The Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB) determination of unpatentability for claims covering new rules for a card game. The panel found the claims patent-ineligible under the Mayo two-step analysis for 35 U.S.C. § 101. First, they were directed to an abstract idea; second, they lacked an inventive concept sufficient to bridge the gap between abstract idea and invention.
In applying Mayo, the panel decided to stick with the Board’s reasoning that the rules of a wagering game are like the ineligible methods from Alice (reducing risk in escrow settlement) and Bilski (reducing risk in price fluctuations) — wagering is “effectively, a method of exchanging and resolving financial obligations based on probabilities created during the distribution of the [playing] cards.” Turning to the next step, the panel reasoned that the additional elements in the claims (shuffling and dealing) were like the additional elements in Alice of using a computer to implement an abstract idea. The panel found that these additional elements were not the ace in the hole that the applicants needed to trump the second step of Mayo.
While the panel kept these particular claims in the discard pile, it threw some dicta into the pot, stating that claims to “a game using a new or original deck of cards” might not be foreclosed from patenting under § 101.
In re Smith, No. 2015-1664 (Fed. Cir. Mar. 10, 2016).
[Stoll (opinion), Moore, Hughes]