Ex Parte Snow

Patent Trial and Appeal Board

Dec 15, 2017

13631821 (P.T.A.B. Dec. 15, 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.
13/631,821 09/28/2012 Roger M. Snow 3286-12423 (PA4021.ap.US) 3537
66137 7590 12/19/2017
TRASKBRITT, P.C. /Bally Gaming, Inc.
PO Box 2550
Salt Lake City, UT 84110
EXAMINER
DENNIS, MICHAEL DAVID
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
12/19/2017 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):
U S PTOMail @ traskbritt .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROGER M. SNOW
Appeal 2017-002828
Application 13/631,821
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Roger M. Snow (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner’s final decision rejecting claims 1—16. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant’s invention relates to poker-type casino wagering games.
Spec. 12.
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Application 13/631,821
Claims 1 and 6 are independent. Claim 1 is illustrative and is
reproduced below:
1. A method of administering a four-card wagering game,
comprising:
receiving an ante wager associable with a player;
providing virtual cards from a deck of cards electronically stored
by an at least partially electronic system, comprising:
providing five cards for a dealer hand, the five cards
derived from the deck of cards; and
providing five cards for a player hand associable with the
player, the five cards for the player hand derived from the
deck of cards;
determining a player hand rank of a best four-card player hand
from the five cards for the player hand associable with the player;
communicating, to the player, options comprising
a fold option, and
at least one play wager option limited to a maximum
multiple of the ante wager, the maximum multiple defined
based on a comparison of the player hand rank to a
predetermined triple down threshold ranking;
receiving an election selected by the player from the options; and
resolving all wagers.
THE REJECTION ON APPEAL
The Examiner has rejected claims 1—16 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
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ANALYSIS
Appellant argues claims 1—16 together. See Appeal Br. 10-50; Reply
Br. 2—14. We select claim 1 as the illustrative claim, and claims 2—16 stand
or fall with claim 1.
The rejection on appeal is based on the Examiner’s position that the
claims are directed to patent-ineligible subject matter. In order to assess the
propriety of this type of rejection, the Supreme Court has set forth “a
framework for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice Corp. Pty. Ltd. v. CLS Bank Int 7, 134
S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 132 S. Ct. 1289, 1296—97 (2012)). According to the Supreme
Court’s framework, it must first be determined whether the claims at issue
are directed to one of those concepts (i.e., laws of nature, natural
phenomena, and abstract ideas). Id. If so, we must secondly “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.” Id. (quoting Mayo, 132 S. Ct. at
1298, 1297). The Supreme Court characterizes the second step of the
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.’” Id. (alteration in the original) (quoting Mayo, 132 S. Ct. at
1294).
The Examiner determines that claim 1 is directed to non-statutory
subject matter based on a judicial exception without adding significantly
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Application 13/631,821
more to the judicial exception. Final Act. 2; Ans. 2. More specifically, the
Examiner determines that claim 1 is directed to an abstract idea involving a
set of rules to a card wagering game comprising dealing rules, wagering
rules, “determining” rules, and “resolving” rules. Ans. 2.
According to the Examiner, the set of rules recited in claim 1 is
similar to the set of rules used to conduct a wagering game, comprising
dealing rules, wagering rules, blackjack rules, and payout rules, that was
determined to be an abstract idea in In re Smith, 815 F.3d 816 (Fed. Cir.
2016). Id. The Examiner determines that claim 1 does not include
additional elements that are sufficient to amount to significantly more than
the judicial exception because the additionally recited elements, which
include wagers and virtual playing cards that are electronically stored by an
at least partially electronic system, are non-unique and traditional wagering
gaming elements. Id. at 3^4; see also Final Act. 2. As such, the Examiner
determines that, considering the additional elements individually and in
combination, there is no inventive concept sufficient to transform the
claimed subject matter into a patent-eligible application. Ans. 4—5.
Appellant contends that the Examiner fails to identify the supposed
abstract idea in a sufficiently clear and specific manner to provide notice and
enable Appellant to effectively respond. Appeal Br. 11, 16—17; see also
Reply Br. 3. Appellant more specifically argues that the Examiner treats the
claims at a high level of abstraction untethered to the claim language
(Appeal Br. 11); the Examiner does not identify the specific limitation(s)
that supposedly recite the abstract idea {id. at 16—17); and the Examiner does
not consider the basic character of the subject matter (id. at 18; see also
Reply Br. 3). According to Appellant, the Examiner oversimplified the
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claimed invention by not considering the Specification, the benefits of the
invention, nor other underlying purposes. Appeal Br. 17—20; see also Reply
Br. 4-5.
