Ex Parte Snow

Patent Trial and Appeal Board

Mar 29, 2018

14082835 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/082,835 11/18/2013
66137 7590 04/02/2018
TRASKBRITT, P.C. /Bally Gaming, Inc.
PO Box 2550
Salt Lake City, UT 84110
FIRST NAMED INVENTOR
Roger M. Snow
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.
3286-Pl0840.3US(PA4369.ap 2382
EXAMINER
PIERCE, WILLIAM M
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
04/02/2018 ELECTRONIC
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):
USPTOMail@traskbritt.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROGER M. SNOW1
Appeal2017-005321
Application 14/082,835
Technology Center 3700
Before LINDA E. HORNER, JOHN C. KERINS, and JAMES P. CALVE,
Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Office
Action rejecting claims 1--4, 6, and 8-10. Appeal Br. 6-7. Claims 11-30
are withdrawn. Id. at 6. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Bally Gaming, Inc. and Scientific Games Corporation are identified as the
real parties in interest. See Appeal Br. 4.
Appeal2017-005321
Application 14/082,835
CLAIMED SUBJECT MATTER
Appellant discloses the invention as wagering games, casino table
wagering games, casino table playing card wagering games, and variants
that use poker ranks in determining outcomes. Spec. i-f 2. The games may
be implemented as live table games, television or cable game show games,
video poker gaming machine platforms, hand-held games, multiple player
interactive wagering platform games, cell phone games, games executed on
personal computers, palm pilots, play stations, and the like. Id. i-f 67.
Claim 1, the sole independent claim, is reproduced below.
1. A method of administering a wagering game
implemented in physical form on a surface of a gaming table,
using a fifty-two card deck of physical playing cards and
wagering elements in the form of physical chips, the method
compnsmg:
providing a gaming table defining, on a surface, a player
position illustrated to define betting areas, the
betting areas comprising an ante wager betting
area and only one play wager betting area;
while the ante wager betting area is occupied by at least
one chip defining an ante wager, distributing, onto
the surface of the gaming table and from the fifty-
two card deck of physical playing cards, a number
of physical playing cards available for a player hand;
administering a plurality of play election rounds in which
a player, associated with the player position, is
prohibited from making more than one play wager,
the play wager betting area being unoccupied by a
chip at the initiation of each play election round of
the plurality, administration of each play election
round of the plurality of play election rounds
compnsmg:
receiving from the player, associated with the
player position, an election selected by the
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player from a set of options, the set of
options comprising:
in each play election round of the plurality
of play election rounds, a play wager
corresponding to a value subject to a
limit that lowers with each passing
play election round of the plurality of
play election rounds;
in at least an initial play election round of
the plurality of play election rounds, a
check option and not a fold option;
and
in only a final play election round of the
plurality of play election rounds, the
fold option, the play wager not
previously received, the final play
election round following revelation to
the player of all cards available for the
player hand, the play wager being a
wager on the player hand and against
a dealer hand; and
resolving all wagers occupying the betting areas of the
player position.
Appeal Br. (Claims App. 1-2).
REJECTIONS
Claims 1--4, 6, and 8-10 are rejected as being directed to patent
ineligible subject matter under the judicial exception to 35 U.S.C. § 101.
Claims 1--4, 6, and 8-10 are rejected under 35 U.S.C. § 102(f)
because there is evidence to suggest that Appellant invented the claimed
subject matter jointly with another individual.
Claims 1--4, 6, and 8-10 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yoseloff (US 8,590,900 B2, iss. Nov. 26, 2013).
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ANALYSIS
Claims 1-4, 6, and 8-10
As Directed To Patent Ineligible Subject Matter
Appellant argues claims 1--4, 6, and 8-10 as a group. Appeal Br. 20-
55. We select claim 1 as the representative claim, with claims 2--4, 6, and 8-
10 standing or falling with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
To determine patent-eligibility, we perform a two-step analysis. First,
we determine if the claims are directed to a patent-ineligible concept like an
abstract idea. Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355
(2014 ). If so, we determine if the claims contain an "inventive concept" that
transforms the abstract idea into a patent-eligible application. Id. at 2357.
