Ex Parte Leland

Patent Trial and Appeal Board

Nov 4, 2013

12058578 (P.T.A.B. Nov. 4, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte NATHAN LELAND 7
___________ 8
9
Appeal 2011-013258 10
Application 12/058,578 11
Technology Center 3700 12
___________ 13
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15
Before MICHAEL W. KIM, PHILIP J. HOFFMANN, and THOMAS F. 16
SMEGAL, Administrative Patent Judges. 17
SMEGAL, Administrative Patent Judge. 18
DECISION ON APPEAL 19
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STATEMENT OF THE CASE1 1
Nathan Leland (Appellant) seeks review under 35 U.S.C. § 134 of a final 2
rejection of claims 4, 5, 7-14, 17-26, and 35, the only claims pending in the 3
application on appeal. We have jurisdiction over the appeal pursuant to 4
35 U.S.C. § 6(b). 5
SUMMARY OF DECISION 6
We AFFIRM. 7
THE INVENTION 8
The Appellant invented methods and devices for playing multi-line card 9
games (Spec. 1: para. [0001]). 10
An understanding of the invention can be derived from a reading of 11
exemplary claims 8 and 35, which are reproduced below. 12
8. A method for playing a multi-line card game comprising: 13
providing an array of cards arranged in columns and rows; 14
providing a plurality of paylines; 15
selecting two cards of the array of cards, wherein the two 16
selected cards are swapped if one or more winning 17
combinations are to occur upon swapping, and are kept in place 18
if no winning combination can occur upon swapping; 19
setting, prior to swapping, a cost directly associated with the 20
swapping to allow wagering on the swapping; 21
each time one or more winning combinations are obtained, 22
removing cards involved in the one or more winning 23
combinations, thus forming voids in the array, the cards 24

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed March 28, 2011) and the Examiner’s Answer (“Ans.,” mailed
June 10, 2011).
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involved in the one or more winning combinations being the 1
only cards removed; and 2
filling the voids in the array by automatic dealing of new cards. 3
4
35. A method for playing a multi-line card game comprising: 5
providing an array of cards arranged in columns and rows; 6
providing a plurality of paylines; 7
selecting, prior to playing, a cost associated with the playing to 8
allow playing the multiline card game; 9
selecting two cards of the array of cards, wherein the two 10
selected cards are swapped if one or more winning 11
combinations are to occur upon swapping, and are kept in place 12
if no winning combination can occur upon swapping; 13
setting, prior to swapping, a cost associated with the swapping 14
to allow wagering on the swapping, wherein the cost associated 15
with the swapping is independent of the cost associated with the 16
playing; 17
each time one or more winning combinations are obtained, 18
removing cards involved in the one or more winning 19
combinations, thus forming voids in the array, the cards 20
involved in the one or more winning combinations being the 21
only cards removed; and 22
filling the voids in the array by automatic dealing of new cards. 23
REFERENCES 24
The Examiner relies upon the following as evidence of unpatentability: 25
Prerost US 5,407,209 Apr. 18, 1995 26
Pacey US 2004/0033829 A1 Feb. 19, 2004 27
REJECTIONS ON APPEAL 28
The following rejections are before us for review: 29
1. Claims 4, 5, 7-13, and 35 stand rejected under 35 U.S.C. § 101 as 30
directed to non-statutory subject matter. 31
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2. Claims 4, 5, 7-14, 17-26, and 35 stand rejected under 35 U.S.C. § 1
103(a) as being unpatentable over Pacey in view of Prerost. 2
FINDINGS OF FACT 3
We find that the findings of fact, which follow and are discussed in the 4
Analysis below, are supported by at least a preponderance of the evidence. 5
Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the 6
general evidentiary standard for proceedings before the Office). 7
Facts relating to the prior art 8
Pacey 9
FF1. Pacey discloses that video gaming machines are typically operable 10
to play such traditional games as slots, poker, bingo, keno, and blackjack. 11
Pacey, para. [0003]. 12
FF2. Pacey discloses a first embodiment where a video gaming machine 13
receives a wager from a player who then selects pairs of symbols from a 14
filled array that when swapped (exchanged), create predefined, award-15
generating symbol combinations. Pacey, para. [0018]. FF3. Pacey discloses 16
a second embodiment where a video gaming machine receives a wager from 17
a player, and then automatically selects any pairs of symbols from a filled 18
array that create predefined, winning combinations of symbols. Pacey, para. 19
[0030]. FF4. Pacey discloses a video gaming machine where the first 20
embodiment may be added to the second embodiment. Pacey, para. [0035]. 21
