Ex Parte Fishel

Patent Trial and Appeal Board

Jan 25, 2018

14275733 (P.T.A.B. Jan. 25, 2018)

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.
14/275,733 05/12/2014 Alan G. FISHEL 977777.11260.PAT.006 7241
4372 7590 01/29/2018
ARENT FOX LLP
1717 K Street, NW
WASHINGTON, DC 20006-5344
EXAMINER
FERNSTROM, KURT
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
01/29/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentdocket @ arentfox. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAN G. FISHEL
Appeal 2016-006708
Application 14/275,733
Technology Center 3700
Before: CHARLES N. GREENHUT, BENJAMIN D. M. WOOD, and
ANNETTE R. REIMERS, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-006708
Application 14/275,733
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
17—23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to a geography-based educational card game.
Sole independent claim 17, reproduced below, is illustrative of the claimed
subject matter:
17. A computer assisted method for playing a
card game to assist in classroom geography
education, via a processing device, the card
game including a plurality of tricks less than or
equal to a number of cards dealt to a group of at
least two players, the method comprising:
dealing, via the processing device, a
plurality of geopolitical entity cards from a set
of geopolitical entity cards to each of the group
of at least two players, such that each player has
a player hand of geopolitical cards, wherein
each of the geopolitical entity cards is
associated with a geopolitical entity and at least
three categories of geopolitical entity specific
ranked factual information associated with the
geopolitical entity to assist in classroom
geography education;
receiving, via the processing device, a first
card from a first player, wherein the first player
identifies a category selected from the
categories of geopolitical entity specific ranked
factual information;
receiving, via the processing device, a
second card from at least a second player,
wherein the second player identifies the
category;
2
Appeal 2016-006708
Application 14/275,733
determining, via the processing device, a
winner of each trick by comparing the category
identified on the first card and the category
identified on the second card;
receiving a selection from the winner of the
trick of a next card of play and identification of
a new category on the next card of play; and
awarding a score for a game by calculating
a number of tricks won by each of the at least
two players.
REJECTION
Claims 17—23 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
ANALYSIS
Appellant states that the claims stand or fall together. App. Br. 9. We
select claim 17 as representative of the appealed claims. 37 C.F.R.
§ 41.37(c)(l)(iv).
To determine whether a claim falls within a judicially recognized
exception to patent eligibility under 35 U.S.C. § 101, we apply the two-step
framework set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
132 S. Ct. 1289, 1293—94 (2012), and reaffirmed in Alice Corp. v. CLS Bank
Int’l, 134 S. Ct. 2347, 2355 (2014). For the first step, we determine whether
the claims at issue are directed to a patent-ineligible concept such as an
abstract idea, law of nature, or natural phenomena. Alice, 134 S. Ct. at 2355
(citing Mayo, 132 S. Ct. at 1296—97). If so, “we consider the elements of
each claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application” of the otherwise patent-ineligible concept. Id.
(quoting Mayo, 132 S. Ct. 1289, 1297). The Court has described this second
3
Appeal 2016-006708
Application 14/275,733
step “as a search for an inventive concept—i.e., 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.” Id.
(citing Mayo, 132 S. Ct. at 1294 (internal quotation marks and alterations
omitted)).
Regarding the first step in the Alice framework, the Examiner finds
that claim 17 is directed to a method of playing an educational card game,
which the Examiner characterizes as an abstract idea. Final Act. 4.
Regarding the second step, the Examiner finds that “the inclusion of a
computer processor which performs the method is not sufficient to transform
the underlying abstract idea into a patent-eligible invention.” Id.
Appellant argues that the Examiner fails to identify the abstract idea
to which the claims are allegedly directed, and thereby fails to provide
sufficient notice for the Appellant to respond. App. Br. 12. We disagree.
As noted above, the Examiner finds that claim 17 is directed to a method of
playing an educational card game. Final Act. 4; see also Ans. 2 (“the
claimed invention is a method of playing an educational card game”).
We agree with the Examiner that claim 17 is directed to rules for
playing an educational card game. Our reviewing court has held that
“claims, describing a set of rules for a game, are drawn to an abstract idea.”
In re Smith, 815 F.3d 816, 819 (Fed. Cir. 2016). Applying this guidance, we
agree with the Examiner that claim 17 is directed to an abstract idea.
Appellant responds that the Smith court “did not find that ‘playing a card
game’ is an abstract idea,” but instead focused on the game at issue being a
4
Appeal 2016-006708
Application 14/275,733
wagering game. Reply Br. 3.1 According to Appellant, the wagering aspect
of the game “compare [s] to other fundamental economic practices found
abstract by the Supreme Court.” Id. (internal quotation marks and
alterations omitted). We believe, however, based on the language we quoted
above, that the Smith court more broadly deemed rules for playing a game to
constitute an abstract idea, not just games that involve wagering.
Regarding step two of the Alice framework, Appellant asserts that
even if claim 17 is directed to an abstract idea, it “recites additional elements
that transform the nature of the claim into a patent-eligible application.”
App. Br. 14. Appellant relies on the claimed step of “dealing, via the
processing device, a plurality of geopolitical entity cards from a set of
geopolitical entity cards to each of the group of at least two players, such
that each player has a player hand of geopolitical cards, wherein each of the
geopolitical entity cards is associated with a geopolitical entity and at least
three categories of geopolitical entity specific ranked factual information
associated with the geopolitical entity.” Id., (bolding omitted). Appellant
asserts that this limitation “specif[ies] a particular make-up of the set of
geopolitical entity cards” that are required to perform each step of the claim.
Id. at 14—15. Appellant also relies on the following dicta in Smith:
That is not to say that all inventions in the gaming arts would be
foreclosed from patent protection under § 101. We could
envisage, for example, claims directed to conducting a game
using a new or original deck of cards potentially surviving step
two of Alice. The Government acknowledged as much during
oral argument.
1 Appellant’s reply brief is not paginated. We assume that the cover page
would have been designated page 1, and that the remaining pages would
have been paginated accordingly.
5
Appeal 2016-006708
Application 14/275,733
Reply Br. 4. The problem with this argument is that claim 17 does not recite
any particular “new or original deck of cards.” Instead, the game is played
with computerized displays that resemble “cards,” each display identifying a
geopolitical entity and providing some ranked information about that entity.
The computerized “dealing” of such “cards” is simply the provision of
information that is formatted in a particular way. The claim does not require
any specific format for the card, such as size or shape; does not require any
specific technical means to create the card format or transmit the formatted
data to the players; does not require a new source or type of information, and
does not require a new technique for analyzing the information.
Fundamentally, therefore, the game requires no more than routine data
management and display, which our reviewing court has found ineligible of
patent protection. See Electric Power Group, LLC v. Alstom S.A., 830 F.3d
1350, 1355 (Fed. Cir. 2016) (holding that merely selecting information, by
content or source, for collection, analysis, and display, without requiring a
new source or type of information, or new techniques for analyzing it, is
insufficient to transform an abstract idea into a patent-eligible application of
the idea). This is true even if the information is limited to particular content,
as is the case here. Id. at 1353.
DECISION
For the above reasons, the Examiner’s rejection of claims 17—23 is
affirmed.
6
Appeal 2016-006708
Application 14/275,733
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
7