Ex Parte Webb

Patent Trial and Appeal Board

Mar 25, 2013

11011373 (P.T.A.B. Mar. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DEREK J. WEBB
____________________

Appeal 2011-001722
Application 11/011,373
Technology Center 3700
____________________

Before: CHARLES N. GREENHUT, BARRY L. GROSSMAN, and
TIMOTHY J. O’HEARN, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001722
Application 11/011,373

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
7. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to a method and apparatus for playing a casino
game with multiple playing modes and wagering options. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1 A method of playing a casino game, comprising:
(a) receiving at least a first wager for at least
a first playing mode, the first playing mode being
compulsory; and
(b) receiving at least a second wager for at
least a second playing mode, wherein the second
playing mode is without a house advantage;
(c) dealing playing cards to at least one
player, dealing at least one non-player card, and
forming a player hand;
(d) resolving the first wager according to a
poker rank of the player hand against a payout
scale; and
(e) resolving the second wager without a
house advantage according to the poker rank of the
player hand against a poker rank of another player
hand.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Malek
Malek
Kangsanaraks
US 5,265,882
US 5,395,120
US 5,496,038
Nov. 30, 1993
Mar. 7, 1995
Mar. 5, 1996
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REJECTIONS
The following rejection was set forth in the Answer of October 14,
2008 (“1st Ans.”):
Claims 1-7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Malek ’882, Malek ’120 and Kangsanaraks. 1st Ans. 3-5.
In the Examiner’s Answer of June 18, 2010 (“2nd Ans.”), the
Examiner added the following new grounds of rejection:
Claim 7 is rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which applicant regards as the invention. 2nd Ans. 6.
Claims 1-6 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter. 2nd Ans. 8

OPINION
The rejection of claims 1-6 under 35 U.S.C. § 101 is affirmed.
Appellant argues this rejection as a group (Reply Br. Aug. 18, 2010 p.
3) and we select claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner determined claim 1 did not satisfy either prong of the
machine or transformation test and was therefore directed to non-statutory
subject matter. 2nd Ans. 8-11. The Examiner determined that the only step
arguably tied to a machine was that of “dealing playing cards.” The
Examiner concluded that since such cards merely relate only to a step in the
process and are not tied to the process itself, they relate only to insignificant
extra-solution activity and do not impose meaningful limits on the scope of
the claim. We agree.
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Appellant does not attempt to address the Examiner’s position
discussed above. Rather, Appellant simply contends the machine-or-
transformation test was dismissed by Bilski v. Kappos, 130 S. Ct. 3218, 3225
(2010). Reply Br. Aug. 18, 2010 p. 3. Appellant makes only the conclusory
argument that “[t]he method includes physical steps such as receiving
wagers, dealing cards, resolving wagers, etc. Such physical steps clearly do
not amount to a mere abstract idea.” Id.
With regard to the “machine-or-transformation test” the Court in
Bilski, 130 S. Ct. at 3227, made clear (contra Reply Br. Aug. 18, 2010 p. 3):
This Court’s precedents establish that the machine-or-
transformation test is a useful and important clue, an
investigative tool, for determining whether some claimed
inventions are processes under § 101. The machine-or-
transformation test is not the sole test for deciding whether an
invention is a patent eligible “process.”

Thus, the machine-or-transformation test remains a useful tool for
determining whether a claim covers an abstract idea. See e.g., Dealertrack,
Inc. v. Huber, 674 F. 3d 1315, 1331 et seq. (Fed. Cir. 2012).
It is unclear why Appellant believes that receiving or resolving a
wager, steps that do not appear to operate on, or transform, anything
physical and could be performed entirely in the human mind without the
assistance of any machine, are “physical steps.” We agree with the
Examiner that “dealing playing cards” is the only step arguably physical.
Appellant’s Specification indicates that the playing cards can be both
physical or virtual. pp. 7-8, paras. [0027]-[0028]. Their relationship to the
method depends only on the information displayed thereon, not the machine
or apparatus for conveying that information. Thus, we agree with the
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Examiner that the recitation of “dealing playing cards” does not tie the
claimed method to a particular apparatus or machine. Appellant has not
argued the contrary. See e.g., In re Comiskey, 554 F. 3d 967(Fed. Cir.
2009)(It was conceded that a claim reciting “documents” did not satisfy the
machine prong of the machine-or-transformation test).
We therefore conclude that Appellant’s claims 1-6 are an attempt to
preempt the use of all machines and processes employing this particular
manner of wagering. We must agree with the Examiner that our patent laws
do not allow for the grant of such a monopoly. See Bilski, 130 S. Ct. at
3231.

