Ex Parte Snow

Patent Trial and Appeal Board

Mar 16, 2017

12618597 (P.T.A.B. Mar. 16, 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.
12/618,597 11/13/2009 Roger M. Snow PA2818.ap.US (3286-P10900) 6968
66137 7590 03/20/2017
TRASKBRITT, P.C. /Bally Gaming, Inc.
PO Box 2550
Salt Lake City, UT 84110
EXAMINER
COLLINS, DOLORES R
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
03/20/2017 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):
U S PTOMail @ 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
Appeal 2015-000851
Application 12/ 618,597
Technology Center 3700
Before CHARLES N. GREENHUT, JILL D. HILL, and
GORDON D. KINDER, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Roger M. Snow (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s final decision rejecting claims 1—22. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
Appeal 2015-000851
Application 12/618,597
BACKGROUND
Independent claims 1 and 9 are pending. Independent claim 1,
reproduced below, illustrates the claimed invention.
1. A method for playing a commissionless pai gow
poker card game with a house advantage, the method
comprising:
providing a gaming table comprising a felt surface
having a plurality of player positions and a dealer position, the
felt surface illustrated with, at each of the plurality of player
positions, a high hand location designated for a five-card player
hand, a low hand location designated for a two-card player
hand, and a base game wager spot;
the dealer providing at the gaming table randomized
cards from a deck of cards, the deck of cards comprising 52
physical cards and one physical joker card;
the dealer accepting, from a player associated with a
player position of the plurality of player positions, one or more
wagers, including a base game wager in the form of one or
more chips placed on the base game wager spot of the player
position, without collecting a commission;
the dealer distributing cards from the randomized cards,
comprising moving seven physical playing cards to the player
position for the player associated with the player position to
create player cards and moving seven physical playing cards to
the dealer position to create dealer cards;
the dealer arranging or allowing the player to arrange the
player cards to create a five-card player hand occupying the
high hand location and a two-card player hand occupying the
low hand location, a rank of the five-card player hand
exceeding a rank of the two-card player hand;
the dealer arranging the dealer cards to create, on the felt
surface of the gaming table, a five-card dealer hand and a two-
card dealer hand, a rank of the five-card dealer hand exceeding
a rank of the two-card dealer hand;
the dealer evaluating a set of cards selected from the
group consisting of the five-card dealer hand and the two-card
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Application 12/618,597
dealer hand to determine whether a rank of the set of cards
meets or is lower than a predetermined rank;
if the dealer evaluating the set of cards determines that
the rank of the set of cards meets or is lower than the
predetermined rank, the dealer paying out a payout, in the form
of at least one additional chip on or proximate the base game
wager spot, at a 1:2 payout rate without collecting the
commission;
if the dealer evaluating the set of cards determines that
the rank of the set of cards exceeds the predetermined rank, the
dealer comparing the rank of the five-card dealer hand to the
rank of the five-card player hand on the high hand location and
comparing the rank of the two-card dealer hand to the rank of
the two-card player hand on the low hand location;
if the dealer comparing determines that the rank of the
five-card dealer hand exceeds the rank of the five-card player
hand on the high hand location and that the rank of the two-card
dealer hand exceeds the rank of the two-card player hand on the
low hand location, the dealer collecting the base game wager by
removing the base game wager in the form of the one or more
chips from the base game wager spot;
if the dealer comparing determines that the rank of the
five-card dealer hand is lower than the rank of the five-card
player hand on the high hand location and that the rank of the
two-card dealer hand is lower than the rank of the two-card
player hand on the low hand location, the dealer paying out a
winning payout, in the form of one or more additional chips on
or proximate the base game wager spot, without collecting the
commission;
if the dealer comparing determines that the rank of the
five-card dealer hand exceeds the rank of the five-card player
hand on the high hand location and that the rank of the two-card
dealer hand is lower than the rank of the two-card player hand
on the low hand location, the dealer declaring the game a push
and returning the base game wager to the player, by leaving the
base game wager in the form of the one or more chips on the
base game wager spot, without collecting the commission; and
if the dealer comparing determines that the rank of the
five-card dealer hand is lower than the rank of the five-card
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Application 12/618,597
player hand on the high hand location and that the rank of the
two-card dealer hand exceeds the rank of the two-card player
hand on the low hand location, the dealer declaring the game a
push and returning the base game wager to the player, by
leaving the base game wager in the form of the one or more
chips on the base game wager spot, without collecting the
