Ex Parte Tang

Patent Trials and Appeals Board

Jun 19, 2019

14606766 - (D) (P.T.A.B. Jun. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/606,766 01/27/2015
66137 7590 06/21/2019
TRASKBRITT, P.C. /Bally Gaming, Inc.
PO Box 2550
Salt Lake City, UT 84110
FIRST NAMED INVENTOR
Matthew Tang
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.
3286-12195.l(PA4860.ap.US 6737
EXAMINER
DENNIS, MICHAEL DAVID
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
06/21/2019 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 MATTHEW TANG 1
Appeal2017-009438
Application 14/606,766
Technology Center 3700
Before JAMES P. CALVE, WILLIAM A. CAPP, and LEE L. STEPINA,
Administrative Patent Judges.
Opinion for the Board filed by CAL VE, Administrative Patent Judge
Opinion concurring filed by CAPP, Administrative Patent Judge
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 1-20. Appeal Br. 2. We have jurisdiction under
35 U.S.C. § 6(b ). Appellant presented argument at an oral hearing held on
June 6, 2019. 2 We AFFIRM.
1 Bally Gaming, Inc. and Scientific Games Corporation are identified as the
real parties in interest, and Bally Gaming, Inc. is identified as the applicant
pursuant to 37 C.F.R. § 1.46. Appeal Br. 2.
2 Appellant relied on substantially similar arguments in support of the patent
eligibility of the claims on appeal in Appeal Nos. 2017-002162 and 2017-
Appeal2017-009438
Application 14/606,766
CLAIMED SUBJECT MATTER
Claims 1 and 13 are independent. Claim 1 is reproduced below.
1. A method of administering a wagering game,
compnsmg:
accepting an ante wager from a player by receiving a physical,
monetarily valuable wagering element on a surface of a
gaming table;
dealing seven cards from a set of randomized, physical cards
comprising at least one deck of at least 52 standard
playing cards to each of a plurality of player positions
and a dealer position on the surface of the gaming table;
accepting the player's arrangement of the cards dealt to the
player into a four-card high player hand, a two-card
medium player hand, and a one-card low player hand or
arranging the cards dealt to the player into a four-card
high player hand, a two-card medium player hand, and a
one-card low player hand on the surface of the gaming
table;
arranging the cards dealt to the dealer position into a four-card
high dealer hand, a two-card medium dealer hand, and a
one-card low dealer hand on the surface of the gaming
table;
resolving the ante wager by comparing the high player hand to
the high dealer hand, the medium player hand to the
medium dealer hand, and the low player hand to the low
dealer hand;
paying a payout on the ante wager to the player when two of the
high player hand, medium player hand, and low player
hand outrank a corresponding two of the high dealer
hand, medium dealer hand, and low dealer hand,
respectively, by transferring physical, monetarily
valuable wagering elements to the player on the surface
of the gaming table; and
006315, both of which appeals involve claims directed to card games and
have the same real parties in interest as the present Appeal.
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Appeal2017-009438
Application 14/606,766
collecting an amount of the ante wager when two of the high
player hand, medium player hand, and low player hand
are outranked by a corresponding two of the high dealer
hand, medium dealer hand, and low dealer hand,
respectively, by retrieving from the surface of the gaming
table each wagering element associated with the ante
wager accepted from the player.
REJECTION
Claims 1-20 are rejected as directed to patent-ineligible subject matter
under a judicial exception to 35 U.S.C. § 101.
ANALYSIS
Appellant argues claims 1-5 and 8-20 as a group. Appeal Br. 9-25.
We select claim 1 as representative (37 C.F.R. § 4I.37(c)(l)(iv)) and
separately address Appellant's arguments for claims 6 and 7.
The Examiner determines claim 1 is directed to the abstract idea of
administering or managing a wagering game. Final Act. 2. The Examiner
also determines claim 1 is recited to a method of exchanging and resolving
financial obligations based on probabilities created during distribution of the
cards with wagering tokens/chips used to represent and indicate the financial
aspects of the game. Id. In addition, the Examiner determines that the
additional elements of physical cards, wagers, and a gaming table are non-
unique and traditional gaming elements that do not amount to significantly
more than the judicial exception. Id. at 2--4; Ans. 5---6. The Examiner cites
In re Smith, 815 F.3d 816 (Fed. Cir. 2016) and relies on its holding that a set
of rules for conducting a blackjack wagering game is an abstract idea. Ans.
