Ex Parte Berube

Patent Trial and Appeal Board

Dec 9, 2014

11589083 (P.T.A.B. Dec. 9, 2014)

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.
11/589,083 10/30/2006 Normand Berube 18410-1US 4742
20988 7590 12/09/2014
NORTON ROSE FULBRIGHT CANADA LLP
1, Place Ville Marie
SUITE 2500
MONTREAL, QC H3B 1R1
CANADA
EXAMINER
ROWLAND, STEVE
ART UNIT PAPER NUMBER
3718
MAIL DATE DELIVERY MODE
12/09/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NORMAND BERUBE
____________

Appeal 2012-0087611
Application 11/589,083
Technology Center 3700
____________

Before ANTON W. FETTING, PHILIP J. HOFFMANN, and
GEORGE R. HOSKINS, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
1, 2, 5–13, and 16–21.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
According to the Specification, Appellant’s “invention relates to a
method and apparatus for conducting a lottery game. More particularly, the
invention relates to a method and apparatus for selecting a combination that

1 Appellant identifies Les Developpements Aurifossor Inc., as the real party
in interest. See Appeal Br. 1.
2 Our decision references Appellant’s Specification (“Spec.,” filed Oct. 30,
2006) and Appeal Brief (“Appeal Br.,” filed Feb. 22, 2012), as well as the
Examiner’s Answer (“Answer,” mailed Apr. 12, 2012).
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will constitute a lottery ticket for a subsequent lottery draw.” Spec. ¶ 2.
Claims 1 and 11 are the only independent claims under appeal. We
reproduce, below, claims 1 and 11 as representative of the claims on appeal.
1. A computer-implemented method for
providing a ticket having a ticket combination to
participate in a lottery draw, said method
comprising executing on a processor a set of
instructions for:
receiving a list of predetermined elements, said
ticket combination to be a subset of the elements
of said list;
providing a computer-controlled interactive game
to be played by at least a primary player, said
game having a plurality of possible outcomes, the
interactive game comprising at least two parties
competing against each other in a sporting event,
the primary player selecting one of the at least two
parties and participating in the interactive game as
the selected party;
selecting elements of said ticket combination at
least partly non-randomly by selecting from the list
of the predetermined elements at least one element
that is associated with a winning party, an element
associated with a losing party being excluded from
the ticket combination, each one of the plurality of
possible outcomes being associated with a
different element selection of said ticket
combination; and
providing said ticket having said ticket
combination for participating in said lottery draw,
whereby said ticket combination is a participating
combination in said lottery draw for a lottery draw
participant.
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11. A system for providing a ticket having a
ticket combination to participate in a lottery draw,
said ticket combination being a subset of elements
selected among a list of predetermined elements,
said system comprising:
a gaming module for at least a primary player to
play a computer-controlled interactive game
having a plurality of possible outcomes, the
computer-controlled interactive game comprising
at least two parties competing against each other in
a sporting event, the primary player selecting one
of the at least two parties and participating in the
interactive game as the selected party;
a ticket combination generator for determining the
elements of said list to be included in said ticket
combination at least partly non-randomly by
selecting from the list of the predetermined
elements at least one element that is associated
with a winning party, an element associated with a
losing party being excluded from the ticket
combination, each one of the plurality of possible
outcomes being associated with a different element
selection of said ticket combination; and
a ticket provider for providing a ticket having said
ticket combination for use in said lottery draw,
whereby said ticket combination is a participating
combination in said lottery draw for a lottery draw
participant.
REJECTION AND PRIOR ART
The Examiner rejects claims 1, 2, 5–13, and 16–21 under 35 U.S.C.
§ 102(e) as anticipated by Baerlocher (US 2006/0040735 A1, pub. Feb. 23,
2006).

