Ex Parte Amaitis et al

Patent Trial and Appeal Board

Mar 13, 2017

12836863 (P.T.A.B. Mar. 13, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/836,863 07/15/2010 Lee AMAITIS 10-2289 3083
63710 7590 03/15/2017
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
LEE, WEI
ART UNIT PAPER NUMBER
3714
NOTIFICATION DATE DELIVERY MODE
03/15/2017 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
lkoro vich @ c antor. com
phowe @ cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEE AMAITIS and NOEL FUENTES
Appeal 2014-007402
Application 12/836,863
Technology Center 3700
Before LINDA E. HORNER, ERIC C. JESCHKE, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants, Lee Amaitis et al.,1 appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1—22. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART and ENTER NEW GROUNDS OF
REJECTION.
Appellants identify CFPH, L.P. as the real party in interest. Appeal
Br. 3.
Appeal 2014-007402
Application 12/836,863
THE CLAIMED SUBJECT MATTER
The claims are directed to amusement devices and games involving
successive choices. Spec. 1, Title. Claims 1 and 2 are the independent
claims. Appeal Br. 15—19. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. An apparatus comprising:
a non-transitory machine readable medium having stored
thereon a plurality of instructions that when executed by a
processor cause the processor to:
facilitate play of a plurality of games of blackjack;
based on respective outcomes of each of the plurality of
games of blackjack, determine that progress towards a bonus
game should be made;
based on the progress towards the bonus game made based
on the respective outcomes of each of the plurality of games,
determine that the bonus game should be played;
in response to determining that the bonus game should be
played, present a first respective set of first respective choices to
a player, in which the first respective choices are non-distinct
from one another other than in respective aesthetics and
respective positions;
receive a first selection of a respective choice from the first
respective set of choices from the player;
in response to receiving the first selection, determine that
the first selection includes a correct choice;
in response to determining that the first selection includes
the correct choice, offer the player an award to end the bonus
game;
determine that the player does not desire to end the bonus
game;
in response to determining that the player does not desire
to end the bonus game, present a second respective set of second
respective choices to the player, in which the second choices are
non-distinct from one another other than in aesthetics and
positions;
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Application 12/836,863
receive a second selection of a respective choice from the
second respective set of choices from the player;
in response to receiving the second selection, determine
that the second selection includes an incorrect choice; and
in response to determining that the second selection
includes the incorrect choice, end the bonus game without
providing the offered award to the player.
Id. at 15.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Marks
Taylor
Nicely
Cuddy
Nguyen
Souza
Schultz
US 2003/0236116 A1
US 2004/0102238 A1
US 2004/0116179 A1
US 2004/0204223 A1
US 2005/0043088 A1
US 2005/0054419 A1
US 2008/0113702 A1
Dec. 25, 2003
May 27, 2004
June 17, 2004
Oct. 14, 2004
Feb. 24, 2005
Mar. 10, 2005
May 15,2008
REJECTIONS
The Examiner made the following rejections:
1. Claims 1—6, 12, 15, and 16 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Schultz and Cuddy.2
2. Claims 7—9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schultz, Cuddy, and Souza.
3. Claims 10, 11, and 13 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Schultz, Cuddy, and Marks.
2 The rejection of claim 15 also references Nguyen. Final Act. 5.
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Application 12/836,863
4. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schultz, Cuddy, and Taylor.
5. Claims 17—22 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Schultz, Cuddy, and Nicely.3
Appellants seek our review of these rejections.
ANALYSIS
The Rejection of Claims 1, 2, and 15
as Unpatentable Over Schultz and Cuddy
Claims 1 and 2
Appellants argue claims 1 and 2 as a group. Appeal Br. 8—11. We
select claim 1 as the representative claim, and claim 2 stands or falls with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner determines that the combination of Schultz and Cuddy
discloses all of the limitations of claim 1. Final Act. 2-4.
Appellants argue that the Examiner’s rejection is incorrect for three
reasons. Appeal Br. 8—11. First, Appellants contend that Schultz does not
disclose two limitations in claim 1:
based on respective outcomes of each of the plurality of games
of blackjack, determine that progress towards a bonus game
should be made, and
based on the progress towards the bonus game made based on
the respective outcomes of each of the plurality of games,
determine that the bonus game should be played.
Appeal Br. 8. Appellants argue that:
First, there is no teaching or suggestion^ of any plurality of
games ... or suggestion of a plurality of games being a basis for
a bonus game. Second, there is no teaching or suggestion of a
3 The rejection of claim 20 also references Nguyen. Final Act. 10.
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Application 12/836,863
progress towards a bonus game but rather only a triggering or
non-triggering of the bonus game.
