Ex Parte Mourad

Patent Trial and Appeal Board

Dec 15, 2016

13183039 (P.T.A.B. Dec. 15, 2016)

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.
13/183,039 07/14/2011 Raphael Mourad MRB-10002/03 7554
25006 7590 12/19/2016
DTNSMORF fr SHOHT T T P
EXAMINER
900 Wilshire Drive PIERCE, WILLIAM M
Suite 300
TROY, MI 48084 ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
12/19/2016 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAPHAEL MOURAD
Appeal 2014-0072621
Application 13/183,03 92
Technology Center 3700
Before MICHELLE R. OSINSKI, JAMES A. WORTH, and
AMEE A. SHAH, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
1 Our decision refers to Appellant’s Appeal Brief (“Appeal Br.,” filed Nov.
15, 2013) and Reply Brief (“Reply Br.,” filed May 29, 2014), and the
Examiner’s Final Office Action (“Final Act.,” mailed May 22, 2013) and
Answer (“Ans.,” mailed Apr. 9, 2014).
2 According to Appellant, the real party in interest is Raphael Mourad
(Appeal Br. 1).
Appeal 2014-007262
Application 13/183,039
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 2—4, 6, 8, 9, 12, 13, 15, 16, 18, 19, and 21—25. We have
jurisdiction under 35 U.S.C. §§ 134 and 6(b).
Appellant appeared at an oral hearing on November 14, 2016.3
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
Introduction
Appellant’s disclosure relates to “methods for playing card games and
more particularly to novel forms of card games based on blackjack and
baccarat.” (Spec. 12).
Claims 12, 19, and 21 are the independent claims on appeal. Claim
21, reproduced below, is illustrative of the subject matter on appeal:
21. A method of playing a card game involving a
dealer and at least one player, said game comprising the steps
of:
having each player make an initial wager against a
gaming house conducting the card game;
dealing two cards to each player and to the dealer from at
least one deck of playing cards, each deck comprising four
suites of cards, including spot cards with numbers from ace to
ten, jacks, queens and kings, each of the spot cards from ace to
9 having a value equal to the number of the corresponding spot
card and each of the tens, jacks, queens and kings having a
value of zero, a total count of any hand being a sum of the value
of the cards in the hand except that a sum of two digits has a
total count equal to the last digit;
allowing each player only, but not the dealer, options to
draw additional cards or to split two cards with the same value,
in an effort to improve the players’ hands; and
3 A copy of the hearing transcript (“Tr.”) has been placed in the record.
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comparing the total count of the dealer's initially dealt
two card hand with the total count of each player's hand after
exercise of any of said options, and collecting losing wagers
and paying winning wagers, according to a predetermined
collection and payout schedule.
(Appeal Br., Claims App.)
Rejection on Appeals
The Examiner maintains, and Appellant appeals, the following
rejections:
I. Claims 2-4, 6, 8, 9, and 21—23 stand rejected under
35 U.S.C. § 101, as being directed to non-statutory
subject matter.4
II. Claims 2-4, 6, 8, 9, and 21—25 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Hesse
(US 5,397,128, iss. Mar. 14, 1995) and Hansen
(US 5,660,392, iss. Aug. 26, 1997).
III. Claims 12, 13, 15, 16, 18, and 19 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Hesse,
Hansen, and Lee (US 6,341,778 Bl, iss. Jan. 29, 2002).
ANALYSIS
Rejection I (Unpatentable Subject Matter)
Claims 2—4, 6, 8, 9, and 21—23
Claims 2—4, 6, 8, 9, and 21—23 stand rejected under 35 U.S.C. § 101,
as being directed to non-statutory subject matter. The Examiner reasons that
4 The Examiner withdrew the rejection under § 101 as to claims 12, 13, 15,
16,18,19, 24, and 25 (Ans. 3).
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the claims are directed to a method of playing a card game with wagering,
and that rules for playing a game are analogous to a basic economic practice,
legal theory, mental activity, interpersonal relationship, teaching concept,
human behavior, and instructing how business should be conducted (Final
Act. 2). The Examiner further reasons that a deck of cards is not a machine,
that the mere arrangement of cards does not result in a transformation, that
the results are different each time, and that there is no useful, concrete, or
tangible result (Final Act. 3—6). The Examiner additionally reasons that the
mere fact of computer implementation does not transform the invention into
patentable subject matter, and that steps such as “comparing” can be
performed by a dealer (Final Act. 7—9).
