Geoffrey William. Hall

Patent Trials and Appeals Board

Oct 3, 2019

14865628 - (D) (P.T.A.B. Oct. 3, 2019)

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.
14/865,628 09/25/2015 Geoffrey William Hall 3286.7-12739.1(PA5251.ap. 6036
66137 7590 10/03/2019
TRASKBRITT, P.C. /Bally Gaming, Inc.
PO Box 2550
Salt Lake City, UT 84110
EXAMINER
DENNIS, MICHAEL DAVID
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
10/03/2019 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 GEOFFREY WILLIAM HALL
____________

Appeal 2018-007582
Application 14/865,628
Technology Center 3700
____________

Before KEN B. BARRETT, WILLIAM A. CAPP, and
NATHAN A. ENGELS, Administrative Patent Judges.

CAPP, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Geoffrey William Hall (hereinafter “Appellant”)1 seeks our review
under 35 U.S.C. § 134(a) of the final rejection of claims 1–20 under 35
U.S.C. § 101 as directed to a judicial exception to patent eligible subject
matter.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Customized Games Limited is the Applicant and real party
in interest. Appeal Br. 5.
2 Prior art rejections of claims 1–20 under the obviousness provisions of 35
U.S.C. § 103 have been withdrawn by the Examiner. Ans. 7.
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Application 13/750,646
2
RELATED CASE
The instant application on appeal is a continuation of U.S. Non-
provisional application number 13/539,113. Appeal Br. 2. The ’113
Application was before the Board in the case of Ex parte Geoff Hall, Appeal
No. 2017-002594 (PTAB Jan. 17, 2018).3 In the Geoff Hall case, the Board
affirmed the Examiner’s Section 101 rejection of substantially similar claims
to those presented in the instant appeal.
THE INVENTION
Appellant’s invention is a variation on the casino game of blackjack.
Spec. ¶ 2. Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of administering a blackjack game, the method
comprising:
providing a physical gaming table with a felt layout on top of
the physical gaming table,
the felt layout including at least one betting circle associated
with each of a plurality of player positions designated on the felt
layout;
providing one or more physical decks of physical playing
cards;
receiving a wager from a player in the form of one or more
physical chips in a betting circle associated with at least one
player position of the plurality of player positions;
dealing an initial hand of two physical playing cards using one
or more physical decks of physical playing cards to each of the at
least one player position and to a dealer;
determining a point total of each of the initial hands of
physical playing cards of the dealer and the at least one player
position;

