Ex Parte WalkerDownload PDFPatent Trial and Appeal BoardDec 15, 201612092548 (P.T.A.B. Dec. 15, 2016) Copy Citation 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. 12/092,548 08/21/2008 Jay S. Walker WD02-001-04 3460 123834 7590 12/19/2016 Walker Digital Table System, LLC c/o Fincham Downs, LLC 90 Grove Street Suite 205 Ridgefield, CT 06877 EXAMINER PIERCE, WILLIAM M ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 12/19/2016 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): docketing @ finchamdowns. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAY S. WALKER Appeal 2015-0038701 Application 12/092,5482 Technology Center 3700 Before PHILIP J. HOFFMANN, JAMES A. WORTH, and KENNETH G. SCHOPFER, Administrative Patent Judges. WORTH, Administrative Patent Judge. DECISION ON APPEAL 1 Our decision refers to the Appellant’s Appeal Brief (“Appeal Br.,” filed Oct. 23, 2014) and Reply Brief (“Reply Br.,” filed Feb. 12, 2015), and the Examiner’s Final Office Action (“Final Act.,” mailed July 3, 2013) and Answer (“Ans.,” mailed Dec. 12, 2014). 2 According to Appellant, the real party in interest is Walker Digital Table Systems (Appeal Br. 3). Appeal 2015-003870 Application 12/092,548 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 23, 25—27, and 29-40.3 We have jurisdiction under 35 U.S.C. §§ 134 and 6(b). We AFFIRM. Introduction Appellant’s disclosure relates to “a way to increase betting options in table games.” (Spec. 114). Claims 23, 25—27, and 29 are the independent claims on appeal. Claims 23 and 25 are illustrative of the subject matter on appeal, and are reproduced below: 23. A system comprising: a table comprising a surface adapted to conduct a card game; a card deck from which a dealer deals a player hand and a banker hand on the surface; a control system associated with the table and adapted to: receive, for a particular round of a card game at a table, an initial wager from a player relating to the card game, the initial wager being based on initial odds; determine, for the particular round of the card game, adjusted odds for a recharacterization wager based at least in part on one or more initial cards dealt during the particular round of the card game such that a first adjusted odds is determined if a first card has been dealt and a second and distinct adjusted odds is determined if a second card distinct from the first card has been dealt; 3 Appellant added an additional claim 41 by Amendment on September 10, 2012. The Examiner does not indicate the status of claim 41. However, Appellant does not separately argue the patentability of claim 41 from claims 23, 25—27, and 29-40. 2 Appeal 2015-003870 Application 12/092,548 offer the player an opportunity to re characterize the initial wager; recognize re-characterization of the initial wager by the player, thereby recognizing that the player has placed the re-characterization wager based on the adjusted odds; output, via a display associated with the table, an indication that the recharacterization of the initial wager has been recognized; and determine, based on a resolution of the particular round of the card game and the adjusted odds, a payout amount, if any, to be provided to the player. 25. A non-transitory computer readable medium comprising software with instructions which, when executed by a processor of a computing device, cause the processor to perform a method, the method comprising: receiving wager data, for a particular round of a card game at a table, the wager data indicating an initial wager from a player relating to the card game, the initial wager being based on initial odds; receiving an indication of cards dealt for the particular round of the card game, the cards dealt including at least a first card to a player and a second card to a banker; determining, for the particular round of the card game, adjusted odds for a recharacterization wager based at least in part on one or more initial cards dealt during the particular round of the card game such that a first adjusted odds is determined if a first card has been dealt and a second and distinct adjusted odds is determined if a second card distinct from the first card has been dealt; authorizing an offer to the player for an opportunity to re-characterize the initial wager; detecting re-characterization of the wager by the player, thereby recognizing that the player has placed the re characterization wager based on the adjusted odds; outputting, via a display associated with the table, an indication that the recharacterization of the initial wager has been recognized; and 3 Appeal 2015-003870 Application 12/092,548 determining, based on a resolution of the particular round of the card game and the adjusted odds, a payout amount, if any, to be provided to the player. (Appeal Br., Claims App.) Rejections on Appeal The Examiner maintains, and Appellant appeals, the following rejections: I. Claims 23, 25—27, and 29-40 stand rejected under 35 U.S.C. § 101 as claiming an abstract idea and ineligible subject matter. II. Claims 23, 25—27, and 29-40 are rejected under 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. III. Claims 23, 25—27, and 29-40 are rejected under 35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention. ANALYSIS Rejections I (Unpatentable subject matter) Claims 23, 25—27, and 29—40 In analyzing whether claimed subject matter is patent eligible, the Court in Alice articulated the use of a two-step framework set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012): 4 Appeal 2015-003870 Application 12/092,548 First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, “[w]hat else is there in the claims before us?” To answer that question, we 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. See Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S.Ct. 2347, 2355 (2014). See also USPTO 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74,618, 74,621 (Dec. 16, 2014). The Examiner finds that