Ex Parte Mick et alDownload PDFPatent Trial and Appeal BoardOct 23, 201714327538 (P.T.A.B. Oct. 23, 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. 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. 2 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. 3 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. 4 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.”). 5 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). 6 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. 7 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 8 Copy with citationCopy as parenthetical citation