Ex Parte Herren

Patent Trial and Appeal Board

Nov 29, 2016

13113833 (P.T.A.B. Nov. 29, 2016)

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.
13/113,833 05/23/2011 Jerald B. Herren 088023.000015 1358
39564 7590
FisherBroyles, LLP
885 Woodstock Road
Suite 430-383
Roswell, GA 30075
12/01/2016 EXAMINER
PIERCE, WILLIAM M
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
12/01/2016 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):
docketing @ fisherbroyles .com
patent @ fisherbroyles. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JERALD B. HERREN
Appeal 2015-000359
Application 13/113,833
Technology Center 3700
Before CHARLES N. GREENHUT, JEFFREY A. STEPHENS, and
ERIC C. JESCHKE, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Office Action (“Final Act.”) rejecting claims 1—20. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 This Appeal is related to Appeal No. 2015-000165.
Appeal 2015-000359
Application 13/113,833
Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A method of conducting a poker game comprising:
providing one or more players with one or more tangible
challenge game props;
dealing poker hands using a randomized deck of
conventional playing cards such that each player receives one or
more face down playing cards forming a random poker hand
comprising less playing cards than the randomized deck of
conventional playing cards;
responsive to all but a winning player folding, allowing
said one or more players to utilize said one or more tangible
challenge game props to challenge a winning player at the
conclusion of a poker hand;
requiring said winning player to reveal at least one of said
one or more face down playing cards to at least a player
challenging said winning player; and
tracking use of the one or more challenge game props by
each player.
Rejections
1. Claims 1—20 stand provisionally rejected under 35 U.S.C. § 101
as claiming the same invention as claims 1—18 of co-pending Application
No. 12/821,741 (“the ’741 Application”). Final Act. 2-3.2
2. Claims 19 and 20 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Id. at 3^4.
3. Claims 1—20 stand rejected under 35 U.S.C. § 101 as being
directed to ineligible subject matter. Id. at 4—12.
2 The Examiner has withdrawn the alternative rejection based on
nonstatutory obviousness-type double patenting in view of Appellant’s
submission of a terminal disclaimer. Ans. 4.
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Application 13/113,833
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. App. Br. 8—13; Reply Br. 2—3. We concur with Appellant’s
arguments that the Examiner erred in rejecting claims 1—20 for statutory
double patenting under § 101 and in rejecting claims 19 and 20 as indefinite
under § 112, second paragraph.
We are not persuaded by Appellant’s arguments that the Examiner
erred in rejecting claims 1—20 under § 101 as directed to ineligible subject
matter. For this rejection, we adopt as our own the findings and reasons set
forth by the Examiner in the action from which this appeal is taken and set
forth in the Answer. See Ans. 5—14.
We highlight and address specific arguments and findings for
emphasis as follows.
(1) Double Patenting (Claims 1—20)
Appellant argues the claims recite providing “one or more” face down
playing cards and then revealing “at least one of said one or more” cards in
response to a challenge. App. Br. 8, 14—18 (independent claims 1, 7, 14, 19,
20). Appellant contends that revealing “at least one of said one or more”
cards does not require revealing all of the “one or more” cards received, in
contrast to the independent claims of the ’741 Application, which require
revealing “said one or more” cards. Id. at 8. Thus, according to Appellant,
the claims are of differing scope and cannot be rejected for statutory double
patenting under § 101. Id.
The Examiner interprets the claims of the ’741 application to be broad
enough to encompass revealing only one card, even if the player received
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more than one. Ans. 3^4. According to the Examiner, the claims of the
’741 Application “fail[] to be explicit that ALL the said one or more face
down playing cards must be revealed” (Ans. 4), and “can be read broader
where a winning player is required to reveal ‘said one’ or ‘more’ of the
previously dealt face down playing cards” (Linal Act. 2).
