Ex Parte Rutigliano

Patent Trial and Appeal Board

Feb 16, 2016

13092528 (P.T.A.B. Feb. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/092,528
7590
J oeseph Rutigliano
3028 Soledad Dr
Laughlin, NV 89029
FILING DATE FIRST NAMED INVENTOR
04/22/2011 Joseph Rutigliano
02/16/2016
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.
1048.01 6762
EXAMINER
DENNIS, MICHAEL DAVID
ART UNIT PAPER NUMBER
3711
MAILDATE DELIVERY MODE
02/16/2016 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 JOSEPH RUTIGLIANO
Appeal2013-008025
Application 13/092,528
Technology Center 3700
Before NEALE. ABRAMS, MICHAEL L. HOELTER,
and JAMES J. MAYBERRY, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Joseph Rutigliano (Appellant) seeks our review under 35 U.S.C. § 134
from the Examiner's Final decision rejecting claims 1-20. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM, and designate our affinnance as a new ground of
rejection under 37 C.F.R. § 41.50(b).
Appeal2013-008025
Application 13/092,528
THE INVENTION
The claimed invention is directed to a method of playing a poker
game. Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of playing a card game, the method comprising the
steps of:
providing a physical deck of cards;
providing a plurality of wagering tokens;
dealing at least one face up card from the deck of cards to
each of a plurality of card players, the card player having the
highest face up card being denoted as the Button Position
player;
using the plurality of wagering tokens to initiate at least a
blind round of betting wherein blind bets are placed according
to the Button Position;
dealing at least two face down cards from the deck of
cards to each of the plurality of card players remaining in the
game, the at least face down card being denoted as Hole cards;
using the plurality of wagering tokens to initiate at least a
first round of betting the wagering tokens in conjunction with
the Hole cards;
dealing at least two face up community cards from the
deck of cards, the at least two face up community cards being
denoted as First Flip cards;
using the plurality of wagering tokens to initiate at least a
second round of betting the wagering tokens in conjunction
with the Hole cards and the First Flip cards;
dealing at least one community card face down from the
deck of cards, the at least one face down community card
denoted as an Ocean card;
dealing at least two face up community cards from the
deck of cards, the at least two face up community cards being
denoted as Second Flip cards;
using the plurality of wagering tokens to initiate at least a
third round of betting the wagering tokens in conjunction with
the Hole cards, the First Flip cards, and the Second Flip cards;
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Application 13/092,528
exposing the at least one Ocean card; exposing the at least one
Ocean card;
using the plurality of wagering tokens to initiate at least a
final round of betting the wagering tokens in conjunction with
the Hole cards, the First Flip cards, the
Second Flip cards, and the exposed Ocean card, wherein the
card players remaining in the game after the wagering of tokens
in the final round expose their Hole cards, a total amount of
wagered tokens denoted as a Jackpot; and
awarding the Jackpot to the card players remaining in the
game according to standard poker game hands and rules.
THE REJECTION
Claims 1-20 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. 1
OPINION
Patent-eligibility of Claims 1-20
I
It is the Examiner's position that the methods of playing poker recited
in claims 1-20 are directed to non-statutory subject matter. To reach this
conclusion, the Examiner applied the USPTO Interim Guidance for
Determining Subject Matter Eligibility for Process Claims in View of Bilski
v. Kappas (Fed. Reg. Vol. 75, No. 143, July 27, 2010) (hereinafter "Interim
Guidance"). Final Act. 2; see also Ans. 2-3. The Examiner discussed a
series of factors weighing toward eligibility and factors weighing against
eligibility listed in the Interim Guidance and concluded:
[T]he claimed invention is drawn to a wagering game process
and does not require the wagering game process steps to be
implemented by a machine. Nor do the claims require that the
process particularly transform an article. That is to say, cards
1 None of the claims are rejected on the basis of prior art.
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are not transformed when they are dealt because they are still a
deck of cards unchanged in their disposition and quantity. To
this extent, claims 1-20 fail the machine-or-transformation test
delineated by Bilski.
