Ex Parte Webb

Patent Trial and Appeal BoardMar 25, 2013

11011373 (P.T.A.B. Mar. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DEREK J. WEBB ____________________ Appeal 2011-001722 Application 11/011,373 Technology Center 3700 ____________________ Before: CHARLES N. GREENHUT, BARRY L. GROSSMAN, and TIMOTHY J. O’HEARN, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-001722 Application 11/011,373 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1- 7. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to a method and apparatus for playing a casino game with multiple playing modes and wagering options. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1 A method of playing a casino game, comprising: (a) receiving at least a first wager for at least a first playing mode, the first playing mode being compulsory; and (b) receiving at least a second wager for at least a second playing mode, wherein the second playing mode is without a house advantage; (c) dealing playing cards to at least one player, dealing at least one non-player card, and forming a player hand; (d) resolving the first wager according to a poker rank of the player hand against a payout scale; and (e) resolving the second wager without a house advantage according to the poker rank of the player hand against a poker rank of another player hand. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Malek Malek Kangsanaraks US 5,265,882 US 5,395,120 US 5,496,038 Nov. 30, 1993 Mar. 7, 1995 Mar. 5, 1996 Appeal 2011-001722 Application 11/011,373 3 REJECTIONS The following rejection was set forth in the Answer of October 14, 2008 (“1st Ans.”): Claims 1-7 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Malek ’882, Malek ’120 and Kangsanaraks. 1st Ans. 3-5. In the Examiner’s Answer of June 18, 2010 (“2nd Ans.”), the Examiner added the following new grounds of rejection: Claim 7 is rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. 2nd Ans. 6. Claims 1-6 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. 2nd Ans. 8 OPINION The rejection of claims 1-6 under 35 U.S.C. § 101 is affirmed. Appellant argues this rejection as a group (Reply Br. Aug. 18, 2010 p. 3) and we select claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(vii). The Examiner determined claim 1 did not satisfy either prong of the machine or transformation test and was therefore directed to non-statutory subject matter. 2nd Ans. 8-11. The Examiner determined that the only step arguably tied to a machine was that of “dealing playing cards.” The Examiner concluded that since such cards merely relate only to a step in the process and are not tied to the process itself, they relate only to insignificant extra-solution activity and do not impose meaningful limits on the scope of the claim. We agree. Appeal 2011-001722 Application 11/011,373 4 Appellant does not attempt to address the Examiner’s position discussed above. Rather, Appellant simply contends the machine-or- transformation test was dismissed by Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010). Reply Br. Aug. 18, 2010 p. 3. Appellant makes only the conclusory argument that “[t]he method includes physical steps such as receiving wagers, dealing cards, resolving wagers, etc. Such physical steps clearly do not amount to a mere abstract idea.” Id. With regard to the “machine-or-transformation test” the Court in Bilski, 130 S. Ct. at 3227, made clear (contra Reply Br. Aug. 18, 2010 p. 3): This Court’s precedents establish that the machine-or- transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101. The machine-or- transformation test is not the sole test for deciding whether an invention is a patent eligible “process.” Thus, the machine-or-transformation test remains a useful tool for determining whether a claim covers an abstract idea. See e.g., Dealertrack, Inc. v. Huber, 674 F. 3d 1315, 1331 et seq. (Fed. Cir. 2012). It is unclear why Appellant believes that receiving or resolving a wager, steps that do not appear to operate on, or transform, anything physical and could be performed entirely in the human mind without the assistance of any machine, are “physical steps.” We agree with the Examiner that “dealing playing cards” is the only step arguably physical. Appellant’s Specification indicates that the playing cards can be both physical or virtual. pp. 7-8, paras. [0027]-[0028]. Their relationship to the method depends only on the information displayed thereon, not the machine or apparatus for conveying that information. Thus, we agree with the Appeal 2011-001722 Application 11/011,373 