11513998 (P.T.A.B. Sep. 25, 2013)

Ex Parte Moody

Patent Trial and Appeal BoardSep 25, 2013

11513998 (P.T.A.B. Sep. 25, 2013)

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. 11/513,998 08/31/2006 Ernest W. Moody MOODY 31 4590 24258 7590 09/26/2013 JOHN EDWARD ROETHEL 5220 Haven Street, Suite 107 Las Vegas, NV 89119 EXAMINER COBURN, CORBETT B ART UNIT PAPER NUMBER 3714 MAIL DATE DELIVERY MODE 09/26/2013 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 2011-012457 Application 11/513,998 Technology Center 3700 ____________ Before MICHAEL L. HOELTER, HYUN J. JUNG, and BARRY L. GROSSMAN, Administrative Patent Judges. GROSSMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012457 Application 11/513,998 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 1-20. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We affirm the decision of the Examiner. CLAIMED SUBJECT MATTER The claimed subject matter relates generally to a method of playing a card game against one or more virtual opponents using an electronic gaming machine or against an actual opponent at a gaming table. Spec. 21, l. 15 – 22, l. 1. Claims 1 and 11 are independent claims. Claim 1 is illustrative of the subject matter on appeal and recites: 1. A method of playing a card game comprising: a) providing a deck of cards; b) displaying cards of an initial player hand and displaying cards of an initial opponent hand, the initial player hand and the initial opponent hand having the same cards by suit and rank; c) a remaining deck being created consisting of the deck of cards less the cards of the initial player hand; d) allowing a player to discard none, one or more of the cards of the initial player hand and displaying replacement cards for any cards discarded from the initial player hand to create a final player hand, the replacement cards being randomly selected from the remaining deck; e) allowing an opponent to discard none, one or more of the cards of the initial opponent hand and displaying replacement cards for any cards Appeal 2011-012457 Application 11/513,998 3 discarded from the initial opponent hand to create a final opponent hand, the replacement cards being randomly selected from the remaining deck; and f) determining whether the final player hand or the final opponent hand is a winning hand. REJECTION The sole rejection in this case and before us for review is the rejection of claims 1-20 under 35 U.S.C. § 101 as unpatentable because they are directed to non-statutory subject matter. Ans. 3. There is no rejection on prior art. Ans. 4. ANALYSIS Appellant argues claims 1-20 collectively and states that “for the purposes of this appeal, all of the claims can stand and fall together.” App. Br. 5. Accordingly, we select claim 1 as representative. Claims 2-20 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii)(2011). The Examiner concluded that the claims were directed to non- statutory subject matter because they are “claiming the rules to a card game,” and “[g]ame rules are abstract ideas” that are not patentable. Ans. 3. The Examiner reached his conclusion after considering factors weighing toward subject matter eligibility and factors weighing against subject matter eligibility to determine whether the claim represents a practical application of an abstract idea or the abstract idea itself. Id. at 4-6. The Examiner further explained that the claim is drawn to an abstract idea because it would “preempt any and all methods or devices for playing the claimed game.” Id. at 6. Appellant argues that the claims are not an abstract idea and lists numerous steps that are asserted to be more than an abstract concept: the Appeal 2011-012457 Application 11/513,998 4 claimed invention uses a deck of cards to engage in a method of game play which results in winning or losing final hands; an initial player hand and an initial opponent hand are created using cards from the deck; holding and drawing occur to result in a final player hand and a final opponent hand; making wagers, accumulating the wagers into a pot and awarding the pot to the winner; and if there is a tie during the play of the method, the amount in the pot carries over to the next round of play. App. Br. 10. For the reasons that follow, we agree with the Examiner that the claims are directed to nothing more than an abstract idea. Appellants’ Specification states that the claimed cards are inclusive of an actual live game at a gaming table with a dealer or a virtual game in a computer medium. Spec. 21, l. 15 – 22, l. 1; see also Ans. 7. Both known and unknown uses of the concept are covered, and can be performed through any existing or future-devised machinery, or even without any apparatus. See Ans. 5. Thus, we agree with the Examiner’s conclusion that the claims would preempt any and all methods or devices for playing the claimed game. Ans. 6. The claimed steps of “providing a deck of cards,” “displaying cards,” “allowing a player to discard . . . cards,” and “determining . . . a winning hand” depend only on the information displayed on the cards or rules of the game, not any machine or apparatus for conveying that information. Thus, we agree with the Examiner that the recitation of these steps does not tie the claimed method to a particular apparatus or machine or sufficiently recite a physical instantiation. See Ans. 5. Accordingly, Appellant’s arguments do not apprise us of error in the Examiner’s determination that claims 1-20 attempt to preempt the use of all machines and processes for performing the Appeal 2011-012457 Application 11/513,998 5 claimed method. We agree with the Examiner that our patent laws do not allow for the grant of such a monopoly. See Bilski v. Kappos, 130 S.Ct. 3218, 3231 (2010). We therefore conclude that Appellant’s claims 1-20 are an attempt to patent an abstract idea which is ineligible subject matter under 35 U.S.C. § 101.1 DECISION Upon consideration of the record as a whole in light of Appellant’s contentions and the preponderance of relevant evidence and applicable legal principles, we affirm the Examiner’s decision rejecting claims 1-20. 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)(1)(iv). AFFIRMED mls 1 The Examiner stated “that claims to a method of playing a game per se are not eligible subject matter under 35 U.S.C. § 101 because they are drawn to abstract ideas.” Ans. 7. We understand this statement, in its context, to mean the claims involved in this appeal are not patent eligible under the Supreme Court’s opinion in Bilski v. Kappos, to which the Examiner cited in the sentence. Id.