Ex Parte Borowski et al

Patent Trial and Appeal Board

Oct 9, 2012

10262788 (P.T.A.B. Oct. 9, 2012)

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.
10/262,788 10/02/2002 Joseph Carl Borowski JR. SGI-0514 2675
7590 10/10/2012
Dority & Manning, P.A.
P.O. Box 1449
Greenville, SC 29602
EXAMINER
GRABOWSKI, KYLE ROBERT
ART UNIT PAPER NUMBER
3725
MAIL DATE DELIVERY MODE
10/10/2012 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 JOSEPH CARL BOROWSKI, JR. and CARLA SCHAEFER
_________________
Appeal 2010-009486
Application 10/262,788
Technology Center 3700
_________________

Before KEN B. BARRETT, PHILLIP J. KAUFFMAN, and
BARRY GROSSMAN, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a lottery
ticket. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM the
rejection of claims 4, 6, 7, and 10-13.

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Application 10/262,788

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STATEMENT OF THE CASE
The claimed invention is directed to a lottery ticket having multiple
panels which may be folded one upon the other.
The result of the claimed structure, when folded, provides a lottery
ticket having a staggered, sequentially increasing size arrangement of the
panels. It is this staggered overlay of multiple panels which the Appellants
refer to as a three-dimensional arrangement and visual display. (Br. 5; Spec.
fig. 5).
The rejection of claims 4, 6, 7, and 10-13 is on appeal. Claim 13, the
only independent claim, reproduced below is illustrative of the claimed
subject matter:
13. A lottery ticket having a multi-panel visual display, said
lottery ticket consisting essentially of four panels with each
panel having a front face and a rear face, with the panels being
foldable from an open position showing each front face of each
panel to a closed position showing the visual display of faces
from at least three of the panels, wherein the four panels when
viewed in an open position from left to right correspond
sequentially to a first panel, second panel, third panel and
fourth panel, wherein the fourth panel is larger in size than the
second panel, the second panel is larger in size than the first
panel, and the first panel is larger than or equal in size of the
third panel; and at least one game area containing a lottery
game appearing on at least one of the panels.

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THE REJECTION
Claims 4, 6, 7, and 10-13 stand rejected under 35 U.S.C. §103(a) as
unpatentable over Stern (US 6,267,233 B1, iss. Jul. 31, 2001) and Heninger
(US 5,125,689, iss. Jun. 30, 1992).

CONTENTIONS AND ISSUE
Appellants argue claims 4, 6, 7, and 10-13 as a group, and we select
independent claim 13 as representative.1 Br. 9; see 37 C.F.R.
§ 41.37(c)(1)(vii)(2011). Claims 4, 6, 7, and 10-12 stand or fall with claim
13. 37 C.F.R. § 41.37 (c)(1)(vii)
Independent claim 13 specifies the size relationship between the four
interconnected panels. It is this staggered overlay of multiple panels which
the Appellants refer to as a three-dimensional arrangement and visual
display. (Br. 5; Spec. fig. 5).
The Examiner found that Stern discloses the subject matter of
independent claim 13 except (1) the panel sizing specified and (2) the indicia
being associated with a lottery ticket.

1 With regard to claims 4, 6-7 and 10-12, which depend directly or indirectly
from independent claim 13, Appellant merely states that some or all of the
dependent claims “may possess” features that are independently patentable.
Br. 9. Such an assertion does not rise to the level of separate argument. In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board
reasonably interpreted 37 C.F.R. § 41.37 (c)(1)(vii) as requiring “more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art”).
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Concerning panel sizing, in the embodiment shown in Figure 3,
Stern’s fourth panel is the smallest of his panels, while the claimed fourth
panel is the largest of the panels. The Examiner concluded that it would
have been an obvious matter of design choice to make the fourth panel the
largest of the panels since such a modification would have involved a mere
change in the size of the panel. Ans. 3.
Concerning the indicia, Stern does not disclose at least one of the
panels including at least one game area containing a lottery game. See Ans.
4. The Examiner found that Heninger discloses panels having lottery ticket
indicia. Ans. 5, 8; See also, e.g., Heninger col. 1, ll. 1-13, and Fig. 4. The
Examiner concluded that it would have been obvious to a person of ordinary
skill in the art to incorporate at least one game area containing a lottery
game on at least one of the panels of Stern, as disclosed by Heninger. Ans.
4.
Appellant does not contest the Examiner’s findings, and therefore we
accept them as fact. See Br. passim; see also Ex Parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) (the BPAI “reviews the obviousness
rejection[s] for error based upon the issues identified by appellant, and in
light of the arguments and evidence produced thereon,” and treats arguments
not made as waived). Further, Appellants do not challenge the second
proposed modification to incorporate at least one of the panels including at
least one game area containing a lottery game, as disclosed by Heninger.
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Thus, the issue presented by this case is whether the modification of
Stern’s fourth panel to have the relative size called for in claim 13 would
have been an obvious matter of design choice.

