Ex Parte Guldenaar

Patent Trial and Appeal Board

Jun 20, 2017

13078196 (P.T.A.B. Jun. 20, 2017)

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.
13/078,196 04/01/2011 Marco Guldenaar 7193 - 133440 6965
28289 7590 06/22/2017
THE WEBB LAW FIRM, P.C.
ONE GATEWAY CENTER
420 FT. DUQUESNE BLVD, SUITE 1200
PITTSBURGH, PA 15222
EXAMINER
PIERCE, WILLIAM M
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
06/22/2017 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):
patents @ webblaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARCO GULDENAAR
Appeal 2015-003656
Application 13/078,196
Technology Center 3700
Before EDWARD A. BROWN, JILL D. HILL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Marco Guldenaar (Appellant)1 appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 1—3, 5, 7—14, 16—18, and 23—30,
which are the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We heard oral argument on June 12, 2017.
We AFFIRM.
1 Marco Guldenaar Holding BV is identified as the real party in interest.
Appeal Br. 3.
Appeal 2015-003656
Application 13/078,196
CLAIMED SUBJECT MATTER
Appellant’s invention “relates to casino games, and more particularly
to dice games intended to be played in gambling casinos, in which a
participant attempts to achieve a particular winning combination of subsets
of the dice, relying on observations, luck, and bets driven by belief and
personal betting strategies for each individual game.” Spec. 129.
Claims 1,11, and 23 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter.
1. A method of playing a dice game comprising:
providing a set of dice, the set of dice comprising a first
die, a second die, and a third die, wherein only a single face of
the first die has a first die marking, wherein only two faces of the
second die have an identical second die marking, and wherein
only three faces of the third die have an identical third die
marking;
placing at least one wager on at least one of the following:
that the first die marking on the first die will appear face up, that
the second die marking on the second die will appear face up,
that the third die marking on the third die will appear face up, or
any combination thereof;
rolling the set of dice; and
paying a payout amount if the at least one wager occurs.
Appeal Br. 19 (Claims App.).
REJECTIONS
Claims 1—3, 5, 7—14, 16—18, and 23—30 are rejected under 35 U.S.C.
§ 101 as being directed to patent ineligible subject matter.
Claims 1—3, 5, 7—14, 16—18, and 23—30 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Carroll (US 4,247,114, issued Jan. 27, 1981)
“in view of matters old and well known to dice games.”
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Application 13/078,196
ANALYSIS
Rejection of claims 1—3, 5, 7—14, 16—18, and 23—30 under 35 U.S.C. § 101
Appellant argues claims 1—3, 5, 7—14, 16—18, and 23—30 together as a
group (Appeal Br. 6—14), and additionally presents separate argument for
claims 10, 18, 24, and 26 {id. at 14). We select claim 1 to decide the
rejection of claims 1—3, 5, 7—9, 11—14, 16, 17, 23, 25, and 27—30, with
claims 2, 3, 5, 7—9, 11—14, 16, 17, 23, 25, and 27—30 standing or falling with
claim 1. We also address the separate argument for claims 10, 18, 24, and
26. See 37 C.F.R. § 41.37(c)(l)(iv).
Claims 1-3. 5. 7-9. 11-14. 16. 17. 23. 25. and 27-30
Claim 1 is directed to a method of playing a dice game. Hence, claim
1 falls within a statutory category. See Gottschalk v. Benson, 409 U.S. 63,
70 (1972). The question then becomes whether the claim is directed to a
judicial exception, such as an abstract idea.
The Examiner determines that claim 1 is drawn to an abstract idea,
applying A lice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014).
Ans. 2—3.2 Alice provides “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.” Id. at 2355 (citing
Mayo Collaborative Servs. v. Prometheus Labs, Inc., 132 S.Ct. 1289
(2012)). According to this framework, it is first determined whether the
claims at issue are directed to one of the judicial exceptions. Id. If not, the
claims satisfy § 101. Id. Here, the Examiner determines that the claims are
2 The Final Office Action is dated August 25, 2014, predating Alice.
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Application 13/078,196
directed toward “rules for playing games,” which falls within the abstract
idea of “methods of organizing human activities.” Ans. 3,8.
