Ex Parte Stern

Patent Trial and Appeal Board

Aug 23, 2017

12934291 (P.T.A.B. Aug. 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.
12/934,291 09/24/2010 Alexander Stern 6476
104929 7590 08/24/2017
Alexander Stern
74 Weizman Blvd., Ap.4
Netanya, 42253
ISRAEL
EXAMINER
PIERCE, WILLIAM M
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
08/24/2017 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)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALEXANDER STERN
____________

Appeal 2016-0034221
Application 12/934,2912
Technology Center 3700
____________

Before BRUCE T. WIEDER, KENNETH G. SCHOPFER, and
MATTHEW S. MEYERS, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1–3, 5–19, 33, 34, and 36. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Our decision references the Appeal Brief (“Appeal Br.,” filed Aug. 12,
2015) and Reply Brief (“Reply Br.,” filed Feb. 11, 2016), and the
Examiner’s Answer (“Ans.,” mailed Dec. 11, 2015) and Final Office Action
(“Final Act.,” mailed Dec. 30, 2014). According to Appellant claims 4, 20–
32, 35 have been cancelled.
2 According to Appellant, “Alexander Stern, the sole inventor is the real
party in interest.” Appeal Br. 2.
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BACKGROUND
The Specification “relates generally to lotto games, and more
particularly to lotto games allowing player to choose bet combinations.”
Spec. 1.
CLAIMS
Claim 1 is the only independent claim on appeal and recites:
1. A method for playing lotto game based on use of a
particular feature of playing cards, such that each single card is
a combination of a value of card and a suit, said method is
played on a non-transitory computer readable storage medium
with an executable program stored thereon, wherein said
program instructs a microprocessor to perform the following
steps:
writing down bets placed by a player using computer-
based tools provided by said program, said bets are made
according to selected by the player type of the game - casino
style game or lottery, bet amount and chances to win, said bets
are selected from betting on single cards, cards of a particular
suit, cards of a particular value, suits, values of cards,
combinations, variations and permutations thereof;
picking out all cards at random one by one from a
standard set of 52 playing cards and writing down an order of
their picking, which brings about creation of random sequences
of cards of different types and random sequences of suits and
values of cards, wherein each card picked out at random takes
part in the creation of said random sequences fulfilling several
function at the same time: as a single card, as a value of card of
a particular suit and as a suit of card of a particular value; said
random sequences forming results of the game are permutations
containing combinations and variations of different numbers of
said cards, suits and values of cards;
writing down said random sequences in the course of the
game separately from each other including ordinal numbers of
said cards, suits and values of cards in these random sequences
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respectively, using computer-based tools provided by said
program;
comparing results of the game with bets made by each
player and determining whether a successful bet has occurred,
and in the affirmative case, calculating winning amount which
is granted to a player according to a probability of success of
his bet.
Appeal Br. 57–58.
REJECTIONS
1. The Examiner rejects claims 1–3, 5–19, 33, 34, and 36 under 35 U.S.C.
§ 101 as directed to ineligible subject matter.
2. The Examiner rejects claims 1–3, 5–19, 33, 34, and 36 under 35 U.S.C.
§ 103(a) as unpatentable over Dargue3 in view of Official Notice.
DISCUSSION
Ineligible Subject Matter
As an initial matter, we note that Appellant has grouped all claims
together with respect to this rejection. We select and discuss claim 1 as
representative of these claims. See 37 C.F.R. § 41.37(c)(iv).
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’l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1294
(2012)). According to the Supreme Court’s framework, we must first
determine 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

