Ex Parte Snow

Patent Trials and Appeals BoardJun 28, 2019

13549969 - (D) (P.T.A.B. Jun. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/549,969 07/16/2012 66137 7590 07/02/2019 TRASKBRITT, P.C. /Bally Gaming, Inc. PO Box 2550 Salt Lake City, UT 84110 FIRST NAMED INVENTOR Roger M. Snow 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. 3286-10840.2(PA3795.ap.US 8027 EXAMINER PIERCE, WILLIAM M ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 07/02/2019 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): USPTOMail@traskbritt.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROGER M. SNOW1 Appeal2017-0063152 Application 13/549,969 Technology Center 3700 Before JAMES P. CALVE, WILLIAM A. CAPP, and LEE L. STEPINA, Administrative Patent Judges. Opinion for the Board filed by STEPINA, Administrative Patent Judge Opinion concurring filed by CAPP, Administrative Patent Judge STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134 from the Examiner's decision to reject claims 1-32. We have jurisdiction under 35 U.S.C. Â§ 6(b). 1 The Appeal Brief indicates that Bally Gaming, Inc., (D/B/ A Bally Technologies, Inc.), and Scientific Games Corporation are the real parties in interest. Appeal Br. 2. 2 A hearing was conducted on June 6, 2019. Appeal2017-006315 Application 13/549,969 We affirm. CLAIMED SUBJECT MATTER The claims are directed to methods for conducting the play of a card wagering game using physical playing cards and a table. Spec. ,-J,-J 2, 30. Claim 1, reproduced below with paragraph numbering and emphasis added, is illustrative of the claimed subject matter: 1. A method of conducting play of a wagering game, the method comprising: [i] providing a gaming table comprising a betting layout illustrated to define, at each player position of a plurality of player positions of the gaming table, a plurality of distinct betting areas comprising an ante wager area and a play wager area; [ii] a dealer receiving an Ante wager, in the form of at least one chip placed on the ante wager area of one player position of the plurality of player positions, for play of a hand in the wagering game from a player associated with the one player position; [iii] the dealer providing on the gaming table a plurality of randomly ordered cards, from a deck of fifty-two physical playing cards, to be used by the player associated with the one player position in play of the hand; [iv] the dealer enabling the player associated with the one player position to view at least one card of the plurality of randomly ordered cards to be used exclusively by the player in play of the hand; [ v] after the dealer enabling the player associated with the one player position to view the at least one card and prior to enabling the player associated with the one player position to view any additional cards, the dealer receiving from the player associated with the one player position an initial check election leaving the play wager area unoccupied and selected, during play of the hand, from provided options consisting of the initial check election and a play wager in the form of at least one other chip to exclusively occupy the play wager area and place an initial value at risk subsequent to and in addition to the Ante wager, only a single play wager being acceptable during a single round of play; 2 Appeal2017-006315 Application 13/549,969 [ vi] the dealer enabling the player associated with the one player position to view at least another card of the plurality of randomly ordered cards to be used by the player in play of the hand; [ vii] the dealer receiving from the player associated with the one player position another election selected, during play of the hand, from other provided options consisting of a fold election to leave the play wager area unoccupied and the play wager in the form of at least one other chip to exclusively occupy the play wager area and place another value at risk subsequent to and in addition to the Ante wager, the another value limited to a lower value than the initial value, only a single play wager being acceptable during a single round of play; and [ viii] the dealer resolving the Ante wager and the play wager. Appeal Br. 52-53 (Claims App.). REFERENCES RELIED ON BY THE EXAMINER Hesse Feola Merlino Jones US 6,332,614 Bl us 5,762,340 us 5,657,993 us 5,380,012 Dec. 25, 2001 June 9, 1998 Aug. 19, 1997 Jan. 10, 1995 THE REJECTIONS ON APPEAL3 I. Claims 1-32 are rejected under 35 U.S.C. Â§ 112, second paragraph, as indefinite. II. Claims 1-32 are rejected under 35 U.S.C. Â§ 101 as being directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. 3 A rejection under 35 U.S.C. Â§ 102(f) was withdrawn in the Advisory Action dated February 22, 2016. 