On December 28, 2018, the U.S. Court of Appeals for the Federal Circuit upheld the USPTO’s rejection of a patent application titled “Casino Game and a Set of Six-Face Cubic Colored Dice” on the grounds that the patent application was directed at an abstract idea and is, therefore, unpatentable under 35 U.S.C. § 101.

The claims in U.S. Application No. 13/078,196 describe a “method of playing a dice game” that requires three special dice, each marked with up to three identical marks. Game players bet on how the marks will land after a roll, the dice are rolled and all bets are settled. The court, however, noted that the claims are directed to “rules for playing a dice game,” and that “methods of organizing human activity” are abstract ideas that cannot be patented.

The History of U.S. Application No. 13/078,196

The court’s decision is just one of many hindrances faced by this particular patent applicant. The patent application at issue was filed over seven years ago, and appeal did not arise until after three office actions were issued and one Request for Continued Examination (RCE) was filed to keep patent prosecution alive.

USPTO patent analytics provided by LexisNexis PatentAdvisor® show us that, when facing the patent examiner assigned to this case, patent prosecution typically lasts no longer than two-and-a-half years and patent applications receive an average of only 1.8 office actions. Some difficulty in obtaining a patent could have been predicted by the fact that the assigned patent examiner has historically allowed only 42.9 percent of the patent applications he has examined, however, responding to three office actions (an average expense of $3,000 per office action) and preparing an RCE with accompanying fees means the ‘196 application was costly even before entering into appeal.

Better Luck Next Time

The patent examiner assigned to evaluate the ‘196 patent not only has a historical allowance rate of 42.9 percent, PatentAdvisor™ has assigned him a PatentAdvisor ETA™ of 4.6 – a numerical value calculated by considering an examiner’s experience, evaluation trends, caseload and many other factors that predict prosecution difficulty and length. An ETA™ of 4.6 makes the patent examiner “yellow,” or one of moderate difficulty, and indicates moderate prosecution length. “Yellow” ETAs also require that patent applicants use caution and well-developed prosecution strategies to avoid excess expense.

The art unit assigned to evaluate the ‘196 patent is comprised of 28 different patent examiners – any of whom could have been chosen to examine this patent application. Some patent examiners more readily grant patents than others, so bad luck may be partly to blame for the ‘196 application’s current disposition.

Exclusive to PatentAdvisor™, ETA Distribution™ shows us that ten patent examiners in the art unit applicable to ‘196 are “green,” meaning they are “easy” in that they grant many patents and issue them fairly quickly. Another exclusive PatentAdvisor metric, Lottery Map™, shows us that the likelihood of ‘196 being assigned to one of the “green” patent examiners was higher than being assigned to either a “yellow” examiner (as was the case) or a “red” examiner with the least desirable patent statistics. Although luck was not on the side of the ‘196 applicant when a patent examiner was assigned, there is no way to know whether ‘196 would currently stand as rejected if a “green” examiner was chosen.

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