U.S. Patent No. 9,770,659 (“’659”)  “We are persuaded by Petitioner that the claims are directed to “‘controlling the display of a video game based on a received selection of panel information’” Decision Granting Institution [47], 8.

(3) Prong 1: “Way of Managing a Game and Playing the Game” Certain methods of organizing human activity: “Applicants' claims, directed to rules for conducting a wagering game” are abstract.

Step Two: No Inventive concept No “new source of type of information” Patent & PO Expert Admits Card-Based Game Mechanics are Conventional: Reply [29], p. 7-10; Ex. 1010 [29], 253:24-255:7 (objections, names, and text omitted); Ex. 1001 [29], 1:28-44.

Section 112(a) Petitioner arguments found persuasive by Board  No written description for “receives an instruction that the panel is disposed in the target division”: Decision Granting Institution [47], p. 22-23.

Section 112(b)  Metes and bounds of “panel is allowed to be disposed in the target division” are unclear: PO’s expert can’t determine when a panel is “allowed to be disposed” • • Is it based on size and shape?

“Resolution of patent-eligibility issues requires higher intervention, hopefully with ideas reflective of the best thinking that can be brought to bear on the subject.” Judge Plager, in another case, noted that “the state of the law is such as to give little confidence that the outcome is necessarily correct.” He explained that, given current § jurisprudence, it is “near impossible to know with any certainty whether the invention is or is not patent eligible.” And he concluded that we currently have an “incoherent body of doctrine.” And Judge Linn explained that the abstract idea test is “indeterminate and often leads to arbitrary results.” agree with all these sentiments.

Judge Giles Rich, an icon of patent law with an unparalleled understanding of—and impact on—our system, stated, in , the crux of the problem with respect to § jurisprudence.

Some basic “methods of organizing human activity,” such as fundamental economic practices like market hedging and escrow transactions, have also been excluded by the Supreme Court in Bilski and Alice.

4/7/2019 Remarks by Director Iancu at the Intellectual Property Owners Association 46th Annual Meeting | USPTO The Supreme Court has been interpreting this statute for the past years or so, and throughout that time has given only a limited number of examples of these “basic tools of scientific and technological work”—and arguably they can all generally fit into the categories just mentioned.

n sum, the proposed guidance for Section , which addresses step of Alice, would explain that eligibility rejections are to be applied only to claims that recite subject matter within the defined categories of judicial exceptions.

... should not be treated as reciting abstract ideas, except as follows: In the rare circumstance in which a USPTO employee believes a claim limitation that does not fall within the enumerated groupings of abstract ideas should nonetheless ...

21  In the rare circumstance in which an examiner believes a claim limitation that does not fall within the enumerated groupings of abstract ideas should nonetheless be treated as reciting an abstract idea, the procedure described in ...

In the rare circumstance in which an examiner believes a claim limitation that does not fall within the enumerated groupings of abstract ideas should nonetheless be treated as reciting an abstract idea, the procedure described in Section ...

“Resolution of patent-eligibility issues requires higher intervention, hopefully with ideas reflective of the best thinking that can be brought to bear on the subject.” Judge Plager, in another case, noted that “the state of the law is such as to give little confidence that the outcome is necessarily correct.” He explained that, given current § jurisprudence, it is “near impossible to know with any certainty whether the invention is or is not patent eligible.” And he concluded that we currently have an “incoherent body of doctrine.” And Judge Linn explained that the abstract idea test is “indeterminate and often leads to arbitrary results.” agree with all these sentiments.

These two clarifications would help drive more predictability back into the analysis while remaining true to the case law that gave rise to these judicial exceptions in the first place.

Some basic “methods of organizing human activity,” such as fundamental economic practices like market hedging and escrow transactions, have also been excluded by the Supreme Court in Bilski and Alice.

4/7/2019 Remarks by Director Iancu at the Intellectual Property Owners Association 46th Annual Meeting | USPTO The Supreme Court has been interpreting this statute for the past years or so, and throughout that time has given only a limited number of examples of these “basic tools of scientific and technological work”—and arguably they can all generally fit into the categories just mentioned.

n sum, the proposed guidance for Section , which addresses step of Alice, would explain that eligibility rejections are to be applied only to claims that recite subject matter within the defined categories of judicial exceptions.