Ex Parte Maack et al

Patent Trial and Appeal Board

Aug 24, 2016

13342782 (P.T.A.B. Aug. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/342,782 01/03/2012
36536 7590 08/24/2016
WYATT, TARRANT & COMBS, LLP
Attention: Lynn Minton, Paralegal
500 West Jefferson Street
Suite 2800
Louisville, KY 40202-2898
FIRST NAMED INVENTOR
Danielle Maack
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.
603743.lA 2354
EXAMINER
DENNIS, MICHAEL DAVID
ART UNIT PAPER NUMBER
3711
MAILDATE DELIVERY MODE
08/24/2016 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)
lJJ'UTED ST,,L\ .. TES PATENT AND TR .. ADE1\1ARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIELLE MAACK and JOHN YOUNG
Appeal2014-008382
Application 13/342,782
Technology Center 3700
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Danielle Maack and John Young (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner's decision rejecting claims 1-20 under
35 U.S.C. § 101 as being directed to non-statutory subject matter. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2014-008382
Application 13/342,782
CLAIMED SUBJECT MATTER
Appellants' claimed subject matter relates to "a new variation to
standard poker card games." Spec. 1. Claim 1 is the sole independent
claim on appeal and is reproduced below.
1. A poker game variation including the steps of:
a) prior to the dealing of the first round of a poker game
including a plurality of contestants, an extra card token is made
available for distribution to each contestant, wherein at least one
contestant takes possession of an extra card token in this manner;
b) a first round and any number of successive rounds are
then played with appropriate betting by contributing monetary
amounts into a community pot and comparison of resultant
individual hands to determine a winning hand according to
acceptable card combination hierarchy, wherein, at any time
once an initial individual winning hand is determined within a
round after each remaining hand at that time is shown in total for
review by each contestant, any remaining contestant possessing
an extra card token may then place said token into the pot in order
to have one further community card dealt for all remaining
contestants to utilize in combination with their own individual
hands such that any such remaining contestant may improve their
individual hand in order to defeat the initial individual winning
hand;
wherein said extra card token may only be played by a
remaining contestant if the initial individual winning hand of
another remaining contestant may be bested in terms of hand
strength by the inclusion of a single card in combination with the
token-playing contestants initial hand; and wherein if such extra
card combines with an initial hand of any remaining contestant
provides the strongest hand in comparison with the hands of all
other remaining contestants, then such hand is deemed the
subsequent individual winning hand, allowing for the holder of
such subsequent individual winning hand to be awarded at least
a portion of the pot for that hand; and wherein if said extra card
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Application 13/342,782
causes two or more contestants to have the same hand strength,
and thus to have the same effective subsequent individual
winning hand, and thus exceeding the hand strength of the initial
individual winning hand, then said contestants holding such
subsequent winning hands are to be awarded a split of at least a
portion of the pot for that hand.
LEGAL PRINCIPLES
A patent may be obtained for "any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof." 35 U.S.C. § 101. The Supreme Court has held that this provision
contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v.
CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409
U.S. 63, 67 (1972) ("Phenomena of nature, though just discovered, mental
processes, and abstract intellectual concepts are not patentable, as they are
the basic tools of scientific and technological work."). Notwithstanding that
a law of nature or an abstract idea, by itself, is not patentable, the application
of these concepts may be deserving of patent protection. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293-94
(2012). In Mayo, the Court stated that "to transform an unpatentable law of
nature into a patent eligible application of such a law, one must do more
than simply state the law of nature while adding the words 'apply it."' Id. at
1294 (citation omitted).
In Alice, the Court reaffirmed the framework set forth previously in
Mayo "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts." Alice, 134 S. Ct. at 2355. The first step in
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the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts." Id. If the claims are directed to a
patent-ineligible concept, then the second step in the analysis is to consider
the elements of the claims "individually and 'as an ordered combination'" to
determine whether there are additional elements that "'transform the nature
of the claim' into a patent-eligible application." Id. (quoting Mayo, 132
S. Ct. at 1298, 1297). In other words, the second step is to "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. (brackets in original)
(quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an
abstract idea "cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment or adding insignificant
post-solution activity." Bilski v. Kappas, 561 U.S. 593, 610-11 (2010)
(citation and internal quotation marks omitted). The Court in Alice noted
that "' [ s ]imply appending conventional steps, specified at a high level of
generality,' was not 'enough' [in Mayo] to supply an 'inventive concept."'
Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
ANALYSIS
The Examiner applied the Interim Guidance for Determining Subject
Matter Eligibility for Process Claims in View of Bilski v. Kappas (Fed. Reg.
