Ex Parte Moody

Patent Trial and Appeal Board

Mar 31, 2014

12497680 (P.T.A.B. Mar. 31, 2014)

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.
12/497,680 07/05/2009 ERNEST W. MOODY MOODY 32D 7011
24258 7590 04/01/2014
JOHN EDWARD ROETHEL
5220 Haven Street, Suite 107
Las Vegas, NV 89119
EXAMINER
COLLINS, DOLORES R
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
04/01/2014 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 ERNEST W. MOODY
____________

Appeal 2012-004457
Application 12/497,680
Technology Center 3700
____________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
BRANDON J. WARNER, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/497,680

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STATEMENT OF THE CASE
Ernest W. Moody (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision to reject claims 3-5: (1) under 35 U.S.C. § 101 as
being directed to non-statutory subject matter; and (2) under 35 U.S.C.
§ 102(b) as being anticipated by Moody (US 5,823,873; iss. Oct. 20, 1998).
1

Claims 1 and 2 have been cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
The claimed subject matter “relates primarily to video poker games,
and more particularly to video poker games that are programmed to play on
an electronic video poker machine.” Spec., 1, ll. 10-12.
Claim 5, the sole independent claim, is illustrative of the claimed
subject matter and recites:
5. A method of playing a card game comprising:
a) a player making a wager;
b) providing a deck of playing cards comprising at
least a standard fifty-two card deck;
c) from the deck of playing cards, displaying an
initial first hand of at least five cards all face up;
d) on a random basis, displaying an initial second
hand having the same cards face up as the initial first
hand;
e) selecting none, one or more of the face up cards
from the initial first hand as cards to be held, discarding
the unselected cards and displaying replacement cards for
the discarded cards resulting in a final first hand;

1
This is a New Ground of Rejection presented by the Examiner in the
Examiner’s Answer, mailed July 25, 2011. Ans. 4, 8.

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f) if the initial second hand has been displayed,
selecting none, one or more of the face up cards from the
second hand as cards to be held, discarding the
unselected cards and displaying face up replacement
cards for the discarded cards resulting in a final second
hand;
g) determining the poker hand ranking of the final
first hand and the poker hand ranking of the final second
hand;
h) paying the player a pre-established amount
based on the amount of the wager if the final first hand
comprises a winning poker hand ranking; and
i) paying the player a pre-established amount
based on the amount of the wager if the final second hand
comprises a winning poker hand ranking.

ANALYSIS
Non-Statutory Subject Matter

The Examiner’s position is that claims 3-5 are directed to non-
statutory subject matter, specifically, to an abstract idea, because the method
claimed is not tied to a particular machine or apparatus and does not
transform a particular article to a different state or thing, but rather merely
recites a new set of rules for playing a card game. Ans. 5-10.
Appellant contends that

. . . the methods of Claims 3-5 do not exhibit
themselves so manifestly as an abstract idea that it
overrides the broad statutory categories of eligible
subject matter. In fact, the methods of Claims 3-5
are decidedly non-abstract.
The claim steps use a deck of cards to
engage in a method of game play which results in
winning or losing final hands. The player makes a
wager to play the game. And the player is paid an
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amount based on the amount of the wager for any
winning hand.
Appellant also notes that the Examiner
overlooks the recitation in Claim 5 that a deck of
playing cards is provided and that the deck of
playing cards is used to display the hands of cards
to the player. Certainly playing cards meet the
requirement of utilizing another statutory class
apparatus since playing cards, per se, would be a
statutory class apparatus.

App. Br. 8-9; Reply Br. 9.

