Ex Parte Mick et al

Patent Trial and Appeal Board

Oct 23, 2017

14327538 (P.T.A.B. Oct. 23, 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.
14/327,538 07/09/2014 Louis Joel Mick CHIPOK.P01 1057
49701 7590
Patrick M Dwyer
3525 SW Kenyon St
Seattle, WA 98126
10/25/2017 EXAMINER
DUFFY, DAVID W
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
10/25/2017 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):
pmdwyer @ earthlink. net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LOUIS JOEL MICK and KEVIN MARTIN KELLER1
Appeal 2016-004582
Application 14/327,538
Technology Center 3700
Before JENNIFER D. BAHR, JAMES P. CALVE, and
ARTHUR M. PESLAK, Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Office
Action rejecting claims 14 and 17. Br. 3. Claims 1—13, 15, 16, and 18—20
are cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Open Face Chinese Poker Licensing Company LLC as
the real party in interest. Br. 1.
Appeal 2016-004582
Application 14/327,538
CLAIMED SUBJECT MATTER
The claims are directed to machine-based play of games of chance
such as poker and particularly Open Face Chinese Poker. Spec. 1:10-13.
Claim 14, the sole independent claim on appeal, is reproduced below.
14. A method for a special purpose computing device to
display a game of Open Face Chinese Poker for a human
player, the method comprising:
executing, by the special purpose computing device, a set
of instructions stored on a non-transitory tangible machine
readable storage medium, the stored set of instructions
comprising a game rule set, the game rule set further
comprising well known rules for the game with the addition of
a set of rule variations that include a time limits/forfeits rule, a
simultaneous showdown rule, an asymmetric game scoring and
royalty modifications rule, a face down play rule, an exchange
cards rule, a surrender rule, an identity coded computer play
history rule, a no foul rule, a trash hand rule, a multiple
instances rule and a computer co-play rule;
the instructions, when executed by the special purpose
computing device, cause the computing device to:
receive and store from a human player a rule variation
selection selected from the set of rule variations;
send data configured to create a first graphic display of a
game of Open Face Chinese Poker;
receive and store a first input from the human player;
determine, using the game rule set and the input from the
human player, a first next game play;
send data configured to create a second graphic display
of the determined first next game play:
the instructions further causing the apparatus to receive and
store second and successive inputs from the human player and to
determine second and successive next game plays, and to send data
configured to create third and successive graphic displays of
determined second and successive next game plays.
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Appeal 2016-004582
Application 14/327,538
REJECTIONS
Claims 14 and 17 are rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.
Claims 14 and 17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shahade (“How to Play Open-Face Chinese Poker,” pub.
Oct. 18, 2012, at www.cardplayer.com/poker-news) and Sines (US
2004/0251630 Al, pub. Dec. 16, 2004).
ANALYSIS
Claims 14 and 17
Rejected Under 35 U.S.C. §101
The Examiner finds that claim 14 is directed to the abstract idea of
organizing the human activity of managing a game of cards by receiving a
desired rule set from a player and carrying out the steps of the card game
based on the rules selected. Ans. 2.
Appellants argue that the basic game of Open Face Chinese Poker
(OFCP) may be an abstract idea, but claim 14 delimits a particular form of
OFCP, and does not tie up the entire world of OFCP play because it requires
(1) executing by a special purpose computing device a set of instructions
with various game rules and variations and (2) it receives and stores a rule
selection variation from a player choosing from the rule variations. Br. 6.
As a preliminary matter, we find that no meaningful distinction exists
between independent claim 14 and dependent claim 17. Claim 17 recites
that the receiving and storing input step, and the determining and displaying
of a next game steps of claim 14 relate to a first human player and then these
steps are performed for a second human player in the context of a game play
of claim 14.
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Appeal 2016-004582
Application 14/327,538
Alice Step One
We determine that the claims describe a set of rules and variations for
a game and therefore are directed to an abstract idea. In re Smith, 815 F.3d
816, 818-819 (Fed. Cir. 2016); see Planet Bingo, LLCv. VKGSLLC, 576 F.
App’x 1005, 1007—1008 (Fed. Cir. 2014). Claim 14 recites the game rule set
comprises “well known rules for the game” and a set of rule variations. That
a player may select a set of rule variations from among the predefined set of
rule variations does not alter the fact that claim 14 describes a set of rules for
the game of OFCP and method of playing that game. The player can choose
which rule variations govern a particular game, but the rules for a particular
game and method of choosing those rules are what is claimed. The process
of selecting and sorting information based on user interest and subject matter
is an abstract idea. Evolutionary Intelligence LLC v. Sprint Nextel Corp.,
677 F. App’x 679, 680 (Fed. Cir. 2017); see Affinity Labs of Texas, LLC v.
Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016) (concept of
delivering user selected media to portable devices is an abstract idea);
Accenture Global Servs., GmbHv. Guidewire Solutions, Inc., 728 F.3d
1336, 1344 (Fed. Cir. 2013) (generating tasks for insurance claim processing
based on rules is an abstract idea).
The claims recite that player rule variation selections are received and
stored and a graphic display of the game is created. Thereafter, input from a
player is received and stored, and the game is played according to the game
rule set with the graphic display updated and further inputs from a player are
received and stored with successive graphic display updates of game play
according to the game rule set. In other words, the game is played using the
general rules and any game rule variations that a player selects.
