David Mahon

Patent Trials and Appeals Board

May 11, 2020

15693746 - (D) (P.T.A.B. May. 11, 2020)

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.
15/693,746 09/01/2017 David Mahon 347_004US1 3541
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 2019-006019
Application 15/693,746
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 1–20 under 35 U.S.C. § 101 as being directed to patent ineligible
subject matter.2 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.
2 The Examiner’s objections to the claims are petitionable, not appealable,
matters under 37 C.F.R. § 1.181. See MPEP § 706.01.
Appeal 2019-006019
Application 15/693,746
2
THE INVENTION
Appellant’s invention relates to “games and more particularly to
wagering games and method[s] of playing wagering games.” Spec. ¶ 2.
Claim 1, reproduced below as the sole independent claim on appeal, with
paragraph indentations and reference numerals (i) to (ix) added for clarity, is
illustrative of the subject matter on appeal.
1. A method of executing a wagering game using non-standard
playing cards comprising:
[(i)] a player position placing a wager on an underlying
total point count wagering event;
[(ii)] providing a set of non-standard playing cards
comprising a set of fifty-five physical playing cards having five
equal numbers of colored sets of non-standard playing cards
having number values of 1, 2, 3, 4, 5, 6, 7, 8, 9, 10 and 11 on a
playing card face;
[(iii)] providing a first two random playing cards from the
set of non-[standard] playing cards to a player position having
made the wager on the underlying total point count wagering
event, thereby forming an initial player position hand;
[(iv)] providing a second two random playing cards from
the set of non-standard playing cards to a dealer position after the
player position has made the wager on the underlying total point
count wagering event, thereby forming an initial dealer position
hand;
[(v)] the player position standing on the initial player
position hand or taking an at least one additional random playing
card from the set of non-standard playing cards to form a final
player position hand;
[(vi)] the dealer positon standing on the initial dealer
position hand or taking an at least one additional random playing
card from the set of non-standard playing cards to form a final
dealer position hand;
Appeal 2019-006019
Application 15/693,746
3
[(vii)] determining a respective total point count in the
final player position hand and the final dealer position hand, with
points contributed by only one of the five equal numbers of
colored sets of non-standard playing cards being only negative
value points;
[(viii)] comparing the respective total point count in the
final player position hand and the final dealer position hand to
both a target point count and against each other to determine a
wager winning outcome on the underlying total point count
wagering event to determine whether there is a wager winning
outcome a wager losing outcome or a wager typing outcome; and
[(ix)] resolving the wager based on the determination of
whether there is the wager winning outcome, the wager losing
outcome or the wager tying outcome.

OPINION
Appellant argues claims 1–20 as a group. Appeal Br. 11–36. We
select claim 1 as representative, and claims 2–20 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
Appeal 2019-006019
Application 15/693,746
4
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);
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
Appeal 2019-006019
Application 15/693,746
5
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
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
Appeal 2019-006019
Application 15/693,746
6
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)).

