Jamie Abrahamson

Patent Trials and Appeals Board

Apr 1, 2020

15157518 - (R) (P.T.A.B. Apr. 1, 2020)

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.
15/157,518 05/18/2016 Jamie Abrahamson 323.007US1 3769
97462 7590 04/01/2020
Mark A. Litman & Associates, P.A.
7001 Cahill Road, Ste. 15A
Edina, MN 55439
EXAMINER
DENNIS, MICHAEL DAVID
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
04/01/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
______________________

Ex parte JAMIE ABRAHAMSON
______________________

Appeal 2018-001233
Application 15/157,518
Technology Center 3700
_______________________

Before MICHELLE R. OSINSKI, JEREMY M. PLENZLER, and
GEORGE R. HOSKINS, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
Appellant1 filed a request for rehearing under 37 C.F.R. § 41.52
(hereinafter “Request”), dated November 12, 2019, of our decision mailed
October 31, 2019 (hereinafter “Decision”). In that Decision, we affirmed
the Examiner’s rejection, under 35 U.S.C. § 101, of claims 10–19 and 21–23
as being directed to patent ineligible subject matter. Decision 21–22. We

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as the sole
inventor, Mr. Jamie Abrahamson. Appeal Br. 3.
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also affirmed the Examiner’s rejections, under 35 U.S.C. § 103, of claims 10
and 21 as unpatentable over Merati and Walker and claims 15 and 23 as
unpatentable over Merati, Walker, and Jones. Id. Rehearing is limited to
matters overlooked or misapprehended by the Board in rendering the initial
decision.
OPINION
Appellant presents three major points in support of there being a
matter that the Board overlooked or misapprehended in rendering the initial
decision. After consideration of the Request, we find one of these points to
be persuasive, and the Request is granted.
Appellant argues that the Board was “clearly in error as defining the
claimed subject matter as a set of rules to a baccarat gaming event.”
Request 5. More specifically, Appellant argues that “[a]t no time is any rule,
game play method, or more importantly a step of [a] method of playing a
game recited.” Id. Appellant continues that “[t]here is no identification in
the rejection or [t]he [D]ecision of a set of rules, competition rules,
‘resolving rules’ or anything that brings the claims into the purview of a set
of rules to a baccarat wager game.” Id.
The Examiner explained in the rejection that the claims recite:
competition rules (“player hand of playing cards in competition
with a banker hand of playing cards”), wagering rules (“initial
wager . . . on the game of baccarat”, “second wager on a side
bet”) and “resolving” rules (“side bet event . . . resolved by using
final playing cards dealt to the player hand position and final
playing cards dealt to the banker hand position”[]) . . . .
Final Act. 2. In the Decision, we indicated that “[c]laims 10 and 21 . . .
recite a set of rules for executing a game of baccarat, including wagering, at
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least in that they indicate that the game of baccarat is resolved using final
playing cards dealt to the player and banker hands.” Decision 8.
Independent claims 10 and 21 explicitly refer to placing a first wager on a
game of baccarat, placing a second wager on a side bet event on the game of
baccarat, and that the side bet event wager is resolved by using final playing
cards dealt to the player and banker hands. However, upon additional
review, we recognize that these references within the claims pertain merely
to a method enabled by the claimed physical system. See Reply Br. 5–6
(“[A] clear physical structure is recited which enables execution of gaming
activities to be performed with that structure. . . . The claimed physical
system is not abstract because it enables a particular playing card gaming
event.”). In other words, the rules identified by the Examiner are recited in
the claims only in connection with reciting an intended use of the claimed
system.
More specifically, the recitation in the preamble of claims 10 and 21
of
for enabling a method of executing a game of baccarat with a
side bet event, the game of baccarat comprising a player hand of
playing cards in competition with a banker hand of playing cards,
a player hand position and a banker hand position receiving
playing cards from at least one randomized deck of 52 playing
cards
(Appeal Br. 48, 51 (Claims App.)), is merely a statement of the intended use
of the claimed system because the body of the claim sets forth all of the
structural limitations of the claimed invention. See, e.g., Rowe v. Dror, 112
