Ex Parte Lubin

Patent Trial and Appeal Board

Jan 13, 2017

13562178 (P.T.A.B. Jan. 13, 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.
13/562,178 07/30/2012 Daniel C. Lubin 060837.00012 4132
27305 7590 01/18/2017
HOWARD & HOWARD ATTORNEYS PLLC
450 West Fourth Street
Royal Oak, MI 48067
EXAMINER
LAYNO, BENJAMIN
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
01/18/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL C. LUBIN
Appeal 2014-003131
Application 13/562,178
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ERIC C. JESCHKE, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 23—37. App. Br. 1. Claims 1—22 have been canceled.
App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM but we designate our affirmance as a NEW GROUND
OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to games and gaming devices,
and more specifically, to improved pai gow poker games.” Spec. 12.
Appeal 2014-003131
Application 13/562,178
Claims 23, 31, and 35 are independent claims. Claim 23 is illustrative of the
claims on appeal and is reproduced below.
23. A method of playing a modified pai gow poker
game comprising the steps of:
dealing at least one card hand selected from the group of
card hands consisting of five cards, six cards, seven cards and
eight cards from a standard poker card deck of physical playing
cards including a wild card to each of the one or more players
and a dealer during the round of play;
evaluating a dealer's card hand to determine whether said
dealer's card hand comprises a dealer's pai gow hand having no
poker elements other than the value of individual singleton
cards;
identifying a highest value card of said dealer's pai gow
hand;
providing a push condition having a preselected card
value comprising a single card selected from the group of single
cards consisting of ace, king, queen, jack, ten and nine;
comparing the highest value card of the dealer's card
hand with the push condition to determine if the highest value
card of the dealer's card hand is of the same value as the
preselected card value; and
settling said round of play as a tie if the push condition is
satisfied.
THE REJECTION ON APPEAL
Claims 23—37 are rejected under 35U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter.
ANALYSIS
The Examiner provides analysis under the machine or transformation
test and concludes (a) “[t]he claimed invention does not recite a sufficient
tie to a machine or apparatus” and, (b) “there is no transformation in these
method claims.” Final Act. 2-4. The Examiner also reviews Bilski v.
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Application 13/562,178
Kappos, 561 US 593 (2010), stating that the claimed steps “are indicators
that Applicant is attempting to patent an abstract idea.” Final Act. 4—5.
According to the Examiner, “[i]t is this Examiner’s opinion that the factors
in this case weighing against patent eligibility far outweigh the factors
weighing toward patent eligibility.” Final Act. 6.
Appellant, on the other hand, contends that the appealed claims (a)
“are directed to a statutory category, namely a process;” (b) “do not
represent an attempt to patent an abstract idea;” and, (c) pass the
Machine or Transformation test because they are tied to a specific
machine” and because “they include transformation.” App. Br. 5—14.
In the record, both parties discuss CLS Bank Intern, v. Alice Corp.,
Ill F.3d 1269 (Fed. Cir 2013) regarding guidance on the “abstract idea”
exception to patent eligibility. Ans. 8; App. Br. 8—9. However, the Supreme
Court has subsequently provided further analysis of subject matter eligibility
(discussing both abstract ideas and the machine or transformation test in
doing so) in Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). We base
our analysis on the more recent Supreme Court’s Alice decision, and in
doing so, we designate our decision as a NEW GROUND because the Board
“relies on new facts and rationales not previously raised to the applicant by
the examiner” “and these facts [and rationales] are the principal evidence
upon which the Board’s rejection [is] based.” In reLeithem, 661 F.3d 1316,
1319—20 (Fed. Cir. 2011); see also In re Kronig, 539 F.2d 1300, 1302
(CCPA 1976) (“the ultimate criterion of whether a rejection is considered
‘new’ in a decision by the board is whether appellants have had [a] fair
opportunity to react to the thrust of the rejection.”).
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Application 13/562,178
In Alice, the Supreme Court explained the test for determining
whether a claim is directed to patent-ineligible subject matter as follows
(internal citations omitted):
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. If so, we then ask,
“[w]hat else is there in the claims before us?” To answer that
question, we 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. We have described
step two of this 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.”
Alice, 134 S. Ct. at 2355.
Accordingly, one must first determine whether the claims at issue are
directed to a patent-ineligible concept (such as an abstract idea). If so, one
must then determine whether there is something else that ensures that they
are directed to significantly more than a patent-ineligible concept.