5. The Examiner finds that claim 1 recites similar card wagering game rules
that involve dealing, wagering, ranking, and payout rules. Id.
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Appeal2017-009438
Application 14/606,766
The patent laws provide that "[ w ]hoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent therefor, subject to
the conditions and requirements of this title." 35 U.S.C. § 101. However,
"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 Int'!, 573 U.S. 208,216 (2014) (citation omitted).
Mayo Collaborative Services established a framework to distinguish
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts. Alice,
573 U.S. at 217 (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc.,
566 U.S. 66, 77 (2012)). First, we determine whether the claims are directed
to a patent-ineligible concept. Id. If so, we next consider the claim elements
individually and as an ordered combination to determine whether additional
elements transform the claims into a patent-eligible application. Id. This
search for an inventive concept seeks an element or combination of elements
"sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself." Id. at 217-18.
Recently, the PTO published guidance for evaluating subject matter
eligibility. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) ("Revised Guidance"). Under Step One, a
determination is made whether the claims are in a statutory category of
patentable subject matter, i.e., whether they recite a process, machine,
manufacture, or a composition of matter, identified in 35 U.S.C. § 101.
Revised Guidance, 84 Fed. Reg. at 53-54; See Alice, 573 U.S. at 216; Mayo,
566 U.S. at 70.
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Appeal2017-009438
Application 14/606,766
Next, at Revised Step 2A, Prong One, an evaluation is made whether
a claim recites a judicial exception, i.e., an abstract idea set forth in Section I
of the Revised Guidance, a law of nature, or a natural phenomenon. Revised
Guidance, 84 Fed. Reg. at 54. Specific limitations that recite an abstract
idea must be identified (individually or in combination), and a determination
made whether the limitation(s) falls within the subject matter groupings in
Section I of the Revised Guidance. Id. (A. Revised Step 2A). The groupings
cover ( 1) mathematical concepts, relationships, formulas, or calculations,
(2) certain methods of organizing human activity, fundamental economic
principles and practices, commercial interactions, managing personal
behavior, relationships, or interactions, and (3) mental processes and
concepts formed in the human mind. Id. at 5 2.
If a claim recites a judicial exception, Prong Two of Revised Step 2A
requires a determination to be made whether the claim as a whole integrates
the judicial exception into a practical application. Id. "A claim that
integrates a judicial exception into a practical application will apply, rely on,
or use the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception." Id. at 53. If a judicial
exception is integrated, the claim is patent eligible. See id. at 54--55.
If a claim does not "integrate" a recited judicial exception, the claim is
directed to the judicial exception. We proceed to Step 2B to determine if the
claim contains an inventive concept. Id. at 56. In particular, Step 2B
considers whether the claim adds a specific limitation or combination of
limitations that are not well-understood, routine, conventional activity in the
field, which is indicative that an inventive concept may be present. Id.
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Appeal2017-009438
Application 14/606,766
Step One: Does Claim 1 Fall within a Statutory Category of§ 1 OJ?
We agree with the Examiner that the claims recite methods. Final
Act. 3. Thus, the claims fall within the statutory categories of 35 U.S.C.
§ 101. Appellant is in accord. See Appeal Br. 3.
Step 2A, Prong One: Does Claim 1 Recite a Judicial Exception?
The Examiner determines the method of administering a wagering
game recited in claim 1 is an abstract idea like managing a game of bingo, in
Planet Bingo, LLC v. VKGS LLC, 576 F. App'x 1005 (Fed. Cir. 2014) (non-
precedential). Final Act. 2. The Examiner also determines that the claimed
wagering card game effectively involves exchanging and resolving financial
obligations based on probabilities from distributing cards with wagering
tokens/chips used to represent and indicate financial aspects of the game. Id.
Regarding specific claim limitations, the Examiner finds that claim 1
recites a set of rules for a card wagering game including dealing rules, rules
for arranging card hands, rules for resolving an ante wagers by comparing
the high, medium, and low hands of the player and dealer, and payout rules.
Ans. 5. The Examiner determines that the rules recite an abstract idea like
the rules for conducting a blackjack wagering game in In re Smith, 815 F .3d
816 (Fed. Cir. 2016), which held such rules to be an abstract idea. Id.
