Ex Parte Hall

Patent Trial and Appeal Board

Jan 12, 2018

13539113 (P.T.A.B. Jan. 12, 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.
13/539,113 06/29/2012 Geoff Hall 3286.7-12739(PA4984.ap.US 2438
66137 7590 01/17/2018
TRASKBRITT, P.C. /Bally Gaming, Inc.
PO Box 2550
Salt Lake City, UT 84110
EXAMINER
DENNIS, MICHAEL DAVID
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
01/17/2018 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):
U S PTOMail @ traskbritt .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEOFF HALL
Appeal 2017-002594
Application 13/539,113
Technology Center 3700
Before KEN B. BARRETT, WILLIAM A. CAPP, and
ANTHONY KNIGHT, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1-19, 21, and 22 as being directed to patent-ineligible
subject matter under the judicial exception to 35 U.S.C. § 101.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies Customized Games Limited; Bally Gaming and
Systems UK Limited; Bally Gaming, Inc.; and Scientific Games Corporation
as the real-parties-in-interest.
2 A double patenting rejection over Hall (US 8,398,084 B2, iss. Mar. 19,
2013) has been withdrawn. Ans. 5.
Appeal 2017-002594
Application 13/539,113
THE INVENTION
Appellant’s invention relates to the casino card game of blackjack.
Spec. 1-11. Claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. A method for implementing a blackjack game in a
physical casino, the method comprising:
providing the physical casino with a physical gaming table
with a felt layout on top of the gaming table, the felt
layout including a plurality of betting circles imprinted
into the felt layout;
providing one or more physical decks of cards;
receiving a wager from the player in the form of one or
more physical chips in a player's betting circle of the
plurality of betting circles;
dealing, using the one or more physical decks of cards,
cards for a player's hand and cards for a dealer's hand;
enabling the player to play out the player's hand;
resolving the dealer's hand, comprising, upon meeting a
bum condition of a number of the cards for the dealer's
hand exceeding two and a point total of the cards for the
dealer's hand exceeding a predetermined amount and
equaling a preset total,
burning a card in the cards for the dealer's hand and dealing
an additional card for the dealer's hand; and
resolving the wager according to predetermined blackjack
mles.
OPINION
Appellant’s application presents three independent claims, namely,
claims 1,11, and 19. Claims App. Appellant argues all pending claims
together, except that Appellant imbeds an argument relating to the use of an
electronic apparatus within a section of the Appeal Brief that otherwise
applies to all pending claims. See Appeal Br. 45. We select claim 1 as
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Appeal 2017-002594
Application 13/539,113
representative, except that we will treat independent claims 11, 19, and
claims depending therefrom, which contain subject matter directed to an
electronic version of casino Blackjack, as a separate sub-group for which we
select claim 11 as representative. See 37 C.F.R. § 41.37(c)(l)(iv).3
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2355 (2014) (citingMayo
Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 72-73 (2012)).
According to the Supreme Court’s framework, we must first determine
whether the claims at issue are directed to one of those concepts (i.e., laws of
nature, natural phenomena, and abstract ideas). Id. If so, we must secondly
“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.” Id. The Supreme
Court characterizes the second step of the analysis 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. (brackets in original)
(quoting Mayo, 566 U.S. at 72-73).
The Examiner explains:
3 The first page of the Final Action identifies claims 1-19, and 21 as pending
and rejected. Final Action 1. In the Answer, the Examiner corrects this to
include claim 22. Ans. 2, 4, 5. In view of how the claims are grouped for
argument in both the Appeal Brief and Answer, we view the omission of
claim 22 in the Final Action as an inadvertent typographical error.
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Appeal 2017-002594
Application 13/539,113
Claim 1-19, 21 are directed to a method of playing a card game,
which is an abstract idea in the same way managing a game of
bingo is an abstract idea. The claim(s) does/do not include
additional elements that are sufficient to amount to significantly
more than the judicial exception because the use of cards,
electronic reader, card table and wager acceptance apparatus,
when considered separately and in combination, do not add
significantly more to the abstract idea as they are known
gaming components. These elements are analogous to the non­
unique components used in Planet Bingo.
Final Action 2 (underline in original). The Examiner correctly determines
that the claims are directed to an abstract idea. Final Action 2. Our
reviewing court maintains that claims directed to rules for conducting a
wagering game compare to other fundamental economic practices found
abstract by the Supreme Court. See In re Smith, 815 F.2d 816 (Fed. Cir.
2016).4
With respect to the second step of the Alice/Mayo analysis, the
Examiner finds that, taken as a whole, the claims contain insufficient
additional subject matter to transform the abstract idea into eligible subject
matter. Final Action 2. The Examiner elaborated on this finding in the
Answer.
Examiner declined to apply a prior art rejection solely for the
set of rules pertaining to the bum condition mles, dealing mles,
and resolution mles. These additional features fail to
4 Appellant urges us not to follow the Smith decision, arguing that it is “out
of step” with other Federal Circuit case authorities that pre- and post-date
Smith. Appeal Br. 25, n. 6. We are bound to follow applicable Federal
Circuit precedent, including Smith. We further note that the underlying facts
of Smith involve a variation in the casino card game of Blackjack as is the
