Ex Parte Lutnick et al

Patent Trial and Appeal Board

Nov 20, 2017

11680866 (P.T.A.B. Nov. 20, 2017)

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.
11/680,866 03/01/2007 Howard W. Lutnick 07-2136 6013
63710 7590
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
PINHEIRO, JASON PAUL
ART UNIT PAPER NUMBER
3717
NOTIFICATION DATE DELIVERY MODE
11/22/2017 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):
patentdocketing @ cantor.com
lkoro vich @ c antor. com
phowe @ cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOWARD W. LUTNICK, DEAN P. ALDERUCCI,
and GEOFFREY M. GELMAN1
Appeal 2015-004684
Application 11/680,866
Technology Center 3700
Before LYNNE H. BROWNE, JILL D. HILL, and NATHAN A. ENGELS,
Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Howard W. Lutnick et al. (Appellants) appeal under 35U.S.C. § 134
from the rejection of claims 1—5, 11—15, and 32-47. Appellants’
representative presented oral arguments on October 24, 2017. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal 2015-004684
Application 11/680,866
CLAIMED SUBJECT MATTER
Claims 1, 14, and 41 are independent. Claim 1, reproduced below
with emphasis added, is illustrative of the claimed subject matter:
1. A method comprising:
receiving a player identifier from a player device in use
by a player, wherein the player device is a computer operable to
communicate via the Internet;
transmitting to the player device data which encodes a
graphic that depicts a particular type of mobile gaming device,
wherein the graphic that depicts the particular type of mobile
gaming device includes a screen;
receiving an indication of a first bet from the player via
the player device;
transmitting to the player device first data which encodes
a first graphic used in a first game, wherein the first graphic is
presented to the player on the screen of the graphic that depicts
the particular type of mobile gaming device;
generating a first outcome of the first game;
transmitting to the player device an indication of the first
outcome of the first game, wherein the indication of the first
outcome is presented to the player on the screen of the graphic
that depicts the particular type of mobile gaming device;
determining a first payout for the first game based on the
first bet and based on the first outcome;
transmitting to the player device an indication of the first
payout, wherein the indication of the first payout is presented to
the player on the screen of the graphic that depicts the particular
type of mobile gaming device;
receiving the player identifier from a casino device;
receiving an indication of an actual mobile gaming
device provided to the player, wherein the actual mobile
gaming device is of the particular type and has a similar
appearance to or matches an appearance of the graphic that
depicts the particular type of mobile gaming device;
transmitting to the actual mobile gaming device third
data which encodes a third graphic, wherein the third graphic
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Appeal 2015-004684
Application 11/680,866
has an appearance that is based on the appearance of the first
graphic;
receiving an indication of a second bet from the actual
mobile gaming device;
generating a second outcome of a second game, wherein
the second game uses the third graphic;
transmitting to actual mobile gaming device an indication
of the second outcome of the second game;
determining a second payout based on the second
outcome and the second bet; and
adjusting a balance associated with the player based on
the second bet and based on the second payout.
The prior art relied upon by the Examiner in rejecting the claims on
REFERENCES
appeal is:
Wiltshire
Walker
Rowe
Arezina
US 6,409,602 B1 June 25, 2002
US 2002/0151366 A1 Oct. 17, 2002
US 2005/0170890 A1 Aug. 4, 2005
US 8,282,490 B2 Oct. 9, 2012
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Appeal 2015-004684
Application 11/680,866
REJECTIONS2
I. Claims 1—4, 12—15, 37, 40-42, 46, and 47 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Wiltshire and Arezina.3
II. Claims 5,11, 32—36, 38, 43, and 44 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Wiltshire, Arezina, and
Rowe.4
III. Claims 39 and 45 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wiltshire, Arezina, and Walker.
DISCUSSION
Rejection I
The Examiner finds that Wiltshire and Arezina disclose or suggest all
of the limitations of claim 1. Final Act. 3—6. In particular, the Examiner
determines that “Wiltshire does not specifically disclose that the displayed
gaming device is a mobile gaming device,” finds that “Arezina discloses a
gaming system that includes a handheld gaming machine,” and determines
