Ex Parte Terminel et al

Patent Trial and Appeal Board

May 9, 2013

12008388 (P.T.A.B. May. 9, 2013)

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.
12/008,388 01/09/2008 Fernando N. Terminel FAIR-001RIA 9962
28661 7590 05/10/2013
Lewis and Roca LLP
2440 W. El Camino Real, 6th Floor
Mountain View, CA 94040
EXAMINER
LAYNO, BENJAMIN
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
05/10/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte FERNANDO N. TERMINEL
and RICHARD E. NEUBAUER
____________________

Appeal 2012-004181
Application 12/008,3881
Patent 7,195,242
Technology Center 3700
____________________

Before ALLEN R. MacDONALD, SCOTT R. BOALICK, and
KEN B. BARRETT, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL2

1 Filed January 9, 2008, seeking to reissue U.S. Patent 7,195,242 issued
March 27, 2007, based on application 10/876,383, filed June 25, 2004.
2 The Real Party in Interest is Fair Trade Gaming Corporation. (App. Br. 3).
Appeal 2012-004181
Application 12/008,388
Patent 7,195,242

2
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b). 3

Appellants’ Invention
This invention relates to methods of playing games and methods of
amusement; in particular, this invention relates to methods of playing
wagering games, especially wagering games in the context of a casino or
other commercial venue; most particularly this invention relates to methods
of playing card games at tables in a casino or other commercial venue and
virtual card games in self-contained games in the casino environment.
(Appellants’ patent, US 7,195,242 at col. 1, ll. 5-12).

3 The rejection on appeal is the final rejection in the Office Action of
December 17, 2010. This is the rejection addressed by Appellants in the
Appeal Brief and is the sole rejection we refer to throughout this decision.
The restatement of the rejection found in the Answer is not a basis of
this decision. The Examiner’s analysis in the non-final rejection of June 30,
2010 was made before the Court’s decision in Bilski v. Kappos, 130 S.Ct.
3218 (2010) and before the USPTO issued its Interim Guidelines (75 Fed.
Reg. 43,922 (July 27, 2010)). The Examiner’s analysis in the final rejection
was made after Bilski and after the Interim Guidelines were issued; this later
analysis relies thereon, and differs from the earlier analysis in meaningful
ways. The restatement of the rejection found in the Answer is merely a cut-
and-paste of both the non-final and the final rejections without any attempt
to clarify conflicts there between. For this reason we are not able to refer to
the restatement of the rejection in the Examiner’s Answer in our decision.
Appeal 2012-004181
Application 12/008,388
Patent 7,195,242

3
Exemplary Claims
Exemplary claims 1 and 5 under appeal read as follows:
Claim 1. A method for playing a game based on random events
comprising the steps of:
wagering whether a random card drawn from a standard deck of cards
having fifty two cards in four suits of two colors and thirteen
different values in each suit will have particular, prechosen card
features, the features being the suit and color of the card and its
value;
indicating to a dealer which random card is to be examined, the
indication being made by a randomization device, wherein the
standard deck contains that card to be examined, by operating
the randomization device which randomly chooses a number of
cards the dealer is to deal from the top of the deck;
dealing, according to the number chosen, the number of cards from
the top of the deck, after the chosen number of cards have been
dealt, the next card at the top of the deck being the random card
to be examined; and
paying the wager if the player has chosen the correct particular,
prechosen features of the card.
Claim 5. The method of claim 1 wherein the method further includes
playing the game as a virtual game on a computer.