3 Appeal2017-006315 Application 13/549,969 III. Claims 1, 2, 4, 6-9, 11-18, 20, and 32 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Jones, Feola, Hesse. IV. Claims 3, 5, 10, 19, and 21-31 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Jones, Feola, Hesse, and Merlino.4 OPINION Rejection I, Indefiniteness The Examiner determines that the term "a single round of play," appearing in each of independent claims 1, 21, and 31, is not clear. Final Act. 2. Specifically, the Examiner states that this language is unclear because "no rounds are recited and one cannot determine when a round begins or ends." Id. Appellant contends that the term "round" is used in the Specification, consistently, to refer to a time period beginning when an ante wager is accepted and ending when all the wagers are resolved. See Appeal Br. 14- 15 (citing Spec. ,-J,-J 7, 13, 34, 43, 51, 52). Appellant contends that the use of the term "round" in the Specification does not refer to "rounds of wagering," a term Appellant uses to refer to time periods limited to when instructions to raise, bet, fold, or check are received. Id. at 15. Appellant also refers to two websites in support of the definition of a round of play Appellant proposes. Id. ( citing oag.ca.gov/sites/all/files/agweb/pdfs/gambling/BGC war.pdf and oag.ca.gov/sites/all/files/agweb/pdfs/gambling/lodiutlimate-texas-hold- em-rules.pdf). 4 The heading for this rejection on page 35 of the Final Action does not list Hesse as one of the references applied in the rejection of these dependent claims. We understand this to be a ministerial error. 4 Appeal2017-006315 Application 13/549,969 In response, the Examiner refers to a dictionary entry for the term "round," which provides multiple definitions of the term.5 Ans. 3-4. One of these defines a "round" as "a regularly recurring sequence of activities or functions." Id. at 4. The Examiner states, "claim 1 does not clearly indicate the 'regularly recurring sequence of activities or functions' to which it is referring in the function of 'only a single play wager being acceptable during a single round of play,"' and, in the rejected claims, "one would have to speculate as to which sequence of functions are related to the 'round."' Id. Appellant has the better position because, in accordance with Appellant's arguments, paragraphs 7, 13, 34, 43, 51, and 52 of the Specification imply that a "round" refers to the time period beginning with the ante and concluding with resolution of all wagers. See, e.g., Spec. ,i 7 ("Many of the poker variants mentioned above are played against a dealer hand. In more traditional forms of poker, players play against other players, and a highest ranking hand wins the round."), ,i 51 ("In the preferred embodiment, Player 2 may not make any further wagers, and checks until the completion of the round."). In contrast, when referring to the process of taking bets from the player or players ( a period of time contained within the above-noted "round") the Specification refers to a "round of wagering" rather than just a "round." See id. Accordingly, we agree with Appellant's proposed interpretation of the "round of play" recited in each of independent claims 1, 21, and 31. Therefore, we do not sustain the rejection of claims 1, 21, and 31 and the claims depending therefrom as indefinite. 5 Pages 3-4 of the Answer do not indicate which dictionary the Examiner used. 5 Appeal2017-006315 Application 13/549,969 Rejection II, Eligibility 6 Appellant makes arguments for the patent eligibility of claims 1-32 as a group. See Appeal Br. 27-50. We select claim 1 as the representative claim, and claims 2-32 stand or fall with claim 1. See 37 C.F.R. Â§ 41.37(c)(l)(iv). An invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. Â§ 101. However, the Supreme Court has long interpreted 35 U.S.C. Â§ 101 to include implicit exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int'!, 573 U.S. 208, 216 (2014) ( citation omitted). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court's two-step framework, described in Mayo and Alice. See Alice, 573 U.S. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework, we first determine what concept the claim is "directed to." Id. at 219 ("On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk."). 6 During the hearing conducted on June 6, 2019, Appellant relied on substantially similar arguments in support of the patent eligibility of the claims on appeal in Appeal Nos. 2017-009438 and 2017-002162, both of which have method claims directed to card games and have the same real parties in interest as the present Appeal. 6 Appeal2017-006315 Application 13/549,969 Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191 (1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267-68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). If the claim is "directed to" an abstract idea, we tum to the second step of the Alice and Mayo framework, where "we must examine the elements of the claim to determine whether it contains an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent- eligible application." Alice, 573 U.S. at 221 ( citation omitted). "A claim that recites an abstract idea must include 'additional features' to ensure 'that the [claim] is more than a drafting effort designed to monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77) (alteration in original). "[M]erely requir[ing] generic computer implementation[] fail[ s] to transform that abstract idea into a patent-eligible invention." Id. In January of 2019, the PTO published revised guidance on the application ofÂ§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter "Memorandum"). Under Step 2A of that guidance, we first look to whether the claim recites: 7 Appeal2017-006315 Application 13/549,969 (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP Â§ 2106.05(a)-(c), (e)-(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, in Step 2B, to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional" in