Roger M. Snow

Patent Trials and Appeals Board

Sep 9, 2019

15047470 - (D) (P.T.A.B. Sep. 9, 2019)

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.
15/047,470 02/18/2016 Roger M. Snow 3286-12422.1(PA4020.ap.C1 7365
66137 7590 09/09/2019
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
09/09/2019 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
____________

Appeal 2018-004700
Application 15/047,470
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
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–16. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Bally Gaming, Inc., and Scientific Games Corporation are identified as the
real parties in interest. Appeal Br. 4.
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THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to a method of playing a four-card
wagering game. Claim 1, reproduced below, is illustrative:
1. A method of playing a four-card wagering game
implemented on an at least partially electronic system, the
method comprising:

receiving an ante wager associable with a player;

providing, to the player, an indication of at least six cards for a
four-card dealer hand, the at least six cards derived from a deck
of cards electronically stored by the at least partially electronic
system;

revealing, to the player, values of at least five cards for a four-
card player hand, the at least five cards derived from the deck of
cards electronically stored by the at least partially electronic
system;

after revealing, to the player, the values of the at least five cards
for the four-card player hand, providing, to the player, options of
a fold option designated to forfeit the ante wager associable with
the player, and play wager options of 1x, 2x, and 3x the ante
wager;

receiving an election selected by the player from the fold option
and the play wager options of the 1x, the 2x, and the 3x the ante
wager; and

resolving all received wagers.

THE REJECTION
The Examiner rejects claims 1–16 under 35 U.S.C. § 101, as being
drawn to patent-ineligible subject matter.
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ANALYSIS
Appellant presents arguments for the patent eligibility of claims 1–16
as a group. Appeal Br. 10–42. We select claim 1 as the representative
claim, and claims 2–16 stand or fall with claim 1.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 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’l, 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. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
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 (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
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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.
252, 267–68 (1853))); 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 turn 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 of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter “Guidance”). Under
Step 2A of that Guidance, we first look to whether the claim recites:
(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 § 2106.05(a)-(c), (e)-(h)).
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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
§ 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 Guidance.
Step 1 — Statutory Category
Claim 1 recites a method of playing a four-card wagering game
implemented on an at least partially electronic system, and, therefore, is in
the category of being a process. Appeal Br., 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 recites a set of
rules to a card wagering game, and takes the position that rules for playing
card games have been held to be an abstract idea. Final Act. 2, citing In re
Smith, 815 F.3d 816 (Fed. Cir. 2016). The Examiner finds that, despite
Appellant’s urging that other case law should be applied, the decision in
Smith involves directly related subject matter. Ans. 5.
Appellant discusses several principles said to have been provided by
various Federal Circuit and Supreme Court decisions addressing patent
eligibility. Appeal Br. 20–23. Most pertinently, Appellant asserts that the
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Smith decision should not be followed in this case, in that it is asserted to be
“inconsistent with more recent, and therefore more controlling, precedent of
the Federal Circuit.” Appeal Br. 24. Instead, Appellant argues, the
principles set forth in the decision in McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), should be applied. Id. at 23, 25.
Like the patent-eligible claims in McRO, according to Appellant, the present
claims recite or use “unconventional rules that have specific characteristics
and set out meaningful requirements and that improve the existing
technological process for poker-based wagering games.” Id. at 31 (emphasis
omitted).
Appellant additionally characterizes the claims as providing “a
combined order of specific rules that improve the relevant technology” of
wagering game design.2 Reply Br. 6. As such, Appellant argues, claim 1 is
not directed to an abstract idea. Id. at 7.
As introduced in the preamble, the body of claim 1 recites steps
involved in 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. 4. Specifically, the steps of claim 1 are actions in which player
ante wagers are received; players receive indications of at least six cards
from which a four-card dealer hand will be made; players have revealed to
them values of at least five cards from which a four-card player hand will be
made; players are provided the option of folding or playing a wager in

