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Patentable Subject Matter: PTO Deems Card Games Unpatentable?

January 13, 2012

According to one examiner, and his supervisor, at least one group of examiners and other PTO officers decided at a “meeting” that card games are per se unpatentable subject matter. While it is sweet that the examiners all got together and decided that, unfortunately, their decision is contrary to patent law as interpreted by the Supreme Court. Based on this improper decision by PTO employees, the only way to overcome a 101 subject matter rejection in this particular art group for a patent application for a card game will be to appeal. Appealing such an issue wastes clients time and money to overcome these improper rejections.

Patentability for card games should be no less patentable than any method of manipulation of an object. The fact that the claims are tied to another statutory class defined in section 101 is more than enough to support patentability. Surely, a new and non-obvious method of using a hammer, or any other device would be patentable. Why then would a new and non-obvious method of using a playing card not be patentable? There is no support for it in law, or common sense.

PTO Reasoning for non-patentability of a card game is as follows: For a method claims, a machine or transformation of matter is required. Using a narrow and overly literal interpretation of this test, a machine must be a computing device, and transformation of matter must be something quite substantial (chemical reaction, etc.). Card games (with physical cards moving around) do not involve a computer, nor a sufficient transformation of matter.

This analysis fails in a number of ways. Perhaps its most blatant deficiency is the blind adherence to the Federal Circuit’s machine or transformation (MoT) test of Bilski that was overturned by the Supreme Court. Further, the analysis misunderstands the policy underlying the subject matter issues with Bilski and other business method claims: preventing claims on solely abstract mental steps. Obviously, nobody intended with the development of the MoT test to exclude legitimately patentable claims to card games, board games and the like.

In reality, card games are well within the scope of patentable subject matter, and satisfy the MoT test based on any reasonable interpretation. In one sense, the cards could be interpreted as a “machine” with which the method steps are performed. In another sense, the manipulation of the cards could be interpreted as a transformation of matter in their manipulation when carrying out the method steps. Either way, the steps of manipulating the physical cards passes the test.

Further, the Supreme Court has ruled that the MoT test is not the exclusive test, and card game claims would surely be patentable under any other test.

From a policy perspective, there is no reasoning to support exclusion of card games from the realm of patentable subject matter. Card games that utilize physical cards are not abstract mental steps, they are not laws of nature, and are not a physical phenomena. As such, they must be patentable subject matter.

In cases like this, unfortunately the Examiners are the ones bearing the brunt of patent practitioner frustration. The blame should not be placed on them. Instead, blame goes to the PTO administration for failing to develop acceptable guidelines for claim analysis under the MoT test, and for failing to train examiners to understand the policy of the patentable subject matter tests. By understanding the policy and reasoning for patentable subject matter exclusions, examiners will be able to make informed decisions on the issue, instead of blindly adhering to an overly rigid test that was overturned almost two years ago.

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One Comment leave one →
  1. January 20, 2012 3:39 pm

    “Card games that utilize physical cards are not abstract mental steps”

    Perhaps and perhaps not, but one thing can be certain, claims to card games usually encompass tha abstract idea of shuffling some cards around on the table in some manner.

    Also, unless you cite your source for their “rationale” I think you’ve got it wrong as to what they were thinking, the particular “machine” must NOT be simply a computer not MUST be simply a computer. You got it backwards in your article I believe.

    “From a policy perspective, there is no reasoning to support exclusion of card games from the realm of patentable subject matter. ”

    Sure there is, so that people don’t lol your patent system out of existence so that we may continue to promote the useful arts.

    ” The blame should not be placed on them. Instead, blame goes to the PTO administration for failing to develop acceptable guidelines for claim analysis under the MoT test, and for failing to train examiners to understand the policy of the patentable subject matter tests.”

    Nah bro, the “blame”, if there is any, which I doubt, in this area of lawl, goes to tard applicants. And the USSC, and the congress.

    Also I note that I had someone bring a card game to me the other day wondering about if I’d seen art and I don’t think he made a 101 though I believe I told him to consider it. The claim basically covered the abstract idea of poker made easier for sissies and girls by making an extra card wild beyond that which was ordinarily wild (joker depending on how you play it). And I most certainly would have stated that for the record and noted that the claim covered the entirety of the abstract idea.

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