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ANALYSIS 1
The rejection of claims 4, 5, 7-13 and 35 under 35 U.S.C. § 101 as 2
directed to non-statutory subject matter. 3
We are not persuaded by the Appellant’s arguments (App. Br. 8-23) that 4
the Examiner failed to establish a prima facie showing that claims 4, 5, 7-13 5
and 35 are directed to non-statutory subject matter. The Appellant asserts 6
that the claims involve observable and verifiable steps in a specific method 7
of playing card games which, when followed, weigh in favor of patent-8
eligibility (App. Br. 14-16). We disagree. Even if the claims are limited to a 9
particular card game, the claimed method still recites a series of mental steps 10
directed to a general concept of that particular card game which is abstract 11
and so sweeping as to cover both known and unknown uses of the concept 12
and be performed through any existing or future-devised machinery (Ans. 13
16). See Interim Guidance for Determining Subject Matter Eligibility for 14
Process Claims in View of Bilski v. Kappos, 75 Fed. Reg. 43,922, 43,925 15
(Factor D(2)) (Jul. 27, 2010). Such mental steps and general concepts are 16
not patentable subject matter. In other words, the Appellant’s claims attempt 17
to patent and preempt an abstract idea of this particular card game in all 18
fields, and thus is ineligible subject matter under 35 U.S.C. § 101. See Bilski 19
v. Kappos, 130 S. Ct. 3218, 3231 (2010) (finding that claims that cover the 20
basic economic concept of hedging would preempt the use of the concept in 21
all fields). 22
Additionally, while not dispositive, the Appellant’s claim also fails to 23
meet the machine-or-transformation test, which is still an important clue in 24
determining patentable subject matter. See Bilski v. Kappos, 130 S. Ct. at 25
3221. For example, the Appellant’s claim contains no limitations as to the 26
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mechanism for playing the game, thus failing to meet the machine prong of 1
the machine-or-transformation test. The Appellant also argues that 2
swapping results in a transformation to a new array of cards (App. Br. 13, 3
17). We disagree. The Appellant’s claims involve only a temporary change 4
in the position or location of the cards while playing the card game, which 5
does not transform any article into a different state or thing, thereby failing 6
to meet the transformation prong of the machine-or-transformation test. See 7
In re Bilski, 545 F.3d 943, 962 (Fed. Cir. 2008) (en banc). 8
Accordingly, we sustain the Examiner’s rejection of claims 4, 5, 7-13 9
and 35 under 35 U.S.C. § 101 as directed to non-statutory subject matter. 10
The rejection of claims 4, 5, 7-14, 17-26 and 35 under 35 U.S.C. § 103 11
(a) as being unpatentable over Pacey in view of Prerost. 12
Claims 4, 5, 7-14, and 17-26 13
The Appellant argues claims 4, 5, 7-14, and 17-26 as a group (App. Br. 14
38). We select claim 8 as the representative claim for this group and the 15
remaining claims stand or fall with claim 8. 37 C.F.R. § 41.37 (c) (1) (vii) 16
(2011). 17
“Section 103 forbids issuance of a patent when ‘the differences between 18
the subject matter sought to be patented and the prior art are such that the 19
subject matter as a whole would have been obvious at the time the invention 20
was made to a person having ordinary skill in the art to which said subject 21
matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U. S. 398, 406 (2007). 22
It is well established that ordinary creativity is presumed on the part of one 23
of ordinary skill in the art. Id. at 421, (“[a] person of ordinary skill is also a 24
person of ordinary creativity, not an automaton.”). 25
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We are not persuaded by the Appellant’s argument that the Examiner 1
failed to establish a prima facie showing of obviousness in rejecting claim 8 2
over the combination of Pacey and Prerost. The Appellant contends that the 3
contents of the prior art documents must first be analyzed separately, to 4
determine whether in doing so a person skilled in the art would be motivated 5
to combine the prior art documents to obtain the claimed feature of “setting, 6
prior to swapping, a cost directly associated with the swapping to allow 7
wagering on the swapping,” as recited by independent claim 8 (App. Br. 36). 8
In alleging that the Examiner has not done so, the Appellant argues that 9
the Examiner has used “impermissible hindsight” in combining Prerost with 10
Pacey because “Pacey teaches a game that involves swapping of symbols 11
while Prerost teaches a card game (i.e., blackjack) that involves replacing of 12
cards and not swapping of cards,” and for that reason, Prerost does not 13
disclose the aforementioned step recited by claim 8 (App. Br. 37). 14
We disagree, as Pacey discloses a first embodiment (Figures 3-12) of a 15
