Ex Parte Tang

Patent Trials and Appeals Board

Jun 28, 2019

14644504 - (D) (P.T.A.B. Jun. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/644,504 03/11/2015
66137 7590 07/02/2019
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.
3286-12195.2US-PA5010apUS 3233
EXAMINER
DENNIS, MICHAEL DAVID
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
07/02/2019 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
Appeal2017-002162 2
Application 14/644,504
Technology Center 3700
Before JAMES P. CALVE, WILLIAM A. CAPP, and LEE L. STEPINA,
Administrative Patent Judges.
Opinion for the Board filed by STEPINA, Administrative Patent Judge
Opinion concurring filed by CAPP, Administrative Patent Judge
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
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 A hearing was conducted on June 6, 2019.
Appeal2017-002162
Application 14/644,504
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
The claims are directed to method of administering three-hand pai
gow poker. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of administering a wagering game, comprising:
accepting an ante wager from a player by receiving a
physical, monetarily valuable wagering element on a playing
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 the player and a dealer;
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;
arranging the cards dealt to the dealer into a four-card high
dealer hand, a two-card medium dealer hand, and a one-card low
dealer hand;
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 at
least two of the high player hand, medium player hand, and low
player hand outrank a corresponding number of the high dealer
hand, medium dealer hand, and low dealer hand, respectively, by
transferring at least one additional physical, monetarily valuable
wagering element to the player; and
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Application 14/644,504
collecting the ante wager when at least two of the high
player hand, medium player hand, and low player hand are
outranked by a corresponding number of the high dealer hand,
medium dealer hand, and low dealer hand, respectively, by
retrieving each wagering element associated with the ante wager
of the player from the playing surface.
Appeal Br. 29 (Claims App.).
REJECTION
Claims 1-20 are rejected under 35 U.S.C. § 101 as being directed to a
judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract
idea) without significantly more.
OPINI0N3
Appellant makes arguments for the patent eligibility of claims 1-20 as
a group. See Appeal Br. 8-27. We select claim 1 as the representative
claim, and claims 2-20 stand or fall with claim 1. See 3 7 C.F .R.
§ 4I.37(c)(l)(iv).
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573
U.S. 208,216 (2014) (internal quotation marks and citation omitted).
3 During the hearing conducted on June 6, 2019, Appellant relied on
substantially similar arguments in support of the patent eligibility of the
claims on appeal in Appeal Nos. 2017-009438 and 2017-006315, both of
which have claims directed to card games and have the same real parties in
interest as the present Appeal.
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Application 14/644,504
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. See Alice, 573 U.S. at 217-18 ( citing Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with
that framework, we first determine what concept the claim is "directed to."
Id. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a
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patent-eligible application." Alice, 573 U.S. at 221 (internal citation
omitted). "A claim that recites an abstract idea must include 'additional
features' to ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [ abstract idea].'" Id. ( alteration in the original) ( quoting
Mayo, 566 U.S. at 77). "[M]erely requir[ing] generic computer
implementation[] fail[ s] to transform that abstract idea into a patent-eligible
invention." Id.
In January of 2019, the PTO published revised guidance on the
application of§ 101. 2019 REVISED PA TENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter "Memorandum").
Under Step 2A of that guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception
into a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE ("MPEP") §§ 2106.05(a}-(c), (e}-(h) (9th Ed., Rev.
08.2017, 2018)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, in Step
2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception
that is not "well-understood, routine, conventional" in the field
(see MPEP § 2106.05(d)); or
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(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum.
Step 1 - Statutory Category
Claim 1 recites a method of conducting play of a wagering game, and,
therefore, is a process. See Appeal Br. 29 (Claims App.).
Step 2A, Prong 1 - Recitation of Judicial Exception
The Examiner determines that claim 1 is "directed to a method of
administering a wagering game, which is an abstract idea in the same way
managing a game of bingo, is an abstract idea."4 Final Act. 2.
Claim 1 recites, in part, "[a] method of administering a wagering
game, comprising: accepting an ante wager from a player by receiving a
physical, monetarily valuable wagering element on a playing surface of a
gaming table." Claim 1 also recites resolving the ante wager by comparing a
high player hand to a high dealer hand, a medium player hand to a medium
dealer hand, and a low player hand to the low dealer hand. Thus, claim 1
recites rules for playing a wagering game.
