Ex Parte Barnes II et al

Patent Trial and Appeal Board

Feb 4, 2016

12411853 (P.T.A.B. Feb. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/411,853 0312612009
101539 7590
Sullivan and Worcester
1666 K Street Suite 700
W asington, DC 20006
02/08/2016
FIRST NAMED INVENTOR
James Cornelius BARNES II
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.
21204-0146US 5928
EXAMINER
FAN,SUJYA
ART UNIT PAPER NUMBER
2823
NOTIFICATION DATE DELIVERY MODE
02/08/2016 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):
docketing@sandw.com
tdores@sandw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES CORNELIUS BARNES II, FELICIA J. GERMANI,
THOMAS J. NAPOLITANO, and MARK TRUMAN 1
Appeal2014-001322
Application 12/411,853
Technology Center 2800
Before PETER F. KRATZ, GRACE KARAFFA OBERMANN, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 2-5, 7-14, and 27-30. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is Spielo
International Canada ULC, which is a wholly owned subsidiary of GTECH
S.p.A. App. Br. 3.
Appeal2014-001322
Application 12/411,853
BACKGROUND
The subject matter on appeal relates to a method of facilitating a
multi-player wagering game run together with a base wagering game.
Spec. 2:30-31; Claim 2. Claim 2 is reproduced below from page 18 (Claims
Appendix) of the Appeal Brief:
2. A computer implemented method of facilitating an inter-player
wagering game run together with a base single player wagering
game, compnsmg:
receiving entries from a group of players for the base wagering
game, the entries including a quantity of player selections for
each of the players;
determining separate outcomes for each player in the group for
each of a plurality of plays of the base wagering game based on
the player selections;
determining a prize associated with each separate outcome of the
base wagering game;
calculating a final prize amount as a percentage of the prizes that
would have been awarded to the individual players in the group
in the base single player wagering game; and
awarding, with a processor, the final prize amount to one or more
of the players in the group, who is selected by comparing the
separate outcomes of the players in the group obtained for the
plurality of plays of the base wagering game.
ANALYSIS
Claims 2-5, 7-14, and 27-30 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Baerlocher (US 2008/0070695 Al, published Mar.
20, 2008). The Appellants argue only claims 2 and 3 separately. We
therefore limit our discussion to those claims.
After review of the evidence in the appeal record and the opposing
positions of the Appellants and the Examiner, we determine that the
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Application 12/411,853
Appellants have not identified reversible error in the Examiner's rejection.
Accordingly, we affirm the rejection for reasons set forth below.
The disputed element of claim 2 is the "calculating" limitation. See
App. Br. 11-14. Regarding that limitation, the Examiner finds that
Baerlocher teaches "first and second prizes," Ans. 3 (citing Baerlocher i-f 43),
and calculating the prizes that would have been awarded to the individual
players in the group in the base single player wagering game, Ans. 4 (citing
Baerlocher i-f 231 ). The Examiner further finds that Baerlocher teaches an
embodiment in which one player wins both the first and second prizes.
Ans. 4 (citing Baerlocher i-f 43). As a result of those findings, the Examiner
finds that, "considering the teachings of Baerlocher at para. [0231] and the
'first and second prizes' at para. [0043], the prior art teaches the claimed
features." Ans. 4.
For essentially the reasons set forth by the Appellants, we cannot
agree with the Examiner that Baerlocher expressly teaches the disputed
claim limitation. See App. Br. 11-14. Standing alone, the fact that one
player may win both the first and second prizes fails to establish that a final
prize is "calculat[ ed] ... as a percentage of the prizes that would have been
awarded to the individual players in the group in the base single player
wagering game," as required by claim 2.
However, contrary to the Appellants' contention, e.g., App. Br. 15
("Baerlocher does not ... fairly suggest each and every feature of
independent claim 2."), we find that Baerlocher would have suggested the
disputed limitation to a person of ordinary skill in the art. As the Supreme
Court has explained, "the [obviousness] analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
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Appeal2014-001322
Application 12/411,853
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 418-19 (2007). That is because "[a] person of ordinary skill is
also a person of ordinary creativity, not an automaton." Id. at 421.
As set forth by the Examiner, Baerlocher teaches calculating the
prizes that would have been awarded to the individual players in the group in
the base single player wagering game. Baerlocher i-f 231 (discussing
"awards associated with the game outcomes generated for that player" and
stating, "[a]t the end of the tournament, the gaming system determines a
tournament winner based on the overall tournament scores or credits
accumulated for each player."). It also teaches that "[t ]he gaming system
may provide any suitable number of players[,] wins or prizes based on any
suitable criteria." Id. i-f 43. One suitable outcome expressly taught by
Baerlocher is a winner-take-all scenario in which one player takes both the
first prize and the second prize (i.e., all of the contemplated prizes). Id.
While Baerlocher does not expressly teach a winner-take-all outcome in
which the prize is the sum total of the prizes that would have been awarded
to the individual players (i.e., a percentage of the prizes-I 00%-----that would
have been awarded to the individual players), Baerlocher's teachings,
combined with only ordinary creativity, would have led a person of ordinary
skill to such an outcome. Specifically, because Baerlocher teaches
calculating the awards or credits for each individual player and the viability
of a winner-take-all prize scenario, it would have been obvious to calculate
the prize simply by adding the already-known individual awards or credits.
See KSR, 550 U.S. at 418---421.
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Application 12/411,853
Concerning claim 3, the Appellants argue that Baerlocher does not
teach the limitation that "the final prize amount is 100% of the prizes that
would have been awarded to the individual players in the group in the base
single player wagering game." App. Br. 15. As set forth above, the method
of claim 2 including that limitation would have been obvious in light of
Baerlocher's teachings of (1) calculating the individual scores or credits for
each player to determine a tournament winner, Baerlocher i-f 231, (2) a
winner-take-all scenario, id. i-f 43, and (3) that the prize that the winner takes
may be based on "any suitable criteria," id. It would have been obvious to a
person of ordinary skill, using only ordinary creativity, for the criteria on
which the prize is determined to be a summation of the prizes of each
individual player in a winner-take-all scenario.
We therefore affirm the Examiner's rejection of claims 2 and 3.
Because claims 4, 5, 7-14, and 27-30 depend from claim 2, and the
Appellants present no separate arguments for those claims, we likewise
affirm the Examiner's rejection of those claims.
CONCLUSION
We AFFIRM the Examiner's rejection of claims 2-5, 7-14, and 27-
30.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
cdc
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