We are not persuaded that the Examiner failed in the respects alleged
by Appellant, and instead find that the Examiner treated claim 1 and the
limitations therein in the same manner as did the Federal Circuit with the
claims at issue in the Smith decision.
Claim 1 is drawn to “[a] method of administering a four-card [poker]
wagering game” comprising, inter alia, the steps of receiving an ante wager
associable with a player, providing virtual gaming cards electronically stored
by an at least partially electronic system, determining a player hand rank,
communicating options to the player, receiving an election of the options by
the player, and resolving the wagers. Appeal Br. Appx. 1 (Claims App.)
(emphases added). Thus, claim 1 is directed to a method of playing a four-
card poker game which is a wagering game—similar to the claims at issue in
Smith. In Smith the claims were directed to a “method of conducting a
wagering game” comprising a dealer following a set of dealing rules,
wagering rules, blackjack rules, and payout rules. See Smith, 815 F.3d at
817—18. The court stated: “On the first step, we conclude that Applicants’
claims, directed to rules for conducting a wagering game, compare to other
‘fundamental economic practice[s]’ found abstract by the Supreme Court.”
Id. at 818 (emphasis added); see also id. at 819 (“[W]e conclude that the
rejected claims, describing a set of rules for a game, are drawn to an abstract
idea.”).
Because claim 1 is drawn to a method of playing a four-card poker
comprising dealing rules, wagering rules, “determining” rules, and
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Application 13/631,821
“resolving” rules, we agree with the Examiner that claim 1 is directed to an
abstract idea, in the form of a fundamental economic practice, that involves
wagering and managing a game. This determination fulfills the first step of
the Alice framework in that we conclude that claim 1 is directed to an
abstract idea.
Appellant presents similar arguments with respect to the Examiner’s
initial mention of the game of bingo in the Final Action, maintaining
additionally that the Planet Bingo1 decision by the Federal Circuit is a
nonprecedential decision. Appeal Br. 24—26. Any arguments attempting to
factually distinguish the Planet Bingo decision are largely rendered moot, in
that the Federal Circuit precedential Smith decision is seen as being much
more closely on point to the issues presented here on appeal.
Appellant, noting that Alice characterizes abstract ideas as
fundamental practices, building blocks of an industry, and disembodied
concepts, further argues that the Examiner does not identify any aspect of
the claim as constituting a building block of the gaming industry. Id. at 16,
29-32. Appellant additionally contends that the particular, ordered
combination of the steps according to the claimed method is not a
fundamental practice or a basic tool of the gaming industry. Id. at 31—34
(referring to recitations in the claim for providing five cards and a
predetermined triple down threshold ranking, among other things). Rather,
according to Appellant, the particular recited steps provide a specific
implementation of a solution to a problem in the gaming arts. Id. at 34—35.
1 Planet Bingo, LLCv. VKGSLLC, 576 F. App’x 1005 (Fed. Cir. 2014).
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Appellant’s attempts to distance the subject matter of claim 1 from
general characterizations set forth in Alice are unavailing, given the
existence of Federal Circuit precedent that is very closely on point to the
present situation. As noted above, in Smith, the court determined that “rules
for conducting a wagering game, compare to other ‘fundamental economic
practice[s]’ found abstract by the Supreme Court.” See Smith, 815 F.3d at
818 (emphasis added). Thus, we are not apprised of any error in the
Examiner’s position.
Appellant contends that the claims are directed to a specific
implementation of a solution to a problem in the relevant arts like the claims
in Enfish,2 which were determined to be patent eligible. Appeal Br., passim.
As an example of this, Appellant points to the Specification as establishing
that the game is exciting, uncomplicated, and easy to learn. Id. at 22—23,
34—35.
This contention is unpersuasive. In Enfish, our reviewing court
instructs us that “[sjoftware can make non-abstract improvements to
computer technology just as hardware improvements can, and sometimes the
improvements can be accomplished through either route.” Enfish, 822 F.3d
at 1335. Thus, Enfish generally stands for the proposition that software may
be patent-eligible subject matter if it improves a computer’s functionality.
Here, the limitations at issue are not directed to an improvement to a
computer’s functionality, and the alleged improvements to the state of the art
identified by Appellant are simply additional rules of a card game, held to be
abstract ideas in Smith, as discussed above.
2 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
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Notwithstanding the close alignment of the type of claims here on
appeal and the claims at issue in Smith, Appellant contends that Smith should
not be applied in this case. Appeal Br. 12, 14—15, 22, 24, 36. Appellant
argues that, in Smith, the characterization of rules for playing a wagering
game as an abstract idea, is contrary to prior binding precedent from the
Supreme Court and is “out of step with” more recent, allegedly controlling
other precedent from the Federal Circuit, such as Enfish3 and the TLI
Communications4 decisions. Id. at 14. Appellant also argues that reliance
on Smith would improperly ignore the recent McRO3 4 5 decision, which
determined that an ordered combination of claimed steps using
unconventional rules that relate to sub-sequences of phonemes, timings, and
morph weight sets are not directed to an abstract idea. Reply Br. 4—5, 7—10.