commission.
REJECTION
Claims 1—22 stand rejected under 35U.S.C. § 101 as directed to
non-statutory subject matter. Non-Final Act. 2.
OPINION
The Examiner determined that claims 1—22 claim an abstract idea.
Final Act 2, 5 (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.”). The Examiner
additionally determined that independent claims 1 and 9 include “no
recitation or [an] insufficient recitation of a machine or transformation,” are
“not directed to a proper application of a law of nature,” and are “a mere
statement of a general concept.” Id. at 4.
Appellant makes four arguments against the Examiner’s
determination that the claims are directed to an abstract idea: (1) a “set of
rules” is not an idea; (2) the Examiner failed to identify the rules alleged to
constitute the “set of rules;” (3) the “set of rules” identified by the Examiner
is not an abstract idea, because the rules are “not a fundamental practice of
the gaming industry,” and (4) even if the “set of rules” is determined to be
an abstract idea, the claims amount to significantly more than the abstract
idea, because “they are the result of an inventive concept and recite an
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Appeal 2015-000851
Application 12/618,597
integration of any such abstract idea into something more that poses no risk
of pre-emption over the idea as a whole.” Appeal Br. 11.
In Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347 (2014), the
Supreme Court set forth an analytical “framework for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.” Id. at 2355 (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-
97 (2012)). The first step in the analysis is to “determine whether the claims
at issue are directed to one of those patent-ineligible concepts,” such as an
abstract idea. Id.
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims “individually
and ‘as an ordered combination”’ to determine whether there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Id. (quoting Mayo, 132 S. Ct. at 1297). In other words, the
second step is to “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. (brackets in original) (quoting Mayo, 132 S. Ct. at
1294).
Regardless of whether “rules for playing a game” are an abstract idea
as the Examiner contends1, the Examiner appears to have failed to consider
1 “Human behavior,” such as “following rules or instructions,” is listed
among the examples of “statements] of a general concept” that the Interim
Guidance categorizes as weighing against eligibility. Interim Guidance at
pp. 1—2; see also, e.g., Dyk, J., concurring, In re Bilski, 545 F. 3d 943, 970-
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Application 12/618,597
the elements of the claims individually and as an ordered combination to
determine whether the claims recite additional elements that transform the
nature of the claims into a patent-eligible application.
Appellant’s fourth argument is that, according to the second step of
the Alice test, even if the claimed “set of rules” has been sufficiently
identified by the Examiner and is drawn to an abstract idea, the pending
claims are nonetheless patent eligible because they recite significantly more
than the ineligible concept itself. Appeal Br. 16.
Appellant contends that the “significantly more” of the pending
claims includes providing a gaming table with a felt surface illustrated with
various player, hand, and wager locations including, for example, “a base
game wager spot.” Appeal Br. 17—18. The claims recite providing the
gaming table with various player, hand, and wager locations, and the dealer
interacting therewith. Appeal Br. 23—25 (Claims App.).
While the Examiner acknowledges that Appellant’s claimed method
employs a gaming table, the Examiner reasons that because the “table does
not actually perform the step of ‘initiating a hand’, nor is it clear as to how
the device or table is being used, this is not considered the use of a particular
machine to perform any step of the claimed method,” and use of the table
“does not impose a meaningful limit on the claimed invention.” Final Act.
5; Ans. 2.
76 (Fed. Cir. 2008); Sotomayor, J., concurring, Alice Corp. Pty. Ltd. v. CLS
BankInt7, 134 S.Ct. 2347, 2360-61 (2014).
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Application 12/618,597
In reply, Appellant again contends that the gaming table with a felt
surface illustrated with various player, hand, and wager locations, and the
dealers interaction therewith, recite substantially more than conducting a
card game. Reply Br. 6, 7.
Although the Examiner states that the gaming table is not a
machine according to the machine-or-transformation test (the “table
does not actually perform the step of ‘initiating a hand’”), the
Examiner does not address Appellant’s contention that the gaming
table’s felt surface, and the dealers interaction therewith, recite
substantially more than conducting a card game. Merely additionally
stating that it is unclear how the device or table is being used is an
insufficient analysis. The Examiner thus fails to provide a reasoned
analysis of whether additional elements transform the nature of the
claims into a patent-eligible application as required by the second step
of the Alice two-step analysis. For this reason, we do not sustain the
rejection of claims 1—22 as directed to non-statutory subject matter.
DECISION
We REVERSE the rejection of claims 1—22 under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.
REVERSED
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