Ex Parte SnowDownload PDFPatent Trial and Appeal BoardDec 4, 201711499864 (P.T.A.B. Dec. 4, 2017) Copy Citation 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. 11/499,864 08/04/2006 Roger M. Snow 3286-10841.l(PA1388.ap.US 1806 66137 7590 12/06/2017 TRASKBRITT, P.C. /Bally Gaming, Inc. PO Box 2550 Salt Lake City, UT 84110 ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 12/06/2017 ELECTRONIC EXAMINER DENNIS, MICHAEL DAVID 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): U S PTOMail @ traskbritt .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROGER M. SNOW Appeal 2017-001891 Application 11/499,864 Technology Center 3700 Before JOHN C. KERINS, EDWARD A. BROWN, and LYNNE H. BROWNE, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Roger M. Snow (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 31—33, 39-42, 44, 45, 53, 54, and 61—67. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Appellant’s invention relates to poker-type casino wagering games. Spec. 1,11. 11-12. Appeal 2017-001891 Application 11/499,864 Claims 31, 39, and 67 are independent. Claim 31 is illustrative and reproduced below: 31. A method of playing a four-card poker wagering game utilizing a standard deck of physical playing cards that have been intermixed, the method comprising: administering a round of the four-card poker wagering game, comprising: providing a game table bearing a layout illustrated to define, at at least one player position, at least three distinct wagering areas each delineated by a boundary defined on the layout, the at least three distinct wagering areas comprising an Ante wager area, a Bet wager area, and a Bonus wager area, the Bonus wager area labeled for visual association with a pay table posted at the game table; a dealer receiving, on the layout of the game table and from a player, at least one of an Ante wager placed at the Ante wager area and a Bonus Bet placed at the Bonus wager area; the dealer intermixing at least one portion of the standard deck of physical playing cards to form intermixed cards; the dealer delivering, from the intermixed cards and to a card receiving area on the layout of the game table, a first number of cards to form a complete set of player cards and a second number of cards to form a complete set of dealer cards, the complete set of player cards comprising four playable player cards and at least one excess player card, the complete set of dealer cards comprising four playable dealer cards and at least one excess dealer card; the dealer allowing the player to review the complete set of player cards comprising the four playable player cards and the at least one excess player card; if the dealer received from the player the Ante wager at the Ante wager area, the dealer administering on the game table a base wagering game, comprising: after the dealer allowing the player to review the complete set of player cards comprising the four playable 2 Appeal 2017-001891 Application 11/499,864 player cards and the at least one excess player card, the dealer accepting from the player an election selected by the player during the round from: a fold indication, and Play wager options of lx, 2x, and 3x the Ante wager; if the dealer did not receive, at the Bet wager area, a Play wager of one of the Play wager options, the dealer collecting the Ante wager from the Ante wager area and retaining the Ante wager; and if the dealer received, at the Bet wager area, the Play wager of one of the Play wager options, the dealer resolving the Ante wager and the Play wager, comprising: the dealer applying a predetermined ranking system to the complete set of dealer cards to identify a highest-ranking dealer hand from the complete set of dealer cards and to identify a dealer hand ranking thereof, the highest-ranking dealer hand consisting of the four playable dealer cards; the dealer comparing the dealer hand ranking to a player hand ranking of a four-card player hand consisting of four playable player cards from the complete set of player cards; if the player hand ranking exceeds the dealer hand ranking, the dealer transferring to the player possession of the Ante wager and the Play wager and transferring to the player ownership of a payout in an amount based on the Ante wager and the Play wager; if the dealer hand ranking exceeds the player hand ranking, the dealer collecting the Ante wager from the Ante wager area, collecting the Play wager from the Bet wager area, and retaining the Ante wager and the Play wager; and 3 Appeal 2017-001891 Application 11/499,864 if neither the player hand ranking exceeds the dealer hand ranking nor the dealer hand ranking exceeds the player hand ranking, the dealer transferring to one of the dealer and the player possession of at least one of the Ante wager and the Play wager based on predetermined tie rules; and if the dealer received from the player the Bonus Bet at the Bonus wager area, the dealer resolving the Bonus Bet, comprising: the dealer comparing the player hand ranking to winning rankings defined by the pay table, the pay table provided on a pay table display provided proximate to the layout of the game table; if the player hand ranking matches at least one of the winning rankings defined by the pay table, the dealer returning to the player the Bonus Bet and the dealer paying to the player a bonus payout of an amount