3 A copy of the Geoff Hall decision may be found at Ex parte Geoff Hall,
2018 WL 460997 (PTAB Jan. 12, 2018).
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without requiring an additional wager or fee from the player,
replacing all of the physical playing cards of at least one of the
initial hands of two physical playing cards with two replacement
physical playing cards when the point total of the at least one of
the initial hands of two physical playing cards is a value of a
predetermined set of values;
playing out the at least one hand including the at least one
replacement physical playing card; and
resolving the wager according to predetermined blackjack
rules.
OPINION
35 U.S.C. § 101 – Ineligible Subject Matter
Appellant argues claims 1–20 as a group. Appeal Br. 29–44. We
select claim 1 as representative. See 37 C.F.R. §41.37(c)(1)(iv).
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice,
573 U.S. at 217 (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc.,
566 U.S. 66, 72–73 (2012)). According to the Supreme Court’s Alice/Mayo
framework, we must first determine whether the claims at issue are directed
to one of those concepts (i.e., laws of nature, natural phenomena, and
abstract ideas). Id. If so, we must secondly “consider the elements of each
claim both individually and ‘as an ordered combination’ to determine
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whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Id. The Supreme Court characterizes the
second step of the analysis 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.”’ Id. (quoting Mayo, 566 U.S. at 72–73).
The Examiner determines that claims 1–20 are directed to an abstract
idea in the form of a set of rules. Final Action 2.
The claims recite a set of rules to a blackjack wagering game
comprising dealing rules, wagering rules, "determining" rules,
"playing" rules, and "resolving" rules, which is an abstract idea
the same way the Federal Circuit held the set of rules used to
conduct a blackjack wagering game were an abstract idea in In
re Smith.
Id. (citing In re Smith, 815 F.3d 816 (Fed Cir. 2016)). The Examiner further
determines that, although the claims include additional elements other than
limitations pertaining to the abstract idea, those elements do not render the
claimed subject matter patent eligible. Id. at 2–3.
The PTO recently published revised guidance on the application of
§ 101. See USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (“2019 Guidelines”).
Under that guidance, in conducting step one of the Alice framework, we first
look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a)–(c), (e)–
(h)).
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Step 1, Prong 1
The 2019 Guidelines identify three key concepts as abstract ideas:
(a) mathematical concepts including “mathematical
relationships, mathematical formulas or equations,
mathematical calculations”;
(b) certain methods of organizing human activity, such as
“fundamental economic principles or practices,” “commercial
or legal interactions,” and “managing personal behavior or
relationships or interactions between”; and
(c) mental processes including “observation, evaluation,
judgment, [and] opinion.”
2019 Guidelines.
In the Smith case, the Federal Circuit affirmed a Board decision that
determined that a wagering game is, effectively, a method of exchanging and
resolving financial obligation based on probabilities created during the
distribution of cards and, hence, abstract. Smith, 815 F.3d at 818–819.
More recently, in the case of In re Marco Guldenaar Holding B.V., 911
F.3d 1157 (Fed. Cir. 2018), the Federal Circuit held that a method of playing
a wagering dice game is an abstract idea that falls under the concept of
methods of organizing human activity. Id. at 1160.
Similarly, Appellant’s claim 1 recites a judicial exception, namely, an
abstract idea in the form of rules for playing a wagering game, which
essentially amounts to a method of organizing human activity. In a
wagering game, such a method of organizing human activity expresses itself
in at least two ways. First, there is a fundamental economic practice,
namely, a risk-based financial transaction which is exemplified by the
placing of wagers followed by a payout event after a hand is played.
Second, the game rules manage human interaction, which is exemplified by
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the orderly process of dealing cards and playing out the hand among
participants. 2019 Guidelines.
Step 1, Prong 2
Under Prong 2 of Step 1 of the 2019 Guidelines, we do not assume
that such claims are directed to patent ineligible subject matter because “all
inventions at some level embody, use, reflect, rest upon, or apply laws of
nature, natural phenomena, or abstract ideas.” In re TLI Commc’ns LLC
Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) (quoting Alice). Instead,
“the claims are considered in their entirety to ascertain whether their
character as a whole is directed to excluded subject matter.” McRO, Inc. v.
Bandai Namco Games America Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016).
If the claims are not directed to an abstract idea, the inquiry ends. 2019
Guidelines. If the claims are “directed to” an abstract idea, then the inquiry
proceeds to the second step of the Alice framework. Id.
Consequently, we consider whether the claimed card game includes
additional elements that integrate the judicial exception into a practical
application. A claim that integrates a judicial exception into a practical
application will apply, rely on, or use the judicial exception in a manner that
imposes a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception.
See 2019 Guidelines.
Appellant argues that the claims are not directed to an abstract idea.
Appeal Br. 29. Appellant argues that: “the claims are limited to rules with
specific characteristics.” Id. at 36. Appellant alleges that it has developed a
“new and entertaining version of blackjack.” Id. Appellant alleges to have
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improved the prior wagering art through inclusion of a burn/replacement
activity. Id.
In response, the Examiner maintains that the determination as to
whether the claims recite an abstract idea is controlled adversely to
Appellant’s position by the Federal Circuit’s decision in Smith. Ans. 7–8.
In reply, Appellant urges us not to follow Smith because it is no longer
a “recently decided” case. Reply Br. 5 (“Smith is more than two years old”).
Appellant argues that more recent decisions have “evolved patent-eligibility
jurisprudence” in a manner that diverges from Smith. Id.
Much to the contrary however, in the more recent Guldenaar case, the
court expressly followed its previous decision in Smith and, in doing so,
analogized wagering games to exchanging obligations associated with risk
based financial transactions.
In re Smith, 815 F.3d 816 (Fed. Cir. 2016), is highly instructive
in this case. In Smith, we concluded that the claimed “method
of conducting a wagering game” using a deck of playing cards
was drawn to an abstract idea. We likened the claimed method
to the method of exchanging financial obligations at issue in
Alice and the method of hedging risk at issue in Bilski. Id.
at 819. We agreed with the Board’s reasoning that “[a]
wagering game is, effectively, a method of exchanging and
resolving financial obligations based on probabilities created
during the distribution of the cards.” Id. at 818–19.
