Ex Parte Au-Yeung

Patent Trial and Appeal Board

Oct 26, 2017

13879072 (P.T.A.B. Oct. 26, 2017)

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.
13/879,072 04/12/2013 Chi Fat Au-Yeung CUNANT 2010US 1394
7590
DAVIS & BUJOLD, P.L.L.C.
112 PLEASANT STREET
CONCORD, NH 03301
EXAMINER
LAYNO, BENJAMIN
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
10/30/2017 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):
patent @ nhpat. com
tclark@nhpat.com
mbuj old @ nhpat. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHI FAT AU-YEUNG
Appeal 2015-004929
Application 13/879,072
Technology Center 3700
Before JOHN C. KERINS, GEORGE R. HOSKINS, and
BRANDON J. WARNER, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Chi Fat Au-Yeung (“Appellant”)1 appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 11—202 in this application. The
Board has jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Appeal Brief identifies Appellant as the real party in interest. Br. 1.
2 Claims 1—10 are canceled, and claim 21 is withdrawn. Final Act. 2—3;
Br. 1. The Appeal Brief states “Appellant is not requesting appeal of
claim 20 and hereby requests cancellation of that claim in accordance with
37 C.F.R. 41.33(b)(1).” Br. 1, n.l. The cited rule indicates “[ajmendments”
filed with or after an Appeal Brief may be admitted to cancel claims.
37 C.F.R. § 41.33(b)(1). An Appeal Brief is not an Amendment, so
Appellant’s submission does not comply with the rule. Therefore, claim 20
is still part of the application.
Appeal 2015-004929
Application 13/879,072
CLAIMED SUBJECT MATTER
Claim 11 is the sole independent claim on appeal, and it recites:
11. A method of playing a card game with a plurality of
physical cards that is played on a physical game playing surface,
the method comprising the steps of:
providing a playing area on the game playing surface with
the playing area being divided into a plurality of individual
player areas;
one or more players placing a bet in a bet area of an
individual player area on the game playing surface, to participate
in the game;
dealing an individual hand of one or more cards to each of
the one or more players;
dealing a hand of one or more cards to a dealer;
calculating a value of each of the player’s individual hands
and the dealer’s hand using conventional baccarat points count
rules;
each player having the option of placing an additional bet
in a draw bet area of the player’s individual player area on the
game playing surface to draw an additional card;
the dealer drawing an additional card if the point-count of
the one or more cards initially dealt to the dealer is within a
predetermined range, otherwise the dealer standing on the one or
more cards initially dealt to the dealer;
where the dealer or any player draws an additional card the
point-count for the additional card is added to the point-card of
the original hand thereby determining the value of the completed
hand; and
the player [winning] the game if the point count of the
player’s individual completed hand is higher than that of the
dealer.
Br. 14 (Claims App.).
REJECTIONS ON APPEAL
Claims 11—20 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
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Application 13/879,072
Claims 11—20 stand rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
ANALYSIS
A. § 112 Indefiniteness (Claims 11—20)
The Examiner determines the claim 11 limitation of “using
conventional baccarat points count rules” is indefinite. Final Act. 3. The
Examiner finds “[tjhere are many variations of baccarat points count rules,”
citing Snow ’995, Snow ’840, and Alaeddin in support,3 and determines
claim 11 is indefinite for failing to identify which variation(s) are
“conventional” as claimed. Id.; Ans. 12—13 (citing Snow ’995 41, 42, 45,
and 46; Snow ’840 1 57; and Alaeddin || 46-47).
Appellant responds that, while the references cited by the Examiner
“do discuss variations of baccarat, they do not discuss variations of the
‘point count rules,’ but instead distinctly identify the same conventional
point count rulesC Br. 12 (citing Snow ’995 7; Snow ’840 8—11; and
Alaeddin, Fig. 5). Appellant contends those rules are “aces count one, face
cards count zero, all other cards count their indicated value; and the hand
total is determined modulo ten so that the highest possible value of a hand is
nine.” Id.