5 Examiner that the recitation of “dealing playing cards” does not tie the claimed method to a particular apparatus or machine. Appellant has not argued the contrary. See e.g., In re Comiskey, 554 F. 3d 967(Fed. Cir. 2009)(It was conceded that a claim reciting “documents” did not satisfy the machine prong of the machine-or-transformation test). We therefore conclude that Appellant’s claims 1-6 are an attempt to preempt the use of all machines and processes employing this particular manner of wagering. We must agree with the Examiner that our patent laws do not allow for the grant of such a monopoly. See Bilski, 130 S. Ct. at 3231. The rejection of claim 7 under 35 U.S.C. § 112, second paragraph is affirmed. The Examiner rejected claim 7 due to a lack of structure in the Specification corresponding to the recited means. 2nd Ans. 6-7 citing Aristocrat Technologies, Inc. v. International Game Technology, 521 F.3d 1328, 1333 (Fed. Cir. 2008) and WMS Gaming,lnc. v. International Game Technology, 184 F.3d 1339 (Fed. Cir. 1999). The Examiner correctly determined that there is a general description of steps in resolving the first wager and the second wager. However, the specification and drawings do not disclose sufficient corresponding structure, material or acts for performing the claimed function of: "means for dealing playing cards .... ", "means for resolving the first wager .... ", and "means for resolving the second wager .... ". It is not appropriate that these functions be done by a human dealer. 2nd Ans. 7-8 citing Spec. pp. 6-7. From this, the Examiner correctly concluded that: Appeal 2011-001722 Application 11/011,373 6 The specification does not set forth any specific structures (e.g., circuits or components), software instructions, or algorithms that are to be added to a known general purpose microprocessor or control circuitry to transform those general purpose elements into a special purpose microprocessor or control circuitry capable of performing the claimed functions. 2nd Ans. 8. In response, Appellant contends that “control logic stored in the memory of a computer and executed by a CPU alone is sufficient to satisfy the requirements of 35 U.S.C. §112.” Reply Br. Aug. 18, 2010 p. 2; see Spec. pp. 7-8, paras. [0027]-[0028]. However, these are the exact types of structures that the Examiner, properly applying our reviewing court’s precedent, has deemed insufficient to satisfy the requirements of the second and sixth paragraphs of 35 U.S.C. § 112. Even if, as Appellant suggests, “[t]he details of the ‘circuitry’ and of the ‘receiving’ and ‘dealing’ structure would be readily apparent to those of ordinary skill in the art” (Reply Br. Aug. 18, 2010 p. 2), the fact that those skilled in the art would know how to construct a device falling within the scope of the claims without express guidance from Appellant’s Specification, does not mean that structure corresponding to the recited means is disclosed in the Specification with sufficient particularity to apprise one skilled in the art as to the metes and bounds of the claim, as is required by the second and sixth paragraphs of 35 U.S.C. § 112. Accordingly, the Examiner’s position stands essentially uncontroverted and this rejection is sustained. Appeal 2011-001722 Application 11/011,373 7 We affirm the rejection of claims 1 and 3-7 and reverse the rejection of claim 2 based on Malek ’882, Malek ’120 and Kangsanaraks. While questions arising under 35 U.S.C. § 101 and the second paragraph of 35 U.S.C. § 112 have sometimes been characterized as threshold issues, which may hinder or prevent a proper analysis of the claims under 35 U.S.C. § 103(a). However, Appellant requests only a very limited review of specific determinations made by the Examiner in deciding to reject claims 1-7 under 35 U.S.C. § 103(a). For the sake of completeness, we will address the issues raised by Appellant alleging error in the rejection under 35 U.S.C. § 103(a). See Ex Parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010). In rejecting claim 1, the Examiner found, and Appellant does not dispute, that Malek ’882 discloses the basic method and apparatus of claims 1 and 7. Appellant and the Examiner dispute whether Kangsanaraks teaches a mode “without a house advantage” and whether it would have been obvious to incorporate such a mode into Malek ’882. App. Br. 13-15; Reply Br. Dec. 12, 2008 p. 1-3. The text of Kangsanaraks cited by both the Examiner and the Appellant (col. 8, ll. 1-20) is not entirely clear as to whether Kangsanaraks contemplates a mode in which