Appellant argues that the claimed methods involve new and useful
variations in the administration of Chinese or pai gow poker by forming
three hands from seven cards with an inventive resolution mechanism that
greatly reduces the occurrence of ties, speeds game play, and increases win/
loss decision frequency, all of which features represent an advance in the
technical field of wagering game administration. Appeal Br. 11, 12-14.
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Appeal2017-009438
Application 14/606,766
We agree with the Examiner that the claimed method of administering
a wagering game recites abstract ideas of: (1) certain methods or organizing
human activity through fundamental economic practices of exchanging and
resolving financial obligations and (2) certain methods of organizing human
activity by managing personal behavior or interactions between people by
following rules or instructions. Smith, 815 F.3d at 818-19 (holding that the
"claimed 'method of conducting a wagering game' is drawn to an abstract
idea much like Alice's method of exchanging financial obligations and
Bilski 's method of hedging risk."); see In re Marco Guldenaar Holding B. V.,
911 F.3d 1157, 1160 (Fed. Cir. 2018) (approving the Board's holding in
Smith that "[a] wagering game is, effectively, a method of exchanging and
resolving financial obligations based on probabilities created during the
distribution of the cards" and holding that the claimed method of playing a
dice game by placing wagers on whether certain die faces will appear face
up recites "a method of conducting a wagering game, with the probabilities
based on dice rather than on cards"); Revised Guidance, 84 Fed. Reg. at 52.
The steps of accepting an ante wager from a player, dealing seven
cards to a player, accepting the player's arrangement of the cards into a four-
card high player hand, a two-card medium player hand, and a one-card low
player hand, arranging the cards dealt to the dealer into three similar hands,
resolving the ante wager, and paying a payout on the ante wager based on
the wagering rules recite certain methods of organizing human activity via
fundamental economic practices of exchanging and resolving financial
obligations based on probabilities of card distributions, and organizing
human activity by managing personal behavior or interactions between
people by following wagering rules/instructions, which are abstract ideas.
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Appeal2017-009438
Application 14/606,766
Step 2A, Prong Two: Is There Integration into a Practical Application?
We also determine that claim 1 does not include additional elements
sufficient to integrate the abstract ideas recited therein into a patent-eligible
application. First, the claimed method uses a deck of cards that is at least the
52 cards of a standard deck. Spec. ,r 7. Therefore, claim 1 does not integrate
the abstract ideas into a particular manufacture such as an original deck of
playing cards. See Smith, 815 F.3d at 819.
Dependent claims 6 and 7 recite steps of receiving physical playing
cards on a surface of a gaming table in a designated ante wager betting area
and receiving monetarily valuable wagering elements in or near that area.
These steps do not integrate the abstract ideas into a practical application.
Claim 1 recites abstract ideas with the instruction to "apply it" on a
generic gaming table surface without a meaningful limitation or integration
of the abstract ideas into a practical application. Alice, 573 U.S. at 221. The
markings on the surface of the gaming table recited in claims 6 and 7 are
printed matter that generally falls outside the scope of patent-eligible subject
matter under § 101. Marco Guldenaar, 911 F .3d at 1161. The markings
represent the abstract wagering game rules, which include accepting an ante
wager by receiving a physical, monetarily valuable wagering element on a
surface of the gaming table. We do not find that providing the markings,
which merely represent wagering game rules and indicate where cards and
tokens should be placed, is an advance in gaming technology. Appeal Br.
20-21. Such printed matter on an otherwise generic gaming table used to
play a wagering game with standard game cards and wagering elements does
not impose a meaningful limitation on the abstract ideas recited in claim 1 to
integrate those abstract ideas into a practical application.
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Appeal2017-009438
Application 14/606,766
DDR dealt with a computer- and Internet-specific problem of websites
losing visitors to third-party merchants when visitors clicked on a third-party
merchant's advertisement on a host site. DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1248 (Fed. Cir. 2014). The claimed system generated a
new, composite web page that retained the look and feel of the host website
while displaying product information of a third-party merchant. Id. at 1248-
49. Here, claim 1 recites wagering game rules using a 52 card deck and
generic gaming table. It does not improve computers or Internet technology.
Enfzsh improved a computer database through a self-referential table.
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). The
claims recited "a specific improvement to the way computers operate,
embodied in the self-referential table." Id.; see id. at 1337 (finding that the
self-referential table functions differently than conventional databases with
increased flexibility, faster search times, and less memory). Here, claim 1
does not recite a database or improvement to wagering game technologies.
