Mara Enterprises Limited

Patent Trials and Appeals Board

Jan 5, 2022

2021003130 (P.T.A.B. Jan. 5, 2022)

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. 15/085,619 03/30/2016 Malcolm Colin Payne LGME-0003-02-US 3302 27268 7590 01/05/2022 FAEGRE DRINKER BIDDLE & REATH LLP 300 NORTH MERIDIAN STREET SUITE 2500 INDIANAPOLIS, IN 46204 EXAMINER PENG, RAYSHUN K. ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 01/05/2022 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): inteas@faegredrinker.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MALCOLM COLIN PAYNE and DEAN WILSON Appeal 2021-003130 Application 15/085,619 Technology Center 3700 Before BRETT C. MARTIN, ANNETTE R. REIMERS, and JEREMY M. PLENZLER, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-7 and 9-20. Claim 8 was canceled during prosecution. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Mara Enterprises Limited. Appeal Br. 3. Appeal 2021-003130 Application 15/085,619 2 CLAIMED SUBJECT MATTER The claims are “directed to gaming tables used in wagering games that provide the opportunity for a player to wager on the characteristics of another players hand that are independent of the player’s hand.” Spec. ¶ 2. Claims 1 and 15, reproduced below, are illustrative of the claimed subject matter: 1. A gaming surface including: multiple player stations including a first station and a second station, the second player station being displaced from the first player station in a first direction and a first distance; the first player station including: a first area where bets are placed to wager on an outcome of a hand dealt to the first player station, and a second area where bets are placed to wager on an outcome of a hand dealt to the second player station, wherein payments to the first player for the bets placed in the first area are paid to the first player station in response to the outcome of the hand dealt to the first player station and wherein payments to the first player for the bets placed in the second area are paid to the first player station in response to the outcome of the hand dealt to the second player station; the second area being offset from the first area in a direction similar to the first direction and being offset from the first area by a distance that is proportional to the first distance. 15. A method of facilitating a wagering game using a table layout having a gaming interface including a first player station and a second player station, the second player station being displaced from the first player station in a first direction, the method comprising: receiving a placement of a first wager at a first area of the first player station, the first wager placed on the table layout by a first player in the first player station, the first area dedicated to receiving the first wager by the first player on the outcome of a hand dealt to the first player station; and Appeal 2021-003130 Application 15/085,619 3 receiving a placement of a second wager at a second area of the first player station, the second wager placed on the table layout by the first player in the first player station, the second area being offset from the first area in a direction similar to the first direction and the second area being dedicated to receiving a wager by the first player on the outcome of a hand dealt to the second player station. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Breeding US 5,248,142 Sept. 28, 1993 Vancura US 6,517,073 B1 Feb. 11, 2003 REJECTIONS Claims 15-19 stand rejected under 35 U.S.C. § 101 as not being directed to patentable subject matter. Final Act. 2. Claims 1-7, 9-14, and 20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Breeding. Final Act. 4. Claims 15-19 stand rejected under 35 U.S.C. § 103 as being unpatentable over Breeding and Vancura. Final Act. 15. OPINION Patent Eligibility In issues involving subject matter eligibility, our inquiry focuses on whether the claims satisfy the two-step test set forth by the Supreme Court in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014). The Supreme Court instructs us to “first determine whether the claims at issue are directed to a patent-ineligible concept,” id. at 216-18, and, in this case, the inquiry centers on whether the claims are directed to an abstract idea. If this initial Appeal 2021-003130 Application 15/085,619 4 condition is met, we then move to the second step, in which we “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. at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). The Supreme Court describes the second step 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. (quoting Mayo, 566 U.S. at 72-73). The USPTO published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance (“Guidance”), 84 Fed. Reg. 50 (Jan. 7, 2019).2 Under that guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, and mental processes) (“Step 2A, Prong One”); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)-(c), (e)-(h) (9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”). 2 In response to received public comments, the Office issued further guidance on October 17, 2019, clarifying the 2019 Revised Guidance. USPTO, October 2019 Update: Subject Matter Eligibility, https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_ update.pdf. Appeal 2021-003130 Application 15/085,619 5 Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, under “Step 2B,” to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See generally Guidance. Our reviewing court has warned that “the Office Guidance is not, itself, the law of patent eligibility” and “does not carry the force of law.” In re Rudy, 956 F.3d 1379, 1382 (Fed. Cir. 2020); see also cxLoyalty, Inc. v. Maritz Holdings Inc., No. 2021-1307, 2021 WL 416719, *6 n.1 (Fed. Cir. Feb. 8, 2021); Cleveland Clinic Found. v. True Health Diagnostics LLC, 760 F. App’x 1013, 1020 (Fed. Cir. 2019). Rather, “it is our [reviewing court’s] caselaw, and the Supreme Court precedent it is based upon, that must control.” Rudy, 956 F.3d at 1383 (citation omitted). Thus, although our analysis may be framed in terms of the 2019 Revised Guidance, our decision is based upon governing precedent of the United States Supreme Court and our reviewing court’s interpretation and application thereof. ANALYSIS Claim Grouping Appellant argues the claims as a group for the purpose of the rejection under a judicial exception to § 101. Appeal Br. 6-10. As to this rejection, we select claim 15 as representative of the group, and the remaining claims stand or fall with claim 15. