Ex Parte Snow

Patent Trial and Appeal Board

Dec 4, 2017

11499864 (P.T.A.B. Dec. 4, 2017)

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
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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
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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
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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”).
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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
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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
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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).
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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).
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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
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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.
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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.
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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.
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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
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