Although the machine-or-transformation test is not
conclusive in determining statutory eligibility, in the present
case, there are not enough factors that weigh toward eligibility
in the absence of being implemented by a machine, or
transforming an article. Again, taken as a whole, claims 1-20
are held to claim an abstract idea, and are therefore rejected as
ineligible subject matter under 35 U.S.C. § 101.
Final Act 2.
In response to Appellant's arguments in the Appeal Brief, the
Examiner further states:
[T]he fact that no particular machine is required to perform the
claimed method steps as a whole, nor do the steps result in any
transformation of a particular article, are indicators that
applicant is attempting to patent an abstract idea. Dealing cards
from a deck does not transform the deck of cards to a different
state or thing. It is the same deck of cards, just arguably a deck
spread out over a greater area. It is noted here that the claims
require providing and dealing physical cards. This is not
considered the use of a particular machine to implement the
claimed method as required by Bilski. The step of using the
device (i.e. dealing cards and using tokens) does not impose a
meaningful limit on the claimed invention. Rather, it is
tangential association of articles to a method of playing a card
game in which the crux of the game is directed to the mental
processes of "denoting[,]" "betting" and "awarding."
It is noted here that several factors weighing toward and
against patent eligibility have been analyzed by the examiner,
including but not limited to the machine and transformation
factors and the abstract idea or general concept factors
discussed above. It is this examiner's opinion that the factors in
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Application 13/092,528
this case weighing against patent eligibility far outweigh the
factors weighing toward patent eligibility.
Ans. 4.
II
The initial argument set out by Appellant in response to the
Examiner's rejection is that claims 1-20 are not directed to an abstract
concept:
Claim 1 is not abstract at least because of its many
detailed recitations. Clause [a] recites providing a deck of
cards. Clause [b] recites providing wagering tokens. Clauses
[c], [e], [g], [i], and rn recite dealing specific numbers of cards
either face up or face down. Clauses [d], [f], [h], [k], and [m]
recite "using the plurality of wagering tokens" for various
recited betting, clause [ 1] recites exposing at least one Ocean
card, and clause [ o] recites awarding the Jackpot. Claim 1 is far
from abstract. It is tied to the physical card deck and to the
plurality of wagering tokens - tangible physical objects. It
effects a transformation of the playing cards and of the
wagering tokens. And it results in awarding a Jackpot. As
recited by clause [m] the Jackpot includes "a total amount of
wagered tokens."
App. Br. 8.
In addition, Appellant argues, the method of claim 1 is tied to a
physical card deck and a plurality of wagering tokens, which are tangible
physical objects. In this regard, Appellant contends that claim 1 is similar to
claims that were found not to be abstract in Ex parte Carbonaro, PT AB
Appeal No. 2012-004472, 2013 Pat. App. LEXIS 949 (March 1, 2013), and
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Ex parte Svatovic, PTAB Appeal No. 2012-011750, 2013 Pat. App. LEXIS
740 (February 11, 2013). App. Br. 10; see also id. at 10-12.2
Appellant also argues that the claims do not recite a mental process
because they recite a physical set of cards and a plurality of wagering
tokens, and that they meet the machine-or-transformation test in that they
"affect a transformation of the physical deck of cards and the plurality of
wagering tokens" (id. at 13), because all card games, such as Black Jack and
Poker, "use the same deck of cards, yet the cards are transformed in
meaning, value, and representation depending on how the cards are dealt"
(Reply Br. 3). Finally, Appellant points out that "claim 1 recites a practical
application of its inventive concept," for steps recite dealing one or more
cards face up or face down, and using the plurality of wagering tokens for
betting. App. Br. 15.
III
The Examiner applied the Interim Guidance, which discusses Bilski v.
Kappas, 130 S.Ct. 3218 (2010) and patent-ineligible subject matter.
However, the Interim Guidance was developed before the Supreme Court
issued its decision in Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S.Ct. 2347
(2014) further explaining the law in this area. Despite this intervening
2 We note in passing that the claims in Carbonaro recited "a roulette wheel
having a plurality of primary wagering positions ... disposed peripherally
about the wheel," and those in Svatovic "a game board consisting of ten
horizontal rows and ten vertical columns of squares having dark and light
colors, and a plurality of [light-colored and dark-colored] playing pieces."
