Ex Parte Yoseloff

Patent Trial and Appeal Board

Dec 30, 2015

13399141 (P.T.A.B. Dec. 30, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/399,141 02/17/2012
66137 7590 01/04/2016
TRASKBRITT, P.C. /Bally Gaming, Inc.
P.O. BOX 2550
SALT LAKE CITY, UT 84110
FIRST NAMED INVENTOR
Mark L. Y oseloff
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.
PA3803.ap.US 2200
EXAMINER
LAYNO, BENJAMIN
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
01/04/2016 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):
USPTOMail@traskbritt.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK L. YOSELOFF 1
Appeal2015-001982
Application 13/399,141
Technology Center 3700
Before BRANDON J. WARNER, LISA M. GUIJT,
and MARK A. GEIER, Administrative Patent Judges.
GEIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's rejection of claims 1-9, 11-16, and 18-20.2 Appeal Br. 1. We
have jurisdiction under 35 U.S.C. § 6(b). Appellant's representative
presented at an Oral Hearing on October 27, 2015.
1 According to Appellant, the real party in interest is Bally Gaming, Inc. and
Bank of America, N.A. holds a secured interest in the Application. Appeal
Br. 2.
2 Appellant previously canceled claims 10 and 1 7; those claims are no longer
pending and are not before us on this Appeal. Appeal Br. 4.
Appeal2015-001982
Application 13/399,141
We AFFIRM and enter a NEW GROU-ND OF REJECTION pursuant
to our authority under 37 C.F.R. § 41.50(b).
THE CLAIMED SUBJECT MATTER
The claimed subject matter relates to "wagering games, particularly
wagering games using playing cards or images of playing cards, and
wagering games played on casino tables, video machines, multi-player
platforms or the internet." Spec. i-f 2. Claim 1 is illustrative and recites:
1. A method of administering a wagering game using a 52-
card deck of physical playing cards solely against a plurality of
predetermined winning hand outcomes, the method comprising:
receiving an ante wager from at least one player in a
designated ante wager area of a game table comprising a layout
with the designated ante wager area, a designated first play
wager area, and a designated second play wager area;
providing the at least one player with an initial partial
hand of randomized physical playing cards to view;
allowing the player to view the initial partial hand;
allowing the at least one player to fold or place an
additional wager in the designated first play wager area of the
game table before being allowed to view any additional
physical playing cards used to complete the initial partial hand;
providing at least one first additional physical playing
card for use by the at least one player;
allowing the at least one player to view the at least one
first additional physical playing card which is insufficient to
complete the initial partial player hand;
after receiving the additional wager from the at least one
player in the designated first play wager area of the game table
and allowing the at least one player to view the at least one first
additional physical playing card, allowing the at least one
player to fold or place a second additional wager in the
designated second play wager area of the game table before
being allowed to view at least a second additional physical
playing card;
providing at least one second additional physical playing
card to the at least one player;
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Application 13/399,141
allowing the at least one player to view the at least one
second additional physical playing card; and
resolving all wagers in the designated ante wager area,
the designated first play wager area, and the designated second
play wager area of the game table solely against the plurality of
predetermined winning hand outcomes and not against a dealer
hand, comprising:
paying the at least one player a payout if the player
hand rank is one of the predetermined winning hand
outcomes; and
the dealer retaining the wagers by removing the
wagers from the designated ante wager area, the
designated first play wager area, and the designated
second play wager area of the at least one player if not
holding one of the predetermined winning hand
outcomes.
THE REJECTION ON APPEAL
The Examiner rejected claims 1-9, 11-16, and 18-20 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
ANALYSIS
Section 101 of the patent law provides that one may obtain a patent
for "any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof." 35 U.S.C. § 101. The
Supreme Court has held that this provision includes important exceptions,
notably those that prohibit one from patenting abstract ideas, laws of nature,
or natural phenomena. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014). Although a law of nature or an abstract idea is not
patentable, the application of these concepts may be patentable. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293-94
(2012). This area of law has evolved substantially over the past several
years.
