11206598 (B.P.A.I. Dec. 14, 2011)

Ex Parte Noyes

Board of Patent Appeals and InterferencesDec 14, 2011

11206598 (B.P.A.I. Dec. 14, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/206,598 08/18/2005 Frederick D. Noyes 31934US01 7239 47231 7590 12/14/2011 PATRICK R. SCANLON PRETI FLAHERTY BELIVEAU & PACHIOS LLP ONE CITY CENTER PORTLAND, ME 04112-9546 EXAMINER DENNIS, MICHAEL DAVID ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 12/14/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte FREDERICK D. NOYES ____________________ Appeal 2009-011206 Application 11/206,598 Technology Center 3700 ____________________ Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and MICHAEL W. KIM, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-011206 Application 11/206,598 2 STATEMENT OF CASE Appellant seeks our review under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1-17. We reverse. THE CLAIMED INVENTION Appellant claims a variation of a standard card game such as Texas Hold ‘Em (Specification 1:3-4). Claims 1 and 6 are illustrative of the claimed subject matter: 1. A method of playing a card game, said method comprising: playing out a basic play component of said game so as to determine at least one winning hand; pitting said winning hand against a specially dealt showdown hand that is not used in said basic play component to determine said winning hand; and awarding a jackpot to the player holding said winning hand if said showdown hand beats said winning hand based on a pre-established ranking of hands. 6. A method of playing a card game, said method comprising: allowing players to place a bet of a predetermined amount into a jackpot; dealing a predetermined number of initial cards to each player; dealing a number of community cards, wherein players are able to use any combination of said community cards and their initial cards to establish a hand; determining a winning hand from amongst all of the player's hands; dealing a number of additional cards; Appeal 2009-011206 Application 11/206,598 3 establishing a showdown hand from said additional cards and said community cards; comparing said winning hand to said showdown hand; and awarding said jackpot to the player holding said winning hand if said showdown hand beats said winning hand based on a pre-established ranking of hands. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Scott US 6,102,402 Aug. 15, 2000 Rommerdahl Boylan US 2002/0103018 A1 US 2005/0285340 A1 Aug. 1, 2002 Dec. 29, 2005 REJECTIONS The following rejections are before us for review. The Examiner rejected claims 1-3, 6-13, and 17 under 35 U.S.C. § 102(b) over Scott. The Examiner rejected claims 4, 14, and 15 under 35 U.S.C. § 103(a) over Scott and Rommerdahl. The Examiner rejected claims claim 5 and 16 under 35 U.S.C. § 103(a) over Scott and Boylan. ISSUES Did the Examiner err in rejecting claims 1 and 6 under 35 U.S.C. § 102(b) as being anticipated by Scott disclosing a winning hand that is awarded a jackpot after being beat by a showdown hand? At issue is whether the losing hand in Scott that is eligible for the showdown “bad beat Appeal 2009-011206 Application 11/206,598 4 jackpot” is first considered a winning hand, before the showdown/bad-beat jackpot, by virtue of meeting several qualifying criteria to be eligible for the bad beat jackpot. FINDINGS OF FACT We find the following facts by a preponderance of the evidence. 1. The Examiner found a winning hand when the qualification criteria for a “bad beat jackpot” is met, stating, “the basic play component is construed to have a winning hand of the basic play component when each of the three aforementioned conditions is met ...” (Ans. 4). 2. Scott discloses a “showdown hand” at its “bad beat jackpot” in that “[i]f the player has a high ranking hand and still loses to the dealer, the player can win a ‘bad beat’ jackpot.” (Col. 2 ll. 36-38). 