Ex Parte Snow et al

Patent Trial and Appeal Board

Oct 26, 2018

14846443 (P.T.A.B. Oct. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/846,443 09/04/2015
66137 7590 10/30/2018
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.
3286-12425. l(PA4206.ap-Cl 4530
EXAMINER
DENNIS, MICHAEL DAVID
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
10/30/2018 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
and LOUIS J. CASTLE II 1
Appeal2018-001462
Application 14/846,443
Technology Center 3700
Before LINDA E. HORNER, JOHN C. KERINS, and JAMES P. CAL VE,
Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Office Action
finally rejecting claims 1-20. Appeal Br. 6. We have jurisdiction under
35 U.S.C. § 6(b ).
We AFFIRM.
1 Bally Gaming, Inc. and Scientific Games Corporation are identified as the
real parties in interest. Appeal Br. 4. Bally Gaming, Inc. also is the
applicant pursuant to 37 C.F.R. § 1.46.
Appeal2018-001462
Application 14/846,443
CLAIMED SUBJECT MATTER
Claims 1 and 13 are independent. Claim 1 is reproduced below.
1. A method of administering a wagering game over a
network, comprising:
providing at least one server of a gaming system;
providing, by the at least one server, a client for execution on a
user device connected to the network and associated with
a player, the player being remote from the at least one
server;
the client receiving from the user device, and communicating to
the at least one server, an indication of an ante wager
associated with the player to qualify the player to
participate in the wagering game;
the client receiving from the user device, and communicating to
the at least one server, an indication of a bonus wager
associated with the player;
the gaming system adding the ante wager and the bonus wager
to a game pot;
the at least one server determining a set of player cards defining
a partial player hand including a selected number of
randomized playing cards from a set of playing cards;
the at least one server communicating to the user device the
partial player hand for display on a display associated
with the user device;
the at least one server determining a partial dealer hand
including a selected number of randomized playing cards
from the set of playing cards equal to the selected
number of randomized playing cards forming the partial
player hand;
the at least one server receiving, from the client, a first game
play election of a check, the first game play election
input at the user device and selected by the player
associated with the user device from first game play
options consisting of the check and a play wager election
of a play wager amount not exceeding a first
predetermined maximum multiple of the ante wager;
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Appeal2018-001462
Application 14/846,443
the at least one server determining a set of community cards
including randomized playing cards from the set of
playing cards;
the at least one server communicating to the user device the set
of community cards for display on the display associated
with the user device;
after receiving the first game play election of the check, the at
least one server receiving, from the client, a second game
play election input at the user device and selected by the
player associated with the user device from second game
play options consisting of a fold and a play wager
election of a play wager amount not exceeding a second
predetermined maximum multiple of the ante wager;
the gaming system adding the play wager amount to the game
pot;
the at least one server determining a poker hand for the player
associated with the user device, the poker hand for the
player formed from the partial player hand and the set of
community cards;
the at least one server determining a poker hand for the dealer
formed from the partial dealer hand and the set of
community cards;
the at least one server resolving the ante wager and any play
wager associated with the user device based at least in
part on a comparison of the poker hand for the player to
the poker hand for the dealer and determining a payout to
be distributed from the game pot to the player for the
poker hand for the player outranking the poker hand for
the dealer; and
the at least one server resolving the bonus wager associated
with the player.
REJECTION
Claims 1-20 are rejected as directed to patent-ineligible subject matter
under the judicial exception to 35 U.S.C. § 101.
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Application 14/846,443
ANALYSIS
Appellants argue claims 1-20 as a group with claim 1 as exemplary.
Appeal Br. 12-31. We select claim 1 as representative, with claims 2-20
standing or falling with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 1 is directed to a "method of administering a wagering game
over a network" with "at least one server of a gaming system." Appeal Br.
App'x 1. The at least one server provides "a client for execution on a user
device connected to the network." Id. The at least one server determines
and communicates a set of cards defining a partial play hand and a set of
community cards, and also receives first and second game play elections
made by a player at the user device. The client receives from the user device
and communicates to the at least one server various wager options ( ante
wager, bonus wager) and first and second game play elections. Players can
input their wagers and game play elections into the user device, which also
displays partial player hands and community card sets. Id. at 1-3.
Appellants disclose that their wagering game transcends the particular
environment in which it is played, e.g., on a table or automated device or
with a computer, processor, monitor, cash receptors, etc. See Spec. ,r 26.