Thus, these claims differ in scope from Appellant's claims by requiring the
presence and interaction of physical components other than cards and
wagering tokens in order to carry out the steps of the claimed methods.
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precedent, we atlirm the Examiner's rejection of claims 1-20 under§ 101.
In doing so, we apply the decision in Alice as set forth below.
In Alice, the Supreme Court discussed its decision in Mayo
Collaborative Services v. Prometheus Labs., Inc., 132 S.Ct. 1289 (2012),
and explained the test for determining whether a claim is directed to patent-
ineligible subject matter as follows:
In Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S.--, 132 S.Ct. 1289, 182 L.Ed.2d
321 (2012), we set forth a framework for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those
concepts. First, we determine whether the claims at issue are
directed to one of those patent-ineligible concepts. Id., at--,
132 S.Ct., at 1296-1297. If so, we then ask,"[ w]hat else is
there in the claims before us?" Id., at--, 132 S.Ct., at 1297.
To answer that question, we consider the elements of each
claim both individually and "as an ordered combination" to
determine whether the additional elements "transform the
nature of the claim" into a patent-eligible application. Id., at -
-, 132 S.Ct., at 1298, 1297. We have described step two of
this analysis as a search for an "'inventive concept' "-i.e., an
element or combination of elements that is "sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself." Id., at--, 132
S.Ct., at 1294.
Alice, 134 S.Ct. at 2355.3
Accordingly, we first determine whether the claims at issue are
directed to a patent-ineligible concept (such as an abstract idea). In
3 In a memo dated June 25, 2014, the USPTO provided guidance to
examiners in applying Alice. See Preliminary Examination Instructions in
view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS
Bank International, et. al. available at
http://www.uspto.gov/patents/announce/alice_pec_25jun2014.pdf.
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the event that the claims are patent-ineligible, we then determine
whether there is something else in the claims that ensures that they are
directed to significantly more than a patent-ineligible concept.
In Alice, the Supreme Court discussed its decision in Bilski v. Kappas,
130 S.Ct. 3218 (2010), and stated:
It follows from our prior cases, and Bilski in
particular, that the claims at issue here are directed to an
abstract idea. Petitioner's claims involve a method of
exchanging financial obligations between two parties using
a third-party intermediary to mitigate settlement risk. The
intermediary creates and updates "shadow" records to reflect
the value of each party's actual accounts held at "exchange
institutions," thereby permitting only those transactions for
which the parties have sufficient resources. At the end of each
day, the intermediary issues irrevocable instructions to the
exchange institutions to carry out the permitted transactions.
On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party
to mitigate settlement risk. Like the risk hedging in Bilski, the
concept of intermediated settlement is "'a fundamental
economic practice long prevalent in our system of commerce."'
Ibid.; see, e.g., Emery, Speculation on the Stock and Produce
Exchanges of the United States, in 7 Studies in History,
Economics and Public Law 283, 346-356 (1896) (discussing
the use of a "clearing-house" as an intermediary to reduce
settlement risk). The use of a third-party intermediary (or
"clearing house") is also a building block of the modem
economy. See, e.g., Yadav, The Problematic Case of
Clearinghouses in Complex Markets, 101 Geo. L.J. 387, 406-
412 (2013); J. Hull, Risk Management and Financial
Institutions 103-104 (3d ed. 2012). Thus, intermediated
settlement, like hedging, is an "abstract idea" beyond the scope
of§ 101.
Alice, 134 S.Ct. at 2356 (emphasis added).
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The claims in Alice were directed to a "method of exchanging
obligations as between parties" that included "creating a shadow credit
record and a shadow debit record" and then adjusting these shadow records
as transactions occurred. Alice, 134 S.Ct. at 2352 n. 2. The claimed
invention required use of a computer. Alice, 134 S.Ct. at 2359.
