Ex Parte Snow et al

Patent Trial and Appeal Board

Jan 10, 2018

11801784 (P.T.A.B. Jan. 10, 2018)

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.
11/801,784 05/11/2007 Roger M. Snow 3286-P10815US(PA1851.ap.U 3219
66137 7590 01/12/2018
TRASKBRITT, P.C. /Bally Gaming, Inc.
PO Box 2550
Salt Lake City, UT 84110
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
01/12/2018 ELECTRONIC
EXAMINER
STANCZAK, MATTHEW BRIAN
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 and ROBERT P. SCOTT
Appeal 2016-007546
Application 11/801,784
Technology Center 3700
Before LISA M. GUIJT, PAUL J. KORNICZKY, and
BRENT M. DOUGAL, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-007546
Application 11/801,784
STATEMENT OF THE CASE
Appellants Roger M. Snow and Robert P. Scott1 appeal under 35
U.S.C. § 134(a) from the Examiner’s decision, as set forth in the Final
Office Action dated September 8, 2015 (“Final Act.”), rejecting claims 1, 3,
5, 7, 9-13, 20-28, 61, and 63-73 under 35 U.S.C. § 101 as directed to “non-
statutory” subject matter, but is more accurately directed to “patent-
ineligible” subject matter.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claims are directed to a method of playing a card wagering game.
Claims 1, 21, 61, and 63 are the independent claims on appeal. Claim 1,
reproduced below with emphasis added, is illustrative of the claimed subject
matter:
1. A method of playing a playing card wagering game, the
method comprising:
providing a casino table having a surface bearing a layout
illustrated at each of a number of player positions with at least
two distinct marked areas for wagers, including a first marked
area designated for a first wager and a second marked area
designated for a second wager to be resolved by application of a
pay table against a losing hand between a player hand and a
dealer hand;
1 Appellants identify Bally Gaming, Inc., Bally Technologies, Inc., and
Scientific Games Corporation as the real parties in interest. Appeal Brief,
dated February 8, 2016 (“Appeal Br.”), at 4.
2 Claims 2, 4, 6, 8, 14-19, 29-60, and 62 are cancelled. Appeal Br. at
Claims Appendix 1-13.
2
Appeal 2016-007546
Application 11/801,784
providing the pay table posted on or proximate to the
casino table to define payout qualifications to be applied in a
round of the playing card wagering game;
providing at the casino table a shuffling device
programmed to deliver specific card counts to various positions
in the round of the playing card wagering game; and
administering a round of the play card wagering game on
the surface of the casino table, comprising:
a dealer accepting from at least one player the first
wager in the form of at least one chip placed on the first
marked area and at risk on the playing card wagering
game;
the dealer accepting from the at least one player the
second wager in the form of at least one chip placed on the
second marked area and at risk on at least one side bet
event;
the dealer using the shuffling device to deliver, from
a physical set of playing cards, a random set of physical
playing cards for the player hand to a player position
illustrated on the layout and associated with the at least
one player and a random set ofphysical playing cards for
the dealer hand to a dealer position illustrated on the
layout and associated with the dealer;
the dealer determining a rank or count of the player
hand;
the dealer determining a rank or count of the dealer
hand;
the dealer determining relative rank or relative
count of the player hand and the dealer hand;
the dealer resolving the first wager based at least in
part upon the determined relative rank or relative count of
the player hand and the dealer hand, comprising:
determining whether one of the dealer hand
and the player hand wins, and, if so, determining
which of the dealer hand and the player hand wins;
3
Appeal 2016-007546
Application 11/801,784
if determined that the dealer hand wins,
retaining the first wager at risk by removing the first
wager in the form of the at least one chip from the
first marked area;
if determined that the player hand wins,
returning to the at least one player the first wager
by leaving the first wager in the form of the at least
one chip on the first marked area and paying to the
at least one player an additional payout in the form
of at least one additional chip on or proximate to
the first marked area; and
if determined that neither the player hand nor
the dealer hand wins, returning to the at least one
player the first wager by leaving the first wager in
the form of the at least one chip on the first marked
area; and
the dealer resolving the second wager, comprising:
the dealer specifically evaluating the determined
relative rank or relative count of
the player hand and the dealer hand, comprising:
determining whether the player hand meets
or exceeds a first predetermined minimum ranking
and the dealer hand beats the player hand to
identify the player hand as the losing hand; and
determining whether the dealer hand meets
or exceeds a second predetermined minimum
ranking and the player hand beats the dealer hand
to identify the dealer hand as the losing hand;
if the player hand meets or exceeds the first
predetermined minimum ranking and the dealer hand
beats the player hand, comparing the determined rank or
count of the player hand as the losing hand to the pay table
and paying to the at least one player a first side bet payout,
in the form of at least one additional chip on or proximate
to the second marked area, defined by the pay table based
at least in part on the determined rank or count of the
4
Appeal 2016-007546
Application 11/801,784
player hand exceeded by the determined rank or count of
the dealer hand;
if the dealer hand meets or exceeds a second
predetermined minimum ranking and the player hand
beats the dealer hand, comparing the determined rank or
count of the dealer hand as the losing hand to the pay table
and paying to the at least one player a second side bet
payout, in the form of at least one additional chip on or
proximate to the second marked area, defined by the pay
table based at least in part on the determined rank or
count of the dealer hand exceeded by the determined rank
or count of the player hand;
if the player hand does not meet or exceed the first
predetermined minimum ranking, the dealer retaining the
second wager by removing the second wager in the form
of the at least one chip from the second marked area; and
if the dealer hand does not meet or exceed the
second predetermined minimum ranking, the dealer
retaining the second wager by removing the second wager
in the form of the at least one chip from the second marked
area.