Appellants argue that claim 1 recites a "new" wagering game, i.e., one
with unconventional wagering rules. Appeal Br. 14--17, 27-31. These rules
allow a player to remain in the game with an option of checking (to stay in
the game without making an additional wager) or making a specific wager
amount in a first play wager. Id. at 27-31; Spec. ,r 4. The wagering rules
limit the size of bets as game play progresses to multiples of play wagers
made earlier in the game. Appeal Br. 28-29; Spec. ,r 4. Players form hands
from a partial player hand and community cards. Id. at 28; Spec. ,r,r 6, 27.
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Appeal2018-001462
Application 14/846,443
We analyze patent-eligibility under Alice Corp. Pty. Ltd. v. CLS Bank
Int'!, 134 S. Ct. 2347, 2355 (2014) and Mayo Collaborative Services v.
Prometheus Labs., Inc., 566 U.S. 66 (2012). First, we consider whether the
claims are directed to a patent-ineligible concept such as a law of nature,
natural phenomena, or abstract idea. Alice, 134 S. Ct. at 2355. If so, we
consider the claim elements individually and as an ordered combination to
determine whether additional elements transform the claims into a patent-
eligible application. Id. This search for an inventive concept in the second
step seeks an element, or a combination of elements "sufficient to ensure
that the patent in practice amounts to significantly more than a patent upon
the [ineligible concept] itself." Id. We also consider whether the claims fall
within a statutory category of section 101. See Aatrix Software, Inc. v.
Green Shades Software, Inc., 882 F.3d 1121, 1125 (Fed. Cir. 2018). 2
Alice Step One: Are the Claims Directed to an Abstract Idea?
We agree with the Examiner's finding that claim 1 is directed to a set
of rules to administer a wagering game. Final Act. 2. The Examiner finds
that claim 1 recites a set of dealing rules, wagering rules (ante wager, fold,
play wager), game play election rules, "determining" rules, "predetermined
event" and "resolving" rules ( comparison of player and dealer poker hands).
Id.; Ans. 4--5. The Examiner correctly reasons that the rules are comparable
to the blackjack wagering rules held to be an abstract idea in In re Smith,
815 F.3d 816 (Fed. Cir. 2016). Final Act. 2; Ans. 4--5.
2 Reciting a "method of administering a wagering game" does not, by itself,
make claim 1 patent eligible. See CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1374 (Fed. Cir. 2011) (regardless of the statutory
category a claim invokes, the underlying invention is considered for patent-
eligibility); Appeal Br. 14--15 ("a new poker-based wagering method").
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Application 14/846,443
The Examiner determines the claimed server, user device, client, and
wagers and cards are non-unique, traditional, wagering game elements that
implement the abstract wagering game rules. See Final Act. 2-3.
We agree with the Examiner that the Federal Circuit's holding in In re
Smith is controlling and determinative of the issue in this appeal. Final Act.
2; Ans. 4--5. In re Smith examined the patent eligibility of a claim 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 re Smith, a precedential decision, held that claims directed to rules
for conducting a wagering game are comparable to fundamental economic
practices held to be abstract by the Supreme Court. Smith, 815 F.3d at 818.
In Smith, the court held that claims directed to a "method of conducting a
wagering game" are drawn to an abstract idea much like the method of
exchanging financial obligations in Alice and the method of hedging risk in
Bilski v. Kappas, 561 U.S. 593, 611 (2010). Id. at 819.
Like the claim in Smith, claim 1 recites a "method of administering a
wagering game" according to game rules that involve a client on a user
device receiving an ante and a bonus wager from a player, a partial player
hand of cards being determined and displayed, a player making a first game
play election (check or a play wager) and a second game play election (fold
or a play wager) determining community cards, and then determining poker
hands for the dealer and players, and resolving all received wagers. Appeal
Br. Appx. 1-3; Final Act. 2-3; Ans. 4--5. Like the claim in Smith, claim 1
therefore allows players to exchange financial obligations with dealers and
hedge risk by placing wagers in various amounts or checking.
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Application 14/846,443
The Specification's disclosure "relates to wagering games, casino
table wagering games, casino table playing card wagering games, computer-
implemented wagering games, and variants of casino table wagering games
that use poker ranks in determining outcomes." Spec. ,r 2. In particular, the
claims are directed to a "variant game of Hold 'Em poker" that allows for
rules of play wherein one player or all players are allowed to remain in the
game with an option of checking ( which means staying in the game without
making an additional wager) or making specific wagering amounts in first
play wagers. Id. ,r 4. As games progress, the permitted amounts of wagers
decrease with increasing information. Id. ,r,r 4, 28, 29. Games based on the
disclosed wagering rules can be carried out in environments ranging from
dealers using decks of cards to computer-generated visual representations of
dealers and cards over networks such as the Internet to remote players. Id.
