Ex Parte Segebarth et al

Patent Trial and Appeal Board

Nov 26, 2013

12316313 (P.T.A.B. Nov. 26, 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.
12/316,313 12/11/2008 Larry Segebarth 1002.00001 6540
97510 7590 11/27/2013
The Law Office of James Baudino, PLLC
600 SIX FLAGS DRIVE
SUITE 400
ARLINGTON, TX 76011
EXAMINER
LAYNO, BENJAMIN
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
11/27/2013 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 LARRY SEGEBARTH and DARIN L. PETERS
____________________

Appeal 2011-012997
Application 12/316,313
Technology Center 3700
____________________

Before: JOHN C. KERINS, NEIL T. POWELL, and
BEVERLY M. BUNTING, Administrative Patent Judges.

POWELL, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/316,313

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
16-31. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

THE CLAIMED SUBJECT MATTER
Independent claim 16, reproduced below, is illustrative of the
appealed subject matter.
16. A method for administering a game of
chance, comprising:
providing a plurality of game pieces to one
or more players, each game piece having a unique
combination of indicators, the plurality of game
pieces equal to a number of unique combinations
of indicators; and
determining a winning combination of
indicators matching one and only one of the unique
combinations.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lees US 4,775,155 Oct. 4, 1988
Hesland US 5,096,202 Mar. 17, 1992

REJECTIONS
Appellants seek our review of the following rejections.
I. Claims 16-26, 30, and 31 stand rejected under 35 U.S.C. § 101.
II. Claims 16-19 and 21-31 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Lees.
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III. Claim 20 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Lees and Hesland.

ANALYSIS
Rejection I
The Examiner asserts that the pending claims relate to an abstract
concept, specifically a set of rules for a game. Ans. 8-10. The Examiner
indicates that the claims would preempt use of this abstract concept. Id. at
9-10. The Examiner contends that the claims do not recite a transformation
of underlying subject matter. Id. at 5. The Examiner further contends that
the claims do not recite a sufficient tie to a machine or apparatus to
meaningfully limit the scope of the claims from preempting the abstract
concept. Id. In connection with this, the Examiner asserts that the “game
pieces” and “indicators” recited in the claims constitute objects merely
operated on by the process, not objects that implement the process. Id.
Additionally, conceding that the claimed “electronic virtual game pieces”
(claim 20) provide a tie to a machine, the Examiner asserts that providing
the virtual game pieces constitutes only insignificant extra-solution activity
within the context of the claimed invention. Id. The Examiner notes that the
recitation of method steps can meaningfully limit a claim relative to an
abstract concept, but maintains that the method steps of the present claims
do not meaningfully limit the claims from preempting use of the abstract
concept. Id. at 9-10.
Appellants argue that the Examiner errs by not using the correct legal
tests to analyze the eligibility of the claims. App. Br. 6-12; Reply Br. 4-5.
Specifically, Appellants argue that the Examiner errs by employing a
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machine or transformation test exclusively, failing to give due weight to
other factors. App. Br. 6-7. Appellants argue that the Examiner avers
consideration of other factors, but fails to adequately explain the effect of
these other factors on the ultimate conclusion of ineligibility. Id. at 7. For
example, the Examiner arbitrarily dismisses the recitation of method steps as
not meaningfully limiting the claims, even though methods of playing games
constitute patent-eligible subject matter, Appellants argue. Id. at 7.
Additionally, Appellants argue that the Examiner errs by arbitrarily deciding
that a set of rules for a game do not constitute eligible subject matter, in
contravention of the Federal Circuit’s admonition against categorically
rejecting subject matter because of a belief that a claim does not merit a
patent. Id.; see also Research Corp. Techs., Inc. v. Microsoft Corp., 627
F.3d 859, 868 (Fed. Cir. 2010).
Appellants argue that the claims define patent-eligible subject matter
because they recite an application of a concept, not merely the concept itself.
App. Br. 7. Appellants elaborate that the claims recite “a functional and
palpable application of a game of chance,” and that the claims recite the use
of one or more physical components. Id. at 8. In the case of claims 16 and
22, Appellants assert that the claims recite physical structure in the form of
one or more game pieces. Id. at 8, 10. In the case of claim 30, Appellants
assert that the claim recites a physical component, in the form of “a chance
having a unique combination of indicators where the number of chances
equals the number of unique combinations of indicators.” Id. at 12-13.
With respect to claim 30, the Examiner has the better position.
Appellants provide no evidence or other basis for doubting the Examiner’s
reasonable assertion that the rules of a game constitute an abstract concept.
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Additionally, we do not agree with Appellants’ assertion that a “chance
having a unique combination of indicators” constitutes a physical component
that meaningfully limits the claim.
To the contrary, it appears that one could use a combination of mental
steps and oral communication to execute the claim limitation of “providing
to each of a plurality of players at least one chance to win the game, each
chance comprising a unique combination of indicators, wherein the number
of chances to win the game equals a number of unique combinations of
indicators.” Specifically, one could use mental steps to determine the
indicators and the composition of each chance, and one could provide at
least one chance to each player by orally communicating the indicators
composing the chance. Indeed, it appears that one could execute the
limitations of claim 30 entirely with mental steps and oral communication.
Thus, we have no reason to doubt the Examiner’s assertion that claim 30
would preempt all use of the abstract concept of the rules of a game.
Appellants’ vague, conclusory arguments that the Examiner did not
apply the right legal test and that claim 30 recites a functional palpable
application of a game of chance do not give us any specific reason to doubt
the Examiner’s determination. Thus, Appellants do not apprise us of error in
the rejection of claim 30 under § 101. Appellants do not argue claim 31
separate from independent claim 30. Accordingly, we sustain the rejection
of claims 30 and 31 under § 101.
With respect to claims 16-26, Appellants have the better position.
Each of these claims recites “game pieces,” which requires either physical
structure or a machine to create electronic virtual game pieces. And we do
not agree with the Examiner that physical game pieces merely constitute
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objects acted on by the method, or that creating electronic virtual game
pieces with a machine constitutes extra-solution activity. To the contrary,
we agree with Appellants that the game pieces recited in the disputed claims
occupy a central role in the claimed inventions; when used in the game, the
game pieces provide the mechanism for determining the winner of the game.
Reply Br. 6-7. Thus, in contrast to claim 30, claims 16-26 do not appear to
preempt all use of the abstract concept of the game rules; instead, these
claims appear limited to implementation of the game rules using physical
objects or a machine. Accordingly, we do not sustain the rejection of claims
16-26 under § 101.