instant application under appeal. Thus, the facts of Smith are more closely
analogous to those of the instant case than any of the other authorities cited
by Appellant in the Appeal Brief in footnote 6.
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Appeal 2017-002594
Application 13/539,113
demonstrate an "inventive concept" sufficient to transform the
abstract idea into a patent-eligible application.
Ans. 6.
In regard to step two of Alice/Mayo analysis, Appellant argues that the
claims amount to “significantly more” than the abstract idea. Appellant
presents different arguments for claims 1 and 11, which will be treated
separately below.
Claim 1 — “something significantly more ” analysis
Appellant argues that the step of burning a dealer card, in combination
with the traditional elements of casino Blackjack, constitutes an inventive
concept sufficient to create patentable subject matter. Appeal Br. 39-40.5
In this case, the claims do not recite merely receiving wagers,
distributing cards, and resolving wagers, etc., - or even merely
burning a card - in isolation. Rather, the claims recite a
particular, ordered combination of method acts (and apparatus
features) that is unconventional (i.e., not widely prevalent, well-
understood, routine, or conventional activity). For example, the
claims recite acts and features by which is provided burning a
dealer card upon the dealer drawing to a preset total exceeding
a predetermined amount. Burning a card, in blackjack, is not
widely prevalent. Therefore, burning a dealer card under the
required, particular circumstances is a combination that is not
widely prevalent.
Appeal Br. 42^13.
In response, the Examiner takes the position that
Indeed, none of those additional elements are new or original to
the gaming art. Rather, they are "widely prevalent" in the card
playing art and could easily be found with a cursory search (e.g.
5 In its Alice/May step 2 analysis, Appellant repeats its earlier argument that
such a concept is not an abstract idea. Appeal Br. 41. We have already
resolved this issue adverse to Appellant under step 1 of the analysis.
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Application 13/539,113
. . . US Pat. No. 6,406,023 to Rowe at Fig 3B, Column 3, lines
10-29 . . . Examiner declined to apply a prior art rejection
solely for the set of rules pertaining to the bum condition mles,
dealing mles, and resolution mles. These additional features
fail to demonstrate an 'inventive concept' sufficient to transform
the abstract idea into a patent-eligible application.
Ans. 6. The Rowe patent mentioned by the Examiner is directed to the
casino game of Blackjack, as is the instant application. Rowe, Abstract,
col. 1,11. 1-20. Rowe’s invention applies to both physical card games and
electronically simulated card games, as with the instant application. Id.
Rowe further discloses the following “bum” procedure:
The present inventive concept is a blackjack game that
incorporates a "dealer bum procedure" in which a dealer will
automatically bum the dealer's initial hand (initial two cards
dealt) if the two cards are both 10-valued cards. The dealer will
bum these two cards by removing the two dealer's cards and
placing them into the discard rack, and then dealing the dealer
two new cards (an up-card and a hole-card face down), and then
the game is continued.
Rowe, col. 3,11. 49-55. The foregoing disclosure in Rowe effectively
refutes Appellant’s contention that a dealer “bum” procedure, such as in
claim 1, is “ unconventional.” See Appeal Br. 42.
We agree with the Examiner that Appellant’s inclusion of a dealer
bum procedure in claim 1 does not transform the abstract idea of physically
playing a casino Blackjack game into something significantly more than a
claim on the abstract idea itself. Final Action 2. We sustain the rejection of
claim 1.
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Application 13/539,113
Claim 11 “somethingsignificantly more” analysis
Claim 11 differs from claim 1 in that it claims an electronic apparatus
for administering a blackjack game substantially as recited in claim 1.
Claims App. Appellant argues that claim 11 recites an apparatus with
particularly configured financial apparatus and particularly configured
processing unit. Appeal Br. 45. Appellant argues that the apparatus, in
combination with the Blackjack variation of claim 1, suffices as something
significantly more than a claim on the abstract idea itself. Appeal Br. 44 46
(“new or original” articles).
In response, the Examiner explains that claiming a particular gaming
apparatus constitutes the type of pre- or post-extra solution activity warned
against in Bilski v. Kappas, 561 U.S. 593, 610-11 (2010).
Appellant’s reliance on a computer/fmancial apparatus for
implementation of the abstract idea is not no avail. Appellant provides
neither evidence nor persuasive technical reasoning to show that the
“financial apparatus” of claim 11 entails more than well-known, standard
technology used in machines that receive cash or credit cards, etc.
Furthermore, merely stating an abstract idea while adding the words “apply
it” is not enough to confer patent eligibility. Id.
If that were the end of the § 101 inquiry, an applicant could
claim any principle of the physical or social sciences by reciting
a computer system configured to implement the relevant
concept.
Id. at 2359. We agree with the Examiner that the use of the recited
apparatus does not add significantly more to the abstract idea. Final Action
4; see also Ans. 7.
We sustain the Examiner’s rejection of claim 11.
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Appeal 2017-002594
Application 13/539,113
Claims 2—10, 12—19, 21, and 22
These claims are not separately argued and fall with claims 1 and 11.
DECISION
The decision of the Examiner to reject claims 1-19, 21, and 22 is
affirmed.
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
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