Ex Parte Smith et al

Patent Trial and Appeal Board

Aug 25, 2016

13272416 (P.T.A.B. Aug. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/272,416 10/13/2011
97462 7590 08/26/2016
Mark A. Litman & Associates, P.A.
7001 Cahill Road, Ste. ISA
Edina, MN 55439
FIRST NAMED INVENTOR
Ray Smith
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.
321.013US1 8583
EXAMINER
LIDDLE, JAY TRENT
ART UNIT PAPER NUMBER
3716
MAILDATE DELIVERY MODE
08/26/2016 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 RAY SMITH and AMANDA TEARS SMITH
Appeal2013-008893
Application 13/272,416
Technology Center 3700
Before: JOHN C. KERINS, EDWARD A. BROWN, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1-19 and 22. The Examiner indicates that claims 20 and 21 are allowed. 1
We have jurisdiction under 35 U.S.C. § 6(b).
1 Should there be further prosecution of this application (including any
review for allowance), the Examiner may wish to review claims 20 and 21
for compliance under 35 U.S.C. § 101 in light of the USPTO's guidance on
patent eligible subject matter. See 2014 Interim Guidance on Patent Subject
Matter Eligibility, 79 Fed. Reg. 74,618 (Dec. 16, 2014); "Preliminary
Examination Instructions in view of the Supreme Court Decision in Alice
Corporation Pty. Ltd. v. CLS Bank International, et al." Memorandum to the
Patent Examining Corps, June 25, 2014; see also July 2015 Update on
Appeal2013-008893
Application 13/272,416
We affirm and designate this affirmance as a NEW GROUND OF
REJECTION.
CLAIMED SUBJECT MATTER
The claims are directed to a method of playing a wagering card game.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method of playing a wagering card game comprising:
a dealer controlling a set of physical playing cards within an
electromechanical shuffling device comprising a processor that
controls randomization of playing cards within the
electromechanical shuffler;
the dealer accepting at least one wager at a player position on an
underlying playing card game;
the electromechanical shuffling device randomizing the set of
physical playing cards;
the dealer providing a first subset of exactly three random
physical playing cards from the randomized set of physical
playing cards to a player position;
the dealer providing a second subset of exactly three random
physical playing cards from the randomized physical set of
playing cards to a dealer position;
the dealer accepting continuation of the underlying playing card
game at each player position having made the at least one wager
by accepting an additional raise wager or receiving no raise
wager at a player position;
Subject Matter Eligibility, 80 Fed. Reg. 45,429 (July 30, 2015), and May
2016 Subject Matter Eligibility Update, 81 Fed. Reg. 27 ,381 (May 6, 2016).
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Application 13/272,416
the dealer then reveals all physical playing cards at the player
positions and all cards at the dealer position and the dealer
evaluates each player hand against the dealer hand as follows:
player position hand having all three cards with a rank below a
predetermined rank automatically loses;
a highest rank card from each player hand and the dealer hand
playa game of war as a first sub-game, with the highest rank
wmmng;
a second highest rank card from each player hand and the dealer
hand playa game of war as a second sub-game, with the highest
rank winning;
any ties void a sub-game;
if the dealer determines that a player position's two sub-games
provide more wins against the dealer, the dealer resolves the at
least one wager and any additional raise wager in favor of the
player position based on the qualification of the dealer's hand;
if the dealer determines that a dealer position's two sub-games
provide more wins against the player, the dealer resolves the at
least one wager and any additional raise wager in favor of the
dealer position; and
if the dealer determines that a player position's two sub-games
provide a same number of wins against the dealer, the dealer will
resolve the at least one wager and any additional raise wager on
the basis of an unused third card in the player position hand and
the dealer position hand as follows:
the dealer position's third card or the player position's third card
with a predetermined relative rank of either the highest rank or
the lowest rank is declared a winner;
ties between the dealer position's third card and the player
position's third card are determined by a preset rule of at least
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Application 13/272,416
one result selected from the group consisting of a) the at least one
bet and any additional raise bet are a push; b) the at least one bet
and any additional raise bet are won at the player position; c) the
at least one bet and any additional raise bet are won at the dealer
position; e) the at least one bet is a push and any additional raise
bet is won by the dealer position; f) the at least one bet is a push
and any additional raise bet is won at the player position; g) the
at least one bet is won at the dealer position and any additional
raise bet is a push; and h) the at least one bet is won at the player
position and any additional raise bet is a push.
