Ex Parte Ottofy

Board of Patent Appeals and Interferences

May 27, 2010

10705310 (B.P.A.I. May. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GLYN OTTOFY
____________

Appeal 2009-005191
Application 10/705,310
Technology Center 3700
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Decided: May 27, 2010
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Before, MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1-5, 7-16 and 18-20. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002). An Oral Hearing was held on May 6, 2010.

SUMMARY OF DECISION
We AFFIRM IN PART; 37 C.F.R. § 41.50(b).

THE INVENTION
Appellant claims a system and method for “playing a team gaming
tournament that allows players the opportunity to form teams of one or more
players in order to allow a team's performance in a card game tournament to be
dependent on both the performance of each individual member of the team as well
as the number of players on each team.” (Specification 1:5-9)
Claim 11, reproduced below, is representative of the subject matter on
appeal.
11. A method for playing a team gaming tournament
comprising, in combination, the steps of:
providing a computer network including a server
and at least one end-user computer coupled to said server
via a network connection;
wherein said end-user computer has a graphical
display portion adapted to display a browser window;
displaying a live game of a poker gaming
tournament in said browser window;
permitting a plurality of users to enter said game of
said gaming tournament to play against one another;
forming a plurality of teams of at least one user
from said plurality of users entered in said gaming
tournament;
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sending user input from said plurality of users to
said server; and
calculating a placement finish for each of said
plurality of teams in said gaming tournament in
conformity with a predetermined formula having
dependence on both a number of users on each of said
plurality of teams and a performance of each said
plurality of users.

THE REJECTION
The Examiner relies upon the following as evidence of unpatentability:
Marks 5,755,621 May 26, 1998
Walker 6,142,872 Nov. 7, 2000
The following rejections are before us for review.
1. The Examiner rejected claims l, 4-5, 7, 10-12, 15-16 and 18 as
unpatentable under 35 U.S.C. § 102(b) over Walker.
2. The Examiner rejected claims 8-9 and 19-20 as unpatentable under
35 U.S.C. § 103(a) over Walker.
3. The Examiner rejected claims 2-3 and 13-14 as unpatentable under
35 U.S.C. § 103(a) Walker in view of Marks.
ISSUE
Has Appellant shown that the Examiner erred in rejecting claims l, 4-5, 7,
10-12, 15-16 and 18 as unpatentable under 35 U.S.C. § 102(b) over Walker on the
grounds that a person with ordinary skill in the art would understand that bluffing
is a required part of the game of poker?
Has Appellant shown that the Examiner erred in rejecting claims 8-9 and
19-20 as unpatentable under 35 U.S.C. § 103(a) over Walker on the ground that
a person with ordinary skill in the art would understand that a casino has only a
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given number of video poker machines available and this number will limit the
number of players who can play?

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631
(Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).
“Section 103 forbids issuance of a patent when ‘the differences between
the subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.’” KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is
resolved on the basis of underlying factual determinations including (1) the scope
and content of the prior art, (2) any differences between the claimed subject matter
and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-
called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 550 U.S. at 407 (“While the sequence of these questions
might be reordered in any particular case, the [Graham] factors continue to define
the inquiry that controls.”)
FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. Walker discloses
As previously indicated, the present invention may be
applied to video poker machines, as well as to the
illustrative slot machines 300-303. In a video poker
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implementation, the game results of each player on a
given team are combined, and the result providing the
highest payout, is provided to each of the team members.
The game results of each player on a given team may be
combined, for example, by compiling the cards from
every team player and selecting the hand with the highest
possible payout from all of the drawn cards. In a further
variation, each of the players on a team are dealt the
same hand, and draw additional cards in a conventional
manner. The best hand drawn by one of the team players
is then selected as the team result. If more than one
player on the team gets the same highest payout result,
a bonus can be awarded to the team. In this manner, a
team strategy where every player always picks a different
draw combination than the other players is discouraged.
(Col. 16, ll. 39-55)
2. The Fitzhugh Declaration states: “The explosion in popularity that has
occurred with live poker is in large part due to the ability for one player to “bluff”
another player.” (Declaration, ¶2)
3. The Examiner found that “Walker does disclose player caps for the
maximum number of players for increased security, as well as maintaining a
manageable number of players per team.” (Answer 5)

