Ex Parte Koro

Patent Trial and Appeal Board

Sep 11, 2013

10907887 (P.T.A.B. Sep. 11, 2013)

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.
10/907,887 04/19/2005 Joerge A Koro KOR00001US 4887
32141 7590 09/11/2013
MITCHELL M. MUSIAL II, PLLC
6960 ABBOTT TERRACE
WEST BLOOMFIELD, MI 48323
EXAMINER
HYLINSKI, ALYSSA MARIE
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
09/11/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOERGE A KORO
____________________

Appeal 2011-007568
Application 10/907,887
Technology Center 3700
____________________

Before PHILLIP J. KAUFFMAN, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 61-80, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellant’s claimed invention is directed to “a method of playing a
game that follows the rules of Blackjack where neither a player or [sic]
dealer bust if one or both go over 21.” Spec., para. [0002]. Claims 61 and
70 are the independent claims on appeal. Claim 61, reproduced below, is
illustrative of the claimed subject matter.
61. A method of playing a blackjack variation
between a player and a dealer, the method
comprising:
providing a deck of cards;
receiving a wager by the player;
dealing a player’s hand and a dealer’s hand;
allowing the player to stand or add
additional player card(s) to the player’s hand,
wherein a point total of the player’s hand can
exceed a point objective without the player
automatically losing;
allowing the player to count an Ace as 11
points rather than 1 point although counting the
Ace as 11 points would result in a point total that
exceeds the point objective and counting the Ace
as 1 point would result in a point total less than the
point objective;
resolving the dealer’s hand by standing or
adding additional dealer cards to the dealer’s hand,
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according to predetermined rules, wherein a point
total of the dealer’s hand can exceed the point
objective without the dealer automatically losing;
determining whether the point total of the
player’s hand is closer to a point total of the point
objective than a point total of the dealer’s hand by
evaluating the numerical va1ue of the player’s
hand and dealer’s hand by traditiona1 blackjack
card valuation, and if so, then paying the wager;
determining whether the point total of the
dealer’s hand is closer to the point total of the
point objective than the point total of the player’s
hand by evaluating the numerical value of the
player’s hand and dealer’s hand by traditional
blackjack card valuation, and if so, then taking the
wager; and
determining whether the point total of the
player’s hand and the point total of the dealer’s
hand are equally close to the point objective by
evaluating the numerical value of the player’s hand
and dealer’s hand by traditional blackjack card
valuation, and if so, then game rules will determine
whether to pay the wager or take the wager.
Claim 70 is directed to a “method of playing a card game between a
player and a dealer” having steps similar to those of claim 61.
REFERENCES
The Examiner relies upon the following prior art references:
Wisted
Aramapakul
Jackson
US 5,275,415
US 6,027,118
US 6,776,416 B1
Jan. 4, 1994
Feb. 22, 2000
Aug. 17, 2004

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REJECTIONS
The following rejections are before us on appeal:
I. Claims 61-80 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
II. Claims 61-68 and 70-79 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Jackson and Wisted.
III. Claims 69 and 80 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Jackson, Wisted, and Aramapakul.
ANALYSIS
Rejection I
The Examiner finds that the claimed method “is not tied to a physical
machine or apparatus nor does it transform a particular article to a different
state or thing.” Ans. 3 (citing In re Bilski, 545 F.3d 943 (Fed. Cir. 2008)).
The Examiner elaborates on this finding by noting
[n]one of the steps are tied to a particular or specific
machine such that the machine implements the process
and is not merely be an object upon which the process
operates and the use of a deck of cards also does not
transform the deck of cards to a different state or thing
since it is still the same deck of cards.
Ans. 6. The Examiner further finds that the claimed method is “an attempt
to claim a new set of rules for playing a card game” and “[i]n the examiner’s
opinion, a set of rules qualifies as an abstract idea.”1 Id. The Examiner
concludes that the claimed method is not patent eligible because it “requires

