Ex Parte Webb

Patent Trial and Appeal Board

Mar 28, 2014

11640989 (P.T.A.B. Mar. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD

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Ex parte DEREK J. WEBB
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Appeal 2012-002464
Application 11/640,989
Technology Center 3700
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Before: JENNIFER D. BAHR, JOHN C. KERINS, and
JILL D. HILL, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Derek J. Webb (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-13, 16-22, 24, and 25. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The Claimed Subject Matter
Claim 16, reproduced below, is illustrative of the claimed subject
matter.
16. A method of playing a house-banked casino card game,
the method comprising:
(a) receiving at least a competition wager and a proposition
wager from a player, the competition wager and the proposition
wager being compulsory;
(b) dealing player cards to the player and dealer cards to a
dealer;
(c) dealing at least one community card to a center card area;
(d) after step (c), providing the player with a first option to
increase the competition wager by an amount equal to the
competition wager received in step (a);
(e) after step (d), dealing at least one additional community
card;
(f) after step (e), providing the player with a second option
to increase the competition wager by an amount equal to the
competition wager received in step (a), wherein the second
option is provided regardless of whether the player increased
the competition wager at the first option,
wherein a player hand includes cards selected from the
player cards, the at least one community card, and the at least
one additional community card, and wherein the dealer hand
includes cards selected from the dealer cards, the at least one
community card, and the at least one additional community
card;
(g) resolving the competition wager according only to a
poker rank of the player hand versus a poker rank of the dealer
hand, wherein the competition wager is paid 1 to 1 regardless of
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whether the player increased the competition wager in step (d)
or (f); and
(h) resolving the proposition wager based on the better of
the poker rank of the player hand and the poker rank of the
dealer hand against a scale.
Rejections
Appellant requests our review of the following rejections:
I. Claims 1-13, 16-22, 24, and 25 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter.
II. Claims 1-3, 6-13, and 16-22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Snow (US 2006/0284376
A1, pub. Dec. 21, 2006), Webb (US 2002/0153662 A1, pub.
Oct. 24, 2002), and Mitchell (US 6,827,348 B1, iss. Dec. 7,
2004).
III. Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Snow, Webb, Mitchell, and Yurkins (US
2005/0116414 Al, pub. Jun. 2, 2005).
IV. Claims 24 and 25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Snow, Webb, Mitchell, and Sklansky
(US 2005/0167924 Al, pub. Aug. 4, 2005).

OPINION
Rejection under 35 U.S.C. § 101
Appellant groups claims 1-13, 16-22, 24, and 25 together in
contesting this rejection. Thus, we select claim 16 to decide the appeal of
this rejection, with claims 1-13, 17-22, 24, and 25 standing or falling with
claim 16. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
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The Examiner determined that claim 16 is not directed to patent-
eligible subject matter under 35 U.S.C. § 101, because it is a method or
process claim that is not tied to a particular machine or apparatus, does not
transform a particular article to a different state or thing, and, based on a
weighing of factors toward and against eligibility, claims an abstract idea.
Ans. 3-4. The Examiner adds that “Appellant’s claimed method, although
couched in terms of a few actual steps that implement the use of playing
cards, is a clear attempt to claim an abstract idea in the form of a new set of
rules for playing a card game.” Ans. 14. The Examiner analyzed several
factors weighing toward or against patent eligibility and determined that “the
factors in this case weighing against patent eligibility outweigh the factors
weighing toward patent eligibility.” Ans. 14-15. (citing Interim Guidance
for Determining Subject Matter Eligibility for Process Claims in View of
Bilski v. Kappos, 75 Fed. Reg. 43,922, 43,925-26 (Jul. 27, 2010)
(hereinafter “Interim Guidance”).
Appellant argues that “the playing cards specifically called for by all
of the claims at issue are a very specifically identified apparatus and are the
only apparatus with which the claimed game can be played.” App. Br. 14.
Thus, according to Appellant, “[t]his specifically claimed apparatus
limitation” satisfies the machine-or-transformation test and removes the
claimed invention from the realm of an abstract idea. App. Br. 15.
Appellant contends that none of the adverse factors set forth in the
PTO’s Interim Guidance apply to Appellant’s invention, which, according to
Appellant, “is fully ‘embodied’ and can only be performed with a specified
apparatus (playing cards) and creates no monopoly over any ‘concept.’”
