Ex Parte Harris et al

Patent Trial and Appeal Board

Aug 9, 2013

10892692 (P.T.A.B. Aug. 9, 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.
10/892,692 07/16/2004 Ronnie W. Harris MTO.0065P 3608
32856 7590 08/12/2013
WEIDE & MILLER, LTD.
7251 W. LAKE MEAD BLVD.
SUITE 530
LAS VEGAS, NV 89128
EXAMINER
PIERCE, DAMON JOSEPH
ART UNIT PAPER NUMBER
3718
MAIL DATE DELIVERY MODE
08/12/2013 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 RONNIE W. HARRIS and TED GRAV
____________________

Appeal 2011-005467
Application 10/892,692
Technology Center 3700
____________________

Before: CHARLES N. GREENHUT, BRETT C. MARTIN, and
PATRICK R. SCANLON , Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-005467
Application 10/892,692
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejections of claims
1, 4-9 and 18-23. App. Br. 4. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter new grounds of rejection for claim 23.

The claims are directed to a method and apparatus for awarding wins
for game play. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1 A method of presenting a game comprising the steps of:
designating a plurality of winning outcomes for said
game from a plurality of potential outcomes for said game;
associating an award with each winning outcome, said
each award comprising at least a first award type and in one or
more cases, a second award type, the award associated with
each winning outcome varying depending upon a size of a
wager placed by a player to play said game, wherein said wager
is placed in one or more primary credits, each primary credit
having a first value and wherein said first award type comprises
a number of said primary credits and wherein said second
award type comprises one or more secondary credits, each
secondary credit having a second value, said second value being
a fraction of said first value;
accepting a wager in credits of said first value from each
of at least two players to participate in an instance of the same
game;
presenting said same instance of said game to said at
least two players, each player attempting to obtain a winning
outcome for said game; and
awarding to a player receiving a winning outcome said
award associated therewith, said award comprising credits of
said second value and/or credits of said first value.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
US Pat. 6,279,910 B1 issued Aug. 28, 2001 (“de Keller”)
US Pub. 2005/0187014 A1 published Aug., 25, 2005 (“Saffari”).

REJECTIONS
Claim 23 is rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement. Ans. 4.
Claims 1, 4-9, and 18-23 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Saffari. Ans. 4.
Claims 4 and 21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Saffari and de Keller. Ans. 10.

OPINION
The Examiner rejected claim 23 under 35 U.S.C. § 112, 1st paragraph,
stating that the inserted limitation “said total value represented by a
predetermined number of primary credits” “lacks antecedent basis in the
original specification.” Ans. 4. This is all we know of the Examiner’s
position. The reasons for the Examiner’s rejection are not clear. As
Appellants point out, compliance with the written description requirement is
not merely a matter of using the same language in the claims as that used the
remainder of the Specification. Reply Br. 2. As we are unable to ascertain
the thrust of the Examiner’s rejection, we are constrained to reverse it. In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (citations omitted).
Perhaps the true issue is that the limitation is ambiguous. The claim
requires a plurality of winning outcomes and an award associated with each.
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Thus, the claim requires a plurality of awards. It is not clear whether the
phrase “said each award having a total value” means that the “total value” is
the total sum of each of the awards, meaning that there is one total value, or
the “total value” is that of each award, meaning there must also be a plurality
of total values. Either construction is reasonable and appears to have
descriptive support. However, the ambiguity renders the metes and bounds
of the claim unclear and therefore must be resolved. As such, we are
“justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim unpatentable under 35
U.S.C. § 112, second paragraph, as indefinite.” See Ex Parte Miyazaki, 89
USPQ2d 1207, 1211 (BPAI 2008) (precedential).
We turn to the prior-art rejections. The claims relate to wagering
methods in a gaming machine wherein awards are paid in two
denominations or “credits.” The Examiner correctly determined that the
claims do not expressly require the second value to be lower than the first.
Cf., e.g., Spec. 21-22, para. [0065]. But, if the first and second values are
the same, the “fraction,” as interpreted by the Examiner is “1/1.” Ans. 5, 7.
We recognize that mathematically speaking, any number could be
expressed as a “fraction.” Colloquially, in the context of Appellants’
Specification however, this term would be understood to mean a portion of
the whole. Cf. definitions 1 and 2 in Chambers 21st Century Dictionary.1
Given this interpretation, though not expressly recited, the claim does imply,

1 1. mathematics an expression that indicates one or more equal parts of
a whole, usually represented by a pair of numbers separated by a horizontal
or diagonal line, where the upper number (the numerator) represents the
number of parts selected and the lower number (the denominator) the total
number of parts. Compare integer.
2. a portion; a small part of something.
Retrieved from http://www.credoreference.com/entry/chambdict/fraction
Appeal 2011-005467
Application 10/892,692
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consistent with all of the examples in the Specification, that the second value
is less than the first, or mathematically speaking, the recited “fraction” refers
to a proper one. Thus, we cannot sustain the Examiner’s rejection as
premised on the Examiner’s proffered claim construction.
The Examiner takes an alternate position that since Saffari has one
award of 10 credits and a second award of 2 credits, the second award is a
fractional amount of the first. Ans. 11. This position is clearly untenable
because the claim requires the value of the credit to be a fractional amount,
not the value of the award. App. Br. 19-22. While this distinction may not be
very significant from a payout prospective, all words in a claim must be
considered in judging the patentability of the claimed subject matter. See In
re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). Accordingly, we cannot
sustain the Examiner’s rejection of claims 1, 4-9, and 18-23 on this basis
either.
The Examiner has not explained, and it is not apparent, how the cited
portion of de Keller (Ans. 10 citing col. 3, ll. 54-58), concerning the casino’s
percentage rake, has any relevance to Saffari’s interim and Bingo win
awards. As such, we do not sustain the Examiner’s rejection of claims 4 and
21 as unpatentable over Saffari and de Keller.

DECISION
We enter new grounds of rejection for claim 23 under 35 U.S.C. §
112, second paragraph, as being indefinite.
The Examiner’s rejections are reversed.

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FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2011). 37 C.F.R. § 41.50(b) provides “[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:
(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 proceeding 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. . . .
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).

REVERSED; 37 C.F.R. § 41.50(b)

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