that it would have been obvious “to integrate the teachings of Arezina into
2 In the Advisory Action dated September 12, 2014, the Examiner indicated
that an amendment overcame the rejection of claims 1—5, 11—15, and 32-47
under 35 U.S.C. § 112, second paragraph. Accordingly, that rejection is not
before us in this Appeal.
3 Although the statement of this rejection does not include claims 46 and 47,
these claims are addressed in the rejection. Final Act. 8. Accordingly, we
understand claims 46 and 47 to stand rejected as unpatentable over Wiltshire
and Arezina.
4 Although the statement of this rejection does not include claims 43 and 44,
these claims are addressed in the rejection. Id. at 14. Accordingly, we
understand claims 43 and 44 to stand rejected as unpatentable over
Wiltshire, Arezina, and Rowe.
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Appeal 2015-004684
Application 11/680,866
the teachings of Wiltshire in order to yield the predictable result of creating a
more entertaining and exciting gaming experience, thereby attracting more
players and increasing operator profits.” Id. at 6.
Appellants argue that “[t]he Examiner has provided no reason why
enabling a user to select an image of the handheld gaming machine of
Arezina would provide any additional benefit to the user.” Appeal Br. 8.
Responding to this argument, the Examiner further finds that “it is the
nature of technological advances to replace larger devices with equivalent
alternative devices which are of smaller size.” Ans. 16. Based on this
finding, the Examiner determines that the proposed modification would
“save valuable floor space in a casino, thereby allowing casino operators to
allow for a greater number of gaming device to be available.” Id. The
Examiner further determines that the proposed modification would result in
“a greater number of games in the casinos, thereby attracting more players
and increasing operator profits.” Id. at 17.
In reply to the Examiner’s additional findings, Appellants argue:
Neither Wiltshire nor Arezina provide a reason to replace an
image of an existing device of Wiltshire with an image of the
mobile gaming machine of Arezina since the image of the existing
device can be reduced in size if such a reduction in size is desired
without any need to replace the image of the existing device.
Accordingly, the Examiner’s assertion provides no support
whatsoever for the alleged combination.
Id. at 4.
We agree with Appellants. The Examiner has proffered no reason for
modifying Wiltshire’s method to include the step of “transmitting to the
player device data which encodes a graphic that depicts a particular type of
mobile gaming device” as required by claim 1. See Final Act. 6; see also
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Ans. 16—17. Rather, the rejection merely provides reasoning for running
Wiltshire’s method on Arezina’s mobile device. However, such
modification would not result in a method wherein “a graphic that depicts a
particular type of mobile gaming device” is transmitted to a player. The
Examiner fails to articulate a reason for providing an image of a particular
type of mobile device as required by claim 1. Accordingly, the Examiner
fails to set forth a prima facie case of obviousness.
For this reason, we do not sustain the Examiner’s decision rejecting
claim 1, and claims 2-4, 12, and 13, which depend therefrom. Claim 14 also
requires the step of “transmitting to the player device data which encodes a
graphic that depicts a particular type of mobile gaming device.” Appeal Br.
13 (Claims App.) Accordingly, we do not sustain the Examiner’s decision
rejecting claim 14, and claims 15, 37, 40, which depend therefrom for the
same reason. Claim 41 similarly requires “transmitting to a player device in
use by a player a graphic that depicts an actual mobile gaming device.” Id.
at 15. Thus, we do not sustain the Examiner’s decision rejecting claim 41,
and its dependent claims 42, 46, and 47 either.
Rejections II and III
Claims 5, 11, 32—36, 39, and 43—45 depend from claims 1, 14, or 41.
Accordingly, the rejections of these claims over the combined teachings of
Wiltshire, Arezina, and Rowe, or Wiltshire, Arezina, and Walker suffer from
the same deficiency as the rejection of claims 1, 14, and 41 discussed supra.
Neither Rowe nor Walker cure this deficiency.
We do not sustain the Examiner’s decisions rejecting claims 5, 11,
32-36, 38, 39, and 43^15.
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Application 11/680,866
DECISION
The Examiner’s rejections of claims 1—5, 11—15, and 32-47 are
REVERSED.
REVERSED
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