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 .
Double Patenting
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on non-statutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,211,339. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations claimed within the current claims are already covered by the patented claims.
Specifically, both the claims of parent U.S. Patent No. 12,211,339 and the instant claims are directed to the identical underlying electronic card gaming architecture. Both claim sets recite enrolling a plurality of playing cards with a gaming table by associating a unique identifier of each playing card with a gaming table object identifier and assigning the playing cards to unique identifiers of corresponding players, wherein the playing cards comprise opposing first and second planar surfaces with the player-facing surface comprising a digital display. Furthermore, both claim sets recite unenrolling playing cards from the gaming table by disassociating the card unique identifier from the gaming table object identifier. The primary difference between representative independent claims 1, 9, and 17 of the present application and independent claims 1 and 9 of U.S. Patent No. 12,211,339 is that the instant independent claims omit the specific enrollment software verification and session key negotiation steps, as well as the end-of-game card parameter mismatch validation step, and instead recite receiving an unenroll playing card signal, wirelessly reading a unique identifier of a selected playing cards, and subsequently unenrolling the selected playing card from the gaming table and the corresponding player. Parent U.S. Patent No. 12,211,339 already specifically claims unenrolling cards by disassociating card unique identifiers from the table identifier (e.g., claims 4 and 12). Modifying the unenrollment routine of the parent patent to trigger selectively on a per-card basis wirelessly in response to an unenroll signal represents a routine operational design choice well within the knowledge of one of ordinary skill in the art at the time of filing. Furthermore, the lack of patentable distinction is evidenced by the dependent claims of the present application, which explicitly re-introduce the software verification, session key negotiation, end-of-game mismatch validation, fold handling, ambient light face-down detection, and missing card tracking, thereby claiming subject matter that directly corresponds with the claims of U.S. Patent No. 12,211,339.
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 the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The claims are directed to at least one of abstract idea groupings, according to the 2019 Revised Patent Subject Matter Guidelines (Mathematical Concepts, Mental Processes and/or Certain Methods of Organizing Human Activity). Further, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception as discussed below.
Step 1 of the 2019 Revised Patent Subject Matter Eligibility Guidance
More specifically, regarding Step 1 of the 2019 Revised Patent Subject Matter Eligibility Guidance, the claims are directed to a system and/or process, which is are statutory categories of invention.
Step 2A-1 of the 2019 Revised Patent Subject Matter Eligibility Guidance
Next, the claims are analyzed to determine whether it is directed to a judicial exception.
Independent claim 1 recites the following, with the abstract ideas highlighted in bold, including an indication as to the abstract idea grouping(s) to which the indicated limitations belong to, according to the 2019 Revised Patent Subject Matter Guidelines. Independent claims 9 and 17, having substantially similar features, were also analyzed and to which the following conclusion is also applicable:
1. A method of playing a card game, comprising:
enrolling, by a gaming system, a plurality of playing cards with a gaming table (Certain Methods of Organizing Human Activity), the enrolling comprising associating a unique identifier of each of the plurality of playing cards with a gaming table object identifier associated with the gaming table (Mental Processes and/or Certain Methods of Organizing Human Activity);
thereafter assigning, by the gaming system, each playing card of the plurality of playing cards to a unique identifier of a corresponding player of a plurality of players in a card game, each of the assigned playing cards comprising opposing first and second planar playing card surfaces, wherein, when each of the assigned playing cards is being viewed by the corresponding player, the first planar playing card surface faces other players and the second planar playing card surface faces the corresponding player (Mental Processes and/or Certain Methods of Organizing Human Activity), the second planar playing card surface comprising a digital display;
receiving an unenroll playing card signal (Certain Methods of Organizing Human Activity);
wirelessly reading a unique identifier of a selected playing card; and
subsequently unenrolling, by the gaming system, the selected playing card from the gaming table (Certain Methods of Organizing Human Activity), the subsequently unenrolling comprising disassociating the unique identifier of the selected playing card with the gaming table object identifier associated with the gaming table and the unique identifier of the corresponding player (Mental Processes and/or Certain Methods of Organizing Human Activity).
