Ex Parte Loewenstein et al

Patent Trial and Appeal Board

Mar 20, 2014

11431066 (P.T.A.B. Mar. 20, 2014)

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.
11/431,066 05/09/2006 David Loewenstein 35591 5878
7590 03/20/2014
David Loewenstein
802 King Street
Rye Brook, NY 10573
EXAMINER
COLLINS, DOLORES R
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
03/20/2014 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 DAVID LOEWENSTEIN and MARTIN JOEL WOLFF
____________

Appeal 2011-013688
Application 11/431,066
Technology Center 3700
____________

Before STEFAN STAICOVICI, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/431,066

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STATEMENT OF THE CASE
David Loewenstein and Martin Joel Wolff (“Appellants”) appeal
under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-5
and 14-23. We have jurisdiction under 35 U.S.C. § 6(b).
Claimed Subject Matter
Claims 1, 14, and 20 are the independent claims on appeal. Claims 1
and 14 are illustrative of the claimed subject matter and are reproduced
below.
1. A gaming apparatus for displaying cards from one
or more decks of cards, where each deck of cards has four suits,
each suit has thirteen ranks, every card of each deck has a
unique combination of one of the four suits and one of the
thirteen ranks, and where the cards are displayed in one of three
states:
(a) a first state showing only the rank associated with
the card,
(b) a second state showing only the suit associated
with the card, or
(c) a third state showing both the rank associated with
the card and the suit associated with the card, where the third
state of every card always shows the same rank displayed in the
first state (a) or the same suit displayed in the second state (b);
each card is in either the first state or second state when
initially displayed in the card game; and
the state of each card transforms from the first state or the
second state to the third state in response to one or more actions
by a player of a card game on the gaming apparatus.
14. A method to play a poker game where cards are
dealt from a plurality of playing cards having four suits, where
each suit has thirteen ranks, where each card has one of the four
suits and one of the thirteen ranks, the method comprising:
(A) displaying each card in one of three states:
(i) a first state where only the suit associated
with the card is displayed;
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(ii) a second state where only the rank
associated with the card is displayed; or
(iii) a third state where both the suit from (A) (i)
and rank from (A)(ii) are displayed,
the method further comprising:
(B) dealing cards to a player in a diamond pattern,
each of the four sides of the diamond forming a five card poker
hand with three interior cards and two corner cards wherein the
dealt cards are initially displayed in the first or second state;
(C) the player exchanging cards between hands;
(D) after the exchanges, the display of the cards
transforming into the third state;
(E) comparing each hand to a paytable; and
(F) rewarding the player according to the paytable.
App. Br. 20-22, Claims App’x.
Reference
The Examiner relies upon the following prior art reference:
Moody US 6,964,418 B2 Nov. 15, 2005
Rejections
Appellants seek review of the following rejections:
I. Claims 14-18 and 20-23 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter; and
II. Claims 1-5 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Moody.
SUMMARY OF DECISION
We REVERSE.
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OPINION
Rejection I
The Examiner concluded that claims 14-18 and 20-23 are directed to a
non-statutory abstract idea and hence ineligible subject matter for patenting
under 35 U.S.C. § 101. Ans. 4-6. In particular, the Examiner determined
that claims 14 and 20 “are ineligible subject matter because the claimed
limitations include no recitation or insufficient recitation of a machine or
transformation, or [are] not directed to a proper application of a law of
nature, or [are] just a mere statement of a general concept.” Id. at 6. The
Examiner further concluded that dependent claims 15-18 and 21-23 are
ineligible subject matter under 35 U.S.C. § 101 because the “[a]dditional
limitations recited in [the] dependent [c]laims are no more than a field of use
or merely involve insignificant extra-solution activity or [are] intangibly
related to the performance of the steps.” Id.
Appellants raise several arguments in response to this rejection,
including that the claimed invention is concrete and tied to a particular
implementation. App. Br. 14. Appellants assert that there are two
transformations that occur in claim 14. See id. at 15. Appellants also
contend that the claims are tied to a specific machine or apparatus—video
gaming machines and the embodiments of Figure 7 and 8. Reply Br. 3. In
other words, the method claims “could not be practiced without a machine of
some sort, either an electronic computational device together with a video
screen, or a set of color filters.” Id.
In the Examiner’s response to Appellants’ argument, the Examiner
states:
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Applicant[s’] claimed method, while arguably reciting a
number of physical steps of dealing cards, is viewed here as an