there is no house advantage. Kangsanaraks mentions an optional added percentage or commission for the house and indicates that the commission may be eliminated by reducing the payout, which, as Appellant points out, though not termed a “commission,” is also a “house advantage.” We think any ambiguity as to the playing modes one skilled in the art would understand to be taught by Kangsanaraks is resolved by looking to the figures discussed in the cited portion of Kangsanaraks, Appeal 2011-001722 Application 11/011,373 8 specifically figure 2B. In Figure 2B, a decision path after step 182 is clearly contemplated where no commission fee is paid, and nothing is substituted in its place. We think such an arrangement is fairly suggested by the figure regardless of whether this disclosure was intentional. See In re Seid 161 F. 2d 229, 231 (CCPA 1947)(citing In re Bager, 47 F.2d 951(CCPA 1931) and In re Wagner, 63 F.2d 987 (CCPA 1933)). We turn to Appellant’s second contention, that it would cease to be, and have any purpose as, a casino game if there were there no house advantage. Thus, Appellant contends the Examiner’s proposed modification would have been undesirable. First, we cannot agree with Appellant that the recitation of “casino” in the preamble implicitly requires the method and apparatus to comply with some unrecited law, or limits the location of the process or apparatus to a casino. Rather, such recitation merely gives a descriptive name to the set of limitations that follow and completely set forth the invention. See e.g., IMS Technology, Inc. v. Haas Automation, Inc., 206 F. 3d 1422, 1434 (Fed. Cir. 2000). A casino game and method for playing it can exist outside a casino. Second, regardless of whether the game is played in a casino or not, we cannot agree with Appellant that not having a house advantage would, in all circumstances, be undesirable. Commission free games that attract players would have been desirable to institutions that profit simply by having guests, for example guests that pay for admittance, or by selling those guests other goods or services. For these reasons we sustain the Examiner’s rejection of claims 1 and 7 under 35 U.S.C. § 103(a). The rejection of claim 6 under 35 U.S.C. § 103(a), not having been separately argued, is sustained as well. Appeal 2011-001722 Application 11/011,373 9 We, like Appellant and the Examiner, understand the resolving step as further defined by claim 3 to refer to determining how payout is made according to a scale. Claim 4 calls for, in relevant part, that the “resolving step” involves “pushing the wager” if the player hand is either tied with the dealer or inferior to the dealer hand. To meet claim 4, the prior art need only show a push in response to either recited condition precedent, such as a tie. To meet claim 5, the push must be in response to a tie and the wager taking must be in response to a player loss. These limitations appear to clearly be met by the portion of Malek ’120 (col. 4, l. 58 – col. 5 l. 12) referred to by the Examiner. Ans. 5. Appellant reiterates the claim language and asserts the portion of Malek’120 cited to meet claim 4 and 5 is not relevant to the limitations of parent claim 3. App. Br. 16. In making such arguments, Appellant has not apprised us of any error in the Examiner’s claim construction or interpretation of Malek ’120 concerning the rejection of claims 3-5. Accordingly, we sustain the rejection of claims 3-5 under 35 U.S.C. § 103(a). Appellant correctly argues that neither the final rejection nor the Examiner’s Answers appear to address claim 2 by number or refer to the limitations contained therein. App. Br. 16. If not apparent in the references, it is incumbent upon the Examiner to provide such information. See e.g., 37 C.F.R. § 1.104(c)(2). Since the Examiner has not done so, we must conclude that the Examiner has failed to clearly articulate why the claimed subject matter would have been obvious. See MPEP § 2142 discussing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) and KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Appeal 2011-001722 Application 11/011,373 10 DECISION The rejection of claims 1-6 under 35 U.S.C. § 101 is affirmed. The rejection of claim 7 under 35 U.S.C. § 112, second paragraph is affirmed. The rejection of claims 1 and 3-7 under 35 U.S.C. § 103(a) based on Malek ’882, Malek ’120 and Kangsanaraks is affirmed. The rejection of claim 2 under 35 U.S.C. § 103(a) based on Malek ’882, Malek ’120 and Kangsanaraks is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Klh