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Here, the Examiner applied the Interim Guidance for Determining
Subject Matter Eligibility for Process Claims in View of Bilski v. Kappas
(Fed. Reg. Vol. 75, No. 143/Tuesday, July 27, 2010/Notices) (hereinafter
"2010 Bilski Guidance") to determine that the claims at issue are directed to
a patent-ineligible abstract idea. The 2010 Bilski Guidance applied by the
Examiner was developed before the Supreme Court issued its decisions in
Mayo and Alice that clarified the law in this area. In deciding this Appeal,
we apply the framework as set forth by the Supreme Court in Mayo and
Alice.
In Alice, the Supreme Court reaffirmed the framework set forth
previously in Mayo "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts." Id. If the claims are directed to a
patent-ineligible concept, then the second step in the analysis is to consider
the elements of the claims "individually and 'as an ordered combination"' to
determine whether there are additional elements that "'transform the nature
of the claim' into a patent-eligible application." Id. (quoting Mayo, 132
S. Ct. at 1298, 1297).
Step One: Do the Claims at Issue Recite an Abstract Idea?
As a starting point, we note that Appellant argues the claims as a
group. See, e.g., Appeal Br. 12-21. We select claim 1 as representative for
our analysis. See 37 C.F.R. § 41.37(c)(l)(iv) (2013).
The Federal Circuit has described the first step as a determination of
the "basic character of the [claimed] subject matter." Internet Patents Corp.
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Application 13/399,141
v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015) (citing
Bancorp Servs., L.L.C. v Sun Life Assurance Co. of Can., 687 F.3d 1266,
1273-74 (Fed. Cir. 2012)). The Federal Circuit has also indicated that this
step should determine whether a claimed method "recites an abstraction - an
idea, having no particular concrete or tangible form." Ultramerical, Inc. v.
Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); see also Alice, 134 S. Ct. at
2355 ("The 'abstract idea' category embodies 'the longstanding rule that
[a Jn idea of itself is not patentable."' (quoting Gottschalk v. Benson, 409
U.S. 63, 67 (1972) (further quotations and citations omitted)).
The Examiner determined that the claims at issue recite an abstract
idea. Final Act. 3-6. In particular, the Examiner determined that the claims
constitute "a set of predefined rules of playing a card game and [are]
viewed here as an attempt to claim a new set of rules for playing a card
game." Id. at 5. The Examiner concluded that "[f]ollowing rules and
instructions is a general concept that is abstract and sweeping as to cover
both known and unknown uses of the concept and be performed through any
existing or future-devised machinery." Id. (citing the 2010 Bilski
Guidance).
Appellant disagrees with the Examiner's characterization of the
claimed invention, which Appellant describes as "methods of administering
a wagering game using a 52-card deck of physical playing cards" which also
"include the use of ... a game table with a specific table layout having
designated areas for receiving wagers." Appeal Br. 6 (Summary of the
Claimed Subject Matter); see also id. at 31 (characterizing the invention as
"a very specific application of the rules for playing a game, e.g., receiving a
wager on a game table with a specific layout and providing certain physical
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cards to the player in a certain sequence"); Reply Br. 7 (describing the
invention as a "detailed implementation of one type of poker-type wagering
game with a set of express, concrete acts that take place on numerous
physical elements"). Appellant generally focuses on the claimed invention's
implementation of concrete actions and reliance upon physical elements.
See, e.g., Reply Br. 7.
We agree with the Examiner that, in its basic character, claim 1 covers
rules of a poker-type wagering game. The claim merely recites steps
necessary to carry out those rules. Without purporting to explicitly construe
the claims, we summarize the steps as follows: ( 1) receiving an initial wager
in a designated area of a game table; (2) providing a player an initial set of
playing cards; (3) allowing a player to look at the cards; (4) allowing a
player to make an additional wager on the game table or to leave the game;
( 5) providing an additional card; ( 6) allowing a player to view the additional
card; (7) allowing a player to make an additional wager on the game table or
to leave the game; (8) providing another card; (9) allowing the player to look
at the card; and (10) resolving the wagers against a pay table. See Appeal
Br. 6-8. In our view, although the steps are drafted as actions, the method
steps simply recite the rules of the poker-type wagering game as
implemented with physical cards and on a game table having particular
wagenng areas.