F.3d 473, 478 (Fed. Cir. 1997) (“where a patentee defines a structurally
complete invention in the claim body and uses the preamble only to state a
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purpose or intended use for the invention, the preamble is not a claim
limitation”).
The similar recitations in the body of claims 10 and 21 of “positions
[on a gaming table] for placing an initial wager . . . on the game of baccarat”
and “positions [on a gaming table] for placing a second wager on a side bet
event . . . resolved by using final playing cards dealt to the player hand
position and final playing cards dealt to the banker hand position” (Appeal
Br. 48, 51 (Claims App.), merely constitute functional limitations that define
the positions on the gaming table by what they do (i.e., allow placement of
first and second wagers), rather than what they are. “A functional limitation
must be evaluated and considered, just like any other limitation of the claim,
for what it fairly conveys to a person of ordinary skill in the pertinent art in
the context in which it is used.” MPEP [R-08.2017] § 2173.05(g).
The functional limitations of claims 10 and 21 provide no structurally
distinguishing feature of the table, or any positions thereon, in that a table in
and of itself and any positions thereon are capable of having wagers placed
thereon simply by virtue of being a table. Moreover, the particular game for
which the wagers are placed (i.e., a game of baccarat or a side bet event on
the game of baccarat) fails to provide any distinguishing feature of the table,
or any positions thereon, in that the particular game or event for which the
wager is placed does not affect the ability of a table, or positions thereon, to
receive placed wagers. Consequently, the particular nature of the game or
event as recited in the claims does not distinguish the claimed system, but
instead is akin to a statement of intended use or a field of use, and is not
given patentable weight.
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The Examiner’s analysis relies on In re Smith, 815 F.3d 816 (Fed. Cir.
2016), as “the most related precedential case since rules to a card wagering
game are being claimed.” Final Act. 2–3; Ans. 2–3. When considering the
relevant language in claims 10 and 21 more appropriately as statements of
intended use of the claimed system or functional limitations of the claimed
system that do not structurally distinguish the claimed system and lack
patentable weight, independent claims 10 and 21 fail to recite competition
rules or rules for dealing, wagering, and/or resolving in connection with a
wagering game that would be comparable to the rules for dealing cards and
resolving wagers held to be an abstract idea in Smith.
Because we determine that independent claims 10 and 21, and claims
11–19, 22, and 23 that depend therefrom, do not recite an abstract idea or
other judicial exception, we conclude our analysis for patent eligibility at
Step 2A, Prong One as captioned in the Decision. The request for rehearing
is granted, and we do not sustain the Examiner’s decision rejecting claims
10–19 and 21–23 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter.
NEW GROUND OF REJECTION
In the Decision, we noted that the Examiner did not expressly
withdraw the rejections of dependent claims 11–14, 16–19, and 22, but did
not include rejections of these claims in the Answer. Decision 3 n.4, n.5.
We did not include these claims in our Decision affirming the Examiner’s
obviousness rejections under 35 U.S.C. § 103, and suggested the Examiner
clarify in the record whether an obviousness rejection was applicable to any
of these claims. Id. Because there is no currently maintained rejection
against claims 11–14, 16–19, and 22 upon the grant of this request for
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rehearing, we consider the applicability of grounds of rejection under 35
U.S.C. § 103 with respect to these claims. We enter new grounds of
rejection of claims 11–14, 16–19, and 22 under 35 U.S.C. § 103 as being
unpatentable over Merati (US 2016/0101347 A1; published Apr. 14, 2016)
and Walker (US 2010/0025931 A1, published Feb. 4, 2010) alone or with
one of Bigelow (US 8,257,164 B2; issued Sept. 4, 2012), and Jones (US
4,861,041, issued Aug. 29, 1989).
Claims 11, 12, and 22
Claims 11, 12, and 22 recite that
the random event outcome indicator comprises a visual display
in communication with the random number generator that
provides equally weighted distinct indications on individual
displays at each of the at least two player positions of single
digit point counts selected from the group consisting of 1, 2, 3,
