Ex Parte LITMAN

Patent Trials and Appeals Board

May 1, 2019

14805863 - (D) (P.T.A.B. May. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/805,863 07/22/2015
97462 7590 05/02/2019
Mark A. Litman & Associates, P.A.
7001 Cahill Road, Ste. ISA
Edina, MN 55439
FIRST NAMED INVENTOR
Mark A. LITMAN
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
004.006US2 7247
EXAMINER
WILLIAMS, ROSS A
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
05/02/2019 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 MARK A. LITMAN 1
Appeal2019-000113
Application 14/805,863
Technology Center 3700
Before MICHAEL L. HOELTER, MICHAEL J. FITZPATRICK, and
JEREMY M. PLENZLER, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL 2
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1-23, which constitute all the claims
pending in this application. App. Br. 5, 16. The Inventor/Appellant's
counsel presented oral argument on March 14, 2019. We have jurisdiction
1 "The real party in interest in this Appeal is the sole inventor of this
Application, Mark Alan Litman, also the counsel of Record." App. Br. 3.
We proceed on the basis that, for purposes of this appeal, Mark Alan Litman
is the "Appellant."
2 Appeal No. 2019-001585 pertains to Application No. 14/789,995, which
was filed on July 22, 2015 and claims priority to the same three provisional
patent applications as the present application. See the Specification of both
cases.
Appeal2019-000113
Application 14/805,863
under 35 U.S.C. § 6(b ). For the reasons explained below, we do not find
error in the Examiner's rejection of these claims. Accordingly, we AFFIRM
the Examiner's rejection.
CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to the field of gaming,
particularly to the field of card games (both physical and electronic) and
particularly to the use of side bets variations in the game of blackjack or
baccarat." Spec. 1: 11-13. Method claims 1, 11 and 16, and system claim
23, are independent. Claim 1 is representative of the claims on appeal and is
reproduced below.
1. A method of performing a side bet wagering event during
a playing card wagering event using a non-standard set of playing
cards comprising at least two sets of fifty-two playing cards in
which exactly three playing cards or exactly four playing cards
are exposed without any game play strategy or additional cards
being provided during play of the playing card wagering event
compnsmg:
a) a player position providing a side bet wager to be
determined by playing cards provided to at least one of the dealer
hand position and the player hand position as a hand on which
the side bet wager was provided;
b) providing two random playing cards to a dealer hand
position, and providing two random playing cards to a player
hand position, wherein if only one dealer card is initially
provided face-up, exactly three playing cards are used in
determining outcomes in the playing card wagering event, and if
both dealer hand playing cards are dealt face-up, then three or
four playing cards provided are used in determining outcomes in
the playing card wagering event;
c) determining the spread between the two random playing
cards in a hand on which the side bet wager has been placed;
2
Appeal2019-000113
Application 14/805,863
d) determining whether the side bet has been lost because
of a spread of zero between the two random playing cards in the
hand on which the side bet wager has been placed;
e) upon determining that there is a spread in excess of zero
between the two random playing cards in a hand on which the
side bet wager has been placed, when the player position hand
and uses a third playing card which appears in a position selected
from the group consisting of a dealer position card, a player
position third playing card, a community card, and a randomly
displayed image of a card;
f) determining if the third playing card is within or not
within the spread; and
g) resolving the side bet wager against a paytable which
identifies odds dependent on the spread determined in e) based
upon the determination whether the third playing card is within
or not within the spread;
wherein at least a portion of the side bet wager, but less
than all of the side bet wager is contributed to a progressive
jackpot, the amount of which is stored, incremented and
decremented in a processor, decrementing being based in-part
upon resolution of the side bet for outcomes where percentages
of a total in the progressive jackpot are awarded for defined
random event outcomes when the third playing card is within the
spread, and the processor sends a signal to a display screen
available for view at the player position indicating status of the
jackpot amount; and
further wherein at least 5% of the progressive jackpot is
specifically awarded only when at least one of the three cards
consisting of the two random physical playing cards in the hand
on which the side bet has been provided and at least the third
random physical plying card has a bonus indicator distinct from
standard rank and suit indicators on standard playing cards in
addition to rank and suit of the playing cards, and which
indicators are also necessary on more than the at least one of the
three or four cards for the side bet wager to win 100% of the
jackpot, and wherein there are at least three playing cards of
consecutive rank and of the same suit in the non-standard set of
playing cards having the bonus indicators thereon and wherein
only one occurrence of the non-standard set of playing cards
3
Appeal2019-000113
Application 14/805,863
having the at least three consecutive ranks of the same indicators
thereon.