,r,r 6-9. Appellants also disclose that "illustrations presented herein are not
meant to be actual views of any particular act in a method of administering a
wagering game ... but are merely idealized representations employed to
describe illustrative embodiments." Id. ,r 22.
Thus, the claimed method of administering wagering game rules on a
server, user device, and network does not remove claim 1 from the realm of
an abstract idea. To the contrary, the claimed components provide one of
many conventional environments to implement the wagering game rules.
Cf Appeal Br. 22. The server provides a client to a user device, determines
partial hands for a player and dealer and a set of community cards, receives
player game play elections, and determines player and dealer poker hands
and resolves wagers. The user device receives and communicates player
actions and displays cards. Appeal Br. Appx. 1-3; see Reply Br. 2-5.
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Appeal2018-001462
Application 14/846,443
Appellants argue that a patent eligible method can be implemented on
conventional equipment. Appeal Br. 20. Although checking, folding, and
play wagers limits are known (id. at 15-16), Appellants argue that claim 1
recites unconventional rules because the underlying game is unconventional
(id. at 27-31 ). Appellants argue that claim 1 recites these features as partial
player and dealer hands, first game play election consisting of a check and
play wager, a second game play election of a fold and play wager, and not
exceeding predetermined maximum multiples of ante wagers. Id. at 28-29.
Even if these contentions are true, "[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 § 101
categories of possibly patentable subject matter." Diamond v. Diehr, 450
U.S. 175, 188-89 (1981). See also Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 88-90 (2012) (the patent eligibility of
an abstract idea does not depend on its alleged novelty or non-obviousness);
SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018)
("No matter how much of an advance in the finance field the claims recite,
the advance lies entirely in the realm of abstract ideas, with no plausibly
alleged innovation in the non-abstract application realm. An advance of that
nature is ineligible for patenting."); Two-Way Media, Ltd. v. Comcast Cable
Commc 'ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017) ("Eligibility and
novelty are separate inquiries."); Synopsys, Inc. v. Mentor Graphics Corp.,
83 9 F .3 d 113 8, 1151 (Fed. Cir. 2016) ("But, a claim for a new abstract idea
is still an abstract idea."); Versata Develop. Grp., Inc. v. SAP Am., Inc., 793
F.3d 1306, 1335 (Fed. Cir. 2015) (affirming unpatentability of claims that
improved an abstract idea, but not a computer's performance).
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Application 14/846,443
Even if claim 1 recites unconventional wagering rules, as Appellants
argue (Appeal Br. 28-31 ), claim 1 still is directed to rules for a wagering
game, which In re Smith held to be akin to fundamental economic practices
considered abstract by the Supreme Court. Smith, 815 F.3d at 818. The
alleged nonabstract nature of the claimed rules is based on the alleged new
or unconventional way they are grouped together in a wagering game. See
Appeal Br. 27-30 (the gaming system adds an ante wager and a bonus wager
to a game pot, server communicates to a user device a partial player hand
and determines a partial dealer hand, a first game play election of a check, a
play wager amount not exceeding first predetermined maximum multiple of
the ante wager). We are not persuaded that the claimed wagering game rules
are distinguishable from those in Smith just because they recite different
abstract wagering rules. Here, as in Smith, the claimed wagering game and
game play rules allow players and dealers to exchange financial obligations
based on probabilities related to cards that are dealt.
That claim 1 may not preempt "an entire field" is not relevant to
whether it is directed to an abstract idea, because "the exclusion applies if a
claim involves a natural law or phenomenon or abstract idea, even if the
particular natural law or phenomenon or abstract idea at issue is narrow."
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014) (citing
Mayo, 566 U.S. at 88-89); see also Two-Way Media, 874 F.3d at 1339 (if
claims are patent ineligible, preemption concerns are fully addressed and
mooted); Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015) (holding that "[w]hile preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility").
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Appeal2018-001462
Application 14/846,443
The claimed wagering rules differ from rules held to be patent-eligible
under Alice Step One inMcRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299 (Fed. Cir. 2016). InMcRO, the claimed rules were directed to a
patentable, technological improvement over existing, manual 3-D animation
techniques and achieved an improved technological result in conventional
industry practice. Id. at 1316. The claimed process automatically animated
3-D characters using particular information and techniques to produce
accurate, realistic lip synchronization and facial expressions in the animated
characters. Id. at 1313, 1316. The claims "focused on a specific asserted
improvement in computer animation, i.e., the automatic use of rules of a
particular type." Id. at 1314. The order of specific, limited rules "renders
information into a specific format that is [ used to create] a sequence of
synchronized, animated characters." Id. at 1315; see SAP America, 898 F.3d
at 1167 (the claims in McRO were directed to the creation of something
physical-the display of lip synchronization and facial expressions of
animated characters on screens for viewing by human eyes).