ANALYSIS
Appellants argue that the specific relative sizing of the panels set forth
in independent claim 13 is critical to the invention and would not have been
an obvious matter of design choice for three primary reasons.
First, Appellants contend that since the claimed lottery ticket performs
a different function than the admission ticket receptacle disclosed in Stern,
the modification would not have been a matter of design choice. (Br. 4-6,
citing Gardner v. TEC Systems, Inc., 725 F.2d 1338 (Fed. Cir. 1984)).
Specifically, Appellants argue that the claimed ticket differs in function in
that it provides: an enhanced visual feature, enhance gaming functionality by
accommodating lottery games playable with multiple panels, and improved
security in that all games are out of view. Br. 4-6.
The enhanced visual feature of claim 13 relates to ornamentation only,
and therefore does not serve to patentably distinguish the subject matter of
claim 13 over the prior art. See In re Seid, 161 F.2d 229, 231 (CCPA 1947).
The enhanced gaming functionality by accommodating lottery games
playable with multiple panels is a feature tied to having multiple panels (as
does Stern) and is not tied to the relative dimensions of those panels.
Likewise, the improved security is not tied to the relative dimensions of each
panel recited in claim 13 since all the lottery game indicia is out of view on
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the folded panels. For example, games may positioned out of view on a
multiple panel ticket that does not have the relative panel sizes called for in
claim 13. Thus, this argument is not persuasive.
Second, according to Appellants, Stern teaches away from the claimed
invention because Stern discloses that the smallest panel must be one of the
end panels as opposed to an interior panel as claimed. (Br. 7-8). Stern
discloses multiple embodiments wherein the panels are of various sizes to
accommodate the specific function of the foldable substrate. For example,
note the embodiments disclosed in Figures 8, 12, 15, 18, 20, and 26 all
showing panels of varying sizes to suit a specific desired folded
configuration. Moreover, Stern discloses that the admission tickets to be
held in the flap are subject to a variation of form, size, and structure (col. 1,
ll. 47-49), thus suggesting that the size of the end panel, i.e., flap 40, and
other panels may also be of various form, size, and structure if it is to hold
the admission ticket. Thus, contrary to Appellants’ argument, Stern does not
require that the smallest panel be one of the end panels. (Stern, figs. 18, 20
depicting an end panel that is not the smallest panel).
Third, Appellants argue that a person of ordinary skill in the art would
not have made the proposed modification because “it is an essential feature
of the Heninger package that all panels are of equal size so that the
information within the package is concealed until purchase.” Br. 8. We
disagree with Appellants’ characterization of Heninger. Heninger discloses
that in one embodiment of the disclosed invention the four panels are of
equal size (col. 1, ll. 54-57; col. 2, ll. 59-60). However, nowhere does
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Heninger disclose or suggest that it is essential that the panels are of equal
size. The claims of Heninger, which are part of the disclosure, do not
require that the panels are of equal size. As stated previously, the
Examiner’s reliance on Heninger is simply for the disclosure that the indicia
printed on a multi-panel substrate may be lottery game indicia, coupons, or
other promotional information (col. 1, ll. 50-52; Ans. 4).
Accordingly, we sustain the rejection of independent claim 13.
Claims 4, 6, 7, and 10-12 fall with claim 13.

SUMMARY
We affirm the Examiner’s rejection of claims 4, 6, 7, and 10-13.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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