THE REJECTION ON APPEAL3
Claims 1-23 (all the claims) are rejected under 35 U.S.C. § 101
because the claimed invention is directed to ineligible subject matter.
ANALYSIS
Appellant argues all the claims (i.e., claims 1-23) together (see App.
Br. 24--57) and also presents overlapping arguments directed to other claim
groupings (see App. Br. 38, 52-56). We select claim 1 for review, with the
remaining claims standing or falling therewith. See 3 7 C.F .R.
§ 4I.37(c)(l)(iv).
THE EXAMINER'S REJECTION
The Examiner addressed claim 1 stating that it pertains to "a method
of wagering (i.e., a process)." Final Act. 4. Thus, and as per "Step 1" of the
"Two-Part Analysis" that "examiners must perform," claim 1 is deemed to
be "directed to a process, machine, manufacture or composition of matter."
Final Act. 3--4. Next, "'it must be determined whether the claimed invention
is 'directed to' a judicially recognized exception." Final Act. 4. On this
point, the Examiner states, "Claim[] 1 encompass[ es] a method of playing a
card game" and the Examiner replicates claim 1 underlining the limitations
which, according to the Examiner, "encompass the abstract idea." Final Act.
3 The Examiner's rejection of claims 1-23 (i.e., all the claims) as being
indefinite has been withdrawn. See Ans. 2. The Examiner also withdrew
the "[o]bjection to the specification under 35 U.S.C. [§] 132(a) because it
introduces new matter into the disclosure." Ans. 2.
4
Appeal2019-000113
Application 14/805,863
4---6. We do not replicate this annotated claim 1 here, but the Examiner
states that limitations to "other than the abstract idea" include "non-standard
playing cards, displays, a display screen, input devices, electronic input
devices, processors, ... gaming machine, ... [and] electromechanical
devices." Final Act. 8 (not listing devices related to other claims). Thus,
other than the above noted exceptions, the reminder of claim 1 is deemed to
"encompass the abstract idea," referencing Alice, 4 In re Smith, 5 Planet
Bingo, 6 and Bilski7 as support. See Final Act. 6-7. Specifically, "[t]he
claimed abstract idea reproduced above is effectively a method of
exchanging and resolving financial obligations between a players and/or
operator and/or a gaming machine based on probabilities created during the
game (see Smith and Alice)." Final Act. 7 (also discussing Planet Bingo and
Bilski). Consequently, the Examiner determined claim 1 "is directed to the
judicially recognized exception of an abstract idea." Final Act. 7.
Proceeding next to "Step 2B," the Examiner states, "if the claim
encompasses a judicially recognized exception, it must be determined
whether the claimed invention recites additional elements that amount to
significantly more than the judicial exception." Final Act. 7-8. Here, the
Examiner identified what is considered to be "significantly more than the
judicial exception" (see supra) stating that while these "additional features
are numerous, they comprise only 'conventional steps, specified at a high
level of generality,' which is insufficient to supply an 'inventive concept."'
