Ex Parte Snow et al

Patent Trial and Appeal Board

Dec 15, 2017

14034295 (P.T.A.B. Dec. 15, 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.
14/034,295 09/23/2013 Roger M. Snow 3286-12427(PA4208.ap.US) 9782
66137 7590 12/19/2017
TRASKBRITT, P.C. /Bally Gaming, Inc.
PO Box 2550
Salt Lake City, UT 84110
EXAMINER
HOEL, MATTHEW D
ART UNIT PAPER NUMBER
3714
NOTIFICATION DATE DELIVERY MODE
12/19/2017 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):
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 LOUIS J. CASTLE II
Appeal 2017-002944
Application 14/034,295
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 and Louis J. Castle II (Appellants) appeal under 35
U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1—22.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellants’ invention relates to poker-type casino wagering games.
Spec. 12.
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Application 14/034,295
Claims 1,5, 12, and 16 are independent. Claim 1 is illustrative and is
reproduced below:
1. A method of administering a wagering game over a
network, comprising:
providing a server of a gaming system;
providing, by the server, a client for execution on a user device
connected to the network and associated with a player, the
user device being remote from the server;
the client receiving, from the user device and communicating to
the server, an indication of an ante wager and an indication
of a bonus wager to enter the player to participate in the
wagering game;
the server determining a set of player cards including five
randomized playing cards from a set of playing cards;
the server communicating to the user device the set of player
cards for display on the user device;
the server determining a set of dealer cards including five
randomized playing cards from the set of playing cards;
the server receiving, from the client, an indication of a best four-
card player poker hand for the player;
the server determining a best four-card dealer poker hand using
the set of dealer cards;
the server receiving, from the client, a game play election
selected, by the player at the user device, from a fold
election and a play wager election associated with a play
wager of an amount at least equal to the ante wager and
limited to a maximum multiple of the ante wager, the
maximum multiple defined based on a comparison of the
best four-card player poker hand to a predetermined
threshold ranking, the maximum multiple defined to be
one times the ante wager unless a rank of the best four-
card player poker hand exceeds the predetermined
threshold ranking, the maximum multiple defined to be
three times the ante wager for the best four-card player
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Application 14/034,295
poker hand rank at least equaling the predetermined
threshold ranking;
the server resolving any received wager of the ante wager and
the play wager based on a comparison of the best four-card
player poker hand to the best four-card dealer poker hand;
and
the server resolving the bonus wager based on a comparison of
the rank of the best four-card player poker hand to a bonus
threshold and based on a bonus pay table.
THE REJECTION ON APPEAL
The Examiner has rejected claims 1—22 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
ANALYSIS
Appellants argue claims 1—22 together. See Appeal Br. 14—50; Reply
Br. 2—13. We select claim 1 as the illustrative claim, and claims 2—22 stand
or fall with claim 1.
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’l, 134
S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 132 S. Ct. 1289, 1296—97 (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
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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. (quoting Mayo, 132 S. Ct. at
1298, 1297). 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 the original) (quoting Mayo, 132 S. Ct. at
1294).
The Examiner determines that claim 1 is directed to non-statutory
subject matter based on a judicial exception without adding significantly
more to the judicial exception. Final Act. 2. More specifically, the
Examiner determines that claim 1 is directed to an abstract idea pertaining to
economic practices involving accepting and resolving wagers, and does not
represent an improvement in the functioning of a computer. Id. at 6.
According to the Examiner, Appellants’ claim 1 is similar to a claimed
method of conducting a wagering game, that was determined to be an
abstract idea in In re Smith, 815 F.3d 816 (Fed. Cir. 2016). Ans. 13—15.
The Examiner determines that claim 1 does not include additional elements
that are sufficient to amount to significantly more than the judicial exception
because the additionally recited elements, which include hardware
components, relate to typical computing functions. Final Act. 2—4, 7.
Appellants contend that the Examiner fails to identify the supposed
abstract idea in a sufficiently clear and specific manner to provide notice and
enable Appellants to effectively respond. Appeal Br. 15, 19-20. Appellants
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more specifically argue that the Examiner treats the claims at a high level of
abstraction untethered to the claim language (id. at 15), and the Examiner
does not consider the basic character of the subject matter (id. at 22).
According to Appellants, the Examiner oversimplified the claimed invention
by not considering the benefits of the invention. Id. at 20-22; see also Reply
Br. 5.
We are not persuaded that the Examiner failed in the respects alleged
by Appellants, and instead find that the Examiner treated claim 1 and the
limitations therein in the same manner as did the Federal Circuit with the
claims at issue in the Smith decision.
Claim 1 is drawn to “[a] method of administering a wagering game”
comprising, inter alia, a client receiving an indication of an ante wager and
an indication of a bonus wager, a server determining a set of player cards,
the server determining a set of dealer cards, the server determining a best
four-card dealer poker hand, the server receiving a game play election
selected by a player, the server resolving any received wager, and the server