Rejection II
Appellants dispute the Examiner’s finding that Lees discloses the
claim 16 limitations of “providing a plurality of game pieces . . . the plurality
of game pieces equal to a number of unique combinations of indicators” and
“determining a winning combination of indicators matching one and only
one of the unique combinations.” App. Br. 13-14; Reply Br. 9-10; Ans. 6,
10-11. Appellants and the Examiner both assert that Lees discloses
providing 660 game pieces. App. Br. 14; Ans. 10. Appellants argue that
Lees does not disclose that its number of unique combinations of indicators
equals 660. App. Br. 13-14. Instead, Appellants contend, Lees discloses 15
unique combinations of 5 indicators. Id. at 14.
In response, the Examiner emphasizes certain portions of Lees that
disclose identifying “a winner” when a column of numbers is chosen.
Ans. 10-11. The Examiner contends that these disclosures suggest only one
player wins the game, demonstrating that the number of game pieces must
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equal the number of unique combinations of indicators. Id. at 11. The
Examiner also notes that Lees discloses embodiments that use three-
indicator or four-indicator combinations, rather than five-indicator
combinations. Id. The Examiner asserts that such embodiments would have
more than 15 unique combinations of indicators.
Appellants respond that Lees’ disclosure of identifying “a winner”
does not necessarily constitute a disclosure that only one person will win.
Reply Br. 9. Indeed, Appellants argue that Figure 3 and the associated
discussion in column 4, lines 46-52, of Lees suggests that multiple people
may win. Id. at 9-10.
Appellants’ arguments apprise us of error in the rejection. Consistent
with Appellants’ argument, Lees’ disclosure of identifying “a winner” does
not clearly convey to us that only one person wins, particularly in light of
Appellants’ viable argument that Lees’ Figure 3 and the accompanying text
suggest that more than one person may win. Additionally, even if we accept
the Examiner’s assertion that the embodiments of Lees that use three-
indicator or four-indicator combinations would have “more than fifteen”
unique combinations of indicators, this does not establish that these
embodiments have 660 unique combinations of indicators. Thus, without
further evidence or explanation, we do not believe the Examiner has
established by a preponderance of the evidence that Lees discloses the claim
16 limitations of “providing a plurality of game pieces . . . the plurality of
game pieces equal to a number of unique combinations of indicators” and
“determining a winning combination of indicators matching one and only
one of the unique combinations.” Accordingly, we do not sustain the
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anticipation rejection of claim 16, or of claims 17-19 and 21 depending
therefrom.
The anticipation rejection of claims 22-31 raises the same substantive
issues with respect to similar limitations of independent claims 22, 27, and
30. Accordingly, for the same reasons, we do not sustain the anticipation
rejection of claims 22-31.

Rejection III
The rejection of claim 20 does not contain any findings curing the
above-discussed deficiency in the rejection of claim 16 as anticipated by
Lees. See Ans. 7, 11. Accordingly, we do not sustain the rejection of claim
20.

DECISION
We reverse the Examiner’s decision rejecting claims 16-26 under 35
U.S.C. § 101.
We affirm the Examiner’s decision rejecting claims 30 and 31 under
35 U.S.C. § 101.
We reverse the Examiner’s decision rejecting claims 16-19 and 21-31
under 35 U.S.C. § 102(b).
We reverse the Examiner’s decision rejecting claim 20 under 35
U.S.C. § 103(a).

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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