeal 2020-000776 Application 15/716,844 12 Miller, the applicant claimed devices for preparing fractional portions of recipes, such as a measuring cup or measuring spoon bearing volumetric indicia that differed from the actual volume of the cup or spoon and a legend that provided the ratio between the actual volume of the cup and indicated volume. Miller, 418 F.2d at 1394. For example, to prepare a recipe for four people that is designed to serve twelve, a cook would select measuring devices bearing a “1/3 recipe” legend and follow the recipe as written, measuring each ingredient using the indicia printed on the device but actually obtaining one third of each specified amount without performing any calculations. Id. The Court of Customs and Patent Appeals held that the functional interaction between the claimed cup, indicia, and legend yielded a new and nonobvious invention. Id. at 1396. The substrate (measuring cups and spoons) were interrelated with the printed matter (volumetric indicia and legend)—the cups and spoons were ineffective as measuring devices without the indicia and legend. Here, consistent with Guldenaar, we find that the negative point count, color, and other indicia printed on the claimed non-standard playing cards is merely information printed on a substrate, which does not perform a function relative to the substrate, as in In re Miller. Further, claim 3 is cancelled, and the limitation of claim 5 regarding an option “c” for determining an outcome for the game based on point count is an additional abstract rule for the game, but does not add to the functionality of the printed matter on the cards. Thus, our finding is consistent with Smith and Miller. Appellant also argues that “[t]he nature of physical playing cards (as recited in the claims) must be considered with respect to their functional nature in the real world.” Appeal Br. 27; see also id. at 27–29. However, Appeal 2020-000776 Application 15/716,844 13 the physicality of the cards themselves fails to integrate the abstract idea of rules for playing a card game into a practical application. The non-standard, or originality of the claimed deck aside, and relative to printed matter, as discussed supra, physical playing cards do not bring the claims within patent-eligible territory. See In re Smith, 815 F.3d at 819 (addressing Appellant’s argument that the claims require “physical playing cards,” the court held that “[j]ust as the recitation of computer implement fell short in Alice, shuffling and dealing a standard deck of cards are ‘purely conventional’ activities.”) In sum, we conclude that the claim limitations reciting the non- standard playing cards are not sufficient to integrate the exception into a practical application. Accordingly, we find claim 1 is directed to the judicial exception of an abstract idea, and more particularly, a method of organizing human activity, namely, instructions for conducting card game. Step 2B: Does claim 1 recite an “inventive concept” or “significantly more”? We next consider whether claim 1 recites any elements, individually or as an ordered combination, that transform the abstract idea into a patent eligible application, e.g., by providing an inventive concept. Alice, 573 U.S. at 217–18. The guidance similarly states, under Step 2B, “examiners should . . . evaluate the additional elements individually and in combination . . . to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself).” 2019 Revised Guidance, 84 Fed. Reg. at 56 (emphasis added). Appeal 2020-000776 Application 15/716,844 14 Appellant argues that [i]n the present claimed subject matter, . . . a standard playing card deck (fifty-two cards, four suits, and thirteen ranks and 10-11 point count ranges with four of the ranks having identical point counts (e.g., 10, Jack, Queen and King) is replaced by a five-colored, 55-card, 11-ranks deck, with no cards with variable ranks. This is a new and unique deck that has been found on the record to be novel and unobvious. Appeal Br. 17. Appellant submits that [u]nder both the original standards provide[d] by In re Smith, supra and any balanced evaluation of evidence as proposed herein, this recited specialized deck of playing cards provides “something more” by way of specific structure and function in the claims, and falls within the “new or unique deck of cards” identified as bases for overcoming a prima facie finding of a claim including an abstract idea. Id. at 18; see also id. at 27. As discussed supra, the claim recitations involving the set of non- standard playing cards is printed matter outside the scope of 35 U.S.C. § 101, and therefore, not subject matter available for adding significantly more to the abstract idea itself. To the extent Appellant argues that the claimed non-standard playing cards are “novel and unobvious,” and therefore, provide an inventive concept (Appeal Br. 17–18), the analysis is not an evaluation of novelty or nonobviousness, 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, 573 U.S. at 218 (citation omitted); see also SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (“We may assume that the techniques claimed are [g]roundbreaking, innovative, or even brilliant, but that is not Appeal 2020-000776 Application 15/716,844 15 enough for eligibility. Nor is it enough for subject-matter eligibility that claimed techniques be novel and nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 102 and 103.” (citations and quotations omitted)). Accordingly, we sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 101, and claims 2, 4–11, and 13–21 fall therewith. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4–11, 13–21 101 Eligibility 1, 2, 4–11, 13–21 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 Copy with citationCopy as parenthetical citation