1 We note the Manual of Patent Examining Procedure identifies “a game
defined as a set of rules” as an example of a claim not directed to one of the
categories of statutory subject matter, albeit without citing any supporting
authority. MPEP § 2106, I. (8th ed., Rev. 9, August 2012).
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no machine implementation, requires no transformation of a particular
article and is seen as an attempt to receive patent protection for an abstract
idea in the form of a new set of rules.” Ans. 6-7.
In response to the Examiner invoking the machine-or-transformation
test of In re Bilski, Appellant notes that the Supreme Court has held “the
machine-or-transformation test is a useful and important clue, an
investigative tool, for determining whether some claimed inventions are
processes under § 101. The machine-or-transformation test is not the sole
test for deciding whether an invention is a patent-eligible ‘process.’” App.
Br. 16 (citing Bilski v. Kappos, 130 S. Ct. 3218, 3227 (2010)). Appellant
does not, however, assert that the machine-or-transformation test should not
be used in this particular case, and we agree with the Examiner that the
machine-or-transformation test is a useful investigative tool in this case.
Ans. 6.
Appellant does not appear to contest the Examiner’s determination
that the claimed invention requires no transformation of a particular article,
but argues “the present invention is tied to a specific article, a deck of
cards.” App. Br. 17; Reply Br. 1-2. However, the claims broadly recite a
“deck of cards” with no particularity. While Appellant’s Specification
discloses using “at least one deck of Blackjack cards” (Spec., paras. [0007],
[0008]; see also Spec., para. [0015]) and “at least one deck of playing cards”
(Spec., para. [0015]), the claims are not so limited. Other than implying the
presence of at least one ace, the claim language does not specify a particular
make-up of the deck. For example, a standard 52-card deck is not claimed;
the claimed deck is not even limited to conventional playing cards other than
the one ace. The deck of cards as claimed also can comprise physical cards,
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virtual electronic cards, or a combination thereof. As such, the claimed
method is so abstract and sweeping as to cover both known and unknown
uses of the concept and can be performed through any existing or future-
devised apparatus or article. See Gottschalk v. Benson, 409 U.S. 63, 68
(1972). Thus, despite possibly meeting the broad definition of “machine”
annunciated by our reviewing court,2 the claimed deck of cards is not a
particular machine or apparatus in the context of the machine-or-
transformation test. We accordingly find Appellant’s argument on this point
unpersuasive.
In addition, the involvement of a general concept (such as a principle,
theory, plan, or scheme) in executing the steps of a method can be another
clue that a claim is drawn to an abstract idea. MPEP § 2106(II)(B)(1)(d)
(8th ed., Rev. 9, August 2012). Appellant’s claimed method relies heavily
on a “plan” or “scheme” (i.e., the claim limitations dictating how the player
and dealer build their respective hands and how the winning hand is
determined) in its execution and thus involves a general concept that is not
well-instantiated. See id. Thus, upon considering and weighing the relevant
factors, we conclude that Appellant’s claims are directed to an abstract idea
rather than a practical application of an abstract idea.
We are also not persuaded by Appellant’s argument that the claimed
invention is not a patent-ineligible mental process (App. Br. 17) because the
Examiner does not rely on this as a basis for finding the claims directed to
non-statutory subject matter.