As indicated supra, the Examiner rejects claims 23—37 as
“attempting to patent an abstract idea.” Final Act. 5. The Examiner
elaborates that “Applicant's claimed method, while arguably reciting a
number of physical steps of dealing cards is viewed here as an attempt to
claim a new set of rules for playing a card game.” Final Act. 5.
Consequently, as expressed by the Examiner, “[i]n this Examiner’s opinion,
claimed steps for following a set of rules qualifies as an abstract idea.”
Final Act. 5. In short, because “the claimed method requires no machine
implementation, requires no transformation of a particular article and is seen
as an attempt to receive patent protection for an abstract idea in the form of a
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Application 13/562,178
new set of rules, the Examiner maintains that the claimed method is NOT
patent eligible.” Final Act. 5; see also id. at 6.
Appellant argues all the claims together, contending that “Claims 23—
37 do not represent an attempt to patent an abstract idea” because, as
per MPEP § 2106, the claimed invention is not “wholly directed to subject
matter encompassing a judicially recognized exception.’” App. Br. 6, 7. In
other words, according to Appellant, the claims in question do not “recite
steps that are wholly directed to an abstract idea.” App. Br. 7. This is
because the claims require the performance of steps “relating to the dealing
or distributing of physical playing cards” and determining if criteria is met
“after playing cards are dealt.” App. Br. 7.
The Examiner, however, did not assert that the claims “wholly” recite
an abstract idea. See Final Act. 4—5. Instead, the Examiner states,
“[fallowing rules and instructions is a general concept that is abstract” and
that “[njone of the steps are performed by a machine, but rather are
performed by a human being.” Ans. 8; Final Act. 5. Appellant does not
dispute that the steps are performed by a human being1 but instead asserts
that “the human mind is incapable of providing random results which would
duplicate the random results achieved through physical playing cards.” App.
Br. 7; Reply Br. 8. In other words, “[cjlaims 23—37 require performance of
steps involving these playing cards that cannot be duplicated.” App. Br. 7.
1 Appellant states “A deck of physical playing cards is obviously not capable
of implementing the process claimed by Applicant, in that the cards are not
going to distribute themselves or engage in the determination or comparative
steps.” Reply Br. 3.
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Appellant provides no basis for surmising that “the human mind is
incapable of providing random results” duplicative of those achieved via
playing cards, and such statement is also not self-evident from the record.
We are instructed that “[attorney arguments in a brief cannot take the place
of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). We are
further instructed that lawyer arguments and conclusory statements which
are unsupported by factual evidence are entitled to little probative value. See
In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Accordingly, this
contention by Appellant is not persuasive that the Examiner’s analysis is
faulty.
Appellant further states, “Applicant’s claims clearly recite steps which
must be performed, not game rules.” App. Br. 8; Reply Br. 7. However,
Appellant does not explain or elaborate on the difference between “steps
which must be performed” and “game rules,” and as such, we are not
appraised of any meaningful difference between the two in the matter at
hand. We are further guided by our reviewing court in In re Smith, 815 F.3d
816 (Fed. Cir. 2016), which held that “the rejected claims, describing a set
of rules for a game, are drawn to an abstract idea” (emphasis added)).
Smith, 815 F.3d at 819 (“Here, Applicants’ claimed ‘method of conducting a
wagering game’ is drawn to an abstract idea much like Alice’s method of
exchanging financial obligations and Bilski’s method of hedging risk.”).
Appellant does not indicate how the recited limitations (with respect to claim
23, such limitations are directed to “dealing” cards; “evaluating” a hand;
“identifying” a high card value; “providing” a push; “comparing” a card
value with a push; and, “settling” the round of play, claims 31 and 35
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contain similar limitations) fail to pertain to a “set of rules for a game” (see
supra), and hence fail to be directed to an abstract idea.2
Appellant further argues that the claims “are directed to a statutory
category, namely a process” and that the claims “also pass the Machine or
Transformation test because they are tied to a specific machine.”3 App.
Br. 5, 10; see also Reply Br. 3—5. It is not disputed that the claim preamble
recites “[a] method of playing” a poker game (i.e., a “process”), and further,
the parties agree that “the machine-or-transformation test is ‘not the sole test
for patent eligibility,’” but that it is instead a useful clue or investigative
tool. Final Act. 4, see also App. Br. 10—11, 14; Reply Br. 3^4. However,
the Examiner finds that “[t]he claimed invention does not recite a
sufficient tie to a machine or apparatus.” Final Act. 3. In other words, as
per the Examiner, “[t]he machine or apparatus should implement the process
(method steps), and not merely be an object upon which the process
operates.” Final Act. 3. Consequently, according to the Examiner, the
limitations do not impose “a meaningful limit” on the claim scope and that
a machine or apparatus limitation should “use a machine involving more
than insignificant extra-solution activity.” Final Act. 4.
