Bally Gaming, Inc.

Patent Trials and Appeals Board

Jun 2, 2020

2018004251 (P.T.A.B. Jun. 2, 2020)

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.
14/462,346 08/18/2014 Roger M. Snow 3286-12166(PA4421.ap.US) 8230
66137 7590 06/02/2020
TRASKBRITT, P.C. /Bally Gaming, Inc.
PO Box 2550
Salt Lake City, UT 84110
EXAMINER
RENWICK, REGINALD A
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
06/02/2020 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. SNOW
____________

Appeal 2018-004251
Application 14/462,346
Technology Center 3700
____________

Before MICHAEL L. HOELTER, BRADLEY B. BAYAT, and
FREDERICK C. LANEY, Administrative Patent Judges.

LANEY, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–14 and 17–22 under 35 U.S.C. § 101
as directed to non-statutory subject matter. Claims 15, 16, and 23–26 have
been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Bally
Gaming, Inc. (D/B/A Bally Technologies, Inc.) and Scientific Games
Corporation. Appeal Brief (“Appeal Br.”) 2, filed Sept. 12 2017.
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BACKGROUND
Appellant’s disclosure relates to “methods of administering wagering
games for casinos and other gaming establishments, and related systems and
apparatuses.” Spec. ¶ 1. The claims more specifically describe methods “of
administering wagering games [which] may involve accepting an ante wager
and a blind wager from a player.” Id.Abstract. The administration of a
wagering game involves the following steps. Id. ¶ 5. “[A]ccepting a
mandatory ante wager from a player on a game of five-card stud poker
played against a dealer hand” in a first designated area on the gaming table.
Id. A mandatory blind wager that qualifies as a predetermined winning hand
may be accepted from the player by receiving a wager in a second
designated area on the gaming table, which is separate and distinct from the
first designated area. Id. Five randomized physical cards are dealt to the
player and to the dealer from a 53-card deck, which includes a standard 52-
card deck of playing cards and one joker. Id. A play wager may be
accepted from the player by receiving a wager in a third designated area of
the table. Id. The ante and blind wagers remain in play, or the player may
fold, which forfeits their respective wager. Id. The ante and play wagers
may be resolved by comparing the dealer hand to a player hand. Id. “A
payout on the ante and play wagers may be paid to the player when the
player hand outranks the dealer hand and the ante and play wagers may be
collected when the dealer hand outranks the player hand.” Id. “The blind
wager may be resolved by comparing the dealer hand to the player hand and
comparing the player hand to a set of predetermined winning hands.” Id. A
payout on the blind wager may be paid when the player hand outranks the
dealer hand and when the player hand is a predetermined winning hand. Id.
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“The blind wager may be returned to the player (push) when the player hand
outranks the dealer hand and the player hand is not a predetermined winning
hand.” Id. The blind wager may be collected when the dealer hand outranks
the player hand. Id.
Claims 1 and 13 are independent, from which the remaining claims
depend. Illustrative claim 1 is reproduced below with bracket text, bolding,
and italicizing added.
1. A method of administering a wagering game,
comprising:
[(a)] accepting a mandatory ante wager from a player on a
game of five-card stud poker played against a dealer hand
by receiving a physical, monetarily valuable wagering
element in a first designated area on a surface of a
gaming table;
[(b)] accepting a mandatory blind wager that a hand dealt to the
player will qualify as a predetermined winning hand from
the player by receiving a physical, monetarily valuable
wagering element in a second designated area on the
surface of the gaming table, the second designated area
being separate and distinct from the first designated
area;
[(c)] dealing five randomized physical cards to the player and
to the dealer hand from a 53-card deck including a
standard 52-card deck of playing cards and one joker,
the joker and four deuces being designated as wild cards;
[(d)] accepting a play wager from the player by receiving a
physical, monetarily valuable wagering element on the
surface of the gaming table, responsive to which the ante
and blind wagers remain in play by leaving the wagering
elements associated with the ante and blind wagers in the
first and second designated areas, respectively, or
accepting a player election to fold, responsive to which
the wagering elements associated with the ante and blind
wagers are physically collected;
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[(e)] resolving the ante and play wagers by comparing the
dealer hand to a player hand held by the player;
[(f)] paying a payout on the ante and play wagers to the player