Appellant has previously stated that the claims are directed to “determining adjusted odds and a tangible result of outputting an indication of a recharacterized wager and determining a payout,” and reasons that the claims are abstract, inter alia, because they make use of an algorithm, are not limited to a particular or practical application, and that the use of a computer does not render the invention patent-eligible (Final Act. 5—10). Appellant argues that “Applicant’s underlying invention and claimed method, while arguably reciting a number of physical steps of dealing cards, is viewed here as an attempt to claim a new set of rules for playing a card game” and more generally rules for administering a game or a wagering card game (Appeal Br. 28; see also id. at 27—29). Appellant further argues that the claims do not attempt to monopolize an entire field, that the individual recitations cannot be ignored, and that the claims more specifically recite that a first adjusted odds is determined if a first card has been dealt and a second and distinct adjusted odds is determined if a second card distinct from the first card has been dealt, the adjusted odds for allowing a player to re-characterize an initial wager to a re-characterized wager; recognizing that 5 Appeal 2015-003870 Application 12/092,548 the player has re-characterized his initial wager and authorizing a benefit or payout to the player, based on the adjusted odds, if the player wins the re characterized wager (id. at 29-32). We are unpersuaded by Appellants’ arguments, and determine that this case falls within the ambit of In re Smith, 815 F.3d 816 (Fed. Cir. 2016), which held that a “method of conducting a wagering game” is drawn to an abstract idea much like Alice’s method of exchanging financial obligations andih'Mf s method of hedging risk.” 815 F.3d 816, 819 (Fed. Cir. 2016) (discussing A lice Corp. v. CLS Bank Int’l,----- U.S.------- , 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014); Bilski v. Kappos, 561 U.S. 593, 130 S.Ct. 3218, 177 L.Ed.2d 792 (2010)). We conclude that the additional recitations, taken individually or as a whole, are similarly directed to algorithms for wagering, and do not remove the claims from the realm of the abstract. Accordingly, we sustain the Examiner’s rejection under § 101 of claims 23, 25—27, and 29-40. Rejection II (Written Description) Claims 23, 25—27, and 29—40 The Examiner determines that the claims have now been amended to recite that re-characterization data is determined based in part on cards remaining after initial cards have been dealt, without support for such an amendment in the specification (Final Act. 2). The Examiner further reasons that Appellants’ reliance on an incorporation by reference of a provisional patent application is unavailing because Rule 1.57(c) only permits reliance on incorporation by reference of a U.S. patent or U.S. patent application publication to meet the written description requirement (id.). 6 Appeal 2015-003870 Application 12/092,548 Appellant argues that the original Specification contained claims directed to the subject matter at issue (Appeal Br. 18). However, we agree with the Examiner that the language referred to by Appellant is not commensurate in scope with the current claim language because the original claims fail to disclose two “adjusted odds” (l.a first adjusted odds and 2. a second and distinct adjusted odds (Ans. 2—3)). Nevertheless, we are persuaded by Appellant’s argument that paragraphs 71—73 and 146 of the original Specification support the claims (Reply Br. 3—4). Specifically, we note that paragraph 72 indicates that an adjusted rate for a wager is “dynamically calculated.” We find that this provides evidence that Appellant was in support of more than one “adjusted odd[]” as currently claimed at the time of filing. Accordingly, we do not sustain the Examiner’s rejection under § 112, first paragraph, of claims 23, 25—27, and 29-40. Rejection III (Indefiniteness) Claims 23, 25—27, and 29-40 The Examiner determines that the claims impermissibly combine method steps into a system claim, in contravention of the rule of IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1383 (Fed. Cir. 2005), and that it would be difficult to discern infringement of the claims (Final Act. 3—4; Ans. 4—7). However, we are persuaded by Appellant’s argument that the recited steps are performed by the computer rather than by the user (Appeal Br. 19—26). In other words, the claims merely require that the computer be either capable of or configured to perform functions. In any event, we disagree with the Examiner that the claims at issue are worded in 7 Appeal 2015-003870 Application 12/092,548 the same manner as was claim 25 of U.S. Patent No. 6,149,055, which was held indefinite in IPXL Holdings. The Examiner further determines that claims 25—27 and 29 are Beauregard claims which should be treated as method claims notwithstanding the recitation of a “computer storage medium” in order not to elevate form over substance. Final Act. 4—5 (referring to Digital-Vending Services Int’l, LLCv. Univ. of Phoenix, Inc., 672 F.3d 1270 n.l (Fed. Cir. 2012) (citing CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1374 (Fed. Cir. 2011)). However, neither Digital-Vending nor Cybersource contained a holding of indefiniteness. Rather, the Court’s statement in Digital-Vending that the claims should be treated as method claims was merely in the context of claim construction for an infringement analysis; and CyberSource dealt with an issue of patentable subject matter. As such, neither case provides a basis for holding the subject claims indefinite. Therefore, we do not sustain the Examiner’s rejection under § 112, second paragraph, of claims 23, 25—27, and 29-40. DECISION The Examiner’s decision to reject claims 23, 25—27, and 29-40 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)(l)(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation