In Re: Marco Guldenaar Holding B.V. ( 2018 )

United States Court of Appeals
for the Federal Circuit
______________________
IN RE: MARCO GULDENAAR HOLDING B.V.,
Appellant
______________________
2017-2465
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 13/078,196.
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Decided: December 28, 2018
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CHRISTIAN D. EHRET, The Webb Law Firm, Pitts-
burgh, PA, argued for appellant. Also represented by
NATHAN J. PREPELKA.
MARY 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.
______________________
Before CHEN, MAYER, and BRYSON, Circuit Judges.
Opinion for the court filed by Circuit Judge CHEN.
Concurring opinion filed by Circuit Judge MAYER.
CHEN, Circuit Judge.
Marco Guldenaar Holding B.V. (Appellant) appeals
the final decision of the Patent Trial and Appeal Board
2 IN RE: MARCO GULDENAAR HOLDING B.V.
(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 play-
ing a dice game and the only arguable inventive concept
relates to the dice markings, which constitute printed
matter, we affirm.
BACKGROUND
Appellant 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 repre-
sentative, recites:
1. A 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 on-
ly a single face of the first die has a first die mark-
ing, 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 mark-
ing 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
IN RE: MARCO GULDENAAR HOLDING B.V. 3
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.
The 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 organiz-
ing human activities.” J.A. 35, 85. The examiner also
concluded that the claims were unpatentable for obvious-
ness in view of U.S. Patent No. 4,247,114 (Carroll) over
“matters old and well known to dice games,” applying the
printed matter doctrine. J.A. 88.
On appeal, the Board affirmed both rejections. Apply-
ing the two-step framework laid out in Alice Corp. v. CLS
Bank International, 573 U.S. 208 (2014), the Board de-
termined that claim 1 was directed to the abstract idea
identified by the examiner and that the steps in claim 1,
considered individually and as an ordered combination,
lacked an “inventive concept” sufficient to transform the
claimed abstract idea into patent-eligible subject matter.
J.A. 8–12.
Appellant appealed to this court, and we have juris-
diction pursuant to 28 U.S.C. § 1295(a)(4)(A) and 35
U.S.C. § 141(a).
STANDARD OF REVIEW
Patent eligibility under 35 U.S.C. § 101 is a question
of law that may contain underlying issues of fact. Interval
Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1342 (Fed.
Cir. 2018) (citing Berkheimer v. HP Inc., 881 F.3d 1360,
1365 (Fed. Cir. 2018)). We review an ultimate conclusion
on patent eligibility de novo. See id.
4 IN RE: MARCO GULDENAAR HOLDING B.V.
DISCUSSION
A. Section 101 Analysis
A patent may be obtained for “any new and useful
process, machine, manufacture, or composition of matter,
or any new and useful improvement thereof.” 35 U.S.C.
§ 101. The Supreme Court has “long held that this provi-
sion contains an important implicit exception: Laws of
nature, natural phenomena, and abstract ideas are not
patentable.” Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 589 (2013) (internal brackets
omitted) (quoting Mayo Collaborative Servs. v. Prome-
theus Labs., Inc., 566 U.S. 66, 70 (2012)).
To determine whether claimed subject matter is pa-
tent-eligible, we apply the two-step framework introduced
in Mayo, 566 U.S. at 77–78, and further explained in
Alice, 573 U.S. at 218. First, we “determine whether the
claims at issue are directed to a patent-ineligible concept”
such as an abstract idea. Id. Second, we “examine the
elements of the claim to determine whether it contains an
‘inventive concept’ sufficient to ‘transform’ the claimed
abstract idea into a patent-eligible application.” Id. at
221 (quoting Mayo, 566 U.S. at 72, 80).
In Interval Licensing, we explained the origins of the
abstract idea exception and applied the exception to a
computer software-based invention. Interval Licensing,
896 F.3d at 1342–46. We have also applied the abstract
idea exception in other settings, for example to “funda-
mental economic practice[s] long prevalent in our system
of commerce, including ‘longstanding commercial prac-
tice[s].’” Intellectual Ventures I LLC v. Symantec Corp.,
838 F.3d 1307, 1313 (Fed. Cir. 2016) (quoting Bilski v.
Kappos, 561 U.S. 593, 611 (2010)) (omitting internal
citations and quotation marks).
In re Smith, 815 F.3d 816 (Fed. Cir. 2016), is highly
instructive in this case. In Smith, we concluded that the
IN RE: MARCO GULDENAAR HOLDING B.V. 5
claimed “method of conducting a wagering game” using a
deck of playing cards was drawn to an abstract idea. We
likened the claimed method to the method of exchanging
financial obligations at issue in Alice and the method of
hedging risk at issue in Bilski. Id. at 819. We agreed
with the Board’s reasoning that “[a] wagering game is,
effectively, a method of exchanging and resolving finan-
cial obligations based on probabilities created during the
distribution of the cards.” Id. at 818–19. We also found
that the method of conducting a wagering game was
similar to the subject matter we previously held to be
patent-ineligible in OIP Technologies, Inc. v. Amazon.com,
788 F.3d 1359, 1362 (Fed. Cir. 2015), and Planet Bingo,
LLC v. VKGS LLC, 576 F. App’x 1005, 1007 (Fed. Cir.
2014). Smith, 815 F.3d at 819.
Here, Appellant’s claimed “method of playing a dice
game,” including placing wagers on whether certain die
faces will appear face up, is, as with the claimed invention
in Smith, directed to a method of conducting a wagering
game, with the probabilities based on dice rather than on
cards. Given the strong similarities to the ineligible
claims in Smith, Appellant’s claims likewise are drawn to
an abstract idea.
In its brief, Appellant contends that the Patent Office
uses a certain label—methods of organizing human activi-
ties—as a “catch-all abstract idea” and expresses concern
that the Board has used the phrase improperly as an
“apparent shortcut.” Appellant Op. Br. 16. We agree that
this phrase can be confusing and potentially misused,
since, after all, a defined set of steps for combining partic-
ular ingredients to create a drug formulation could be
categorized as a method of organizing human activity.
Here, however, where the Patent Office further articu-
lates a more refined characterization of the abstract idea
(e.g., “rules for playing games”), there is no error in also
observing that the claimed abstract idea is one type of
method of organizing human activity. In sum, we agree
6 IN RE: MARCO GULDENAAR HOLDING B.V.
with the Board that Appellant’s claims are directed to the
abstract idea of “rules for playing a dice game.”
“Abstract ideas, including a set of rules for a game,
may be patent-eligible if [the claims] contain an “in-
ventive concept’ sufficient to ‘transform’ the claimed
abstract idea into a patent-eligible application.” Smith,
815 F.3d at 819 (quoting Alice, 573 U.S. at 221) (omitting
quotation marks). Preemption is the underlying concern
behind the abstract idea exception, but, at the same time,
the Supreme Court has made clear that merely appending
conventional steps to an abstract idea is not enough for
patent eligibility. Mayo, 566 U.S. at 81. For example, a
claim calling for a generic computer operating in conven-
tional ways to perform an abstract idea lacks an inventive
concept. Alice, 573 U.S. at 225. The claims here recite
the steps of placing a wager, rolling the dice, and paying a
payout amount if at least one wagered outcome occurs—
none of which Appellant on appeal disputes is conven-
tional, either alone or in combination. J.A. 76. Just as
the claimed steps of shuffling and dealing playing cards
fell short in Smith, and recitation of computer implemen-
tation fell short in Alice, the claimed activities here are
purely conventional and are insufficient to recite an
inventive concept. See Alice, 573 U.S. at 223–24; Smith,
815 F.3d at 819.
Appellant’s argument on appeal has a different focus
from what it argued below. It now contends that “the
specifically-claimed di[c]e” that have markings on one,
two, or three die faces are not conventional and their
recitation in the claims amounts to “significantly more”
than the abstract idea. Appellant Op. Br. 20. The mark-
ings on Appellant’s dice, however, constitute printed
matter, as pointed out by the Board, and this court has
generally found printed matter to fall outside the scope of
§ 101. See AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042,
1064 (Fed. Cir. 2010). “Claim limitations directed to the
content of information and lacking a requisite functional
IN RE: MARCO GULDENAAR HOLDING B.V. 7
relationship are not entitled to patentable weight because
such information is not patent eligible subject matter
under 35 U.S.C. § 101.” Praxair Distrib., Inc. v. Mallinck-
rodt Hosp. Prod. IP Ltd., 890 F.3d 1024, 1032 (Fed. Cir.
2018). Each die’s marking or lack of marking communi-
cates information to participants indicating whether the
player has won or lost a wager, similar to the markings on
a typical die or a deck of cards. Accordingly, the recited
claim limitations are directed to information. Additional-
ly, the printed indicia on each die are not functionally
related to the substrate of the dice. Unlike in In re Gu-
lack, 703 F.2d 1381, 1385 (Fed. Cir. 1983), where digits
were printed on a band in such a manner that the digits
exploited the endless nature of the band, and the particu-
lar sequence of digits was critical to the invention dis-
closed in the claims, or In re Miller, 418 F.2d 1392 (CCPA
1969), where the volumetric indicia on the side of a cup
created a specialized measuring cup, the markings on
each of Appellant’s dice do not cause the die itself to
become a manufacture with new functionality.
Appellant also argues that his claimed method of
playing a dice game cannot be an abstract idea because it
recites a physical game with physical steps. See, e.g.,
Appellant Op. Br. at 13. We disagree, because the ab-
stract idea exception does not turn solely on whether the
claimed invention comprises physical versus mental
steps. The claimed methods in Bilski and Alice also
recited actions that occurred in the physical world. See
Bilski, 561 U.S. at 599; Alice, 573 U.S. at 213–14. The
same is true of the claimed method of conducting a wager-
ing game in Smith. Smith, 815 F.3d at 817. Moreover,
Appellant’s allegation that the Patent Office has asserted
a “categorical rule against casino games” lacks any sup-
port. See Appellant Op. Br. at 28. As we explained in
Smith, inventions in the gaming arts are not necessarily
foreclosed from patent protection under § 101. 815 F.3d
at 819.
8 IN RE: MARCO GULDENAAR HOLDING B.V.
Because the only arguably unconventional aspect of
the recited method of playing a dice game is printed
matter, which falls outside the scope of § 101, the rejected
claims do not recite an “inventive concept” sufficient to
“transform” the claimed subject matter into a patent-
eligible application of the abstract idea.
2. Representative Claim
Finally, we reject Appellant’s argument on appeal
that the Board improperly treated claim 1 as representa-
tive of the rejected claims. 37 C.F.R. § 41.37 (Rule 41.37).
Appellant’s appeal brief to the Board included two claim
group headings under its § 101 argument: one under
which all rejected claims were discussed generally, and
another under which Appellant merely quoted claim
elements in dependent claims 10, 18, 24, and 26 (e.g.,
“Claim 26 specifies that the dice ‘are rolled in an electron-
ic tumbler.’”). J.A. 63, 71. Rule 41.37(c)(1)(iv) specifies
that, when an applicant does not provide separate argu-
ments for different patent claims, the Board may select a
single claim from a group and decide the appeal on the
basis of the selected claim alone. And our case law and
Rule 41.37(c)(1)(iv) make clear that, for an applicant to
receive separate consideration by the Board for each of its
appealed claims, an applicant’s appeal brief must contain
substantive argument beyond “a mere recitation of the
claim elements and a naked assertion that the corre-
sponding elements were not found in the prior art.” In re
Lovin, 652 F.3d 1349, 1356 (Fed. Cir. 2011); see also Rule
41.37(c)(1)(iv). We agree with the Board that Appellant’s
brief to the Board merely identified a few additional
limitations in a subset of dependent claims—no more
than one per claim—without any explanation as to why
the additional limitations rendered the claims patent-
eligible. Under the circumstances, the Board reasonably
grouped all of the claims together, and the Board did not
err in treating claim 1 as representative of Appellant’s
rejected claims.
IN RE: MARCO GULDENAAR HOLDING B.V. 9
We have considered Appellant’s remaining arguments
and find them unpersuasive. Because we affirm the
Board’s rejection of the appealed claims under § 101, we
need not review the Board’s alternative § 103 rejection of
the claims. We find that the claims are drawn to the
abstract idea of rules for playing a dice game and lack an
“inventive concept” sufficient to “transform” the claimed
subject matter into a patent-eligible application of that
idea. Accordingly, we affirm.
AFFIRMED
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: MARCO GULDENAAR HOLDING B.V.,
Appellant
______________________
2017-2465
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 13/078,196.
______________________
MAYER, Circuit Judge, concurring in the judgment.
I agree that the claims at issue here are patent ineli-
gible, but write separately to make two points. First,
subject matter eligibility under 35 U.S.C. § 101 is a pure
question of law, one that can, and should, be resolved at
the earliest stages of litigation. Second, claims directed to
dice, card, and board games can never meet the section
101 threshold because they endeavor to influence human
behavior rather than effect technological change.
I.
I cannot agree with the court when it states that the
patent eligibility inquiry “may contain underlying issues
of fact.” Ante at 3. “Perhaps the single most consistent
factor in this court’s § 101 law has been our precedent
that the § 101 inquiry is a question of law. Stated differ-
ently, there is no precedent that the § 101 inquiry is a
question of fact.” Berkheimer v. HP Inc., 890 F.3d 1369,
1377 (Fed. Cir. 2018) (Reyna, J., dissenting from the
denial of the petition for rehearing en banc); see, e.g.,
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306,
2 IN RE: MARCO GULDENAAR HOLDING B.V.
1331 (Fed. Cir. 2015) (“We review questions concerning
compliance with the doctrinal requirements of § 101 of the
Patent Act (and its constructions) as questions of law,
without deference to the trial forum.”); OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015)
(“Patent eligibility under 35 U.S.C. § 101 is an issue of
law reviewed de novo.”). Panels of this court, see, e.g.,
Berkheimer v. HP Inc., 881 F.3d 1360, 1369–70 (Fed. Cir.
2018), are without authority to disregard established
precedent. See, e.g., Newell Cos. v. Kenney Mfg. Co., 864
F.2d 757, 765 (Fed. Cir. 1988) (“This court has adopted
the rule that prior decisions of a panel of the court are
binding precedent on subsequent panels unless and until
overturned in banc.”).
Tellingly, the Supreme Court has taken up four sub-
ject matter eligibility challenges in recent years, but has
never once suggested that the section 101 calculus in-
cludes any factual determinations. See Alice Corp. Pty. v.
CLS Bank Int’l, 573 U.S. 208, 134 S. Ct. 2347, 2354–60
(2014); Ass’n for Molecular Pathology v. Myriad Genetics,
Inc., 569 U.S. 576, 590–96 (2013); Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–80
(2012); Bilski v. Kappos, 561 U.S. 593, 610–13 (2010). To
the contrary, the Court has uniformly treated subject
matter eligibility as a question of law. See, e.g., Alice, 134
S. Ct. at 2355 (“First, we determine whether the claims at
issue are directed to one of [the] patent-ineligible con-
cepts. If so, we then ask, [w]hat else is there in the claims
before us?” (second alteration in original) (emphases
added) (citations and internal quotation marks omitted));
Mayo, 566 U.S. at 73 (examining the claims in light of the
Court’s precedents and concluding that they covered laws
of nature coupled with “conventional activity previously
engaged in by researchers in the field”). Significantly,
moreover, the Court has never suggested that the “clear
and convincing” standard applies in eligibility determina-
tions, a standard which would almost certainly be impli-
IN RE: MARCO GULDENAAR HOLDING B.V. 3
cated if eligibility were a fact-intensive inquiry. See, e.g.,
Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 115 (2011)
(Breyer, J., joined by Scalia and Alito, JJ., concurring)
(“By isolating the facts (determined with help of the ‘clear
and convincing’ standard), courts can . . . ensure the
proper interpretation or application of the correct legal
standard (without use of the ‘clear and convincing’ stand-
ard).”).
In Alice, the patent owner sought to inject factual in-
quiries into the section 101 calculus, arguing that its
computer-implemented settlement technique differed in
material respects from conventional escrow methods. See
Brief for Petitioner, Alice, 573 U.S. 208, 2014 WL 262088,
at *47 (“Nothing in the concept of escrow requires elec-
tronic shadow records, much less the particular use of
electronic shadow records required by Alice’s claims.
Moreover, Alice’s claims do not prescribe that the elec-
tronic intermediary (or any other third party) receives any
money or property, and the only ‘deliveries’ required by
Alice’s claims occur to the accounts of the actual parties
after the transaction has been effected. Alice’s invention
and the concept of escrow may both seek to mitigate
transactional risk, but they do so in materially different
ways.”). Notably, moreover, the patent specifications
stated that the claimed settlement method was a signifi-
cant advance over prior art systems. See, e.g., U.S. Patent
No. 5,970,479, col. 2 ll. 33–36 (“There are disadvantages
or limitations associated with . . . available economic risk
management mechanisms. Particularly, they provide, at
best, only indirect approaches to dealing with the risk
management needs.”). Furthermore, certain claims
recited the use of a “communications controller,” an
arguably unconventional element. See, e.g., U.S. Patent
No. 7,725,375, col. 67 ll. 8–23.
The Supreme Court, however, firmly rebuffed the ef-
fort to turn the patent eligibility analysis into a factual
quagmire. The Court did not remand the case to allow a
4 IN RE: MARCO GULDENAAR HOLDING B.V.
factfinder to determine whether the recited claim ele-
ments were well-understood, routine, or conventional.
Instead, it made quick work of the claims before it, con-
cluding that they fell outside section 101 based on its
analysis of its precedents and the claim language, Alice,
134 S. Ct. at 2354–60, as well as on the recognition that,
as a matter of basic historical fact, “the use of a computer
to obtain data, adjust account balances, and issue auto-
mated instructions” is “well-understood [and] routine,” id.
at 2359 (citations and internal quotation marks omitted).
“Eligibility questions mostly involve general historical
observations, the sort of findings routinely made by courts
deciding legal questions.” Cal. Inst. of Tech. v. Hughes
Commc’ns Inc., 59 F. Supp. 3d 974, 978 n.6 (C.D. Cal.
2014). Indeed, the Supreme Court has not hesitated to
turn to dictionaries and other publically available sources
when resolving legal questions. See DePierre v. United
States, 564 U.S. 70, 80 (2011) (citing to “the scientific and
medical literature” when interpreting the term “cocaine
base” in a statute); District of Columbia v. Heller, 554
U.S. 570, 581–92 (2008) (ascertaining the meaning of the
phrase “keep and bear Arms” in the Second Amendment
by examining dictionary definitions from the founding
period); see also Bilski, 561 U.S. at 611 (citing to a series
of textbooks when concluding that hedging against eco-
nomic risk is a well-known practice).
Berkheimer, 881 F.3d at 1369–70, deviated from prec-
edent when it concluded that statements made by a
patentee in the specification were sufficient to raise a
genuine issue of material fact regarding whether claimed
elements were conventional. Applicants write their
specifications with a view to clearing the obviousness
hurdle; it would be anomalous, to say the least, if an
applicant used his specification to confess that his claims
contained nothing new. Rather than relying upon a
patentee’s self-serving statements about the purported
advantages of his claimed invention, a court must inde-
IN RE: MARCO GULDENAAR HOLDING B.V. 5
pendently examine the claims, read in view of the specifi-
cation, and determine whether they are directed to the
“type of discovery,” Parker v. Flook, 437 U.S. 584, 593
(1978), that the patent laws were designed to protect.
This is a pure legal inquiry. See Teva Pharm. USA, Inc. v.
Sandoz, Inc., 135 S. Ct. 831, 841 (2015) (“As all parties
agree, when the district court reviews only evidence
intrinsic to the patent (the patent claims and specifica-
tions, along with the patent’s prosecution history), the
judge’s determination will amount solely to a determina-
tion of law.” (emphasis added)).
Because patent eligibility is a pure question of law,
section 101 can, and should, be used to strike down pa-
tents at the earliest stages of litigation, or even before, as
in this case from the PTO. Patent disputes are notorious-
ly time-consuming and costly. See, e.g., Eon–Net LP v.
Flagstar Bancorp, 653 F.3d 1314, 1326–28 (Fed. Cir.