Appellant argues that “while one could imagine the defined deck of
cards in sequence and mentally distribute the cards among players in the
manner specified in claim 1, the cards constitute a machine that enables that
process to be performed at a practical level” (Appeal Br. 11). As to whether
there is an abstract idea, Appellant argues that a method of playing a card
game is not abstract because the cards are physical {id. at 12-13). Appellant
also asserts that there is a distinction between a rule and a formula associated
with a payout (Tr. 11:8—15, 12:23—13:9).
In analyzing whether claimed subject matter is patent eligible, the
Court in Alice articulated the use of a two-step framework set forth in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289
(2012):
First, we determine whether the claims at issue are
directed to one of those patent-ineligible concepts. If so, we
then ask, “[wjhat else is there in the claims before us?” To
answer that question, we consider the elements of each claim
both individually and “as an ordered combination” to determine
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whether the additional elements transform the nature of the
claim” into a patent-eligible application.
See Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S.Ct. 2347, 2355 (2014). See
also USPTO 2014 Interim Guidance on Patent Subject Matter Eligibility, 79
Fed. Reg. 74,618, 74,621 (Dec. 16, 2014).
We agree with the Examiner that the claims are directed to patent-
ineligible subject matter. Under step one of Alice, we conclude that
independent claim 21 is directed to a wagering card game in which the
dealer is limited in the number of cards that he or she may draw. We agree
with the Examiner that wagering is a fundamental economic activity under
the Supreme Court’s framework in Alice, and thus, is patent-ineligible
subject matter. We further conclude that this case closely resembles In re
Smith, in which the Federal Circuit concluded that a similar game for
wagering based on cards was directed to patent-ineligible subject matter.
See In re Smith, 815 F.3d 816 (Fed. Cir. 2016). For example, claim 1 of
U.S. Patent Application No. 12/912,410, at issue in Smith, recited
“dealer/banker remaining pat within a first certain predetermined total
counts and being required to take a single hit within a second predetermined
total counts” within the context of a wagering game using a physical deck of
cards. The Court in Smith determined that “rules for conducting a wagering
game, compare to other ‘fundamental economic practice[s]’ found abstract
by the Supreme Court.” 815 F.3d at 818.
Under step one of Alice, we further conclude that the further
recitations, such as “comparing the total count of the dealer’s initially dealt
two card hand,” are directed to the same abstract idea of wagering.
According to Appellant, the claims are distinguishable from Smith because
of additional limitations: “Not allowing the dealer to draw a card has a ripple
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effect that a lot of different situations in the casino environment including all
of these things, frankly, that the inventor brought up regarding not only
frustration and subjective things like that but adding back in a payout
schedule that brings the house edge back to where it should be and the
ability to not count cards based upon the fact that the dealer, you know, can't
—” (Tr. 12:9-15). See also 13:10-14 (Appellant: “invention is a very
important and significant solution to major issues involved in the most
popular game in the world, so it is a significant improvement”). However,
these additional limitations are also rules for a wagering game that are akin
to fundamental economic practices related to exchanging and resolving
financial obligations based on probabilities, and are thus, abstract ideas. See
Smith ,815 F.3d at 818—19. Whether or not the claims are found novel or
non-obvious, we conclude that the subject matter of wagering based on the
playing of cards remains ineligible subject matter.
As to the second step of the Alice analysis (i.e., determining whether
there are additional elements that are sufficient to transform the claim into a
patent-eligible application), we disagree with Appellant that the claims add
limitations that transform the subject matter beyond that described above.
