Yurong Huang et al.

Patent Trials and Appeals Board

Sep 22, 2020

2018003276 (P.T.A.B. Sep. 22, 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.
14/965,599 12/10/2015 Yurong HUANG 777.721US1 4051
97462 7590 09/22/2020
Mark A. Litman & Associates, P.A.
7001 Cahill Road, Ste. 15A
Edina, MN 55439
EXAMINER
LAYNO, BENJAMIN
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
09/22/2020 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 YURONG HUANG, RUSSELL BROOKE DUNN, and
MARK L. YOSELOFF
Appeal 2018-003276
Application 14/965,599
Technology Center 3700
Before MICHAEL W. KIM, Vice Chief Administrative Patent Judge,
JENNIFER S. BISK and KAMRAN JIVANI, Administrative Patent Judges.
JIVANI, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–19. 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). Appellant identifies the real party in interest as the
three listed inventors of the application. Appeal Br. 3.
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STATEMENT OF THE CASE
The present application relates to playing card wagering games.
Spec. 1:7. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of performing a wagering event using playing
cards comprising:

a) providing a set of playing cards;

b) placing two separate compulsory wagers at a player
position, the two separate wagers comprising:

i) a first ante wager in an underlying poker rank
competition of the player position hand rank of playing
cards against a dealer position hand rank of playing cards;

ii) a second wager based on a final poker hand rank
at the player position against a paytable, the second wager
being exactly equal in value to the first game wager;

c) providing a partial hand of random playing cards from
the set of playing cards at the player position;

d) providing a partial hand of random playing cards from
the set of playing cards at the dealer position;

e) placing a play wager at least equal to the first ante wager
at the player position and providing additional random playing
cards from the set of playing cards and completing a player hand
at the player position;

f) not placing a play wager at the player position, and the
dealer position collecting at least one of the first ante wager and
the second wager, concluding a round of the wagering event; and