resolving the bonus wager. Appeal Br. Appx. 1—2 (Claims App.) (emphases
added). Thus, claim 1 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 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
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(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 1 is drawn to a method of playing four-card poker
comprising dealing rules, wagering rules, “determining” rules, and
“resolving” rules, we agree with the Examiner that claim 1 is directed to an
abstract idea, in the form of a fundamental economic practice, that involves
accepting and resolving wagers. This determination fulfills the first step of
the Alice framework in that we conclude that claim 1 is directed to an
abstract idea.
Appellants present similar arguments with respect to the Examiner’s
initial mention of the game of bingo in the Final Action, maintaining
additionally that the Planet Bingo1 decision by the Federal Circuit is a
nonprecedential decision. See Appeal Br. 25—28; Reply Br. 2. 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.
Appellants, noting that Alice characterizes abstract ideas as
fundamental practices, building blocks of an industry, and disembodied
concepts, further argue that the Examiner does not identify any aspect of the
claim as constituting a building block of the gaming industry. Appeal Br.
16—20, 29—33; Reply Br. 3^4. Appellants additionally contend 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. Appeal
1 Planet Bingo, LLCv. VKGSLLC, 576 F. App’x 1005 (Fed. Cir. 2014).
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Br. 16—17, 32—34 (referring to recitations in the claim for providing five
randomized playing cards, a best four-card player poker hand, and a
predetermined threshold ranking, among other things). Rather, according to
Appellants, the particular recited steps provide a specific implementation of
a solution to a problem in the gaming arts. Id. at 15, 34—35, 42; see Reply
Br. 10.
Appellants’ attempts to distance the subject matter of claim 1 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 any error in the
Examiner’s position.
Appellants contend that the claims are directed to a specific
implementation of a solution to a problem in the relevant arts like the claims
in Enfish,2 which were determined to be patent eligible. Appeal Br., passim.
As an example of this, Appellants point to the Specification as establishing
that the game solves the problem of fold rates being too high and win
percentages being too low. Id. at 35.
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
2 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
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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 Appellants 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, Appellants contend that Smith should
not be applied in this case. Appeal Br. 15, 17; Reply Br. 2, 5—6. Appellants
argue that, in Smith, the characterization of rules for playing a wagering
game as 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 Enfish3 and the TLI
Communications^ decisions. Appeal Br. 18. Appellants also argue that
reliance on Smith would improperly ignore the recent McRO3 4 5 decision,
which determined that an ordered combination of claimed steps using
3 Appellants observe 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. 18.
4 TLI Commons LLCv. AVAuto., LLC, 823 F.3d 607 (Fed. Cir. 2016).
Appellants observe that, in TLI Communications, the Federal Circuit noted
that fundamental practices long prevalent in our system constitute abstract
ideas. Appeal Br. 18. 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.
5 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016).
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unconventional rules that relate to sub-sequences of phonemes, timings, and
morph weight sets are not directed to an abstract idea. Reply Br. 3—9.
However, as noted supra, Appellants’ 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,
Appellants’ 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
McRO6 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.3datl308. We decline to extend McRO’s reach to purported
unconventional rules present in claim 1, in that we find Smith to be binding
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 1 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. Appellants contend that claim 1 provides an inventive concept that
is significantly more than a mere abstract idea. Appeal Br. 15, 35. In
6 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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support, Appellants argue that features in claim 1 are unconventional and
solution-significant. Id. at 37, 40-41; Reply Br. 3, 5, 8—12. According to
Appellants, while the Examiner considers the hardware limitations, the
Examiner does not consider the additional claim elements that are not
physical elements, such as the method acts as recited in the claim. Appeal
Br. 38, 40. As such, Appellants argue that claim 1 recites a particular,
ordered combination of method acts that is unconventional because it is not
widely prevalent, well-understood, routine or conventional activities. Id. at
41^12.
Features specific to the dealing rules, wagering rules, poker rank
rules, and payout rules either implement the abstract idea or are merely
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.”); 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)). Like the Flook claims, claim 1 does not recite either
unconventional physical elements or a functional relationship between an
abstract idea and the physical elements.
Appellants’ 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. See Appeal Br.
43—45. 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
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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.
Appellants argue that the claims do not risk tying up any abstract idea.
Appeal Br. 45—48; 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
1, and claims 2—22 which fall therewith, as being directed to non-statutory
subject matter.
DECISION
The rejection of claims 1—22 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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