Ex Parte Guyer

Patent Trial and Appeal Board

Mar 13, 2018

13824689 (P.T.A.B. Mar. 13, 2018)

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.
13/824,689 07/03/2013 Reynolds W. Guyer W427.12-0013 7900
27367 7590 03/15/2018
WESTMAN CHAMPLIN & KOEHLER, P.A.
SUITE 1400
900 SECOND AVENUE SOUTH
MINNEAPOLIS, MN 55402
EXAMINER
COLLINS, DOLORES R
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
03/15/2018 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):
docketing @ wck.com
tsorbel@wck.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte REYNOLDS W. GUYER
Appeal 2017-002655
Application 13/824,689
Technology Center 3700
Before STEFAN STAICOVICI, BRANDON J. WARNER, and
ANTHONY KNIGHT, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Reynolds W. Guyer (“Appellant”)1 appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision in the Non-Final Action (dated Sept. 30, 2015,
hereinafter “Non-Final Act.”) rejecting claims 1—20. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE.
1 Winsor Concepts is identified as the real party in interest in Appellant’s
Appeal Brief (filed Mar. 4, 2016, hereinafter “Appeal Br.”), at page 3.
Appeal 2017-002655
Application 13/824,689
INVENTION
Appellant’s invention relates “to an apparatus and method for
performing an event of chance and entertainment.” Spec. 2,11. 12—13.
Claims 1, 8, and 14 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. An entertainment method comprising:
providing a master die comprising multiple sides, each side
having one of a master designation and a token designation;
providing a plurality of scoring dice each having multiple
sides with each side having a reference designation
corresponding to one of the multiple master designations of the
master die, and having a score value associated with each
reference designation;
shaking the master die and the plurality of scoring dice to
cause one side of the multiple sides of the master die to appear
as a top side of the master die and one side of each of the
plurality of scoring dice to appear as a top side of the respective
scoring die;
the top side of the master die exhibits a shown master
designation or shown token designation;
the top sides of the plurality of scoring dice each exhibit a
shown reference designation;
accumulating turn points when the shown reference
designation of at least one shaken scoring die corresponds to
the shown master designation;
forfeiting turn points when no shown reference designation
of the shaken scoring dice corresponds to the shown master
designation; and
collecting a first scoring token when the shaken master die
shows the token designation, wherein the scoring token has an
assigned value.
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Application 13/824,689
REJECTIONS
I. The Examiner rejected claims 1—20 under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter.
II. The Examiner rejected claims 1—20 under 35 U.S.C. § 103(a) as
being unpatentable over Guyer et al. (US 7,401,781 B2, iss.
July 22, 2008, hereinafter “Guyer”), Pirouzkhah (US 5,676,375,
iss. Oct. 14, 1997), and Official Notice.2
ANALYSIS
Rejection I
The Examiner determined that “[cjlaims 1-20 are directed to a dice
game that is mentally executed, which is an abstract idea.” Non-Final Act.
2. The Examiner further determined that “[t]he claims does/do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception” because “the limitations comprising dice and scoring
tokens do not add significantly more to the abstract idea.” Id.
In response, Appellant contends that “the present application . . .
require[s] specialized equipment in the form of a master die, scoring dice
and a scoring token.” Reply Brief 2 (filed Dec. 6, 2016, hereinafter “Reply
Br.”). Appellant explains that the claims “are not directed to just rules for
playing a game with standard equipment but instead include innovative
physical dice and an innovative physical scoring token,” and, thus, the
2 “[Djice are known to be deposited on surfaces with one face (as
desired) being at the top and displaying indicia thereon.” See Non-
Final Act. 4.
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claimed invention “cannot be generalized to simply being rules for a game.”
Id.
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 Inti, 134 S. Ct. 2347, 2355 (2014) {citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294
(2012)). According to the Supreme Court’s framework, we must first
determine whether the claims at issue are directed to one of those concepts
(i.e., laws of nature, natural phenomena, and abstract ideas). 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.’” Id.
Following Alice, the USPTO provided updated Subject Matter
Eligibility Guidance to provide guidance for determining whether
an invention claims ineligible subject matter. Also, several decisions by
the Federal Circuit have since applied the framework set forth in Alice. One
such decision determined that claims directed to a “method of conducting a
wagering game” using a deck of “physical playing card[s]” were drawn to an
abstract idea. See In re Smith, 815 F.3d 816, 819 (Fed. Cir. 2016). There,
the court held that “shuffling and dealing a standard deck of cards are
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Application 13/824,689
‘purely conventional activities,” and 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.” Id. at 819 (quoting Alice,
134 S. Ct. at 2358—59). However, the court further stated that not “all
inventions in the gaming arts would be foreclosed from patent protection
under § 101,” and that it was possible for “claims directed to conducting a
game using a new or original deck of cards potentially surviving step two of
Alice.'1'’ Id.
Here, the Examiner determined, and we agree, that the steps of each
of independent claims 1,8, and 14 are abstract ideas because they “are
directed to rules for conducting a game.” Examiner’s Answer 3 (dated Oct.