In response, Appellant contends that the claimed invention is
patentable subject matter under Alice. Reply Br. 3. Appellant contends that
“[t]he supposed ‘abstract idea’ in this case has never been specifically
identified by the Examiner.” Id. Continuing, Appellant contends that “[i]t is
improper to state the ‘idea’ as broadly as ‘dice games’ because this analysis,
‘if carried to its extreme, make[s] all inventions un-patentable because all
inventions can be reduced to underlying principles of nature.’ Diamond v.
Diehr, 450 U.S. 175, fii. 12 (1981).” Id.
Appellant’s contentions regarding the first step of Alice are not
persuasive. The Examiner does, in fact, identity an abstract idea. Ans. 3,8.
Also, it is not the Examiner’s position that the abstract idea is “dice games.”
Appellant does not apprise us of any error in the Examiner’s position that the
abstract idea is “methods of organizing human activities.”
Subsequent to the briefing in this appeal, the Federal Circuit
addressed a § 101 rejection of claims directed to a “method of conducting a
wagering game.” In re Smith, 815 F.3d 816, 817 (Fed. Cir. 2016). In Smith,
the court stated: “On the first step [of Alice], we conclude that Applicants’
claims, directed to rules for conducting a wagering game, compare to other
‘fundamental economic practice^]’ found abstract by the Supreme Court.”
Id. at 818. The dice game recited in claim 1 similarly involves wagering
(“placing at least one wager” and “paying a payout amount if the at least one
wager occurs”). Smith also supports the Examiner’s determination that
claim 1 is directed to an abstract idea. See also id. at 819 (“[W]e conclude
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Application 13/078,196
that the rejected claims, describing a set of rules for a game, are drawn to an
abstract idea.”).
According to Alice, if the claims are determined to be directed to an
abstract idea, the second step is to “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 134 S.Ct. 2355 (quoting Mayo, 132 S. Ct. at 1298,
1297). The second step is “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. (quotingMayo, 132 S.Ct. at 1294).
The Examiner determines that the claims do not recite limitations that
ensure they are directed to “significantly more” than the abstract idea itself.
Ans. 10. Particularly, the Examiner determines that “the introduction of
conventional steps pertaining to the rolling of dice does not alter the
analysis,” and “the generic implementation of dice is insufficient” to render
the claims patent eligible. Id.
Appellant responds that the Examiner’s analysis that “the generic
implementation of dice is insufficient” fails to consider each step of each
claim, both individually and as an ordered combination. Reply Br. 4
(emphasis added). This contention is not persuasive.3 Appellant’s
contention does not explain why claim 1 recites limitations that ensure it is
3 As Appellant does not argue claims 1—3, 5, 7—14, 16—18, and 23—30
separately, and we have selected claim 1 as the representative claim, we do
not consider this contention to the extent it pertains to claims 2, 3, 5, 7—14,
16-18, and 23-30.
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Application 13/078,196
directed to “significantly more” than the identified abstract idea itself. In
this regard, Appellant does not provide any persuasive argument or evidence
to show that the recited steps in claim 1 of “providing a set of dice,”
“placing at least one wager,” “rolling the set of dice,” and “paying a payout
amount,” considered individually and as an ordered combination, are more
than conventional steps or activities in a dice game, and contain an
“inventive concept” sufficient to transform the claimed abstract idea into
patent-eligible subject matter. See Alice, 134 S.Ct. at 2357—58 (“But
appending purely conventional steps to an abstract idea does not supply a
sufficiently inventive concept.”); Smith, 815 F.3d at 819. .
Appellant further contends that the Board routinely reverses rejections
under 35 U.S.C. § 101 and, in support, references exemplary Board
decisions. Appeal Br. 9-12. However, we need not rely on any of the non-
precedential Board decisions referenced by Appellant because the
precedential decisions Alice and Smith support the Examiner’s position.
Appellant also contends that the Patent Office routinely issues patents
for casino games that are played in a physical environment, which indicates
there is no categorical rule against casino games. Appeal Br. 12—13.
Additionally, Appellant contends that the Patent Office has classifications
for casino games played in a physical environment, also indicating there is
no such categorical rule. Appeal Br. 14. However, the Examiner is not
relying on a “categorical rule against casino games,” but rather, relies on
precedent. Accordingly, these contentions also are not persuasive.