Vol. 75, No. 143/Tuesday, July 27, 2010/Notices) (hereinafter "2010 Interim
Guidance") to determine that claim 1 is directed to a patent-ineligible
abstract idea. Ans. 2-3. In particular, the Examiner determined that the
claimed subject matter fails the machine-or-transformation test, stating:
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In this case, while machine elements including wagering tokens
and cards are recited to be manipulated as part of the claimed
invention, these machine element[ s] do[] not execute the process
steps. Rather, the process steps are performed by humans.
Moreover, cards are not transformed when they are dealt or
exposed by humans because they are still a deck of cards
unchanged in their physical disposition. They remain the same,
just arguably spread out over a greater area. To this extent,
claims 1-20 fail the machine-or-transformation test.
Id. The Examiner further determined that claims 1-20, taken as a whole, are
directed to an abstract idea, stating:
Lastly, the abstract invention is not considered a particular
and practical application of a judicial exception (i.e. Abstract
idea). In other words, the crux of the invention is directed to
mental processes of "betting" and "playing" and "winning."
Id. at 3.
The 2010 Interim Guidance applied by the Examiner was developed
before the Supreme Court issued its decisions in lvfayo and Alice, supra,
further explaining the law in this area. vVe apply the framevvork as set forth
by the Court in Afayo and reaffirmed by the Court in Alice, taking into
consideration the Examiner's identification of an abstract idea encompassed
by the claim, for determining whether the claims are directed to patent-
eligible subject matter.
Step one: Are the claims at issue directed to a patent-ineligible concept?
Appellants argue that the method of claim 11 is not directed to an
abstract idea because "[t]he claim steps require more than mental
1 Appellants argue claims 1-20 as a group. Appeal Br. 5-14; Reply Br. 2-
11. We select claim 1 as representative of the group, and claims 2-20 stand
or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
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considerations and assessments, but actual active procedures that require
operations with physical consequences." Reply Br. 6. In particular,
Appellants assert that "the claimed invention is not directed to solely a game
comprising mental steps; so much more is involved that elevates the claimed
method well above a simple thought process or abstract idea." Id. at 7.
According to Appellants:
Id.
[N]ot only is the invention of the pending claims not pertaining
to a mathematical formula on its own, nor an algorithm on its
own, nor a fundamental economic practice (or any other type of
abstract idea) that would thus create a monopolization effect over
an entire field, the claimed method brings something brand new
to the poker arena through the utilization of such a risk
assessment and token deployment operation.
We agree with the Examiner that claim 1 is directed to an abstract
idea. Claim 1, which recites "[a] poker game variation," includes a set of
steps that call for making a token available to players, playing a round of
poker (i.e., dealing hands, placing bets, and comparing hands to determine a
winning hand), and permitting a non-winning player to place a token into the
pot in exchange for one further community card to be dealt to potentially
improve any remaining player's hand. Appeal Br. 16-17 (Claims App.).
Appellants' Specification describes:
Such ... [a] token system can be utilized with all standard
poker variations, including Texas Hold'Em, Omaha, draw, and
stud, through the ability of the token player to request, in
exchange for the token itself placed into the pot, such one last
card to be dealt for the potential benefit of all remaining
contestants during the hand in question.
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Spec. 10. In particular, the described "methods of utilizing the pre-dealt
token(s) thus provide further potential excitement and interest within
existing poker variations by prolonging the final determination of a round
and allowing for certain contestants one final attempt to overcome a certain
losing hand." Id.
The Specification characterizes such use of tokens for dealing an extra
card as a variety of "insurance" to reduce the level of betting loss. Id. at 5-
6. The disclosed extra card token idea essentially provides a form of
insurance that provides to any remaining non-winning players a second
chance to beat the winning hand. In other words, Appellants' claimed
method is directed to rules for conducting a poker game variation involving
the basic concept of providing remaining players of a poker game with a
second chance opportunity to overcome a winning hand by redeeming a
symbolic token for an extra card. This basic concept is an abstract idea.
Further, we agree with the Examiner that the claimed physical method steps
are not tied to a particular machine and do not transform the cards into a
different state or thing. See Ans. 2--4.
In Alice, the Supreme Court drew a comparison between the claims
before it on appeal, directed to intermediated settlement, and the claims
before the Court in Bilski, directed to risk hedging, stating:
It follows from our prior cases, and Bilski in particular,
that the claims at issue here are directed to an abstract idea.
Petitioner's claims involve a method of exchanging financial
obligations between two parties using a third-party intermediary
to mitigate settlement risk.
Alice, 134 S. Ct. at 2356.
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A poker game (i.e., a wagering game) is, effectively, a method of
exchanging and resolving financial obligations based on probabilities
created during the distribution of the cards. Appellants' claims, directed to
rules for conducting a particular variation of a poker game, are similar to
other "fundamental economic practice[ s ]" identified as abstract by the
Supreme Court. See id. at 2357. Thus, Appellants' claimed "variation of a
poker game" is akin to the "method of exchanging financial obligations"
discussed in Alice. Moreover, the basic concept of providing a player of a
poker game with a second chance opportunity to overcome a winning hand
by redeeming a symbolic token provided before playing a round (i.e., a form
of insurance) is akin to the risk hedging in Bilski.
