Ex Parte Lutnick et al

Patent Trial and Appeal Board

Mar 14, 2017

13176447 (P.T.A.B. Mar. 14, 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.
13/176,447 07/05/2011 Howard W. Lutnick 06-2000-C2 4620
63710 7590 03/16/2017
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
COLLINS, DOLORES R
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
03/16/2017 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):
patentdocketing @ cantor.com
lkoro vich @ c antor. com
phowe @ cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOWARD W. LUTNICK, DEAN P. ALDERUCCI, and
GEOFFREY M. GELMAN
Appeal 2014-002118
Application 13/176,447
Technology Center 3700
Before CYNTHIA L. MURPHY, KENNETH G. SCHOPFER, and
AMEE A. SHAH, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’
rejection of claims 1—18. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
We AFFIRM.
1 “The real party in interest of the present application is CFPH, L.P.”
(Appeal Br. 3.)
Appeal 2014-002118
Application 13/176,447
STATEMENT OF THE CASE
The Appellants disclose “[a] card game” that “includes a deck of
cards, used, for example, to play craps, poker, or any combination thereof.”
(Spec., Abstract.)
Illustrative Claim2
1. A method comprising:
receiving a first wager from a first player;
receiving a second wager from a second player, wherein
the value of the second wager is the same as the value of the
first wager;
shuffling a physical deck of physical cards, wherein each
physical card displays indicia indicative of an integer of the
set (1, 2, 3, 4, 5, 6};
generating a first random number by: drawing a first
physical card from the physical deck; drawing a second
physical card from the physical deck; determining a first
integer from indicia of the first physical card; determining a
second integer from indicia of the second physical card; and
determining the sum of the first and second integers, thereby
determining the first random number;
generating a second random number by: drawing a third
physical card from the physical deck; drawing a fourth
physical card from the physical deck; determining a third
integer from indicia of the third physical card; determining a
fourth integer from indicia of the fourth physical card; and
determining the sum of the third and fourth integers, thereby
determining the second random number;
generating a third random number by: drawing a fifth
physical card from the physical deck; drawing a sixth
physical card from the physical deck; determining a fifth
2 This illustrative claim is quoted (with paragraphing edited) from the
Claims Appendix (Claims App.) set forth on pages 12—17 of the Appeal
Brief.
2
Appeal 2014-002118
Application 13/176,447
integer from indicia of the fifth physical card; determining a
sixth integer from indicia of the sixth physical card; and
determining the sum of the fifth and sixth integers, thereby
determining the third random number;
determining a first output of an algorithm, the inputs to
the algorithm comprising the first wager, the first random
number, and the second random number;
setting a first payment for the first player to be the first
output of the algorithm;
determining a second output of the algorithm, the inputs
to the algorithm comprising the second wager, the first random
number, and the third random number, wherein the second
output is different from the first output;
setting a second payment for the second player to be the
second output of the algorithm;
providing the first payment to the first player; and
providing the second payment to the second player.
Rejection
The Examiner rejects claims 1—18 under 35 U.S.C. § 101 for failing to
recite patent-eligible subject matter. (Final Action 2.)
ANALYSIS
Claims 1 and 12 are the independent claims on appeal, with the rest of
the claims on appeal (i.e., claims 2—11 and 13—18) depending therefrom.
(Claims App.)
Independent claim 1 recites a method comprising wager-receiving,
payment-setting, and payment-providing steps; and independent claim 12
recites a method comprising similar steps. (Claims App.) Independent
claim 1 and independent claim 12 further recite steps requiring a “physical
deck of cards” and the “shuffling,” “drawing,” and “dealing” thereof. (Id.)
3
Appeal 2014-002118
Application 13/176,447
According to the Examiner, the methods recited in independent claims 1
and 12 constitute “ineligible subject matter.” (Final Action 2.)
We are not persuaded by the Appellants’ arguments that the Examiner
does not establish his case. (See Appeal Br. 6—11; see also Reply Br. 2—5.)
We are not persuaded because, when we apply the two-step test provided by
the Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S Ct. 2347
(2014), we agree with the Examiner that independent claims 1 and 12 do not
pass muster under 35 U.S.C. § 101.3 We note that the Alice two-step test has
been previously applied by the Federal Circuit for a “method of conducting a
wagering game” requiring a deck of “physical playing cards,” and requiring
the “shuffling” and “dealing” thereof. See In re Smith, 815 F.3d 816 (Fed.