However, as noted supra, Appellant’s claims are drawn to essentially
the same abstract idea, i.e., rules involving wagering and managing card
games, as were the claims at issue in Smith, which were determined as being
directed to an abstract idea of a fundamental economic practice. In contrast,
Appellant’s claims are not similar to the claims in Enfish, which relates to
3 Appellant observes that, in Enfish, the Federal Circuit noted that
fundamental economic and conventional business practices are often abstract
ideas whereas a specific implementation of a solution to a problem in the
software areas is not an abstract idea. Appeal Br. 14.
4 TLI Commons LLCv. AVAuto., LLC, 823 F.3d 607 (Fed. Cir. 2016).
Appellant observes that, in TLI Communications, the Federal Circuit noted
that fundamental practices long prevalent in our system constitute abstract
ideas. Appeal Br. 14. The claimed invention in TLI Communications relates
to a method for recording and administering digital images and does not
relate to a fundamental economic practice. TLI Commc ’ns, 823 F.3d at 610.
5 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016).
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Application 13/631,821
software that was determined to be patent-eligible subject matter because the
software was found to improve computer functionality. Although the
McRO6 * * 9decision makes mention of the use of “unconventional rules,” in
claims determined to be directed to patent-eligible subject matter, it does so
in the context of claims requiring an ordered combination of steps in relating
sub-sequences of phonemes, timings, and morph weight sets. McRO, 837
F.3datl308. We decline to extend McRO’s reach to purported
unconventional rules present in claim 1, in that we find Smith to be binding
on the facts and issues present in this appeal, in terms of the claimed subject
matter being directed to an abstract idea.
Next, moving to step 2 of the Alice analysis, we consider the elements
of claim 1 both individually and in combination and determine that the claim
does not amount to significantly more than a patent upon the abstract idea of
a fundamental economic practice that includes wagering and managing
games. Appellant contends that claim 1 provides an inventive concept that
is significantly more than a mere abstract idea. Appeal Br. 35. In support,
Appellant argues that features in claim 1 are unconventional and solution-
significant. Id. at 37-44; Reply Br. 4—5, 7—12. According to Appellant,
while the Examiner considers the use of wagers and a partial electronic
system, the Examiner does not consider the additional claim elements that
are not physical elements, such as the method acts as recited in the claim.
Appeal Br. 11, 37—38; Reply Br. 10-12. As such, Appellant argues that
claim 1 recites a particular, ordered combination of method acts that is
6 We also note that the claimed invention in McRO relates to data processing
involving automating an animation method and does not relate to a
fundamental economic practice. See McRO, 837 F.3d at 1307-08, 1314.
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unconventional because it is not widely prevalent, well-understood, routine
or conventional activities. Appeal Br. 41 44.
Features specific to the dealing rules, wagering rules, poker rank
rules, and payout rules either implement the abstract idea or are merely
insignificant pre-solution activity or insignificant post-solution activity. See
Parker v. Flook, 437 U.S. 584, 590 (1978) (“The notion that post-solution
activity, no matter how conventional or obvious in itself, can transform an
unpatentable principle into a patentable process exalts form over
substance.”); cfMayo, 132 S. Ct. at 1298 (“Purely ‘conventional or obvious’
‘[pre]-solution activity’ is normally not sufficient to transform an
unpatentable law of nature into a patent-eligible application of such a law.”
(alteration in original)). Like the Flook claims, claim 1 does not recite either
unconventional physical elements or a functional relationship between an
abstract idea and the physical elements.
Appellant’s argument that the particularities concerning the recited
dealing rules, wagering rules, poker rank rules, or payout rules are novel or
nonobvious and therefore, “unconventional,” is unavailing. See Appeal Br.
23. Even assuming that claim 1 is a novel and nonobvious modification, as
the Supreme Court has stated, “[t]he ‘novelty’ of any element or steps in a
process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188—
89 (1981). Thus, we are not apprised of error based on this argument.
Appellant argues that the claims do not risk tying up any abstract idea.
Appeal Br. 44^48; Reply Br. 13. However, “[wjhile preemption may signal
patent ineligible subject matter, the absence of complete preemption does
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not demonstrate patent eligibility.” Ariosa Diagnostics, Inc., v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
For these reasons, we sustain the Examiner’s decision rejecting claim
1, and claims 2—16 which fall therewith, as being directed to non-statutory
subject matter.
DECISION
The rejection of claims 1—16 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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