Alice Step One: Are the Claims Directed to an Abstract Idea?
The Examiner determines that claim 1 is directed to an abstract idea of
a new set of rules for playing a card game. Final Act. 2-3. In particular, the
Examiner finds claim 1 is directed to wagering rules for playing a card game
using a gaming table and playing cards that are not essential to game play
rules and do not undergo physical transformation. Id. at 3--4; Ans. 3--4. The
Examiner also finds the game rules involve mental activity like forming a
judgment, observation, evaluation, or opinion, interpersonal interactions or
relationships, human behavior such as following rules or instructions, and
instructions as to how business should be conducted. Final Act. 4--7, 9. The
Examiner further finds the claims cover fundamental practices of poker and
wagering and recite ordinary building blocks like wagers, checks, and folds
that direct how to conduct games and produce interaction between players.
Id. at 10-12; Ans. 14. The Examiner finds that rules for when a player can
place a wager is a fundamental practice of game designs. Final Act. 16-17.
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The Examiner finds claim 1 is directed to an abstract idea as was the
method of conducting a card game using physical cards in In re Smith, 815
F.3d 816 (Fed. Cir. 2016). Ans. 10. The Examiner also cites Smith and
Planet Bingo, LLC v. VKGS LLC, 576 F. App'x 1005 (Fed. Cir. 2004) (non-
precedential) as supporting his determination that claim 1 is directed to a
patent ineligible method of playing a card game. Ans. 12. Claim 1 recites
conventional steps at a high level of generality. See id. at 17.
We agree with the Examiner that the Federal Circuit's holding in In re
Smith is controlling and determinative of the issue in this appeal. Ans. 3. In
re Smith examined patent eligibility of claims to a "method of conducting a
wagering game" with a deck of playing cards that the dealer deals according
to game rules while accepting and resolving wagers of players. Smith, 815
F.3d at 817-18. Like the claim in Smith, claim 1 recites a "method of
administering a wagering game ... on a surface of a gaming table" using a
fifty-two card deck of playing cards and wagering elements (i.e., chips, see
Spec. i-f 30; Appeal Br. 8) according to game rules involving making an ante
wager by a player, dealing playing cards, administering plural play election
rounds and player play elections including an initial election of a play wager
or a check option and not a fold option and a final play election round after
which all wagers are resolved. Appeal Br. (Claims App. 1-2); Ans. 10, 12.
In re Smith, a precedential decision, held that claims directed to rules
for conducting a wagering game are comparable to fundamental economic
practices held to be abstract ideas such as a method of exchanging financial
obligations in Alice and a method of hedging risk in Bilski v. Kappas, 561
U.S. 593, 611 (2010). Smith, 815 F.3d at 818-19. That the method used
physical cards did not make the idea non-abstract. Smith, 815 F .3 d at 819.
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Like the claims in Smith, claim 1 recites dealing cards and allowing
players and dealers to exchange financial obligations and hedge risk via
placing wagers in various amounts and checking (placing no wager). The
recital of a "method" does not make claim 1 patent eligible. Final Act. 2;
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1374 (Fed. Cir.
2011) (regardless of the statutory category a claim invokes, the underlying
invention is considered for patent-eligibility); see Appeal Br. 52-54.
Appellant's argument that the Examiner has not identified specific
limitations or a set of rules for playing a card game and has oversimplified
the claims and downplayed the invention's benefits and character (Appeal
Br. 24--27; Reply Br. 11-12) is not persuasive of error in the Examiner's
findings summarized above. These findings place Appellant on notice of the
basis of the rejection and are comparable to those made in other cases. See
Smith, 815 F.3d at 818-819; Planet Bingo, LLC v. VKGS LLC, 576 F. App'x
1005, 1007---08 (Fed. Cir. 2014) (claims directed abstract idea of "methods
and systems for 'managing a game of Bingo"') (non-precedential). Notably,
Appellant does not identify error in the Examiner's findings or any claim
features that are not directed to game play and wagering, instead arguing that
a particular ordered combination of rules is recited. See Appeal Br. 29-38.