DISCUSSION
Appellants present arguments for independent claims 1,21,61, and
63, but do not separately address their dependent claims 3, 5, 7, 9-13, 20,
22-28, and 64-73. Appeal Br. 18^19. Thus, the dependent claims will stand
or fall with the independent claims from which they depend.
The Supreme Court 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 Inti, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1294
5
Appeal 2016-007546
Application 11/801,784
(2012)). According to the Supreme Court’s framework, the first step is to
determine whether the claims at issue are directed to one of those concepts
(i.e., laws of nature, natural phenomena, and abstract ideas). Id. If the
claims are directed to a patent-ineligible concept, the second step in the
analysis is to “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 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). To transform an abstract idea into a patent-eligible
concept, the claims require “more than simply stat[ing] the [abstract idea]
while adding the words ‘apply it.’” Id. at 2357 (citations omitted).
The First Step in the Alice Analysis
For the first step in the Alice analysis, the Examiner finds that
independent method claims 1,21, 61, and 63 are directed to “rules for
managing a game of card[s],” which the Examiner determines is judicially-
excepted from patent eligibility under 35 U.S.C. § 101 as “an abstract idea,
and specifically, as a ‘method of organizing human activities.’” Final Act.
2-3 (citing 2014 Interim Guidance on Patent Subject Matter Eligibility, 79
Fed. Reg. 74,618 (Dec. 16, 2014) (“2014 Interim Guidance”), as updated
July 30, 2015 (“2015 Update”); Planet Bingo, LLCv. VKGSLLC, 576 Fed.
Appx. 1005 (2014) (non-precedential)); see also Answer, dated June 2, 2016
(“Ans.”), at 4-5 (citing In re Smith, 815 F.3d 816 (Fed. Cir. 2016). In
6
Appeal 2016-007546
Application 11/801,784
support, the Examiner determines that the claimed methods “for playing a
playing card wagering game” (claims 1,21), “for playing a wagering game
hosted by a gaming establishment” (claim 61), and “of administering a
casino wagering game (claim 63)” (Appeal Br. at Claims App. 1-3, 7-10,
14-17) are similar to the claimed rules for playing physical cards found to be
an abstract idea in Smith, and to the claimed method of managing a bingo
game found to be an abstract idea in Planet Bingo. Ans. 4-5.
Appellants argue that the Examiner’s finding is erroneous for several
reasons. First, Appellants argue that “a concept should not be identified as
an ‘abstract idea’ ‘unless it is similar to at least one concept that the courts
have identified as an abstract idea.’” Appeal Br. 20 (citing the 2015 Update);
see also id. at 24-27. We are unaware of any requirement that the rejection
must refer to other case law in order to show that the claims are directed to
an abstract idea. The Subject Matter Eligibility Guidelines referenced by
Appellants are merely guidelines to assist the Examiner in formulating a
rejection. They are not statutory requirements. Rather, as discussed above,
the Supreme Court set forth the test for subject matter eligibility.
Notwithstanding, as stated above, the Examiner determines that the claimed
methods are similar to the methods for conducting a card wagering game
{Smith) and managing bingo games {Planet Bingo) found to be abstract ideas
by the Federal Circuit. See, e.g., Ans. 4-5; Smith, 815 F.3d at 816
(determining that rules for playing a wagering card game using conventional
physical cards are abstract ideas); Planet Bingo, 576 Fed. Appx. at 1007-08
(determining that methods of managing a bingo game are abstract ideas).
Thus, Appellants do not identify error by the Examiner.