The title of Appellant's invention is "METHOD OF PLAYING A
POKER GAME," and the claims are all directed to "[a] method of playing a
card game." A card game such as poker is, in our view, effectively a method
of exchanging and resolving financial obligations based on probabilities
created during the distribution of the cards, with tokens being used to
represent and indicate the financial aspects of the game. Thus, the "method
of playing a card game," as recited in Appellant's claims is akin to the
"method of exchanging financial obligations" discussed in Alice.
Appellant's claims recite rules that tell the players and the dealer what to do
in response to particular events that arise as a result of actions and
interactions with a deck of cards. These rules are similar to an instruction to
follow a formula or an algorithm to conduct the game and resolve the
parties' financial obligations. Following the framework set forth in Alice,
we agree with the Examiner that claims 1-20 are directed to instructions to
apply the abstract rules of playing a type of card game and, more
specifically, wagering on that game. See Final Act. 2; see also Ans. 3.
Abstract intellectual concepts are not patentable. Parker v. Flook, 437 U.S.
584, 589 (1978); see also Gottschalkv. Benson, 409 U.S. 63, 67---68 (1972).
Therefore, we find claims 1-20 to be directed to an abstract concept.
As we noted above, the question to be settled next is whether claims
1-20 recite an element or combination of elements that is enough to ensure
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that these claims recite significantly more than an abstract idea. Appellant
argues that the claims recite specific steps tied to physical cards and
wagering tokens, and include specific recitations of dealing various cards
and initiating wagering, which cause the subject matter of the claims to be
patent eligible. Appeal Br. 9. Appellant further argues that the method steps
in the claims are "tied to a physical card deck and plurality of wagering
tokens - tangible physical objects [that] effects a transformation of the
playing cards and of the wagering tokens" (App. Br. 12), and that
[i]n reciting the "dealing" of the cards and the "using the
plurality of wagering tokens" for betting, claim 1 recites a
reorganization of the cards so they have a function suitable for
different stages of the card game. For example, Fig. 3 depicts
the cards and tokens rearranged as a game is in progress (App.
Br. 13).
Appellant also asserts that the claims recite practical applications of the
inventive concept, such as dealing one of more cards face up or face down,
using the waging tokens for betting, and awarding a jackpot, and therefore
they do not preempt any concepts. App. Br. 15.
However, we agree with the Examiner that the steps recited in claims
1-20 are not sufficiently transformative to render the claimed subject matter
patent-eligible. In other words, we find that dealing cards, displaying cards,
discarding cards, holding cards, betting, using wagering tokens, paying
winning hands, etc., taken individually or as an ordered combination, do not
add enough to the claims to transform the recited methods into patent-
eligible subject matter. Rather, cards and hands used in a poker game are
not used for their physical characteristics as cards or as combinations of
cards. Instead, they are representations of a number or value, just as
electronically kept "shadow credit record" and "shadow debit record" were
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in the computer implementation of the representative claim in Alice. In
particular, the recitation of "a physical deck of cards" and a "plurality of
wagering tokens" in the claims is not sufficient to transform the abstract
concept into patent-eligible subject matter.
Therefore, we find that the use of cards as recited in claims 1-20
amounts to nothing significantly more than instructions to apply the abstract
idea of playing a card game such as a type of poker.
DECISION
Although we have carefully considered all of Appellant's arguments,
we are not persuaded that the decision made by the Examiner is in error,
even when considered in light of the recent Supreme Court decision in Alice.
This being the case, the rejection of claims 1-20 is affirmed.
NEW REJECTION UNDER 37 C.F.R. § 41.50(b)
Because the Examiner's decision that claims 1-20 were patent
ineligible was based upon the Bilski guidance and Appellant directed his
arguments thereto, whereas the Board considered this issue in view of the
Alice guidance, we designate our affirmance of the rejection of claims 1-20
under 35 U.S.C. § 101 as a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2008).
37 C.F.R. § 41.50(b) provides that "[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 Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
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( 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 proceeding will be remanded to
the Examiner. . . .
(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)(l), in order to preserve the right to seek
review under 35 U.S.C. §§ 141or145 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 elect 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)
rvb
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