Ex Parte Hwang

Patent Trials and Appeals Board

Mar 18, 2019

14586535 - (D) (P.T.A.B. Mar. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/586,535 12/30/2014
97462 7590 03/18/2019
Mark A. Litman & Associates, P.A.
7001 Cahill Road, Ste. ISA
Edina, MN 55439
FIRST NAMED INVENTOR
Jeffrey Hwang
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.
364-00lUSl 1057
EXAMINER
DENNIS, MICHAEL DAVID
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
03/18/2019 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 JEFFREY HWANG
Appeal2017-007367
Application 14/586,535
Technology Center 3700
Before MICHELLE R. OSINSKI, JEREMY M. PLENZLER, and
GEORGE R. HOSKINS, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Decision rejecting claims 1-18 under 35 U.S.C. § 101. An oral
hearing was held on February 14, 2019, and a transcript of that hearing is
included in the record ("Transcript"). We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
Appeal2017-007367
Application 14/586,535
CLAIMED SUBJECT MATTER
Claim 1 is independent, with claims 2-18 depending therefrom.
Claim 1 is reproduced below (reformatted for clarity):
1. A method of performing a wagering event comprises:
providing a randomized set of a single deck of at least 52
physical playing cards;
a player position posting a blind game wager;
the player position and a dealer position receive five
down physical playing cards from the randomized set;
a three-card community physical playing card flop from
the randomized set of at least 52 physical playing cards is
placed face up;
the player position must make a play wager of at least IX
of the game wager, or folds to end the wagering event;
after making the play wager, the dealer position hand is
turned over and a tum card and a river card are dealt from the
randomized set of at least 52 physical playing card to form a set
of five community physical playing cards;
two physical playing cards from the player position five-
card physical playing card hand are positioned at a designated
location on a gaming table; and
wagers are resolved with at least the blind game wager or
the play wager against a paytable, wherein the player position,
using the two physical playing cards from the player position
five-card physical playing card hand and three physical playing
cards from the set of physical playing card community cards:
a) must make a five-card poker hand rank with a straight
or better, and beat the dealer hand of physical playing
cards according to 5-card poker ranks to win,
b) ties in 5-card ranks of physical playing card hands
push all wagers, and
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Application 14/586,535
c) a player position hand 5-card poker rank lower than
the dealer position 5-card poker hand loses both the game
wager and play wager.
Appeal Br. Claims Appendix dated Jan. 18, 2017.
OPINION 1
The Examiner rejects claims 1-18 under 35 U.S.C. § 101 as directed
to ineligible subject matter. Final Act. 2-3; Ans. 2-3. Appellant argues
claims 1-18 as a group. Appeal Br. dated Oct. 5, 2016 ("Appeal Br."), 10-
29. We select claim 1 as representative. Claims 2-18 stand or fall with
claim 1. See 37 C.F.R. § 4I.37(c)(l)(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'!, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
1 We decline to comment on Appellant's general allegations regarding
constitutional issues. See Appeal Br. 26-29.
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Application 14/586,535
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
(1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("Memorandum"). Under that
guidance, we first look to whether the claim recites:
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Application 14/586,535
( 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)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception.
See Memorandum.
The Examiner determines that claim 1 is directed to a judicial
exception, namely a fundamental economic practice (i.e., a method of
organizing human activity) and the additional elements are not sufficient to
amount to significantly more than the judicial exception. Final Act. 2;
Ans. 2. The Examiner explains that claim 1 is like those addressed by the
Federal Circuit in In re Smith, 815 F.3d 816 (Fed Cir. 2016). Ans. 2.
Appellant's contentions in response to the rejection are based on a
disagreement with the state of the law concerning § 101. 2 See, e.g., Appeal
2 Appellant references Declarations in its Appeal Brief. See Appeal Br. 23-
24. As Appellant acknowledges, those Declarations are not properly before
us. Id. at 35; see also Advisory Action mailed Sept. 14, 2016.
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Br. 19 ("the CAFC ha[ s] asserted an absolute fact to the effect that wagering
events using playing cards are abstract ideas. See also the CAFC decision of
... In re Smith," in which the Federal Circuit asserted this purportedly
"unwarranted and illegal assertion of fact"). Appellant offers no explanation
as to how claim 1 differs from those found ineligible in In re Smith for
purposes of§ 101. In fact, Appellant does not even allege the claims differ
in any meaningful way. Indeed, at oral hearing, when asked how claim 1
differs from those at issue in In re Smith, rather than identifying any
differences, Appellant expressed disagreement with the In re Smith decision.
See Tr. 3 :20-22 ("In re Smith misstated the law, they misstated the facts and
they are in fact abusing Bilski, Myriad, Prometheus and Alice .... ").
For at least these reasons, we are not apprised of error in the
Examiner's determination that claims 1-18 are directed to ineligible subject
matter.
Moreover, we agree with the Examiner that claim 1 is directed to
ineligible subject matter, as claim 1 from the pending application is virtually
identical to claim 1 from In re Smith. In re Smith concerned a patent, titled
"Blackjack Variation." In re Smith, 815 F.3d at 817. The claim addressed
in In re Smith related to "[a] method of conducting a wagering game" and
recited various rules for a game played with "physical playing cards." Id.
The pending application is titled "Wagering Game Variation Based on
Omaha Poker." Spec. 1. Similar to In re Smith, claim 1 of the pending
application relates to "[a] method of performing a wagering event" and
recites various rules for a game played with "52 physical playing cards."
The court in In re Smith "conclude[ d] that Applicants' claims, directed to
rules for conducting a wagering game, compare to other 'fundamental
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Application 14/586,535
economic practice[ s]' found abstract by the Supreme Court" and ultimately
determined that the claimed method "is drawn to an abstract idea much like
Alice's method of exchanging financial obligations and Bilski' s method of
hedging risk." In re Smith, 815 F .3d at 819. Based on the analysis from In
re Smith, we determine that claim 1 is directed to a fundamental economic
practice.
Following Office guidance, we are instructed next to determine
whether the claim recites "additional elements that integrate the judicial
exception into a practical application (see MPEP § 2106.05(a}-(c), (e}-(h))"
and, if not, whether the claim adds a specific limitation beyond the judicial
exception that is not "well-understood, routine, conventional" in the field or
"simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception." See Memorandum. We know, from In re Smith, that claim 1
does not include any limitations sufficient to save it from ineligibility. As
explained above, for purposes of the § 101 analysis, claim 1 in the pending
application is virtually identical to that addressed by the court in In re Smith.
There, the court explained that "the rejected claims do not have an 'inventive
concept' sufficient to 'transform' the claimed subject matter into a patent-
eligible application of the abstract idea." In re Smith, 815 F.3d at 819. The
court also explained that "shuffling and dealing a standard deck of cards are
'purely conventional' activities." Id. We also determine, therefore, that
claim 1 does not integrate the judicial exception into a practical application
or add a specific limitation beyond the judicial exception that is not "well-
understood, routine, conventional" in the field.
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Application 14/586,535
Accordingly, like In re Smith, we determine that claim 1 of the
pending application is ineligible under § 101.
DECISION
We AFFIRM the Examiner's decision to reject claims 1-18 under 35
U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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