7
Appeal 2016-007546
Application 11/801,784
Second, Appellants argue that the Examiner’s finding that “rules for
managing a game of cards” is the abstract idea of the claims does not
properly consider or reflect the “basic character” of the subject matter of
claim 1 (Appeal Br. 23; see also id. at 20-24) and is “oversimplifying” the
claims (Reply Brief, dated August 2, 2016 (“Reply Br.”), at 8; see also id. at
8-11). According to Appellants, “[i]f such a categorical, generic portrayal
of an ‘abstract idea’ were permissible under 35 U S.C. § 101, any method
related to administering a wagering game would be wholly removed from
the possibility of patent protection, regardless of whether a particular
wagering-related method, as claimed, provides a very particular, new,
nonobvious, and useful solution to the industry that provides an inventive
concept over and above any mere abstraction.” Appeal Br. 22. However, as
stated above, the Federal Circuit has held claims directed to methods for
playing cards and managing a game of bingo are abstract ideas.3 See Smith,
815 F.3d at 816; Planet Bingo, 576 Fed. Appx. at 1005. In addition, claims
1,21,61, and 63 are explicitly directed to methods “for a playing a playing
card wagering game” (claims 1,21), “for playing a wagering game hosted
by a gaming establishment” (claim 61), and “of administering a casino
wagering game (claim 63).” See Appeal Br. at Claims App. 1-13. Thus,
Appellants’ argument does not persuade us that the Examiner erred in
determining that the claims are directed to an abstract idea under the first
step of the Alice analysis. Further, other than the abstract idea (i.e., rules for
managing a game of cards), as determined by the Examiner, Appellants do
3 This does not mean that “any method related to administering a
wagering game would be wholly removed from the possibility of patent
protection” as claims directed to an abstract idea can still be found to be
patent eligible under the second step of the Alice test.
8
Appeal 2016-007546
Application 11/801,784
not identify a basic character of claims 1,21,61, and 63. Moreover, a novel
and nonobvious claim directed to a purely abstract idea is, nonetheless,
patent-ineligible. See Mayo, 132 S. Ct. at 1304. In other words, we are not
persuaded by Appellants’ argument that because Planet Bingo involved a
known game, the Examiner erred in determining that the present claims are
directed to the abstract idea of rules for a game. See Appeal Br. 24-28.
Third, Appellants argue that, under the first step of the Alice analysis,
the claimed method for playing a card wagering game does not fall within
the category of abstract ideas “that constitute the ‘building blocks of human
ingenuity,’ i.e., the basic units of ingenuity that, if tied up, would inhibit
further discovery, which is the concern underlying the abstract idea
exception to patent eligibility.” Appeal Br. 28 (citing Alice, 134 S. Ct. at
2355-57); see Reply Br. 2. Similarly, Appellants also argue that the claimed
method is not an abstract idea because it “is not merely fundamental
practices, building blocks, or basic tools of the gaming industry, nor is it a
disembodied concept dissociated from a manner of accomplishment.”
Appeal Br. 30 (emphasis omitted); see Reply Br. 11-12. Appellants present
the same arguments in their analysis of the second step of the Alice analysis.
Appeal Br. 44^18.
These arguments are unpersuasive. Merely because claims do not
preempt all forms of the abstraction does not make them any less abstract.
See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed.
Cir. 2015) (“[T]hat the claims do not preempt all price optimization or may
be limited to price optimization in the e-commerce setting do not make them
any less abstract.”). Moreover, characterizing preemption as a driving
concern for patent eligibility is not the same as characterizing preemption as
9
Appeal 2016-007546
Application 11/801,784
the dispositive test for patent eligibility. Instead, “[t]he Supreme Court has
made clear that the principle of preemption is the basis for the judicial
exceptions to patentability” and “[f]or this reason, questions on preemption
are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S.
Ct. at 2354). Although “preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.” Id. The Federal Circuit concluded that “[wjhere a patent’s
claims are deemed only to disclose patent ineligible subject matter under the
Mayo framework, . . . preemption concerns are fully addressed and made
moot.” Id.', see also id. (holding that “[i]n this case, Sequenom’s attempt to
limit the breadth of the claims by showing alternative uses of cffDNA
outside of the scope of the claims does not change the conclusion that the
claims are directed to patent ineligible subject matter”). Given this direction
from the Federal Circuit, we decline to apply a preemption standard in our
analysis, and instead apply the steps set forth by the Supreme Court in Alice
and Mayo.
In sum, we are not apprised of error in the Examiner’s determination
that the subject matter of independent claims 1,21, 61, and 63 constitutes an
abstract idea directed to a method of organizing human activity: rules for a
card game.