the field (see MPEP Â§ 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Memorandum. Step 1 - Statutory Category Claim 1 recites a method of conducting play of a wagering game, and, therefore, is a process. See Appeal Br. 52 (Claims App.). Step 2A, Prong 1 - Recitation of Judicial Exception In determining that claim 1 is directed to a judicial exception to patent eligibility, the Examiner takes the position that the claim "is viewed here as an attempt to claim a new set of rules for playing a card game," which, the Examiner finds "qualifies as an abstract idea." Final Act. 8. Acknowledging that claim 1 requires process steps involving physical action, the Examiner finds that "[ fJrom the specification, it is clear that [Appellant's] ... underlying invention attempts to describe how a game is to 8 Appeal2017-006315 Application 13/549,969 be played[, and t]he use of action verbs to recite [Appellant's] ... rules intending to exclude others from practicing does not render the invention patent eligible." Id. at 9. After referring to various Federal Circuit and Supreme Court decisions addressing patent eligibility (Appeal Br. 27-29), Appellant asserts that the Examiner erred inasmuch as: The claimed methods are not directed to abstract ideas because they involve a new and useful variation in the administration of wagering games involving player-versus- dealer hold 'em games involving prohibiting folding during an initial round of betting while requiring later-made play wagers to be of diminished amountsl7l, where only one play wager is acceptable during a given round, in live, dealer-administered format for monetary value, which is an advance in the technical field of wagering game administration. Id. at 29 ( emphases added). Thus, Appellant asserts that the method recited in claim 1 provides an advance in a technical field. In step (ii), claim 1 recites "a dealer receiving an Ante wager, in the form of at least one chip placed on the ante wager area of one player position of the plurality of player positions, for play of a hand in the wagering game from a player associated with the one player position." Thus, as introduced in the preamble, the body of claim 1 recites a wagering game. Further, we agree with the Examiner's determination that claim 1 recites the rules for conducting such a game. See Final Act. 7-20, 22-25. Specifically, steps (iv)-(vii) of claim 1 are actions in which dealer "enables" the player to view specific cards within the game, and in which dealer "receives" the player elections (choices) such as checking, wagering, and folding. Step (vii), 7 The italicized limitations are the focus of Appellant's arguments against the prior art rejections. See Appeal Br. 15-22. 9 Appeal2017-006315 Application 13/549,969 among other things, limits the amount of the wager the player may make in terms of a wager made earlier in the game. Specifically, the player may "place another value at risk ... the another value limited to a lower value than the initial value." Following rules or instructions, and, specifically, providing rules of a game such as the one recited in claim 1, amounts to managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions), which is one of certain methods of organizing human activity. See Memorandum, 84 Fed. Reg. at 52; In re Smith, 815 F.3d 816, 818 (Fed. Cir. 2016). Such methods of organizing human activity are abstract ideas. See Smith, 815 F .3d at 818. Thus, claim 1 recites an abstract idea, one of the judicial exceptions. See Alice, 573 U.S. at 216. Accordingly, the outcome of our analysis under Step 2A, prong 1, requires us to proceed to Step 2A, prong 2. See Memorandum, 84 Fed. Reg. at 54. Step 2A, Prong 2 - Integrated Into a Practical Application In Step 2A, Prong 2, we determine whether the recited judicial exception is integrated into a practical application of that exception by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception( s ); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. See generally, Memorandum. This evaluation requires an additional element or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the 10 Appeal2017-006315 Application 13/549,969 judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. See id. As noted above, Appellant argues that the method recited in claim 1 provides an advance in a technical field. Appeal Br. 29; see also id. at 30 ("Objective evidence and opinion testimonyl8J together establish that the claimed subject matter constitutes an advance in the technical field of wagering game administration, rendering the claimed subject matter patent eligible.") ( emphasis omitted). We disagree with Appellant's contention on this point. Aside from the rules for conducting the game in steps (ii) and (iv)-(vii) discussed above, claim 1 recites, in step (i), providing a gaming table with an illustrated "betting layout," and in step (iii) the dealer providing randomly ordered playing cards. Step (viii) recites that the dealer resolves the Ante wager and the play wagers conducted in previously recited steps. We do not agree with Appellant's argument that the recited limitations to such game play, occurring on a gaming table with physical cards, amount to an improvement in a technical field. Rather, the field and limitations of claim 1 are similar to those of the claims held patent ineligible in In re Guldenaar and in Smith. See In re Guldenaar, 911 F.3d 1157, 1159 (Fed. Cir. 2018) ("A method of playing a dice game comprising: providing a set of dice ... placing at least one wager ... rolling the set of dice; and paying a payout amount if the at least one wager occurs."); Smith, 815 F .3d at 817 ("A method of conducting a wagering game comprising ... a dealer providing at least one deck of .. . physical playing cards ... the dealer accepting at least one first wager .. . 