3. The Specification describes by example how a “winning hand” is determined, stating, the “five-card hands of the remaining players are then compared so that the winning hand can be determined. The winning hand is determined based on a pre-established ranking of hands, which is preferably the standard poker ranking ...” (¶ [0016]). ANALYSIS Claims 1-5 Independent claim 1 requires “a winning hand” from a basic play component of a game, in combination with a separate “showdown” hand where the player with the winning hand must be beaten by the showdown hand to ultimately be awarded a jackpot. The Examiner rejected the claim as anticipated by Scott, where a card game hand may qualify for a “bad Appeal 2009-011206 Application 11/206,598 5 beat” jackpot, which jackpot is possible when the player’s hand is at first not a winning hand (FF 1). Thus, the Examiner found the player’s losing hand, which qualifies to be considered for the bad beat jackpot, as a winning hand in a basic play component (Ans. 4). The Examiner then found a showdown hand at the bad beat jackpot, where the player’s hand must be beaten by the showdown hand to win. (Ans. 4). Appellant argues “[n]either the qualifying hand nor the dealer’s hand is necessarily a winning hand.” (Appeal Br. 5). We agree, because Scott discloses that a player’s hand may qualify for the bad beat jackpot (where losing to the dealer’s hand wins the jackpot), but clearly states, “[i]f the player has a high ranking hand and still loses to the dealer, the player can win a ‘bad beat’ jackpot” (FF 2). Thus, in Scott, the hand which qualifies for the bad beat jackpot/showdown hand must first lose. This does not meet the description of how a winning hand is determined which is that the “winning hand is determined based on a pre- established ranking of hands, which is preferably the standard poker ranking” (FF 3). We therefore cannot sustain the rejection of claim 1, because the qualifying hand in Scott is not “a winning hand.” Since claims 2-5 depend from claim 1, and since we cannot sustain the rejection of claim 1, the rejection of claims 2-5 likewise cannot be sustained. Claims 6-17 Independent claim 6 requires “determining a winning hand from amongst all of the player's hands… comparing said winning hand to said showdown hand; and Appeal 2009-011206 Application 11/206,598 6 awarding said jackpot to the player holding said winning hand if said showdown hand beats said winning hand based on a pre-established ranking of hands.” Claim 6 is rejected along with claim 1 (Ans. 3-5). Appellant argues Scott does not disclose all the claim limitations because in Scott are two instances where a player wins a jackpot, but neither jackpot is based on a winning hand in combination with a showdown hand: In the first instance, the player wins a payout if the player's hand beats or ties the dealer's hand and the player's hand comprises at least a Four-of-a-Kind or better. In the second instance, the so-called "bad beat" feature, the player wins a payout if the player's hand loses to the dealer's hand and the player has a high ranking poker hand. Thus, even assuming for the sake of argument that the dealer's hand is a "showdown hand," neither instance results in an additional payout being given to a player holding a winning hand if the showdown hand (i.e., the dealer's hand) beats the winning hand, as required by claim 6. In the first instance, the player is holding a winning hand, but the showdown hand (i.e., the dealer's hand) does not beat the winning hand. The player's hand is a winning hand because it has beaten the dealer's hand. In the second instance, the player is not holding a winning hand, the hand having been beaten by the dealer's hand. (Appeal Br. 10-11). We agree, substantially for the reasons set forth at claim 1 above, because there is no winning hand in Scott that wins a jackpot by being beat by a showdown hand. We therefore cannot sustain the rejection of claim 6, because the qualifying hand in Scott is not “a winning hand.” Since claims 7-17 depend from claim 6, and since we cannot sustain the rejection of claim 6, the rejection of claims 7-17 likewise cannot be sustained. Appeal 2009-011206 Application 11/206,598 7 CONCLUSIONS OF LAW The Examiner erred in rejecting claims 1-3, 6-13, and 17 under 35 U.S.C. § 102(b) over Scott. The Examiner erred in rejecting claims 4, 14, and 15 under 35 U.S.C. § 103(a) over Scott and Rommerdahl. The Examiner erred in rejecting claims 5 and 16 under 35 U.S.C. § 103(a) over Scott and Boylan. DECISION For the above reasons, the Examiner’s rejection of claims 1-17 is REVERSED. REVERSED MP