Appellant argues that claim 1 does not recite an abstract idea because
to be an abstract idea, the idea "must be on the level of a fundamental
practice or building block in the gaming industry." Reply Br. 7. Appellant
bases this argument on examples of abstract ideas from prior cases which the
deciding courts characterized as "fundamental" or "building blocks." See
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Reply Br. 6-8 (citing cases, including Alice and Bilski). Appellant states
that the claimed invention here is not such a building block because it is a
"detailed implementation of one type of poker-type wagering game with a
set of express, concrete acts that take place on numerous physical elements."
Reply Br. 7.
We do not agree with Appellant's characterization of the law.
Appellant does not cite to any case that holds that the abstract idea exception
applies only to those ideas that may be deemed fundamental. See Reply Br.
7. Indeed, although the Supreme Court in Alice repeatedly refers to
concerns about claiming "building blocks," the best reading of that language
in context is that the Supreme Court is referring to abstract ideas generally as
being "building blocks." See, e.g., Alice, 134 S. Ct. 2354 ("Accordingly, in
applying the [Section] 101 exception, we must distinguish between patents
that claim the 'building block[s]' of human ingenuity and those that integrate
the building blocks into something more .... " (quoting Mayo, 132 S. Ct. at
1303)). In a related context, the Supreme Court in Mayo rejected a similar
argument as applied to the natural law exception; namely, that "cases have
not distinguished among different laws of nature according to whether or not
the principles they embody are sufficiently narrow." Mayo, 132 S. Ct. at
1303 (citing Parker v. Flook, 437 U.S. 584 (1978)); see also id. ("Courts and
judges are not institutionally well suited to making the kinds of judgments
needed to distinguish among different laws of nature. And so the cases have
endorsed a bright-line prohibition against patenting laws of nature,
mathematical formulas and the like, which serves as a somewhat more easily
administered proxy for the underlying 'building-block' concern.") As such,
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we view the correct inquiry as whether the idea is abstract; not whether the
idea is both abstract and fundamental to an industry. See id.
Appellant also argues that the presence of physical steps renders the
claims not abstract and that the Examiner read these limitations out of the
claim in rejecting claim 1. See Appeal Br. 12-20 (discussing prior non-
precedential decisions of this Board); id. at 18 ("[T]he Examiner's assertion
that the claimed methods 'can most broadly be performed with or without'
the recited physical elements clearly inappropriately reads imitations out of
the claims."). The Federal Circuit has made clear that the presence of such
physical steps does not preclude a determination that a claim is directed to
an abstract idea. In re Grams, 888 F.2d 835, 840 (Fed. Cir. 1989) ("The
presence of a physical step in the claim to derive data for the algorithm will
not render the claim statutory."). This is also consistent with the Supreme
Court's decisions. See, e.g., Alice, 134 S. Ct. at 2358 ("The fact that a
computer 'necessarily exist[ s] in the physical, rather than purely conceptual,
realm is beside the point." (internal citations omitted)). As such, we
determine that the claim's recitation of physical steps does not compel us to
conclude that the claim is not directed to an abstract idea under this first
prong of the analysis. 3
Appellant also argues that "a game defined as a set of rules" as a
category is not an abstract idea. Appeal Br. 23-26. In this regard we note
that we are not relying on a broad categorical exclusion. Rather, we have
reviewed the claim in this instance and have determined that the claimed
3 To the extent that the Examiner interpreted the claims not to require the
physical elements of the claims (Ans. 9; see also Appeal Br. 17-18 (making
such argument)), we determine that such an error is not a basis for reversal
of the Examiner's rejection for the reasons stated in this Decision.
