DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The information disclosure statement filed 2/19/2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because they are directed to non-statutory subject matter.
The claimed invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea.
A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. §101. The Supreme Court has held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, the application of these concepts may be deserving of patent protection. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94 (2012). In Mayo, the Court stated that “to transform an unpatentable law of nature into a patent eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.’” Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Supreme Court reaffirmed the framework set forth previously in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent-ineligible concept, then 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 1298, 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). The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “‘[s]imply appending conventional steps, specified at a high level of generality,’ was not ‘enough’ [in Mayo] to supply an ‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Examiners must perform a Two-Part Analysis for Judicial Exceptions. In Step 1, it must be determined whether the claimed invention is directed to a process, machine, manufacture or composition of matter. The instant invention encompasses a method, device, and medium, which fall within the four subject matter categories. However, claims that fall within one of the four subject matter categories may nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas. See Diamond v. Chakrabarty, 447 U.S. 309 (1980).
In Step 2A, it must be determined whether the claimed invention is ‘directed to’ a judicially recognized exception. According to the specification, the “disclosure includes a method, a computer device, and a smartphone app for card games including a war component.” Spec. ¶ 7. Representative claim 1 recites the following (with emphasis):
1. A method of playing a card game including a war game component, the method comprising:
dealing a hand of cards to each of one or more players and to a dealer;
calculating a score of each hand of cards dealt to the one or more players and the dealer;
identifying whether or not there is a winner according to the calculated score based on a set of predetermined scoring rules;
dealing at least one war card to the one or more players and the dealer when no single winner is identified when the calculated score is a tie score; and
identifying a winner according to a highest value of the war card of each of the one or more players and the dealer based on one of the predetermined scoring rules.
The underlined portions of claim 1 generally encompass the abstract idea, with substantially similar features found in claims 12 and 20. The dependent claims further define the abstract idea (such as by defining rules based on baccarat or blackjack, accepting wagers, etc.) or recite various implementation steps for carrying out the abstract idea (e.g., dealing physical cards, using a smartphone on a WiFi network, discussed further below).
The claimed abstract idea is similar to abstract ideas identified by the courts, such as:
a method of exchanging financial obligations (e.g., a wagering game, which is effectively a method of exchanging and resolving financial obligations based on probabilities created during the game) as discussed in Alice, Bilski, In re Smith, 815 F.3d 816 (Fed. Cir. 2016), and In re Marco Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. 2018);
a fundamental economic practice (e.g., rules for conducting a game) as discussed in Alice, In re Smith, and In re Marco Guldenaar;
a method of managing a game (e.g., a card-based game) similar to that of managing a game of bingo in Planet Bingo v. VKGS, LLC, 576 F. App'x 1005 (Fed. Cir. 2014) (non-precedential);
a set of game rules similar to increasing or decreasing the risk-to-reward ratio, or more broadly the difficulty, of a multiplayer game based upon previous aggregate results, as discussed in Bot M8 LLC v. Sony Corp. of Am., 4 F.4th 1342 (Fed. Cir. 2021); and/or
a method of organizing human activities (e.g., accepting bets from a human player and allowing the human player to play the game according to rules of the game method) as discussed in Bilski and Alice.
The claimed invention resembles the method of exchanging financial obligations in Alice and Bilski, and especially resembles the comparison to the wagering game of Smith which included a method of exchanging and resolving financial obligations based on probabilities created during the game, because it includes a game that may provide an award to one or more players as a result of the random game outcomes. In Smith, the court found that wagering activities, similar to the game features claimed here, are fundamental economic practices, which are in turn abstract ideas recognized in several court decisions including Alice and Bilski. In re Marco Guldenaar reached similar conclusions to those in Smith. In Planet Bingo, the court found that a method of managing a game of bingo was an abstract idea, which is similar to the game features of the instant claims. The abstract idea is also comparable to the game rules presented on gaming machines in Bot M8 LLC v. Sony Corp. of America, in which a reward probability could be increased or decreased based on aggregating previous game outcomes placed on the gaming machines. The Bot M8 decision also found that such abstract idea is “more broadly the difficulty[] of a multiplayer game.” The instant claims have modifications of reward probability that are comparable to that of Bot M8 because the instant claims allow for a series of games (e.g., baccarat and war) that result in one or more modified awards. Finally, the instant claims manage the financial transactions between humans that take place during wagering games. These features are similar to the risk hedging discussed in Bilski and the shadow accounts of Alice.
Under prong 1, the above analysis demonstrates that the claimed invention encompasses an abstract idea in the form of mental processes and/or certain methods of organizing human activity. Under prong 2, the instant claims do not integrate the abstract idea into a practical application because they merely provide instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform an abstract idea, add only extra solution activity to the abstract idea, and/or generally link the use of the abstract idea to a particular technological environment or field of use. There is no indication that the abstract idea improves the functionality of the computerized components or any other technology or technical field. Such findings are explained in more detail below. Therefore, the claims are directed to the judicially recognized exception of an abstract idea.
Step 2B requires that if the claim encompasses a judicially recognized exception, it must be determined whether the claimed invention recites additional elements that amount to significantly more than the judicial exception.
The additional element(s) or combination of elements in the claim(s) other than the abstract idea per se amount(s) to no more than: a computer device having a memory and processor to carry out the abstract idea, along with a smartphone that communicates on WiFi or cellular networks with a server to carry out the abstract idea, and a physical deck of cards.