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Appeal 2016-004582
Application 14/327,538
Alice Step Two
Step two of the Alice test requires us to consider whether the claim
elements considered individually and as an order combination transform the
claim into a patent-eligible application. Alice Corp. Pty, Ltd. v. CLS Bank
Int’l, 134 S. Ct. 2347, 2350 (2014). The recital that the set of instructions
for the game play are executed on a special purpose computing device does
not transform the abstract idea into patent eligible subject matter. The
claimed special purpose computing device is merely a generic computer that
uses conventional hardware to perform conventional computing and network
functions. The Specification discloses computing device 200 as including
processor(s) 204, memory 206, storage 208, I/O interfaces 210, I/O ports
212 all interconnected via bus 202. Spec. 31:3—4, Fig. 2. Tangible storage
media 220 is installed or installable on computing apparatus 200 and
includes the instructions. Id. at 31:5—7.
The generic computer automates manual play of the abstract idea of
an OFCP card game. Such automation and use of a conventional computer
implementation in a customary manner does not transform the abstract idea
into a patent-eligible invention. See Credit Acceptance Corp. v. Westlake
Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017) (“mere automation of manual
processes using generic computers does not constitute a patentable
improvement in computer technology.”); Cf. Prism Techs. LLC v. T-Mobile
USA, Inc., 2017 WL 2705338, *3 (Fed. Cir. June 23, 2017) (“asserted claims
recite no more than the sort of ‘perfectly conventional’ generic computer
components employed in a customary manner that we have previously held
insufficient to transform the abstract idea into a patent-eligible invention.”).
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Appeal 2016-004582
Application 14/327,538
The conventional nature of the computer implementation is evidenced
by the fact that the claimed game play method receives and stores input from
a human player, initializes deck and card objects randomized in the deck,
deals each human player a first set of card objects, and conducts game play
using any of the rule variations that are selected. Id. at 31:8—32:10, Fig. 3.
The Specification confirms this conventional implementation by
disclosing that “it is expected that some forms of the disclosed gaming
system can be performed by humans without the aid of machines or other
technology at all.” Spec. 17:4—6, id. at 22:5—6 (“the game improvements
may be played with or without aid of machines or computers”); see Br. 7.
A computer or other digital computing device including a special
purpose casino game machine with a processor can be used. Spec. 26:5—11.
Many other, different game playing systems can be used. Id. at 17:22—24.
When talking about machines and other playing devices, it is
intended that all such machines and devices (for example, and
without limitation, casino machines, computing devices, PDAs,
Cell Phones, personal computers, specific purpose hand-held
gaming devices, and the like) now known or later developed be
included in the scope of this disclosure.
Id. at 22:6—10. Absent from Appellants’ disclosure is any improvement to
the functioning of the computer. See Alice Corp. Pty. Ltd. v. CLS Banklnt’l,
134 S. Ct. 2347, 2357 (2014) (“method claims, which merely require generic
computer implementation, fail to transform that abstract idea into a patent-
eligible invention.”); Spec. 1:10-13 (the disclosure relates to “machine play
of games of chance such as card games”), id. at 1:15—20 (many card games
including OFCP have been adapted for machine play with rule variations).
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Appeal 2016-004582
Application 14/327,538
The claimed rule variations are insignificant post-solution activities to
the patent-ineligible automation of OFCP games on generic computers using
conventional functions such as receiving player input, making calculations,
and displaying game play to players. Spec. 26:28—27:7. Shahade discloses
that OFCP variations have been played for years, and players have suggested
further variations to the rules of OFCP play. Shahade, 3. Shahade discloses
a new official royalty scoring developed for OFCP. Id. Shahade discloses
one player’s proposal to use clocks as timers for game play. Id. Appellants
even disclose an OCFP iPad/iPhone application that allows players to
change or eliminate royalties for various hands and games. Spec. 5:23—26.
Appellants’ arguments that the claimed method does not pre-empt the
abstract idea of basic OFCP play (Br. 9) are without merit. Br. 9. Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(questions on preemption are resolved by the § 101 analysis); see also Smart
Sys. Innovations, LLC v. Chicago Transit Auth.,___ F.3d____, 2017 WL
4654964, *9 (Fed. Cir. Oct. 18, 2017) (same). Moreover, claim 14 covers “a
game rule set” comprising “well known rules for the game” and “a set of
rule variations.” The computing device can “receive and store from a human
player a rule variation selection” but the rule variations may be optionally
selectable by a player. Spec. 26:22—25. A player is not required to select
any rule variation(s) that deviates from basic OFCP game play. In any case,
having considered the elements of the claims individually and as an ordered
combination, we determine that claims 14 and 17 automate a game of chance
on generic computers using conventional functions and lack an inventive
step that would transform the abstract idea into patent eligible subject
matter. Thus, we sustain the rejection of claims 14 and 17.
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Appeal 2016-004582
Application 14/327,538
Claims 14 and 17
Rejected Over Shahade and Sines
Because claims 14 and 17 are directed to patent-ineligible subject
matter, we do not reach the prior art rejection of those claims. See In re
Comiskey, 554 F.3d 967, 973 (Fed. Cir. 2009) (declining to reach the prior
art rejection when claims are barred at the threshold by § 101); Ax parte
Gutta, 93 USPQ2d 1025, 1036 (BPAI 2009) (precedential) (same).
DECISION
We affirm the rejection of claims 14 and 17 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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