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« FDA Releases Guidance on Biosimilar Labeling | Main | Webinar on Preparing for Patent Litigation »

April 07, 2016


The "Guidance" document may not be binding on the court, but it sure is binding on applicants trying to get their applications allowed. It's deplorable that these judges punted on this one.

An Article III court does not have legal jurisdiction to give "advisory opinions," and apparently the Fed. Cir. concluded that is what was being asked for here.
This is an appeal of a PTAB decision, and PTAB decision are not normally based on internal PTO MPEP or other examiner guidelines for examination.
[A suit under the APA by a company harmed by lots of costly applications stuck in improper 101 examination rejections might have jurisdiction?]

Why is Claim 1, provided below, from the patent application at issue "abstract"?

1. A method of conducting a wagering game comprising:

[a]) a dealer providing at least one deck of . . . physical playing cards and shuffling the physical playing cards to form a random set of physical playing cards;

[b]) the dealer accepting at least one first wager from each participating player on a player game hand against a banker’s/dealer’s hand;

[c]) the dealer dealing only two cards from the random set of physical playing cards to each designated player and two cards to the banker/dealer such that the designated player and the banker/dealer receive the same number of exactly two random physical playing cards;

[d]) the dealer examining respective hands to determine in any hand has a Natural 0 count from totaling count from cards, defined as the first two random physical playing cards in a hand being a pair of 5’s, 10’s, jacks, queens or kings;

[e]) the dealer resolving any player versus dealer wagers between each individual player hand that has a Natural 0 count and between the dealer hand and all player hands where a Natural 0 is present in the dealer hand, while the dealer exposes only a single card to the players;

[f]) as between each player and the dealer where neither hand has a Natural 0, the dealer allowing each player to elect to take a maximum of one additional card or standing pat on the initial two card player hand, while still having seen only one dealer card;

[g]) the dealer/banker remaining pat within a first certain predetermined total counts and being required to take a single hit within a second predetermined total counts, where the first total counts range does not overlap the second total counts range;

[h]) after all possible additional random physical playing cards have been dealt, the dealer comparing a value of each designated player’s hand to a final value of the banker’s/dealer’s hand wherein said value of the designated player’s hand and the banker’s/dealer’s hand is in a range of zero to nine points based on a pre-established scoring system wherein aces count as one point, tens and face cards count as zero points and all other cards count as their face value and wherein a two-digit hand total is deemed to have a value corresponding to the one’s digit of the two-digit total;

[i]) the dealer resolving the wagers based on whether the designated player’s hand or the banker’s/dealer’s hand is nearest to a value of 0.

Is (one) way forward to take Paul F. Morgan's post and couple it with Atari Man's post?

To wit: force the Office to NOT use it's "guidance" by replying that the Office guidance is not binding and that the Office must make its rejection based on binding law instead?

What if the Office were faced with EVERY applicant replying the same way to EVERY instance of an examine using non-binding guidance?

Would that not force the hand of the Office to ABANDON the guidance?

Does that not then draw a critical question RIGHT NOW: of what value is guidance if that guidance is not - and cannot be - binding?

Or put a different way, is the executive branch agency acting in an arbitrary and capricious manner by even having "guidance" that is not - and apparently cannot be - binding? Is the Office even allowed under law to present something that makes an applicant act in a certain way when that certain way is not controlling law, and the item controlled by the "guidance" is dealing NOT with mere protocols within the Office , but instead is dealing with substantive matters?

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