IN RE: MARCO GULDENAAR HOLDING B. V., Appellant
from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. 13/078, 196.
Christian D. Ehret, The Webb Law Firm, Pittsburgh, PA, argued
for appellant. Also represented by Nathan J. Prepelka.
L. Kelly, Office of the Solicitor, United States Patent and
Trademark Office, Alexandria, VA, argued for appellee Andrei
Iancu. Also represented by Thomas W. Krause, Coke Morgan
Stewart, Philip J. Warrick.
Chen, Mayer, and Bryson, Circuit Judges.
Guldenaar Holding B.V. (Appellant) appeals the final decision
of the Patent Trial and Appeal Board (Board) affirming the
rejection of claims 1-3, 5, 7-14, 16- 18, and 23-30 of U.S.
Patent Application No. 13/078, 196 (the '196 patent
application) under 35 U.S.C. § 101 for claiming
patent-ineligible subject matter. Because the claims are
directed to the abstract idea of rules for playing a dice
game and the only arguable inventive concept relates to the
dice markings, which constitute printed matter, we affirm.
filed the provisional application from which the '196
patent application claims priority on April 2, 2010. The
'196 patent application, entitled "Casino Game and a
Set of Six-Face Cubic Colored Dice," relates to
"dice games intended to be played in gambling casinos,
in which a participant attempts to achieve a particular
winning combination of subsets of the dice." Joint App.
(J.A.) 140. Claim 1, which the Board treated as
method of playing a dice game comprising:
providing a set of dice, the set of dice comprising a first
die, a second die, and a third die, wherein only a single
face of the first die has a first die marking, wherein only
two faces of the second die have an identical second die
marking, and wherein only three faces of the third die have
an identical third die marking;
placing at least one wager on at least one of the following:
that the first die marking on the first die will appear face
up, that the second die marking on the second die will appear
face up, that the third die marking on the third die will
appear face up, or any combination thereof;
rolling the set of dice; and
paying a payout amount if the at least one wager occurs.
J.A. 76. According to Appellant, the primary novelty of the
claimed invention is the markings (or lack thereof) on the
dice, which have only particular faces marked.
examiner rejected claims 1-3, 5, 7-14, 16-18, and 23-30 as
being directed to patent-ineligible subject matter under
§ 101. The examiner concluded that the claims were
directed to the abstract idea of "rules for playing a
game," which fell within the realm of "methods of
organizing human activities." J.A. 35, 85. The examiner
also concluded that the claims were unpatentable for
obviousness in view of U.S. Patent No. 4, 247, 114 (Carroll)