Cir. 2016).
Under the first step of the Alice test, the determination is made
whether the claims at issue are directed to a patent-ineligible concept, such
as an abstract idea. Alice, 134 S Ct. at 2355. Here, the Examiner considers
the claims as being drawn to “an abstract idea in the form of a new set of
rules for playing a card game.” (Answer 5.)
The Appellants argue that “the claims are directed explicitly to
physical acts applied to physical cards and/or physical decks” and “are
therefore not an abstract idea.” (Appeal Br. 9.) Also, according to the
Appellants, “the Examiner explicitly admits that ‘an actual method of
playing the game is claimed versus just new set of rules. (Reply Br. 4.)
3 Although the Examiner appears to have applied the Interim Guidance
(discussing Bilski v. Kappos, 561 U.S. 593 (2010)) which was developed
before the United States Supreme Court issued its decision in Alice, the
Examiner’s findings are sufficient to satisfy the two-step Alice test.
4
Appeal 2014-002118
Application 13/176,447
We are not persuaded by this argument because, in Smith, the Federal
Circuit held that the claimed method described “a set of rules for a game”
and was “drawn to an abstract idea.” Smith, 815 F.3d at 819. As noted
above, the Smith case concerned a “method of conducting a wagering game”
requiring a deck of physical playing cards and the shuffling/dealing thereof.
Thus, even if an actual method of playing a wagering and/or card game is
claimed, it still can be considered directed to an abstract idea. And Smith
directly contradicts the Appellants’ premise that claims requiring shuffling
and dealing of physical cards “cannot possibly” be an abstract idea. (Appeal
Br. 9.)4
Under the second step of the Alice test, the determination is made
whether additional elements in the claim, individually or as an ordered
combination, transform the claim into a patent-eligible application of the
identified abstract idea. Alice at 2355. Here, the Examiner finds that the
limitations listed in the claims are “merely nominally, insignificantly, or
intangibly related to the performance of the steps.” (Final Action 5.)
The Appellants argue that the claims “are narrowly tailored to a
specific use with respect to physical actions, physical cards, and a physical
deck.” (Reply Br. 3.) The Appellants point out that, for example, the claims
“include limitations that transform a physical deck from one state into
another” when a physical card is removed from the deck. (Appeal Br. 10.)
4 Moreover, to satisfy the first step of the Alice test, it is “sufficient to
compare claims at issue to those claims already found to be directed to an
abstract idea in previous cases.” Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1334 (Fed. Cir. 2016). Here, the Smith claims are comparable to those
on appeal and have already been found to be directed to an abstract idea.
5
Appeal 2014-002118
Application 13/176,447
We are not persuaded by this argument because in Smith, the Federal
Circuit held that “shuffling and dealing a standard deck of cards” are not
activities that bring the claims within patent-eligible territory. Smith, 815
F.3d at 819. The Appellants do not explain, and we do not see, how the
shuffling, dealing, and drawings of cards recited in independent claims 1
and 12 constitutes significantly more than conventional activities done
during the playing of a wagering and/or card game.
We do note that the Federal Circuit cautioned in Smith that “claims
directed to conducting a game using a new or original deck of cards” could
potentially survive step two of the Alice test. Smith, 815 F.3d at 819. Here,
however, the Specification calls for “[a] card game” that “includes a deck of
cards used, for example, to play craps, poker, or any combination thereof.”
(Spec., Abstract.) The Appellants do not assert that the claimed methods
involve a new or original deck of cards.
The Appellants also advance arguments which appear to be premised
upon “preemption.” (See Appeal Br. 9-10.) Although “preemption may
signal patent ineligible subject matter, the absence of complete preemption
does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Where claims are
deemed to recite only patent ineligible subject matter under the two-step
Alice analysis, as they axe here, “preemption concerns axe fully addressed
and made moot.” Id.
In view of the foregoing, we agree with the Examiner that the
independent claims 1 and 12 do not pass muster under 35 U.S.C. § 101. The
Examiner determines that additional limitations recited in the dependent
claims do nothing to elevate the method beyond an abstract idea involving
6
Appeal 2014-002118
Application 13/176,447
insignificant activity (see Final Action 4), and the Appellants do not argue
these claims separately (see Appeal Br. 6—11, Reply Br. 6). Thus, we
sustain the Examiner’s rejection of claims 1—18 under 35 U.S.C. § 101.
DECISION
We AFFIRM the Examiner’s rejection of claims 1—18.
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
7