App. Br. 15. Appellant further contends that “‘Appellant’s invention clearly
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‘implements a concept in a tangible way [and] the performance of [the
claimed] steps is observable and verifiable.’” Id.
Appellant maintains that he “has claimed no ‘concept’ which is in any
way separable from the very specifically enumerated method steps and the
apparatus integral to those steps.” Reply Br. 2 (citing the receipt of wagers,
dealing playing cards, and resolving wagers as specifically enumerated
steps). Appellant points out that the claimed method does not cover all
games, or even all card games. Reply Br. 2-3. In particular, Appellant notes
that the claimed method is limited to poker games with community cards
and “non-player dealers, i.e., house dealers.” Reply Br. 3.
Appellant asserts that “[t]he claimed player, dealer and community
cards and center area are all integral apparatus and must exist physically or
be ‘tied to’ specific machine components.” Reply Br. 4-5. Appellant
contends that even if the claims are construed as not requiring physical
cards, as posited by the Examiner, the claimed method must be implemented
by using either: (a) “physical cards, as implied by the context of ‘a house-
banked casino card game’ involving a ‘dealer dealing player cards to the
player’ and ‘community cards to a center card area’” or (b) “an electronic
replication of each of those claim limitations which, as noted in the
specification, would require ‘a display, a player interface, and circuitry for
effecting game play and structure for receiving wagers and dealing hands
according to the rules of the game.’” Reply Br. 4.
Appellant points out that the claimed subject matter has real world
value in that it “is a very specific method of playing ‘a house-banked casino
card game’ that is designed to be played for real money, in real casinos, and
operated by the casinos in the expectation of making very real profits for the
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casino’s shareholders or private owners.” App. Br. 19-20. Appellant adds
that the invention “defines a very specific method of playing a house-banked
Hold’Em poker game” and has practical utility as “a casino-viable Hold’Em
poker game that more closely corresponds to conventional card room play
and will therefore, presumably (in the expert opinion of [the] inventor), be
more attractive to Hold’Em players, and therefore generate more revenue to
casino owners.” App. Br. 20-21.
According to Supreme Court precedents, “the machine-or-
transformation test is a useful and important clue, an investigative tool, for
determining whether some claimed inventions are processes under § 101,”
but “is not the sole test for deciding whether an invention is a patent-eligible
‘process.’” Bilski v. Kappos, 130 S.Ct. 3218, 3227 (2010). Thus, the
Examiner correctly considered this test in determining whether claim 16 is
directed to patent-eligible subject matter.
Moreover, we agree with the Examiner that claim 16 does not pass the
machine-or-transformation test, i.e., that it is not tied to a particular machine
or apparatus and does not transform a particular article to a different state or
thing. The machine-or-transformation test asks whether the claim “requires
a particular machine implementing a process or a particular transformation
of matter.” Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1347 (Fed. Cir.
2013). Appellant makes no assertion that claim 16 requires a particular
transformation of matter. Rather, Appellant contends that the playing cards
required in the claim are “a very specifically identified apparatus and are the
only apparatus with which the claimed game can be played” and further that
the claimed player, dealer, and community cards and center area are all
integral apparatus that must exist physically or be tied to specific machine
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components. Thus, we focus our attention on the question of whether claim
16 requires a particular machine implementing a process.
The Examiner correctly found that claim 16 is not limited to physical
cards. Ans. 13. Indeed, Appellant’s invention is not limited to any
particular form or media, but, rather, encompasses an unlimited variety of
forms and media, both known and unknown. In particular, Appellant’s
Specification states that
the invention can be embodied in a wide variety of
forms and media such as, but not limited to, single
player slot video machines, multi-player slot video
machines, electronic games and devices, lottery
terminals, scratch-card formats, software, as well
as in-flight, home and Internet entertainment. In
addition, the invention can also be readily
implemented as a computer program product (e.g.,
floppy disk, compact disc, etc.) comprising a
computer readable medium having control logic
recorded therein to implement the features of the
invention as described.
Spec. 8-9, para. [0027] (emphasis added).
Furthermore, in any event, even if the cards were considered to be a
specific machine or apparatus, the cards do not implement any process.
