Ex Parte Milder

Patent Trial and Appeal Board

Jan 23, 2019

14207507 (P.T.A.B. Jan. 23, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/207,507 03/12/2014
33417 7590 12/28/2018
LEWIS, BRISBOIS, BISGAARD & SMITH LLP
JONE HOKANSON
633 WEST 5TH STREET
SUITE4000
LOS ANGELES, CA 90071
Daniel Donn Milder
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.
34189-02 5983
EXAMINER
COLLINS, DOLORES R
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
12/28/2018 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):
IPDocketing@lewisbrisbois.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL DONN MILDER
Appeal2018-004222
Application 14/207 ,507
Technology Center 3700
Before WILLIAM A. CAPP, JILL D. HILL, and
BRANDON J. WARNER, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 2-7 under 35 U.S.C. § 101 as directed to patent-ineligible
subject matter, and claims 1-22 under 35 U.S.C. § 103 over Brodrick
(US 8,613,449 B2, iss. Dec. 24, 2013). We have jurisdiction under 35
U.S.C. § 6(b ).
We REVERSE.
1 Rainbow Dice Partnership is the Applicant and real party in interest.
Appeal Br. 1.
Appeal2018-004222
Application 14/207 ,507
THE INVENTION
Appellant's invention is a wagering dice game. Spec. ,r 1. Claim 2,
reproduced below, is illustrative of the subject matter on appeal.
2. A method of playing a dice game comprising:
presenting a gaming table comprising a first side and a second
side, said first side of said gaming table comprises:
a first section containing a plurality of color combinations,
a second section containing a plurality of color combinations
wherein each combination contains one color and one blank,
a third section containing two blanks for colors that are the same,
a fourth section containing a plurality of color combinations that
are less than the number of color combinations in said first section;
said second side of said gaming table comprises:
a first section containing the same color combinations as in
said first side's fourth section;
a second section containing a plurality of color combinations
each of which comprises a combination with identical colors;
a third section containing a plurality of color combinations
other than those in said second side's first section;
receiving a plurality of wagers on said first side or said second
side of said gaming table;
presenting a set of regular, non-standard, polyhedron dice
comprising a plurality of identical die, each said die having an
even number of faces and each said die having different color
on each of its said faces;
wherein said first side and said second side contain pre-
determined color combinations associated with rolling said pre-
determined color combinations using said set of dice and
wherein said pre-determined color combinations are assigned
odds for wagering on the outcome of a roll of said set of dice;
rolling said set of dice to expose a top face of each said die;
identifying colors exposed on the top face of each said die after
said rolling of said set of dice; and
resolving wagers placed in sections of said gaming table solely
based on combinations of said colors exposed on said top
surface of each said die.
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Appeal2018-004222
Application 14/207 ,507
OPINION
35 US.C. §JOI-Ineligible Subject Matter
The Examiner determines that claims 2-7 are directed to the abstract
idea of playing a game. Final Action 2. The Examiner further determines
that any additional elements in the claims other than the abstract idea, when
considered separately and in combination, are not sufficient to amount to
significantly more than the abstract idea. Id.
Appellant argues that using a non-standard set of dice with colored
indicia is sufficient to set forth an inventive concept under Alice Corp. Pty.
Ltd. v. CLS Bank Int 'l, 134 S.Ct. 2347 (2014). Appeal Br. 8-9. Appellant
directs our attention to dicta expressed by the Federal Circuit in the case of
In re Smith, 815 F.3d 816, 819 (Fed. Cir. 2016) that entertains the possibility
that claims directed to conducting a card game using a new or original deck
of cards, as opposed to a standard deck of cards, could potentially survive
step two of the Alice analysis. 2 Id. at 9.
Appellant's dice game is played on a game table that is similar to, but
somewhat distinct from, a Craps table. Spec. ,r 8. The "Rainbow Dice" that
are used in the game have an even number of sides with a different colored
symbol or geometric form on each side. Id. ,r 12.
Craps and other well-known dice games are typically played with six-
sided dice where each side is marked with a numbered indicia, from one to
six, usually in the form of a number of dots. Unless and until we receive
additional and further guidance from the Federal Circuit on Section 101 as it
2 "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." Smith, supra at 819.
3
Appeal2018-004222
Application 14/207 ,507
applies to game method claims, Appellant's non-standard use of color and
geometric forms in lieu of conventional number/ dot indicia is sufficient to
set forth an inventive concept under step two of the Alice analysis. 3• See
Smith, 815 F.3d at 819.
Consequently, we do not sustain the Examiner's Section 101 rejection
of claims 2-7.
35 US.C. § 103 - Unpatentability of Claims 1-22
Claim 1
The Examiner finds that Brodrick discloses the invention substantially
as claimed, except for the specific contents of printed matter on the gaming
table, which the Examiner regards as non-functional printed matter that is
not entitled to patentable weight. Final Action 4--7. Furthermore, the
Examiner considers that differences between Brodrick and the claimed
invention in terms of betting outcomes amount to nothing more than mere
design choice, which would be obvious to include in the game to add
excitement to game play. Id. 6.
Appellant argues, among other things, that Brodrick fails to disclose
the color combinations and arrangements that the claimed invention employs
on the face of the dice. Appeal Br. 24. Appellant differentiates between
Brodrick's use of colored dots on otherwise standard numeric/dot indicia
dice and the non-standard coloring scheme used on Appellant's dice. Id.
at 25.
3 Given the diversity of subject matter that arises in Section 101 cases,
particularly gaming cases, and pending further guidance from the Federal
Circuit, our holding here should be limited to the specific facts of this case.
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Appeal2018-004222
Application 14/207 ,507
In response, the Examiner states that both Brodrick and the claimed
game coordinate wagering outcomes based on indicia on the faces of the
dice. Ans. 5. The Examiner treats the specific content of information
displayed on the faces of the dice as non-functional descriptive matter and
concludes that "there is no novel and unobvious functional relationship
between the printed matter and that which is required for patentability." Id.
at 6.
Contrary to the Examiner's position, there is a functional relationship
between the colored indicia, the respective faces of the dice, and the
outcome of playing the game. cf In re Miller, 418 F.2d 1392, 1396 (CCPA
1969) (finding a functional relationship between a measuring receptacle and
volumetric indicia thereon). Here, the game proceeds as a function of how
and when the various colored indicia appear face up after a roll of the dice.
The Examiner's rejection is based on an erroneous finding of fact and,
accordingly, we do not sustain the Section 103 rejection of claim 1.
Claims 2-22
Claims 2-22, whether independent or by virtue of dependency, each
contain limitations directed to dice that have colored indicia thereon that are
related to the outcome of a dice game. Claims App. Thus, the Examiner's
rejection of these claims suffers from the same infirmity that was identified
above with respect to claim 1. Thus, for essentially the same reason
expressed above in connection with claim 1, we do not sustain the rejection
of claims 2-22.
DECISION
The decision of the Examiner to reject claims 1-22 is reversed.
REVERSED
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