Id. at 9. According to Appellants, Schultz
do[es] not teach or suggest progress towards a bonus game based
on outcomes from multiple games. . . . Rather ... a bonus game
is taught to be triggered or not triggered based on the outcome of
a single multi-hand game. ... If all of the hands are win[n]ing
hands, then the bonus game is triggered. If any other number are
winning hands, then the bonus game is not triggered.
Reply Br. 4.
Appellants’ argument that Schultz does not disclose the two disputed
limitations because a bonus game is triggered only by winning “a single
multi-hand game” is not persuasive. Appeal Br. 9; Reply Br. 4. We agree
with the Examiner that each blackjack hand is an individual blackjack game.
Ans. 11 (citing Schultz | 53, Figs. 4C and 6). Schultz states that a triggering
event “is a condition that need to be satisfied in order to initiate a bonus
game,” such as “any possible game outcome” or “player activity/actions.”
Schultz H 53—54. In one of Schultz’s exemplary embodiments, “the
triggering event may be winning all active hands (e.g., all seven hands of
blackjack).” Id. Schultz monitors the results of the plurality of games and
“determines the progress towards a bonus game,” e.g., winning seven games
of blackjack, as recited in claim 1. See, e.g., id. 53—54, Fig. 6. Based
upon the outcomes of the plurality of games, Schultz “determines [whether]
the bonus game should be played,” as recited in claim 1. Id. Thus, Schultz
discloses the two disputed limitations in claim l.4 Appellants do not show
error by the Examiner.
4 If Appellants’ argument is that Schultz does not disclose the two
disputed limitations because Schultz’s exemplary embodiment does not state
that a player may trigger a bonus game by winning seven non-sequential
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Application 12/836,863
Second, Appellants contend that Cuddy does not disclose two
limitations in claim 1:
in response to determining that the first selection includes the
correct choice, offer the player an award to end the bonus game,
and
in response to determining that the second selection includes the
incorrect choice, end the bonus game without providing the
offered award to the player.
Appeal Br. 9. Appellants argue that “there is no teaching or suggestion [in
Cuddy] that an incorrect choice leads to an ending of a bonus game without
an award being provided” (Appeal Br. 11), and Cuddy teaches that “the
bonus game ends and the player obtains the awards associated with the
currently highlighted selections.” Reply Br. 6 (citing Cuddy 1 63).
In response to Appellants’ arguments, the Examiner explains that
Cuddy discloses that the player chooses a “selection,” and, if the selection is
a “termination symbol or terminator,” the bonus game ends. Ans. 15—16
(citing Cuddy ^fl[ 57, 63). Cuddy, for example, states:
[T]he player may either end the bonus game and accept the
awards associated with the current highlighted selections or
continue selecting selections. . . . [W]ith every selection, the
player is risking that the awards associated with prior selected
highlighted selections will no longer be provided to the player.
Cuddy 1 63. Cuddy discloses that a player may choose to end the bonus
game and accept the offered awards, or choose an incorrect “selection” and
risk losing the offered awards. Thus, Cuddy discloses both an award to end
games (see Reply Br. 4—5), then Appellants’ argument is not commensurate
with the scope of claim 1. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(stating limitations not appearing in the claims cannot be relied upon for
patentability).
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Application 12/836,863
the bonus game and the risk of no award if the bonus round is continued, as
recited in claim 1.5 Appellants do not show error by the Examiner.
Third, Appellants argue that the Examiner’s new citations to certain
portions of Cuddy are new grounds of rejection improperly presented for the
first time in the Examiner’s Answer, instead of in the Final Action. Reply
Br. 2, 5. Whether a Final Action is premature for failing to present the bases
for all rejections is a matter reviewable by petition under 37 C.F.R. § 1.181,
not by appeal to the Patent Trial and Appeal Board. 37 C.F.R. § 41.40(a).
Requests to seek review of the Examiner’s failure to designate a rejection as
a new ground of rejection in an Examiner’s answer must be made in a
petition to the Director under 37 C.F.R. § 1.181. Id. Failure of Appellants
to timely file such a petition constitutes a waiver of any arguments that a
rejection must be designated as a new ground of rejection. Id. Further,
Appellants filed a Reply Brief responding to the substance of the arguments
raised in the Examiner’s Answer. By filing a Reply Brief, Appellants chose
to proceed with this Appeal. As such, we do not reach Appellants’ argument
that the Examiner raised an undesignated new ground of rejection.
For the reasons above, the Examiner’s rejection of claim 1 under 35
U.S.C. § 103(a) in view of Schultz and Cuddy is sustained. Claim 2 falls
with claim 1.