g) if the additional random playing cards were received
in e), providing additional random playing cards from the set of
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playing cards and completing a dealer hand at the dealer position,
then resolving the first ante wager and the play wager with a
direct comparison of poker ranks in the completed player hand
and the completed dealer hand, with a relatively higher poker
rank in the completed player hand as compared to the completed
dealer hand poker rank winning at least 1:1 on the first ante
wager and the play wager; with a relatively lower poker rank in
the completed player hand as compared to the completed dealer
hand poker rank losing both the first ante wager, the second
wager and the play wager; and a tie between the poker rank in
the completed player hand as compared to the completed dealer
hand poker rank pushing both the first ante wager, the second
wager and the play wager; and the poker rank of the completed
player hand being compared against a paytable identifying poker
ranks, and with a relatively higher poker rank in the completed
player hand as compared to the completed dealer hand poker rank
resolving the second wager to determine odds to be paid against
attainment of ranks listed in the paytable, with the second wager
being a push if no at least minimum poker hand rank is present
in the completed player hand.
Rejections
1. Claims 1–19 stand rejected under 35 U.S.C. § 101 as being
directed to a judicial exception without significantly more.
2. Claims 1–5, 8, 9, and 12–19 stand rejected under 35 U.S.C.
§ 103 over Webb (US 6,345,823 B1; publ. Feb. 12, 2002) in view of
Yoseloff (US 2005/0242506 A1; publ. Nov. 3, 2005).
3. Claims 6, 7, 10, and 11 stand rejected under 35 U.S.C. § 103
over Webb in view of Yoseloff, and further in view of Kenny (US
2007/0063442 A1; publ. Mar. 22, 2007).
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ANALYSIS
Rejection of claims 1–5, 8, 9, and 12–19 over Webb in view of Yoseloff
Claim 1 recites, in part, “placing a play wager at least equal to the first
ante wager at the player position and providing additional random playing
cards from the set of playing cards and completing a player hand at the
player position” and “providing additional random playing cards from the
set of playing cards and completing a dealer hand at the dealer position.”
Appeal Br. 39. Independent claim 19 recites commensurate limitations. Id.
at 45.
The Examiner finds that “Yoseloff discloses an embodiment where
after a play wager is placed, additional cards are dealt directly to player
hands . . . and a dealer hand to complete the player hand and dealer hand.”
Final Act. 4. Specifically, the Examiner points to Yoseloff’s teaching that
“[t]he partial hand is preferably completed by community cards[,] but may
be completed by additional cards dealt directly to a hand” and that “each
player will have an opportunity to place a first game or play wager before
receiving another card for the player’s hand.” Id. (citing Yoseloff ¶¶ 24–
25). Paragraph 25 of Yoseloff further discloses that each player receives this
opportunity to place a first game or play wager before receiving another card
for the player’s hand, regardless of “whether dealt directly to the player,
assigned as a community card revealed to all players or assigned otherwise.”
Yoseloff ¶ 25. The Examiner finds, based on these teachings of Yoseloff,
that “it would have been obvious to a person having ordinary skill in the art
to modify Webb’s game providing rules of initially dealing a partial hand of
2 initial cards to each player, and providing the rules that after reviewing the
partial hand of 2 initial cards, each player having the opportunity to place the
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play wager 20 and receive additional playing cards dealt directly to the
player hands and dealer hand to complete the player hands and dealer hand.”
Id.
In the Appeal Brief, Appellant presents a table of alleged “base line
differences” between Webb and independent claim 1, all of which turn upon
whether the Examiner’s proposed combination of Webb and Yoseloff
satisfies the limitations of claim 1 identified above. Appeal Br. 32–36.
Appellant asserts that Yoseloff fails to cure Webb’s deficiencies. Id. at 33–
37. Appellant further asserts that “[t]he critical recitation of the invention of
Yoseloff is the requirement that ‘. . . the player viewing at least one first
additional card to only partially complete the initial partial player hand.’”
Id. at 37 (quoting Yoseloff, cl. 1). According to Appellant, “[t]he
mathematics, operation and strategy of the game and the foundation of the
invention is the display of only partial ones of community cards to enable
the further wager.” Id.
Based on its characterization of Yoseloff, Appellant asserts that
Yoseloff “does not evidence steps e), f), and g) where a player places the
wager, then receives playing cards that complete the players hand and then
providing separate cards (not community cards . . .) to complete the dealer
hand.” Id. Appellant asserts that “[r]ejections cannot pick and choose
Applicant's claim elements (even incompletely as shown above) while
destroying underlying functional requirements of the references” and that
“[t]he combination of references fails to evidence the invention as a whole
as recited in the claims, even where it is necessary to destroy underlying
functionality of one or both references in the attempt to evidence the
claims.” Id.
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The Examiner responds by again pointing to paragraphs 24–25 of
Yoseloff, finding that these portions of the reference “clearly suggest[] that
Yoseloff discloses an embodiment where after a play wager is placed,
additional cards are dealt directly to player hands (not community cards) and
a dealer hand to complete the player hand and dealer hand.” Ans. 13.
Appellant replies that “[i]t is not enough to assert that Yoseloff evidences
MORE cards in multiple segments until a hand is complete, as compared to
providing a single set of cards to complete the hand.” Reply Br. 8. In its
Reply, Appellant again points to claim 1 of Yoseloff, asserting that “the
player viewing at least one first additional card to only partially complete the
initial partial player hand” represents “a second incomplete partial hand” and
that “the next set of cards completes [the] hand.” Id.
We agree with the Examiner. Although Appellant repeatedly points
to claim 1 of Yoseloff for its alleged “second incomplete partial hand,” the
portions of paragraphs 24 and 25 repeatedly relied upon by the Examiner do
not specify or suggest a requirement of more than one partial hand. Instead,
paragraph 24 teaches that a partial hand “may be completed by additional
cards dealt directly to a hand.” A person of ordinary skill in the art would
have understood this teaching to include additional cards dealt directly to a
hand in a single set.
Further, Appellant’s assertion that “[r]ejections cannot pick and
choose Applicant’s claim elements . . . while destroying underlying
functional requirements of the references,” is unavailing. Despite
Appellant’s assertion that certain subject matter of claim 1 of Yoseloff is
“critical,” the Supreme Court has observed that “familiar items may have
obvious uses beyond their primary purposes, and in many cases a person of
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ordinary skill [often] will be able to fit the teachings of multiple patents
together like pieces of a puzzle.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007). Yoseloff’s specification demonstrates at paragraphs 24–25
