Ex Parte Snow

Patent Trial and Appeal Board

Mar 23, 2018

11591259 (P.T.A.B. Mar. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111591,259 10/31/2006
66137 7590 03/27/2018
TRASKBRITT, P.C. /Bally Gaming, Inc.
PO Box 2550
Salt Lake City, UT 84110
FIRST NAMED INVENTOR
Roger M. Snow
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
3286-10814(PA1679.ap.US) 8696
EXAMINER
D'AGOSTINO, PAUL ANTHONY
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
03/27/2018 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):
USPTOMail@traskbritt.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROGER M. SNOW
Appeal2017-005604
Application 11/591,259
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Roger M. Snow ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 1, 3, 4, 6, 7, 9, 12, 14, 20, 22, 24,
28, and 30 under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter. 2 We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 According to Appellant, the real parties in interest are Bally Gaming, Inc.
and Scientific Games Corporation. Appeal Br. 4.
2 Claims 2, 5, 8, 10, 11, 13, 15-19, 21, 23, 25-27, and 29 are cancelled.
Appeal Br. (Claims App.).
Appeal2017-005604
Application 11/591,259
THE CLAIMED SUBJECT MATTER
Claims 1, 12, and 28 are independent. Claim 1 is reproduced below
and is illustrative of the subject matter on appeal.
1. A method of administering a casino wagering game, the
method comprising:
providing a gaming table having a surface illustrated to
define, at each player area of a plurality of player areas, at least
one base wager area and at least one side wager area;
providing a progressive jackpot system associated with a
pay table and a progressive meter for displaying a jackpot
amount;
providing a set of physical playing cards at the gaming
table;
accepting from a player a base wager, placed at the at least
one base wager area of a player area associated with the player,
of a base wager amount to enter the player to play an underlying
wagering game and to trigger play of the underlying wagering
game, the underlying wagering game designated to resolve the
base wager based at least in part on at least one player hand;
accepting from a player one side wager, placed at the at
least one side wager area of the player area, to enter the player to
play both a progressive jackpot event and a non-progressive
bonus event and to trigger play of both the progressive jackpot
event and the non-progressive bonus event, the non-progressive
bonus event designated to resolve at least a portion of the one
side wager based at least in part on a comparison of cards from
the at least one player hand to a pay table, the progressive jackpot
event designated to resolve at least another portion of the one
side wager based at least in part on a comparison of the cards
from the at least one player hand to a progressive pay table, the
one side wager being of a side wager amount selected by the
player from a range of defined side wager amounts comprising
a minimum side wager amount, and
a threshold side wager amount to also enter the
player to play another bonus event and to trigger play of
the another bonus event designated to resolve still another
portion of the one side wager based at least in part on a
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Application 11/591,259
comparison of at least one hand of another player at the
gaming table to another pay table;
applying a portion of the one side wager to fund the
progressive meter and grow a progressive jackpot;
displaying an amount of the progressive jackpot on the
progressive meter at the gaming table;
separating from the set of physical playing cards at least
one randomly ordered group of cards for each of the at least one
player hand and at least one dealer hand;
resolving the base wager based at least in part on the at
least one player hand;
resolving the one side wager, comprising:
resolving at least the portion of the one side wager
based at least in part on the comparison of the cards from
the at least one player hand to the pay table; and
resolving at least another portion of the one side
wager based at least in part on the comparison of the cards
from the at least one player hand to the progressive pay
table.
OPINION
Appellant argues independent claims 1, 12, and 28 together as a
group, and does not present any separate arguments for dependent claims 3,
4, 6, 7, 9, 14, 20, 22, 24, and 30. Appeal Br. 12--49; Reply Br. 2-14. We
select claim 1 as the representative claim, and claims 3, 4, 6, 7, 9, 12, 14, 20,
22, 24, 28, and 30 stand or fall therewith. 37 C.F.R. § 41.37(c)(l)(iv).
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. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 71----72 (2012)).