multi-line video game, albeit with symbols rather than playing cards, where 16
after placing a wager as described at page 2, para. [0017), the player is “to 17
select pairs of vertically or horizontally adjacent symbols in the symbol 18
array 30 that, when swapped (exchanged), create a predefined, award-19
generating symbol combination” (page 2, para. [0018]). Thus, Pacey teaches 20
“setting, prior to swapping, a cost directly associated with the swapping to 21
allow wagering on the swapping,” as recited by claim 8. We determine that 22
the purpose of the wager required by the first embodiment of Pacey is to 23
allow wagering on the swapping. See FF1-2. 24
Furthermore, we are not persuaded that Prerost cannot properly be 25
combined with Pacey, because Prerost is only relied on for teaching that 26
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wagering after an initial wager in any game, whether a swapping card game 1
or replacing card game, was known in the art at the time of the invention. 2
Accordingly, Prevost suggests that wagers could have been placed in the 3
swapping game of Pacey at any point in time, so as to also meet “setting, 4
prior to swapping, a cost directly associated with the swapping to allow 5
wagering on the swapping,” as recited by claim 8 (Ans.27). 6
Thus, we do not agree that the Examiner’s rejection is an improper 7
hindsight reconstruction as it does not include knowledge gleaned only from 8
the Appellant’s disclosure, but rather takes into account the teachings of 9
Pacey and Prerost identified above; i.e., knowledge which was within the 10
level of ordinary skill at the time the claimed invention was made. See In re 11
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (“Any judgment on 12
obviousness is in a sense necessarily a reconstruction based on hindsight 13
reasoning, but so long as it takes into account only knowledge which was 14
within the level of ordinary skill in the art at the time the claimed invention 15
was made and does not include knowledge gleaned only from applicant's 16
disclosure, such a reconstruction is proper”). See also Radix Corp. v. 17
Samuels, 13 USPQ2d 1689, 1693 (D.D.C. 1989) ("[A]ny obviousness 18
inquiry necessarily involves some hindsight."). 19
For the foregoing reasons, we sustain the Examiner’s rejection of claims 20
4, 5, 7-14, and 17-26 as being unpatentable over Pacey in view of Prerost. 21
Claim 35 22
While not separately argued by the Appellant, claim 35 is more limited 23
than claim 8 in further reciting “selecting, prior to playing, a cost associated 24
with the playing to allow playing the multiline card game… setting, prior to 25
swapping, a cost associated with the swapping to allow wagering on the 26
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swapping, wherein the cost associated with the swapping is independent of 1
the cost associated with the playing.” However, Pacey also discloses this 2
additional claim limitation. 3
In particular, Pacey discloses a second embodiment (Figures 13-20) that 4
teaches a video slot game where only instant winning combinations are 5
awarded. See FF3. With respect to the additional wagering step recited by 6
claim 35, Pacey discloses at para. [0035] that the swapping feature of the 7
first embodiment (Figures 3-12) can be combined with the second 8
embodiment (Figures 13-20). See FF4. Thus, Pacey teaches that instant 9
winning combinations (if any) would first be identified, after which the 10
player would have the opportunity to extend the game by swapping. In that 11
each of the first and second embodiments of Pacey requires a wager (as 12
disclosed at paras. [0004] and [0028]), Pacey teaches “selecting, prior to 13
playing, a cost associated with the playing to allow playing the multiline 14
card game… setting, prior to swapping, a cost associated with the swapping 15
to allow wagering on the swapping, wherein the cost associated with the 16
swapping is independent of the cost associated with the playing,” as recited 17
by claim 35. 18
Additionally, our above analysis concerning the combination of Prerost 19
and Pacey as applied claim 8 is also applicable to the aforementioned feature 20
of claim 35. 21
For the foregoing reasons, we also sustain the Examiner’s rejection of 22
claim 35 as being unpatentable over Pacey in view of Prerost. 23
DECISION 24
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The rejection of claims 4, 5, 7-13, and 35 under 35 U.S.C. § 101 as 1
directed to non-statutory subject matter is AFFIRMED. 2
The rejection of claims 4, 5, 7-14, 17-26, and 35 as being unpatentable 3
over Pacey in view of Prerost is AFFIRMED. 4
No time period for taking any subsequent action in connection with this 5
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 6
§ 1.136(a)(1)(iv) (2011). 7
AFFIRMED 8
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