Appellant's "present invention relates to wagering games, casino table
wagering games, casino table playing card wagering games, and variants of
casino table wagering games that use poker ranks in determining outcomes."
Spec. i-f 2. The claimed "new variant game of Hold 'Em poker allows for
rules of play of one or all of players being allowed to remain in the game
with an option of checking or making specific wagering amounts in first
play wagers." Id. i-f 17.
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As the Examiner correctly determines, claim 1 is directed to rules for
playing and managing a wagering card game. Claim 1 recites game play
rules discussed above of receiving a player ante and play wagers, receiving
player options (check, fold, or place a play wager), distributing playing cards
for a player hand, and resolving wagers. Final Act. 2-7; Ans. 11; Appeal Br.
35 (noting Examiner's allegations that claims cover known wagering rules).
Appellant's arguments belie the fact that Appellant is on notice of the
bases of the rejection. Appeal Br. 35 (arguing that even if game play rules
of folding, checking, and the like are building blocks of the game industry,
claim 1 recites a particular, ordered combination that is not a new building
block). Appellant's argument that claim 1 recites an ordered combination of
steps that are not fundamental practices or building blocks of the gaming
industry (id. at 35) is, likewise, unpersuasive as Appellant admits claim 1 is
directed to wagering rules for a card game, albeit in a particular, ordered
combination (id. at 35-36). See Ans. 15-16. Smith held that such ordered
combinations of wagering rules are an abstract idea. Smith, 815 F.3d at 819.
Even if claim 1 recites a new or nonobvious combination of rules for
playing a game and wagering, as Appellant asserts is the case, the claim still
is directed to rules for a wagering game, which In re Smith held to be akin to
fundamental economic practices considered abstract by the Supreme Court.
Smith, 815 F.3d at 818. Appellant recognizes that claim 1 is directed to rules
for conducting a wagering game. See Appeal Br. 36-37 (reciting claimed
steps of play election rounds in which a player is prohibited from making
more than one play wager, receiving player election from a set of options
including a check and not fold option in an initial play election round and a
fold option in the final play election round).
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We are not persuaded that the claimed game play and wagering rules
are distinguishable from the wagering game rules in Smith, which rules were
held to be a patent-ineligible abstract idea. Smith, 815 F.3d at 819; see Two-
Way Media Ltd. v. Comcast Cable Comm 'ns, LLC, 874 F.3d 1329, 1339-40
(Fed. Cir. 2017) ("Eligibility and novelty are separate inquiries."). Whether
or not claim 1 recites a particular, ordered combination of game play rules
and wagering rules, including different options for game play and wagering,
does not alter the fact that claim 1 recites wagering rules for a card game,
which constitute a patent-ineligible abstract idea. Smith, 815 F.3d at 819.
Reciting a particular, ordered combination of game play and wagering rules
and options means that claim 1 is directed to an abstract idea of game and
wagering rules versus an inventive technology that performs these abstract
idea processes. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
13 54 (Fed. Cir. 2016). Patent eligibility of an abstract idea does not depend
on its alleged novelty or non-obviousness in any case. Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1303---04 (2012).
Here, the claimed "gaming table" and "fifty-two card deck of physical
playing cards" do not represent inventive gaming technology and are not
used in an unconventional way. They merely provide a known way to play
wagering games with cards. See Spec. i-fi-16-16 (noting the many variations
in poker game playing rules to increase excitement and interest in both table
and video versions of poker), 31 (the basis format is the same for table and
automated devices). Appellant's arguments demonstrate that Appellant
considers the ordered combination of wagering rules to be patent-eligible.
Appeal Br. 35--47 (arguing eligibility based on the ordered method steps
versus a gaming table); see Smith, 815 F.3d at 819 (standard deck of cards).