Guldenaar, 911 F.3d at 1160.
Appellant’s claimed “method of playing a dice game,” . . . is, as
with the claimed invention in Smith, directed to a method of
conducting a wagering game, with the probabilities based on
dice rather than on cards. Given the strong similarities to the
ineligible claims in Smith, Appellant’s claims likewise are
drawn to an abstract idea.
Id.
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In the instant case, Appellant’s claims are directed to a method of
playing a card game and, more specifically, a variation on the well-known
casino game of blackjack. Claims App. Playing the game includes:
(1) placing a wager; (2) dealing a hand from a deck of cards, (3) determining
a point total of the hand, (4) “playing out” the hand; and (5) resolving the
wager. Id.
Appellant’s argument that it has developed a “new and entertaining
version of blackjack” and has improved the prior wagering art does not
apprise us of Examiner error. The asserted game rule innovations are merely
part and parcel of the abstract idea of implementing game rules as a method
of organizing human activity. We may assume that the techniques claimed
are “[g]roundbreaking, innovative, or even brilliant,” but that is not enough
for eligibility. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569
U.S. 576, 591 (2013); accord buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1352 (Fed. Cir. 2014). 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).
The Smith case, as with the application under appeal here, entailed a
variation on the casino card game of blackjack. Smith, 815 F.3d at 818,
Given the strong similarity between Smith and the instant case, we determine
that Appellant’s variation on blackjack fails to integrate the judicial
exception into a practical application and, therefore, is directed to an abstract
idea.
Step 2
Turning to step two of the Alice/Mayo framework, the Examiner
determines that the steps of Appellant’s method, considered both
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individually and in combination, do not amount to significantly more than
the abstract idea of rules for playing a game. Final Action 3.
In traverse, Appellant argues that its claim limitations involve more
than performance of well-understood, routine, and conventional activities
previously known to the wagering-game industry. Appeal Br. 43.
For example, the claims involve the performance of a
burn/replacement activity having the specific combination of
(1) no additional wager, fee, or other cost to the player; (2) a
burn and replacement of all cards in the hand; (3) a burn of
initial cards only; (4) a burn based upon point total; and, more
particularly (5) a burn based upon the point total of the cards
being replaced. For the reasons discussed above, this particular
burn/replacement activity was not previously known to the
wagering-game industry. (Even a more generalized “burn” and
replacement activity in blackjack would be more than the
performance of well-understood, routine, and conventional
activities previously known in the wagering-game industry
because, as discussed above, burning and replacing cards is not
an option in conventional blackjack.) So, the limitations of the
claims involve more than performance of well-understood,
routine, and conventional activities previously known to the
wagering-game industry; therefore, the second step of the Alice
test is satisfied.
Id. More particularly, Appellant focuses on the word “activities” in the
phrase “well-understood, routine, and conventional activities.” Id.
Appellant asserts error in the Examiner’s focus on the physical elements of
the game, such as the gaming table and cards, as conventional. Id.
According to Appellant, the Examiner should have focused on the allegedly
novel “burn and replacement” elements of the claims as unconventional
“activities.”
In response, the Examiner notes the strong similarity in the pending
claims to those in the parent ’113 Application, further noting that the Board,
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in the appeal of such parent application, held that the claimed burn
procedure did not transform the abstract idea into something significantly
more than the abstract idea itself. Ans. 9. The Examiner, once again,
analogizes the instant case to Smith, where a variation on the casino game of
blackjack was determined to be patent ineligible. Id. at 11.
In reply, Appellant analogizes the instant case to McRO, 837 F.3d
1299. Appeal Br. 9. Appellant argues that McRO stands for the proposition
that a “combined order of specific rules” may be patent eligible. Id.
Appellant also argues that the claims do not present a risk of preemption. Id.
Appellant’s preemption argument is unpersuasive. It is now settled
law 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.” Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Appellant’s attempt to analogize the instant case to McRO because it
applied “rules” is unavailing. In McRO, the “rules” were implemented in
computer logic in connection with an automated process for animating lip
synchronization and facial expression in three-dimensional characters.
McRO, 837 F.3d at 1307. Thus, the “rules” in McRO were rooted in a
practical application of innovative technology. Id. In contrast, the game
rules at issue in the instant case merely manage interrelationships between
card game players, which is a method of organizing human activity.
Appellant’s argument based on the meaning of unconventional
“activities” is off the mark. The “activities” that Appellant alleges are
unconventional are just the abstract idea itself, not “additional elements” to
the abstract idea that are analyzed under Step 2 of the Alice/Mayo
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framework. “It has been clear since Alice that a claimed invention’s use of
the ineligible concept to which it is directed cannot supply the inventive
concept that renders the invention ‘significantly more’ than that ineligible
concept.” BSG Tech. LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290
(Fed. Cir. 2018).
Furthermore, as Appellant’s card game relies heavily on the existing
game of blackjack, the claimed invention entails well-understood, routine,
conventional activities previously known to the industry. Alice, 573 U.S.
at 225. Essentially, all Appellant has done here is to take the casino
gambling game of blackjack and modify it by making a variation in the
dealing and playing of a hand of cards. No matter how much of an
improvement in the game of blackjack the claims recite, the advance lies
entirely in the realm of abstract ideas, with no plausibly alleged innovation
in the non-abstract application realm. An advance of that nature is ineligible
for patenting. See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163
(Fed. Cir. 2018).
Accordingly, for the above reasons, the recited elements of claim 1,
considered individually and as an ordered combination, do not constitute an
“inventive concept” that transforms independent claim 1 into patent-eligible
subject matter. On this record, we affirm the Examiner’s § 101 rejection of
claim 1, as well as claims 2–20, which fall with claim 1.
CONCLUSION
In summary:
Claims
Rejected
Basis Reference(s) Affirmed Reversed
1–20 § 101 n/a X

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DECISION
The decision of the Examiner to reject claims 1–20 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). See 37
C.F.R. § 41.50(f).
AFFIRMED