Following rules or instructions, and, specifically, providing rules of a
game such as the one recited in claim 1, amounts to managing personal
behavior or relationships or interactions between people (including social
activities, teaching, and following rules or instructions), which is one of
certain methods of organizing human activity. See Memorandum, 84 Fed.
4 The Examiner also determines "the present claims are akin to the abstract
idea of exchanging financial obligations." Final Act. 2. Our analysis of the
claims as reciting a method of administering a wagering game addresses
both characterizations.
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Reg. at 52; In re Smith, 815 F.3d 816, 818 (Fed. Cir. 2016). Such methods
of organizing human activity are abstract ideas. See Smith, 815 F.3d at 818.
Thus, claim 1 recites an abstract idea, one of the judicial exceptions. See
Alice, 573 U.S. at 216. Accordingly, the outcome of our analysis under Step
2A, Prong 1, requires us to proceed to Step 2A, Prong 2. See Memorandum,
84 Fed. Reg. at 54.
Step 2A, Prong 2 - Integrated Into a Practical Application
In Step 2A, Prong 2, we determine whether the recited judicial
exception is integrated into a practical application of that exception by:
(a) identifying whether there are any additional elements recited in the claim
beyond the judicial exception(s); and (b) evaluating those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application. See Memorandum. This
evaluation requires an additional element or a combination of additional
elements in the claim to 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
exception. See id.
Appellant argues
The claimed methods are not directed to abstract ideas
because they involve new and useful variations in the
administration of Chinese or pai gow poker involving forming
three hands from seven cards with an inventive resolution
mechanic that greatly reduces the occurrence of ties, speeding
game play and increasing win/loss decisions, which is an
advance in the technical field of wagering game administration.
Such concrete, specific actions required to set hands, which
involves the manipulation, selection, and arrangement of
physical game pieces, such as "arranging the cards dealt to the
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Application 14/644,504
dealer into a four-card high dealer hand, a two-card medium
dealer hand, and a one-card low dealer hand," cannot be
reasonably viewed as mental processes, mathematical
algorithms, or fundamental, basic, and conventional business
practices.
Appeal Br. 11-12 (emphasis added). Thus, Appellant argues that (i) the
field of administration of wagering games is a technical one, (ii) forming
three hands from seven cards is an advance in this technical field, and
(iii) actions such as arranging the playing cards are significantly more than
the abstract idea.
We disagree. The method steps of forming a particular number of
hands from a particular number of cards are parts of the process of playing
the wagering game itself. In other words, the portions of claim 1 that
Appellant touts as an advance in a technical field are, instead, details
associated with a certain method of organizing human activity.
Indeed, aside from moving one or more of the "at least 52 standard
playing cards" and a "physical, monetarily valuable wagering element" on a
gaming table, the method steps recited in claim 1 all relate to the method of
organizing human activity discussed above under Step 2A, Prong 1. The
field and limitations of claim 1 are similar to those of the claims held patent
ineligible in In re Guldenaar and in Smith. See In re Guldenaar, 911 F.3d
1157, 1159 (Fed. Cir. 2018) ("A method of playing a dice game comprising:
providing a set of dice ... ; placing at least one wager ... ; rolling the set of
dice; and paying a payout amount if the at least one wager occurs."); Smith,
815 F .3d at 817 ("A method of conducting a wagering game comprising
... a dealer providing at least one deck of ... physical playing cards ... ;
the dealer accepting at least one first wager ... ; the dealer dealing only two
cards ... ; the dealer examining respective hands ... the dealer resolving
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Application 14/644,504
any player versus dealer wagers."). Thus, Appellant's argument that the
claimed subject matter constitutes an improvement to a technical field is
unavailing.
Nor do the limitations relating to the gaming table, "deck of at least 52
standard playing cards," or physical wagering elements amount to the
recitation of a particular machine or manufacture that is integral to the claim.
Rather, such components are broadly recited generic items usable in games
other than the one recited in claim 1.
Nor is there any transformation recited in claim 1 sufficient to impart
patent eligibility. Instead, the steps of receiving a physical wagering
element, dealing cards, arranging cards, etc., on a gaming table are similar to
the steps of "a dealer providing at least one deck of ... physical playing
cards and shuffling the physical playing cards to form a random set of
physical playing cards" recited in the patent-ineligible claim at issue in
Smith. See Smith, 815 F.3d at 817.