The Second Step in the Alice Analysis
For the second step in the Alice analysis, the Examiner finds that “the
elements or combination of elements do not ensure that the claim amounts to
‘significantly more’ than the abstract idea itself.” Final Act. 3. In particular,
10
Appeal 2016-007546
Application 11/801,784
the Examiner finds that the “physical/standard deck of cards, a physical table
with marked areas, tokens (and electronic recordation of that token), a
shuffling device, and a physical set of cards” recited in claims 1,21,61, and
63 are “general limitations well-understood, routine, and conventional in the
field” and/or “meaningless limitations generally linking the use of the
abstract idea to a particular technologic environment.” Final Act. 3
(emphasis omitted); see also id. at 5-6; Ans. 5-6.
Appellants do not contest the Examiner’s finding that the claimed
physical/standard deck of cards, physical casino table with marked areas,
tokens (and electronic recordation of that token), and card-shuffling device
are “general limitations well-understood, routine, and conventional in the
field.” Appeal Br. 42^14. Instead, Appellants present several related
arguments. First, Appellants argue that the Examiner considered only
isolated physical elements rather than the combination of all elements. See,
e.g., Appeal Br. 34^11; Reply Br. 3, 11-12. Second, Appellants argue that,
in Planet Bingo, the Federal Circuit “concluded that ‘managing the game of
bingo’ was abstract for a number of reason, one of which was that
‘managing the game of bingo ‘consists solely of mental steps which can be
carried out by a human using pen and paper,”’ whereas “the claims recite
numerous acts that are not mental steps.” Appeal Br. 25. Third, relying on
the Declaration of Roger M. Snow, Appellants argue that the additional
limitations {see e.g., the italicized limitations in claim 1 above) regarding the
rules in which a “‘bad beat’ side/second wager is won for either a high-
ranking player hand or a high-ranking dealer hand losing to an even higher
ranking hand” provides “an inventive concept by way of unconventional,
solution significant features.” Appeal Br. 36; see also Appeal Br. 36^11;
11
Appeal 2016-007546
Application 11/801,784
Reply Br. 4-7. Finally, Appellants argue that “even though, if disembodied,
accepting wagers, determining a rank or count of hands, resolving wagers,
etc. may be considered conventional, the method acts to which the claims
are directed are not so generic, but present a specific combination that is
neither generic nor conventional in the industry.” Appeal Br. 40. According
to Appellants, “[bjecause the claims’ actual recitations recite particular,
unconventional apparatus and because the claims recite use of the particular,
unconventional apparatus, the present claims provide ‘something more’ than
an abstract in the form of at least particular apparatus tied to method acts.”
Id. at 44.
Appellants’ arguments are not persuasive. In Smith, for example, the
Federal Circuit determined that using, shuffling, and dealing conventional
physical playing cards, and determining a winner by comparing a player’s
physical cards to a dealer’s reference cards are “purely conventional”
activities. See Smith, 815 F.3d at 819. Appending purely conventional steps
to an abstract idea does not supply a sufficiently inventive concept. Id.
Contrary to Appellants’ arguments that the combination of conventional
physical objects recited in the claims (e.g., Appellants’ casino table, card-
shuffling device, conventional card deck) impart patent eligibility (see, e.g.,
Reply Br. 5-7), the Federal Circuit, in Planet Bingo, also determined that
using generic implementation of physical objects to apply an abstract idea
related to rules of a game does not impart patent eligibility. Planet Bingo,
576 Fed. Appx. at 1007-08. Here, we are not persuaded that Appellants’
conventional “physical objects” are the type of additional features Alice
envisioned as imparting patent eligibility. See Alice, 134 S. Ct. at 2358
(“[T]he mere recitation of a generic computer cannot transform a patent-
12
Appeal 2016-007546
Application 11/801,784
ineligible abstract idea into a patent-eligible invention. Stating an abstract
idea while adding the words ‘apply it’ is not enough for patent eligibility.”)
(quoting Mayo, 132 S. Ct. at 1294 (internal quotation marks omitted)).
In sum, we are not persuaded that the Examiner erred in determining
that [independent claims 1, 21, 61, and 63, when considered “both
individually and ‘as an ordered combination,’” amount to nothing more than
an attempt to patent the abstract ideas embodied in the steps of the claims.
See Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1298).
Accordingly, the limitations of these claims fail to transform the nature of
this claim into patent-eligible subject matter. See id. (citing Mayo, 132 S.
Ct. at 1297-98). Dependent claims 3, 5, 7, 9-13, 20, 22-28, and 64-73 fall
with the independent claims.
For the reasons above, the rejection of claims 1,3,5, 7, 9-13, 20-28,
61, and 63-73 under 35 U.S.C. § 101 is sustained.
DECISION
For the above reasons, the Examiner’s rejection of claims 1, 3, 5, 7, 9-
13, 20-28, 61, and 63-73 under 35 U.S.C. § 101 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)(l)(iv).
AFFIRMED
13