We agree with Appellant that the claims of the ’741 Application
cannot be reasonably interpreted to encompass revealing fewer than all of
the cards received by the player that reveals the cards. Using claim 1 of the
’741 Application as an example, we agree with the Examiner that the
“dealing” step is broad enough to encompass the players receiving one card
or more than one card because it recites receiving “one or more face down
playing cards.” The “requiring” step, however, is limited to the exact
number of cards received in the “dealing” step, because it refers back to the
same cards received in the “dealing” step, i.e., “said one or more face down
playing cards.” The claim need not use the term “all” to be so limited.
Were the claim intended to encompass revealing fewer than all of the cards
received by the winning player, it could have recited “at least one of said one
or more face down playing cards,” as recited in the present application.
Thus, we agree with Appellant that it is possible to literally infringe claim 1
of the present application without literally infringing claim 1 of the ’741
Application. Accordingly, Appellant is not claiming the same invention in
both applications. Claim 1 is properly considered representative of claims
2—20 with respect to this issue.
In view of the foregoing, we do not sustain the statutory double
patenting rejection of claims 1—20 under 35 U.S.C. § 101.
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(2) Indefiniteness (Claims 19 and 20)
The Examiner determines that claims 19 and 20 “are directed to two
overlapping statutory classes in that, while they appear to recite apparatus
claims in a network and poker table further contained steps, they
additionally recite the invention in terms of a process.” Final Act. 3. The
Examiner relies on the Federal Circuit’s decision in IPXL Holdings, L.L.C.
v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005), which held that a
claim was invalid as indefinite because it recited both a system and a method
for using that system. Ans. 4—5.
In IPXL Holdings, the claim at issue was directed to a system
including an input means, and further recited that “the user uses the input
means to either change the predicted transaction information or accept the
displayed transaction type and transaction parameters.” IPXL Holdings, 430
F.3d at 1384. The court held it was
unclear whether infringement . . . occurs when one creates a
system that allows the user to change the predicted transaction
information or accept the displayed transaction, or whether
infringement occurs when the user actually uses the input means
to change transaction information or uses the input means to
accept a displayed transaction.
Id. On the other hand, where apparatus or system claims “do not recite
functionality divorced from the cited structure,” and “instead claim an
apparatus with particular capabilities,” they “do not reflect an attempt to
claim both an apparatus and a method.” UltimatePointer, L.L.C. v. Nintendo
Co., 816 F.3d 816, 827—28 (Fed. Cir. 2016); see also Microprocessor
Enhancement Corp. v. Tex. Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir.
2008) [hereinafter “MEC] (holding claim not indefinite under IPXL
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Holdings where it was “clearly limited to a pipelined processor possessing
the recited structure and capable of performing the recited functions”).
Here, Appellant argues claims 19 and 20 “do not require any specific
process or steps to be undertaken to be infringed but rather a processor
configured to and a dealer instructed to take certain actions.” App. Br. 9.
We agree with Appellant that claim 19 is directed to a “gaming network”
that comprises a “processor . . . configured to” perform certain functions.
Rather than requiring actual performance of the recited functions, the
limitations at issue in claim 19 are clearly limited to a processor configured
to perform the recited functions. Similarly, claim 20 is directed to a
“gaming system” comprising, among other things, “a dealer instructed to”
perform certain functions. Claims 19 and 20 are more similar to those held
not indefinite in UltimatePointer and MEC. The functional language in
question here is used to define the attributes of the respective structures, the
processor and the dealer. Actual performance of any manipulative steps for
which the processor is configured, or to which the dealer is instructed, is not
required in order to infringe. Accordingly, claims 19 and 20 do not reflect
an attempt to claim both an apparatus and a method.
In view of the foregoing, we do not sustain the rejection of claims 19
and 20 under 35 U.S.C. § 112, second paragraph.
