Ex Parte LubinDownload PDFPatent Trial and Appeal BoardJan 13, 201713562178 (P.T.A.B. Jan. 13, 2017) Copy Citation 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 following e-mail address(es): IPDocket@HowardandHoward.com dtrost @ HowardandHoward. com tmorris @ Howardandhoward. com 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. 2 Appeal 2014-003131 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.”). 3 Appeal 2014-003131 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 4 Appeal 2014-003131 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. 5 Appeal 2014-003131 Application 13/562,178 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 6 Appeal 2014-003131 Application 13/562,178 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. 7 Appeal 2014-003131 Application 13/562,178 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. 8 Appeal 2014-003131 Application 13/562,178 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. 9 Appeal 2014-003131 Application 13/562,178 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. 10 Appeal 2014-003131 Application 13/562,178 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) 11 Copy with citationCopy as parenthetical citation