based on the Bonus Bet and payout rates defined by the pay table; and if the player hand ranking does not match at least one of the winning rankings defined by the pay table, the dealer collecting the Bonus Bet from the Bonus wager area and retaining the Bonus Bet. THE REJECTION ON APPEAL The Examiner has rejected claims 31—33, 39-42, 44, 45, 53, 54, and 61—67 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. A rejection of claims 31—33, 39-42, 44, 45, 53, 54, and 61—66 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement, is withdrawn by the Examiner. Ans. 3. Further, a rejection of claim 67 under 35 U.S.C. § 103(a) as being unpatentable over 4 Appeal 2017-001891 Application 11/499,864 Lott (US 5,851,011, issued Dec. 22, 1998), Scame,1 and Jones (US 6,206,374 Bl, issued Mar. 27, 2001), is withdrawn by the Examiner. Id. at 4. ANALYSIS Appellant argues claims 31—33, 39-42, 44, 45, 53, 54, and 61—67 together. See Appeal Br. 24—60; Reply Br. 2—14. We select claim 31 as the illustrative claim, and claims 32, 33, 39-42, 44, 45, 53, 54, and 61—67 stand or fall with claim 31. The rejection on appeal is based on the Examiner’s position that the claims are directed to patent-ineligible subject matter. In order to assess the propriety of this type of rejection, the Supreme Court has 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.” Alice Corp. Pty. Ltd. v. CLS Bank Int 7, 134 S. Ct. 2347, 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012)). According to the Supreme Court’s framework, it must first be determined whether the claims at issue are directed to one of those concepts (i.e., laws of nature, natural phenomena, and abstract ideas). Id. If so, we must secondly “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. The Supreme Court characterizes the 1 John Scame, Scarne’s Encyclopedia of Games, 28—29 (Harper & Row 1973) (Section “Show Five Cards”). 5 Appeal 2017-001891 Application 11/499,864 second step of the 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. (alteration in original) (quoting Mayo, 132 S. Ct. at 1294). The Examiner determines that claim 31 is directed to non-statutory subject matter based on a judicial exception without adding significantly more to the judicial exception. Final Act. 2; Ans. 2. More specifically, the Examiner determines that claim 31 is directed to an abstract idea involving a set of rules to a poker wagering game comprising dealing rules, wagering rules, poker rank rules, and payout rules. Ans. 2. According to the Examiner, the set of rules recited in claim 31 is similar to the set of rules used to conduct a wagering game, comprising dealing rules, wagering rules, blackjack rules, and payout rules, that was determined to be an abstract idea in In re Smith, 815 F.3d 816 (Fed. Cir. 2016). Id. The Examiner determines that claim 31 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additionally recited elements, which include a standard deck of physical playing cards, wagers, and a game table with designated wager areas, are non-unique and traditional wagering gaming elements. Id. at 3; see also Final Act. 2 (the Examiner explains that a game table which includes indicia, when considered separately and in combination, does not add significantly more to the abstract idea). As such, the Examiner determines that, considering the additional elements individually and in combination, there is no inventive concept sufficient to 6 Appeal 2017-001891 Application 11/499,864 transform the claimed subject matter into a patent-eligible application. Ans. 3. Appellant contends that the Examiner fails to identify the supposed abstract idea in a sufficiently clear and specific manner to provide notice and enable Appellant to effectively respond. Appeal Br. 25, 30; see also Reply Br. 3. Appellant more specifically argues that the Examiner treats the claims at a high level of abstraction untethered to the claim language (Appeal Br. 25, 27); the Examiner does not identify the specific limitation(s) that supposedly recite the abstract idea (id. at 31); and the Examiner does not consider the basic character of the subject matter (Appeal Br. 32; see also Reply Br. 3). According to Appellant, the Examiner oversimplified the claimed invention by not considering the Specification, the benefits of the invention, other underlying purposes, nor the Declaration Under 37 C.F.R. § 1.132 by Roger Snow (the “Snow Declaration” or “Snow Decl.”). Appeal Br. 32—34, 44^45; see also Reply Br. 5—8. We are not persuaded that the Examiner failed in the respects alleged by Appellant, and instead find that the Examiner treated claim 31 and the limitations therein in the same manner as did the Federal Circuit with the claims at issue in the Smith decision. Claim 31 is drawn to “[a] method of playing a four-card poker wagering game” comprising, inter alia, the steps of providing a game table, receiving a wager from a player, delivering intermixed cards to the player, and following a set of dealing rules, wagering rules, poker rank rules, and payout rules. Appeal Br. Appx. \-A (Claims App. (emphases added)). Thus, claim 31 is directed to a method of playing a four-card poker game, which is a wagering game—similar to the claims at issue in Smith. In Smith 7 Appeal 2017-001891 Application 11/499,864 the claims were directed to a “method of conducting a wagering game” comprising