The specification admits that the invention may be implemented on a variety of generic and conventional devices, including “computer, mobile phone, cellular phone, a tablet, and/or laptop” or by “a computing device such as, for example, a computer, mobile phone, cellular phone, tablet, and/or laptop.” Spec. ¶ 43. The game may be played with either virtual cards or physical cards. Id. at ¶ 62. As such, these features merely amount to an instruction to apply the abstract idea on generic, functional, and conventional computer components well-known in the art of wager gaming and the additional elements are not actually required to carry out the invention, as admitted by the specification, which also demonstrates they represent extra-solution activity. As noted by the court in Smith, dealing cards from a conventional deck is a purely conventional activity.
The claimed elements taken as a whole perform the same functions when taken individually. Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself. Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. See Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. 208 (2014).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4, 12, 17, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2005/0275167 to Wilson (hereinafter Wilson).
Regarding claims 1, 12, and 20, Wilson teaches a computer device for playing a baccarat war card game, with a method therefor, comprising:
one or more processors (e.g., inherent in video game computer in ¶ 26);
a memory coupled to the processor (e.g., inherent in video game computer in ¶ 26), the memory storing non-transitory executable instructions to cause the processor to perform acts comprising:
dealing a hand of cards to each of one or more players and to a dealer (e.g., dealing hands of cards in ¶ 23 and Fig. 1);
calculating a score of each hand of cards dealt to the one or more players and the dealer (e.g., the player's Ace wins over the Jack, the nine wins over the seven, etc. in ¶ 26);
identifying whether or not there is a winner according to the calculated score based on a set of predetermined scoring rules (e.g., the player's Ace wins over the Jack, the nine wins over the seven, etc. in ¶ 26);
dealing at least one war card to the one or more players and the dealer when no single winner is identified when the calculated score is a tie score (e.g., a tie causes a WAR to be declared in ¶ 28); and
identifying a winner according to a highest value of the war card of each of the one or more players and the dealer based on one of the predetermined scoring rules (e.g., the winner of the War Round is determined by the higher ranking face up card in ¶ 31).
Regarding claims 2 and 17, Wilson teaches wherein if the highest value of the war card is a tie value among more than the one or more players and the dealer, dealing additional war cards among the one or more players and the dealer until a highest value war card is received among the one or more players and the dealer (e.g., In all games of high-low cards wherein one player's card is matched against the other player's card, a tie will often result which causes a WAR to be declared in ¶ 28).
Regarding claim 3, Wilson teaches wherein dealing the hands of cards comprises dealing electronic cards (e.g., dealing in the video game computer in ¶ 26).
Regarding claim 4, Wilson teaches wherein dealing the hands of cards comprises dealing physical playing cards (e.g., it is understood that the game can be played with an actual dealer physically dealing the cards in a manner as discussed above with respect to the video gaming machine without departing from the concept of the invention in ¶ 38).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 5-11, 13-16, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Wilson in view of US 2014/0018138 to Sloan (hereinafter Sloan).
Regarding claims 5, 10, 15, and 16, Wilson teaches wherein the card game substantially as described above, but lacks in explicitly teaching that the predetermined scoring rules are based on baccarat or blackjack. In a related disclosure, Sloan teaches hybrid card games involving blackjack or poker wagering and deal rules as well as baccarat ranking rules (abstract). More particularly, Sloan recognizes that it is possible within these games to have an equal rank between two hands (e.g., dealer and player hands), and that such equal rank would result in a tie (see at least ¶¶ 34-44). It would have been obvious to one of ordinary skill in the art before the effective date to modify the system of Wilson to include the features of a blackjack or baccarat card game in order to beneficially allow players to play different card game variants.
Regarding claims 6, 8, and 11, Sloan teaches prompting each of the one or more players for a baccarat wager (e.g., placed a wager in their primary betting area in ¶ 22).
Regarding claims 7, 8, and 11, Wilson teaches further comprising prompting each of the one or more players for a war card wager (e.g., a wager placed in ¶ 24).
Regarding claims 9, 18, and 19, Sloan teaches wherein the winner is identified based on the calculated score being closest to 9 in which a tens place digit is dropped off the calculated score when the score exceeds 9 (e.g., the total point value of hands in baccarat is determined by summing modulo ten the point value of the constituent cards, as discussed in ¶¶ 2 and 21).
Regarding claims 13 and 14, Wilson teaches the invention substantially as described above, but lacks in explicitly teaching a mobile communication terminal, or smartphone, executing the game and communicating with a server via WiFi and/or cellular communication. Sloan teaches that the gaming method may be implemented in computer software and performed electronically using virtual cards on networked or standalone electronic devices selected from computers, electronic game tables, gaming machines, mobile phones, and smartphones, either electronically or partially manually (see at least ¶ 17). The devices may communicate with a server via a LAN, WAN, and/or the Internet (see at least ¶ 18), which necessarily encompasses WiFi and/or cellular networks in the context of mobile phones and smartphones. It would have been obvious to one of ordinary skill in the art before the effective date to modify the system of Wilson to include the smartphone, WiFi and/or cellular communication and server taught by Sloan in order to allow players to use their own devices to remotely play a game.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and is listed on the attached Notice of References Cited.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM H MCCULLOCH whose telephone number is (571)272-2818. The examiner can normally be reached M-F 9:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Lewis can be reached at 571-272-7673. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM H MCCULLOCH JR/Primary Examiner, Art Unit 3715