Ex parte Milder (PTAB 2018)

PTAB Affirms Patent Eligibility of Claims for Playing Dice Game

By James Korenchan --

In a decision issued last month, the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office reversed the final rejection of all pending claims in U.S. Application No. 14/207,507.  Claims 2-7 were rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject matter and claims 1-22 under 35 U.S.C. § 103.  This post focuses on the § 101 decision.

The claims at issue are generally directed to a dice game, which the application refers to as "Rainbow Dice."  In particular, the game utilizes even number sided polyhedrons as dice, such as two-sided, four-sided, or twenty-sided die, where each side is of a different color.  Bets are then placed on the various color-combinations that are possible outcomes from rolling a set of one or more of such dice.  The game is played on a table similar to, but still different from, a Craps table.  The table has two sides, each corresponding to a different betting category: single roll and multiple roll.  Various bets can then be placed based on the predicted colors and/or values of the rolled dice.  The patent application touts the game as easy to learn, quick to play and administer, and capable of providing sufficient returns for players, all while retaining a desirable house advantage.

Representative claim 2 recites:

2.  A method of playing a dice game comprising:
    presenting a gaming table comprising a first side and a second side, said first side of said gaming table comprises:
        a first section containing a plurality of color combinations,
        a second section containing a plurality of color combinations wherein each combination contains one color and one blank,
        a third section containing two blanks for colors that are the same,
        a fourth section containing a plurality of color combinations that are less than the number of color combinations in said first section;
    said second side of said gaming table comprises:
        a first section containing the same color combinations as in said first side's fourth section;
        a second section containing a plurality of color combinations each of which comprises a combination with identical colors;
        a third section containing a plurality of color combinations other than those in said second side's first section;
    receiving a plurality of wagers on said first side or said second side of said gaming table;
    presenting a set of regular, non-standard, polyhedron dice comprising a plurality of identical die, each said die having an even number of faces and each said die having different color on each of its said faces;
    wherein said first side and said second side contain pre-determined color combinations associated with rolling said pre-determined color combinations using said set of dice and wherein said pre-determined color combinations are assigned odds for wagering on the outcome of a roll of said set of dice;
    rolling said set of dice to expose a top face of each said die;
    identifying colors exposed on the top face of each said die after said rolling of said set of dice; and
    resolving wagers placed in sections of said gaming table solely based on combinations of said colors exposed on said top surface of each said die.

Figure 4 of the patent application is as follows and is a helpful representation of the recited gaming table:

In rejecting claims 2-7 under § 101, the Examiner indicated that the claims are directed to the abstract idea of playing a game and contain no additional elements that elevate the claims to a level of patent eligibility.  The Board's opinion, which was quite short, did not address the Examiner's conclusion on step one of the Alice test and instead focused on step two.

In the briefing, the Appellant primarily argued that the claims set forth an inventive concept because they involve using a non-standard set of die having colored markings.  The Appellant also pointed to the Federal Circuit's decision in 2016's In re Smith, in which the Court expressed in dicta the notion that claims directed to conducting a card game using a non-standard deck of cards could potentially meet the requirements under § 101.  (In that case, the Court found that claims directed to rules of wagering on a card game were patent ineligible, likening those claims to the exchange of financial obligations found ineligible in Alice and Bilski v. Kappos.)

The Board agreed with the Appellant, echoing the non-standard aspect of the claimed dice game and concluding that the claims recite an inventive concept:

Craps and other well-known dice games are typically played with six-sided dice where each side is marked with a numbered indicia, from one to six, usually in the form of a number of dots.  Unless and until we receive additional and further guidance from the Federal Circuit on Section 101 as it applies to game method claims, Appellant's non-standard use of color and geometric forms in lieu of conventional number/dot indicia is sufficient to set forth an inventive concept under step two of the Alice analysis.  Given the diversity of subject matter that arises in Section 101 cases, particularly gaming cases, and pending further guidance from the Federal Circuit, our holding here should be limited to the specific facts of this case.

The Board's comments on awaiting further guidance from the Federal Circuit are amusing because this decision happened to be issued on the same day as the Federal Circuit's In re Marco Guldenaar Holding B.V. decision, in which the Federal Circuit struck down dice game claims under § 101.  In that case, the Federal Circuit relied heavily on In re Smith as well, holding that the claims were directed to the abstract idea of rules for playing a dice game and had no limitations sufficient for transforming the abstract idea into patent-eligible subject matter.  In particular, the Court stated that "[t]he claims here recite the steps of placing a wager, rolling the dice, and paying a payout amount if at least one wagered outcome occurs—none of which Appellant on appeal disputes is conventional, either alone or in combination," and thus, under step two of Alice, "the claimed activities here are purely conventional and are insufficient to recite an inventive concept."  Notably, the Court also applied the printed matter doctrine and observed that the printed indicia on each die were not functionally related to the substrate of the die.

However, even if this Board had considered the Federal Circuit's reasoning in that case, it might not have swayed the Board in the other direction.  In contrast to the Court's application of the printed matter doctrine, the Board observed in this decision (albeit in its reversal of the § 103 rejections) that "there is a functional relationship between the colored indicia, the respective faces of the dice, and the outcome of playing the game."  The claims here are also narrower than those in Federal Circuit case.  In addition to reciting non-standard dice colors and geometries, these claims also recite a specific gaming table tailored to these dice and specific rules for playing the game.

While resolving wagers based on the colors and color combinations of the rolled dice per the claimed game is arguably akin to resolving wagers based on markings on standard dice such as in Craps, the claims here do not recite conventional dice or conventional rules for playing and wagering.  Still, it would be interesting to see how the Federal Circuit might have addressed the patent eligibility of these claims.

Panel: Administrative Patent Judges Capp, Hill, and Warner
Decision on Appeal by Administrative Patent Judge Warner

Comments

[Skeptical]

...more of the "ping-pong" effects that only go to show that the underlying Supreme Court directions are an example of Common Law that is Void for Vagueness.

One ironic feature of this whole series of comedy of errors is that the Court lambasted "scriviners" while it is their own scrivining that is causing such muckery in the patent law world.

[Martin Snyder]

This one is interesting. I can see eligibility as a manufacture. Maybe not as a method.

On the other hand, the game table is critical and I can see copyright as the appropriate protection.

This is not an example of an information invention, per se, IMO.

[Skeptical]

Your inconsistency has been noted, Mr. Snyder. In choosing to remain silent, your "IMO" is diminished.