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method simply recites the rules necessary to play the game as steps. The
recited rules tell the player and the dealer what to do in response to a
particular event, and the recited "predetermined winning hand outcomes"
determine the relative payouts. See Appeal Br. Claims App. Such a set of
rules is similar to an instruction to follow a formula or an algorithm (i.e., a
set of rules for solving problems or doing calculations) to conduct the game
and resolve the parties' financial obligations. In this regard, at a high level,
the claimed wagering game is similar to the "method of exchanging financial
obligations" discussed in Alice. See Alice, 134 S. Ct. at 23 56. Moreover, we
note that the claimed wagering game is also similar to methods of
"organizing human activity" discussed in Alice. See Alice, 134 S. Ct. at
2356. For all the foregoing reasons, we agree with the Examiner that the
claimed wagering game constitutes an abstract idea. See Ex Parte Webb,
Appeal No. 2012-001567 (aff'd Rule 36 by In re Webb, No. 2014-1652
(Fed. Cir. Jul. 1, 2015)) (affirming an Examiner's rejection of a claim drawn
to a "method of playing a player( s) versus player( s) card game with a
plurality of players" under Section 101 as an abstract idea); see also Planet
Bingo, LLC v. VKGS LLC, 576 F. App'x 1005, 1009 (Fed. Cir. 2014) (non-
precedential) (holding that the claimed methods directed to "managing a
game of Bingo" were unpatentable under Section 101 ).
Appellant also argues that the claims at issue do not recite an abstract
idea because they do not preempt all uses of the claimed game. Reply Br. 9--
10. In particular Appellant notes that several "implementations of the game
(e.g., online play, virtual play, digital play, play using a different set of
cards, play using a different game table layout) are not preempted by the
claims on appeal." Id. 10. The Federal Circuit recently rejected such an
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argument and noted that although "the principle of preemption is the basis
for the judicial exceptions for patentability" (citing Alice, 134 S. Ct. at
2354), "the absence of complete preemption does not demonstrate patent
eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015). The Federal Circuit concluded that "[w]here a
patent's claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework ... preemption concerns are fully addressed and
made moot." Id.; see also id. (holding that "[i]n this case, Sequenom's
attempt to limit the breadth of the claims by showing alternative uses of
cfIDNA outside of the scope of the claims does not change the conclusion
that the claims are directed to patent ineligible subject matter"). Given this
direction from our reviewing court, we decline to apply a preemption
standard in our analysis, and instead apply the steps set forth by the Supreme
Court in Alice and Mayo.
In sum, we agree with the Examiner that Appellant's claims in their
basic character are drawn to the abstract idea of the rules for a wagering
game.
Step Two: Do the Claims at Issue Recite an Inventive Concept
The Supreme Court described the second step as a "search for an
'inventive concept' - i.e., an element or combination of elements that is
'sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself."' Alice, 134 S. Ct. at 2355
(brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The Supreme
Court has also held that the prohibition against patenting an abstract idea
"cannot be circumvented by attempting to limit the use of the formula to a
particular technological environment" or by adding "insignificant post-
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solution activity." Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (citation
and internal quotation marks omitted). The Supreme Court in Alice noted
that "' [ s ]imply appending conventional steps, specified at a high level of
generality,' was not 'enough' [in Mayo] to supply an 'inventive concept."'
Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
The Machine or Transformation test may provide guidance in evaluating this
second step. See Ultramerical, 772 F.3d at 716.
Applying the 2010 Bilski Guidance, the Examiner determined that the
claim's recitation of physical elements and purported transformations did not
render the claim patent eligible. See Ans. 9-11; Final Act. 3---6. In
particular, the Examiner determined that the physical limitations did "not
sufficiently recite a physical instantiation," referencing paragraph 71 of the
Specification. Ans. 9; see also Final Act. 3 (noting that paragraph 71 of the
Specification indicates that the method could be performed on a computer or
other electronic means). The Examiner also determined that although the
physical elements "could constitute an 'apparatus' or 'machine,"' the
claimed method does not tie the physical elements to the steps because the
physical elements "do not actually perform any of the steps of the claimed
method." Final Act. 3. In addition, the Examiner determined that, to the
extent there was a tie between the physical elements and the method steps,
such a connection amounted to "merely insignificant extra-solution activity."
Id. Finally, the Examiner determined that neither the dealing of the playing
cards nor the changing of the right of possession of the wagers constituted a
transformation because the cards and/ or wager rights are not transformed
into a different state or thing. Ans. 10-11.