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We also agree with the Examiner that claim 1 is directed to an abstract
idea of "organizing human activities" and managing a game like the bingo
game in Planet Bingo. Final Act. 5; Ans. 23. The claims in Planet Bingo
recited "steps of selecting, storing, and retrieving two sets of numbers,
assigning a player identifier and a control number, and then comparing a
winning set of bingo numbers with a selected set of bingo numbers." Planet
Bingo, 576 F. App'x at 1007---08. Claims directed to managing a game of
Bingo are similar to "organizing human activity" held to be an abstract idea
in Alice. Id. at 1008. See Appeal Br. 48 (game is unconventional).
Here, claim 1 recites a method of playing a wagering game that serves
to organize the activities of a dealer and player similar to the game managed
in Planet Bingo. Appellant's argument that Planet Bingo treated a method
of managing a game of bingo as mental steps (Appeal Br. 30-31) is not
persuasive in view of the court's holding that the method was directed to the
abstract idea of organizing human activity. Planet Bingo, 576 F. App'x at
1008; Final Act. 9. However, claim 1 's game rules also involve mental steps
and probabilities that can be performed in the human mind. CyberSource,
654 F.3d at 1371-72; Appeal Br. 30-31 (claims are not solely mental steps).
Appellant's attempts to distance the subject matter of claim 1 from the
general characterizations set forth in Alice are unavailing, given the decision
in Smith, which is precedent 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 .3 d at 818 (emphasis
added). We find Smith to be binding on the facts and issues in this appeal, in
terms of the claimed subject matter being directed to an abstract idea.
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Contrary to Appellant's arguments (Appeal Br. 33-35), recent Federal
Circuit decisions support the Examiner. In Enfish, the claims were directed
to improvements in computer database technologies through the use of self-
referential tables that differed from conventional database structures and
provided increased flexibility, faster search times, and less memory needs.
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336-37 (Fed. Cir. 2016).
Similarly, in DDR Holdings, the claims were "necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks" and, thus, did not merely recite an abstract
idea. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed.
Cir. 2014 ). The claims addressed the problem of retaining website visitors
who would be transported away from a host's website after clicking on an
advertisement by activating a hyperlink that sends them to an outsource
provider's hybrid web page with the look and feel of the host website and
product information from a third party merchant's website without actually
taking the visitor to the third-party merchant's website. Id. at 1257-58.
In McRO, the claims improved computer animations through accurate,
realistic lip synchronization and facial expressions. McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016).
Here, Appellant asserts the claimed method is unconventional because
it recites an ordered combination of game rules that is unconventional, not
because it is directed to improvements in technology for gaming, computers,
or networks. 2 Appeal Br. 32-39. In other words, it recites known abstract
wagering game rules in an alleged different order than is known in the art.
2 Any alleged game table improvement recited in claim 11 (Appeal Br. 50) is
not at issue because claim 11 was withdrawn. Appeal Br. (Claims App'x 4).
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A review of Appellant's own disclosure reveals that the claimed game
and wagering rules recited in claim 1 are, in fact, directed to an abstract idea
that is not patent eligible. At best, claim 1 combines different abstract ideas.
See Elec. Power, 830 F.3d at 1354; Mayo, 132 S. Ct. at 1303---04.
Appellant discloses that poker games enjoy widespread popularity due
to ranking of hands and numerous wagering opportunities, which increase
player participation and excitement. Spec. i-f 3. Appellant also discloses that
it is known that variations in wagering schemes can increase excitement by
allowing players to compete for additional and larger prizes, and Appellant
discloses various such games that do so. Id. i-fi-14--16. Appellant discloses
that many variations of poker-type games have been introduced to increase
the excitement and interest in playing table and video poker games. Id. i-f 6.
Appellant even describes Texas Hold 'Em poker game rules as comprising
steps similar to those recited in claim 1 of a player receiving cards and
exercising play options with wagering options progressing as player cards
are revealed and compared the dealer hand to resolve all wagers. Id. i-f 7.
Initial ante wagers followed by other player wagers are known in the art. Id.
i-f 9. It is known to vary player wagering and game play options. Id. i-f 10.
