Ex Parte Stroll

Patent Trial and Appeal Board

Dec 18, 2017

13721473 (P.T.A.B. Dec. 18, 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.
13/721,473 12/20/2012 Michael Stroll 78078-400191 7319
27717 7590
Seyfarth Shaw LLP
233 S. Wacker Drive
Suite 8000
Chicago, IL 60606-6448
EXAMINER
HALL, SHAUNA-KAY N
ART UNIT PAPER NUMBER
3714
NOTIFICATION DATE DELIVERY MODE
12/20/2017 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):
patentdocket_chi @ seyfarth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL STROLL
Appeal 2016-003703
Application 13/721,473
Technology Center 3700
Before BART A. GERSTENBLITH, KENNETH G. SCHOPFER, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’
decision rejecting claims 1—23, which are all of the pending claims, under
35 U.S.C. § 101 as being directed to non-statutory subject matter. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Throughout this opinion, we refer to the Appellant’s Appeal Brief
(“Appeal Br.,” filed July 14, 2015), Reply Brief (“Reply Br.,” filed Feb. 18,
2016), and Specification (“Spec.,” filed Dec. 20, 2012), and to the
Examiner’s Answer (“Ans.,” mailed Dec. 18, 2015) and Non-Final Office
Action (“Non-Final Act.,” mailed Jan. 14, 2015).
2 According to the Appellant, the real party in interest is “Michael Stroll,
d/b/a Stroll Enterprises LLC.” Appeal Br. 3.
Appeal 2016-003703
Application 13/721,473
STATEMENT OF THE CASE
The Appellant’s invention relates to “a game of chance, including a
wagering game suitable for a casino environment.” Spec. 3,11. 2—3.
Claims 1, 6, and 21 are the independent claims on appeal. Claim 1
(Appeal Br. 11 (Claims App.)) is illustrative of the subject matter on appeal
and is reproduced below:
1. A wagering card game comprising:
a standard deck of playing cards, with said cards having
numeric values based upon indicated numbers thereon, face
cards being valued at ten, and aces being valued at one or eleven;
six cards being dealt to a player as a player hand;
six other cards being dealt to a dealer as a dealer hand;
said player arranging said player hand in three player two-
card combinations, in sums with the objective of equaling or
coming below target values of seven, fourteen and twenty-one, if
possible, in respective combinations;
said dealer arranging said dealer hand in three dealer two-
card combinations in sums with the objective of equaling or
coming below target values of seven, fourteen and twenty-one, if
possible, in respective combinations;
said dealer further being restricted to first attempting to
make a first combination with a target value of twenty-one using
the two highest value cards in the dealer hand; second attempting
to make a second combination with a target value of fourteen
without exceeding fourteen if possible, and lastly using the
remaining two cards in the dealer hand to make a third
combination with a target value of seven;
evaluating said player and dealer combinations, with any
player combination exceeding its respective target value
constituting a bust (loss); any player combination which does not
exceed its respective target value and which exceeds the dealer's
combination constituting a win; and any player combination
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Application 13/721,473
which is the same as said dealer’s combination and which does
not exceed its respective target value constituting a push (tie);
and further including a player wager on the outcome of
each combination for a target value, and determining a payout, if
any, based upon the outcomes of said combinations according to
a predetermined payout methodology.
ANALYSIS
The Appellant argues the rejection of independent claims 1, 6, and 21
as a group, and provides no separate arguments for the dependent claims.
See Appeal Br. 6—9. We choose claim 1 as representative of all of the
claims; claims 2—23 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1).
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty.
Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Assn for
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013)).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 75—77 (2012), “for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.” Alice, 134 S. Ct.
at 2355. The first step in that analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts.” Id. (citing
Mayo, 566 U.S. at 76—79) (emphasis added). If so, the second step is to
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Application 13/721,473
consider the elements of the claims “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,
566 U.S. at 78-79).
In other words, the second step is to “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, 566 U.S. at 72—73). The Court acknowledged in Mayo, that “all
inventions at some level embody, use, reflect, rest upon, or apply laws of
nature, natural phenomena, or abstract ideas.” Mayo, 566 U.S. at 71. We,
therefore, look to whether the claims focus on a specific means or method
that improves the relevant technology or are instead directed to a result or