when the player hand outranks the dealer hand by
physically transferring wagering elements to the player
and physically collecting the wagering elements
associated with the ante and play wagers when the dealer
hand outranks the player hand;
[(g)] resolving the blind wager by comparing the dealer hand
to the player hand and comparing the player hand to a
set of predetermined winning hands; and
[(h)] paying a payout on the blind wager to the player when the
player hand outranks the dealer hand and the player hand
is a predetermined winning hand by physically
transferring wagering elements to the player, returning
the blind wager to the player when the player hand
outranks the dealer hand and the player hand is not a
predetermined winning hand by physically transferring
the wagering element associated with the blind wager to
the player, and physically collecting each wagering
element associated with the blind wager when the dealer
hand outranks the player hand, regardless of whether the
player hand is a predetermined winning hand.
JUDICIAL EXCEPTIONS
The Patent Act defines subject matter eligible for patent protection as
“any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. Yet
the Supreme Court has “long held” that this provision contains an important
implicit exception: “[l]aws of nature, natural phenomena, and abstract ideas
are not patentable.” Ass’n for Molecular Pathology v. Myriad Genetics,
Inc., 569 U. S. 576, 589 (2013). These three concerns are “judicially created
exceptions to § 101,” or more concisely, “judicial exceptions.” McRO, Inc.
v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1311 (Fed. Cir. 2016).
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Thus, an “abstract idea” is a judicial exception to subject matter (e.g., a
method) that would otherwise be deemed patent eligible under 35 U.S.C.
§ 101.
THE ALICE TEST
In Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), the
Supreme Court provided a two-step test to detect when an attempt is being
made to patent an abstract idea in isolation. Id. at 217–18. In Alice step one,
a determination is made as to whether the claim at issue is “directed to” an
abstract idea. Id. at 218. When analyzing a claim under Alice step one,
attention can be given to whether an abstract idea recited in the claim has
been integrated into a practical application “thereby ‘transform[ing]’ them
into a patent-eligible invention.” Id. at 217 (referencing Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 72 (2012)). While a
judicial exception (e.g., an abstract idea) cannot be patented, “an
application” of a judicial exception “to a known structure or process may
well be deserving of patent protection.” Diamond v. Diehr, 450 U.S. 175,
187 (1981); see also Bilski v. Kappos, 561 U.S. 593 (2010).
If the claim at issue is “directed to” an abstract idea, Alice step two
must be performed. See Alice, 573 U.S. at 217–18. In the second step of the
Alice test, a determination is made as to whether “additional elements” in the
claim, both individually and as an ordered combination, contribute
“significantly more” than the abstract idea. Id. When analyzing a claim
under Alice step two, attention is given to whether additional elements, and
any ordered combination thereof, are “well-understood,” “routine,” or
“conventional.” Id. at 225.
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2019 § 101 GUIDANCE
The 2019 Revised Patent Subject Matter Eligibility Guidance (“2019
§ 101 Guidance”) provides us with specific steps for discerning whether a
claim passes the Alice test for patent eligibility. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019). These
steps are “[i]n accordance with judicial precedent” and consist of a
two-pronged Step 2A and a Step 2B. Id. at 52.
ANALYSIS
The Examiner determines that the claims are directed to non-statutory
subject matter under 35 U.S.C. § 101. Final Act. 2–6.2 Appellant argues
claims 1–14 and 17–22 as a single group. See Appeal Br. 10–16. As a
result, we select claim 1 as representative, and the remaining claims stand or
fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines that independent claim 1 is “directed to” an
abstract idea of “game rules” and “managing a game,” which are “similar to
the types of ‘methods of organizing human activity’ found abstract by the
courts”; and the Examiner determines that additional elements in
independent claim 1 do not amount to “significantly more” than this abstract
idea. Final Act. 3, 5. Appellant contends claim 1 is not directed to an
abstract idea because there are “differences between the claimed method[]
and conventional methods of administering five-card stud poker” and,
“[e]ven if the claims were directed to an abstract idea, the claims are patent
eligible because each is limited to a specific, practical application of the
underlying game rules by requiring performance of unconventional actions