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 executing a wagering game using non-standard playing
cards; 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.
A wagering game fundamentally involves the exchanging and
resolving of financial obligations based on probabilities. See In re Smith,
815 F.3d 816, 817–18 (Fed. Cir. 2016). Similar to claim 1 of Smith, each
step of claim 1 is a basic aspect of a wagering game, for example, involving
the placing of wager(s), instructing game play, determining game outcomes,
Appeal 2019-006019
Application 15/693,746
7
and resolving wagers. In particular, step (i) of claim 1 requires the basic
aspect of placing a wager (i.e., (i) “a player position placing a wager on an
underlying total point count wagering event”), which is similar to step (b) of
claim 1 of Smith, wherein a dealer accepts wagers from players. Id. at 817.
Continuing, steps (iii) to (vi) of claim 1 recite the basic aspect of
instructions for game play, and specifically, instructions to form initial and
final player and dealer hands: (iii) “providing a first two random playing
cards from the set of . . . playing cards to a player position having made the
wager on the underlying total point count wagering event, thereby forming
an initial player position hand;” (iv) “providing a second two random
playing cards from the set of . . . playing cards to a dealer position after the
player position has made the wager on the underlying total point count
wagering event, thereby forming an initial dealer position hand;” (v) “the
player position standing on the initial player position hand or taking an at
least one additional random playing card from the set of . . . playing cards to
form a final player position hand;” and (vi) “the dealer positon standing on
the initial dealer position hand or taking an at least one additional random
playing card from the set of . . . playing cards to form a final dealer position
hand.” These steps (iii) to (vi) of claim 1 are similar to steps (c), (f), and (g),
for example, of claim 1 of Smith, wherein the dealer deals cards, and the
players and dealer may stand on or take additional cards. Smith, at 817.
Steps (vii) to (viii) of claim 1 involve the basic aspect of determining
game outcomes by calculating and comparing total point counts for the final
hands: (vii) “determining a respective total point count in the final player
position hand and the in the final dealer position hand, with points
contributed by only one of the five equal numbers of colored sets of . . .
Appeal 2019-006019
Application 15/693,746
8
playing cards being only negative point values;” and (viii) “comparing the
respective total point count in the final player position hand and the final
dealer position hand to both a target point count and against each other to
determine a wager winning outcome on the underlying total point count
wagering event to determine whether there is a wager winning outcome a
wager losing outcome or a wager typing outcome.” These steps (vii) and
(viii) of claim 1 are similar to step (h) of claim 1 of Smith, wherein the
dealer compares the value of each player’s hand to a final value. Smith, 815
F.3d at 817.
Finally, step (ix) of claim 1 involves the basic aspect of resolving the
wager: (ix) “resolving the wager based on the determination of whether
there is the wager winning outcome, the wager losing outcome or the wager
tying outcome.” This step (ix) of claim 1 is similar to step (h) of claim 1 of
Smith, wherein the dealer resolves the wagers based on the players and
dealer’s hands. Smith, 815 F.3d at 817.
In sum, steps (i) and (iii) to (ix) of claim 1, when considered
individually, involve rules of conducting a wagering game, in which the
rules are part of exchanging and resolving financial obligations based on
probabilities, and therefore, steps (i) and (iii) to (ix) of claim 1 recite an
abstract idea. Smith, 815 F.3d at 819 (concluding that “the rejected claims,
describing a set of rules for a game, are drawn to an abstract idea”). Further,
fundamental economic practices and managing personal behavior or
relationships or interactions between people (including social activities,
teaching, and following rules or instructions) fall within the abstract idea
exception subgrouping of certain methods of organizing human activities.
Revised 2019 Guidance, 84 Fed. Reg. at 52. Thus, we find that steps (i) and
Appeal 2019-006019
Application 15/693,746
9
(iii) to (ix) recite a method of organizing human activity by specifying rules
of conducting a wager game, in which players and a dealer participate. This
finding is consistent with In re Marco Guldenaar Holding B.V., 911 F.3d
1157 (Fed. Cir. 2019), wherein the court agreed that rules for playing games
may be characterized as “one type of method of organizing human activity.”
Guldenaar, 911 F.3d at 1160. Thus, each of the steps of claim 1 supra,
individually, recites an abstract idea within the grouping of a certain method
of organizing human activity, and further, when considered as a whole,
claim 1, under the broadest reasonable interpretation, recites steps for
managing interactions between people, which are certain methods of
organizing human activity, again, a grouping under the judicial exception of
an abstract idea.
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.
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
Appeal 2019-006019
Application 15/693,746
10
relations); managing personal behavior or relationships or
interactions between people (including social activities,
teaching, and following rules or instructions).
Revised 2019 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
conducting a wagering game (i.e., a method of executing a wagering 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 Revised 2019 Guidance, 84 Fed. Reg. at 54.
The preamble of claim 1 is directed to a “a method of executing a
wagering game using non-standard playing cards,” and, in the body of claim
1, step (ii) defines “a set of non-standard playing cards” as comprising “a set
of fifty-five physical playing cards having five equal numbers of colored sets
of non-standard playing cards having number values of 1, 2, 3, 4, 5, 6, 7, 8,
9, 10 and 11 on a playing card face.” (Emphasis added). Steps (iii), (iv),
and (v) of claim 1 require providing two random playing cards from the set
of non-standard playing cards to the player and the dealer, and allowing the
taking of additional card(s) from the non-standard playing cards to form
final player and dealer hands. (Emphasis added). Finally, step (vii) requires
Appeal 2019-006019
Application 15/693,746
11
determining total point counts for the final player and dealer hand positions
“with points contributed by only one of the five equal numbers of colored
sets of non-standard playing cards being only negative value points.”3
(Emphasis added).
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.4
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.

3 To the extent Appellant argues that we have “ignor[ed] the specific claim
limitations and effects,” we disagree; rather, we have evaluated each claim
limitation individually, and also considered claim 1 as a whole. Appeal Br.
19.
4 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 2019-006019
Application 15/693,746
12
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.”
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
Appeal 2019-006019
Application 15/693,746
13
subject matter into a patent-eligible application of the abstract idea.” Id. at
1162.
Similarly, we find that the claimed set of non-standard playing cards,
as defined in claim 1, communicates information to the player and dealer
indicating a point count, and ultimately, the outcome of the wager—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. 39 (Claims App.) (claim 3, in relevant part, “wherein the
wagering game comprises a target point game in which an optimum score is
modulo nine”; claim 5: “wherein the wagering game comprises an optimum
target value of twenty-one”). Appellant further submits that, in In re Miller,
the printed matter on the measuring cup was not “functionally
related to the substrate of the cup,” but rather gave the cup a new
Appeal 2019-006019
Application 15/693,746
14
function, measuring partial recipes by reading the markings on
the cup. That is nearly identical to the new function provided by
the printing on the cards, providing negative values that can be
used in playing card gaming content. That new function, a direct
result of the use of the printed matter, provides a completely new
function literally recited in the claims, in the use of the new and
original deck of playing cards.
Reply Br. 3.
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
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. Appellant
mischaracterizes In re Miller by concluding supra that the printed matter on
Appeal 2019-006019
Application 15/693,746
15
the measuring cup was found not to be functionally related to the substrate
of the cup.
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, notwithstanding such
indicia results in a presumed new and original card deck. Further, the targets
for the wagering game recited in dependent claims 3 and 5 are additional
abstract rules for game play, but such rules do not add to the functionality of
the printed matter on the cards, as argued by Appellant supra. 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,
the physicality of the cards themselves fails to integrate the abstract idea of
rules for playing a wagering 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 Smith, 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.
Appeal 2019-006019
Application 15/693,746
16
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 a wagering game (i.e., a method
of executing a wagering 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).
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.
Appeal 2019-006019
Application 15/693,746
17
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
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 2–20 fall therewith.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
Appeal 2019-006019
Application 15/693,746
18
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