Ex Parte Russell

Patent Trial and Appeal Board

Sep 2, 2016

12608097 (P.T.A.B. Sep. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/608,097 10/29/2009
29880 7590 09/07/2016
FOX ROTHSCHILD LLP
PRINCETON PIKE CORPORATE CENTER
997 LENOX DRIVE
BLDG. #3
LAWRENCEVILLE, NJ 08648
FIRST NAMED INVENTOR
STEVEN L. RUSSELL
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.
119266.00101 5832
EXAMINER
COLLINS, DOLORES R
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
09/07/2016 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
following e-mail address( es):
ipdocket@foxrothschild.com
PTOL-90A (Rev. 04/07)
u-NITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN L. RUSSELL
Appeal2014-008443
Application 12/608,097 1
Technology Center 3700
Before JILL D. HILL, MARK A. GEIER, and JASON W. MEL VIN,
Administrative Patent Judges.
MEL VIN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal arises under 35 U.S.C. § 134(a), from a rejection of
claims 14--24. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies Double-Back Jack, LLC as the real party in interest.
Appeal Br. 3.
Appeal2014-008443
Application 12/608,097
BACKGROUND
The claims are directed to a method of playing a variation of
blackjack. Claim 14, reproduced below, is illustrative of the claimed subject
matter:
14. A method of playing a blackjack-type game, the method
compnsmg:
receiving a first bet from a player;
from one or more decks of playing cards, dealing an initial
two-card hand to the player;
from the one or more decks, dealing a dealer hand;
from the one or more decks, dealing one or more additional
cards to the player;
determining, based on conventional rules of blackjack, that a
sum of the values of the initial two-card hand and the
additional cards exceeds 21;
receiving, from the player, an additional bet;
in response to the player placing the additional bet, dealing,
from the one or more decks, a final card to the player;
subtracting a value of the final card from the determined
sum to yield a new sum; and
based on the new sum, determining whether the player has a
winning hand, a push, or a losing hand.
Appeal Br. 18 (Claims App.).
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Application 12/608,097
REJECTION
Appellant seeks our review of the rejection of claims 14--24 as
directed to patent-ineligible subject matter under 35 U.S.C. § 101. Final
Act. 2--4.
DISCUSSION
The Examiner determines that independent claims 14 and 20 are
directed to ineligible subject matter because they "include no recitation or
insufficient recitation of a machine or transformation or [are] not directed to
a proper application of a law or nature, or [are] just a mere statement of a
general concept." Final Act. 4. The Examiner further reasons that the
dependent claims, 15-19 and 21-24, fail to add significant limitations to the
independent claims and that the dependent claims "are no more than a field
of use or merely involve insignificant extra-solution activity or [are]
intangibly related to the performance of the steps." Id.
Appellant filed an Appeal Brief on May 12, 2014, the Examiner
mailed an Answer on June 5, 2014, and Appellant filed a Reply Brief on
August 5, 2014. On June 19, 2014, the Supreme Court decided Alice Corp.
v. CLS Bank International, 134 S. Ct. 2347 (2014). Thus, Appellant had an
opportunity to address Alice in the Reply Brief. Nonetheless, Appellant
argues that he has been denied rights under the Administrative Procedure
Act (APA). See Reply Br. 7 ("The Office's Answer fails to present an
argument that the pending claims are not patentable subject matter that is
grounded in current law."). Because Appellant had opportunity to address
the two-part test set forth in Alice, we do not agree that he has been deprived
rights under the AP A.
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Application 12/608,097
We also do not agree with Appellant's argument that the rejection in
this case should be reversed for violating the AP A by reaching a result
different from an earlier reissue patent that Appellant asserts to contain
"remarkably similar claims to those at issue in this appeal." See Reply Br. 6
(citing U.S. RE43,822). Our review is limited to the rejection before us-
whether the unique set of claims presented here recite patent-eligible subject
matter. See 35 U.S.C. § 6(b )(1 ). Thus, we do not agree that the APA
obligates us "to account for previous allowances of similar claims." See
Reply Br. 6. Nonetheless, even considering the previous allowance in
RE43,822 reveals plain differences: it presented claims distinct from those
here and was allowed before the Alice decision (see Application No.
12/346,342, July 11, 2012, Notice of Allowance), and we have no indication
that § 101 was otherwise at issue. Moreover, to the extent that there is some
inconsistency between the issuance of that patent and the rejection here, it
does not undermine the rejection here. In re Shinnecock Smoke Shop, 571
F.3d 1171, 1175 (Fed. Cir. 2009) ("Even if his allegations were accurate, the
most Applicant could establish is that the USPTO should have rejected the
other marks. It does not follow that the proper remedy ... is to grant