Claim 16 mentions cards only in the context of the steps of dealing cards to
the player, to a dealer, and to a center card area. These claimed steps require
nothing more than that the cards be dealt, i.e., given or provided to a player,
dealer, or center card area.
We also reject Appellant’s argument that the claimed method must be
implemented by either: (a) physical cards or (b) an electronic replication
requiring a display, a player interface, circuitry for effecting game play, and
structure for receiving wagers and dealing hands. The language of
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paragraph [0027] of Appellant’s Specification evinces a clear intention not
to restrict the invention to any finite range of forms or media.
A claim is not patent-eligible if it is to an abstract idea itself, rather
than to an application of an abstract idea. Ultramercial, 722 F.3d at 1343
(citing Bilski, 130 S.Ct. at 3230).
Appellant’s arguments do not persuade us that the Examiner erred in
determining that claim 16 is directed to an abstract idea, and not to the
application of an abstract idea. As noted above, despite Appellant’s
argument to the contrary, Appellant’s claimed method is not “embodied” in
any particular, tangible, or concrete form, nor limited to performance by a
specific apparatus, but, rather, encompasses an unlimited variety of forms
and media. Even accepting Appellant’s argument that the performance of
the steps in the claimed method is observable and verifiable, this does not
weigh substantially, if at all, against abstractness. Indeed, the performance
of the steps of the method claimed in Bilski held by the Supreme Court to be
an abstract idea are no less observable and verifiable than the steps of claim
16 before us in this appeal. See Bilski, 130 S. Ct. at 3223, 3231.
Claim 16 is directed to the concept of emulating a conventional Texas
Hold’Em card game in a player versus dealer format, rather than a player
versus player format. The fact that this concept does not encompass all
games, or even all card games, does not convince us that this is not an
abstract concept. “It is not the breadth or narrowness of the abstract idea
that is relevant, but whether the claim covers every practical application of
that abstract idea.” Ultramercial, 722 F.3d at 1346.
The steps of receiving a competition wager, dealing player cards,
dealer cards, and community cards, providing first and second options to
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increase the competition wager, and resolving the competition wager
according only to a poker rank of the player hand versus a poker rank of the
dealer hand are inherent in emulating a conventional Texas Hold’Em game
in a player versus dealer format, and thus do not render the claimed method
patentable. See Id. at 1348 (“If, to implement the abstract concept, one must
perform the additional step, or the step is a routine and conventional aspect
of the abstract idea, then the step merely separately restates an element of
the abstract idea, and thus does not further limit the abstract concept to a
practical application.”). The recitation that the card game is a “house-
banked casino card game” amounts to nothing more than a field of use
limitation, as none of the claimed method steps are meaningfully tied to the
casino or to the house bank of the casino. Accordingly, this recitation in the
preamble does not meaningfully limit the claim so as to render it patent-
eligible. See Bilski, 130 S.Ct. at 3231 (stating that “limiting an abstract idea
to one field of use or adding token postsolution components did not make
the concept patentable” and holding claims attempting “to patent the use of
the abstract idea of hedging risk in the energy market and then instruct the
use of well-known random analysis techniques to help establish some of the
inputs into the equations” to be patent-ineligible). The fact that the claimed
method is designed to be played for real money, in real casinos in the
expectation of making real profits does not strike us as a particularly strong
factor weighing against abstractness and in favor of patentability. Indeed,
managing the risk of loss of real money and the potential for making profit
clearly is the incentive for practicing the method held by the Supreme Court
to be patent-ineligible in Bilski, 130 S.Ct. at 3223, 3231.
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The steps of receiving a proposition wager and resolving the
proposition wager simply describe a concept of articulating a condition and
determining whether it has been satisfied. As such, these steps merely
describe an abstract concept. Claim 16 does not set forth any action taken or
to be taken in response to such resolution so as to constitute an application
of that abstract concept.
For the above reasons, Appellant does not apprise us of error in the
Examiner’s determination that claim 16 is not directed to patent-eligible
subject matter under 35 U.S.C. § 101, because it requires no machine
implementation, requires no transformation of a particular article, and is to
an abstract idea. We thus sustain the rejection of claim 16 and of claims 1-
13, 17-22, 24, and 25, which fall with claim 16, under 35 U.S.C. § 101.