REJECTION
Claims 1-19 and 22 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Final Act. 3.
OPINION
The issues joined between the Examiner and Appellants in this appeal
involve whether the claimed subject matter is eligible or not under the
"machine-or-transformation test," which is "a useful and important clue, an
investigative tool, for determining whether some claimed inventions are
processes under§ 101." Bilski v. Kappas, 130 S.Ct. 3218, 3227 (2010); see
Final Act. 3-5; Appeal Br. 12--43; Ans. 2--4; Reply Br. 4--8. The Examiner
determined that the claims do not meet the machine-or-transformation test,
and rejected claims 1-19 and 22 as being directed to patent-ineligible subject
matter. Appellants argue to the contrary, maintaining that the claims are not
directed to abstract ideas, and further meet the machine-or-transformation
test.
Since the time of the briefing in this appeal, additional pertinent
precedential decisions have issued from the United States Supreme Court
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Application 13/272,416
and the United States Court of Appeals for the Federal Circuit. In particular,
the Supreme Court decision in Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134
S.Ct. 2347 (2014) announced that a two-step test for determining whether
claimed subject matter is or is not eligible for patent protection. In short,
and for the purposes of the subject matter of the claims on appeal, the two-
step test may be described as first determining whether a claim is directed to
a patent-ineligible concept (such as an abstract idea) and, if so, then
determining whether there is something else in the claim that ensures that it
is directed to significantly more than a patent-ineligible concept.
The Federal Circuit, in a de novo review of an earlier decision by the
Board affirming a rejection of game play claims as being patent ineligible,
affirmed that Board decision. In re Smith, 815 F.3d 816 (Fed. Cir. 2016).2
In so doing, the Federal Circuit concluded that claims directed to "rules for
conducting a wagering game, compare to other 'fundamental economic
practice[s]' found abstract by the Supreme Court," and the claimed "'method
of conducting a wagering game' is drawn to an abstract idea much like
Alice's method of exchanging financial obligations and Bilski 's method of
hedging risk." Id. at 818-819. Ultimately, the Federal Circuit held that
claims describing a set of rules for a game are to be regarded as an abstract
idea. Id. at 819.
The Federal Circuit, following the Alice precedent, noted that claims
drawn to abstract ideas such as a set of rules for a game, may be patent
eligible if the claims involve an inventive concept sufficient to transform the
claimed abstract idea into patent-eligible subject matter. Id. The Court
2 The appellants in the Federal Circuit appeal are the same individuals
named as inventors and Appellants in the present appeal.
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cautioned that "appending purely conventional steps to an abstract idea does
not supply a sufficiently inventive concept." Id. Taking its lead from an
argument that claim limitations requiring the shuffling and dealing of
physical playing cards render the claims patent-eligible, the Court found
such steps to be "'purely conventional' activities," much like the computer
implementation aspects of the claims in Alice. Id. As a result, the Court
held that "the rejected claims do not have an 'inventive concept' sufficient to
'transform' the claimed subject matter into a patent-eligible application of
the abstract idea." Id.
The claims involved in the present appeal are similarly directed to "a
method of playing a wagering card game," and largely involve recitations of
sets of playing rules for a game, which the Federal Circuit, as discussed
above, regards as abstract ideas. In accord with this precedent, we find the
claims on appeal to be directed to patent-ineligible abstract ideas.