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2021-003130 Application 15/085,619 6 Examiner’s Findings and Conclusion In the first step of the Alice inquiry, the Examiner rejects the claims, stating that the claims are drawn to the “abstract idea of methods of organizing human activity.” Final Act. 3. At Alice step 2, the Examiner additionally finds that the claims do not add a meaningful limitation to the abstract idea so as to amount to significantly more than the judicial exception. Id. Analysis According to the Guidance Step One: Does Claim 15 Fall within a Statutory Category of § 101? We first examine whether the claim recites one of the enumerated statutory classes of subject matter, i.e., process, machine, manufacture, or composition of matter, eligible for patenting under 35 U.S.C. § 101. Claim 15 is directed to a method, which is one of the statutory classes (i.e., a process) under 35 U.S.C. § 101. Step 2A, Prong One: Does Claim 15 Recite a Judicial Exception? We next look to whether the claim recites any judicial exceptions, including certain groupings of abstract ideas, i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, and mental processes. In this instance, claim 15 recites steps that amount to methods of organizing human activity. Specifically, the claim recites: receiving a placement of a first wager at a first area of the first player station, and receiving a placement of a second wager at a second area of the first player station. These steps amount to nothing more than wagering rules for a card game. We therefore determine that claim 15 recites the abstract idea of Appeal 2021-003130 Application 15/085,619 7 organizing human activity, which is a judicial exception to patent-eligible subject matter. Step 2A, Prong Two: Does Claim 15 Recite Additional Elements that Integrate the Judicial Exception into a Practical Application? Following our Office guidance, having found that claim 15 recites a judicial exception, we next determine whether the claim recites “additional elements that integrate the exception into a practical application” (see MPEP §§ 2106.05(a)-(c), (e)-(h)). See Guidance, 84 Fed. Reg. at 54. The recited steps do not integrate the exception into a practical application because, again, they are nothing more than general wagering rules for a card game. Thus, claim 15 does not apply, rely on, or use the claimed steps in a manner that imposes a meaningful limit on those steps. Rather, the claim is simply a drafting effort designed to monopolize the rules of playing a game. In short, the additional elements discussed above: (1) do not result in an improvement to the functioning of a computer or other technology; (2) are not any particular machine; (3) do not effect a transformation of a particular article to a different state; and (4) are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See MPEP §§ 2106.05(a)-(c), (e)- (h). Consequently, the claimed invention does not integrate the abstract idea into a “practical application.” For these reasons, the additional elements of claim 15 do not integrate the judicial exception into a practical application. Thus, claim 1 is directed to an abstract idea, which is a judicial exception to patent-eligible subject matter under 35 U.S.C. § 101. Appeal 2021-003130 Application 15/085,619 8 Step 2B: Does Claim 15 Recite an Inventive Concept? We next consider whether claim 15 recites any additional elements, individually or as an ordered combination, that transform the abstract idea into a patent-eligible application, e.g., provide an inventive concept. Alice, 573 U.S. at 217-18. The only additional element is a vague description of a table layout, i.e. “a first player station, a first area dedicated to receiving the first wager, a second player station, a second area dedicated to receiving the second wager.” Final Act. 3. These additional elements do not provide, either individually or as a combination, improvements to another technology or technical field or the functioning of a computer itself. According to Office guidance, under Step 2B, “examiners should . . . evaluate the additional elements individually and in combination . . . to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself).” See Guidance, 84 Fed. Reg. at 56 (emphasis added). Thus, the second step of the inquiry (Step 2B) looks at the additional elements in combination. See BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”). As noted above, the table layout and its individual elements are described as conventional tools. Apart from being used to perform the abstract idea itself, the table layout simply describes locations for wagers. In our view, claim 15 fails to add a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field, but instead “simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of Appeal 2021-003130 Application 15/085,619 9 generality, to the judicial exception.” See Guidance, 84 Fed. Reg. at 56. That is, claim 15 is not directed to a specific application designed to achieve an improved technological result, as opposed to being directed to merely ordinary functionality of the above-recited additional elements to apply an abstract idea. For the reasons discussed above, we find no additional element, alone or in combination, recited in claim 15 that contains any “inventive concept” or adds anything “significantly more” to transform the abstract concept into a patent-eligible application. See Alice, 573 U.S. at 221. Appellant’s Contentions Appellant first contends that “the Examiner fails to consider the specific language of the claims and, in particular” certain features of claim 15 such as the player stations and