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Appellant contends that the claimed method ties the steps to a
particular apparatus; namely, the physical playing cards and the game table
having specific wagering areas. Appellant recites the purported physical
steps in the claim and argues that "[ e Jach of these physical acts or steps is
tied to particular physical elements or apparatus that are clearly specified in
the claim, including ... to the particular game table layout with numerous
distinct areas on the game table layout and to the physical playing cards."
Appeal Br. 14. Appellant further notes that the present claim involves
physical elements that are more particular than that rejected by the Board in
a prior decision. Reply Br. 13-15 (citing Ex Parte Smith, Appeal No. 2012-
006276 (PTAB Oct. 17, 2014)).
We do not agree that claim 1 sufficiently ties the claimed method to a
particular machine or apparatus to render the method claim patent-eligible
subject matter. Importantly, the critical inquiry is whether the claim ties the
claimed method to an apparatus that adds significantly to the claim. See
Ultramerical, 772 F.3d at 716 (holding claims unpatentable under Section
101 where they are "not tied to any particular novel machine or apparatus");
see also Alice, 134 S. Ct. at 2358-59 (holding that recitation of a general
purpose computer was not sufficient to render a claim as patent-eligible
subject matter under the second step of the framework). In our view, both
the recited physical playing cards and game table are analogous to a general
purpose computer in that they represent old and conventional elements that
do not add substantially to the claim. See Alice, 134 S. Ct. at 2358-59.
Indeed, Appellant does not contend the card deck recited in the claims is
anything other than a standard 52-card deck. See Transcript at 11.
Moreover, the game table requires only "[a] designated ante wager area, a
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designated first play wager area, and a designated second play wager area."
Appeal Br., Claims App. In our view, merely requiring "areas" for
placement of specified wagers does not render the game table sufficiently
particular to render the claimed method patent-eligible subject matter. Even
when considered together with the claimed steps, we are not persuaded that
the claim's recitation of a physical card deck and a game table is a
sufficiently particular physical embodiment that adds significantly to the
claim to render the claims patent-eligible subject matter under Section 101. 4
Appellant also argues that the claimed method involves a
transformation of the playing cards and the rights in the wagers. For
example, Appellant argues that "[t]he player's title and right of possession to
the wagers transform from, before the method is carried out, sole title and
right of possession, to no right of possession, and then to either restored title
and right of possession or complete loss of title and right of possession."
Appeal Br. 32. Appellant further contends that such transformations are
"significant" and "essential" to the claimed method because, for example,
"the prospect of transferring possession and title of the wagers provides
motivation to a gaming establishment to offer the game and to a player to
play the game." Appeal Br. 33. In addition, Appellant argues that the steps
involving dealing a partial hand of cards and subsequent additional cards
"involve a transformation of sets of cards." Appeal Br. 33-34. In this
regard, Appellant argues:
4 Moreover, we note that the machine or transformation test is not
dispositive in this inquiry and represents only "a useful and important clue,
an investigative tool, for determining whether some claimed inventions are
processes under [Section] 101." Bilski, 561 U.S. at 604.
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Although the physical form of the individual cards are not
transformed and the identity of cards in the deck of cards, as a
whole, is not changed through performance of the methods
recited in the pending claims, Appellant asserts that the
transformation occurs in the partial and/or complete hand(s)
of randomized cards provided to the at least one player.
Appeal Br. 34; see also Reply Br. 14. Appellant further notes that this
"transformation provides a major basis for the play of the game and
continued interest in the game." Appeal Br. 34.
We do not agree with Appellant that the claim recites a transformation
sufficient to render the method claim patent-eligible subject matter. With
respect to the wager argument, we note that the transformation must be of
some physical article. In re Bilski, 545 F.3d 943, 963---64 (Fed. Cir. 2008)
(en bane) (overruled on other grounds by Bilski v. Kappas, 561 U.S. 593
(2010)). "Purported transformations or manipulations simply of public or
private legal obligations or relationships ... or other such abstractions
cannot meet the test .... " Id. at 963. The wagers and rights in the wagers
are not physical articles that one may transform into a different state or
thing. See id. In addition, the claimed method does not transform the legal
rights into a different state or thing; the method merely describes how they
are allocated as between the parties. Similarly, the claimed method does not
transform the physical playing cards or the deck of cards into a different
state or thing. The method merely specifies the dispersal of the cards from
the deck in a manner that changes their order. That this dispersal results in
randomized sets of cards does not amount to a transformation; both the
individual cards and the deck of cards remain the same. For these reasons,
we do not conclude that the claimed method involves a transformation that
renders it patent-eligible subject matter under Section 101.