Appellant's asserted advance to wagering and game play rules allow a
player to check (i.e., to remain in the game without wagering). Id. i-f 17 ("A
new variant game of Hold 'Em poker allows for rules of play of one or all of
players being allowed to remain in the game with an option of checking or
making specific wagering amounts in first play wagers [where] 'checking'
means staying in the game without making an additional wager.") However,
existing card games already allow players to fold, check, or wager. Id. i-f 11.
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Essentially, Appellant alleges that claim 1 recites a new ordered
combination of abstract idea game play and wagering rules. Even if true,
such "novelty" in the claimed game play and wagering rules does not avoid
characterization of claim 1 as an abstract idea as discussed above.
Appellant's position contrasts sharply with Federal Circuit decisions.
Decisions that treated claimed subject matter as being patent eligible under
step one of Alice involved advances in hardware or software as discussed
above. Thus, in McRO, "the claimed improvement [allows] computers to
produce 'accurate and realistic lip synchronizations and facial expressions in
animated characters' that previously could only be produced by human
animators." McRO, 837 F.3d at 1313. The improved software functionality
produced lip synchronization and facial expression control of animated
characters' faces (morph targets) when making certain sounds (pronounces a
phoneme) such as "ahh." See id. at 1303---09; Ans. 16. The claims thereby
improved existing technological processes. McRO, 837 F.3d at 1313.
In Thales Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed.
Cir. 2017), the claims at issue were not directed to an abstract idea because
they "specify a particular configuration of inertial sensors and a particular
method of using raw data from the sensors in order to more accurately
calculate the position and orientation of an object on a moving platform."
Here, Appellant asserts no comparable improvement to gaming
technology, playing cards, or gaming tables. Any "improvement" resulting
from claim 1 's rules of wagering allegedly occurs, if at all, in the minds of
the players as increased interest and player excitement. See Spec. i-fi-1 3-1 7.
Such mental processes are patent-ineligible abstract ideas. See Elec. Power,
830 F.3d at 1354; CyberSource, 654 F.3d at 1372; Ans. 21-22.
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Alice Step Two: Do the Claims Contain an "Inventive Concept"?
The Examiner finds claim 1 is directed to conventional industry
practice that does not solve a technological problem but instead recites rules
that guide actions of players of a wagering game under certain conditions.
Final Act. 15-16. The Examiner finds that claim 1 recites conventional
steps of wagering, which are fundamental gaming industry practices recited
at a high level of generality and not tied to solving any known problem or
producing an improvement from any rearrangement of dealing and wagering
rules. Id. at 17-19. The Examiner finds that reciting a particular ordered
combination of wagering and game play rules does not claim significantly
more than the abstract idea itself because the claimed rules do not solve a
particular technological problem, but instead rely on the impressions and
subjective actions of players, which are not a concrete or tangible result;
they simply append more conventional steps specified at a high level of
generality, which does not supply an inventive concept. Ans. 15-17. The
Examiner determines that rearranging game play and wagering rules of a
card game does not amount to an improvement, and no evidence has been
provided of an improvement or unexpected results here. Final Act. 18-19.
The Examiner determines that the claimed steps analyzed as separate
elements are conventional wagering practices offered in poker games with
known effects on game strategy. Ans. 17. Minimum or maximum amounts
that a player can wager are conventional rules to change a player's strategy
or effect the house percentage. Id. The Examiner finds that some wagering
rules are characterized by Appellant as opportunities that a player need not
pursue. Id. at 18. The Examiner finds insufficient evidence that the claimed
wagering rules are significantly more than abstract ideas. Final Act. 18-19.