The rules recited in steps (b) and ( c) of claim 1 tell the players and the
dealer what to do in response to a particular event (i.e., a player attempts to
play the extra card token). These rules are similar to instructions to follow a
formula or an algorithm to conduct the game and resolve the parties'
financial obligations depending on the outcome. Therefore, when read as a
whole, independent claim 1 is directed to a set of rules for conducting a
variation of a poker game which, for the reasons discussed above, constitutes
a patent-ineligible abstract idea. As we noted above, according to Alice, the
question to be settled next is whether claim 1 recites an element, or
combination of elements, that is enough to ensure that the claim is directed
to significantly more than an abstract idea.
Step two: Is there something else in the claims that ensures that they are
directed to significantly more than a patent-ineligible concept?
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Appellants acknowledge that poker is a well-known game with
several variations, each including the conventional steps of dealing cards to
players, players placing bets into a pot, and comparing individual hands to
determine a winner. Spec. 2-3. According to Appellants, one popular poker
variation is known as "Texas Hold'Em," in which two hidden cards are dealt
to each player and several community cards are placed on the table for
combining with the hidden cards of each player. Id. at 3. "[S]uch a poker
variation has been well established for many years and has a set protocol and
basic rulebook in terms of card dealing and order in terms of betting." Id. at
4. Simply appending conventional steps, specified in general terms, is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice, 134 S. Ct. at 2357-60. The recitations in claim 1 pertaining to
conventional poker game steps are analogous to the recitation of a
conventional "computer" discussed in Alice.
Appellants argue that "the ability to 'transform' a standard hand result
in relation to a played extra card token at any permitted time, and the
subsequent potential to 'transform' the resultant pot distribution after the
standard hand has concluded, should not be disregarded." Reply Br. 10. In
particular, Appellants assert that the claim also recites "new and
unconventional steps show[ing], quite clearly, that there does exist an
'inventive concept' within the pending claims that elevates any possible
abstract idea determination to the point of patent eligibility." Id. at 11; see
id. (describing "such extra steps (extra card token, token play, modify hand
results if the extra card generates a favorable result to the token player,
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etc.)"). We disagree that these claim recitations amount to significantly
more than the abstract idea encompassed by the claim.
The claim here requires making a token available to players before
playing a round of poker. Appeal Br. 16, Claims App. The token itself is
merely symbolic and is not limited in the claim to a specific physical object.
See Spec. 10 (describing that "[t]he token itself may be of any actual
material and/or configuration"). The token is not used for any of its physical
characteristics, but, instead, merely symbolizes an agreed-upon rule that
allows a player holding a token to redeem it for a single conventional
playing card dealt face up in addition to the community cards already face
up on the table. See id. The steps of making an extra card token available to
players, playing a round of poker (i.e., dealing cards, placing bets,
determining a wining hand), allowing a player to redeem the token for an
extra community card, and, determmmg if any remammg player's hand
beats the original winning hand, amount to nothing significantly more than
instructions to a dealer and the players to apply the abstract idea of following
a set of rules for a poker game variation.
We acknowledge that not all inventions in the gaming arts would
necessarily fail to qualify as patent eligible subject matter under 35 U.S.C.
§ 101. See Jn re Srnith, 815 F.3d 816, 819 (Fed. Cir. 2016). Our reviewing
court "'could envisage, for example, claims directed to conducting a game
using a new or original deck of cards potentially surviving step two of
Alice." Id. However, as discussed above, the token in Appellants' claimed
poker game variation is merely symbolic of a rule directing the use of
conventional playing cards. As correctly noted by the Examiner, the playing
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cards "are still a deck of cards unchanged in their physical disposition."
Ans. 3. Moreover, even if the claimed poker game involves "physical"
aspects, as asserted by Appellants (Reply Br. 10), the fact that certain
'"physical" steps are necessary to perform the method does not show that
these steps are any more than routine and conventional in playing a poker
card game. See Alice, 134 S. Ct. at 2359-60. They constitute, pre- or post-,
extra-solution activity, and do not add enough to the claims to transform the
recited methods into patent-eligible subject matter. Bilski, 130 S. Ct. at
3230-31. Patent eligibility should not "depend simply on the draftsman's
art." See Alice, 134 S. Ct. at 2358-59 (quoting Parker v. Flook, 437 U.S.
584, 593 (1978) (internal quotation marks omitted)).
Accordingly, we find nothing in independent claim 1 to be sufficiently
transformative to render the recited method patent eligible. For these
reasons, we sustain the Examiner's decision rejecting claim 1, and claims 2-
20 falling therewith, under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter.
DECISION
The decision of the Examiner to reject claims 1-20 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
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