2011). Resolving subject matter eligibility challenges
early conserves scarce judicial resources, provides a
bulwark against vexatious infringement suits, and pro-
tects the public by expeditiously removing the barriers to
innovation created by vague and overbroad patents.
Before the Supreme Court stepped in to resuscitate sec-
tion 101, a scourge of meritless infringement suits clogged
the courtrooms and exacted a heavy tax on scientific
innovation and technological change. Injecting factual
inquiries into the section 101 calculus will topple the
Mayo/Alice framework and return us to the era when the
patent system stifled rather than “promote[d] the Pro-
gress of Science and useful Arts,” U.S. CONST. art. I, § 8,
cl. 8.
Indeed, inserting factual determinations into the eli-
gibility decision will make section 101 a “dead letter,”
Mayo, 566 U.S. at 89. An obviousness determination
under 35 U.S.C. § 103 typically includes factual inquiries
into “the scope and content of the prior art” and “the
differences between the prior art and the claims at issue.”
6 IN RE: MARCO GULDENAAR HOLDING B.V.
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Insert-
ing such inquiries into the eligibility determination is not
only redundant, but will also make the section 101
framework so cumbersome and time-consuming that it
will cease to function as an expeditious tool for weeding
out patents clearly lacking any “inventive concept,” Mayo,
566 U.S. at 72 (citations and internal quotation marks
omitted). Thus, contrary to Supreme Court guidance,
compliance with section 101 will no longer be a “threshold
test,” Bilski, 561 U.S. at 602. Instead, eligibility determi-
nations, in many instances, will be made only after a full
trial to resolve factual disputes related to the scope and
content of the prior art and the purported differences
between the prior art and the asserted claims.
II.
The fault line for patent eligibility generally runs
along the divide between man and machine. Simply put,
while new machines and mechanized processes can poten-
tially be patent eligible, ideas about how to improve or
influence human thought and behavior fail to pass section
101 muster. This is why claims telling people how to
mitigate settlement risk, Alice, 134 S. Ct. at 2356–60, how
to hedge against risk in consumer transactions, Bilski,
561 U.S. at 610–13, or how to play a game of cards, In re
Smith, 815 F.3d 816, 818–19 (Fed. Cir. 2016), are directed
to non-statutory subject matter.
Claims can remain abstract, moreover, even when
they call for human activity to be conducted through
computer hardware and software. See Alice, 134 S. Ct. at
2358–60; see also Intellectual Ventures I LLC v. Capital
One Bank, 792 F.3d 1363, 1371 (Fed. Cir. 2015) (conclud-
ing that claims directed to entering data into a computer
database and organizing and transmitting information
were patent ineligible). Computers are, of course, “ma-
chines” which operate through the physical manipulation
of switches. But because they have become the substrate
IN RE: MARCO GULDENAAR HOLDING B.V. 7
of our daily lives—the “basic tool[],” Gottschalk v. Benson,
409 U.S. 63, 67 (1972), of a great many of our social and
economic interactions—generic computer functions, such
as storing, analyzing, organizing, and communicating
information, carry no weight in the eligibility analysis.
See Alice, 134 S. Ct. at 2357 (“The introduction of a com-
puter into the claims does not alter the analysis at Mayo
step two.”).
Alice, for all intents and purposes, articulated a
“technological arts” test for patent eligibility. 134 S. Ct.
at 2359 (concluding that the claims at issue fell outside
section 101 because they did not “improve the functioning
of the computer itself” or “effect an improvement in any
other technology or technical field”); see also In re Mus-
grave, 431 F.2d 882, 893 (CCPA 1970) (explaining that
patentable processes must “be in the technological arts so
as to be in consonance with the Constitutional purpose to
promote the progress of ‘useful arts.’” (quoting U.S.
CONST. art. I, § 8, cl. 8)). While games may enhance our
leisure hours, they contribute nothing to the existing body
of technological and scientific knowledge. They should
therefore be deemed categorically ineligible for patent.
See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 809 F.3d
1282, 1289 (Fed. Cir. 2015) (Dyk, J., concurring in the
denial of the petition for rehearing en banc) (“In my view,
claims to business methods and other processes that
merely organize human activity should not be patent
eligible under any circumstances.”).