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Appellant argues that claim 1 recites significantly more than a mere
abstract idea and provides an inventive concept that transforms any abstract
idea into a patent-eligible invention. Appeal Br. 38. Appellant argues that
the claimed method administers a plurality of play election rounds in which
a player is prohibited from making more than one play wager, and a player
makes an election from a set of options during plural play election rounds
that lowers the wagering limit with each play election round. Id. at 42. In
addition, Appellant argues that an initial play election round provides a
check option that is not a fold option and only a final play election round
includes the fold option after all available cards for a player's hand have
been distributed. Id. at 42--43. Appellant argues that these rules improve the
state of the art in the gaming industry as evidenced by a declaration
submitted by the inventor. Id. at 43--44. Appellant argues that the claimed
rules are not an abstract idea and are not fundamental practices or building
blocks but instead are unconventional and significant to the solution
provided by the claimed method. Id. at 45--46.
If a patent claim recites a method with instructions to implement an
abstract idea on a device, even a computer, the device cannot impart patent
eligibility. Alice, 134 S. Ct. at 2358; Planet Bingo, 576 F. App'x at 1008.
Appellant has not asserted that claim 1 recites an innovative gaming table or
playing cards or wagering elements. Claim 1 recites rules of a wagering
game intended to entice players to play the game. Spec. i-f 3. Appellant
discloses that gaming actions and rules include accepting wagers, making
payouts, dealing cards, selecting cards, and other actions associated with a
player or a dealer to include game play on physical or electronic
embodiments. Id. i-fi-1 31, 84.
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Appellant discloses an "interesting aspect of the present invention" as
a wagering rule to allow players to check or raise during play of a Hold "Em
style poker game without folding. Id. i-f 65. Appellant also discloses:
The games of the present invention may be implemented as
live table games, television or cable game show games, video
poker gaming machine platforms, hand-held games for play,
multiple player interactive wagering platform games (with
kiosk formats, single player screens, community screens,
and/or banks of seats for players with a common dealer
screen), cell phone games, games downloadable from the
internet, parlor games, games executed on personal computers,
palm pilots, play stations and the like.
Id. i-f 67. The claimed game table and playing cards merely implement the
abstract idea of game play and wagering rules without an inventive step.
Appellant does not purport to have invented gaming platforms or the
use of such known devices to play conventional card games with an ordinary
deck of playing cards. Figure 9 of Appellant's disclosure illustrates a betting
layout for ULTIMATE TEXAS HOLD 'EMâ„¢ poker games. Id. i-f 62.
Claim 1 does not recite these features, nor does Appellant allege any novelty
in the gaming table or playing cards. Claim 1 recites wagering rules for a
card game intended to entice players to play the game. Spec. i-f 3. Appellant
discloses gaming actions and rules such as accepting wagers, dealing cards,
selecting cards, and other actions associated with a player or a dealer that
implement the abstract idea game play and wagering rules. Id. i-fi-131---62.
The game table is not a special configuration. See Cyberfone Sys., LLC v.
CNN Interactive Grp., Inc., 558 F. App'x 988, 993 (Fed. Cir. 2014) (non-
precedential) (the claimed telephone "is not a specific machine, and adds
nothing of significance to the claimed abstract idea.").
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Claim 1 is directed to the abstract idea of rules for a wagering game,
rather than specialized game play. See Elec. Power, 830 F.3d at 1355 (the
claims do not require inventive types of information, components, methods,
or programming; they merely select information for collection, analysis, and
display, similar to ordinary mental processes); Mortg. Grader, Inc. v. First
Choice Loan Servs. Inc., 811F.3d1314, 1324--25 (Fed. Cir. 2016) (claims
reciting generic computer components such as an "interface," "network,"
and "database" do not add an "inventive concept" to an otherwise abstract
idea); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346,
1348--49 (Fed. Cir. 2015) (claims to generalized steps performed on a
computer using conventional computer activity are not patent eligible); In re
TL! Comm 'ns LLC Pat. Litig., 823 F.3d 607, 613-14 (Fed. Cir. 2016) (mere
recitation of concrete, tangible components is insufficient to confer patent
eligibility to an otherwise abstract idea and claimed telephone unit and
server are normal, generic components operating in conventional ways).