5 Appellants’ argument (Reply Br. 6) that Cuddy teaches away from the
claim 1 limitations is not persuasive because Cuddy does not criticize,
discredit, or otherwise discourage the presentation of an award to end the
bonus game and the risk of no award if the bonus round is continued, as
recited in claim 1. See In re Fulton, 391 F.3d 1195, 1199-1201 (Fed. Cir.
2004) (To teach away, a reference’s disclosure must “criticize, discredit or
otherwise discourage the solution claimed.”).
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Claim 15
Dependent claim 15 recites that “the correct choice includes a bonus
choice that causes the game to skip an intermediate round that would
otherwise have been played if a non-bonus choice was selected.” Appeal
Br. 18.
The Examiner finds that Nguyen discloses the limitations of claim 15.
Final Act. 5. We agree with Appellants that “[t]here is nothing in [Nguyen
1103] that could possibly be evidence of any game event causing a skipping
of a round of a bonus game.” Appeal Br. 12; see also Reply Br. 8. Nguyen
discloses that a player can skip a round by paying an increased fee. Nguyen
1103. Nguyen also discloses that a player may receive additional credits or
points during a bonus round, but does not disclose skipping a round from the
bonus round performance. Id. 1294. Therefore, the Examiner’s rejection of
claim 15 under 35 U.S.C. § 103(a) in view of Schultz, Cuddy, and Nguyen is
not sustained.
The Rejection of Claim 18
as Unpatentable Over Schultz, Cuddy, and Nicely
Dependent claim 18 recites that “determining the progress includes
increasing the progress in response to a winning game of the plurality of
games and decreasing the progress in response to a losing game of the
plurality of games.” Appeal Br. 18
In response to the Examiner’s finding that Nicely discloses the
limitations of this claim (Final Act. 9), Appellants argue that “[t]he cited
portions [of Nicely] do not teach or suggest such a decrease of progress in a
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Application 12/836,863
streak game. The portions do teach an increasing streak length, but are silent
regarding any decrease.” Reply Br. 8; see also Appeal Br. 14.
We agree with Appellants that Nicely discloses increasing progress
through “an increasing streak length,” and upon an end to the streak, a return
to zero. Nicely H 39-42; Final Act. 120; Ans. 130; Reply Br. 8. As such,
we do not sustain the rejection of claim 18 under 35 U.S.C. § 103(a) as
unpatentable over Schultz, Cuddy, and Nicely.
NEW GROUND OF REJECTION
We enter a new ground of rejection pursuant to our authority under 37
C.F.R. § 41.50(b) of dependent claim 18 under 35 U.S.C. § 103(a) as being
unpatentable over Schultz, Cuddy, Nicely, and Marks. Marks discloses a
bonus game meter 138 that increases and decreases progress toward a
progressive award based on the outcome of a game.6 Marks H 83—86, Fig.
lc. Thus, we determine that it would have been obvious at the time the
invention was made to one of ordinary skill in the art to modify the
combination of Schultz, Cuddy, and Nicely to allow the game apparatus to
increase the progress in response to a winning game of the plurality of
games and decrease the progress in response to a losing game of the plurality
of games as disclosed by Marks, because it “attracts and retains players
interested in playing an innovative slot game; and the player enjoys a new
method of receiving an award.” Marks 118.
6 We note that the Specification discloses a bonus meter that may
decrease. Spec. 1287.
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The Rejections of Claims 3—14, 16, 17, and 19—22
The Board’s rules provide that “[a]n appeal, when taken, is presumed
to be taken from the rejection of all claims under rejection unless cancelled
by an amendment filed by the applicant and entered by the Office.”
37 C.F.R. § 41.31(c). Thus, this appeal includes an appeal of the rejections
of claims 3—14, 16, 17, and 19-22. Appellants have elected not to present
arguments contesting the rejections of these pending claims.7 See Appeal
Br. 8—14. We summarily sustain the Examiner’s rejections of claims 3—14,
16, 17, and 19-22.
DECISION
For the above reasons, the Examiner’s rejections of claims 1—14 and
16, 17 and 19-22 under 35 U.S.C. § 103(a) are AFFIRMED.
The Examiner’s rejections of claims 15 and 18 under 35 U.S.C.
§ 103(a) are REVERSED.
We enter a NEW GROUND OF REJECTION pursuant to 37 C.F.R.
§ 41.50(b) of claim 18 under 35 U.S.C. § 103(a) as unpatentable over
Schultz, Cuddy, Nicely, and Marks.
37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
7 Appellants withdrew their arguments regarding the rejection of claim
9. Reply Br. 7.
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Application 12/836,863
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
Further guidance on responding to a new ground of rejection can be found in
the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN PART; 37 C.F.R, $ 41.50(b)
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