The rejection of claim 7 under 35 U.S.C. § 112, second paragraph is
affirmed.
The Examiner rejected claim 7 due to a lack of structure in the
Specification corresponding to the recited means. 2nd Ans. 6-7 citing
Aristocrat Technologies, Inc. v. International Game Technology, 521 F.3d
1328, 1333 (Fed. Cir. 2008) and WMS Gaming,lnc. v. International Game
Technology, 184 F.3d 1339 (Fed. Cir. 1999). The Examiner correctly
determined that
there is a general description of steps in resolving the first
wager and the second wager. However, the specification and
drawings do not disclose sufficient corresponding structure,
material or acts for performing the claimed function of: "means
for dealing playing cards .... ", "means for resolving the first
wager .... ", and "means for resolving the second wager .... ". It
is not appropriate that these functions be done by a human
dealer.
2nd Ans. 7-8 citing Spec. pp. 6-7. From this, the Examiner correctly
concluded that:
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The specification does not set forth any specific structures (e.g.,
circuits or components), software instructions, or algorithms
that are to be added to a known general purpose microprocessor
or control circuitry to transform those general purpose elements
into a special purpose microprocessor or control circuitry
capable of performing the claimed functions.
2nd Ans. 8.
In response, Appellant contends that “control logic stored in the
memory of a computer and executed by a CPU alone is sufficient to satisfy
the requirements of 35 U.S.C. §112.” Reply Br. Aug. 18, 2010 p. 2; see
Spec. pp. 7-8, paras. [0027]-[0028]. However, these are the exact types of
structures that the Examiner, properly applying our reviewing court’s
precedent, has deemed insufficient to satisfy the requirements of the second
and sixth paragraphs of 35 U.S.C. § 112. Even if, as Appellant suggests,
“[t]he details of the ‘circuitry’ and of the ‘receiving’ and ‘dealing’ structure
would be readily apparent to those of ordinary skill in the art” (Reply Br.
Aug. 18, 2010 p. 2), the fact that those skilled in the art would know how to
construct a device falling within the scope of the claims without express
guidance from Appellant’s Specification, does not mean that structure
corresponding to the recited means is disclosed in the Specification with
sufficient particularity to apprise one skilled in the art as to the metes and
bounds of the claim, as is required by the second and sixth paragraphs of 35
U.S.C. § 112. Accordingly, the Examiner’s position stands essentially
uncontroverted and this rejection is sustained.