Regarding any transformation, the Examiner finds that the recited
“steps do not transform the cards or table layout into a different state of
2 In Smith, the court affirmed a rejection based on patent-ineligible subject
matter, determining that the claims “cover only the abstract idea of rules for
playing a wagering game and use conventional steps of shuffling and dealing
a standard deck of cards.” Smith, 815 F.3d at 817.
3 Appellant contends, “[a]ll of Applicant’s claims on appeal explicitly recite
‘physical playing cards’” and that “[a] randomly ordered physical deck of
playing cards arguably qualifies as a machine.” Reply Br. 6; App. Br. 11.
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thing.” Final Act. 4. Instead, as per the Examiner, “[tjhese steps only move
the cards from one place to another on the table layout, the cards and table
layout remain the same and do not transform into a different deck of cards or
different table layout.” Final Act. 4.
Again, there is no dispute that the claims positively recite “a standard
poker card deck” (see Ans. 10), however, Appellant contends that “the
playing cards play a significant part in permitting the claimed method to be
performed.” App. Br. 12; see also Reply Br. 4. Appellant’s argument is not
persuasive that the steps of dealing and evaluating a card hand is significant
extra-solution activity or that it transforms the cards into something
different. See App. Br. 14. Instead, we agree with the Examiner’s
assessment that the claim limitations simply “move the cards from one place
to another.” Final Act. 4. In other words, Appellant’s contention that the
claims “inherently require the use of a specific machine to perform the
steps” (App. Br. 13; see also Reply Br. 4), is not persuasive of Examiner
error in finding that such cards are merely “the object upon which the
process operates.” Final Act. 3. Hence, Appellant’s attempt to employ the
machine-or-transformation test as indicative of subject matter eligibility is
not persuasive.4
Accordingly, and based on the record presented, we are in agreement
with the Examiner that the claims are directed to an abstract idea.
4 Appellant also contends “that there is a transformation as to what the
wagers represent, namely, monetary value, and a change of ownership
thereof.” Reply Br. 5. However, as indicated by Appellant, the monetary
value of the placed wager is not subject to change, only its ownership. See
also Ans. 10.
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As discussed above, after determining that the claims at issue are
directed to a patent-ineligible concept (such as an abstract idea), one must
next determine whether there is something else in the claims such that they
are directed to “significantly more” than the abstract idea. See Alice, 134 S.
Ct. at 2355. Appending routine and conventional steps to an abstract idea
does not transform the abstract idea to patent-eligible subject matter. See
Alice, 134 S. Ct. at 2359-60.
Here, Appellant contends that this something else which will render
the claims “significantly more” than an abstract idea centers on the inability
of the human mind to provide random results duplicative of “the random
results achieved through physical playing cards.” App. Br. 7, Reply Br. 8;
see also App. Br. 12. As indicated above, such assertion is not supported by
evidence; and as such, Appellant’s assertion is not persuasive that the claims
are indeed, “significantly more” than an abstract idea. Appellant also
addresses “steps relating to the dealing or distributing of physical playing
cards” (App. Br. 7), with such steps being described by Appellant as those
that “must be performed” but which are not “game rules” (App. Br. 8; Reply
Br. 7). However, Appellant does not explain how such steps, which describe
that which is required for the performance of a hand, fails (as per Smith
supra) to be drawn to an abstract idea. See Smith, 815 F.3d at 819; see also
Ans. 8. Appellant also contends that “the playing cards play a significant
part in permitting the claimed method to be performed.” App. Br. 12.
However, as the Examiner indicates, the claimed deck is merely the object
upon which the process operates, the deck does not perform these steps
itself. See Final Act. 3.
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For the above reasons, we sustain the rejection of independent claims
23, 31, and 35, as well as the rejection of dependent claims 24—30, 32—34,
36, and 37 that stand or fall therewith.
DECISION
We AFFIRM the decision to reject claims 23—37 under 35 U.S.C.
§101, however, as indicated supra, we designate our decision as a NEW
GROUND because the Board relies on reasons different from and/or
additional to those stated by the Examiner and also to provide Appellant a
fair opportunity to respond.
Further, 37 C.F.R. § 41.50(b) provides that, “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Additionally, 37 C.F.R. § 41.50(b) also provides that Appellant
must, WITHIN TWO MONTHS, exercise one of the following options:
(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
proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless the affirmed rejection is overcome.
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If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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; 37 C.F.R. § 41.50(b)
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