6, 20126, hereinafter “Ans.”). Abstract intellectual concepts are not
patentable. Parker v. Flook, 437 U.S. 584 (1978). Having determined that
each of independent claims 1, 8, and 14 are directed to a patent-ineligible
concept, we must secondly consider the elements of independent claims 1, 8,
and 14 individually and as an ordered combination to determine whether the
additional elements of each claim transforms the nature of the claim into a
patent-eligible application.
In this case, even though the limitations of each of independent claims
1, 8, and 14 describe an abstract idea, i.e., game rules, the claims also call
for a special type of structural pieces. Specifically, the claims require
providing a master die 12 having one of master designations 22, 24, 26 and
token designation 28, providing a plurality of scoring dice 14 having
reference designations 30, 32, 34 corresponding to master designations 22,
24, 26, respectively, and collecting a scoring token 16 by a player when the
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master die shows token designation 28. See Spec. 5,11. 11—13, 22—24, Figs.
1—3. The requirement of these special elements distinguishes the claimed
method, such as to “‘transform’ the claimed abstract idea into [] patent-
eligible [subject matter].” Alice, 134 S. Ct. at 2357. Although we appreciate
that “dice” and “scoring tokens” are known elements in the game arts,
nonetheless, the specialized master die having specific patterns that match
patterns on the scoring dice, and a scoring token that is collected in a
specific manner, described in each of independent claims 1, 8, and 14,
“‘transform the nature of the claim[s] into [] patent-eligible [subject
matter].” See id. at 2355. As such, claims 1, 8, and 14 include sufficient
“‘additional features,’” i.e., specialized master die, scoring dice, and scoring
token, that ensure the claims are “[‘]more than a drafting effort designed to
monopolize the [abstract idea].”’ See id. at 2357. We, thus, agree with
Appellant that “[t]he use of the [m]aster die, the scoring dice and the scoring
token in claims 1, 8 and 14 provide significantly more than the abstract rules
of the game.” Reply Br. 2.
In conclusion, because the method steps involve specialized game
pieces as set forth in the claims, we do not sustain the rejection under 35
U.S.C. § 101 of claims 1—20 as directed to patent-ineligible subject matter.
Rejection II
The Examiner found that Guyer discloses most of the limitations of
each of independent claims 1,8, and 14, with the exception of (1) depositing
a dice on a surface with one of its sides facing up and (2) collecting a
scoring token that has an assigned value when the master die shows a token
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designation. Non-Final Act. 3^4 (citing Guyer, col. 3,11. 16—34, Figs. 2B,
8). Nonetheless, the Examiner takes Official Notice that “dice are known to
be deposited on surfaces with one face (as desired) being at the top and
displaying indicia thereon.” Id. at 4. The Examiner further found that, with
respect to “collecting tokens (could be cards)[,] although known in the
industry, the reference to Pirouzkhah discloses a Card and Dice game that
teaches the collection of tokens (cards) based on points scored and a
designated location for them.” Id. (citing Pirouzkhah, Abstract, Fig. 1).
Thus, the Examiner concluded that it would have been obvious for a person
of ordinary skill in the art “to use this known method to facilitate ease in
game play,” and, “in view of Pirouzkhah[,] to modify Guyer to include this
know feature to add options and variety to game play.” Id.
In rejecting claims under 35 U.S.C. § 103(a), the Examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). In this case, although the Examiner’s
position appears to be that the use of cards as tokens would have been
obvious, the Examiner has not made any finding as to the particular manner
in which the cards of Pirouzkhah would be used in the game of Guyer as a
scoring token. Each of independent claims 1, 8, and 14 requires, inter alia,
collecting a scoring token when the master die shows a token designation.
See Appeal Br. 12, 14, 15. For example, the Examiner does not adequately
explain how the cards of Pirouzkhah would be used with Guyer’s master die
11 and scoring dice 12 in determining a player’s score. See Guyer, col. 2,11.
41—49, col. 4,1. 50-col. 5,1. 3, Fig. 6.
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We agree with Appellant that “there is no concept in Guyer of
collecting a token based on the throw of the dice.” Appeal Br. 7. Similarly,
in Pirouzkhah, cards (tokens) are not drawn (collected) by a player based on
the designation of the dice. See Pirouzkhah, Abstract. Rather, Pirouzkhah
discloses using the dice merely to determine the target point count of seven
or eleven for each game such that each player tries to obtain a hand value as
close as possible to the target point count. See id. Moreover, even though
we appreciate that Guyer discloses the use of cards (see Ans. 5 (citing
Guyer, col. 7,11. 24—32)), nonetheless, we note that Guyer’s disclosure is
limited to using either dice or cards, but not both, as the Examiner asserts.
In conclusion, we find that the Examiner’s legal conclusion of
obviousness is not supported by sufficient factual evidence, and thus, cannot
stand. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that
“[t]he legal conclusion of obviousness must be supported by facts. Where
the legal conclusion is not supported by facts it cannot stand.”). The
Examiner’s use of Official Notice does not remedy the deficiency of the
combined teachings of Guyer and Pirouzkhah.
Accordingly, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 103(a) of claims 1—20 as unpatentable over Guyer,
Pirouzkhah, and Official Notice.
SUMMARY
The Examiner’s decision to reject claims 1—20 is reversed.
REVERSED
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