2 “[A] machine is a ‘concrete thing, consisting of parts, or of certain devices
and combination of devices.”’ In re Ferguson, 558 F.3d 1359, 1364 (Fed.
Cir. 2009) (quoting In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007)).
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Appellant also argues the “Supreme Court decision of Diamond v.
Diehr, 450 U.S. 175 (1981) illustrates that the subject matter of the present
invention is patentable subject matter under section 101.” App. Br. 17.
Appellant notes the Court held that “‘[when] a claim containing a
mathematical formula implements or applies that formula in a structure or
process which, when considered as a whole, is performing a function which
the patent laws were designed to protect . . . [,] then the claim satisfies the
requirements of § 101.’” Id. at 17-18 (quoting Diehr, 450 U.S. at 192).
However, in Diehr, the Court determined that the claims at issue where
“drawn to an industrial process for the molding of rubber products” and
performed the function of “transforming or reducing an article to a different
state or thing.” Diehr, 450 U.S. at 192-93. Appellant’s claimed method
does not transform an article to a different state or thing, and Appellant does
not otherwise indicate how the claimed method performs a function that the
patent laws were designed to protect. We thus find this argument
unpersuasive.
Appellant’s reliance on Ex parte Gutta, 93 USPQ2d 1025 (BPAI
2009) (precedential) is inapposite because the two-part test of Gutta noted
by Appellant (App. Br. 18) pertains to a claimed machine or article that
involves a mathematical algorithm and is not particularly applicable to the
method claims of the present invention. Gutta, 93 USPQ2d at 1031.
Lastly, Appellant urges that “should the art area of card games be
determined as Non-Statutory Subject Matter, an entire industry will suffer as
a result, as there will be no incentive to invent new games, as there would be
no means of preventing others from practicing novel card games.” App. Br.
18. This assertion has little relevance in this case because the Examiner’s
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rejection only pertains to the present claims and does not suggest that all
card games are per se non-statutory subject matter. Further, such a policy
based argument does not cogently demonstrate how the rejection is in error.
In view of the above, Appellant’s arguments do not apprise us of
error, and we sustain the rejection of claims 61-80 are being directed to
ineligible subject matter under 35 U.S.C. § 101.
Rejection II
The Examiner finds that Jackson discloses a method of playing a card
game in which “[b]oth the player and the dealer can have a hand with a point
total that exceeds twenty-one without automatically losing” and a “winner is
determined by evaluating the player’s and the dealer’s hands according to
traditional blackjack card valuation.” Ans. 3-4. The Examiner also finds
that Wisted discloses a variation of a “no-bust blackjack type game” (i.e.,
player/dealer hands can exceed the predetermined point objective without
automatically losing) in which an ace can be counted as eleven points rather
than one point even if to do so would result in a hand exceeding the point
objective. Ans. 5. From the combined teachings of Jackson and Wisted, the
Examiner concludes it would have been obvious to one of ordinary skill in
the art “to enable an ace to equal 11 points even if a value over twenty-one is
obtained in order to make the game more interesting by providing greater
variation in the forming of card hands.” Id.
Appellant argues that Wisted does not disclose counting an ace as
eleven points rather than one point where this would result in a point total
exceeding the point objective.3 App. Br. 20; Reply Br. 3-4. We disagree.

3 Appellant argues claims 61-68 and 70-79 as a group. App. Br. 19-22. We
take independent claim 61 as representative pursuant to 37 C.F.R.
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Wisted discloses allowing hands having point totals that exceed twenty-two,
stating
the game differs from traditional Blackjack in that hands
totaling more than twenty two points are not
automatically “busted,” but the player 42 may not draw
further cards once they total more than the twenty two
points. Of course it is possible for one exceeding twenty
two to win. As an illustration if one player has cards
totalling [sic] twenty four and another has cards totaling
nineteen points the former would win.
Wisted, col. 4, ll. 34-41. Wisted also discloses counting aces as either one or
eleven points in general. See Wisted, col. 1, l. 51; col. 4, ll. 1-2. Wisted in
no way limits this disclosure only to circumstances where counting an ace as
eleven points would not result in a point total exceeding twenty-two. Thus,
although Wisted does not expressly describe allowing an ace to be counted
as eleven points even when to do so would result in a hand exceeding
twenty-two, one of ordinary skill in the art would understand Wisted to
implicitly teach this feature. See MPEP § 2144.01 (“[I]n considering the
disclosure of a reference, it is proper to take into account not only specific
teachings of the reference but also the inferences which one skilled in the art
would reasonably be expected to draw therefrom.”) (quoting In re Preda,
401 F.2d 825, 826 (CCPA 1968)).
We are also not persuaded by Appellant’s assertion that “Wisted
shows no specific instances of a combination of cards combined to exceed a
point total of 22.” App. Br. 20; Reply Br. 4. Despite not specifying a
particular combination of cards that form a point total exceeding twenty-two,
Wisted clearly permits hands exceeding twenty-two as noted supra. It

§ 41.37(c)(1)(vii) (2011), and claims 62-68 and 70-79 stand or fall with
claim 61.
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would be well within the ability of one of ordinary skill in the art to envision
several combinations of playing cards forming a point total exceeding
twenty-two.
In view of the above, we sustain the rejection of claim 61, and of
claims 62-68 and 70-79 grouped therewith, under 35 U.S.C. § 103(a) as
being unpatentable over Jackson and Wisted.
Rejection III
Appellant advances no separate argument in connection with claims
69 and 80 but instead relies on their dependency from claims 61 and 70 for
patentability. App. Br. 22-23. As we find no deficiency in the Examiner’s
rejection of claims 61 and 70 as being obvious over the combination of
Jackson and Wisted for the reasons discussed supra, we likewise sustain the
rejection of claims 69 and 80.
DECISION
We affirm the decision of the Examiner rejecting claims 61-80.
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

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