Appellant contends that the subject matter of claim 1 is different from
that in Smith, and that Smith was wrongly decided. See Appeal Br. 25-27;
Reply Br. 6-8. However, Appellant provides no persuasive argument as to
how the subject matter of claim 1 differs from that in the claims in Smith in
any meaningful way or how the Board is not required to follow the Federal
Circuit's precedential decision in Smith, much less as to how Smith was
wrongly decided. Accordingly, Appellant's contentions regarding Smith are
unavailing.
In summary, claim 1 does not integrate the recited judicial exception
into a practical application. Thus, we proceed to step 2B.
Step 2B - Well-Understood, Routine, Conventional Activity
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Appellant provides a Declaration executed by Ryan Yee (herein the
"Yee Declaration") alleging a commercial embodiment of the claimed
invention has experienced commercial success. Specifically, Appellant
states
modified pai gow poker and Chinese poker games exhibiting the
architecture required by the claims require that seven cards be
dealt, and that those cards be used to form three hands .... That
novel and nonobvious dealing and hand-formation architecture
constitutes an advance in the technical field of wagering game
administration.
Appeal Br. 18 ( citing Yee Declaration ,r 10). Appellant further contends that
"commercial embodiments exhibiting the same hand-formation architecture
from seven dealt cards have experienced commercial success in the
marketplace .... The commercial success of the commercial embodiment is
attributable to the merits of the risk and reward architecture, not to any other
factor." Id. (citing Yee Declaration ,r,r 11-2 0).
As discussed above, we do not agree that the claimed subject matter is
an improvement to a technical field. Even assuming, arguendo, that a
commercial embodiment of the claimed method has been commercially
successful, Appellant does not explain persuasively how such commercial
success would change the non-technical field of the subject matter recited in
claim 1 into a technical one.
To the extent Appellant intends the alleged commercial success of
certain embodiments of the claimed method to persuade us that claim 1
recites something significantly more than the abstract idea, this argument is
unavailing. Rather, as Appellant admits on page 18 of the Appeal Brief, the
commercial success is attributable only to the "merits of the risk and reward
architecture, not to any other factor." Thus, the advance touted by Appellant
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relates to the abstract idea itself, namely, how the game is conducted, not to
something significantly more than the abstract idea.
We have considered all of Appellant's arguments in support of the
patent eligibility of claim 1, but find them unpersuasive. Accordingly, we
sustain the rejection of claims 1-20 under 35 U.S.C. § 101.
DECISION
The Examiner's rejection of claims 1-20 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
11
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW TANG
Appeal2017-002162
Application 14/644,504
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 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, a mechanical apparatus, and advances in mechanical
technology. Some, but certainly not all, of these words and phrases include:
"inventive resolution mechanic" (Reply Br. 3, Appeal Br. 11, 12, 14, 15, 21,
22, 23, 24), "unique game mechanic" (Reply Br. 3, Appeal Br. 14, 15, 17),
Appeal2017-002162
Application 14/644,504
"wagering game mechanics" (Reply Br. 5, Appeal Br. 15, 24), "nonobvious
gaming mechanic" (Reply Br. 7, Appeal Br. 21, 24), "other gaming
mechanics" (Reply Br. 7, Appeal Br. 26), "underlying game mechanics"
(Reply Br. 8, Appeal Br. 23, 27), "dealt cards and associated resolution
mechanics" (Appeal Br. 19, 24), "gaming administration technology,"
(Reply Br. 2, Appeal Br. 11 ), "technical field" (Appeal Br. 11 ), "new
technological environment" (Appeal Br. 11, 15), "technical field of
wagering game administration" (Appeal Br. 12, 18, 19, 20, 23, 25),
"advance in their technical field" (Appeal Br. 18, 23), "technical advance"
(Appeal Br. 19, 24), "gaming architecture" (Reply Br. 2, Appeal Br. 11, 18,
24), "wagering and reward architecture" (Reply Br. 5, Appeal Br. 18, 24),
"novel and nonobvious gaming architecture" (Reply Br. 6, 25), "three-hand
architecture" (Appeal Br. 18, 19, 23), "hand-formation architecture" (Appeal
Br. 18, 19, 23, 24). However, mere using words and phrases that sound
mechanical and technological does not somehow transform a simple game
into something more than what it is.
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 advance in mechanical technology.
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 in writing. There is no
"technology," "architecture," or "mechanisms" involved as such terms are
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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.
Stripped of all of Appellant's pseudo-technological jargon, 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.
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