(3) Subject Matter Eligibility (Claims 1—20)
The Examiner concludes that claims 1—20 are not directed to patent
eligible subject matter because they claim an abstract idea. Final Act. 4. In
particular, the Examiner determines that method claim 1, “while arguably
reciting a number of physical steps of dealing cards, is viewed here as an
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attempt to claim a new set of rules for playing a card game,” and “a set of
rules qualifies as an abstract idea.” Id. at 5. The Examiner determines that
the particular statutory class (process, machine, manufacture, or composition
of matter) is not determinative, and that the underlying invention in each of
the claims is the abstract idea of a set of rules for playing a card game. Id. at
5—11 (citing CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366
(Fed. Cir. 2011)).
In the rejection, the Examiner applies the USPTO Interim Guidance
for Determining Subject Matter Eligibility for Process Claims in View of
Bilski v. Kappos, 75 Fed. Reg. 43,922 (July 27, 2010) (“Interim Guidance”).
See Final Act. 5. Thus, in the Final Action, the Examiner evaluates factors
such as whether the claims are sufficiently tied to a particular machine,
result in a transformation to a different state or thing, or claim an abstract
idea, and concludes that the factors weigh against patent eligibility. Id. The
Interim Guidance was developed before the United States Supreme Court
issued its decision in Alice Corp. v. CLS Bank International, 134 S. Ct. 2347
(2014), which further explains the application of 35 U.S.C. § 101. In the
Examiner’s Answer, the Examiner also applies the Alice framework. Ans.
12—14. We affirm the Examiner’s rejection of claims 1—20 under § 101
based on Alice and subsequent Federal Circuit precedent as set forth below.
In Alice, the Supreme Court discussed its decision in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289
(2012), explaining the test for determining whether a claim is directed to
patent-ineligible subject matter as follows:
In Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S.----- , 132 S. Ct. 1289, 182 L. Ed. 2d
321 (2012), we set forth a framework for distinguishing patents
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that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those
concepts. First, we determine whether the claims at issue are
directed to one of those patent-ineligible concepts. Id., at----- ,
132 S. Ct., at 1296—1297. If so, we then ask, “[w]hat else is there
in the claims before us?” Id., at----- , 132 S. Ct., at 1297. To
answer that question, 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. Id., at----- , 132 S. Ct.,
at 1298, 1297. We have described step two of this 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., at----- , 132 S. Ct., at
1294.
Alice, 134 S. Ct. at 2355 (alterations in original).
Accordingly, we first determine whether the claims at issue are
directed to a patent-ineligible concept (such as an abstract idea). If so, we
then determine whether there is something else that ensures that they are
directed to significantly more than a patent-ineligible concept.
We agree with the Examiner that each of independent claims 1,7, 14,
19, and 20 is directed to the abstract idea of a set of rules for playing a card
game. Final Act. 5; Ans. 5—6, 11—14. The claims here are similar to the
claims of In re Smith, 815 F.3d 816 (Fed. Cir. 2016), which claimed “[a]
method of conducting a wagering game.” 815 F.3d at 817. In that case, the
court held that the claims, “directed to rules for conducting a wagering
game, compare to other ‘fundamental economic practice[s]’ found abstract
by the Supreme Court.” Id. at 818 (alteration in original) (quoting Alice, 134
S. Ct. at 2357). Here, the Examiner correctly determines that Appellant’s
underlying invention is a version of poker that includes the concept of
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challenge rights, where a player has the right to force another player to
reveal the winning hand. See Ans. 10—11. The claimed challenge rights are
no less abstract than the rules of the wager game considered in Smith.
Appellant contends that the randomized deck of conventional playing
cards recited in method claims 1 and 14 “generate random outcomes which
cannot be accomplished in the dealer’s (or anyone else’s) mind thereby
removing it from the abstract idea or mental step arena.” App. Br. 10.