For the above reasons, we sustain the rejection of claim 1, and claims
2, 3, 5, 7—14, 16—18, and 23—30 falling with claim 1, under 35 U.S.C. § 101
as directed to patent-ineligible subject matter.
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Appeal 2015-003656
Application 13/078,196
Claims 10, 18, 24, and 26
Appellant’s contentions amount essentially to stating what claims 10,
18, 24, and 26 recite and asserting generally that these claims are directed to
patent-eligible subject matter based on these recitations. Appeal Br. 14.
This is insufficient. See 37 C.F.R. § 41.37(c)(iv) (“A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim.”); see also In re Lovin, 652 F.3d
1349, 1356 (Fed. Cir. 2011). Thus, we sustain the rejection of claims 10, 18,
24, and 26 under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter.
Rejection of claims 1—3, 5, 7—14, 16—18, and 23—30
under 35 U.S.C. § 103(a)
Claims 1, 3, 5, 9, 11—14, 16, 17, and 23
The Examiner determines that Carroll anticipates claims 1,3, and 23
except for “the arrangement of indicia on the three dice.” Final Act. 5. For
claims 1, 3, and 23, and also for claims 5, 9, 11—14, 16, and 17, the
Examiner determines that the claimed arrangement of indicia would have
been an obvious rearrangement of printed matter, because there is “no new
and non-obvious functional relationship to the substrate.” Id. at 5—6.
According to the Examiner, Appellant’s “game functions as in the prior art
to have player place wagers to predict the occurrence of indicia displayed
upon the dice when rolled. [Appellant’s] selection and arrangement of
indicia and printed matter has not been shown to have any new and non-
obvious functional relationships to the dice or game layout.” Id. at 6.
In support, the Examiner cites to the decision of In re Gulack, 703
F.2d 1381, 1385 (Fed. Cir. 1983). Gulack states, “[w]here the printed matter
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Application 13/078,196
is not functionally related to the substrate, the printed matter will not
distinguish the invention from the prior art in terms of patentability.”
Gulack, 703 F.2d at 1385. Even if the claimed arrangement for the “first die
marking,” “second die marking,” and “third die marking” have some
function in the set of dice, “the critical question is whether there exists any
new and unobvious functional relationship between the printed matter and
the substrate.” See id. at 1386 (footnote and citation omitted). The
Examiner determines that the claimed die markings (printed matter) are not
functionally related to the substrate, and thus, the markings do not
distinguish the claimed set of dice from the prior art dice. We agree with the
Examiner that Appellant has not established the existence of a new and
unobvious functional relationship between the claimed die markings and the
dice. Ans. 19. In particular, Appellant has not established that the claimed
die markings are interrelated to the dice to an extent that the function of the
dice is dependent on the interaction between the die markings and dice.
As Appellant does not apprise us of any error in the Examiner’s
findings or reasoning with regard to the rejection of claims 1, 3, 5, 9, 11—14,
16, 17, and 23, we sustain the obviousness rejection of these claims.
Claims 7, 8, and 27—30
For claims 7, 8, and 27—30, the Examiner finds that Carroll discloses
or suggests the claimed features. Final Act. 5—6.
Appellant does not provide any specific argument for the rejection of
claims 7, 8, and 27—30. As Appellant does not apprise us of error in the
Examiner’s findings or reasoning, we sustain the obviousness rejection of
claims 7, 8, and 27—30.
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Appeal 2015-003656
Application 13/078,196
Claims 2, 10, 18, and 24—26
The Examiner’s rejection of claims 2, 10, 18, and 24—26 is premised
on each claim reciting limitations that are “old and well known.” Final Act.
6.
We agree with Appellant that the Examiner’s rejection is not
supported by evidence. Appeal Br. 17. Furthermore, the Examiner does not
articulate a reason with a rational underpinning to modify Carroll to result in
the subject matter recited in the claims. Accordingly, we do not sustain the
obviousness rejection of claims 2, 10, 18, and 24—26.
DECISION
We affirm the rejection of claims 1—3, 5, 7—14, 16—18, and 23—30
under 35 U.S.C. § 101 as being directed to patent ineligible subject matter.
We affirm the rejection of claims 1,3,5, 7—9, 11—14, 16, 17, 23, and
27—30, and reverse the rejection of claims 2, 10, 18, and 24—26, under 35
U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended according to 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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