Ex Parte Moody

Board of Patent Appeals and Interferences

Sep 13, 2006

10621768 (B.P.A.I. Sep. 13, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ERNEST W. MOODY
____________

Appeal No. 2006-1909
Application No. 10/621,768
Technology Center 3700
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ON BRIEF
____________

Before BAHR, NAPPI and HORNER, Administrative Patent Judges.
HORNER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the examiner's
final rejection of claims 1-4, all of the claims pending in the application.
We reverse.
Appeal No. 2006-1909 Page 2
Application No. 10/621,768

BACKGROUND
The appellant's invention relates to a method of playing a card game
in which the player is awarded a predetermined amount after a first round of
play based on the player’s final poker hand ranking, the amount of the
player’s wager, and a first pay table. The player may either collect the
award or parlay at least a portion of the award into a second round of play in
which a second pay table is used. Claim 1 is representative of the subject
matter on appeal, and a copy of this claim can be found in the appendix to
the appellant’s brief.
The examiner relies upon the following as evidence of unpatentability:
Moody et al. (Moody) 6,419,578 Jul. 16, 2002
Gajor 6,443,456 Sep. 03, 2002
The appellant seeks our review of the examiner’s rejection of claims
1-4 under the judicially-created doctrine of obviousness-type double
patenting as being unpatentable over claims 1-24 of Moody in view of
Gajor.
Rather than reiterate in detail the conflicting viewpoints advanced by
the examiner and the appellant regarding this appeal, we make reference to
the examiner's answer (mailed April 25, 2005) for the examiner's complete
reasoning in support of the rejection and to the appellant's brief (filed
January 12, 2005) for the appellant's arguments.
Appeal No. 2006-1909 Page 3
Application No. 10/621,768

OPINION
In reaching our decision in this appeal, we have carefully considered
the appellant’s specification and claims, the applied prior art, and the
respective positions articulated by the appellant and the examiner. As a
consequence of our review, we make the determinations that follow. It is
our view that, after consideration of the record before us, the examiner has
failed to make a prima facie showing of obviousness-type double patenting
of the claimed invention in view of claims 1-24 of Moody in view of Gajor.
In the rejection of independent claim 1, the examiner has determined
that the patented claims 1-24 of Moody “set forth the same invention of
substantially the same scope as pending claim 1 except that the invention of
patented claims 1-24 lack the parlay feature.” The examiner relies on Gajor
for support that “it is well known in the art to use a parlay feature in game
play to provide players with additional wagering options.” (Examiner’s
Answer, p. 4). The examiner concludes, “[I]t would have been obvious to
one of ordinary skill in the art to modify the patented method of play of
claims 1-24 by including a parlay feature for game play in order to increase
the potential payout. (Examiner’s Answer, p. 5).
The appellant provides two arguments to rebut the obviousness-type
double patenting rejection. First, the appellant contends the invention of
claims 1-24 of Moody does not make any bonus event determinations based
on the final five card hand of the player. Rather, the bonus determination of
the Moody claims is based on the initial five cards in the player’s hand.
(Appellant’s Brief, p. 5). The appellant thus concludes that the examiner has
Appeal No. 2006-1909 Page 4
Application No. 10/621,768

failed to make a prima facie case that it would have been obvious to modify
any of the methods of play of claims 1-24 of Moody to use the player’s final
five card hand to determine bonus events. (Appellant’s Brief, p. 8).
Second, the appellant argues that neither the Moody claims nor Gajor
teach or suggest a game in which the bonus event is a second round play
using a pay table with a different overall game return than the pay table used
in the first round of play. (Appellant’s Brief, p. 6). The appellant thus
argues that even if the teachings of Gajor were combined with claims 1-24
of Moody, this combination does not meet the limitation of claims 1-4.
Moody does not include a parlay feature at all, as admitted by the examiner,
and Gajor’s parlay wager is an additional wager on a separate outcome that
may occur in the first round. (Appellant’s Brief, pp. 6-7). Gajor’s method
does not use the player’s winnings from the first round of play toward a
second round of play that uses a pay table that has a different overall game
return than the first pay table from the first round of play. (Appellant’s
Brief, pp. 7-8). The appellant thus argues that the examiner has failed to
make a prima face case that it would have been obvious to modify any of the
methods of play of claims 1-24 of Moody to: (1) use at least a portion of the
player’s winnings from the first round of play in a second round of play, and
(2) use a second pay table in the second round of play that has a different
overall game return than the pay table used in the first round of play.
(Appellant’s Brief, pp. 8-9).
We reverse the examiner’s rejection.
Appeal No. 2006-1909 Page 5
Application No. 10/621,768