As the Federal Circuit made clear in Two-Way Media Ltd. v. Comcast
Cable Communications, the improvement must be a technical one. See Two-
Way Media, 874 F.3d at 1338-39 (reciting an abstract idea performed on
generic computer and network components that operate according to their
ordinary functions does not contain an inventive concept). Although the
Specification described an innovative system architecture with protocols and
signal selections, the claims did not recite the innovations. Id. Here, the
asserted innovative concept is a new combination of rules for wagering on a
card game as implemented in a conventional computer. The gaming table
merely implements the abstract wagering rules in conventional ways with
positions corresponding to the wagering rules. See Appeal Br. 49-50.
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As a result, the asserted new combination of wagering rules can be
implemented on a wide variety of gaming platforms discussed above. See
Spec. i-f 67. The claimed gaming table merely implements these wagering
rules. Appeal Br. 8, 48-50; Spec. i-fi-162-69; Fig. 9. Any unconventional
features were recited in claim 11 (Appeal Br. 50), which is withdrawn.
Claim l does not recite a technological innovation in gaming or in any
other field. Alice, 134 S. Ct at 2359. Instead, claim l recites a combination
of non-physical game and wagering rules that allegedly are unconventional.
See Appeal Br. 40---46. At best, claim 1 is directed to a new combination of
known wagering and game play rules (wagers, a check, a fold, display of
player options) for conducting a wagering game. Even if claim 1 recites a
new combination of wagering rules for a card game, nonetheless, it is
directed to rules for a wagering game, which is an abstract idea under Smith.
Claim 1 does not recite any technical improvement tied to a specific
apparatus that solves a technical problem in the gaming arts. See Two-fVay
Aiedia, 874 F.3d at 1338-39. It recites abstract wagering rules (Spec. i-fi-14,
30--44). The inventor's Declaration under 37 C.F.R. § 1.132, dated June 9,
2015, confirms that any novelty is in the wagering rules rather than the game
platform or gaming technology that implement the rules, and the rules make
the game more interesting for players, as Appellant asserts (Appeal Br. 42-
46). Snow Deel. i-fi-1 4-18 & Exhs. A-E. His declaration makes clear the
"invention" is the proprietary rules for administering a wagering card game.
See id. Like the wagering rules in Smith, claim 1 is directed to individual
wagering rules and an ordered combination of such rules, which was held to
be an abstract idea in Smith. Smith, 815 F.3d at 819. Any innovation in the
gaming platform is not claimed beyond its implementing the game rules.
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For example, Mr. Snow states the claims "in various combinations"
"cover the features of the Ultimate Texas Hold 'Em® game", which he then
describes as involving the dealing accepting a ante and blind wager from a
player by receiving wagering chips in a live game in separate betting areas.
Snow Deel. i-fi-14--5. Mr. Snow then describes other game play and wagering
rules of a dealer progressively dealing and revealing player and community
cards with rounds of betting in various amounts that pay out according to the
wagering rules of the game. Id. Mr. Snow describes the design of a new
wagering table game for cards as balancing competing interests of various
parties that is easy to learn but different enough from existing games while
balancing length of play and risk-reward calculations for wagering to be
attractive to administrators and players. Id. i16. Changes to the wagering
and game play rules may require changes to the physical equipment used to
play that wagering game. Id. i17. To differentiate his new wagering game
from other hold 'em games, Mr. Snow decided "that the new game would
permit players to view their entire hand before requiring them to commit to
making a play wager or fold" but also "require the permitted amount of the
play wager decrease as the quantity of information available to the player
increased ... to enable the administrator to preserve an edge on the game"
and players to wager large amounts earlier in the game. Id. i-fi-f 10-11.
Mr. Snow then designed the rest of the game by setting ideal amounts
for the player wager at each stage and deciding when players can fold and
when dealers are disqualified with a "big blind" for players each round. Id.
i-f 12. Although the game takes more time to administer a round, which can
reduce revenue generated, his game encourages more betting per round so
the average revenue per unit of time is higher than other games. Id. i-f 13.
