Ex Parte Moody

Patent Trial and Appeal Board

Jan 13, 2014

12248711 (P.T.A.B. Jan. 13, 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.
12/248,711 10/09/2008 ERNEST W. MOODY MOODY56 1320
24258 7590 01/13/2014
JOHN EDWARD ROETHEL
5220 Haven Street, Suite 107
Las Vegas, NV 89119
EXAMINER
LAYNO, BENJAMIN
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
01/13/2014 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 2012-001332
Application 12/248,711
Technology Center 3700
____________________

Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-001332
Application 12/248,711
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claim 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claim is directed to a method of dealing hands of cards in games
having a dealer and multiple players.
1. A method of dealing hands in a Twenty-One game
having a single dealer and multiple players and using at least
one standard deck of fifty-two cards, comprising
a) dealing two initial dealer cards comprising a dealer’s
hand from the standard deck of fifty-two cards before any cards
are dealt to any of the players;
b) creating a fifty card depleted deck comprising the
fifty-two card standard deck less the two cards comprising the
dealer's hand;
c) dealing two cards comprising a player hand for each
player from the fifty card depleted deck, a separate fifty card
depleted deck being used for each player;
d) each player playing out his player hand according to
the conventional manner of play of Twenty-One;
e) using the fifty card depleted deck, playing out the
dealer hand according to the conventional manner of play of
Twenty One, the dealer hand also using a separate fifty card
depleted deck; and
f) determining winning and losing hands according to the
conventional manner of play of Twenty-One.

REJECTION
Claim 1 is rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter.

Appeal 2012-001332
Application 12/248,711
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OPINION
Claim 1 is directed to a method of dealing using a “standard deck of
fifty-two cards.” “[D]epleted deck[s]” are created from the standard deck for
each player. The Examiner, in rejecting claim 1 under 35 U.S.C. § 101
concluded that:
“a standard deck of fifty-two playing cards” and “a depleted
deck” are not required, it was determined that the steps of the
method can be most broadly be performed with or without the
“a standard deck of fifty-two playing cards” and “a depleted
deck”. For for [sic] example, a player can randomly mentally
choose playing card values for his/her hand.
Ans. 9.
Appellant, on the other hand, contends that
[t]he steps of Claim 1 use a standard deck of fifty-two
cards which is certainly a non-abstract element. Two of those
cards are dealt as a dealer’s hand which is an actual hand, not
an abstract hand. A depleted deck is created which is another
non-abstract element. The depleted deck is used for each
player’s hand and to complete the dealer’s hand. Each final
player’s hand and the final dealer’s hand (actual hands of
playing cards) are compared to determine winning and losing
hands.
As an additional argument, Appellant notes that 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. 7.
If the Examiner’s interpretation of a “deck [of cards]” is correct, then
claim 1 covers a process that could be practiced mentally, entirely within the
human mind. This would evidence abstractness. If the Examiner interpreted
the claim too broadly, and the claim does not cover a purely mental process,
then the claim would only cover a process closely tied to what the Examiner
Appeal 2012-001332
Application 12/248,711
4
appears to regard as non-abstract apparatuses—the “deck[s].” Ans. 9-10
(contrasting “physical” or “virtual” embodiments with a “mental[]” one).
The preferred mode of practicing the invention as disclosed in
Appellant’s Specification is an electronic gaming environment. Spec. 7:23-
8:11. However, the language of the claim does not necessarily exclude using
the type of deck associated with a live table game to practice the method. In
either case, the Examiner does not advance any reasoning as to why, if the
claim were limited to these embodiments, the claim would encompass non-
statutory subject matter. Indeed, the Examiner seems to agree that if the
claim is limited to these “physical” or “virtual” embodiments the claim
would comply with 35 U.S.C. § 101. Ans. 9-10. Thus, the Examiner’s case
for unpatentability hinges on whether the Examiner properly determined that
the broadest reasonable interpretation of the recited “deck[s]” includes those
that are instantiated only “mentally.”
We cannot agree with the Examiner’s claim construction. There is
nothing in the claim or the rest of the Specification to evidence that the
claim should be so broadly construed to cover a purely mental process. The
“deck[s]” mentioned in the Specification would be understood by those
skilled in the art to refer to those comprised of paper or paper-like cards and
those produced by programmed computers and displays. Nearly any
machine, transformation, or other non-abstract object could be imagined
mentally. That fact, without more, does not demonstrate that one skilled in
the art would understand such objects to include those manifested only in the
mind. Were that the case, thought alone would infringe most methods.
Since the Examiner’s rejection is based on an unreasonably broad
claim construction it cannot be sustained.

Appeal 2012-001332
Application 12/248,711
5
DECISION
The Examiner’s rejection is reversed.

REVERSED

mls