The Ongoing Mysteries of 35 USC 101

The law on subject-matter eligibility for patents continues to evolve as the U.S. Patent Office and the courts wrestle with the results of recent Supreme Court and Federal Circuit opinions. On September 2, 2015, the Patent Trial and Appeal Board of the U.S. Patent Office decided Ex parte Newman, No. 2012-010092, 2015 Pat. App. LEXIS 8060 (P.T.A.B., Sept. 2, 2015) (nonprecedential). The claims on appeal involved playing a game using playing cards having suits and values related to mathematical concepts and solving the mathematical equations on those cards.

Applying the analytical framework of Alice and Mayo, the Board first analyzed whether the claims were directed to an abstract idea. The Board analogized playing cards to “the financial arrangements claimed in Bilski and Alice.” The Board did not expressly identify what the specific abstract idea the claims were purportedly directed to. When discussing the content of the claims, the Board emphasized that the claims involved “determining card suits and values of cards by solving mathematical equations on the cards and determining the mathematical concepts associated with information displayed on the cards, which in tum are based upon probabilities created during the dealing of hands of cards.” On that basis, the Board concluded that the claims were directed to an abstract concept.

The Board then considered whether the claims included an inventive concept that would transform the claimed subject matter into a patent-eligible application of the abstract concepts involved in the claims. The Board reasoned that the claimed cards “are not used for their physical characteristics as cards or as combinations of cards.” Rather, the Board found that the cards were simply used as representations for the abstract concepts involved in the game. Accordingly, the Board concluded that “the use of cards … amounts to nothing significantly more than instructions to apply the abstract idea to playing a type of card game.” Based on that conclusion, the Board affirmed the rejection.

The outcome reached in Newman appears to be in tension with the outcome reached in Ex parte Palmer, No. 2012-003262, 2015 Pat. App. LEXIS 1134 (P.T.A.B. March 2, 2015) (nonprecedential). Like the claims on appeal in Newman, the claims on appeal in Palmer involved playing a card game with a deck of cards other than a standard fifty-two card deck of playing cards. Rather than being wholly custom to the game, the deck claimed in Palmer included a standard deck and four additional cards, with each card being associated with a score in a sporting event. The Board in Palmer reversed the rejection relied on the deck to confer patent-eligibility on the claims. Specifically, the Board characterized the deck as having a “particular make-up,” including the specific number of cards and unique markings. In addition, the Board did not view the claimed cards as an instruction to apply an abstract idea to play a game, but as a tie to the physical realm capable of granting patent-eligibility.

One difference between the decks was that the Board found claims to the deck itself in Newman to be obvious in view of the prior art, whereas the decision in Palmer did not involve any anticipation or obviousness considerations. Even so, it is unclear why the addition of four game-specific cards would render a claim patent-eligible, while the creation of a custom deck would not. With such variability in results, patent-applicants and patent-holders alike face a high degree of uncertainty when attempting to obtain and enforce protection for their innovations. It is more critical than ever to obtain expert advice when facing a subject-matter eligibility challenge.

The information you obtain at this site is not, nor is it intended to be, legal advice. You should consult an attorney for advice regarding your individual situation.