that other configurations and embodiments are taught by the reference,
beyond the limitations of its claims, that do not destroy its underlying
functionality.
For the foregoing reasons, Appellant’s arguments do not persuade us
of error in the Examiner’s obviousness rejection of independent claim 1.
Accordingly, we sustain the obviousness rejection of that claim and of
claims 2–5, 8, 9, and 12–19, which Appellant does not argue separately.
Appeal Br. 32–37; see 37 C.F.R. § 41.37(c)(1)(iv) (“When multiple claims
subject to the same ground of rejection are argued as a group or subgroup by
appellant, the Board may select a single claim from the group or subgroup
and may decide the appeal as to the ground of rejection with respect to the
group or subgroup on the basis of the selected claim alone.”).
Rejection of claims 6, 7, 10, and 11 over Webb in view
of Yoseloff and Kenny
We maintain the Examiner’s obviousness rejection of claims 6, 7, 10,
and 11 over the combination of Webb in view of Yoseloff and Kenny.
Appellant has not particularly pointed out errors in the Examiner’s reasoning
regarding the additional teachings of Kenny, but reiterates the same
arguments set forth in relation to independent claim 1 based on Webb and
Yoseloff.
Rejection of claims 1–19 under 35 U.S.C. § 101
The Examiner finds claims 1–19 directed to an abstract idea of
fundamental economic practices and mathematical relationships/formulas.
Ans. 3. Acknowledging Alice Corp. Pty. Ltd. v. CLS Bank Intern., 573 U.S.
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208 (2014), the Examiner applies the two-step analysis of Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012). Id. At step 2A, the Examiner finds the claims are directed to a set
of rules for exchanging and resolving financial obligations by a method of
performing a wagering game. Id. at 5. Considering claims 1–19 in view of
the claims at issue in Alice and In re Smith, 815 F.3d 816 (Fed. Cir. 2016),
the Examiner finds that such a set of rules constitutes an abstract idea. Id.
at 3–5. At step 2B, the Examiner finds that “[t]he claims do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception” because the claimed physical elements of “multiple
sets of standard decks of 52 playing cards,” “jokers,” “a gaming table with a
playing surface,” “a display identifying odds,” and “a paytable” do not pass
the machine-or-transformation test. Id. at 5.
Appellant asserts that it does not attempt to reverse or modify Alice,
but that administration of the decision and guidelines provided by Alice by
the USPTO have been deficient. Appeal Br. 11. Appellant asserts the
following:
The fact that the USPTO has made a binding determination
(which the courts have followed, In re Smith, CAFC, 2015-1664,
decided March 10, 2016), without public hearing, without public
notice, and without any factual basis except for the assumption
of the fact itself, that physical playing card games are per se
abstract ideas subject to the authority of Alice, supra and patent
ineligible under 35 USC 101
Id. Appellant continues, “there has been no public availability of any
EVIDENCE other than assumption and extraordinarily strained analogies
and distortion of case law to an extent that exceeds credulity in [the
Examiner’s] reaching the determination that playing card wagering events
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are abstract ideas per se.” Id. at 14–15. Appellant further points to
declarations of alleged “experts within the gaming industry,” as well as
survey evidence, proffered to show that playing card games are not abstract.
Id. at 29–31.
Appellant further asserts that the USPTO, PTAB, and Federal Circuit
have created an “artificial conflict” between 35 U.S.C. § 101 on the one
hand and §§ 102 and 103 on the other. Id. at 18. According to Appellant
“[t]he assertion made during examination . . . that there must be ‘something
more’ which additionally must be independently patentable, even if the
‘abstract idea’ is itself novel and unobvious, is an unauthorized and illegal
expansion/distortion of both 35 USC 102 and 35 USC 103.” Id. at 20.
Moreover, Appellant asserts that “erroneous statutory requirements . . .
which act to take away an inventor’s rights to obtain a patent in accordance
with US Patent Laws under Title 35 U.S.C., is effectively an
unconstitutional ‘taking’” under the Fifth Amendment of the Constitution.
Id. at 24.
Finally, Appellant asserts that “different limitations in dependent
claims . . . further evidence the addition of physical structure that is novel
and unobvious, rendering the claimed subject matter non-abstract, patent-
eligible and containing sufficient ‘something more’ in that physical structure
to meet the requirements of [35 U.S.C. § 101] guidelines stated by the
Courts.” Id. at 31.
In accordance with 37 C.F.R. § 41.50(a)(1), we do not reach the
rejection under § 101 because our affirmance of the Examiner’s obviousness
rejections is dispositive as to all the appealed claims. We note, however,
that to the extent Appellant takes issue here with the Examiner’s reliance on
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In re Smith, it is a Federal Circuit case and is therefore binding authority.
See e.g., MPEP §§ 2106.04(a)(2)(II)(A); 2106.05(d)(II) (citing In re Smith).2
Also, to the extent that Appellant asserts that a determination has been made
here without a public hearing, we observe that Appellant had the opportunity
to request a hearing in this appeal and did not do so.
Further, we note that the Examiner’s reasoning under step 2B is
insufficient to support a rejection under 35 U.S.C. § 101. “[T]here is
nothing that requires a method ‘be tied to a machine or transform an article’
to be patentable.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299, 1315 (Fed. Cir. 2016). At the same time, “satisfying the
machine-or-transformation test, by itself, is not sufficient to render a claim
patent-eligible, as not all transformations or machine implementations infuse
an otherwise ineligible claim with an ‘inventive concept.’” DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014). Ultimately,
“the machine-or-transformation test is a useful and important clue, an
investigative tool, for determining whether some claimed inventions are
processes under § 101,” but “not the sole test for deciding whether an
invention is a patent-eligible ‘process.’” Bilski v. Kappos, 561 U.S. 593, 604
(2010). Nonetheless, should Appellant choose to amend the claims, we
bring to the Examiner’s attention that the Office’s procedures for addressing
rejections under § 101 have changed since the Final Office Action based at
least upon the USPTO’s 2019 Revised Patent Subject Matter Eligibility
Guidance (2019 PEG), October 2019 Patent Eligibility Guidance Update

2 Insofar as Appellant takes issue with the USPTO’s actions in In re Smith
itself, we decline to opine on a case that is not before us.
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(October 2019 Update), and the Berkheimer Memo. See MPEP §§ 2103–
2106.07.
SUMMARY
We sustain the rejection of all the claims on appeal under § 103 as
noted above.
DECISION
The Examiner’s rejections of claims 1–19 are affirmed.
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–19 101 Eligibility3
1–5, 8, 9,
12–19
103 Webb, Yoseloff 1–5, 8, 9,
12–19

6, 7, 10,
11
103 Webb, Yoseloff,
Kenny
6, 7, 10, 11
Overall
Outcome
1–19

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).
AFFIRMED

3 As explained above, we do not reach the merits of § 101 rejection.