Here, claim 1 does not involve an improvement in wagering game
technology. Cards are dealt, and wagers are made and resolved. The rules
essentially involve gathering, processing, analyzing, and communicating
information, albeit for a wagering card game, which are abstract concepts.
See Two-Way Media, 874 F.3d at 1337-38; Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1355-56 (Fed. Cir. 2016); TL! Commc 'ns LLC Patent
Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1336 (Fed. Cir. 2006) (step one of Alice asks whether the
claims focus on specific improvements in computer capabilities, or a process
that merely invokes computers as a tool).
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Application 14/846,443
Alice Step Two: Do the Claims Contain an "Inventive Concept"?
We also agree with the Examiner that claim 1 does not recite any
additional elements that are sufficient to amount to significantly more than
the abstract idea of a set of rules for a wagering card game. Final Act. 2-3;
Ans. 5-6. The Examiner finds that the rules, considered individually or as
an ordered combination, represent traditional wagering game elements that
do not transform the abstract idea of wagering game rules into a patent-
eligible application. Final Act. 3; Ans. 6.
Appellants argue that claim 1 recites "unconventional overall ordered
combinations of method acts" and "unconventional features that contribute
to, and are therefore significant to, the solution provided by the claimed
methods, and the solution is provided by way of an inventive concept, and
not just mere generic application of abstract ideas." Appeal Br. 38. These
arguments are not persuasive because they do not explain why a particular
order of abstract wagering game rules provides an inventive concept that
transforms the abstract idea into a patent eligible application. Smith left
open the possibility that claims directed to a game using a new or original
deck of cards could survive step two of Alice. Smith, 815 F .3d at 819.
However, Appellants do not assert that the claimed method implements the
abstract wagering game play rules on inventive cards or new game systems.
Instead, the Specification discloses that many different wagering
games exist for home and casino environments, and the games must be
exciting, uncomplicated, and easy to learn to avoid frustrating players. Spec.
,r 3. New games must meet these criteria and be sufficiently different from
old games to entice players to the new game. Id. Appellants then argue that
their game is "new" because of the wagering rules used. Reply Br. 2-8.
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Application 14/846,443
Appellants describe their wagering game as a variant of Hold 'Em
poker that includes different wagering rules such as the option of checking
or making specific wagering amounts in the first play wagers. Id. f 4. All
of the alleged innovations relate to an unconventional combination and order
of wagering game rules. 3 Appeal Br. 35-39. However, a claim directed to
individual, or an ordered combination of, rules related to game play and
wagering ( dealing cards, making and resolving different types of wagers in
different amounts) does not provide an inventive concept sufficient to
transform the claimed subject matter into a patent-eligible application of the
abstract idea. See Smith, 815 F.3d at 819; Appeal Br. 34--36, 40-41.
Even if claim 1 recites an unconventional ordered combination of
wagering game rules for poker, claim 1 still is directed to the abstract idea of
wagering. See Smith, 815 F.3d at 819; see also Synopsys, 839 F.3d at 1151
("But a claim for a new abstract idea is still an abstract idea."); Versata, 793
F.3d at 1335 (affirming unpatentability of claims that improved an abstract
idea rather than computer performance).
Unlike the rules in McRO, the claimed wagering rules in this case do
not transform a 3-D image of a dealer or player, nor do they improve a user
device or display of the wagering game. The claimed wagering rules and
their generic computer and game implementation merely allow players to
exchange and resolve financial obligations based on probabilities and the
distribution of the cards. See Smith, 815 F.3d at 818-19; Reply Br. 6--7.
They make the game exciting while being easy to learn. See Spec.~ 2.
3 To emphasize this point, Appellants also argue that the additional elements
required to make abstract wagering rules patent-eligible are not limited to
physical elements or other implementing items and do not have to be tied to
a machine or transform an article to be patentable. Id. at 31-34.
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Appellants' arguments regarding preemption (Appeal Br. 13-17, 39-
41; Reply Br. 8-9) are resolved by our§ 101 analysis. Two-Way Media, 874
F.3d at 1339 (where patent claims are deemed patent ineligible, "preemption
concerns are fully addressed and made moot"); Ariosa Diagnostics, 788 F.3d
at 1379 ("questions on preemption are inherent in and resolved by the§ 101
analysis."). Thus, we sustain the rejection of claims 1-20.
DECISION
We affirm the rejection of claims 1-20.
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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