effect that itself is the abstract idea, and merely invoke generic processes and
machinery. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336
(Fed. Cir. 2016).
Turning to the first step of the Alice framework, the Examiner
determines that claim 1 is directed to “a series of steps instructing how to
play a card game,” i.e., “a set of game rules/instructions.” Non-Final Act. 5.
The Appellant does not contest this determination. See Appeal Br. 8 (“All of
the Claims relate to a card game”). Rather, the Appellant contends that a
card game is not an abstract idea because “[b]y this logic, any process is per
se invalid. . . . The Examiner cannot summarily create an excepted ‘abstract
idea’ category and wipe away an entire art unit worth of patents in the
process.” Id. at 7. We disagree with this contention.
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Application 13/721,473
We take no position on the Appellant’s contention that characterizing
the claim as an abstract idea “not only invalidates numerous patents
previously granted on claims directed to card games, but also other method,
process or system claims of innumerable kind, such as processes for making
a mixture.” Reply Br. 2. Rather, our focus is on the Examiner’s
determination as it applies to the claims before us. We find that
determination supported, for the reasons discussed below.
Our reviewing court has held that claims “directed to rules for
conducting a wagering game compare to other ‘fundamental economic
practice^]’ found abstract by the Supreme Court.” In re Smith, 815 F.3d
816, 818 (Fed. Cir. 2016). In Smith, representative claim 1 recited a
“method of conducting a wagering game” comprising steps of a dealer
providing and shuffling a deck of physical playing cards, accepting a wager,
dealing only two cards to each player and the dealer, examining respective
hands, conditionally resolving player versus dealer wagers, conditionally
allowing a player to take one additional card, conditionally remaining pat,
comparing a value of each player’s hand to a final value of the dealer’s hand,
and resolving the wagers based on the comparison. Id. at 817—18.
Similarly, claim 1 here recites a wagering game with a standard deck of
physical cards comprising the steps of dealing cards to players and a dealer,
arranging the cards in combinations, restricting the dealer’s combinations,
evaluating player and dealer combinations, including a player wager on the
outcome, and determining a payout based on the outcome. Appeal Br. 11
(Claims App.). Thus, the wagering game of claim 1 is a fundamental
economic practice and an abstract idea similar the abstract idea of Smith.
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Turning to the second step of the Alice framework, the Examiner
determines that “the claims do not provide meaningful limitations to
transform the abstract idea into a patent eligible application of the abstract
idea such that the claims amount to significantly more than the abstract idea
itself.” Non-Final Act. 6. The Examiner notes that the steps are performed
by a human being. Id. We agree with and adopt the Examiner’s
determination. Claim 1 merely appends purely conventional steps of
dealing, evaluating, and determining a payout using a conventional deck of
cards. See Smith, 815 F.3d at 819 (“shuffling and dealing a standard deck of
cards are ‘purely conventionaf activities”). As such, claim 1 does not “have
an inventive ‘concept’ sufficient to ‘transform’ the claimed subject matter
into a patent-eligible application of the abstract idea.” Id.
Additionally, we are not persuaded of Examiner error by the
Appellant’s arguments that claim 1 is tied to a machine or apparatus or,
alternatively, has a transformation from one state to another. See Appeal
Br. 8—9, Reply Br. 2—3 (citing to various Board decisions). As the Appellant
notes, “the ‘machine or transformation’ test is not the only test for
eligibility.” Appeal Br. 8. We note that the decisions cited by the Appellant
pre-date the Smith decision.3
We also are not persuaded of Examiner error by the Appellant’s
argument that “[tjhere is no ‘abstract idea’ involved here, but concrete
elements which proceed according to a definite methodology claim — the
essence of a stator process.” Id. at 9. The Appellant’s “concrete” actions of
dealing, evaluating, and determining are steps that further elaborate on the
3 In any event, we would not be bound by non-precedential Board decisions.
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abstract idea. They, for example, do not address a technological problem
and are not technological improvements.
Thus, we are not persuaded that the Examiner erred in the rejection of
claim 1 under 35 U.S.C. § 101, and we sustain the rejection of claim 1 and
of claims 2—23, which fall with claim 1.
DECISION
We AFFIRM the Examiner’s rejection of claims 1—23 under
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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