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Appellant also argues more generally that the claimed method
includes inventive elements that render it "significantly more" than an
abstract idea. See Reply Br. 8-10. In particular, Appellant argues that
the particular "set of rules" allegedly recited in the claims on
appeal are limited to application only on a game table with a
specific layout (i.e., "a game table comprising a layout with the
designated ante wager area, a designated first play wager area,
and a designated second play wager area") and using only a
specific set of physical playing cards (i.e., "a 52-card deck of
physical playing cards").
Reply Br. 9-10. Moreover, Appellant argues that the claims "pose no risk of
preempting any underlying idea of performing these wagering games as a
whole or, for that matter, any other poker-type wagering that falls outside of
the extremely specific implementation of a poker-type wager game as
recited in the instant claims." Reply Br. 9.
We do not agree with Appellant that the recited elements constitute an
"inventive concept" that renders the claim patent-eligible subject matter.
See Alice, 134 S. Ct. at 2355. Rather, the recited elements constitute "well-
understood, routine and conventional activity." See Mayo, 132 S. Ct. at
1298. Indeed, much in the same way that implementing an abstract idea on
a general computer is not inventive, implementing the abstract idea of the
rules of a poker game using standard playing cards and a game table having
three wagering areas does not constitute inventive activity. See Alice, 134 S.
Ct. 2358-59. As noted supra, the claimed playing cards are the well-known,
conventional 52-card deck of cards. With respect to the game table, we
acknowledge that the claims require the table have particular wagering areas
and areas for cards, but we see no basis to conclude that there is anything
inventive about the particular configuration of the game table. Even taking
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the elements together as they are claimed, apart from perhaps the set of rules
defining a new game, 5 we see no basis to conclude that the claim provides
an inventive concept "'sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the [ineligible concept]
itself."' Alice, 134 S. Ct. at 2355 (brackets in original) (quoting Mayo, 132
S. Ct. at 1294). 6
For the foregoing reasons, we sustain the Examiner's rejection of
claims 1-9, 11-16, and 18-20 as being directed to non-statutory subject
matter. As noted by Appellant, the Examiner's rejection focused on the
2010 Bilski Guidance, rather than the legal principles under the Supreme
Court's Alice decision. See Reply Br. 10-11. As our decision rests on
current legal standards and rationales that may differ from those applied by
the Examiner, we designate our affirmance as a new ground of rejection so
as to afford Appellant a full and fair opportunity to respond thereto.
CONCLUSION
We have reviewed each of Appellant's arguments and have
determined that the arguments fail to demonstrate that the Examiner erred in
rejecting the claims at issue in this Appeal. We therefore affirm the
5 To the extent that Appellant also argues that, although the physical
elements may not be new, that the recited game as a whole is new, we
determine that such an argument is not persuasive. See Ariosa Diagnostics,
Inc. v. Sequenom, Inc., Nos. 2014-1139, 2014-1144, December 2, 2015
(denial of petition for Rehearing En Banc) (Dyk, J. concurring) Slip Op. at
13-27 (noting that Mayo and Alice require a claim to contain inventive
aspects other than the natural law or abstract idea and noting that Mayo in
particular prohibits taking the novelty of the natural law into account in the
Section 101 analysis).
6 With respect to Appellant's preemption arguments, we refer to our
discussion of those arguments infra at pages 8 and 9.
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Examiner's rejection of claims 1-9, 11-16, and 18-20 under 35 U.S.C.
§ 101 as directed to non-statutory subject matter. We designate this
affirmance as a New Ground of Rejection under 37 C.F.R. §41.50(b).
Further, 37 C.F.R. § 41.50(b) provides that, "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 41.50(b) also provides that Appellant must, WITHIN
TWO MONTHS, exercise one of the following options:
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R § 1.136(a)(l)(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)
Ssc
17