4 Alice Corp. Pty. Ltd. v. CLS Bankint'l, 573 U.S. 208 (2014).
5 In re Smith, 815 F.3d 816 (Fed. Cir. 2016).
6 Planet Bingo, LLC v. VKGS LLC, 576 F. App'x. 1005 (Fed. Cir. 2014).
7 Bilski v. Kappas, 561 U.S. 593 (2010).
5
Appeal2019-000113
Application 14/805,863
Final Act. 8 (referencing Ultramercial, 8 Bilski, and Mayo 9). Thus, the
Examiner states, "[v]iewed as a whole, these additional claim element(s) do
not provide meaningful limitation( s) to transform the abstract idea into a
patent eligible application of the abstract idea such that the claim( s) amounts
to significantly more than the abstract idea itself." Final Act. 8. The
Examiner thus concludes, "the claim(s) are rejected under 35 U.S.C. [§]
101." Final Act. 8-9.
APPLICABLE LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 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, 573 U.S. at 216.
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, 566 U.S. at 75-77). 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, 561 U.S. at 611 ("Claims 1 and
4 in petitioners' application explain the basic concept of hedging, or
protecting against risk.").
8 Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014).
9 Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, (2012).
6
Appeal2019-000113
Application 14/805,863
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 (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 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))).
If the claim is "directed to" an abstract idea, we tum 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 ( quotation marks 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).
The PTO recently published revised guidance on the application of
§ 101. See USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("Memorandum"). Under that
Memorandum, 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
7
Appeal2019-000113
Application 14/805,863
activity such as a fundamental economic practice, or mental processes) 10;
and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
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 (see MPEP
§ 2106.05(d)); 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 Memorandum.
CLAIM 1
Judicial Exception
As indicated above, the Examiner determined that claim 1 is directed
to a judicial exception, and more particularly, to (a) "a fundamental
economic practice ( e.g., a wagering game ... ) as discussed in Alice ... and
In re Smith;" (b) "rules for conducting a wagering game as discussed in In re
Smith;" ( c) "a method of managing a game ( e.g., a card game)" similar to
10 This language encompasses the holding of In re Smith ( cited by the
Examiner, see supra) whose claims were rejected by our reviewing court
because they were "drawn to the abstract idea of rules for a wagering game."
In re Smith, 815 F .3d at 820. This case is instrumental in our analysis
below.
8
Appeal2019-000113
Application 14/805,863
Planet Bingo; and, ( d) "a method or organizing human activities" as
discussed in Bilski and Alice. Final Act. 6-7. See also Memorandum. The
Examiner thus determined that claim 1 "describe[ s] rules for conducting or
managing" and as such, "the claim is directed to the judicially recognized
exception of an abstract idea." Final Act. 7.
Appellant disagrees and, among the various arguments made ( see
below), references multiple Declarations and a "neutral survey" in the
Appeal Brief. See App. Br. 50---51. These documents were prepared for a
different case ("These Declarations were originally submitted in US Patent
Application Serial No. 14/611, 174") but were referenced by Appellant in
this case as well. App. Br. 50; see also Amendment dated October 7, 2017,
pages 38, 39. The Examiner responded, "[r]egarding the Applicant
arguments found on pages 23-39" of Appellant's above amendment, "these
arguments have been reviewed at length" but that they do not address "the
particulars of the claims at issue." Final Act. 11-12.
To be clear, Appellant paraphrases the content of these Declarations
as "evidence [of] the non-abstractness of the claimed subject matter." App.
Br. 50. This is because "[t]he claims recite the use of physical playing cards,
physical randomization, physical distribution of the playing cards and
more." 11 App. Br. 50. Appellant further argues that "[t]he playing cards
11 Appellant describes the survey results as evidence of "the fact that the
playing cards themselves were of such a standard and common commodity
as to establish them as concrete articles and not as abstract ideas." App. Br.
51. Similar statements can also be found in each of the Declarations. See,
e.g., Dunn Declaration ,r 3(a)(ii); Yoseloff Declaration ,r 3(a)(ii); Hwang
Declaration ,r 3(a)(iv).
9
Appeal2019-000113
Application 14/805,863
themselves ... render[] the events a concrete method." App. Br. 37; see
also id. at 47; Reply Br. 2-3.
