Ex Parte Alderucci et al

Patent Trial and Appeal Board

Sep 29, 2016

12253343 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/253,343 10/17/2008
63710 7590 10/03/2016
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
FIRST NAMED INVENTOR
Dean P. Alderucci
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
08-2268 9133
EXAMINER
HOEL, MATTHEW D
ART UNIT PAPER NUMBER
3714
NOTIFICATION DATE DELIVERY MODE
10/03/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patentdocketing@cantor.com
lkorovich@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEAN P. ALDERUCCI and MARK A. MILLER
Appeal2015-001505
Application 12/253,343 1
Technology Center 3700
Before HUBERT C. LORIN, MICHAEL C. ASTORINO, and
AMEE A. SHAH, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-19. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellants, "[t]he real party in interest of the present
application is CFPH, L.P." Appeal Br. 3.
Appeal2015-001505
Application 12/253,343
Claimed Subject Matter
Claims 1, 5, 8, 11, 12, 16, and 19 are independent. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A method for conducting a wagering game using an inventory
of indicia, the method comprising:
receiving, by a gaming device, respective wagers from a
player to play each of a series of hands;
for each hand of play,
randomly selecting, by the gaming device, a
plurality of individual indicia from the inventory by a)
selecting a respective value of each indicia with reference
to the inventory of indicia and b) selecting a respective suit
of each indicia without reference to the inventory of
indicia, the combination of indicia selected defining a
respective at least one hand outcome and
depleting, by the gaming device, a number of
indicia with the selected values from play for subsequent
hands without regard for the selected suits;
comparing at least one respective hand outcome to a
predetermined schedule of winning outcomes and if said hand
outcome matches one of said schedule of winning outcomes,
issuing an award to the player; and
prior to play of a subsequent hand displaying the number
of indicia with each value remaining in the inventory as depleted
to enable a player to deduce any scheduled winning outcomes
eliminated as a result of depletion of said indicia from play.
Rejections
I. Claims 1-19 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Odom et al. (US 2005/0143158 Al, pub. June 30, 2005,
hereinafter "Odom"). Final Act. 2--4.
2
Appeal2015-001505
Application 12/253,343
IL Claims 1-19 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1-24 of copending Application No. 12/263,779. Id. at 6-7.
III. Claims 1-19 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1-5 of copending Application No. 12/254,485. Id. at 7.
ANALYSIS
Rejection I
The Appellants argue that Odom fails to teach "randomly selecting,
by the gaming device, a plurality of individual indicia from the inventory by
a) selecting a respective value of each indicia with reference to the inventory
of indicia and b) selecting a respective suit of each indicia without
reference to the inventory of indicia," and "depleting, by the gaming
device, a number of indicia with the selected values from play for
subsequent hands without regard for the selected suits," as recited in
claim 1. Appeal Br. 9, Reply Br. 2.
In support of their argument, the Appellants point out that the claim
limitations require "a card with a value and a suit[, which] may be selected
multiple times (e.g., four ace of hearts could possibly be selected from a
deck because the hearts is not referenced in a selection or depletion)." Reply
Br. 2. As such, the claimed method cannot be played with Odom's finite
deck of cards. See id. With Odom's finite deck of cards, once a card having
a value and suit is selected that card is depleted from the deck and not
usable. See id.; see also Odom, para. 31. As such, the Appellants' argument
. .
1s persuasive.
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Appeal2015-001505
Application 12/253,343
We also note that the Examiner points to claim 2, which depends from
independent claim 1, and recites "wherein the series of hands includes hands
of blackjack." Appeal Br., Claims App. The Examiner explains that
because claim 2 depends from independent claim 1, claim 2 has a narrower
scope than claim 1. See Ans. 5. The Examiner determines that ifthe narrow
scope of claim 2 includes hands of Blackjack, then the broader claim 1 must
also include hands of Blackjack. See id. From this, the Examiner implies
that playing hands of Blackjack, which is disclosed by Odom, corresponds to
the subject matter of claim 1. See id. at 4--5. The Examiner's reasoning,
however, is flawed because it fails to account for the requirements of
claim 1. In other words, to the extent that claim 2 requires hands of
Blackjack, the hands cannot be played with Odom's finite deck of playing
cards.
Thus, we do not sustain the Examiner's rejection of independent
claim 1, and its depending claims, as anticipated by Odom. Additionally,
independent claims 8 and 12 include substantially similar limitations as
claim 1; and independent claims 5, 11, 16, and 19 include similar limitations
to claim 1. See Appeal Br., Claims App. For similar reasons as discussed
above, we do not sustain the Examiner's rejection of independent claims 5,
8, 11, 12, 16, and 19, and any depending claims thereon, as anticipated by
Odom.
Rejections II & III
Claims 1-19 are provisionally rejected on the ground ofnonstatutory
obviousness-type double patenting as being unpatentable over claims 1-24
4
Appeal2015-001505
Application 12/253,343
of copending Application No. 12/263,779 and claims 1-5 of copending
Application No. 12/254,485. Id. at 6-7.
The Appellants do not contest these rejections. However, we note that
the Appellants filed a response on April 10, 2012 to the initial of
nonstatutory obviousness-type double patenting rejections provided in a
Non-Final Office Action, mailed October 12, 2011. The Appellants'
response, at pages 10-11 with added emphasis, stated:
Applicants request a deferral of this rejection until claims have
been allowed. Applicants cannot properly address the rejection
until a allowed set of claims exists because the claims may
change. Applicants ask that the Office raise any double
patenting rejection at a time when the claims have been allowed
if such a rejection is then proper.
Since the Appellants' response, there have been amendments to many of
claims 1-19 of the present application, as well as to claims 1-24 of
Application No. 12/263,779 (now US 8,408,988 B2, issued April 2, 2013),
and claims 1-5 of copending Application No. 12/254,485 (now US
9,320,963 B2, issued April 26, 2016). Based on the foregoing, we do not
reach these rejections.
DECISION
We REVERSE the Examiner's decision rejecting claims 1-19 under
35 U.S.C. § 102(b) as being anticipated by Odom.
We do not reach the Examiner's rejections of: claims 1-19 on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1-24 of copending Application No. 12/263,779;
and claims 1-19 on the ground of nonstatutory obviousness-type double
5
Appeal2015-001505
Application 12/253,343
patenting as being unpatentable over claims 1-5 of copending Application
No. 12/254,485.
REVERSED
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