attempt to claim a new set of rules for playing a card game. In
this [E]xaminer’s opinion, a set of rules qualifies as an abstract
idea. Therefore, the [E]xaminer maintains that Applicant[s’]
claimed method, although couched in terms of a few actual
physical steps, is a clear attempt to claim an abstract idea in the
form of a new set of rules for playing a card game. Since the
claimed method requires 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, the [E]xaminer maintains that the
claimed method is not patent eligible.
Ans. 9.
While “[t]he machine-or-transformation test is not the sole test for
deciding whether an invention is a patent-eligible ‘process,’” it “is a useful
and important clue, an investigative tool, for determining whether some
claimed inventions are processes under § 101.” Bilski v. Kappos,
130 S. Ct. 3218, 3227 (2010).
Claims 14 and 20 recite methods of playing a poker game whereby
cards are dealt from “a plurality of playing cards having four suits, where
each suit has thirteen ranks, where each card has one of the four suits and
one of the thirteen ranks” (claim 14) and from “a deck of playing cards, the
deck having four suits, each suit having thirteen ranks, each card of the deck
is associated with one of the four suits and one of the thirteen ranks”
(claim 20). The cards are displayed, dealt, exchanged, further displayed, and
compared (claim 14) or displayed, received, and further displayed
(claim 20). While there are various options as to what types of cards can
satisfy the recitations of the claims, the options are not unlimited.
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Further, the claims either require the use of the physical embodiment
of the cards or the use of a video gaming machine to perform the steps of the
recited claims. Accordingly, although there may be more than one option
for the “particular” machine required to implement the claimed methods, the
type of machine is not unlimited.
Accordingly, we disagree with the Examiner’s conclusion that the
claims are directed to abstract ideas and hence unpatentable subject matter.
Rejection II
The Examiner concluded that Moody would have rendered the subject
matter of claims 1-5 and 19 obvious to one of ordinary skill in the art at the
time of invention. Ans. 7-8. The Examiner found that Moody discloses
“Electronic Video Poker Games which utilize a machine that displays a
conventional deck of cards.” Id. at 7. The Examiner also found that Moody
“discloses variations of displays like the claimed invention except for the
specific arrangement and/or content of indicia (printed matter) set forth in
the claim(s).” Id. The Examiner concluded that it would have been obvious
to one of ordinary skill in the art at the time of invention “to use any type of
indicia on the cards since it would only depend on the intended use of the
assembly and the desired information to be displayed.” Id. The Examiner
also indicated that because “the claimed printed matter is not functionally
related to the substrate[,] it will not distinguish the invention from the prior
art in terms of patentability.” Id. (citing In re Gulack, 703 F.2d 1381
(Fed. Cir. 1983)).
In response to Appellants’ arguments, the Examiner further explained
the Examiner’s interpretation upon which the rejection is based:
“Applicant[s] claim[] one of the three states in [their] independent claim 1
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(lines 5-6). Moody meets this limitation of [Applicants’] third state.”
Id. at 8.
Appellants raise several arguments in response to this rejection,
including that Moody does not disclose the claimed feature of displaying the
cards in the first or second state claimed. Reply Br. 8.
Claim 1 recites a gaming apparatus for displaying cards, where the
cards are displayed in one of three states. While we agree with the Examiner
that claim 1 specifies one of three states, the claim later narrows which one
of the states is displayed. Specifically, claim 1 recites that “each card is in
either the first state or second state when initially displayed in the card
game; and the state of each card transforms from the first state or the second
state to the third state.” Thus, even if the indicia shown on the card does not
distinguish the claimed apparatus from that of Moody, the claim recites that
whatever indicia is shown when initially displayed transforms to a different
indicia “in response to one or more actions by a player.” The Examiner,
however, has not identified where Moody discloses such a transformation
nor did the Examiner find that Moody is capable of such transformation.
Thus, even if we were to assume that the specific indicia shown on the cards
do not distinguish the claimed apparatus from that of Moody, the Examiner
has not identified where Moody discloses a transformation of whatever
indicia Moody initially displays.
Accordingly, because the Examiner has not identified where Moody
discloses this element of the claims or why this element would have been
obvious to one of ordinary skill in the art in light of Moody, we do not
sustain Rejection II.
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DECISION
We REVERSE the Examiner’s decision rejecting claims 1-5 and
14-23.

REVERSED

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