Ex Parte Carbonaro

Patent Trial and Appeal Board

Feb 28, 2013

12285125 (P.T.A.B. Feb. 28, 2013)

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.
12/285,125 09/29/2008 Anthony M. Carbonaro 29205.02 4812
37833 7590 03/01/2013
LITMAN LAW OFFICES, LTD.
PATENT LAW BUILDING
8955 CENTER STREET
MANASSAS, VA 20110
EXAMINER
LAYNO, BENJAMIN
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
03/01/2013 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 ANTHONY M. CARBONARO
____________

Appeal 2012-004472
Application 12/285,125
Technology Center 3700
____________

Before EDWARD A. BROWN, ANNETTE R. REIMERS and
BRADFORD E. KILE, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-004472
Application 12/285,125

2
STATEMENT OF THE CASE
Anthony M. Carbonaro (Appellant) appeals under 35 U.S.C. § 134
from the Examiner’s decision to reject claims 1 and 3-16 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter. Claim 2 has been
canceled. Claims 17-24 have been withdrawn from consideration. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
THE INVENTION
Appellant’s invention relates to a roulette game having numbers in
repeating or random sequences with identical numbers having different
colors. Spec., para. [0001]; figs. 7, 9.
Claim 1, the sole independent claim, is illustrative of the claimed
invention and reads as follows:
1. A method of playing a roulette game, comprising
the steps of:
providing a roulette wheel having a plurality of
primary wagering positions and at least one supplemental
wagering position disposed peripherally about the wheel,
each of the primary wagering positions having a
numerical indicium and an index indicium combination
displayed thereon, the numerical indicium being selected
from a set of mutually distinct numerical indicia, the
index indicium being selected from a group of at least
three mutually distinct background colors, each of said
primary wagering positions comprising one of said
numerical indicia displayed on a background of at least
one of the background colors wherein the primary
wagering positions are arranged in at least two sets, each
of the sets consisting of ten contiguous wagering
positions, each of the ten wagering positions in each set
having a numerical indicium displayed on one of the at
Appeal 2012-004472
Application 12/285,125

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least three background colors whereby the at least three
background colors appear at least three times in each set;
providing a betting layout including a first betting
area having a plurality of betting positions distinguished
by unique numerical indicium and index indicium
combinations corresponding to the primary wagering
positions displayed thereon, and a second betting area
having at least one supplemental indicium displayed
thereon corresponding to the at least one supplemental
wagering position;
placing at least one wager upon at least one of the
wagering positions of the roulette wheel, the wager being
placed by each participating player on a betting area,
wherein the step of placing the wager is executed on a
betting layout including a first betting area having a
plurality of betting positions distinguished by unique
numerical indicium and index indicium combinations
corresponding to the primary wagering positions
displayed thereon, and a second betting area having at
least one supplemental indicium displayed thereon
corresponding to the at least one supplemental wagering
position;
spinning the roulette wheel, thereby randomly
selecting a winning wagering position on the roulette
wheel;
collecting the entire wager of each player placing a
losing wager;
determining the exact odds of any winning wagers;
and
paying out winning wagers to any winning players
in an amount based upon the exact odds.

ANALYSIS
Appellant argues that the rejection of independent claim 1 and its
respective dependent claims 3-16 under 35 U.S.C. § 101 is improper. Br. 5-
10. According to Appellant, “[Appellant’s] specifically-claimed roulette
Appeal 2012-004472
Application 12/285,125

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wheel and betting areas are specific to perform the betting steps and the
game.” Br. 10 (emphasis in original). In contrast, the Examiner has
determined that the claims have been properly rejected. Ans. 4-11. The
Examiner takes the position that “no machine involving more than
insignificant extra-solution activity is required to perform the claimed
method steps, nor do the steps result in any transformation of a particular
article, [the method steps] are indicators that [Appellant is] attempting to
patent an abstract idea. ” Ans. 11.
We agree with Appellant. Independent claim 1 recites physical steps,
which are not abstract ideas or mere mental steps, including: “providing a
roulette wheel”; “providing a betting layout”; “placing at least one wager
upon . . . the roulette wheel”; “spinning the roulette wheel”; “collecting the
entire wager”; and “paying out winning wagers,” and which serve as more
than an abstract idea or insignificant extra-solution activity. For these
reasons, the rejection of independent claim 1 and its respective dependent
claims 3-16 is not sustained.

DECISION
The decision of the Examiner is reversed as to claims 1 and 3-16.

REVERSED

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