The Examiner is not disputing the concreteness of playing cards, or
even those having "a bonus indicator [thereon] distinct from standard rank
and suit indicators on standard playing cards," as recited. 12 However, the
fact that claim 1 involves physical playing cards does not, in and of itself,
preclude the claim from reciting an abstract idea. See In re Smith, 815 F .3d
at 819; see also In re Guldenaar, 911 F.3d 1157 (Fed. Cir. 2018) (the
rejection of claims directed to specially marked die was affirmed as being
directed to an abstract idea). In fact, in Guldenaar, our reviewing court
noted, "[t ]he claimed methods in Bilski and Alice also recited actions that
occurred in the physical world" and "[t]he same is true of the claimed
method of conducting a wagering game in Smith." Guldenaar, 911 F.3d at
1161---62 ( citations omitted). In view of the above, Appellant fails to provide
any persuasive reason why the Declaration or survey evidence changes this
determination.
Appellant also presents contentions based on a disagreement with the
state of the law concerning§ 101. 13 See Appeal and Reply Briefs generally.
However, Appellant offers no explanation (but see the "special marking"
discussion below) as to how claim 1 is not analogous to the claims found
ineligible in In re Smith and Guldenaar under § 101. Instead, Appellant
12 Appellant's Specification states; "[s]pecial markings is to be interpreted
broadly as any differences among images that are visually observable that
can distinguish between non-special cards and the specially 'marked' cards."
Spec. 71:3-7.
13 We decline to comment on Appellant's allegations regarding
constitutional issues. See also Ans. 10, 12, 13.
10
Appeal2019-000113
Application 14/805,863
asserts "that the USPTO has made a binding determination (which the courts
have followed, cf, In re Smith[)]." App. Br. 33; see also id. at 47.
As expressed above, the judicial exceptions identified include "certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic practice, or
mental processes)." It is our understanding that claim 1, directed to "[a]
method of performing a side bet wagering event," can be properly
categorized as one of these groupings of abstract ideas, and more
particularly a fundamental economic practice, which is a certain method of
organizing human activity. See Memorandum; see also In re Smith, 815
F.3d at 818. This is because claim 1 recites such limitations as: (a) "a player
position [on] a side bet wager [] determined by playing cards" dealt; (b)
"providing two random playing cards ... ;" (c) "determining the spread
between the two random playing cards ... ;" (d) "determining whether the
side bet has been lost because of a spread of zero ... ; " ( e) "upon
determining that there is a spread in excess of zero ... ;" (f) "determining if
[a] third playing card is within or not within the spread;" and, (g) "resolving
the side bet wager." These limitations are reasonably, as expressed by our
reviewing court, "directed to rules for conducting a wagering game" and
"compare to other 'fundamental economic practice[ s]' found abstract by the
Supreme Court." In re Smith, 815, F.3d at 818.
For at least these reasons, we are not apprised of error in the
Examiner's determination that claims 1-23 are directed to a judicial
exception. See Final Act. 7.
11
Appeal2019-000113
Application 14/805,863
Something More
Following Office guidance, we are instructed next to determine
whether the claim recites "additional elements that integrate the judicial
exception into a practical application (see MPEP § 2106.05(a}-(c), (e}-(h))"
and, if not, whether the claim adds a specific limitation beyond the judicial
exception that is not "well-understood, routine, conventional" in the field or,
instead, "simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception." See Memorandum.
On this point, and as addressed above, the Examiner states that
limitations to things "other than the abstract idea" include "non-standard
playing cards, displays, a display screen, input devices, electronic input
devices, processors, ... gaming machine, ... [and] electromechanical
devices." Final Act. 8. Appellant does not challenge this characterization
by the Examiner and, further, Appellant's Specification describes such
structure using only generic terminology and descriptions. See, e.g., Spec.
71:3-7 (specially marked cards); 37:1-10, 40:3---6 (display); 28:4--7, 52:8-13
(input device), 33:9-17 (processor and gaming device).
