Ex Parte Webb

Board of Patent Appeals and Interferences

Feb 7, 2012

11485413 (B.P.A.I. Feb. 7, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DEREK J. WEBB
____________

Appeal 2010-008274
Application 11/485,413
Technology Center 3700
____________

Before: MURRIEL E. CRAWFORD, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-008274
Application 11/485,413

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STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-21, 23, 27, and
29. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6
(2002).
The claimed invention is directed to Blackjack and Baccarat variant
casino card games (Spec., para. [0003]). Claim 1, reproduced below, is
further illustrative of the claimed subject matter.
1. A method of playing a card game using at least one
standard deck of cards, the method comprising:
(a) dealing two cards to a player, at least the two cards
defining a player hand;
(b) resolving a side game based on a numerical hand
result of the player hand determined according to a modulo 10
count system;
(c) continuing with a primary game using the same cards
used to resolve the side game; and
(d) resolving the primary game based on a numerical
hand result of the player hand determined according to a
conventional count system,
wherein at least one of the side game and the primary
game is a proposition game that is resolved according to a
payscale.

Claims 1-21, 23, 27, and 29 stand rejected under 35 U.S.C. § 101 for
failing to recite statutory subject matter; claims 1, 2, 10-12, 20, and 21 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Parsadaian (US
2005/0218598 A1, pub. Oct. 6, 2005) in view of Chen (US 2006/0017228
A1, pub. Jan. 26, 2006); claims 3-5 and 13-15 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Parsadaian in view of Chen and
Yoseloff (US 2005/0073102 A1, pub. Apr. 7, 2005); claims 3-6, 8, 13-16,
and 18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Appeal 2010-008274
Application 11/485,413

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Parsadaian in view of Chen and Vancura (US 7,070,505 B2, iss. Jul. 4,
2006); claims 7, 9, 17, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Parsadaian in view of Chen, Vancura, and Admitted Prior
Art; claims 23 and 29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Parsadaian in view of Chen and Admitted Prior Art; and
claim 27 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Parsadaian in view of Chen, Official Notice, and Jackson (US 2004/0155407
A1, pub. Aug. 12, 2004).
We AFFIRM-IN-PART.

ISSUES
Did the Examiner err in asserting that claims 1-21, 23, 27, and 29 fail
to recite statutory subject matter under 35 U.S.C. § 101? The issue turns on
(1) whether physical or virtual playing cards constitute a specific machine
under the machine-or-transformation test, and (2) whether the claims would
preempt the abstract idea of the game in all fields.
Did the Examiner err in asserting that a combination of Parsadaian
and Chen renders obvious the subject matter of independent claim 11? The
issue turns on whether Parsadaian teaches away from being modified such
that both the Blackjack game and Baccarat game are played using the same
cards.

1 We choose independent claim 1 as representative of independent claims 1,
11, 12, and 23. 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2010-008274
Application 11/485,413

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FINDINGS OF FACT
Specification
FF1. The Specification discloses that the game can be embodied in a
wide variety of forms and media including, but not limited to, single player
slot video machines, multi-player slot video machines, electronic games and
devices, lottery terminals, scratch-card formats, software as well as inflight,
home, and Internet entertainment. In addition, the game can be readily
implemented as a computer program product (e.g., floppy disk, compact disc
(CD), etc.) comprising a computer readable medium having control logic
recorded therein to implement the features herein as described in relation to
the other preferred embodiments. The control logic can be loaded into the
memory of a computer and executed by a central processing unit (CPU) to
perform the operations described herein (para. [0038]).

Parsadaian
FF2. The core of invention in Parsadaian is to allow a player to
simultaneously play both Blackjack and Baccarat with separate hands (paras.
[0018]-[0020], [0022], [0025], [0027], [0029], [0031]-[0035]).

ANALYSIS
Rejection under 35 U.S.C. § 101
We are not persuaded the Examiner erred in asserting that claims 1-
21, 23, 27, and 29 fail to recite statutory subject matter under 35 U.S.C. §
101 (Reply Br. 1-2). Appellant asserts that because the claims recite playing
cards (either physical or virtual), that the claims are clearly tied to an
apparatus/machine. However, playing cards, both physical and virtual, are
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not an apparatus/machine. Further, the claimed “cards” are not limited to a
particular apparatus/machine, as both Appellant’s arguments and
Specification state that the claimed cards may be physical and virtual (FF1).
As such, the claimed method is directed to a general concept that is abstract
and sweeping as to cover both known and unknown uses of the concept and
be performed through any existing or future-devised machinery. See Interim
Guidance for Determining Subject Matter Eligibility for Process Claims in
View of Bilski v. Kappos, 75 Fed. Reg. 43,922, 43,925 (Factor D(2)) (Jul.
27, 2010).
We conclude that Appellant’s claims contain no limitations as to the
mechanism for playing the game. The claimed method does not sufficiently
recite a physical instantiation. We conclude that Appellant’s claims attempt
to patent and preempt an abstract idea of the game in all fields, and thus is
ineligible subject matter under 35 U.S.C. § 101. See Bilski v. Kappos, 130 S.
Ct. 3218, 3231 (2010) (finding that claims that cover the basic economic
concept of hedging would preempt the use of the concept in all fields).

Rejections under 35 U.S.C. § 103(a)
We are persuaded the Examiner erred in asserting that a combination
of Parsadaian and Chen renders obvious the subject matter of independent
claim 1 (App. Br. 13-16; Reply. Br. 2-4). Appellant asserts that Parsadaian
teaches away from being modified such that both the Blackjack game and
Baccarat game are played using the same cards, because such a modification
would “fundamentally alter the Parsadaian game that the game itself would
lose its identity.” We agree.

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Application 11/485,413

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A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out by the reference, or would be led in a direction divergent from
the path that was taken by the applicant. The degree of teaching away will
of course depend on the particular facts; in general, a reference will teach
away if it suggests that the line of development flowing from the reference's
disclosure is unlikely to be productive of the result sought by the applicant.
See U.S. v. Adams, 383 U.S. 39, 52, 86 S. Ct. 708, 714, 15 L.Ed.2d 572
(1966); W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550-51
(Fed. Cir. 1983), cert. denied, 469 U.S. 851, 105 S. Ct. 172, 83 L.Ed.2d 107
(1984) (the totality of a reference’s teachings must be considered); In re
Caldwell, 319 F.2d 254, 256 (CCPA 1963) (reference teaches away if it
leaves the impression that the product would not have the property sought by
the applicant). If a proposed modification would render the prior art
invention being modified unsatisfactory for its intended purpose, then there
is no suggestion or motivation to make the proposed modification. See In re
Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). If the proposed modification
or combination of the prior art would change the principle of operation of
the prior art invention being modified, then the teachings of the references
are not sufficient to render the claims prima facie obvious. See In re Ratti,
270 F.2d 810, 813 (CCPA 1959).
The core of the invention in Parsadaian is to allow a player to
simultaneously play both Blackjack and Baccarat with separate hands (FF2).
To modify Parsadaian such that both the Blackjack game and Baccarat game
are played using the same cards would diverge from the result sought by
applicant, render the invention of Parsadaian unsatisfactory for its intended
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purpose, and change the principle of operation of Parsadaian. Accordingly,
we do not sustain the rejection of independent claims 1, 11, 12, and 23, or
their dependent claims.

DECISION
The decision of the Examiner to reject claims 1-21, 23, 27, and 29
under 35 U.S.C. § 101 is AFFIRMED.
The decision of the Examiner to reject claims 1-21, 23, 27, and 29
under 35 U.S.C. § 103(a) 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-IN-PART

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