Under that framework, we first "determine whether the claims at issue are
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Application 11/591,259
directed to one of those patent-ineligible concepts"-i.e., a law of nature, a
natural phenomenon, or an abstract idea. Id. If so, we 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. (quoting Mayo,
566 U.S. at 77_:"j9). The Supreme Court has described the second part 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. (alteration in original) (quoting Mayo, 566 lJ.S. 72-
73).
Part one
The Examiner determines that claim 1 is "directed to administering a
wagering game." Final Act. 2. The Examiner explains that the claim
"recites providing a gaming table, providing a progressive jackpot system, a
set of physical playing cards, and player wagers which initiate a base game
and enter the player into both a progressive game, a non-progressive bonus
game and another bonus game," and determines that the claim "recite[s] an
abstract idea." Id. at 3. The Examiner also determines that "Appellant's
claim is a card game carried out by abstract rules of the game facilitated by
well-known and conventional cards and gaming instrumentalities," which is
similar to the claims at issue inin re Smith, 815 F.3d 816 (Fed. Cir. 2016).
Ans. 2. According to the Examiner, "given the similarities to Smith ... , the
present claims are properly categorized as abstract." Id. at 4 (italics added).
Appellant argues that the Examiner effs in concluding that the claimed
subject matter is directed to an abstract idea. Appeal Br. 15-22; Reply Br.
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2-10. In particular, Appellant asserts that the Examiner's rejection is
ambiguous, fails to consider the basic character of the claim, lacks clear
articulation of the abstract idea, and does not show the alleged abstract to be
similar to a concept identified by the courts as abstract. Appeal Br. 16-27.
According to Appellant, the Examiner failed to establish a prima facie case
of subject matter ineligibility. Id. at 16, 22, 27. \Ve are not persuaded by
these arguments. In view of the Examiner's findings and determinations
presented in the Final Office Action and the Answer, as summarized above
(Final Act. 2--4; Ans. 2--4), the Examiner's analysis in this case is sufficient
to put Appellant on notice of the basis for the Examiner's determination in
order to allow Appellant to recognize and seek to counter the grounds for
rejection. In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). In this regard,
for the reason discussed below, we agree with the Examiner that the Federal
Circuit's holding in Smith is controlling and determinative with respect to
the question of whether Appellant's claim is directed to an abstract idea.
Ans. 2.
Smith considered the patent eligibility of claims directed to a "method
of conducting a wagering game" with a deck of playing cards that the dealer
deals according to game rules while accepting and resolving wagers of
players. Smith, 815 F.3d at 817-18. In Smith, which is a precedential
decision and binding on this Board, our reviewing court determined that
claims directed to rules for conducting a wagering game are comparable to
the fundamental economic practices that the Supreme Court held to be
abstract ideas in Alice and Bilski v. Kappos, 561 U.S. 593 (2010). Smith,
815 F.3d at 818-19. Namely, the court determined that the "claimed
'method of conducting a wagering game' is drawn to an abstract idea much
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like Alice's method of exchanging financial obligations and Bilski's method
of hedging risk." Id. at 819; see also id. (concluding that "claims[]
describing a set of rules for a game[] are drawn to an abstract idea").
Similar to the claims at issue in Smith, Appellant's claim 1 recites a
"method of administering a casino wagering game" according to game rules.
Appeal Br. (Claims App.). The method involves providing a gaming table,
providing a progressive jackpot and meter, accepting base and side wagers,
displaying the progressive jackpot amount on the meter, arranging playing
cards, and resolving the base and side wagers. Id. Appellant's Specification
describes that "[t]he present invention relates to games of chance,
particularly card games of chance, more particularly bonus games in casino
table card games." Spec. i-f 2. The Specification also describes that "the
present invention is an improved version of the game of Pai Gow poker that
is intended to make the game more interesting and to increase revenues for
casinos." Id. In other words, like the claims in Smith, Appellant's claimed
method is directed to rules for conducting a wagering game. Because the
method of claim 1 allows players and dealers to exchange financial
obligations and hedge risk by placing base wagers and side wagers, we
conclude that the claim is directed to an abstract idea in the form of a
fundamental economic practice. Smith, 815 F.3d at 818.