wagering areas. Appeal Br. 6-7. Appellant further asserts that the claimed “features relate to a specific gaming interface.” Appeal Br. 7. We agree with the Examiner, however, that “there is no specific gaming interface as the gaming interface is merely a table layout…[that] provides a visual indication for the abstract method.” Ans. 3. The layout described in claim 15 simply describes some general areas for wager placement. We do not even agree that the layout itself has to be physically present on the table with any particular markings as one could meet the claim limitations simply by mentally delineating areas in front of each player corresponding to the claimed game rules. As long as a player generally places chips in “areas” that conform to the claimed instructions, one could do so with a completely blank table and still meet the claimed method. As such, we do not find this argument persuasive. Appeal 2021-003130 Application 15/085,619 10 Likewise, we also disagree that the claimed table layout combined with method provides any practical application of the method. The gaming rules here, are not so tied to any particular layout that the layout then provides any particular benefit that can be achieved without the table. As noted above, the “layout” described in claim 15 is merely a general description of areas that could be met by the player placing bets in particular areas on a blank table that meet the directions laid out in the claim or, as the Examiner states, some other conventional table, such as that in Breeding, could be adapted for use according to the method. Accordingly, we do not agree that claim 15 provides any benefit or practical application over conventional gaming table embodiments. Appellant also argues that “claim 15 recites features that differ from the routine and conventional,” then points to the same features argued above. Appeal Br. 9. As the Examiner states, “the act of wagering on the outcome of [a] hand dealt to another player is not unconventional, as evidenced by the prior art Vancura, which discloses the same function and the only difference is the location of the received wager.” Ans. 4. Accordingly, the general concept of the game itself is not novel and the placement of the wagers could be, as asserted by the Examiner, adapted to existing table layouts such as that shown in Breeding. Accordingly, we disagree that claim 15 is anything but routine and conventional. For all of the above reasons, we conclude that claim 15, and thus its dependent claims, are directed to patent ineligible subject matter. Obviousness Appellant does not present separate arguments for independent claims 9, 15, and 20 separate from those provided for claim 1. Accordingly, Appellant’s claims stand or fall with our disposition of claim 1. Appellant Appeal 2021-003130 Application 15/085,619 11 argues that “[w]hat the examiner indicates as first and second areas in Breeding are not offset in a similar direction and are not being offset from the first area by a distance that is proportional to the first distance.” Appeal Br. 11. This essentially amounts to restating the claim language and asserting the Breeding fails to meet that claim language without any further explanation as to why Breeding does not meet that language. Appellant further states only that “[t]he suggestion that a second area is positioned to the right of a first area and a second player station is positioned to a right of the first statement does not meet the structural limitations of claim 1.” Id. We note that the claim language only states that the second area is offset in a similar direction from the first location. In Breeding, as the Examiner states, “the second area is in the direction of the second wagering area and is offset, thereby meeting the requirements of the claim.” Ans. 5. Appellant, in the Reply, attempts to further argue that the direction of the player stations with respect to one another versus the betting areas are “nearly orthogonal to one another,” thus not meeting the claim language. As noted above, however, the claims only require a similar direction and one of ordinary skill in the art would recognize that the betting areas in Breeding are laid out to represent the various player stations such that the betting area for a second player is generally to the right of the first player in the same way that the second player’s station is generally to the right of the first player’s station. Without some more specific language in the claims as to the configuration of the betting areas and the player stations, we do not agree that the claims are distinguishable from what is disclosed in Breeding. Lastly, Appellant argues that the payment limitation is not found in Breeding and that “the function of the areas of the gaming surface are inherently related to the structure of the surface and the configuration and Appeal 2021-003130 Application 15/085,619 12 layout of a gaming surface is dictated by the function of the areas and stations on the surface.” Appeal Br. 11. Even if this were true, the Examiner has already found that Breeding meets the claimed structural configuration of the table layout and so the limitations could be met by adapting the game rules to the layout of Breeding. We agree with the Examiner, however, that the payment limitation is functional “by telling a user how the payout should be done and this function can be applied regardless of location of an actual wagering area.” Ans. 5. The Examiner is also correct that “the limitation is not bound by the claimed structure, but rather only by the function performed and therefore renders the limitation functional in nature and does not hold patentable weight in the apparatus claim.” Accordingly, we are not persuaded of error in the Examiner’s rejection over Breeding. CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 15-19 101 Eligibility 15-19 1-7, 9-14, 20 103 Breeding 1-7, 9-14, 20 15-19 103 Breeding, Vancura 15-19 Overall Outcome 1-7, 9-20 Appeal 2021-003130 Application 15/085,619 13 TIME PERIOD FOR RESPONSE 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