Similarly in McRO, Inc. v. Bandai Namco Games America, Inc., 837
F.3d 1299 (Fed. Cir. 2016), the claims focused on a specific improvement in
the field of computer animation. The claimed process used a combined
order of specific rules that render information into a specific format used and
applied to create a desired result-a sequence of synchronized, animated
characters. McRO, 873 F.3d at 1314--15. The claims recited a process of
automated lip-synchronization of 3-D characters as resulting from a specific
order of rules as a relationship between sub-sequences of phonemes, timing,
and weight of visual expression at a particular timing by a morph weight set.
Id. at 1315. Here, claim 1 recites no physical transformation of cards or
elements. Thus, these decisions are unpersuasive. See Appeal Br. 14--16.
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Appeal2017-009438
Application 14/606,766
Step 2B: Does Claim 1 Recite an Inventive Concept?
We next consider whether claim 1 recites any elements, individually
or as an ordered combination, that transform the abstract ideas into a patent-
eligible application, e.g., by providing an inventive concept. Alice, 573 U.S.
at 217-18. Appellant argues the claimed wagering game rules "represent an
advance in the technical field of wagering game administration because the
required three-hand architecture with an inventive resolution mechanic that
reduces the occurrence of ties renders the game more attractive by reducing
time spent on hands resulting in a push." Appeal Br. 18 (this "novel and
nonobvious dealing and hand-formation architecture constitutes an advance
in the technical field of wagering game administration."). Id.
These arguments are not persuasive because even if the claimed rules
represent a novel, non-obvious way of administering a wagering card game,
they are abstract ideas; therefore, any advance that they make is entirely in
the realm of patent-ineligible abstract ideas. SAP Am., Inc. v. InvestPic,
LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) ("No matter how much of an
advance in the finance field the claims recite, the advance lies entirely in the
realm of abstract ideas, with no plausibly alleged innovation in the non-
abstract application realm. An advance of that nature is ineligible for
patenting."); Two-Way Media Ltd. v. Comcast Cable Commc'ns, LLC, 874
F.3d 1329, 1340 (Fed. Cir. 2017) ("Eligibility and novelty are separate
inquiries."); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151
(Fed. Cir. 2016) ("But, a claim for a new abstract idea is still an abstract
idea."); Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed.
Cir. 2015) (affirming unpatentability of claims that improved an abstract
idea, but not a computer's performance).
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Application 14/606,766
For the same reasons, the fact that the gaming table may include a
physical layout design (printed matter) that merely reflects the abstract rules
of the wagering game does not provide an inventive concept. See Appeal
Br. 21. The design merely reflects the abstract wagering game rules in much
the same way as a generic computer may implement abstract ideas without
providing an inventive concept to transform the abstract ideas into a patent
eligible application. See Alice, 573 U.S. at 223 (holding that the "mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention" merely by stating an abstract idea and
adding the words "apply it" on a computer); see Smith, 815 F.3d at 819.
Appellant presents no evidence that printed matter markings on an
otherwise generic gaming table represents a technological advance in the
gaming arts or that it facilitates a non-abstract process or even a wagering
game beyond the obvious abstract idea of merely organizing human activity
and personal interactions between people using wagering items and game
cards by indicating the locations for these standard items on a game table.
We are not persuaded that printed indicia relating to wagering game rules on
a game table surface represents an innovation in the gaming industry.
Furthermore, the claims recite the even more abstract idea based on
mathematical concepts or relationships that forming seven cards into three
hands, where each hand is scored separately, reduces ties over a wagering
card game that forms two hands out of seven cards. The claimed wagering
game rules thus are directed to the basic concept that an uneven number of
separately scored hands will result in a player or dealer winning two of the
three hands, thereby reducing the likelihood of ties as occurred in prior art
wagering card games that form only two playing hands. See Spec. ,r,r 3-7.
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Appeal2017-009438
Application 14/606,766
Any commercial success results from the abstract idea that dividing
seven cards into three hands reduces the complexity of resolving wagers by
reducing or eliminating the incidence of time-wasting ties so that a greater
percentage of wagers are collected by the house due to the increased speed
of gameplay and greater number of possible participants. Yee Declaration
under 37 C.F.R. § 1.132, dated May 2, 2016, ,r,r 10, 11.
Whether considered individually or as an ordered combination, the
limitations of claim 1 do not recite an inventive step. They involve steps of
dealing cards and accepting and resolving wagers and player and dealer
hands according to wagering game rules. See Smith, 815 F.3d at 819.
