10323455 (B.P.A.I. Jan. 19, 2012)

Ex Parte Ritner et al

Board of Patent Appeals and InterferencesJan 19, 2012

10323455 (B.P.A.I. Jan. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ROY R. RITNER, JR. and LYNN EHRLICH ____________ Appeal 2009-013343 Application 10/323,455 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and MEREDITH C. PETRAVICK, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-013343 Application 10/323,455 2 STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. § 134 (2002) of claims 1-6, 8-9, 11-19, 21-27, and 29-30 which are all the claims pending in the application and which have been rejected more than twice. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF THE DECISION We REVERSE. THE INVENTION The Appellants’ claimed invention is directed to a casino style card game having wagering features (Spec. [0002]). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method of playing a wagering game utilizing one or more decks of standard playing cards comprising: accepting a primary wager from each participating player; dealing each player and a dealer five cards; requiring each player and the dealer to arrange the five cards into a three-card hand and a two-card hand wherein each player's two- card hand must achieve a minimum pre-established rank for each player to be eligible for a payout on the primary wager and wherein the dealer's hand is not required to achieve a minimum preestablished rank; comparing the rank of the dealer's three-card hand to the rank of each player's three-card hand and comparing the rank of the dealer's two-card hand to the rank of each player's two-card hand; and settling each player's primary wager dependent upon the comparison of the rank of the dealer's three-card hand to the rank of each player's three-card hand and the comparison of the rank of the dealer's two-card hand to the rank of each player's two card hand. Appeal 2009-013343 Application 10/323,455 3 THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Marquez US 5,294,128 Mar. 15, 1994 Evers US 6,007,424 Dec, 28, 1999 Mostashari US 6,113,103 Sep. 5, 2000 Webb US 6,443,455 B1 Sep. 3, 2002 The following rejections are before us for review: 1. Claims 1-6, 8-9, 11-19, 21-27, and 29-30 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 2. Claims 1-11, 13-23, and 25-29 are rejected under 35 U.S.C. § 103(a) as unpatentable over Webb and Evers. 3. Claims 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over Marquez and Evers. 4. Claims 12, 24, and 30 are rejected under 35 U.S.C. § 103(a) as unpatentable over Webb and Mostashari. THE ISSUES With regards to the rejections under 35 U.S.C. § 101 the issue turns on whether the Examiner has established a prima facie case and if the claims are directed to a mere abstract idea. With regards to the rejection of claim 1 under 35 U.S.C. § 103(a) the issue turns on whether the cited prior art discloses or suggests that “each player's two-card hand must achieve a minimum pre-established rank for each player to be eligible for a payout on the primary wager”. The remaining claim rejections under 35 U.S.C. § 103(a) turn on a similar issue. Appeal 2009-013343 Application 10/323,455 4 FINDINGS OF FACT We find the following enumerated findings of fact (FF) are supported at least by a preponderance of the evidence.1 Additional facts may appear in the Analysis section below. FF1. Evers has disclosed a new game for Pai Gow Poker using a five card high hand and a two card low hand. For a push the player’s high hand must have a higher ranking than the dealers. (Abstract). FF2. Evers at Col. 4:42-5:34 does not specifically disclose that “each player's two-card hand must achieve a minimum pre-established rank for each player to be eligible for a payout on the primary wager”. FF3. Webb has disclosed a method and apparatus for playing a two-hand poker game (Title). FF4. Webb at 5:9-16 does not specifically disclose that “each player's two- card hand must achieve a minimum pre-established rank for each player to be eligible for a payout on the primary wager” ANALYSIS Rejections under 35 U.S.C. § 101 The Examiner has determined that claim 1 is unpatentable under 35 U.S.C. § 101 and applied only the machine-or-transformation test (Ans. 4). In contrast, the Appellants have argued that this rejection is improper (Reply Br. 3-5). We agree with the Appellants. The Examiner cited the machine-or- transformation test but not articulated a full analysis under 35 U.S.C. § 101. 1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2009-013343 Application 10/323,455 5 Further, claim 1 contains a limitation for “dealing each player and a dealer five cards” and “settling each player’s primary wager” which are not abstract ideas or insignificant extra-solution activity in the scope of the claim. For these reasons this rejection of claim 1 is not sustained. The remaining claims contain similar limitations and the rejection of claims 2-6, 8-9, 11-19, 21-27, and 29-30 under this rejection is not sustained for these same reasons. Rejections under 35 U.S.C. § 103(a) The Appellants argue that the rejection of claim 1 is improper because the prior art fails to disclose that “each player's two-card hand must achieve a minimum pre-established rank for each player to be eligible for a payout on the primary wager” (Br. 13-15). In contrast, the Examiner has determined that the above cited claim limitation is suggested by Evers at col. 4:42-5:34 and Webb at col. 5:9-16 (Ans. 6, 10-14). The Examiner has not asserted that Marquez discloses or suggests this cited claim limitation (Ans. 9). We agree with the Appellants. Evers at col. 4:42-5:34 and Webb at col. 5:9-16 do not specifically disclose that “each player's two-card hand must achieve a minimum pre-established rank for each player to be eligible for a payout on the primary wager” (FF2, FF4) and the rejection of the claim is not sustained. While Evers at col. 4:63-5:6 does disclose the use of a qualifying holding necessary to receive a push, there is no specific disclosure that the qualifying holding is specifically applied to the players two card hand or primary wager. The Examiner has asserted that qualifiers are used to establish a house advantage (Ans. 11) and we agree with this contention. However, the cited claim limitation applies specifically to the Appeal 2009-013343 Application 10/323,455 6 two-card hand and the primary wager. In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) the Supreme Court at 418 noted that in an obviousness analysis that“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”. Here, there is not an articulated reasoning with rational underpinnings to modify the references specifically to have a pre-established rank applied to the player two-card hand and primary wager as claimed. For these reasons the rejection of claim 1 under 35 U.S.C. § 103(a) is not sustained. The remaining claims rejected under 35 U.S.C. § 103(a) contain the same above limitation and the rejection of these claims is not sustained for these same reasons. CONCLUSIONS OF LAW We conclude that Appellants have shown that the Examiner erred in rejecting: claims 1-6, 8-9, 11-19, 21-27, and 29-30 under 35 U.S.C. § 101 as being directed to non-statutory subject matter; claims 1-11, 13-23, and 25-29 under 35 U.S.C. § 103(a) as unpatentable over Webb and Evers; claim 1 under 35 U.S.C. § 103(a) as unpatentable over Marquez and Evers; and claims 12, 24, and 30 under 35 U.S.C. § 103(a) as unpatentable over Webb and Mostashari. DECISION The Examiner’s rejection of claims 1-6, 8-9, 11-19, 21-27, and 29-30 is reversed. Appeal 2009-013343 Application 10/323,455 7 REVERSED MP