2 Final Office Action (“Final Act.”), dated Feb. 27, 2017.
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in combination with the other required actions and physical
implementation.” Appeal Br. 10. For the following reason, we are not
persuaded the Examiner reversibly erred.
Step 2A – Prong One
Per the 2019 § 101 Guidance, we begin our analysis with the first
prong of Step 2A (“Prong One”) where we determine whether the claim
“recites” an abstract idea. 2019 § 101 Guidance, 84 Fed. Reg. at 54. The
Guidance “extracts and synthesizes key concepts identified by the courts as
abstract ideas,” and these concepts include “[c]ertain methods of organizing
human activity,” and, more particularly, “interactions between people,” and,
even more particularly, “rules or instructions.” Id. at 52.
For example, claims describing “rules” and/or “instructions” for a
dealer’s interaction with players during a card game, “are drawn to an
abstract idea.” In re Smith, 815 F.3d 816, 819 (Fed. Cir. 2016). In Smith,
the dealer’s rules/instructions for interacting with the players included
“accepting” game-related data from the players, “shuffling” a deck of cards,
“dealing” cards to the players, “examining” the players’ hands, “resolving”
player-versus-dealer standoffs, “expos[ing]” a card to the players,
“allowing” to take an additional card or stand pat, “comparing” the value of
each player’s hand, and “resolving” the game. Id. at 817–818.
Independent claim 1 sets forth a method comprising steps (a)–(h).
These steps recite accepting wagers, dealing cards, resolving wagers, and
paying a payout, which are instructions and rules that a dealer would follow
in administering a wagering game. In Appellant’s words, these recitals
“require that the wagering game be administered in a specific way (i.e., in
player-versus-dealer format, evaluating hands by different standards,
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requiring a mandatory side wager on whether a predetermined hand rank
will be achieved, and requiring a single play wager).” Appeal Br. 15. Steps
(a), (b), and (d) instruct a dealer to accept an ante and various kinds of
wagers. Step (c) instructs a dealer to deal five cards. Steps (e) and (g)
instruct a dealer to compare the respective cards dealt to resolve the wagers.
Finally, steps (f) and (h) instruct a dealer to payout on the ante and the
various wagers when the cards dealt to a player satisfy the conditions
necessary to resolve a wager in their favor.
Thus, independent claim 1 recites instructions for organizing the
activity of a dealer when interacting with players during a wagering game at
a gaming table. We agree with the Examiner that these “instructions” and/or
“rules” for administering a wagering game constitute a “[c]ertain method[]
of organizing human activity” under the Guidance, which is an abstract idea.
See 2019 § 101 Guidance, 84 Fed. Reg. at 52. Consequently, we proceed to
the second prong of Step 2A (“Prong Two”) of the Guidance. See id. at 54.
Step 2A – Prong Two
Under Prong Two, we evaluate whether the claim contains additional
elements that “integrate” the abstract idea “into a practical application.”
(See 2019 § 101 Guidance, 84 Fed. Reg. at 52.) A claim that integrates a
judicial exception into a practical application will 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 judicial exception.” (Id. at 54.) The “additional
elements” must be “claim features, limitations, and/or steps that are recited
in the claim beyond the identified judicial exception.” 2019 § 101
Guidance, 84 Fed. Reg. at 55, n.24.
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The 2019 § 101 Guidance requires us to also look at independent
claim 1 as a whole in our evaluation of whether the abstract idea has been
integrated into a practical application. See id. at 54. Even when additional
elements are not enough on their own to meaningfully limit an exception, the
claimed combination of these additional elements may still provide the
practical application. Id. Indeed, the Federal Circuit has held that it is
possible for “an inventive concept” to reside in “the non-conventional and
non-generic arrangement of known, conventional pieces,” such as “a set of
generic computer components.” BASCOM Global Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).
Here, the only “additional elements” beyond the recited instructions
that a dealer follows during a wagering game are a gaming table and playing
cards. The instructions, however, do not alter the functional or structural
characteristics of those elements. Instead, those elements are merely used by
the dealer while performing the recited instructions (i.e., the gaming table
with designated areas for wagers provides a surface for the game and the
playing cards with symbols are distributed and used to resolve wagers).
Thus, under Prong Two of Step 2A, the additional elements in independent
claim 1 do not integrate the abstract idea into a practical application, and we
proceed to Step 2B.
Step 2B
In Step 2B, we evaluate whether “additional elements recited in the
claim[] “provide[s] ‘significantly more’ than the recited judicial exception.”
See 2019 § 101 Guidance, 84 Fed. Reg. at 56. More particularly, we evaluate
whether these additional elements “add[] a specific limitation or combination
of limitations that are not well-understood, routine, conventional activity,” or
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whether they instead “simply append[] well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.” Id. The additional elements must
consist of something other than a conventional arrangement of conventional
components to qualify as “significantly more” under the Alice test for patent
eligibility. Id.
The gaming table and playing cards in this case, however, are merely
conventional elements used with wagering games. Moreover, those
elements are used in a well-understood and routine manner––the table
provides a surface for the game and the distributed cards are used to resolve
wagers.
Consequently, under Step 2B, the additional elements in independent
claim 1 do not provide significantly more than the recited abstract idea (the
instructions for a dealer to follow when interacting with players during a
wagering game). We therefore agree with the Examiner that independent
claim 1 fails the Alice test for patent eligibility.
The Appellant’s Arguments
The Appellant argues that “[t]he claimed methods are not directed to
abstract ideas because they involve new and useful variations in the
administration of five-card, player-versus-dealer stud poker requiring
changing the standards by which hands are resolved.” Appeal Br. 11. We
disagree because, regardless of the novelty of Appellant’s rules for the
wagering game, the fact still remains the claimed method is describing a set
of rules for a game, which the Federal Circuit has held qualifies as an
abstract idea. In re Smith, 815 F.3d at 819. Appellant contends that Smith is
not controlling in this case because “[t]he applicant in that case relied only
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on the presence of physical cards, not on the mechanics of the game and
resulting actions to be performed.” Appeal Br. 13. Appellant’s attempt to
distinguish Smith is unpersuasive, however, because Appellant fails to
provide a clear explanation of how its “mechanics of the game” is different
than those involved in Smith, other than the specific rules of the game
recited. Appellant further distinguishes Smith because “the actions required
by the claims are unconventional and non-routine.” Reply Br. 2. But,
separate from the instructions and rules of the game that encompass the
abstract idea, Appellant does not adequately explain which actions are
“unconventional and non-routine.” It appears Appellant is interpreting
Smith to narrowly hold that only the specific set of rules at issue in that case
are abstract ideas, but Appellant provides no basis for such a narrow reading,
and we do not find support for doing so. Otherwise, Appellant’s attempt to
rely the uniqueness of the recited rules themselves is misplaced because
even a “brilliant” abstract idea “does not by itself satisfy the § 101 inquiry.”
Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591
(2013).
Thus, after careful consideration of the Appellant’s arguments, we
still agree with the Examiner that independent claim 1 is directed to a
judicial exception without significantly more. As such, we sustain the
rejection of claim 1 under § 101, including claims 2–14 and 17–22, which
fall with claim 1.
Summary
We sustain the Examiner’s rejection of claims 1–14 and 17–22 under
35 U.S.C. § 101.
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CONCLUSION
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–14, 17–
22
101 Eligibility 1–14, 17–
22

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