Applicant's marks in contravention of section 1052(a).").
Regarding the merits of Appellant's argument that the claims are
directed to patent-eligible subject matter, we agree with the Examiner that
they are not. Appellant characterizes the Examiner as taking the position
that the claims: "(1) are not performed by a machine; (2) do not transform
the deck of cards; [and] (3) recite a new set of rules for playing a card game,
which the Office argues is unpatentable per seas an abstract idea." Appeal
Br. 13. Each characterization is either unpersuasive or insufficient.
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Appeal2014-008443
Application 12/608,097
First, we do not agree that implementing the claimed methods
"transforms" the deck of cards. According to Appellant, "the deck of cards
is transformed because the undealt deck of cards holds no useful information
and has no meaning in its undealt state" whereas "[t]he deck is 'transformed'
into a meaningful combination upon dealing." Reply Br. 6. "[T]hese
actions," however, "do not transform the deck because the cards remain the
same, albeit in a different order." Ex Parte Ray Smith & Amanda Tears
Smith, Appeal No. 2013-008361, 2015 WL 5050036, at *7 (PTAB Aug. 10,
2015).
Second, even characterizing the deck of cards as a "machine" does not
resolve the question of patent eligibility. The Supreme Court has explained
that "simply implementing a mathematical principle on a physical machine,
namely a computer, [is] not a patentable application of that principle."
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1301
(2012) (citing Gottschalk v. Benson, 409 U.S. 63, 64 (1972)). In other
words, simply identifying a tangible apparatus recited in the claims does not
establish patent eligibility.
Finally, without any innovative concept in the tangible
implementation of the game, the rules themselves cannot comprise a patent-
eligible invention. Indeed, binding case law resolves this issue. In In re
Smith, 815 F.3d 816 (Fed. Cir. 2016), the Federal Circuit held that claims
directed to "a wagering game utilizing real or virtual standard playing cards"
were not patent eligible. 815 F .3d at 817. The court summarized its
decision as a result of "the claims cover[ ing] only the abstract ideas of rules
for playing a wagering game and us[ing] conventional steps of shuffling and
dealing a standard deck of cards." Id. We are unaware of a basis on which
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Application 12/608,097
to distinguish the claims before us, and therefore hold that the claims are
directed to ineligible subject matter under Alice.
The claims here relate to a set of rules for "playing a blackjack-type
game." Appeal Br. 18 (Claims App.). We agree with the Examiner's
conclusion that "a set of rules qualifies as an abstract idea." Ans. 3; Smith,
815 F .3d at 819 ("[T]he rejected claims, describing a set of rules for a game,
are drawn to an abstract idea.").
Patent eligibility thus turns on whether the claims recite "an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at
1294, 1298). As the Court explained, "the relevant question is whether the
claims here do more than simply instruct the practitioner to implement the
abstract idea ... on a generic [apparatus]. Id. at 2359. And here as in Alice,
they do not.
Viewing the claim elements separately, each tangible element is both
embodied and used in its conventional manner. The "one or more decks of
playing cards" are neither configured in any particular manner nor restricted
to a novel form. See Appeal Br. 11 ("standard decks of playing cards").
And the activities of shuffling and dealing the cards "are 'purely
conventional' activities." Smith, 815 F.3d at 819. Nothing changes when
viewing the claim elements as an ordered combination-the tangible
components "add ... nothing that is not already present when the steps are
considered separately." Alice, 134 S. Ct. 2359 (quoting Mayo, 132 S. Ct. at
1298). Thus, the claims recite nothing sufficient under Alice to transform
the abstract idea of the claimed rules into a patent-eligible invention.
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Appellant also argues that the "blackjack playing surface comprising
designated areas for player bet placement" recited in claim 20 further
contributes to patent eligibility. Appeal Br. 15-16. We do not agree. As the
Examiner points out, the playing surface does not itself perform any of the
claimed steps, or contribute to or interact with any of the other steps. Ans.
2-3. Thus we agree that "[ t ]he step of including a playing surface does not
impose a meaningful limit on the claimed invention." Id. at 3.
For the reasons described above, we sustain the Examiner's rejection
of claims 14 and 20. Appellant does not separately argue for the
patentability of other claims, which therefore stand or fall with claims 14
and 20. Accordingly, we sustain the Examiner's rejection.
DECISION
For the above reasons, the Examiner's rejection of claims 14--24 is
affirmed.
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
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