3 Dargue, US 2007/0052172 Al, pub. Mar. 8, 2007.
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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.
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.
Claim 1 is drawn to “[a] method for playing a lotto game” comprising
the steps of “writing down bets,” “picking out all cards [from a standard 52-
card deck] . . . and writing down an order of their picking, which brings
about creation of random sequences,” “writing down said random
sequences,” and “comparing results of the game with bets made.” Appeal
Br. 57–58.
We find that the method of playing a lotto game as recited claim 1, is
a method of playing a wagering game and is similar to the claims at issue in
In re Smith, 815 F.3d 816 (Fed. Cir. 2016). In Smith, the claims were
directed to a “method of conducting a wagering game.” See id. at 817. 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. 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.”). We see
no meaningful distinction between the lotto game of claim 1 and a wagering
game, and thus, agree with the Examiner that the claim is directed to the
abstract idea of “a general concept or rules for playing a game” under step 1
of the Alice framework. Final Act. 6.
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Regarding the second step of the Alice analysis (i.e., determining
whether there are additional elements that transform the nature of the claim
with a sufficient inventive concept), we find that the claims do no more than
require conventional steps normally associated with wagering games, i.e.
placing bets, picking cards from a standard deck of cards, and resolving
outcomes based on the cards picked and the wagers placed. “[A]ppending
purely conventional steps to an abstract idea does not supply a sufficiently
inventive concept.” See In re Smith at 879. Thus, we agree with the
Examiner that the additional elements, including the use of a “computer
readable storage medium” and “computer-based tools” recited in the claims
do not impose meaningful limits on the abstract idea of a set of rules for
playing a game. See Final Act. 9. See also In re Smith at 817 (Affirming
rejection of claims under 35 U.S.C. § 101 “[b]ecause the claims cover only
the abstract idea of rules for playing a wagering game and use conventional
steps of shuffling and dealing a standard deck of cards.”)
In response to the rejection, Appellant argues that the claims include a
particular application of the abstract idea including specific characteristics of
a computer program that transform the abstract idea into patentable subject
matter. See Appeal Br. 9–28. In particular, Appellant indicates that the
claims are patentable because “the kit of computer-based tools [used to
implement the invention] is particular to the present invention and essential
for its implementation. These computer-based tools having the particular
table structure are [an] essential part of the apparatus for playing the lotto
game.” Appeal Br. 17. However, we find that the claim itself refers only to
a generic computer application, including a reference to an executable
program on a non-transitory computer readable storage medium and the use
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of “computer-based tools.” Nothing in the claim itself suggests a “particular
practical application of abstract ideas,” contrary to Appellant’s assertion. Id.
at 9. Finally, Appellant asserts that the method may not be performed by
mental processes alone because “human mistakes will surely be made.”
Appeal Br. 21–22. However, the fact that the claimed method may be hard
to perform mentally, does not mean that it cannot be done and does not
elevate the claim to patent eligibility. We also note that the Specification
discloses that “[i]n the disclosed invention a dealer and a player are humans
and/ or automated systems.” (Spec. 3, ll. 5–6) and “when the method is
implemented as a computer version, the program is based on a random
numbers generator that has been already invented” (id. at 9, ll. 25–27).
Based on the foregoing, we are unpersuaded of error in the rejection
of claims 1–3, 5–19, 33, 34, and 36 under 35 U.S.C. § 101. Accordingly, we
sustain this rejection.
Obviousness
Claim 1 requires that all cards are picked at random and the sequences
of card values and card suits are written down separately. Thus, the plain
language of the claim requires that each of the 52 cards in a standard card
deck are picked out randomly, a 52 card sequence of card values is written
down, and a separate sequence of 52 card suits is written down. We agree
with Appellant that the rejection does not establish that Dargue teaches these
claim requirements or that they would have otherwise been obvious. See
Appeal Br. 45–52. We find that the Examiner has not pointed to any
disclosure in Dargue of recording a sequence of card values separate from a
sequence of card suits.
In rejecting claim 1, the Examiner states:
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Dargue is considered to show in fig. 1 at least 4 random
sequences of 5 different types face down. He further shows
betting on single cards selected by a player on a chance to win
(abstract, ln. 2), picking out cards at random at ln. 4. The
number of cards picked is considered an obvious matter of
choice. To have selected 24 sequences of five types would have
been an obvious rearrangement of printed matter. In re Ngai, 70
USPQ2d 1862 (Fed. Cir. 2004), In re Gulack, 217 USPQ 410
(Fed. Cir. 1983) and In re Miller, 164 USPQ 46 (CCPA 1969).
Final Act. 15–16. The Examiner goes on to discuss Appellant’s arguments
at length, but we see no indication, either in the Examiner’s explanation or
Dargue’s disclosure itself, that Dargue teaches separately recording card
values and card suits as required by the claim.
Accordingly, on the record before us, we do not sustain the rejection
of claim 1 as obvious. We also do not sustain the rejection of dependent
claims 2, 3, 5–19, 33, 34, and 36 for the same reasons.
CONCLUSION
We AFFIRM the rejection of claims 1–3, 5–19, 33, 34, and 36 under
35 U.S.C. § 101, and we REVERSE the rejection of claims 1–3, 5–19, 33,
34, and 36 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED