Customized Games Limited

Patent Trials and Appeals Board

Nov 20, 2020

2020002156 (P.T.A.B. Nov. 20, 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.
15/927,784 03/21/2018 Geoffrey William Hall 3286.7-12739.2(P4924-
US-C
7479
66137 7590 11/20/2020
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
11/20/2020 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 GEOFFREY WILLIAM HALL
____________

Appeal 2020-002156
Application 15/927,784
Technology Center 3700
____________

Before KEN B. BARRETT, WILLIAM A. CAPP, and MICHAEL L.
WOODS, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–19 under 35 U.S.C. § 101 as directed to a judicial
exception to patentable subject matter. 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 Customized Games Limited, a wholly
owned subsidiary of Scientific Games Corporation as the Applicant and real
party in interest. Appeal Br. 4.
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THE INVENTION
Appellant’s invention is a variation on the casino card game of
blackjack. Spec. ¶ 2. Claim 1, reproduced below, is illustrative of the
subject matter on appeal.
1. A method of operating a table using at least one physical deck
of cards, the table having a top surface with a felt layout imprinted to
define a plurality of chip areas, the method comprising:
providing an electromechanical shuffler;
providing a shoe;
operating the electromechanical shuffler to shuffle at least one
physical deck of cards;
after operating the electromechanical shuffler, placing into the
shoe the at least one physical deck of cards that has been shuffled;
and
operating the table in a round of the method according to a set of
rules defining an ordered combination of steps, the ordered
combination of steps comprising:
receiving, in a first chip area of the felt layout, at least one
physical chip to indicate participation by a player in the round;
distributing, from the shoe containing the at least one physical
deck of cards, two cards for a player hand and two cards for a
dealer hand;
after completing the player hand with a point total of the
player hand not exceeding twenty-one, completing the dealer
hand, comprising:
with the dealer hand not yet having a point total of at least a
predetermined amount, distributing, from the shoe, at least one
additional card for the dealer hand until the point total of the
dealer hand is at least the predetermined amount; and
after distributing the at least one additional card for the dealer
hand, with the point total of the dealer hand equaling a preset
total, burning at least one card from the dealer hand and
distributing, from the shoe, at least one replacement card for the
dealer hand; and
after completing the dealer hand, resolving the round based at
least in part on the point total of the dealer hand and the point total
of the player hand.
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RELATED CASES
A parent application came before the Patent Trial and Appeal Board
in the case of Ex parte Hall, Appeal No. 2017-002594, 2018 WL 460997
(PTAB, Jan. 17, 2018) (the “2018 case”). The claims in the 2018 case were
substantially similar to the claims of the instant application. In the 2018
case, we affirmed the Examiner’s rejection of all pending claims under 35
U.S.C. § 101 as being directed to a judicial exception to patentable subject
matter.
Thereafter, another parent application to the instant application came
before the Patent Trial and Appeal Board in the case of Ex parte Hall,
Appeal No. 2018-007582, 2019 WL 6208079 (PTAB, Oct. 3, 2019)
(the “2019 case”). The claims in the 2019 case were also substantially
similar to the claims of the instant application. In the 2019 case, we, once
again, affirmed the Examiner’s rejection of all pending claims under 35
U.S.C. § 101 as being directed to a judicial exception to patentable subject
matter.
The instant application is a continuation of the application that was
before us in the 2018 case. As with the previous cases discussed above, the
rejection before us is on the grounds that the claims are directed to a judicial
exception to patentable subject matter under 35 U.S.C. § 101.
OPINION
Appellant argues claims 1–19 as a group. Appeal Br. 1–29. Claim 1
is representative. See 37 C.F.R. §41.37(c)(1)(iv).
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 courts recognize certain judicial exceptions to Section 101,
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namely: (1) laws of nature, (2) natural phenomena, and (3) abstract ideas.
See Mayo Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 70–71
(2012).
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (citing Mayo, 566 U.S.
at 72–73). According to the Supreme Court’s framework, we must first
determine whether the claims at issue are directed to one of those concepts.
Id. If so, we must secondly “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Id.
The Supreme Court characterizes the second step of the analysis as “a
search for an ‘inventive concept’ — i.e., an element or combination of
elements that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.”’
Alice, 573 U.S. at 217–18 (brackets in original) (quoting Mayo, 566 U.S.
at 72).
Under the PTO’s guidelines, in conducting step one of the Alice
framework, 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 interactions 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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2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (the “Guidelines”).
In other words, under prong 1 of an abstract idea analysis, we look to
whether the claim recites an abstract idea. Then, if it does, under prong 2,
we look at the claim, as a whole, and determine whether the claim is
“directed to” the abstract idea or, instead, is “directed to” a “practical
application” of the abstract idea.
Step 1, Prong 1
The Guidelines identify three key concepts identified as abstract
ideas: (a) mathematical concepts including “mathematical relationships,
mathematical formulas or equations, mathematical calculations”;  (b) certain
methods of organizing human activity, such as “fundamental economic
principles or practices,” “commercial or legal interactions,” and “managing
personal behavior or relationships or interactions between”; and (c) mental
processes including “observation, evaluation, judgment, [and] opinion.”
Guidelines, 84 Fed. Reg. at 52.
With respect to the first step, the Examiner determines that the claims
are directed to an abstract idea. Final Act. 3. According to the Examiner,
the steps are directed to an abstract idea in the form of a fundamental
economic practice which construes a method of organizing human activity.
Id. The Examiner cites In re Smith, 815 F.3d 816 (Fed. Cir. 2016) as
authority for the proposition that rules for conducting a wagering game are
directed to an abstract idea. Id.
Appellant argues that claim 1 does not recite an abstract idea. Appeal
Br. 15. Appellant denies that rules for conducting a wagering game
constitute an “idea.” Id. Appellant “disagrees” with the holding of the
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Federal Circuit in Smith, supra, as well as that of In re Marco Guldenaar
Holdings B.V., 911 F.3d 1157, 1158 (Fed. Cir. 2018).
A method of organizing human activity is recognized by the courts as
an abstract idea. See In re TLI Communications LLC Patent Litig., 823
F.3d 607, 613 (Fed. Cir. 2016) (classifying and storing digital images is an
abstract idea as a method of organizing human activity); see also Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed.
Cir. 2015) (tracking financial transactions to determine whether they exceed
a pre-set spending limit is an abstract idea as a method of organizing human
activity); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1318 (Fed. Cir. 2016) (screening messages is an abstract idea as a method of
organizing human activity); BASCOM Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) (filtering internet
content is an abstract idea as a method of organizing human behavior).
There is little question here that claim 1 recites an abstract idea. We
have, in the past, consistently followed the Federal Circuit’s holdings in
Smith and Guldenaar regarding the notion that game rules entail a method of
organizing human activity, which is a judicial exception, namely, an abstract
ideal. Ex parte Milder, Appeal 2018-004222, 2019 WL 1776842, *5 (PTAB
Mar. 25, 2019); Hall, 2019 WL at *5. Smith and Guldenaar represent
binding legal authority that we are constrained to follow, notwithstanding
Appellant’s disagreement with those decisions.
Step 1, Prong 2
Under Prong 2 of Step 1 of the Guidelines, we do not assume that
such claims are directed to patent ineligible subject matter because “all
inventions at some level embody, use, reflect, rest upon, or apply laws of
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nature, natural phenomena, or abstract ideas.” In re TLI Commc’ns LLC
Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) quoting Alice. Instead,
“the claims are considered in their entirety to ascertain whether their
character as a whole is directed to excluded subject matter.” McRO, Inc. v.
Bandai Namco Games America Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016).
If the claims are not directed to an abstract idea, the inquiry ends.
Guidelines. If the claims are “directed to” an abstract idea, then the inquiry
proceeds to the second step of the Alice framework. Id.
Consequently, we consider whether the claimed gaming method
includes additional elements that integrate the judicial exception into a
practical application. 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. Guidelines.
According to the Examiner:
[T]he Abstract idea is not integrated into a practical application
by the combination of additional elements. The rules to the
card game are applied using general gaming technology as
opposed to a particular machine . . . The rules are generally
linked to generic gaming technology elements, including
physical deck of cards, chips, table, electronic card reader,
electronic computer with output device, electromechanical
shuffler and card shoe. The drawings fail to go into any details
for these additional limitations, which is to be expected because
of the generic nature of these elements in the gaming art.
Ans. 5.
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Appellant argues that claim 1 is not directed to an abstract idea
because it is integrated into a practical application. Appeal Br. 16–18. Here,
the method of claim 1 generally comprises six functional steps, namely:
(1) providing a . . . shuffler;
(2) providing a shoe;
(3) operating the . . . shuffler;
(4) placing cards into the shoe
(5) playing the game according to a set of rules, including:
(a) receiving a wager;
(b) distributing cards;
(c) completing the dealer hand – including burning a card; and
(6) resolving the round.
Claims App.
Appellant demonstrates a fundamentally incorrect understanding of
what it means for an idea to be integrated into a “practical” application. In
Appellant’s way of thinking, playing a game is a “practical” application of
game rules. We agree that playing the game results in an “application” of
the game rules. We do not agree that such an application is a “practical” one
within the meaning of our Guidelines. The Smith case involved a variation
on the casino card game of Blackjack, much as in the instant case. The
Federal Court, in Guldenaar, made the following observations concerning its
previous decision in the Smith case.
In re Smith, 815 F.3d 816 (Fed. Cir. 2016), is highly instructive
in this case. In Smith, we concluded that the claimed “method
of conducting a wagering game” using a deck of playing cards
was drawn to an abstract idea. We likened the claimed method
to the method of exchanging financial obligations at issue in
Alice and the method of hedging risk at issue in Bilski. Id.
at 819. We agreed with the Board’s reasoning that “[a]
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wagering game is, effectively, a method of exchanging and
resolving financial obligations based on probabilities created
during the distribution of the cards.” Id. at 818-19.
Guldenaar, 911 F.3d at 1160.
To illustrate what is required for an invention to be “integrated” into a
“practical application,” we reversed an Examiner’s Section 101 rejection in
the case of Ex Parte Hladio, 2019 WL 2285538 (PTAB April 29, 2019). In
that case, the inventor used sensor and computer technology to improve a
surgical procedure that entailed navigation and alignment of a surgical tool
and a patient’s bone. Id. We noted that both the bone and the surgical tool
were physical real world tangible items. Id. We further noted that invention
was directed to improving the performance and outcome of the surgical
procedure as a result of improved bone-tool alignment. Id. We reversed the
Examiner in that case because, although the claims recited an abstract idea,
the idea was integrated into an application that was “practical.” Id. In
contrast, playing a card game in accordance with Appellant’s rules and using
Appellant’s game instrumentalities falls short of the standard of a “practical
application” required by the Guidelines.
Given the strong similarity between the instant case and Smith, where
a variation of Blackjack was deemed “directed to” an abstract idea, we
determine that Appellant’s variation of the Blackjack card game fails to
integrate the judicial exception into a practical application and, therefore, is
directed to an abstract idea.
Step 2
Turning to step 2 of the Alice/Mayo analysis, we look more precisely
at what the claim elements add in terms of whether they identify an
“inventive concept” in the application of the ineligible matter to which the
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claim is directed to. SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167
(Fed. Cir. 2018). “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].’” Alice, 573 U.S. at 221
(quoting Mayo, 566 U.S. at 77–78). Those “additional features” must be
more than well-understood, routine, conventional activity. Mayo, 566
U.S. at 79.
Under step two of the Alice/Mayo framework, the Examiner
determines that any “additional” elements recited in the claim 1 do not
amount to more than matters of a routine and conventional nature. Final
Act. 5. “[T]hese additional features fail to demonstrate an ‘inventive
concept’ sufficient to transform the abstract idea into a patent-eligible
application. Id. at 6.
Appellant argues that the claim contains an “inventive concept.”
Appeal Br. 24. Appellant argues that the Examiner errs in finding that the
“additional elements” under Step 2 of the analysis are limited to physical
features such as cards, chips, a card shuffler, and a shoe. Id. at 25.
[I]t is Appellant's position that all elements that are more than
mere abstract ideas must be considered under Step 2B as the
“additional elements,” including the activities of the claims and
not only the physical items of the claims. After all, there is no
requirement in the law that the physical devices or items used in
a method act must, themselves, be unconventional in order for
the method to provide significantly more than a mere abstract
idea.
Id.
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In addition, Appellant argues that the rejection fails to comply with
Examination guidance issued under the Berkheimer Memo. 2 Id. at 24–26.
“Specifically, [the] memorandum addresses the limited question
of whether an additional element (or combination of additional
elements) represents well-understood, routine, conventional
activity.” Berkheimer Memo, p. 1 . . .. In fact, the word
“activity” is used twenty times in the short document. Clearly, a
claim's recited activities are the focus of the Berkheimer
conventionality question.
Id. at 26 (emphasis omitted).
In response, the Examiner points out that Appellant made
substantially the same argument in the two previous related appeals that we
mentioned at the beginning of this Decision and that there is no reason to
reach a different outcome under the facts of this case. Ans. 11. With respect
to Appellant’s “all elements” argument, the Examiner cites to BSG Tech.
LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) for the
proposition that use of the ineligible concept fails to supply the “inventive
concept” required by Alice. Id. at 12; see also Hall, 2019 WL at *7.
In reply, Appellant attempts to distinguish its earlier appeals on the
basis that the previous appeals were resolved before the PTO issued its
Guidelines in 2019. Reply Br. 2.
Appellant’s arguments based on newness of the Guidelines is not
persuasive. Contrary to Appellant’s representations, the 2019 case was
expressly analyzed and decided under the Guidelines. Hall, 2019 WL at *3.
Furthermore, the Guidelines do not change the substantive law of patent

2 The “Berkheimer Memo” refers to a Memorandum from the U.S. Patent &
Trademark Office, entitled Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.) (Apr. 19, 2018).
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eligibility. They merely provide an analytical framework to guide
Examiners and the Board in applying case law precedent that governs the
judicial exceptions to statutory subject matter such as Smith and Guldenaar.
Appellant’s “additional elements” argument is unpersuasive. The
phrase “additional elements” means what it says. They are elements of the
claim that are in “addition to” the recital of an abstract idea. Guidelines, 84
Fed. Reg. at 55, n. 24. What Appellant points to now is primarily the
abstract idea itself, i.e., the game rules. Appeal Br. 24–26. Apart from
furnishing game instrumentalities in the form of a card shuffler, a shoe, a
deck of cards, and wagering chips, Appellant’s steps of operating the
shuffler, operating the physical instrumentalities in accordance a set of rules,
and resolving the playing hand merely apply the abstract idea of step 1.
However, it does not matter how innovative Appellant’s abstract idea is.
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed.
Cir. 2016). A claim for a new abstract idea is still an abstract idea. Id.
In the instant case, the elements recited in the claim that constitute
“additional elements” to the elements that recite the abstract idea are: (1) a
card shuffler; (2) a shoe; (3) a deck of cards; and (4) wagering chips. Claims
App. Appellant does not even allege, much less point to any persuasive
evidence, that such game instrumentalities represent some form of
technological advancement over known gaming instrumentalities. See
generally Appeal Br. For example, the card shuffler is explicitly described
in the Specification as being based on known, prior art technology. Spec.
¶ 34 (“Such a device is described in U.S. Patent No. 5,681,039, issued
October 28, 1997”). Appellant’s reliance on the Berkheimer Memo is of no
avail. Appellant’s Specification describes all of the physical
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instrumentalities as either being based on known technology, or are
described at a high level of generality that presumes familiarity on the part
of the reader. See Id. ¶¶ 54–55.
Appellant is required to submit a specification that describes the
invention in “full, clear, concise, and exact terms.” 35 U.S.C. § 112(a). For
purposes of the Alice/Mayo analysis, a specification demonstrates the well-
understood, routine, conventional nature of step 2 “additional elements”
when it describes them in a manner that indicates they are sufficiently well-
known that they need not be described with particularity to satisfy 35 U.S.C.
§ 112(a).3 That is the case here. The Examiner’s findings of fact under
Step 2 of the Alice analysis are fully in accord with the Berkheimer Memo.
We conclude with the following observation from our Decision in
the 2019 case which applies, with equal force, to this substantially identical
case brought by the same applicant.
Appellant’s argument based on the meaning of
unconventional “activities” is off the mark. The “activities” that
Appellant alleges are unconventional are just the abstract idea
itself, not “additional elements” to the abstract idea that are
analyzed under Step 2 of the Alice/Mayo framework. “It has
been clear since Alice that a claimed invention's use of the
ineligible concept to which it is directed cannot supply the
inventive concept that renders the invention ‘significantly
more’ than that ineligible concept.” BSG Tech. LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018).
Furthermore, as Appellant’s card game relies heavily on the
existing game of blackjack, the claimed invention entails well-
understood, routine, conventional activities previously known
to the industry. Alice, 573 U.S. at 225. Essentially, all
Appellant has done here is to take the casino gambling game of

3 Berkheimer Memorandum.
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blackjack and modify it by making a variation in the dealing
and playing of a hand of cards. No matter how much of an
improvement in the game of blackjack the claims recite, the
advance lies entirely in the realm of abstract ideas, with no
plausibly alleged innovation in the non-abstract application
realm. An advance of that nature is ineligible for patenting.
See SAP Am., Inc. v. InvestPic, LLC, 898 F .3d 1161, 1163
(Fed. Cir. 2018).
Hall, 2019 WL at *7. In short, we considered the same arguments that
Appellant raised regarding Step 2 of the Alice analysis in connection with
the 2019 case and found them to be unpersuasive. They are no more
persuasive when presented yet a second time with no accompanying changes
in either the facts or the law.
Accordingly, for the above reasons, the recited elements of claim 1,
considered individually and as an ordered combination, do not constitute an
“inventive concept” that transforms independent claim 1 into patent-eligible
subject matter. On this record, we affirm the Examiner's § 101 rejection of
claim 1, as well as claims 2–19, which fall with claim 1.
CONCLUSION
Claims
Rejected
§ References/Basis Affirmed Reversed
1-19 101 Unpatentable Subject Matter 1-19
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). See 37
C.F.R. § 41.50(f).
AFFIRMED