Games played with a standard deck of cards are unpatentable under 35 U.S.C. § 101

In re: Smith, No. 2015-1664 (Fed. Cir. Mar. 10, 2016)

The applicant appealed a decision by the Patent Trial and Appeal Board (PTAB) affirming the rejection of claims directed to a variation of Blackjack as unpatentable subject matter under 35 U.S.C. § 101. The Federal Circuit affirmed.

The court applied the two-step test announced in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012). First, “the rejected claims, describing a set of rules for a game, are drawn to an abstract idea,” which is ineligible subject matter. Second, “the rejected claims do not have an ‘inventive concept’ sufficient to ‘transform’ the claimed subject matter into a patent-eligible application of the abstract idea.”

The court rejected the argument that the claimed steps of “shuffling and dealing a standard deck of cards” rendered the applicant’s game patentable, holding that these are “purely conventional activities.” However, not “all inventions in the gaming arts would be foreclosed from patent protection” under Mayo. For example, games played with “a new or original deck of cards” may be able to satisfy 35 U.S.C. § 101.

The court declined to address the applicant’s challenge to the Patent Office’s interim guidelines on subject-matter eligibility under 35 U.S.C. § 101. Applicants may only appeal “decisions” by the agency, not its guidance materials, which are not binding on courts.

A copy of the opinion can be found here.