Appellant urges us not to follow the Smith decision, arguing that "the
identification of 'rules for playing a wagering game' as the 'abstract idea' in
... Smith is contrary to the prior binding precedent from the Supreme Court,
and even the prior precedent from the Federal Circuit." Appeal Br. 12. In
particular, Appellant asserts that S1nith is "out of step with" other precedent
from the Federal Circuit and Supreme Court. Id. at 14 n. l; id. at 34 n.13;
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Application 11/591,259
Reply Br. 2. According to Appellant, "the present claims, like the patent-
eligible claims in McRO[, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299 (Fed. Cir. 2016)] at least use unconventional rules that have specific
characteristics and set out meaningful requirements and that improve the
existing technological process for wagering games." Reply Br. 10. "Thus,
the present claims should be found patent eligible under the first step of the
Alice framework like the patent-eligible claims of McRO." Id. We are not
persuaded by Appellant's argument.
As discussed above, claim 1 is drawn to essentially the same abstract
idea, i.e., rules for conducting a card wagering game, as were the claims at
issue in s~mith, which were determined to be directed to an abstract idea of
aJimdamental econornic practice. In contrast, Appellant's claim
is not similar to the claims in AfcRO, which relate to data processing
involving automating an animation method and do not relate to a
fundamental economic practice. See McRO, 837 F.3d at 1307----08, 1314.
Although the AicRO decision mentions the use of "unconventional rules" in
claims determined to be directed to patent-eligible subject matter, it does so
in the context of claims requiring an ordered combination of steps in relating
"sub-sequences of phonemes, timings, and morph weight sets." Id. at 1303.
\Ve decline to extend A1cRO's reach to purported unconventional rules
present in claim 1, in that we find Srnith to be binding on the facts and issues
present in this appeal, in terms of the claimed subject matter being directed
to an abstract idea. 3 Moreover, it was not the mere presence of
unconventional rules in AfcRO that led to patent-eligibility; rather, it was
3 Appellant acknowledges that "Smith has not been expressly overruled to
date." Reply Br. 2.
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that the n1les were used "in a process specifically designed to achieve an
improved technological result" McRO, 837 F.3d at 1316. We are not
persuaded that Appellant has adequately shovvn how the claimed rules are
used in a process to achieve an improved technological result.
Appellant also argues that, in the present claim, "the underlying game
is unconventional," and, "[n]otably, the claims do not stand rejected as
either anticipated or made obvious by the prior art; therefore, the Examiner
apparently acknowledges that the methods in this case are new and
nonobvious." Appeal Br. 26. This argument is unpersuasive. As the
Supreme Court has stated, "[t]he 'novelty' of any element or steps in a
process, or even of the process itself: is of no relevance in determining
whether the subject matter of a claim falls within the § l 0 l categories of
possibly patentable subject matter." Diamond v. Diehr, 450 U.S. 175, 188-
89 (1981 ). In other words, to the extent Appellant is arguing that the
claimed invention is not directed to an abstract idea because it is novel and
nonobvious, we are not persuaded because a novel and nonobvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See
1Hayo, 566 U.S. at 90; see also Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2117 (2013) ("Groundbreaking, innovative,
or even brilliant discovery does not by itself satisfy the§ 101 inquiry.");
Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016)
("[U]nder the Mayo/Alice framework, a claim directed to a newly discovered
law of nature (or natural phenomenon or abstract idea) cannot rely on the
novelty of that discovery for the inventive concept necessary for patent
eligibility.").