Appeal 2012-004181
Application 12/008,388
Patent 7,195,242

4
Rejections
The Examiner rejected claims 1-14 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. 4

Appellants’ Contentions
1. Appellants contend that the Examiner erred in rejecting claims
1-14 under 35 U.S.C. § 101 because the Examiner dissects the claims and
completely ignores the limitations in the claims relating to the actual
manipulating of the tokens/cards and the wagering and settling involved in
the playing of the game. (See App. Br. 10:8-11:13; see also id. at 11:4-13).
2. Appellants contend that the Examiner erred in using the
“Interim Guidance for Determining Subject Matter Eligibility for Process
Claims in View of Bilski v. Kappos,” 75 Fed. Reg. 43,922 (July 27, 2010)
(hereinafter the “Interim Guidelines.”) because “[t]he Interim Guidelines do
not have the force of law or regulation, and are not citable as precedent.”
(App. Br. 6).
3. Appellants contend that the Examiner erred in the analysis
using the Interim Guidelines because the facts that:
i) no machine is required to perform the claimed method steps; and
ii) the steps do not result in the transformation of a particular article;
are not factors weighing against method claim patent eligibility. (App. Br.
6-8 and 10). For example, Appellants argue:
In fact, the proposition that lack of recitation in a claim of a
machine or transformation is a factor weighing against
patentability is a pure fiction that appears to have been pulled

4 Separate patentability is not argued for claims 2-14.
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Patent 7,195,242

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out of thin air by the drafters of the Interim Guidelines. This
proposition is a logical fallacy. It is not only wholly lacking in
any support in the law, but is contrary to established law, and is
thus wholly a legally-incompetent proposition.
There is no statement or even any inference in Bilski or in
any other existing legal authority that can support the
proposition that lack of recitation in a claim of a machine or
transformation is a factor weighing against patentability.
(App. Br. 7:16-23). Appellants go on to specifically argue:
In Research Corporation Technologies v. Microsoft
Corporation, 627 F.2d 859, 868, 97 USPQ2d 1274, 1280 (CAFC
2010), a case decided after Bilski, the Court of Appeals for the Federal
Circuit stated that:
this court also will not presume to define “abstract”
beyond the recognition that this disqualifying
characteristic should exhibit itself so manifestly as to
override the broad statutory categories of eligible subject
matter and the statutory context that directs primary
attention on the patentability criteria of the rest of the
Patent Act.
This statement in Research Corporation Technologies is a clear
repudiation of and renders unsupportable in law the presumption
made in the Interim Guidelines that the absence of recitation of a
machine or transformation in a claim is a factor weighing against
patentability.
(App. Br. 8:13-22).
4. Appellants also contend that the Examiner erred because the
Examiner did not consider the § 101 patent eligibility of method claims
based on previously issued exemplary method claims. (See App. Br. 9:10-
10:4).
Appeal 2012-004181
Application 12/008,388
Patent 7,195,242

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ISSUES
1) Did the Examiner err in rejecting claims 1-14 because the
Examiner ignored the argued claim limitations?
2) Did the Examiner err procedurally solely because of the use of the
Interim Guidelines on § 101 when explaining why claims 1-14 are directed
to non-statutory subject matter?
3) Did the Examiner err in rejecting claims 1-14 under 35 U.S.C.
§ 101 because the Examiner did not set forth sufficient findings and/or
reasoning to establish a prima facie case for holding claims 1-14 to be
directed nonstatutory subject matter?
4) Did the Examiner err in rejecting claims 1-14 because similar
method claims were granted in an unrelated patent in 1913?