8 We address Appellant's objective evidence and opinion testimony under Step 2B below. 11 Appeal2017-006315 Application 13/549,969 the dealer dealing only two cards ... the dealer examining respective hands . . . the dealer resolving any player versus dealer wagers."). Thus, Appellant's argument that the claimed subject matter constitutes an improvement to a technical field is unavailing. Further, the playing cards and gaming table provided in claim 1 (steps (i) and (iii)) do not amount to a particular machine or manufacture that is integral to the claim. Rather, such components are broadly recited generic items usable in games other than the one recited in claim 1. Nor is there any transformation recited in claim 1 sufficient to impart patent eligibility. Instead, the step of "providing on the gaming table a plurality of randomly ordered cards, from a deck of fifty-two physical playing cards" (step (iii)) is similar to the step of "a dealer providing at least one deck of ... physical playing cards and shuffling the physical playing cards to form a random set of physical playing cards" recited in the patent- ineligible claim at issue in Smith. See Smith, 815 F.3d at 817. Appellant states, "[t]o the extent that the claimed subject matter could be construed as being similar to the subject matter invalidated in In re Smith ... that decision was wrongly decided in view of the patent statute and Supreme Court and Federal Circuit precedent." Appeal Br. 33-34; see also Reply Br. 11-12. However, Appellant provides no persuasive argument as to how the Board is not required to follow the precedential decision in Smith, nor as to how Smith was wrongly decided. Accordingly, Appellant's contentions regarding Smith are unavailing. In summary, claim 1 does not integrate the recited judicial exception into a practical application. Thus, we proceed to step 2B. 12 Appeal2017-006315 Application 13/549,969 Step 2B- Well-Understood, Routine, Conventional Activity Referring to Declarations9 executed by Roger M. Snow10 (hereinafter the "2016 Snow Declaration" and the "2015 Snow Declaration), Appellant asserts that "the commercial embodiment of the claimed player-versus dealer hold 'em game involving prohibiting folding during an initial round of betting while requiring later-made play wagers to be of diminished amounts, where only one play wager is acceptable during a given round, is exceptionally commercially successful." Appeal Br. 30 (emphasis added); see also Reply Br. 6-7 ("While checking and wagering, taken separately, may constitute basic concepts because they are individually known in the field, the specific, required combination of initially prohibiting folding while requiring later-made play wagers to be of diminished amounts, where only one play wager is acceptable during a given round, is unprecedented in the field."). Appellant goes on to argue the Snow Declarations and associated Exhibits show that there is a nexus between the inventive merits of the claimed subject matter and the commercial success of the commercial embodiment. See id. at 30-32. In Step 2B, we determine whether the claim adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional" in the field. See Memorandum. The portions of claim 1 Appellant asserts are an improvement in the "technical field" of game management and result in commercial success relate to two actions, namely, prohibiting folding during an initial round of betting (in step (v)) and 9 Appellant also provides Exhibits A-Q in association with these Declarations. 10 Roger M. Snow is the sole named inventor in the present application. 13 Appeal2017-006315 Application 13/549,969 limiting the values of later-made play wagers to values lower than an initial value determined earlier in the round of play (in step (vii)). See Appeal Br. 30-45. Both of these actions are part of the abstract idea, and, therefore, cannot add significantly more to the abstract idea. Thus, even assuming, arguendo, that prohibiting the player from folding and limiting the player's bets, as recited in claim 1, resulted in commercial success of the claimed method of conducting game play, this fact is not enough to transform an otherwise unpatentable abstract idea into patent eligible subject matter. Nor do the steps in claim 1 that are not part of the abstract idea, for example, providing physical playing cards and providing a gaming table, anything other than well-known, routine, and conventional activity. Appellant argues that claim 1 does not preempt a fundamental, basic, or conventional practice. See Appeal Br. 32. However, as our reviewing court has explained, "the principle of preemption is the basis for the judicial exceptions to patentability" and "[fJor this reason, questions on preemption are inherent in and resolved by theÂ§ 101 analysis." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 573 U.S. at 216). Although "preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility." Id. Moreover, "[w]here a patent's claims are deemed only to disclose patent ineligible subject matter under the [Alice/Mayo] framework . . . , preemption concerns are fully addressed and made moot." Id.; see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir.), ("[T]hat the claims do not preempt all price optimization or may be limited to price optimization in the ecommerce setting do not make them any less abstract.") cert. denied, 136 S. Ct. 701 (2015). 14 Appeal2017-006315 Application 13/549,969 Although claim 1 specifically limits, in various ways, the recited method of conducting a game of cards, and, therefore, would seem to exclude numerous other card games, we do not agree that claim 1 recites anything significantly more than the abstract ideas discussed above in Step 2A. In particular, the various actions recited in claim 1 that differentiate the recited method from other card games relate to the abstract idea, not to an innovation of the kind that benefits the claimed subject matter under a Step 2B analysis. We have considered all of Appellant's arguments in support of the patent eligibility of claim 1, but find them unpersuasive. Accordingly, we sustain the rejection of claims 1-32 under 35 U.S.C. Â§ 101. Rejection !IL Obviousness The Examiner finds that Jones discloses many of the steps recited in claim 1, but in relation to step (vii), states, "[t]he amounts wagered in claim 1 ... are considered an obvious matter of choice in considering player interest verse house percentage." Final Act. 30. Appellant argues that the Examiner did not provide adequate reasoning for why a person of ordinary skill in the art would limit the amount allowed to be wagered in Jones to an amount as recited in step (vii). Appeal Br. 18-19. As discussed above, Appellant contends that limiting the amount allowed to be wagered in step ( vii) results in increased popularity relative to other card games. Id. at 30. In response, the Examiner determines that claim 1 does not require limiting an amount of a wager in step (vii) because the player is permitted to fold (the player may make no wager at all and concede the round of play) at this stage of the game. See Ans. 6-7. Thus, under this interpretation of 15 Appeal2017-006315 Application 13/549,969 claim 1, the question of whether the amount of the wager recited in step ( vii) would have been a matter of design choice is moot because the wager itself is not required. See id. The Examiner also reiterates that, to the extent the wager recited in step ( vii) is required, the amount of this wager would have been a matter of design choice. Id. at 7-9. The Examiner notes that certain references discussed in the Final Action, but not listed in the statement of the rejection of claim 1 "support the well-known practice of deciding the allowable amounts for any particular wager in the design of a game." Ans. 9 ( citing Final Act. 34-35). We do not sustain the rejection of claim 1 as unpatentable over Jones, Feola, and Hesse because Appellant's arguments regarding design choice are persuasive. Specifically, Appellant's discussion of this limitation in the Specification, combined with the argument that the amounts allowed to be wagered in step (vii) make a difference in the popularity of the game preclude the application of a "design choice" rationale, which rests on the premise that the limitation at issue does not affect the operation of the claimed invention. See In re Japikse, 181 F.2d 1019 (CCPA 1950); MPEP (Claims to a hydraulic press read on the prior art except with regard to the position of a starting switch were held unpatentable because the position of the starting switch did not change the operation of the hydraulic press.). In the present case, limiting the amount of the wager at later stages of the round appears to be a critical part of Appellant's invention. See Spec. ,-J 17 ("As the game progresses, more information is available to the player and consequently the permitted amounts bet decrease with increasing information."); see also id. ,-i 34 ("Depending upon the stage of the game 16 Appeal2017-006315 Application 13/549,969 when the play bet is made, with earlier bets allowing larger play bets, and later bets allowing for relatively smaller play bets, higher payouts can be made to a player who puts more at risk when less information is available."). Further, merely finding that it was known to vary the amounts available to wager does not remedy the deficiency in the Examiner's application of design choice as a rationale. See Polaris Indus., Inc. v. Arctic Cat, Inc.: The Board compounded this error by transforming Polaris's argument that "[t]here are many other potential locations for a gas tank in an A TV" into an admission that it would have been obvious to place a fuel tank underneath one of the two seats in Denney. The Board failed to consider that "[ m Jerely stating that a particular placement of an element is a design choice does not make it obvious." Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1068, 69 n.4. (Fed. Cir. 2018) (quoting Cutsforth, Inc. v. MotivePower, Inc., 636 Fed. App'x. 575, 578 (Fed. Cir. 2016)) (alteration in original) (internal citation omitted). Thus, Appellant has the better position regarding the rejection of claim 1 based on design choice. Second, we do not agree with the Examiner's interpretation of claim 1, set forth on pages 6-7 of the Answer, which considers step ( vii) of claim 1 to be met when a player folds, regardless of the permitted amount of the wager that the player could have made. Claim 1 requires the options of folding and wagering to be provided to the player. The fact that these actions are, from the player's perspective, optional does not necessarily make them optional features of the claim. Rather, in claim 1, the fact that the player has a choice is communicated to the player inasmuch as claim 1 recites that the choice is from among "provided options consisting of a fold 17 Appeal2017-006315 Application 13/549,969 ... and the play wager." Accordingly, we do not sustain the rejection of claim 1 and claims 2, 4, 6-9, 11-18, and 20 depending therefrom. Claim 32 recites a substantially similar requirement to the one discussed above regarding claim 1, and for the same reasons we do not sustain the rejection of claim 32 as unpatentable over Jones, Feola, and Hesse. Rejection IV, Obviousness The Examiner apparently relies on the same findings of fact and reasoning in modifying Jones to address independent claim 21 as discussed above regarding the rejection of claim 1. See Final Act. 30, 35-36. Accordingly, we do not sustain the rejection of claims 3, 5, 10, 19, and 21- 31 as unpatentable over Jones, Feola, and Merlino. DECISION We affirm Rejection II and reverse Rejections I, III, and IV. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ l .136(a). AFFIRMED 18 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROGER M. SNOW Appeal2017-006315 Application 13/549,969 Technology Center 3700 OPINION CONCURRING CAPP, Administrative Patent Judge I write separately, first of all, to express my view that we should just affirm the Examiner's Section 101 rejection and not reach the art rejection. When an applicant seeks patent protection for what, in the first instance, is unpatentable subject matter, I see no reason to perform an analysis comparing such unpatentable subject matter to the prior art. In addition, I write separately to express some additional views on the Section 101 rejection and Appellant's advocacy related thereto. In Alice, the Supreme Court took pains to caution against interpreting Section 101 "in ways that make patent eligibility 'depend simply on the draftsman's art." Alice, 573 U.S. at 226. In my opinion, Appellant's advocacy in this case, both oral and written, is merely an exercise in linguistic finesse that is designed to create the superficial, but nevertheless false, impression that Appellant has invented something of a technological Appeal2017-006315 Application 13/549,969 nature that is more than simply an abstract idea in the form of rules for playing a game. Appellant's briefs are rife with words and phrases that conjure up images of machines and advances in mechanical technology. Some, but certainly not all, of these words and phrases include: "mechanic(s)" (Appeal Br. 18, 20, 23, 25, 27, 33, 34, 36, 37, 38, 39, 45; Reply Br. 6, 7, 8, 11, 12); "technology," "technical" or "technological" (Appeal Br. 29, 30, 32, 33, 36, 37, 39, 41, 45, 47; Reply Br. 6, 7); "architecture" (Appeal Br. 20, 21, 25, 26, 35, 36, 37, 40, 41, 46, 47, 49; Reply Br. 6, 10). However, merely using words and phrases that sound mechanical and technological are not sufficient to transform a simple game into more than it actually is. Put simply, Appellant's invention involves rules for playing a game. It is played by people in a casino sitting around a felt-topped table, playing a game with a standard 52 card deck of playing cards, and wagering using physical instrumentalities such as plastic chips. Apart from the playing surface, cards, and chips, there is no machine, there is no mechanical apparatus, and there is no advance in mechanical technology. Modifying an existing game by changing the rules is purely an abstract idea. It is an idea that is conjured up entirely in the human mind and then communicated to other persons orally in writing. There is no "technology," "architecture," or "mechanisms" involved as such terms are normally used in the field of patentable inventions. The new and "changed" game that is claimed in Appellant's Claim 1 is nothing more than a sequence of human actions performed in accordance with a certain protocol or set of rules. In accordance with those rules, card are dealt, cards are arranged by players, card hands are compared, and wagers are made and collected. 2 Appeal2017-006315 Application 13/549,969 Claims App., Claim 1. Nothing of a mechanical or technological nature takes place. Stripped of all of Appellant's pseudo-technological jargon, the invention simply entails rules to a card game. While games may enhance our leisure hours, they contribute nothing to the existing body of technological and scientific knowledge. They should therefore be deemed categorically ineligible for patent. In re Marco Guldenaar Holding B. V., 911 F.3d 1157, 1166 (Fed. Cir. 2018) (J. Mayer, concurring opinion). Controlling precedent maintains that new rules for a card game entail an abstract idea that is not patent eligible. Smith, 815 F.3d at 818. That ends our inquiry. 3