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Appellant further argues that the claims do not risk tying up any
abstract idea. Appeal Br. 45---49; Reply Br. 12----14. In particular, Appellant
asserts that claim 1 "(which provides features that are unconventional,
solution-significant, and in addition to any abstract idea) do[ es] not tie up or
monopolize, an abstract idea, i.e., a fundamental process, building block, or
basic tool of the gaming industry." Appeal Br. 46. This argument is
unpersuasive. Merely because claims do not preempt all forms of the
abstraction does not make them any less abstract. See OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362--63 (Fed. Cir. 2015) ("[T]hat the
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract."). Moreover, characterizing preemption as a driving concern for
patent eligibility is not the same as characterizing preemption as the
dispositive test for patent eligibility. Instead, "[t]he Supreme Court has
made clear that the principle of preemption is the basis for the judicial
exceptions to patentability" and "[ fJor this reason, questions on preemption
are inherent in and resolved by the § 101 analysis." Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 134
S. Ct. at 2354). Although "preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility." Id. Given this direction from our reviewing court, we decline to
apply a separate preemption standard in our analysis, and instead, as
discussed above, we apply the steps set forth by the Supreme Court in Alice
and Mayo.
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Therefore, when read as a whole, claim 1 is directed to rules for
administering a wagering card game, which, for the above reasons,
constitutes a patent-ineligible abstract idea.
Part two
Regarding the second step of the Alice framework, the Examiner
determines that "the instant claim merely recites use of a table and player
area, side bets in association with a progressive jackpot system comprising a
progressive jackpot meter, and emitting lights to indicate the presence of
wagers." Final Act. 3--4. The Examiner explains that "[t]hese pre-existing
instrumentalities [are] common in the technological field of gaming[,] and
... [the] computer components are claimed to perform their basic functions
of counting, indicating, and facilitating the abstract rules of the game." Id. at
4. According to the Examiner,
Id.
the use of these elements [is] not deemed to be significantly more
than being used to assemble known types of table games,
wagering, and jackpots facilitated by operations of general
purpose computing devices to manage the wagering, accounting,
and processing of returns of the base game and various bonus
games.
Appellant argues that "the rejected claims are directed to significantly
more thanjust an abstract idea." Appeal Br. 34; see also id. at 39 n.15
(asserting that the claim is "directed to significantly more than just rules of a
game"). Appellant asserts that claim 1 recites a particular ordered
combination of features that are unconventional and solution-significant,
and, thus, the claim is directed to an inventive concept. Id. at 35-37, 40--41;
Reply Br. 10-12. In particular, Appellant asserts that claim 1 includes the
unconventional feature of "a side wager that qualifies a player for both a
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progressive event and a non-progressive bonus event, where such wager is
selected from a predetermined range of amounts." Appeal Br. 38; see also
id. (asserting that the claim "provide[s] a more diversely-resolved side
wager," and, "[t]herefore, the incentive for the player to wager more is not
absent"). According to Appellant, the additional elements recited in claim 1
represent an improvement to the state of the art in the gaming industry. Id.
These arguments are unpersuasive.
As the Federal Circuit made clear in Tvvo-TVay lvledia Ltd. v. Comcast
Cable Communications, the improvement must be a technical one. See Two-
Way Media Ltd. v. Comcast Cable Comm., LLC, 874 F.3d 1329, 1338-39
(Fed. Cir. 2017) (reciting an abstract idea performed on generic computer
and network components that operate according to their ordinary functions
does not contain an inventive concept). Here, claim 1 does not recite a
technical improvement tied to a specific apparatus that solves a technical
problem in the gaming arts. Instead, the claim is merely directed to a
variation of rules to a casino wagering game "that is intended to make the
game more interesting and to increase revenues for casinos" by "includ[ing]
a bonus event with a side wager." Spec. ,-r 2; see also id. ,-r 17 (describing a
"combination of two enabled events from a single wager").
Appellant argues that claim 1 "recite[ s] new or original articles that
are significantly more than merely the 'standard deck of cards' in In re
Smith." Appeal Br. 42. In particular, Appellant asserts that the gaming
table, progressive jackpot system, and progressive jackpot meter elements
recited in claim 1 are unconventional and "specifically configured for
administering a wagering game according to the recited methods, i.e.,
methods that include a base wager and a side wager with involvement of a
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progressive event." Id. at 43; see also id. at 41 (asserting that "the claims
provide combinations of additional elements that are neither widely
prevalent nor, at least in combination, well-understood, routine, or
conventional activity"). We are not persuaded by this argument.
