Section 101 Analysis – IN RE: RAY SMITH, AMANDA TEARS SMITH

Applicants filed a patent application titled “Blackjack Variation” which outlined a method of conducting a wagering game accompanied by the rules of the game. This application was originally rejected the application based on 35 U.S.C § 101, concluding the application because “an attempt to claim a new set of rules for playing a card game” which qualified as an abstract idea.

The United States Court of Appeals for the Federal Circuit examined the claim by applying the two-part test introduced in Mayo. Mayo Collaborative Servs. V. Prometheus Labs., Inc., 132 S. Ct. 289. This two-part test requires the court to determine whether the claims are directed to a patent-ineligible concept such as an abstract idea, and whether the claims contain an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.

The Court finds the claims are directed to rules for conducting a wagers game and compare this to “other fundamental economic practices” and a method of hedging risk, both of which were found to be abstract ideas by the Supreme Court.

Even when a claim is found to be abstract, the court is required to look at the second step to see if there is an inventive concept to transform this abstract idea. The court found that appending purely conventional steps to an abstract idea does not supply a sufficiently inventive concept. The claims here require shuffling and dealing of standard playing cards, which are purely conventional activities.

Had a new deck of cards been required in the claims, there would have been a greater chance of it transforming the abstract idea. The Court affirms the lower court’s holdings and finds the idea to be an abstract idea without an inventive concept to transform the claim to a patent eligible application.

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