4, 5, 6, 7, 8, and 9
(claim 11) or “the group consisting of 0, 1, 2, 3, 4, 5, 6, 7, 8, and 9” (claims
12 and 22). We rely on the Final Action and on our Decision to support how
Merati and Walker teach the limitations of independent claims 10 and 21
from which claims 11, 12, and 22 depend. Final Act. 6–8; Decision 16–20.
As to the further limitations of claims 11, 12, and 22, we adopt the
Examiner’s findings that Merati and Walker teach a random event outcome
indicator comprising a visual display. Final Act. 8 (citing Walker Fig. 4).
We also adopt the Examiner’s findings that Merati and Walker teach
“distinct indications on the displays of single digit point counts selected
from the group consisting of 0, 1, 2, 3, 4, 5, 6, 7, 8, and 9,” as recited in
claims 12 and 22. Id. (citing Merati ¶¶ 82–83). We also adopt the
Examiner’s conclusion that “the group of specific point counts [or
indicators] is considered to be an obvious casino design choice based on the
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odds the designer is willing to give to a player” so as to arrive at a group
consisting of 1, 2, 3, 4, 5, 6, 7, 8, and 9, as recited in claim 11. Id. at 8–9.
When the group of indicators is limited to 1 through 9 (claim 11), we
adopt the Examiner’s finding that “Merati teaches wherein the random
number generator provides equally weighted indications because the random
number generator is contemplated to be drawing from a deck of cards” and
“[e]ach card has the same chance of being selected.” Id. at 9. Accordingly,
the combination of Merati and Walker teaches or suggests all of the
limitations of dependent claim 11, and we enter a rejection of dependent
claim 11 under 35 U.S.C. § 103 as unpatentable over Merati and Walker.
When the group of indicators consists of 0 to 9 (claims 12 and 22),
Appellant argues that “[a]s Merati uses playing cards from a standard deck,
the selection of a zero value indicator (e.g., 10, J, Q, and K) cannot be equal
to the digit point counts of 1, 2, 3, 4, 5, 6, 7, 8, and 9.” Appeal Br. 36. With
respect to claims 12 and 22, we find that Merati teaches a random number
generator that can comprise “number balls drawn from a container” and
“could also be implemented by a processor executing machine-readable
instructions that cause the processor to generate random numbers, simulating
one of the physical random number generators mentioned above.” Merati
¶ 12. We also find that Merati teaches that the “second random number
generator” that generates the “side bet game value” “may comprise an
electronic random value generator,” “to generate a score between 0 and 9.”
Id. ¶ 82. We conclude that it would have been obvious to one of ordinary
skill in the art to adopt an electronic random number generator that is based
on balls numbered 0 to 9 drawn from a container, rather than playing card
values, because both types of random number generators were known in the
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art (id. ¶ 12) and a person of ordinary skill in the art could have substituted
one for the other and the results of the substitution would have been
predictable. When using a random number generator that is based on balls
numbered 0 to 9 drawn from a container, we determine that the indications
will be equally weighted in that each numbered ball will have the same
chance of being selected.
We also adopt the Examiner’s finding that “Bigelow expressly teaches
. . . a[n] RNG [random number generator] that provides equally weighted
indications” and adopt the Examiner’s conclusion that it would have been
obvious to “equally weight the outcomes . . . to provide a fair probability of
winning to the player.” Final Act. 10 (citing Bigelow, 28:13–25, 29:4–15).
We also find that Bigelow teaches a “game can equally weight the outcomes
or weight the outcomes so that the game randomly selects one or more
outcomes more often than one or more other outcomes.” Bigelow 2:40–43.
We conclude that it would have been obvious to utilize equally weighted
outcomes by a random number generator in that both unequally weighted
and equally weighted outcomes were known in the art, and one of ordinary
skill in the art could have substituted one known element for another and the
results of the substitution would have been predictable.
Accordingly, the combination of Merati, Walker, and Bigelow teaches
or suggests all of the limitations of dependent claims 12 and 22, and we
enter a rejection of dependent claims 12 and 22 under 35 U.S.C. § 103 as
unpatentable over Merati, Walker, and Bigelow.
Claims 13 and 14
Claims 13 and 14 further recite that the group consisting of 1 to 9