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ANALYSIS
Independent claim 1 requires the following claim limitations:
receiving a list of predetermined elements, said
ticket combination to be a subset of the elements of
said list;
providing a computer-controlled interactive game
to be played by at least a primary player, said
game having a plurality of possible outcomes, the
interactive game comprising at least two parties
competing against each other in a sporting event,
the primary player selecting one of the at least two
parties and participating in the interactive game as
the selected party;
selecting elements of said ticket combination at
least partly non-randomly by selecting from the list
of the predetermined elements at least one element
that is associated with a winning party, an element
associated with a losing party being excluded from
the ticket combination, each one of the plurality of
possible outcomes being associated with a
different element selection of said ticket
combination; and
providing said ticket having said ticket
combination for participating in said lottery draw.
Appeal Br., Claims App. (emphases added). The Examiner states:
In paragraph [0031], Baerlocher discloses a lottery
in which a number from 1 to 10 is drawn to
determine which participants in an interactive
game get to play in a wagering game:
[E]ach player has a probability of being provided
the wagering game based on how that player did in
the interactive game or based on the outcome in
the interactive game. The players who did better
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in the interactive game have greater chances of
playing the wagering game. . . . For instance . . .
[t]he first place player assigned the numbers 1 to 4,
the second place player is assigned the numbers 5
to 7, the third place player is assigned the numbers
8 to 9 and the fourth place player is assigned the
number 10.
Therefore, the predetermined elements are the
numbers 1 through 10, and the subset is the
numbers actually assigned to the player based on
his/her interactive game performance.
Answer 8, citing Baerlocher ¶ 31; see also Answer 4–5, 8–9. As Appellant
points out, however, the Examiner does not establish that Baerlocher
discloses providing a ticket for a lottery draw, which has a ticket
combination including elements corresponding to an interactive game’s
winning party. Instead, the Examiner establishes only that Baerlocher
discloses a player’s placement in an interactive game determines both the
player’s number of chances (i.e., 1, 2, 3, or 4) as well as the player’s
potentially-winning number or numbers (i.e., 10, 8 and 9, 5–7, and 1–4) that
are assigned to that player, and that if a number belonging to the player is
subsequently chosen the player is awarded or is permitted to play a wagering
game. Thus, as Appellant explains:
[T]he player that ranks fourth gets a ticket with the
number “10”. This number is not “associated with
a winning party” of the interactive game, it is
associated with the fourth place finisher. The
method described by Baerlocher, . . . therefore
comes down to the outcome of the interactive
game having an impact on the probability of
playing the wagering game, not a method for
providing a unique ticket combination whereby at
least one element of the ticket combination is
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associated with a winning party of the interactive
game.
Appeal Br. 4. For these reasons, we do not sustain the rejection of claim 1.
Inasmuch as claims 2 and 5–10 depend from claim 1, we also do not
sustain the rejection of the dependent claims.
With respect to independent claim 11 and claims 12, 13, and 16–21
depending therefrom, Appellant argues the claims are allowable for the same
reasons as claim 1. See Appeal Br. 2 (“For the purposes of simplifying the
Appeal, all claims should be taken as one group.”); see also id. at 6–8.
While claim 1 recites a method, claim 11 recites “[a] system for providing a
ticket having a ticket combination to participate in a lottery draw.” Appeal
Br., Claims App. (emphasis added). In this case, the only structural
limitations of independent claim 11 are “a gaming module,” “a ticket
combination generator,” and “a ticket provider.” Id. The remainder of the
claim language recites limitations on how these components are
programmed to operate. For example, claim 11 recites the gaming module
being “for at least a primary player to play a computer-controlled interactive
game having a plurality of possible outcomes . . . [and] comprising at least
two parties competing against each other in a sporting event,” the ticket
combination generator being “for determining the elements of said list to be
included in said ticket combination at least partly non-randomly by selecting
from the list of the predetermined elements at least one element that is
associated with a winning party,” and the ticket provider being “for
providing a ticket having said ticket combination for use in said lottery
draw.” Id. Nevertheless, Appellant does not establish that such recitations
related to operation of the gaming module, the ticket combination generator,
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and the ticket provider impose any structural limitations on the module,
generator, or provider.
The Examiner identifies in Baerlocher a gaming module, a ticket
combination generator, and a ticket provider. See Answer 6, 8–9. The
structure of Baerlocher identified by the Examiner appears at least to be
capable of operating as required by claim 11, even if Baerlocher’s
components do not operate as required by the claim. “It is well settled that
the recitation of a new intended use for an old product does not make a claim
to that old product patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed.
Cir. 1997) (citations omitted). Thus, to overcome the rejection, Baerlocher’s
gaming module, ticket combination generator, and ticket provider must be
unsuited for operating as required by claim 11. Inasmuch as Appellant does
not establish that Baerlocher’s gaming module, ticket combination
generator, and ticket provider are unable to operate as claimed, we are not
persuaded that the rejection is in error.
Based on the foregoing, we sustain the rejection of claims 11– 13 and
16–21.

DECISION
The Examiner’s rejection of claims 1, 2, and 5–10 under 35 U.S.C.
§ 102(e) is REVERSED.
The Examiner’s rejection of claims 11–13 and 16–21 under 35 U.S.C.
§ 102(e) is AFFIRMED.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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