DECISION
We affirm the rejection of claims 1-20 as directed to a 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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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW TANG
Appeal2017-009438
Application 14/606,766
Technology Center 3700
OPINION CONCURRING
CAPP, Administrative Patent Judge
I write separately to express some additional views on the Section 101
rejection and Appellant's advocacy related thereto.
In Alice, the Supreme Court took pains to caution against interpreting
Section 101 "in ways that make patent eligibility 'depend simply on the
draftsman's art." Alice, 573 U.S. at 226. In my opinion, Appellant's
advocacy in this case, both written and oral, is merely an exercise in
linguistic finesse that is designed to create the superficial, but nevertheless
false, impression that Appellant has invented something of a technological
nature that is more than simply an abstract idea in the form of rules for
playing a game.
Appellant's briefs are rife with words and phrases that conjure up
images of machines and advances in mechanical technology. Some, but
certainly not all, of these words and phrases include: "inventive resolution
mechanic" (Appeal Br. 11, 13, 14, 15, 18, 20, 21, 22; Reply Br. 3); "unique
game mechanic" (Appeal Br. 14); "wagering game mechanics" (Appeal
Appeal2017-009438
Application 14/606,766
Br. 16; Reply Br. 3); "nonobvious gaming mechanic" (Appeal Br. 18, 24;
Reply Br. 7); "dealt cards and associated resolution mechanics" (Appeal
Br. 19); "other gaming mechanics" (Appeal Br. 13, 24; Reply Br. 7);
"underlying game mechanics" (Appeal Br. 21, 25); "gaming administration
technology," (Appeal Br. 10, Reply Br. 2), "technical field of wagering
game administration" (Appeal Br. 11, 12, 18, 22); "advance in their
technical field" (Appeal Br. 18); "technical advance" (Appeal Br. 19);
"gaming architecture" (Appeal Br. 10, 19, 23; Reply Br. 2, 3); "three-hand
architecture" (Appeal Br. 18, 19); "hand-formation architecture" (Appeal
Br. 18, 19); "reward architecture" (Appeal Br. 19). However, when it comes
to the question of whether Appellant has made an advancement in something
akin to "technology," nothing could be further from the truth.
Put simply, Appellant's invention involves rules for playing a game.
It is played by people in a casino sitting around a felt-topped table, playing a
game with a standard 52 card deck of playing cards, and wagering using
physical instrumentalities such as plastic chips. Apart from the playing
surface, cards, and chips, there is no machine, there is no mechanical
apparatus, and there is no new and nonobvious advance in anything that can
be termed as "technology."
Appellant's alleged technological advance is no different in kind than
school children changing the game of hopscotch by using colored chalk to
draw a new hopscotch pattern on a sidewalk or other playground surface.
There is no more technological advance in changing the surface on a felt
topped casino table than there is in drawing a new hopscotch pattern on a
sidewalk with colored chalk.
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Modifying an existing game by changing the rules is purely an
abstract idea. It is an idea that is conjured up entirely in the human mind and
then communicated to other persons orally or in writing. There is no
"technology," "architecture," or "mechanisms" involved as such terms are
normally used in the field of patentable inventions. The new and "changed"
game that is claimed in Appellant's Claim 1 is nothing more than a sequence
of human actions performed in accordance with a certain protocol or set of
rules. In accordance with those rules, card are dealt, cards are arranged by
players, card hands are compared, and wagers are made and collected.
Claims App., Claim 1. Nothing of a mechanical or technological nature
takes place. The rules by which the game is played are no more or less
arbitrary and abstract than when the characters on the TV Show "Big Bang
Theory" changed the rules of "Rock, Paper, Scissors" to "Rock, Paper,
Scissors, Lizard, Spock."
Stripped of all of Appellant's pseudo-technological jargon in
Appellant's briefs and oral advocacy, the invention simply entails rules to a
card game.
While games may enhance our leisure hours, they contribute
nothing to the existing body of technological and scientific
knowledge. They should therefore be deemed categorically
ineligible for patent.
In re Marco Guldenaar Holding B. V., 911 F.3d 1157, 1166 (Fed. Cir. 2018)
(J. Mayer, concurring opinion). Controlling precedent maintains that new
rules for a card game entail an abstract idea that is not patent eligible. Smith,
815 F .3d at 818. That ends our inquiry.
3