Turning to the issue as to whether the claims include a transformative
inventive concept, we note that Appellants point to elements in each of
claims 1 (and 22), 2, 3, and 4 that are argued to be non-abstract concepts.3
Appeal Br. 12; Reply Br. 5---6. These elements differ at least to some degree
from the basic shuffling and dealing of physical playing cards found in the
3 Appellants' arguments with respect to these claim limitations are made in
the context of whether the claims meet the machine-or-transformation test,
and/or consideration of the limitations in view ofUSPTO guidelines
promulgated after the Bilski decision. Bilski v. Kappas, 130 S.Ct. 3218
(2010). They additionally are presented in an attempt to refute the
Examiner's position that "how the cards are shuffled is ancillary to the
claimed method," and whether the shuffling is done by a person or an
electromechanical device is of little importance. Ans. 3.
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Smith decision to be purely conventional activities,4 and we thus address
them in tum and as a whole.
Appellants maintain that the inclusion in claims 1 and 22 of an
electromechanical shuffling device comprising a processor that controls
randomization of playing cards is "far more specific than merely generic
electronic apparatus." Appeal Br. 24. Notwithstanding, Appellants
Specification evidences that such devices are conventional in the art, and are
not seen as adding anything transformative. Spec. 15. As noted by the
Examiner, "it is only important that the cards are indeed randomized." Ans.
3.
Appellants further assert that the recitation in claim 2 that the
electromechanical shuffler includes a card reading system to inform a
processor of card content is not an abstract concept. Appeal Br. 12. Again,
such an aspect of an electromechanical shuffler appears to be conventional.
Spec. 15.
For claim 3, Appellants argue that the provision by the card shuffler
of exactly three cards to each player position is not an abstract concept.
Appeal Br. 12. Appellants, in responding to the position taken by the
Examiner, further argue that this is "not part of incidental shuffling." Reply
Br. 5 (erroneously referring to claim 3 as claim 2). Appellants acknowledge
that "a few machines are available on the commercial market that can be
programmed to effect this step," and that the dealing of the three cards to
each player is a "step[] required for providing hands specific to the recited
4 The claims on appeal in the Federal Circuit Smith case included dependent
claims that called for the shuffling to be "automated shuffling." See Appeal
Brief, Claims Appendix, claims 4 and 10, in Application Serial Number
12/912,410.
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card game." Id. This evidences that any necessary equipment is
conventional, and the step of providing three cards to each position is
nothing more than a step involved in executing the abstract set of rules
claimed.
Appellants argue that claim 4 includes randomly withdrawing playing
cards to form hands in a delivery tray, and seemingly argue that the random
withdrawal is not conventional. Reply Br. 5---6 (erroneously referring to
claim 4 as claim 3). However, that step, not unlike the step discussed above
with respect to claim 3, is performed to effectuate an aspect of the set of
rules that the claims are directed to. Further, Appellants acknowledge that
the "shufflers wherein random cards are taken from the set and distributed in
compartments from which they are later distributed," are "disclosed in the
specification and known in the art." Id. at 5. As such, the subject matter of
claim 4 also falls in the category of being conventional.
As a whole, these limitations in respective claims 1 (and 22), 2, 3, and
4 do not rise to the level of "hav[ing] an 'inventive concept' sufficient to
'transform' the claimed subject matter into a patent-eligible application of
the abstract idea." In re Smith, 815 F.3d at 819. They simply invoke known
and conventional equipment to effect necessary steps for playing a wagering
card game.
In view of the foregoing, we agree with the Examiner that claims 1-
19 and 22 are directed to non-statutory subject matter. As we have
employed reasoning different from that advanced by the Examiner, due to
more recent precedential case law, we designate our affirmance of the
Examiner's rejection as a new ground of rejection pursuant to 37 C.F.R.
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§ 41.50(b) so as to afford Appellants the procedural options associated
therewith, and to ensure Appellants have a fair opportunity to respond.
DECISION
The Examiner's rejection is affirmed. We designate our affirmance as
entering a new ground of rejection pursuant to 37 C.F.R. § 41.50(b).
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:
(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 ....
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)
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