Ex Parte Yoseloff

Patent Trial and Appeal Board

Sep 26, 2018

13399141 (P.T.A.B. Sep. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/399,141 02/17/2012
66137 7590 09/28/2018
TRASKBRITT, P.C. /Bally Gaming, Inc.
PO 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.
3286-10838.1 (P A3803.ap.US 2200
EXAMINER
LAYNO, BENJAMIN
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
09/28/2018 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
Appeal2017-009690
Application 13/399,141
Technology Center 3700
Before JEREMY M. PLENZLER, BRANDON J. WARNER, and
LISA M. GUIJT, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Mark L. Yoseloff ("Appellant") 1 appeals under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1-9, 11-16, and 18-20, which
are all the pending claims, under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter. Appeal Br. 5; see id. at 10-43; Final Act. 3-16.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
According to Appellant, the real party in interest is Bally Gaming, Inc.
Appeal Br. 4.
Appeal2017-009690
Application 13/399,141
CLAIMED SUBJECT MATTER
Appellant's disclosed invention "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. ,r 2. Claims 1 and 11 are independent.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A method of administering a wagering game using a
52-card deck of physical playing cards solely against a pay
table defining 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;
after the at least one player has viewed the initial partial
hand and before a complete player hand has been viewed by the
at least one player, receiving from the at least one player a fold
or an additional wager placed in the designated first play wager
area of the game table;
providing at least one first additional physical playing
card for use by the at least one player, the at least one first
additional physical playing card being insufficient to form the
complete player hand;
after receiving the additional wager from the at least one
player in the designated first play wager area of the game table,
after the at least one player has viewed the at least one first
additional physical playing card, and before at least one second
additional physical playing card has been viewed by the at least
one player, receiving from the at least one player the fold or a
second additional wager in the designated second play wager
area of the game table;
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Application 13/399,141
providing the at least one second additional physical
playing card to the at least one player; and
after the complete player hand has been formed,
resolving all wagers received 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.
PRINCIPLES OF LAW
A patent may be obtained 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 consistently held that
this provision contains an important implicit exception: laws of nature,
natural phenomena, and abstract ideas are not patentable. See Alice Corp. v.
CLS Banklnt'l, 134 S. Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409
U.S. 63, 67 (1972) ("Phenomena of nature, though just discovered, mental
processes, and abstract intellectual concepts are not patentable, as they are
the basic tools of scientific and technological work.").
Notwithstanding that a law of nature or an abstract idea, by itself, is
not patentable, an application of these concepts may be deserving of patent
protection. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132
S. Ct. 1289, 1293-94 (2012). In Mayo, the Court stated that "to transform
an unpatentable law of nature into a patent-eligible application of such a
law, one must do more than simply state the law of nature while adding the
words 'apply it."' Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Court reaffirmed the framework set forth previously in
Mayo "for distinguishing patents that claim laws of nature, natural
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Application 13/399,141
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).
In other words, the second step is to "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
on the [ineligible concept] itself."' Id. (brackets in original) (quoting Mayo,
132 S. Ct. at 1294). 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 adding insignificant postsolution
activity." Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (citation and
internal quotation marks omitted). The 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).
ANALYSIS
The claims at issue here are directed to a method of administering a
wagering game using a standard deck of playing cards against a pay table
that defines predetermined winning hand outcomes, including the steps of
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Application 13/399,141
receiving wagers from a player, dealing cards to form a player hand, and
then resolving the wagers against the predetermined winning outcomes
defined in the pay table. See Appeal Br., Claims App. In other words, the
claims are directed to the idea of paying or collecting iterative wagers based
on a comparison of a player hand against a pay table. See id.
The Examiner determines that the claims remain directed to patent-
ineligible subject matter because, considering all elements both individual
and in combination, the claims are directed to an abstract idea without
significantly more. See Final Act. 3-16; Ans. 13-18. In light of the
principles above, and for the reasons discussed below, we agree with the
Examiner's conclusion that the claims are directed to patent-ineligible
subject matter.
Appellant argues that the claims use "unconventional" (new or
different) rules-presumably, the iterative wagering in building to a
complete player hand, to be resolved against a pay table----ensuring that the
claims are directed to more than an abstract idea. See Appeal Br. 18-22;
Reply Br. 3--4. We are not persuaded by Appellant's argument.
In the first step of the Alice analysis, "the decisional mechanism
courts now apply is to examine earlier cases in which a similar or parallel
descriptive nature can be seen-what prior cases were about, and which way
they were decided." Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d
1288, 1294 (Fed. Cir. 2016), cert. denied, 138 S. Ct. 469 (2017) (citing Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016).
To this end, the Examiner calls attention to In re Smith, 815 F.3d 816 (Fed.
Cir. 2016), where the Federal Circuit already considered claims similar to
structure of this type-namely, "rules for playing a wagering game" (id.
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Application 13/399,141
at 817}-and affirmed a determination of patent-ineligibility for similarly
structured claims directed to rules for conducting a wagering game. See
Final Act. 9; Ans. 17-18.
In Smith, the Federal Circuit has already decided that rules for playing
a wagering game, implemented using conventional elements, constitutes
ineligible subject matter. Likewise, as the Examiner explains, the presently
recited rules for administering a wagering game, also implemented using
conventional elements, are similarly ineligible. See Ans. 18. Appellant does
not apprise us of a meaningful distinction in the form or type of the claims
between those presently recited and those previously adjudicated in Smith.
Further, to the extent that Appellant suggests that the alleged novelty
of some particularities of the wagering game rules should indicate that the
claims are transformed into patent-eligible subject matter, this suggestion is
misplaced. See Appeal Br. 18-22; Reply Br. 3--4. An allegation that the
claims involve new or different rules does not conflict with the Examiner's
conclusion of ineligibility under § 101 because "a claim for a new abstract
idea is still an abstract idea." Synopsys, Inc. v. Mentor Graphics Corp., 839
F.3d 1138, 1151 (Fed. Cir. 2016) (citing Mayo, 132 S. Ct. at 1304).
Whether the claimed concept is "[g]roundbreaking, innovative, or even
brilliant ... does not by itself satisfy the § 101 inquiry." Ass 'n for
Molecular Pathologyv. Myriad Genetics, Inc., 133 S. Ct. 2107, 2117 (2013).
Consequently, under the second step of the Alice analysis, an abstract idea
does not transform into an eligible inventive concept just because the
Examiner has not found prior art that discloses or suggests it. Indeed, "[ t ]he
'novelty' of any element or steps in a process, or even of the process itself, is
of no relevance in determining whether the subject matter of a claim falls
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within the§ 101 categories of possibly patentable subject matter." Diamond
v. Diehr, 450 U.S. 175, 188-89 (1981).
Given the binding precedent of our reviewing courts, we agree with
the Examiner's ultimate conclusion that the present claims are directed to
patent-ineligible subject matter, particularly in light of the explanation
provided at pages 14--18 of the Examiner's Answer, where the Examiner
applies the principles above.
In short, Appellant does not apprise us of a material difference in the
form, structure, or substantive content of the recitations, between the claims
recited and those claims already determined to be patent-ineligible by our
reviewing courts. Thus, for this reason and those explained above, we are
obliged to sustain the Examiner's rejection.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-9, 11-16,
and 18-20 under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a). See 3 7 C.F .R.
§ 1.136(a)(l )(iv).
AFFIRMED
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