The issue to consider when determining whether a nonstatutory basis
exists for a double patenting rejection is whether any claim in the application
defines an invention that is merely an obvious variation of an invention
claimed in another patent.1 The analysis employed in an obviousness-type
double patenting determination parallels the guidelines for an obviousness
determination under 35 U.S.C. § 103(a). In re Braat, 937 F.2d 589, 593-94,
19 USPQ2d 1289, 1292-93 (Fed. Cir. 1991); see also In re Longi, 759 F.2d
887, 892 n. 4, 225 USPQ 645, 648 n.4 (Fed. Cir. 1985). As such, to
determine obviousness we consider the factors set forth in Graham v. John
Deere Co., 383 U.S. 1, 17 (1966), viz., (1) the scope and content of the prior
art; (2) the differences between the prior art and the claims at issue; and (3)
the level of ordinary skill in the art.2 In this case, the “prior art” being
considered is claims 1-24 of Moody in view of Gajor.
Claims 1-24 of Moody recite displaying an initial first hand of five
cards to a player. If the player’s initial five card hand contains a certain pre-
selected arrangement of cards, the player is given a bonus event, i.e., the
option of using a second pay table in place of the first pay table during the
first round of play (claim 1), awarding the player a second hand of five cards
(claim 16), or awarding the player bonus rounds of play (claim 22).

1 In this case, since the application at issue was filed later than the Moody patent, only a one-way
determination of obviousness is needed in resolving the issue of double patenting, i.e., whether
the invention defined in a claim in the application would have been an obvious variation of the
invention defined in a claim in the patent. M.P.E.P. § 804 (August 2001).
2 Although Graham also suggests analysis of secondary considerations such as commercial
success, long felt but unsolved needs, failure of others, etc., the appellant presented no such
evidence of secondary considerations for the Board’s consideration.
Appeal No. 2006-1909 Page 6
Application No. 10/621,768

Moody’s claims do not recite allowing the player the option to use a second
pay table during a second round of play.
Gajor discloses providing a player in a video poker game with a
parlay option when a player is playing multiple hands of the game
simultaneously. The parlay option allows the player to obtain a larger
payoff by combining multiple winning hands. If a player draws winning
hands on more than one hand, he wins more than a player who selects to
receive a straight payoff option that pays a normal payoff for each winning
hand. This parlay option offers the player a second, higher pay table for
multiple winning hands during the first round of play. Gajor fails to teach or
suggest paying out the winnings on a first round of play using a first pay
table and then allowing the user to play another round using a second pay
table.
As such, we find that neither the Moody claims nor Gajor teach or
suggest allowing a player with a winning hand in a first round of play to
parlay a portion of the award to use in a second round of play using a second
pay table that is different than the first pay table used in the first round of
play. The examiner has failed to provide a clear articulation of why one of
ordinary skill in the art at the time of the invention, with the knowledge of
the teachings of the Moody claims and Gajor, would have been led to the
invention recited in the pending claims. The only reasoning provided by the
examiner was that one would be motivated to include a parlay feature to
increase the potential payout. We note, however, that there are many ways
to include a parlay feature that differ from the parlay method claimed, as
Appeal No. 2006-1909 Page 7
Application No. 10/621,768

demonstrated in Gajor. As such, we do not see, absent hindsight
reconstruction, how the Moody claims in view of the teachings of Gajor
would have led one of ordinary skill in the art to the invention as recited in
claims 1-4. Accordingly, we reverse the examiner’s rejection of claims 1-4.
Appeal No. 2006-1909 Page 8
Application No. 10/621,768

CONCLUSION
To summarize, the decision of the examiner to reject claims 1-4 is reversed.
REVERSED

)
JENNIFER D. BAHR )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ROBERT E. NAPPI ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LINDA E. HORNER )
Administrative Patent Judge )

Appeal No. 2006-1909 Page 9
Application No. 10/621,768

JOHN EDWARD ROETHEL
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