In Smith, the Federal Circuit determined that using, shuffling, and
dealing conventional physical playing cards, and determining a winner by
comparing a player's physical cards to a dealer's reference cards are "purely
conventional" activities. Smith, 815 F.3d at 819. In other words, appending
purely conventional steps to an abstract idea does not provide a sufficient
inventive concept. Id. (citing Alice, 134 S. Ct. at 2357-58). As Appellant
points out (Appeal Br. 42), the court in Smith stated that a game using a new
or original deck of cards rnight survive step two of Alice (see Smith, 815
F.3d at 819). However, Appellant's claim 1 does not recite a new or original
deck of cards. See Spec. ir 37 (describing that "[t]he game is usually played
with a standard deck"). Moreover, to the extent that the claimed method
involves "physical" aspects (e.g., steps of physically manipulating the cards,
which are physical articles) (see Appeal Br. 39 n.15 (asserting that "the
claims require physical articles and manipulations of those articles, which is
at least something more than a mere collection of rules for a game")), the
fact that certain physical elements or steps are necessary to perform the
method does not show that these features are any more than routine and
conventional in playing a card game. See Alice, 134 S. Ct. at 2359-60; see
also Smith, 815 F.3d at 819 (rejecting the argument that "shuffling and
dealing 'physical playing cards"' ... bring[s] the claims within patent-
eligible territory").
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We are also not persuaded by Appellant's argument that the recited
gaming table, progressive jackpot system, meter, and side wager elements
are new or original (i.e., unconventional) elements. Appeal Br. 43.
Although we appreciate Appellant's observation that gaming table layouts
are particularized to specific games (id. at 44), the gaming table represents a
conventional element used to implement the rules of the game (i.e., the
abstract idea). Providing a gaming table having a surface illustrated to
define a base wager area and side wager area at each player area is
conventional. This is evidenced, for example, by Figure 1 of Snow
(US 2005/0170875 Al, pub. Aug. 4, 2005)4 which illustrates table layout 10
having six player positions 12, 14, 16, 18, 20, 22 with each position having a
base wager area 24a-f and a side wager area 26a-f. Further, Appellant's
Specification suggests that the recited progressive jackpot and side wager
elements are well-known conventional features that are widely prevalent in
the gaming industry. See Spec. i-fi-13--4. For example, the Specification
describes that "[ o ]ne of the most successful video or slot games has been the
WHEEL OF FORTUNE® slot game, in which a small portion of each
underlying wager is added to a progressively increasing jackpot"); see also
id. i14 (describing that "CARIBBEAN STUD® poker invigorated variant
poker games by emphasizing a fixed side wager on a progressive jackpot,"
where "[a] portion of the side wager is put into a progressive jackpot, and
payments are made for particularly high-ranking hands"). With respect to
the progressive meter element, the Specification does not describe the meter
with any particularity that would indicate it amounts to anything more than a
4 Snow is cited in the Background of Appellant's Specification. Spec. i-f 14.
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generic display device used simply to display data. See id. i-f 50 (describing
that meter 32 merely displays the progressive jackpot amount); see also
Bilski, 561 U.S. at 610-11 (explaining that adding insignificant post-solution
activity to the claims is not enough to transform an abstract idea into patent-
eligible subject matter). Thus, we are not persuaded that the additional
elements recited in the claim are the type of unconventional features
Alice envisioned as imparting patent eligibility. See Alice, 134 S. Ct. at
2358 ("[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention. Stating an
abstract idea while adding the words 'apply it' is not enough for patent
eligibility.") (quoting Mayo, 566 U.S. at 72 (internal quotation marks
omitted)).
For the foregoing reasons, we find nothing in claim 1 to be
sufficiently transformative to render claim 1 patent eligible. We sustain the
Examiner's rejection ofclaim 1, and claims 3, 4, 6, 7, 9, 12, 14, 20, 22, 24,
28, and 30 falling therewith, under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter.
DECISION
The Examiner's decision to reject claims 1, 3, 4, 6, 7, 9, 12, 14, 20,
22, 24, 28, and 30 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is affirmed.
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
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