Federal Circuit, March 10, 2016, 2015-1664

Author: Ryan Davies

The Federal Circuit upheld a decision by the Patent Trial and Appeal Board to reject Smith's patent application for claiming patent-ineligible subject matter under 35 USC § 101.  Smith's application, titled "Blackjack Variation", claimed a method for conducting a card wagering game including steps of a dealer shuffling and dealing physical playing cards, as well as resolving various bets during the game.  At the Board, the Applicant argued at least the shuffling and dealing steps satisfied the machine or transformation test, the appropriate standard at the time.  In the wake of the Supreme Court's Alice decision, the Board heard additional arguments from the Applicant that the shuffling and dealing steps were "significantly more" than an abstract idea, which Applicant contended brought the claims within patent-eligible territory.

The Federal Circuit, applying the two-step Mayo test, concurred with the Board and concluded that the claims covered only the abstract idea of rules for playing a wagering game and they append nothing more than the conventional steps of shuffling and dealing a standard deck of cards.  These conventional steps were judged to not supply a sufficiently inventive concept to the identified abstract idea and thus fall short to overcome § 101, just as the recitation of computer implementation fell short in Alice.