The limitations in claim 1 (as well as claim(s) 9 and 17) recite an abstract idea included in the groupings of Mental Processes and/or Certain Methods of Organizing Human Activity, connected to technology only through application thereof using generic computing elements (e.g., a processor, a communication interface, a computer readable medium, a digital display, etc.) and/or insignificant extra-solution activity. According to the 2019 Revised Patent Subject Matter Guidelines:
Mental Processes include concepts performed in the human mind (including an observation, evaluation, judgement, opinion); and
Certain Methods of Organizing Human Activity include:
1. Fundamental Economic Principles or Practices (including hedging (i.e., wagering), insurance, mitigating risk);
2. Commercial or Legal Interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations);
3. Managing Personal Behavior or Relationships or Interactions Between People (e.g. social activities, teaching, and following rules or instructions). The interaction encompasses both activity of a single person (for example a person following a set of instructions) and activity that involves multiple people (such as a commercial or legal interaction). Thus, some interactions between a person and a computer (for example a method of anonymous loan shopping that a person conducts using a mobile phone) may fall within this grouping.
Specifically, the instant claims include functions/limitations, as highlighted in the independent claim above, that constitute at least:
A. Following rules and/or instructions, such as including the functions related to the playing of a game, which is an abstract idea included in the grouping of Managing Personal Behavior or Relationships or Interactions Between People. These sets of rules are interpreted as at least certain methods of organized human activity insomuch as the claim limitations are directed to performing or following the set of rules or instructions concerning a game (e.g., game administration rules governing active card eligibility, dealing cards to participants, managing in-game card states, and clearing cards from active play) while only generically connected to interaction with a computer utilizing non-special purpose generic computing elements (e.g., a gaming system, a processor, a communication interface, and generic displays) and/or insignificant extra-solution activity, as set forth in the claims.
B. Concepts performed in the human mind (e.g., “associating a unique identifier of each of the plurality of playing cards with a gaming table object identifier associated with the gaming table”, “assigning, by the gaming system, each playing card of the plurality of playing cards to a unique identifier of a corresponding player of a plurality of players in a card game”, “disassociating the unique identifier of the selected playing card with the gaming table object identifier associated with the gaming table and the unique identifier of the corresponding player” ), which is an abstract idea included in the grouping of Mental Processes. These limitations are interpreted as at least Mental Processes insomuch as the claim limitations are directed to performing the concepts in the human mind, such as observing cards, mentally tracking their association with a table or player, and mentally updating their associations, which are operations which routinely and practically can be performed in the human mind or with pen and paper (for example by a dealer tracking gameplay) while only generically connected to interaction with a computer utilizing non-special purpose generic computing elements and/or insignificant extra-solution activity as set forth in the claims.
Regarding dependent claims 2-8, 10-16 and 18-20:
Each claim is dependent either directly or indirectly from the independent claim identified above and includes all the limitations of said independent claim. Therefore, each dependent claim recites the same abstract idea as identified above. Each of the dependent claim further describes additional aspects of the abstract idea, i.e., additional aspects to the Mental Processes and/or Certain Methods of Organizing Human Activity. For example, some dependent claims merely provide additional rules of playing a game (e.g., handling folds, discards, and deck arrays), clerical record management (e.g., tracking missing cards) to be performed, and/or additional insignificant extra-solution activity, without anything more significant to establish eligibility under 35 U.S.C. 101.
Step 2A-2 of the 2019 Revised Patent Subject Matter Eligibility Guidance
The second prong of step 2a is the consideration if the claim limitations are directed to a practical application.