A claim is indefinite when it contains words or phrases whose
meaning is unclear. Ex parte McAward, No. 2015-006416, 2017 WL
3669566, *2—6 (PTAB Aug. 25, 2017) (precedential). The evidence of
3 These references are, respectively, US 2008/0230995 A1 (published
Sept. 25, 2008); US 2008/0296840 A1 (published Dec. 4, 2008); and
US 2002/0190470 A1 (published Dec. 19, 2002). Final Act. 3; Notice of
References Cited (mailed Jan. 30, 2014).
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Application 13/879,072
record establishes that the meaning of “conventional baccarat points counts
rules” is not unclear. Most importantly, Appellant’s Specification indicates:
[0013] The value of each Player’s and the Dealer’s hands are
decided on conventional Baccarat point-count rules, as follows:-
[0014] Cards 2—9 are worth face value; 10s and face cards (J,
Q, and K) are worth zero and Aces are worth 1 point.
[0015] Players calculate their score by taking the sum of all
cards modulo 10 meaning that after adding the value of the cards
the tens’ digit is ignored.
Substitute Specification (filed Apr. 12, 2013) (hereafter “Spec.”), pg. 2
(emphasis added). The Specification then goes on to provide a few
examples of such conventional rules. Id. at pgs. 2—3. This description of
conventional rules in Appellant’s Specification lends sufficient clarity to the
scope of claim 11. It is further consistent with the prior art cited by the
Examiner. See Snow ’995 H 6—7; Snow ’840 H 6—11; Alaeddin, Fig. 5,
TfU 3—7, 40-41. The prior art disclosures cited by the Examiner simply relate
to different variations of the same conventional baccarat points count rules
described in Appellant’s Specification, or certain side bets which can be
made. Snow ’995 H 41—46; Snow ’840 157; Alaeddin, Abstract, H 46-47.
For the foregoing reasons, we do not sustain the rejection of claim 11,
and its dependent claims 12—20, as indefinite.
B. § 101 Non-Statutory Subject Matter (Claims 11—20)
In appealing the § 101 rejection, Appellant argues for the patentability
of claims 11—20 as a group, without arguing for the patentability of any
dependent claim separately from claim 11. Br. 4—12. We select claim 11 to
decide the appeal as to the § 101 rejection, with the other claims standing or
falling with claim 11. 37 C.F.R. § 41.37(c)(l)(iv).
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Claim Construction Analysis
The Examiner determines the method of claim 11 “can . . . most
broadly be performed with or without the devices recited” — that is, with or
without a plurality of physical cards and a physical game playing surface.
Final Act. 4; Ans. 10—11. According to the Examiner, the “playing cards
may be virtually or electronically represented on a display of an electronic
gaming machine,” and “the game playing surface may also be virtually or
electronically represented on” the display. Final Act. 4.
Appellant contends the Examiner’s claim construction is not correct,
because claim 11 is limited to using “physical” cards played on a “physical”
surface, thereby excluding virtual implementation via electronic
representation on a display. Br. 4—8. We agree with Appellant in this
regard. The preamble of claim 11 recites “a plurality of physical cards that
is played on a physical game playing surface,” and the body of claim 11
repeatedly refers back to “one or more cards” and “the” surface. Br. 14
(Claims App.) (emphases added). The plain and ordinary meaning of
reciting physical cards and a physical game playing surface is to exclude
virtual cards and a virtual game playing surface, such as shown on an
electronic display. The Specification discloses both potential embodiments
(Spec. pgs. 6—7 (1114—16)), but the claim term “physical” is sufficient to
limit claim 11 to the physical, non-virtual, world embodiment.
§101 Analysis
The Examiner determines claim 11 fails to recite patent-eligible
subject matter under 35 U.S.C. § 101. Ans. 3—9. In support, the Examiner
applies a machine or transformation test analysis. Id. at 3—5. The Examiner
also applies an abstract idea analysis. Id. at 5—7 (citing Bilski v. Kappos,
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561 U.S. 593 (2010)).4 In the latter regard, the Examiner views Appellant’s
claimed method “as an attempt to claim a new set of rules for playing a card
game,” and determines “a set of rules qualifies as an abstract idea.” Id. at 6—
7 (emphasis omitted).