PRINCIPLES OF LAW
A) In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011)
As this court has repeatedly noted, “the prima facie case
is merely a procedural device that enables an appropriate shift
of the burden of production.” Hyatt v. Dudas, 492 F.3d 1365,
1369 (Fed.Cir.2007) (citing In re Oetiker, 977 F.2d 1443, 1445
(Fed.Cir.1992)). See also In re Piasecki, 745 F.2d 1468, 1472
(Fed.Cir.1984). The Patent and Trademark Office (“PTO”)
satisfies its initial burden of production by “adequately
explain[ing] the shortcomings it perceives so that the applicant
is properly notified and able to respond.” Hyatt, 492 F.3d at
1370. In other words, the PTO carries its procedural burden of
establishing a prima facie case when its rejection satisfies 35
U.S.C. § 132, in “notify[ing] the applicant ... [by] stating the
reasons for [its] rejection, or objection or requirement, together
with such information and references as may be useful in
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judging of the propriety of continuing the prosecution of [the]
application.” 35 U.S.C. § 132. That section “is violated when a
rejection is so uninformative that it prevents the applicant from
recognizing and seeking to counter the grounds for rejection.”
Chester v. Miller, 906 F.2d 1574, 1578 (Fed.Cir.1990).
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
Section 132 merely ensures that an applicant at least be
informed of the broad statutory basis for the rejection of his
claims, so that he may determine what the issues are on which
he can or should produce evidence.” Chester, 906 F.2d at 1578
(internal citation omitted). As discussed above, all that is
required of the office to meet its prima facie burden of
production is to set forth the statutory basis of the rejection and
the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice
requirement of § 132. As the statute itself instructs, the
examiner must “notify the applicant,” “stating the reasons for
such rejection,” “together with such information and references
as may be useful in judging the propriety of continuing
prosecution of his application.” 35 U.S.C. § 132.
In re Jung, 637 F.3d at 1363.
It is well-established that the Board is free to affirm an
examiner’s rejection so long as “appellants have had a fair
opportunity to react to the thrust of the rejection.” In re Kronig,
539 F.2d 1300, 1302-03 (CCPA 1976).
In re Jung, 637 F.3d at 1365.

B) Ex parte Sullivan, 2009 WL 1043718 (BPAI 2009)
(citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992))
A prima facie case of unpatentability under § 101 requires that the
examiner set forth findings and/or reasoning as to why a claim or claims fail
to comply with the provisions of 35 U.S.C. § 101. See Ex parte Sullivan,
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2009 WL 1043718 at page 3 (BPAI 2009) (citing In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992)) (“Although the Examiner refers us generally to
the Interim Guidelines for Patent Subject Matter Eligibility (Ans. 3), the
Examiner has not made any findings or presented any reasoning as to why
claims 10 and 11 run afoul of the provisions of 35 U.S.C. § 101.”). Id.
(“[G]enerally referencing guidelines and suggesting language to the
Appellant to overcome the purported deficiencies (Ans. 3) falls well short of
the requisite analysis needed to establish a prima facie case of
unpatentability under § 101.”).

C) Interim Guidance for Determining Subject Matter Eligibility
for Process Claims in View of Bilski v. Kappos,
75 Fed. Reg. 43,922 (July 27, 2010).
To summarize, in order for the examiner to make a
proper prima facie case of ineligibility, the examiner will
evaluate the claim as a whole and weigh the relevant factors set
forth in Bilski and previous Supreme Court precedent and make
a determination of compliance with the subject matter
eligibility prong of § 101.
(75 Fed. Reg. at 43,923)(Emphasis added).
If the factors indicate that the method claim is
attempting to cover an abstract idea, the examiner will reject
the claim under § 101, providing clear rationale supporting
the determination that an abstract idea has been claimed,
such that the examiner establishes a prima facie case of
patent-ineligibility.
(75 Fed. Reg. at 43,926)(Emphasis added).