We agree with Appellant. Independent claim 5 recites the step of
“providing a deck of playing cards comprising at least a standard fifty-two
card deck.” App. Br. 12, Clms. App’x. (emphasis added). Further, the
Specification describes that “the present invention is played using a fifty-
three card deck of playing cards consisting of the standard fifty-two card
deck supplemented with one bonus hand card.” Spec. 11, ll. 7-9 (emphasis
added); See also App. Br. 3. As such, we find that the method of
independent claim 5 is tied to a particular machine or apparatus (i.e., a deck
of cards). Moreover, as pointed out by Appellant, “the Examiner here
recognizes that there are physical steps in the methods of Claims 3-5.” App.
Br. 6; Reply Br. 7; See also Ans. 9 (“Appellant’s claimed method, . . .
arguably recit[es] a number of physical steps of dealing cards”).
Independent claim 5 recites physical steps, which are not abstract ideas or
mere mental steps, including: “from the deck of playing cards, displaying an
initial first hand of at least five cards all face up”; “displaying an initial
second hand having the same cards face up as the initial first hand”;
“selecting none, one or more of the face up cards from the initial first hand
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as cards to be held”; and “displaying replacement cards for the discarded
cards resulting in a final first hand,” and which serve as more than an
abstract idea or insignificant extra-solution activity in the scope of the claim.
Accordingly, for the foregoing reasons, the Examiner’s rejection of
independent claim 5 and its dependent claims 3 and 4 as being directed to
non-statutory subject matter cannot be sustained.

Anticipation

Independent claim 5 calls for a method of playing a card game
including the step of “on a random basis, displaying an initial second hand
having the same cards face up as the initial first hand.” App. Br. 12, Clms.
App’x. The Examiner found that Moody teaches “randomly displaying an
initial second hand face up by using separate decks (see col. 8, lines 33-46).”
Ans. 4, 8. The Examiner further took the position that
[t]here is no requirement that all the cards in the
second hand be displayed ‘on a random basis’ and
be identical. Figures 2 & 3 are used to illustrate
that ‘41’ –‘43’ are displayed on a random basis in
fig 2 and the entire second hand in figure 3 may be
displayed on a random basis. Since Moody shows
2 cards that are the same for the second hand in
figure 3, this reads on claimed second hand. The
other 3 cards in figure 3 are randomly generated
which reads on the limitation “random basis”. The
term “random basis” is given the broadest,
reasonable interpretation and Moody reads on this
limitation.

Ans. 10; see also id. at 4, 8.

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Appellant contends that “[c]laim 5 recites in step (d) ‘on a random
basis, displaying an initial second hand having the same cards face up as the
initial first hand.’ This step requires that a second initial hand identical to the
initial first hand be displayed to the player.”
2
Reply Br. 10. Appellant
further contends that the section of Moody cited by the Examiner (i.e., col.
8, ll. 33-46) (see Ans. 4, 8) teaches that “the second hand is dealt using a
deck of cards that has omitted therefrom the five cards in the player’s initial
first hand.” Reply Br. 10-11.
Appellant’s arguments are persuasive. Moody teaches that
[i]n the preferred embodiment of this invention,
the game is dealt using three separate decks of
cards-the first row being dealt using a first
standard fifty two card deck while the second row
is dealt using a second deck of forty-seven cards
which comprises a standard fifty-two card deck
having the player’s five initial face up cards shown
in the first row omitted therefrom and the third row
is dealt using a third deck of forty-seven cards
which comprises a standard fifty-two card deck
having the player’s five initial face up cards shown
in the first row omitted therefrom. . . . This is
accomplished using the computer controls that
operate the gaming machine with the software
being written so that the second and third decks
used to deal the second and third hands,
respectively, have removed therefrom the five
cards initially dealt.

2
The Specification describes that “the video poker gaming machine can be
configured to simply award the player on a random basis one or more
additional hands of the same cards as the player received on the initial deal.
Spec. 18, l. 22 - 19, l. 2 (emphasis added). See also App. Br. 3.
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Moody, col. 8, ll. 34-50 (emphasis added). We agree with Appellant that “it
[would be] impossible [for] the initial second hand [of Moody to] have the
same cards as the initial first hand.” Reply Br. 11 (emphasis omitted).
Thus, Moody fails to teach or suggest the step of “displaying an initial
second hand having the same cards face up as the initial first hand,” as
required by claim 5.
Accordingly, for the foregoing reasons, the Examiner’s rejection of
independent claim 5 and its dependent claims 3 and 4 as being anticipated by
Moody cannot be sustained.

DECISION
We REVERSE the decision of the Examiner to reject claims 3-5 as
being directed to non-statutory subject matter.
We REVERSE the decision of the Examiner to reject claims 3-5 as
being anticipated by Moody.
REVERSED

pgc