Specific to Appellant's recitation to "a bonus indicator distinct from
standard rank and suit indicators on standard playing cards," we undertake
an investigation into whether the addition of a marking on some of the cards
for bonus purposes renders these playing cards "a new or original deck of
cards" that may potentially survive step two of Alice. In re Smith, 815 F .3d
at 819; see also App. Br. 24. Appellant contends that the Examiner's
position that "the specifically recited special marking on 3-4 cards in a
12
Appeal2019-000113
Application 14/805,863
multi-deck set of cards was not sufficient 'something more' under Alice" "is
factually unwarranted." 14 App. Br. 24; see also Reply Br. 6.
First, there is no indication that the marking has to be of any particular
size, shape, color, appearance, manifestation, image, texture, or the like,
only that the selected cards have a special marking thereon. Spec. 71 :3-7.
When our reviewing court has addressed markings in general ( as in the
present case), we have been instructed that "[t]his court has generally found
printed matter to fall outside the scope of§ 101." AstraZeneca LP v. Apotex,
Inc., 633 F.3d 1042, 1064 (Fed. Cir. 2010) (referencing In re Chatfield, 545
F.2d 152, 157 (CCPA 1976)). The exception is in the event "the printed
matter is functionally related to the substrate on which the printed matter is
applied." Praxair Distrib., Inc. v. Mallinckrodt Hosp. Prod. IP Ltd., 890
F.3d 1024, 1031 (Fed. Cir. 2018) (referencing In re DiStefano, 808 F.3d 845,
848 (Fed. Cir. 2015)); see also MPEP §2111.05. The question then becomes
whether Appellant's marking on a card is functionally related to the
substrate of the card itself. 15 Appellant alleges such functionality, but via
the information such marking conveys, i.e., consistent with the language of
14 Appellant contends, "[i]t is incomprehensible that the unexpected novel
and unobvious change in 3-4 cards that has orders of magnitude impacts on
gaming events can be judged as not sufficient 'something more' to overcome
the rejection of claims as an abstract idea." App. Br. 25; see also id. at 53.
Further, Appellant contends that these special markings "answers a long-felt
need, and does so by a measurable degree of accomplishment between 500%
and 10,000%." Reply Br. 2; see also id. at 5-7. However, as understood,
the resulting improvement addresses the degree of jackpot attained; not that
winning a (large) jackpot is unknown or unconventional. See also Ans. 9.
15 See In re Guldenaar, 911 F.3d 1157, 1161 (Fed. Cir. 2018) for a similar
investigation into the markings on dice. See also MPEP § 2111.05(I)(B).
13
Appeal2019-000113
Application 14/805,863
claim 1 that the card's marking is indicative of whether, and to what degree,
a progressive jackpot is involved. See App. Br. 25, 53; see also Reply Br. 2,
5, 6. Hence, Appellant's marking is only used to convey information about
the possible existence, and extent, of a progressive jackpot. On this point,
we have been informed that "[i]nformation as such is an intangible" and that
displaying information, "without more ... is abstract." Elec. Power Grp. v.
Alstom S.A., 830 F.3d 1350, 1353, 1354 (Fed. Cir. 2016); see also Digitech
Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1350 (Fed.
Cir. 2014) ("Data in its ethereal, non-physical form is simply information
that does not fall under any of the categories of eligible subject matter under
section 101 ").
SUMMATION
Accordingly, and in view of the above, we agree with the Examiner's
conclusion that "the claim(s) are [properly] rejected under 35 U.S.C. [§] 101
as being directed to non-statutory subject matter." Final Act. 8-9. In short,
claim 1 does not integrate the judicial exception into a practical application
or add a specific limitation beyond the judicial exception that is not "well-
understood, routine, conventional" in the field sufficient to transform the
claim into eligible subject matter. See In re Smith, 815 F .3d at 819. Thus,
we determine that claims 1-23 of the pending application are ineligible
under§ 101.
We sustain the Examiner's rejection of claims 1-23.
14
Appeal2019-000113
Application 14/805,863
DECISION
The Examiner's rejection of claims 1-23 under 35 U.S.C. § 101 as
being directed to ineligible subject matter 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
15