Appellant asserts “the factors of the present claims weighing toward
eligibility outweigh any factors that might possibly weigh against
eligibility,” citing various factors identified in the Interim Guidance for
Determining Subject Matter Eligibility for Process Claims in View of Bilski
v. Kappos, 75 Fed. Reg. 43922 (July 27, 2010) (hereafter “Interim 2010
Guidance”). Br. 9—12. Appellant argues the “[rjecitation of a machine or
transformation” factor weighs toward eligibility because claim 11 “recite[s]
physical structure constituting a machine” — namely, physical cards and a
physical game playing surface. Id. at 10-11. Appellant argues the
“machine” is transformed when the physical cards are dealt to the players,
and bets are placed on the surface by the players. Id. at 11. Appellant
argues the “[t]he claim is more than a mere statement of a concept” factor
weighs toward eligibility because claim 11 recites “more than ... a list of
rules for a game,” by “delineat[ing] a distinct method of playing ‘a card
game with a plurality of physical cards that is played on a physical game
playing surface.’” Id. The Appeal Brief does not otherwise address the
two-part Alice framework, even though Alice issued almost four months
before the Appeal Brief was filed. Appellant did not file a Reply Brief.
4 The decision in Alice Corp. Pty. Ltd. v. CLS Banklnt’l, 134 S. Ct. 2347
(2014), issued on June 19, 2014 — after the Final Office Action dated
May 21, 2014, but before the Appeal Brief dated October 14, 2014.
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The Examiner responds by applying the same Interim 2010 Guidance
factors that Appellant applied. Ans. 12—13. The Examiner concludes the
“Human Behavior” factor weighs against eligibility because the method of
claim 11 amounts to “following rules or instructions.” Id. Like the Appeal
Brief, the Answer does not otherwise address the two-part Alice framework.
Section 101 of the patent law provides that one may obtain a patent
for “any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. The
Supreme Court has held this provision includes important exceptions,
notably those that prohibit one from patenting abstract ideas, laws of nature,
or natural phenomena. Alice, 134 S. Ct. at 2354. Although a law of nature
or an abstract idea is not patentable, the application of these concepts may be
patentable. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 71—72 (2012). This area of law has evolved substantially over the past
several years.
The Interim 2010 Guidance applied by Appellant and (in part) by the
Examiner was developed before the Supreme Court issued its decisions in
Mayo (March 2012) and Alice (June 2014) that clarified the law in this area.
In deciding this appeal, we apply the framework set forth by the Supreme
Court in Mayo and Alice. In Alice, the Supreme Court reaffirmed the
framework set forth previously in Mayo “for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts.” Alice, 134 S. Ct. at
2355. The first step in the analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts.” Id. If the
claims are directed to a patent-ineligible concept, then the second step in the
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analysis is to consider the elements of the claims “individually and ‘as an
ordered combination’” to determine whether there are additional elements
that “‘transform the nature of the claim’ into a patent-eligible application.”
Id. (quoting Mayo, 566 U.S. at 79, 78).
Step One: Does Claim 11 Recite an Abstract Idea?
The Federal Circuit has described the first step as a determination of
the “basic character of the [claimed] subject matter.” Internet Patents Corp.
v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015)
(citing Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Canada,
687 F.3d 1266, 1273—74 (Fed. Cir. 2012)). The Federal Circuit has also
indicated this step should determine whether a claimed method “recites an
abstraction — an idea, having no particular concrete or tangible form.”
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); see
also Alice, 134 S. Ct. at 2355 (“The ‘abstract ideas’ category embodies ‘the
longstanding rule that “[a]n idea of itself is not patentable.’””) (quoting
Gottschalkv. Benson, 409 U.S. 63 (1972) (citations omitted)).
Claim 11 recites “[a] method of playing a game” using physical
playing cards and a physical game playing surface. Br. 14 (Claims App.).
The method comprises the steps of: players placing bets in the bet areas of
their respective individual player areas on the surface; dealing card hands to
the players and to the dealer; calculating a value of each hand; providing the
players with the option to place an additional bet in the draw bet areas of
their respective individual player areas; the dealer drawing an additional
card for the dealer’s hand if the point count of the dealer’s initial hand falls
within a predetermined range; perhaps the players also drawing an additional
card; and finally determining whether each player won based on the
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respective point counts of the completed hands. Id. These steps are
necessary to carry out the rules of the game.