a dealer following a set of dealing rules, wagering rules, blackjack rules, and payout rules. See Smith, 815 F.3d at 817—18. The court stated: “On the first step, we conclude that Applicants’ claims, directed to rules for conducting a wagering game, compare to other ‘fundamental economic practice[s]’ found abstract by the Supreme Court.” Id. at 818 (emphasis added); see also id. at 819 (“[W]e conclude that the rejected claims, describing a set of rules for a game, are drawn to an abstract idea.”). Because claim 31 is drawn to a method of playing a four-card poker wagering game that requires a dealer to follow a set of dealing rules, wagering rules, poker rank rules, and payout rules, we agree with the Examiner that claim 31 is directed to an abstract idea, in the form of a fundamental economic practice, that involves wagering and managing a game. This determination fulfills the first step of the Alice framework in that we conclude that claim 31 is directed to an abstract idea. Appellant presents similar arguments with respect to the Examiner’s initial mention of the game of bingo in the Final Action, maintaining additionally that the Planet Bingo decision2 by the Federal Circuit is a nonprecedential decision. Appeal Br. 35, 38-41. Any arguments attempting to factually distinguish the Planet Bingo decision are largely rendered moot, in that the Federal Circuit precedential Smith decision is seen as being much more closely on point to the issues presented here on appeal. Appellant, noting that Alice characterizes abstract ideas as fundamental practices, building blocks of an industry, and disembodied 2 Planet Bingo, LLCv. VKGSLLC, 576 F. App’x 1005 (Fed. Cir. 2014). 8 Appeal 2017-001891 Application 11/499,864 concepts, further argues that the Examiner does not identify any aspect of the claim as constituting a building block of the gaming industry. Id. at 39, 42. Appellant additionally contends that the particular, ordered combination of the steps according to the claimed method is not a fundamental practice or a basic tool of the gaming industry. Id. at 43 (referring to recitations in the claim for four cards and at least one excess card, among other things). Rather, according to Appellant, the particular recited steps provide a specific implementation of a solution to a problem in the gaming arts. Id. at 44-46, 52 (referring to the Snow Declaration which states that the claimed method makes it possible for players to play against the dealer as opposed to each other, among other things (citing Snow Declaration 110)). Appellant’s attempts to distance the subject matter of claim 31 from general characterizations set forth in Alice are unavailing, given the existence of Federal Circuit precedent that is very closely on point to the present situation. As noted above, in Smith, the court determined that “rules for conducting a wagering game, compare to other ‘fundamental economic practice[s]’ found abstract by the Supreme Court.” See Smith, 815 F.3d at 818 (emphasis added). Thus, we are not apprised of error in the Examiner’s position. Appellant contends that the claims are directed to a specific implementation of a solution to a problem in the relevant arts like the claims in Enfish,3 which were determined to be patent eligible. Appeal Br., passim. As an example of this, Appellant points to the Snow Declaration as establishing that the game improves the state of the art by pitting the players 3 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). 9 Appeal 2017-001891 Application 11/499,864 against the dealer rather than against other players, by allowing bonus wagers in a poker game, and by providing an opportunity to triple a wager. Id. at 44. This contention is unpersuasive. In Enfish, our reviewing court instructs us that “[sjoftware can make non-abstract improvements to computer technology just as hardware improvements can, and sometimes the improvements can be accomplished through either route.” Enfish, 822 F.3d at 1335. Thus, Enfish generally stands for the proposition that software may be patent-eligible subject matter if it improves a computer’s functionality. Here, the limitations at issue are not directed to an improvement to a computer’s functionality, and the alleged improvements to the state of the art identified by Appellant are simply additional rules of a card game, held to be abstract ideas in Smith, as discussed above. Notwithstanding the close alignment of the type of claims here on appeal and the claims at issue in Smith, Appellant contends that Smith should not be applied in this case. Appeal Br. 26, 28. Appellant argues that, in Smith, the characterization of rules for playing a wagering game as an abstract idea, is contrary to prior binding precedent from the Supreme Court and is “out of step with” more recent, allegedly controlling other precedent from the Federal Circuit, such as Enfish4 and the TLI Communications4 5 4 Appellant observes that, in Enfish, the Federal Circuit noted that fundamental economic and conventional business practices are often abstract ideas whereas a specific implementation of a solution to a problem in the software areas is not an abstract idea. Appeal Br. 28 n.2. 