Rejections under 35 U.S.C. § 103(a)
Appellant’s independent claim 1 requires, in relevant part, a step of
receiving a Two-Way wager from a player and a step of “resolving the Two-
Way wager based on the better of the poker rank of the player hand and the
poker rank of the dealer hand against a scale.” Independent claim 16
requires, in relevant part, a step of receiving a proposition wager from a
player and a step of “resolving the proposition wager based on the better of
the poker rank of the player hand and the poker rank of the dealer hand
against a scale.”
The Examiner reads the Two-Way wager and the proposition wager
on the “Bonus wager” disclosed in paragraph [0032] of Snow. Ans. 5.
Snow discloses resolving the “Bonus wager” based on the player’s five-card
hand having a rank of at least three-of-a-kind from a best five card hand.
Para. [0032]. Thus, Snow’s “Bonus wager” is resolved based on the poker
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rank of the player hand against a scale, not resolved based on the better of
the poker rank of the player hand and the poker rank of the dealer hand
against a scale as called for in claims 1 and 16.
The Examiner finds that Webb (claim 8) discloses that basing a two-
way wager “not on a pay scale, but rather a poker scale between a player and
dealer are known in the art.” Ans. 6. Thus, the Examiner determines it
would have been obvious to modify Snow to “pit the [Bonus wager] against
the dealer to both generate wager revenue and introduce strategic elements.”
Id. According to the Examiner, such a modification of Snow would satisfy
the claim limitation of resolving the Two-Way wager or proposition wager
“based on the better of the poker rank of the player hand and the poker rank
of the dealer hand against a scale” because “when a poker rank of the
player’s hand is compared with a poker rank of the dealer (as expressly
taught by Webb), it is inherently based on the better of the poker rank of the
player hand and the poker rank of the dealer hand against a scale. . . . When
you compare poker ranks you inherently compare them against a poker scale
(i.e. ranking).” Ans. 15.
Appellant argues that the Examiner misconstrues the claim language
“resolving the [Two-Way or proposition wager] based on the better of the
poker rank of the player hand and the poker rank of the dealer hand against a
scale.” Reply Br. 5. Appellant urges that resolving the wager “based on the
better of the poker rank of the player hand and the poker rank of the dealer
hand” means that the player can receive a payout on the player’s wager if
either the player hand poker rank or the dealer hand poker rank is high, even
if the dealer hand poker rank is higher than that of the player hand. Id.
Appellant’s asserted construction is consistent with the disclosure in the
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Specification describing the resolution of the Two-Way wager. Specifically,
the Specification discloses that “the Two-Way wager is resolved according
to the poker rank of one of the player hand or the dealer hand against a
payout scale. That is, the Two-Way wager is resolved by paying a payout if
the poker rank of either the player hand or the dealer hand exceeds a
predetermined poker rank.” Spec. 7, para. [0024]. “In one operating mode,
the payout for the Two-Way wager is based on the better of the poker rank
of the player hand and the poker rank of the dealer hand. Thus, in the event
of a premium dealer hand, each player may win a large payout on their Two-
Way wager.” Spec. 8, para. [0025].
The Examiner’s proposed modification of Snow to resolve the “Bonus
wager” by pitting the player hand against the dealer hand would not accord
the player the benefit of the rank of the dealer hand and thus does not satisfy
the “resolving the Two-Way wager based on the better of the poker rank of
the player hand and the poker rank of the dealer hand against a scale” step of
claim 1 or the “resolving the proposition wager based on the better of the
poker rank of the player hand and the poker rank of the dealer hand against a
scale” step of claim 16. Further, the Examiner’s application of the
additional teachings of Mitchell, Yurkins, and Sklansky does not make up
for the deficiency noted above with respect to the final resolving step of
claims 1 and 16.
For the above reasons, we do not sustain the rejections of claims 1-13,
16-22, 24, and 25 under 35 U.S.C. § 103(a).
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DECISION
The Examiner’s decision rejecting claims 1-13, 16-22, 24, and 25
under 35 U.S.C. § 101 is affirmed, and the Examiner’s decision rejecting
claims 1-13, 16-22, 24, and 25 under 35 U.S.C. § 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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