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The asserted popularity of the game, according to Mr. Snow, derives
from "its incentivizing players to risk large amounts for the play wager early
on in a round of game play ... [where] the house edge on each wager
ensures that a sufficient proportion of the wagered amounts is won by the
house" ... [to] compensate for the slower speed, resulting in more than
adequate revenue for the administrator." Id. i-f 14. Popularity among players
also derives from allowing players to "tailor the amount wagered during a
round of play to their own risk tolerance." Id. i-f 15. Player enthusiasm has
resulted in "a robust community of participants sharing strategies, evaluating
the game and attempting to circumvent the house edge" as seen by examples
of player conversations at Exhibits A-E of his Declaration. Id. i-f 15. The
games wagering and game play features are responsible for its popularity.
Id. i-fi-1 16-18. Exhibit A describes the various game play, wagering, and
scoring rules and tables with various wagering strategies. Many of these
rules and payouts are not recited in the present claims, however. This is also
apparent from Exhibit B, which describes the game's popularity as "because
the house edge is reasonable, and because of the trips bet pay table." The
reset of Exhibit B discusses various game play rules and strategies with a
string of comments from players about their experiences as do Exhibits C-E
including player "collusion" of showing cards to fellow players.
Appellant argues that the claimed table has a layout specific to the
game rules, e.g., it has different betting areas. Appeal Br. 49. In other
words, the table layout merely implements the abstract wagering and game
play rules. Mr. Snow declares that the felt game format incentivized
development of customized shufflers (Snow Deel. i-fi-124, 26), but these
articles are not claimed. The game is offered in electronic formats. Id. i-f 25.
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In Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827
F.3d 1341 (Fed. Cir. 2016), an inventive concept existed because a claimed
Internet filtering technique improved an existing technological process.
Bascom, 827 F.3d at 1350-51. In DDR, 773 F.3d 1245, the claims were
directed to an unconventional use of the Internet to create a composite
website. DDR, 773 F.3d at 1258-59.
The court in Smith stated that a game using a new or original deck of
cards might survive Alice step two. Smith, 815 F .3d at 819; Appeal Br. 48.
However, claim 1 does not recite a new or original deck of cards. Claim 1
recites wagering rules implemented with a standard fifty-two card deck and
generic wagering elements on a game table that embodies or implements the
abstract wagering rules. See Appeal Br. 41 n.13, 50.
Features specific to the dealing rules, wagering rules, player elections,
and payout rules either implement the abstract idea3 or are mere insignificant
pre-solution activity or insignificant post-solution activity. See 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."); cf Mayo,
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 1
recites conventional physical elements or a conventional relationship
between the abstract idea and the physical elements.
3 The Examiner considers that the game instructions and display steps are
extra solution activity to show game indicia. See Ans. 22.
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Whether considered individually or as an ordered combination, the
claimed wagering rules lack an inventive concept as in Smith. They recite
wagering and game play rules and activities. Even assuming that claim 1 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); Versata Develop. Grp.,
Inc. v. SAP Am. Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (claims improved
abstract idea not computer performance). Thus, we are not apprised of error
in the Examiner's determination by this argument.
Appellant's argument that claim 1 does not monopolize the rules for
playing a card game (Appeal Br. 70-73) is resolved by the§ 101 analysis.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015); see also Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873
F.3d 1364, 1375 (Fed. Cir. 2017) (same).
Thus, we sustain the rejection of claims 1-33, 35, 37, and 39.
Prior Art Rejections of Claims 1--4, 6, and 8-10
Under 35 US.C. § 102(/) and 103(a) (Yoseloff)
Because claims 1--4, 6, and 8-10 are directed to patent-ineligible
subject matter, we do not reach the prior art rejections of those claims. See
In re Comiskey, 554 F.3d 967, 973 (Fed. Cir. 2009) (declining to reach the
prior art rejection when claims are barred at the threshold by § 101 ); Ex
parte Gutta, 93 USPQ2d 1025, 103 6 (BP AI 2009) (precedential) (same).
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DECISION
We affirm the rejection of claims 1--4, 6, and 8-10 as directed to
patent ineligible subject matter under the judicial exception to 35 U.S.C.
§ 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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