Limitations that are indicative of integration into a practical application:
-Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
-Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
-Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
-Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
-Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e) and Vanda Memo
Limitations that are not indicative of integration into a practical application:
-Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f)
-Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)
-Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
Claims 1-20 clearly do not improve the functioning of a computer, as they only incorporate generic computing elements, do not effect a particular treatment, and do not transform or reduce a particular article to a different state or thing. Similarly, there is no improvement to a technical field. In addition the claims do not apply the judicial exception with, or by use of a particular machine. The claims do not apply or use the judicial exception in a meaningful way. The claimed invention does not suggest improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05 (a)).
This judicial exception is not integrated into a practical application because the claimed invention merely applies the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform the abstract idea (MPEP 2106.05 (f)) and/or generally links the use of the judicial exception to a particular technology or field of use (MPEP 2106.05 (h)). The claimed computer components are recited at a level of generality and are merely invoked as tool to perform the abstract idea. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea.
For the reasons as discussed above, the claim limitations are not integrated to a practical application.
Step 2b of the 2019 Revised Patent Subject Matter Eligibility Guidance
Next, the claims as a whole are analyzed to determine whether any element, or combination of elements, is sufficient to ensure that the claim amounts to significantly more than the exception.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because no element or combination of elements is sufficient to ensure any claim of the present application as a whole amounts to significantly more than one or more judicial exceptions, as described above. For example, the recitations of utilization of a processor, a communication interface, a computer readable medium, a digital display, etc. used to apply the abstract idea merely implements the abstract idea at a low level of generality and fail to impose meaningful limitations to impart patent-eligibility. These elements and the mere processing of data using these elements do not set forth significantly more than the abstract idea itself applied on general purpose computing devices. The recited generic elements are a mere means to implement the abstract idea. Thus, they cannot provide the “inventive concept” necessary for patent-eligibility. “[I]f a patent’s recitation of a computer amounts to a mere instruction to ‘implement]’ an abstract idea ‘on ... a computer,’... that addition cannot impart patent eligibility.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132 S. Ct. at 1301). As such, the significantly more required to overcome the 35 U.S.C. 101 hurdle and transform the claimed subject matter into a patent-eligible abstract idea is lacking. Accordingly, the claims are not patent-eligible.
In addition to the abstract ideas indicated above, the claims include additional elements, such as:
“wirelessly reading a unique identifier of a selected playing card”.
As claimed, this additional element is viewed as mere data gathering, which is a form of insignificant extra-solution activity and thus does not integrate the judicial exception into a practical application (See MPEP 2106.05(g)).
Further, the claims would require structure that is beyond generic, such as structure that can be interpreted analogous to a general purpose structure and general purpose computing elements in that they represent well-understood, routine, conventional elements that do not add significantly more to the claims. See Alice Corp. v. CLS Bank International, 134 S. Ct. at 2358-59. The elements of a processor, a communication interface, a computer readable medium, and a digital display are well known conventional devices used to electronically implement a game as evidence by U.S. 2004/0043813, which discloses that a conventional gaming system comprises elements such as a processor, a communication interface, a computer readable medium, and a digital display to control the overall operation of the gaming system (¶41, ¶62-63, ¶70). See Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018).
The dependent claims do not add “significantly more” for at least the same reasons as directed to their respective independent claims, at least based on the position, as discussed above, that each of the dependent claims merely provide additional limitations to further expand the abstract idea of the independent claims, without adding anything which would establish eligibility under 35 U.S.C. 101.
Consequently, consideration of each and every element of each and every claim, both individually and as an ordered combination, leads to the conclusion that the claims are not patent-eligible under 35 USC §101.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The Applicant is directed to the attached "Notice of References Cited" for additional relevant prior art. The Examiner respectfully requests the Applicant to fully review each reference as potentially teaching all or part of the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON PINHEIRO whose telephone number is (571)270-1350. The examiner can normally be reached M-F 8:00A-4:30P ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dmitry Suhol can be reached on (571) 272-4430. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jason Pinheiro/Examiner, Art Unit 3715
/DMITRY SUHOL/Supervisory Patent Examiner, Art Unit 3715
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