2 Tracking the language of a definition of “technology” appearing in a
Merriam-Webster online dictionary, Appellant proffers that the relevant
“technology” involved in its invention is “the specialized aspects in the
particular field of wagering-game administration, including card-based game
administration.” Reply Br. 7.
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multiples of the ante wager; an election (choice) of which option is received;
and wagers are resolved.
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 identified as patent-ineligible
subject matter. See Guidance, 84 Fed. Reg. at 52; In re Smith, 815 F.3d at
818. Thus, claim 1 is directed to one of the judicial exceptions, namely, an
abstract idea. See Alice, 573 U.S. at 216. Given this outcome of our
analysis under Step 2A, prong 1, we are required to proceed to Step 2A,
prong 2. See Guidance, 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, Guidance.
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 judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the exception. See id.
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As noted above, Appellant argues that the method recited in claim 1
improves an existing technological process for poker-based wagering games.
Appeal Br. 31. We disagree with this contention. In addition to the rules for
conducting the four-card wagering game appearing in the claim steps, claim
1 recites that the game is implemented on an at least partially electronic
system, and that the deck of cards with which the game is to be played is
electronically stored by that electronic system. We do not agree with
Appellant’s argument that because the recited rules are “specific,” and are
presented in a “combined order,” (Reply Br. 7), with the game employing a
partially electronic system, claim 1 amounts 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 Smith. 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 . . . the dealer dealing only two cards ... the
dealer examining respective hands . . . the dealer resolving any player versus
dealer wagers.”).
Furthermore, Appellant’s argument that Smith is inconsistent with
more recent jurisprudence regarding abstract ideas, and is therefore of
questionable value in assessing the current claims, is belied by the decision
in In re Guldenaar, 911 F.3d 1157, 1159 (Fed. Cir. 2018). Guldenaar, a
more recent decision than McRO, and factually closer to the present
situation, held that, “[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,” was
directed to a patent-ineligible abstract idea. Guldenaar, 911 F.3d at 1159.
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Thus, Appellant’s argument that the claimed subject matter constitutes an
improvement to a technical field, in a similar manner to the claims in McRO,
is unavailing.
Further, the “partially electronic system” recited in claim 1 does not
amount to a particular machine or manufacture that is integral to the claim.
Rather, it is nothing more than a recited generic item 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 cards, or indications of
cards, from which card hands are to be made, derived from a deck of
electronically stored cards, 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.
In summary, claim 1 does not integrate the recited judicial exception
into a practical application. Thus, we proceed to step 2B.

Step 2B— Well-Understood, Routine, Conventional Activity
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 Guidance. The portions of claim 1 that
Appellant asserts give rise to an improvement in the “technology” of
wagering game management are each of the steps involving distribution of
cards from which to create dealer and player hands, and the steps involving
wagering and resolving wagers. Reply Br. 7. These actions are part of the
abstract idea, and, therefore, cannot add significantly more to the abstract
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idea. BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir.
2018) (ineligible subject matter cannot supply inventive concept that renders
invention significantly more than that ineligible concept). Nor do the
recitations in claim 1 identifying use of a partially electronic system that
itself is not part of the abstract idea, involve anything other than well-
known, routine, and conventional activity. See Spec. ¶ 37 (listing prior
patents disclosing electronic systems for card gaming).
Appellant argues that the Examiner has failed to give proper weight to
the non-preemptive effect of the method of claim 1. Reply Br. 9–10.
Appellant cites to McRO for the proposition that the concern over
preemption is the primary concern driving § 101 jurisprudence. Reply Br. 9,
citing McRO, 837 F.3d at 1314. However, as our reviewing court has
explained, “the principle of preemption is the basis for the judicial
exceptions to patentability” and “[f]or this reason, questions on preemption
are inherent in and resolved by the § 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.
2015) (“[T]hat the claims do not preempt all price optimization or may be
limited to price optimization in the e-commerce setting do not make them
any less abstract.”), cert. denied, 136 S. Ct. 701 (2015).
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We do not find that claim 1 recites anything significantly more than
the judicial exception discussed above in the Step 2A analysis. In particular,
the various actions recited in claim 1 that differentiate the recited method
from other card games relate to the patent ineligible subject matter, 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 1–16 under 35 U.S.C. § 101.

DECISION
The Examiner’s rejection of claims 1–16 under 35 U.S.C. § 101 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)(1)(iv).

AFFIRMED