(claim 13) or 0 to 9 (claim 14) is “randomly generated to each individual one
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of the at least two player positions without repetition of any of the single
digit point counts.” Appeal Br. 49, 50 (Claims App.). Appellant argues that
“the use of playing cards (the only mechanism evidenced by Merati) cannot
prevent repetition of single digit values at the separate player positions.”
Appeal Br. 36. We adopt the Examiner’s position that “within an iteration
of the game, Merati teaches wherein the distinct indication randomly
generated to each individual will be without repetition of any of the single
digit point counts.” Final Act. 9; see also Ans. 15 (“[W]ithin typical game
iterations of Merati, the value determined by the side bet RNG for a first
player will indeed be a different value than the value determined by the side
bet RNG for a second player.”).
The claims only require two player positions, and with possible values
for the indicators ranging from 1 through 9 (claim 13) or 0 through 9
(claim 14), the Examiner’s finding that the value generated for a first player
will be different than a value generated for a second player “within typical
game iterations of Merati” is supported by a preponderance of the evidence.
Ans. 15. Appellant does not adequately explain why this finding by the
Examiner is insufficient to support a disclosure of a “random number
generator that provides . . . indications on a single display panel . . . of single
digit point counts . . . that are randomly generated to each individual one of
the at least two player positions without repetition of any of the single digit
point counts,” as claimed. Appeal Br. 49–50 (Claims App.). In other words,
Merati’s system is capable of providing indicators without repetition of any
of the single digit point counts to two player positions, and will provide
indicators without repetition of any of the single digit point counts to two
player positions within a typical game, and Appellant does not adequately
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explain how and/or why the claims, as currently drafted, prohibit any
possibility of duplicate values by the random number generator in order to
meet the claims.
Accordingly, the combination of Merati and Walker teaches or
suggests all of the limitations of dependent claims 13 and 14, and we enter a
rejection of dependent claims 13 and 14 under 35 U.S.C. § 103 as
unpatentable over Merati and Walker.
Claims 16–19
Each of dependent claims 16–19 recite that “the second wager
comprises a progressive jackpot wager and there is an automated accounting
system in communication with the positions on the gaming table for placing
the second wager.” Appeal Br. 50–51 (Claims App.). We adopt the
Examiner’s findings that “Jones teaches wherein such features are old and
well known in the art.” Final Act. 11 (citing Jones Figs. 1–4, Abstract). We
also adopt the Examiner’s conclusion that “at the time of invention, one
having ordinary skill in the art would have found it obvious to implement an
automated progressive jackpot on a side wager to entice players with large
payouts.” Id.
Accordingly, the combination of Merati, Walker, and Jones teaches or
suggests all of the limitations of dependent claims 16–19, and we enter a
rejection of dependent claims 16–19 under 35 U.S.C. § 103 as unpatentable
over Merati, Walker, and Jones.

CONCLUSION
Appellant’s Request has been granted, and the rejection of claims 10–
19 and 21–23 under 35 U.S.C. § 101 as being directed to patent-ineligible
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subject matter is not sustained. We enter new grounds of rejection for
claims 11–14, 16–19, and 22 under 35 U.S.C. § 103 based on obviousness.
This decision contains NEW GROUNDS OF REJECTION pursuant
to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(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 prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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In summary:
Outcome of Decision on Rehearing:
Claims 35 U.S.C
§
Reference(s)/Basis Denied Granted
10–19, 21–23 101 Eligibility 10–19, 21–23

Final Outcome of Appeal after Rehearing:
Claims 35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
10–19,
21–23
101 Eligibility 10–19,
21–23

10, 21 103 Merati, Walker 10, 21
15, 23 103 Merati, Walker,
Jones
15, 23
11, 13, 14 103 Merati, Walker, 11, 13,
14
12, 22 103 Merati, Walker,
Bigelow
12, 22
16–19 103 Merati, Walker,
Jones
16–19
Overall
Outcome
10, 21,
15, 23
11–14,
16–19, 22
11–14,
16–19,
22

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).

GRANTED; 37 C.F.R. § 41.50(b)