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We affirm the rejection of claims 1 and 3-7 and reverse the rejection of
claim 2 based on Malek ’882, Malek ’120 and Kangsanaraks.
While questions arising under 35 U.S.C. § 101 and the second
paragraph of 35 U.S.C. § 112 have sometimes been characterized as
threshold issues, which may hinder or prevent a proper analysis of the claims
under 35 U.S.C. § 103(a). However, Appellant requests only a very limited
review of specific determinations made by the Examiner in deciding to reject
claims 1-7 under 35 U.S.C. § 103(a). For the sake of completeness, we will
address the issues raised by Appellant alleging error in the rejection under
35 U.S.C. § 103(a). See Ex Parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI
2010).
In rejecting claim 1, the Examiner found, and Appellant does not
dispute, that Malek ’882 discloses the basic method and apparatus of claims
1 and 7. Appellant and the Examiner dispute whether Kangsanaraks teaches
a mode “without a house advantage” and whether it would have been
obvious to incorporate such a mode into Malek ’882. App. Br. 13-15; Reply
Br. Dec. 12, 2008 p. 1-3.
The text of Kangsanaraks cited by both the Examiner and the
Appellant (col. 8, ll. 1-20) is not entirely clear as to whether Kangsanaraks
contemplates a mode in which there is no house advantage. Kangsanaraks
mentions an optional added percentage or commission for the house and
indicates that the commission may be eliminated by reducing the payout,
which, as Appellant points out, though not termed a “commission,” is also a
“house advantage.” We think any ambiguity as to the playing modes one
skilled in the art would understand to be taught by Kangsanaraks is resolved
by looking to the figures discussed in the cited portion of Kangsanaraks,
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specifically figure 2B. In Figure 2B, a decision path after step 182 is clearly
contemplated where no commission fee is paid, and nothing is substituted in
its place. We think such an arrangement is fairly suggested by the figure
regardless of whether this disclosure was intentional. See In re Seid 161 F.
2d 229, 231 (CCPA 1947)(citing In re Bager, 47 F.2d 951(CCPA 1931) and
In re Wagner, 63 F.2d 987 (CCPA 1933)).
We turn to Appellant’s second contention, that it would cease to be,
and have any purpose as, a casino game if there were there no house
advantage. Thus, Appellant contends the Examiner’s proposed modification
would have been undesirable. First, we cannot agree with Appellant that the
recitation of “casino” in the preamble implicitly requires the method and
apparatus to comply with some unrecited law, or limits the location of the
process or apparatus to a casino. Rather, such recitation merely gives a
descriptive name to the set of limitations that follow and completely set forth
the invention. See e.g., IMS Technology, Inc. v. Haas Automation, Inc., 206
F. 3d 1422, 1434 (Fed. Cir. 2000). A casino game and method for playing it
can exist outside a casino. Second, regardless of whether the game is played
in a casino or not, we cannot agree with Appellant that not having a house
advantage would, in all circumstances, be undesirable. Commission free
games that attract players would have been desirable to institutions that
profit simply by having guests, for example guests that pay for admittance,
or by selling those guests other goods or services.
For these reasons we sustain the Examiner’s rejection of claims 1 and
7 under 35 U.S.C. § 103(a). The rejection of claim 6 under 35 U.S.C.
§ 103(a), not having been separately argued, is sustained as well.
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We, like Appellant and the Examiner, understand the resolving step as
further defined by claim 3 to refer to determining how payout is made
according to a scale. Claim 4 calls for, in relevant part, that the “resolving
step” involves “pushing the wager” if the player hand is either tied with the
dealer or inferior to the dealer hand. To meet claim 4, the prior art need only
show a push in response to either recited condition precedent, such as a tie.
To meet claim 5, the push must be in response to a tie and the wager taking
must be in response to a player loss. These limitations appear to clearly be
met by the portion of Malek ’120 (col. 4, l. 58 – col. 5 l. 12) referred to by
the Examiner. Ans. 5. Appellant reiterates the claim language and asserts
the portion of Malek’120 cited to meet claim 4 and 5 is not relevant to the
limitations of parent claim 3. App. Br. 16. In making such arguments,
Appellant has not apprised us of any error in the Examiner’s claim
construction or interpretation of Malek ’120 concerning the rejection of
claims 3-5. Accordingly, we sustain the rejection of claims 3-5 under 35
U.S.C. § 103(a).
Appellant correctly argues that neither the final rejection nor the
Examiner’s Answers appear to address claim 2 by number or refer to the
limitations contained therein. App. Br. 16. If not apparent in the references,
it is incumbent upon the Examiner to provide such information. See e.g., 37
C.F.R. § 1.104(c)(2). Since the Examiner has not done so, we must
conclude that the Examiner has failed to clearly articulate why the claimed
subject matter would have been obvious. See MPEP § 2142 discussing In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) and KSR International Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
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DECISION
The rejection of claims 1-6 under 35 U.S.C. § 101 is affirmed.
The rejection of claim 7 under 35 U.S.C. § 112, second paragraph is
affirmed.
The rejection of claims 1 and 3-7 under 35 U.S.C. § 103(a) based on
Malek ’882, Malek ’120 and Kangsanaraks is affirmed.
The rejection of claim 2 under 35 U.S.C. § 103(a) based on Malek
’882, Malek ’120 and Kangsanaraks is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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