5 TLI Comma ’ns LLC v. A.V. Auto., LLC, 823 F.3d 607 (Fed. Cir. 2016). Appellant observes that, in TLI Communications, the Federal Circuit noted that fundamental practices long prevalent in our system constitute abstract 10 Appeal 2017-001891 Application 11/499,864 decision. Id. at 26—28 & n.2. Appellant also argues that reliance on Smith would improperly ignore the recent McRO6 decision which determined that an ordered combination of claimed steps using unconventional rules that relate to sub-sequences of phonemes, timings, and morph weight sets are not directed to an abstract idea. Reply Br. 4. However, as noted supra, Appellant’s claims are drawn to essentially the same abstract idea, i.e., rules involving wagering and managing card games, as were the claims at issue in Smith, which were determined as being directed to an abstract idea of a fundamental economic practice. In contrast, Appellant’s claims are not similar to the claims in Enfish, which relates to software that was determined to be patent-eligible subject matter because the software was found to improve computer functionality. Although the McRO* * * * 6 7 decision makes mention of the use of “unconventional rules,” in claims determined to be directed to patent-eligible subject matter, it does so in the context of claims requiring an ordered combination of steps in relating sub-sequences of phonemes, timings, and morph weight sets. McRO, 837 F.3d at 1303. We decline to extend McRO’s reach to purported unconventional rules present in claim 31, in that we find Smith to be binding ideas. Appeal Br. 28 n.2. The claimed invention in TLI Communications relates to a method for recording and administering digital images and does not relate to a fundamental economic practice. TLI Commc ’ns, 823 F.3d at 610. 6 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016). 7 We also note that the claimed invention in McRO relates to data processing involving automating an animation method and does not relate to a fundamental economic practice. See McRO, 837 F.3d at 1307-08, 1314. 11 Appeal 2017-001891 Application 11/499,864 on the facts and issues present in this appeal, in terms of the claimed subject matter being directed to an abstract idea. Next, moving to step 2 of the Alice analysis, we consider the elements of claim 31 both individually and in combination and determine that the claim does not amount to significantly more than a patent upon the abstract idea of a fundamental economic practice that includes wagering and managing games. Appellant contends that claim 31 provides an inventive concept that is significantly more than a mere abstract idea. Appeal Br. 26, 46. In support, Appellant argues that features in claim 31 are unconventional and solution-significant. Id. at 47-48; see also id. at 53—56; Reply Br. 5, 8—10. According to Appellant, while the Examiner considers the use of physical cards and the card table including the indicia on the card table, the Examiner does not consider the additional claim elements that are not physical elements, such as the player versus dealer concept, providing excess cards, multiple options for wager amount, and play wager opportunities. Appeal Br. 48—50; see also id. at 25, 28—29; Reply Br. 10-12. As such, Appellant argues that claim 31 recites a particular, ordered combination of method acts that is unconventional because it is not widely prevalent, well-understood, routine or conventional activities. Appeal Br. 51-53. Features specific to the dealing rules, wagering rules, poker rank rules, and payout rules either implement the abstract idea8 or are merely insignificant pre-solution activity or insignificant post-solution activity. See 8 The Examiner considers that the actual game instructions recited in claim 31, which Appellant categorizes as “additional elements,” make up the essence of the abstract idea. See Ans. 5. 12 Appeal 2017-001891 Application 11/499,864 Parker v. Flook, 437 U.S. 584, 590 (1978) (“The notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance.”); cfMayo, 132 S. Ct. at 1298 (“Purely ‘conventional or obvious’ ‘[pre]-solution activity’ is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law.” (alteration in original) (quoting Parker, 437 U.S. at 590)). Like the Flook claims, claim 31 does not recite either unconventional physical elements or a functional relationship between an abstract idea and the physical elements. Appellant’s argument that the particularities concerning the recited dealing rules, wagering rules, poker rank rules, or payout rules are novel or nonobvious and therefore, “unconventional,” is unavailing. Even assuming that claim 31 is “a novel and nonobvious modification,” as the Supreme Court has stated, “[t]he ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188—89 (1981). Thus, we are not apprised of error based on this argument. Appellant argues that the claims do not risk tying up any abstract idea. Appeal Br. 29, 47, 56—59; Reply Br. 12—13. However, “[wjhile preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc., v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed Cir. 2015). For these reasons, we sustain the Examiner’s decision rejecting claim 31, and claims 32, 33, 39-42, 44, 45, 53, 54, and 61—67 which fall therewith, as being directed to non-statutory subject matter. 13 Appeal 2017-001891 Application 11/499,864 DECISION The rejection of claims 31—33, 39-42, 44, 45, 53, 54, and 61—67 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). AFFIRMED 14 Copy with citationCopy as parenthetical citation