Appellant repeats a similar argument based on the processor and random
number generator recited in method claim 7. Id. at 12. An unpatentable
mental process, however, is merely “a subcategory of unpatentable abstract
ideas,” CyberSource, 654 F.3d at 1371; thus, abstract ideas encompass more
than purely mental processes. For example, as the claims at issue in Alice
demonstrate, a claim may require use of a computer and still be directed to
an abstract idea under step one of the analysis. See Alice, 134 S. Ct. at
2356—59 (concluding that the claims were directed to the abstract idea of
intermediated settlement, and noting the claimed method was stipulated to
require use of a computer). In the present case, we consider Appellant’s
arguments as to the presence of playing cards and the challenge prop, as well
as structure required for computer implementation, under step two of Alice.
In accordance with step two of Alice, we consider whether there is
something else in the claims such that they are directed to “significantly
more” than the abstract idea identified above. See Alice, 134 S. Ct. at 2355.
Here, the Examiner determines that dealing cards is not central to the
purpose of the rules claimed by Appellant, and is considered an extra­
solution activity. Ans. 6—7. Similarly, the challenge props are “nothing
more than indicators to communicate a player[’]s intent to challenge another
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player that could alternatively be done verbally, by gestures or the like.”
Ans. 8. As to independent claims 7, 19, and 20, the Examiner determines
the claims merely require generic implementation on a computer in an
attempt to recite the function of an abstract idea in how a game is to be
conducted between players. Ans. 13.
We agree with the Examiner that the “conventional playing cards,”
“challenge game props,” “processor,” and “random number generator”
recited in the claims do not add significantly more to the abstract idea of
playing a poker game with challenge rights. “Just as the recitation of
computer implementation fell short in Alice, shuffling and dealing a standard
deck of cards are ‘purely conventionaf activities.” Smith, 815 F.3d at 819
(citing Alice, 134 S. Ct. at 2358—59). Similarly, the sole function of the
claimed challenge prop is to represent the challenge rights held by a player
and to indicate when those rights will be exercised. Like the conventional
playing cards considered in Smith, we consider the challenge prop to be a
generic implementation of the claimed abstract idea—the concept of
challenge rights. Thus, although we agree with Appellant that a tangible or
simulated challenge prop is required by the claims (see Reply Br. 2—3), the
physical presence of an object representing the challenge rights fails to add
significantly more to the abstract idea of those rights. Accordingly, we
agree with the Examiner that the rejected claims do not have an “inventive
concept” sufficient to “transform” the claimed subject matter into a patent-
eligible application of the abstract idea.
As to Appellant’s arguments that shuffling and/or dealing cards
“transforms” the deck and thereby satisfies the machine-or-transformation
test (App. Br. 11—12), we agree with the Examiner (Ans. 9—10) that these
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actions do not transform the deck because the cards remain the same, albeit
in a different order or location. Smith, 815 F.3d at 819 (“Just as the
recitation of computer implementation fell short in Alice, shuffling and
dealing a standard deck of cards are ‘purely conventional’ activities.”); see
also Bilski v. Kappos, 561 U.S. 593, 604 (2010) (holding that “the machine-
or-transformation test is a useful and important clue ... for determining
whether some claimed inventions are processes under § 101,” but that it is
“not the sole test”).
Accordingly, for the reasons discussed above and by the Examiner,
we are not apprised of error in the Examiner’s rejection of claims 1—20
under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. Thus,
we sustain the rejection of claims 1—20.3
DECISION
We reverse the Examiner’s decision to reject claims 1—20 under 35
U.S.C. § 101 as being drawn to the same invention as claimed in the ’741
Application.
We reverse the Examiner’s decision to reject claims 19 and 20 under
35 U.S.C. § 112, second paragraph.
We affirm the Examiner’s decision to reject claims 1—20 under 35
U.S.C. § 101 as being drawn to patent-ineligible subject matter.
3 Should there be further prosecution of claim 20 or other claims similarly
reciting a “dealer,” the Examiner may wish to consider whether the “dealer”
may encompass a human organism, such that the claim should be rejected
under 35 U.S.C. § 101 and Section 33(a) of the Leahy-Smith America
Invents Act. See “Claims Directed to or Encompassing a Human
Organism,” Memorandum to the Patent Examining Corps (Sept. 20, 2011).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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