Any additional limitations are business elements that do not “link[] ‘the use
of the [method] to a particular technological environment’” or “ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Alice, 134 S.Ct. at 2357, 2360 (citingMayo, 132 S.Ct. at
1291, 1297). The claim limitations amount to nothing more than
instructions to a dealer and the players to apply the abstract idea of following
a set of mles for a card game variation. See Alice, 134 S. Ct. at 2350 (citing
Mayo, 132 S. Ct. at 1294) (“stating an abstract idea ‘while adding the words
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“apply it”’” is insufficient to transform an abstract idea into a patent-eligible
application). In addition, dealing a standard deck of cards, placing wagers,
and resolving outcomes based on the cards dealt and the wagers placed also
fail to transform the claim into a patent-eligible application. See Smith, 815
F.3d at 819 (citing Alice, 134 S. Ct. at 2357— 58 (“appending purely
conventional steps to an abstract idea does not supply a sufficiently
inventive concept”). At the oral hearing, Appellant argued that under recent
guidelines issued by the Office the claims would fall into a judicial
exception for a specific limitation that is considered to be not well-
understood, routine and/or conventional in the field (Tr. 6:9-18).
Nevertheless, we find that the Specification discloses only conventional
cards and conventional technology, i.e., the computer processor, display, and
data structure storing data of paragraph 15 of the Specification and the push
button of paragraph 41 of the Specification. Thus, we are not persuaded that
the claims include limitations that qualify as significantly more than the
application of an abstract idea.
Accordingly, we sustain the Examiner’s rejection under 35 U.S.C.
§ 101 of independent claim 21.
We have reviewed the further recitations of dependent claims 2—4, 6,
8, 9, 22, and 23, and determine that they do not, individually or as a whole,
transform the invention into patent eligible subject matter, for similar
reasons, i.e., they are directed to the same abstract idea of wagering based on
a card game. We, therefore, sustain the Examiner’s rejection under
35 U.S.C. § 101 of dependent claims 2-4, 6, 8, 9, 22, and 23.
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Claims 12, 13, 15, 16, 18, 19, 24, and 25
We conclude that the reasoning applied to claims 1—4, 6, 8, 9, 22, and
23 applies equally to claims 12, 13, 15, 16, 18, 19, 24, and 25. We note that
under Bilski v. Kappos and Alice, the machine or transformation test has
been superseded. See Alice Corp. v. CLS BankInt 7,----- U.S.--------, 134
S.Ct. 2347, 189 L.Ed.2d 296 (2014); Bilski v. Kappos, 561 U.S. 593, 130
S.Ct. 3218, 177 L.Ed.2d 792 (2010)). We determine that claims 12, 13, 15,
16, 18, 19, 24, and 25 are directed to the same abstract idea as independent
claim 21, and do not, individually or as a whole, transform the invention into
patent eligible subject matter, for similar reasons. See Alice, 134 S.Ct. at
2360; see also DDR Holdings, LLC. v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014) (citing Alice, 134 S. Ct. at 2358) (“[Ajfter Alice, there
can remain no doubt: recitation of generic computer limitations does not
make an otherwise ineligible claim patent-eligible.”). Accordingly, we enter
a new ground of rejection under § 101 as to claims 12, 13, 15, 16, 18, 19, 24,
and 25.
Rejections II-III (Obviousness)
We are persuaded by Appellant’s argument that Hansen fails to
disclose “allowing each player only, but not the dealer, options to draw
additional cards or to split two cards with the same value, in an effort to
improve the players’ hands,” as recited in independent claim 21. The
Examiner relies on the situation in Figure 1 of Hansen in which the dealer
does not draw additional cards when the dealer has 17 points (or split) (See
Final Act. 11; Ans. 8—9). However, we agree with Appellant that the dealer
is not necessarily limited to two cards, as is required by claim 21. Rather,
the dealer in Hansen is limited by the point total rather than the number of
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cards. Therefore, we do not sustain the Examiner’s rejection under § 103 of
independent claim 21 and its dependent claims.
Independent claims 12 and 19 contain similar language and
requirements as independent claim 21. Therefore, we do not sustain the
Examiner’s rejection under § 103 of independent claims 12 and 19, and their
dependent claims, for similar reasons as for independent claim 21.
DECISION
The Examiner’s decision to reject claims 2—4, 6, 8, 9, and 21—23
under § 101 is affirmed.
The Examiner’s decision to reject claims 2—4, 6, 8, 9, 12, 13, 15, 16,
18, 19, and 21—25 under § 103(a) is reversed.
Claims 12, 13, 15, 16, 18, 19, 24, and 25 are newly rejected.
NEW GROUND
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION:
must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal
as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. . . .
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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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)(iv).
AFFIRMED-IN-PART; 37 C.F.R, $ 41.50(b)
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