Thus, we agree with the Examiner that claim 11 is directed to a set of
rules for playing a wagering game, which is an abstract idea — regardless of
whether the cards are physical cards or virtual cards. See In re Smith,
815 F.3d 816, 818—19 (Fed. Cir. 2016) (concluding that “claims . . . directed
to rules for conducting a wagering game” are “drawn to an abstract idea”).
We are unable to discern any material difference between Appellant’s
claim 11 and the claim at issue in Smith in this regard. See id. at 817—18
(setting forth claim 1 at issue in Smith). For example, the claim at issue in
Smith also recited “physical playing cards.” Id. at 817, 819. Thus, the
Examiner is correct that claim 11 is directed to the abstract idea of a set of
rules for playing a wagering game.
Step Two: Is There an Inventive Concept?
The Supreme Court characterizes the second step of the Alice 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,
134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 72—73). The prohibition
against patenting an ineligible concept, such as an abstract idea, “‘cannot be
circumvented by attempting to limit the use of the [abstract idea] to a
particular technological environment’ or adding ‘insignificant postsolution
activity.’” Bilski, 561 U.S. at 610—11 (citing Diamond v. Diehr, 450 U.S.
175, 191—92 (1981)). The Court in Alice noted that ‘“[s]imply appending
conventional steps, specified at a high level of generality,’ was not ‘enough’
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[inMayo] to supply an ‘inventive concept.’” Alice, 134 S. Ct. at 2357
(quoting Mayo, 566 U.S. at 82—84, 77, 72—73).
Appellant argues the recited use of “physical” playing cards and a
“physical” playing surface is sufficient to satisfy the requirements of § 101.
Br. 9—12. This same basic argument was considered and rejected by the
court in Smith, as follows:
The claims here require shuffling and dealing “physical playing
cards,” which Applicants argue bring the claims within patent-
eligible territory. . . . We disagree. Just as the recitation of
computer implementation fell short in Alice, shuffling and
dealing a standard deck of cards are “purely conventional”
activities. See Alice, 134 S. Ct. at 2358—59. We therefore hold
that the rejected claims do not have an “inventive concept”
sufficient to “transform” the claimed subject matter into a
patent-eligible application of the abstract idea.
Smith, 815 F.3d at 819. The present case is, perhaps, not directly addressed
in Smith in that claim 11 recites a physical game playing surface having a
playing area divided into a plurality of individual player areas, with each
individual player area sub-divided into at least a bet area and a draw bet
area. Br. 14 (Claims App.); see also Appellant’s Fig. 1 (illustrating a
playing surface comprising three player areas 12, each having bet area 16
and draw bet area 18). However, the use of a physical game playing surface
being divided into individual player areas, with each individual player area
sub-divided into different betting areas, is conventional. This is evidenced,
for example, by Figure 1 of Snow ’995, which illustrates table layout 2
having fourteen player positions 4, with each position 4 having different
betting areas 6, 10, and 14. Snow ’995 1 8. Similarly, Figure 1 of Alaeddin
illustrates gaming table 13 having five player stations 12, with each
station 12 having different betting areas 24 and 26. Alaeddin 133.
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Thus, we determine that the recited elements of claim 11, considered
individually and as an ordered combination, do not constitute an “inventive
concept” that would transform claim 11 into patent-eligible subject matter.
See Alice, 134 S. Ct. at 2355. Rather, the recited elements constitute
“well-understood, routine conventional activity.” See Mayo, 566 U.S. at 79.
Viewed as an ordered combination, claim 11 recites a series of conventional
steps of playing a wagering card game using a conventional set of physical
cards, and including a conventional physical game playing surface divided
into individual player areas and sub-divided into different betting areas, to
determine a winner of the wager in accordance with the rules of the game.
Accordingly, we sustain the rejection of claims 11—20 as directed to
non-statutory subject matter.
DECISION
The rejection of claims 11—20 as indefinite is reversed.
The rejection of claims 11—20 as directed to non-statutory subject
matter 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)(l)(iv).
AFFIRMED
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