Appeal 2012-004181
Application 12/008,388
Patent 7,195,242

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ANALYSIS
We have reviewed the Examiners’ rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions and concur with the conclusions reached by the Examiner.
1) Appellants’ Contention that the Examiner
“Completely Ignores” Claim Limitations
Appellants’ above contention 1 is contrary to the record. We do not
agree that the Examiner completely ignores the argued limitations of the
claim. As to the argued “wagering and settling,” the Examiner explicitly
discusses “wagering” at page 3 of the Final Rejection dated December 17,
2010, and again at page 6 of the Answer. The Examiner also explicitly
discusses “paying” (i.e., settling) at page 6 of the Answer.
Further, as to Appellants’ argument that “actual manipulation of
token/cards” (emphasis added) is required by claim 1, Appellants’
Specification explicitly contradicts this:
[A] “card” can be a physical elongate paper or plastic item with
a numerical value printed thereon, or it can be a virtual card,
which is defined herein is any representation of a playing card
that may look identical to the numerical side of a physical card
or may be abbreviated having, for example, only a number and
a suit identified thereon.
(Spec. col. 2, ll. 45-51)(emphasis added). See also Appellants’ claim 5. The
Examiner cannot have ignored that which is not required.
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2) Appellants’ Contention that the Examiner
Cites the “Interim Guidelines” as Precedent
Appellants’ above contention 2 is contrary to the record. We agree
with the Examiner that “[t]he Examiner is not relying on the Interim
Guidelines as precedent.” (Answer 9). The Examiner explicitly cites the
§ 101 Interim Guidelines to provide Appellants “a complete list of factors
that were considered by the Examiner in the [Examiner’s] analysis.” (Final
Rej. 4 and Ans. 8-9).
[T]he PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
“notify[ing] the applicant . . . [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.” 35
U.S.C. § 132. That section “is violated when a rejection is so
uninformative that it prevents the applicant from recognizing
and seeking to counter the grounds for rejection.” Chester v.
Miller, 906 F.2d 1574, 1578 (Fed.Cir.1990).
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). It is not error for the
Examiner to provide Appellants with a better understanding of the rejection
by citing to the Interim Guidelines. To the contrary, the Examiner is to be
commended for providing as full an explanation as possible of the
reasoning.5

5 That the Director has caused such guidance to be issued and used in
carrying out the requirements of 35 U.S.C. §§ 131 and 132 is well within the
Director’s authority to issue guidance which is merely interpretative of prior
decisional precedent. Animal Legal Defense Fund v. Quigg, 932 F.2d 920
(Fed. Cir. 1991).
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Application 12/008,388
Patent 7,195,242

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3) Appellants’ Contention that “Machine or Transformation”
Are Not Factors in Weighing Method Claim Patent Eligibility
Appellants’ above contention 3 that “no machine” or “no
transformation” are not factors weighing against method claim patent
eligibility is simply contrary to the holdings of our reviewing court.
Thus, the district court did not err in holding that claim 3 fails
to meet the machine-or-transformation test.
Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371
(Fed. Cir. 2011).
The claims here do not require a specific application, nor are
they tied to a particular machine.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir. 2012). We
conclude that the argued factors are relevant when weighing method claim
patent eligibility. It follows that the Examiner has not erred.
4) Appellants’ Contention that the Examiner Must Consider
§ 101 Patent Eligibility of Method Claims Based
On Previously Issued Exemplary Patent Claims
Appellants argue that their claims are directed to patent eligible
subject matter under 35 U.S.C. § 101 based on the citation of prior patent
claims. Specifically, Appellants state:
The USPTO has duly issued thousands of patents having claims
directed to methods for playing card games. See, e.g., United
States Patent No. 1,056,770, issued in 1913.
(App. Br. 9:10-12).
Appellants’ contention presents us with an argument regarding the
impact of other patents with respect to the § 101 rejection of the present
claims. The Court of Customs and Patent Appeals, predecessor court to the
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12
Court of Appeals for the Federal Circuit, held that “[e]ach case is determined
on its own merits. In reviewing specific rejections of specific claims, this
court does not consider allowed claims in other applications or patents.” In
re Gyurik, 596 F.2d 1012, 1018 n. 15 (CCPA 1979) (citations omitted). As
our reviewing court directs, we will not consider the allowed claims in other
patents when determining whether the present claims are directed to non-
statutory subject matter. It follows that the Examiner has not erred.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-14 as being
unpatentable under 35 U.S.C. § 101.
(2) Claims 1-14 are not patentable.

DECISION
The Examiner’s rejection of claims 1-14 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)(1)(iv).

AFFIRMED

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