ANALYSIS
As we explain below, we find claims 1-5, and 7-10 are directed to
nonstatutory subject matter. That finding is dispositive of the patentability of these
claims. Accordingly, we do not reach the prior art rejection of claims 1-10. Cf. Ex
parte Gutta, 93 USPQ2d 1025, 1036 (Bd. Pat. App. & Int. 2009) (precedential):
As to these prior art rejections, our decision is dispositive
with respect to patentability since (1) claims 1, 3-9, 11-14,
16-19, and 21-23 on appeal do not recite patent-eligible
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subject matter under § 101, and (2) we cannot determine
the scope of claim 20. We therefore need not reach the
question of whether claims 1, 3-7, 9, 11, 12, 14, 16, 17,
and 19-23 would have been anticipated under § 102 and
claims 8, 13, and 18 would have been obvious under § 103.
See Diehr, 450 U.S. at 188; Comiskey, 554 F.3d at 973
(declining to reach obviousness rejection on appeal after
concluding many claims were nonstatutory under § 101);
Bilski, 545 F.3d at 951 n.1 (noting that § 101 is a threshold
requirement and that Examiner may reject claims solely on
that basis); In re Rice, 132 F.2d 140, 141 (CCPA 1942)
(finding it unnecessary to reach rejection based on prior art after
concluding claims were directed to nonstatutory subject matter).
See also In re Steele, 305 F.2d 859, 862 (CCPA 1962)
(supporting not presenting an art rejection when considerable
speculation into the scope of the claim is required).

We affirm the rejections of claims 11, 12, 15, 16 and 18-20.
With regard to the independent claims 11 and 12, Appellant argues that
Walker does not disclose live poker “where players compete against other players,
as opposed to competing against machines - players have the ability to bluff or
deceive other players.” (Appeal Br. 11) We disagree with Appellant because
Walker discloses players competing against other players. Walker specifically
discloses competition in that as among team members, “[t]he best hand drawn by
one of the team players is then selected as the team result.” (FF 1) Even still,
Walker discloses awarding multiple prizes to plural players on the same team “[i]f
more than one player on the team gets the same highest payout result, a bonus can
be awarded to the team.” (FF1) Appellant’s argument to the issue of Walker not
having bluffing fails from the outset because a player is not required to bluff as
part of the rules in poker, and bluffing does not appear in the claims and is not

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commensurate with the broader scope of the claims which merely recites a live
game of poker. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Likewise, with regard to Appellant’s submission of the Fitzhugh
Declaration, we find that the declaration fails to establish a nexus between the
claim language and proffered evidence because it too is drawn to the issue of
bluffing (FF 2), which we find is not recited in the claims and is based on mere
conclusions. For objective evidence to be accorded substantial weight, an
applicant must establish a nexus between the evidence and the merits of the
claimed invention. In re GPAC, 57 F.3d 1573, 1580 (Fed. Cir. 1995). An affidavit
fails in its purpose if it recites conclusions and few facts to buttress those
conclusions. In re Brandstadter, 484 F.2d 1395, 1406 (CCPA 1973).
Representative claim 19 recites in pertinent part limiting a number of said
plurality of players to enter said gaming tournament to a predetermined number.
We find that Walker inherently discloses this feature because the number of video
poker machines available at a casino will limit the number of players who can play.
We also affirm the rejections of dependent claims 15, 16, 18-20 since
Appellant has not challenged such with any reasonable specificity (see In re
Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987)).
Representative claim 13 recites the details of assigning a finish number,
assigning a finish equalization number; assigning an equalization number to each
of the users; and calculating a placement finish. The Examiner cited to Marks
col. 20, ll. 15-22 as disclosing finishing numbers reflecting a win/loss order, or
equalization numbers. However, a review of Marks at this section only discloses
that the server computer determined the appropriate ranking for all players as each
round progresses without mentioning particulars such as how the ranking are
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calculated. Appellant challenges the failure of Marks to disclose these limitations.
(Appeal Br. 14) We therefore will not sustain the rejection of claims 13 and 14
under 35 U.S.C. § 103(a).

NEW GROUND
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection.
We reject claims 1-5, and 7-10 as failing to meet the requirements under
35 U.S.C. § 101 because these claims do not recite patentable subject matter
because all actions are done through human intervention and thus the method is (1)
not tied to a particular machine or apparatus, or (2) does not transform a particular
article into a different state or thing. In re Bilski, 545 F.3d 943, 961-62 (Fed. Cir.
2008) (en banc).

CONCLUSIONS OF LAW
We conclude the Appellant has not shown that the Examiner erred in
rejecting claims 11, 12, 15-16 and 18 as unpatentable under 35 U.S.C. § 102(b)
over Walker.
We conclude the Appellant has not shown that the Examiner erred in
rejecting claims 19-20 as unpatentable under 35 U.S.C. § 103(a) over Walker.
We conclude the Appellant has shown that the Examiner erred in rejecting
claims 13 and 14 as unpatentable under 35 U.S.C. § 103(a) Walker in view of
Marks.
We enter a new ground of rejection of claim 1-5, and 7-10 under 35 U.S.C.
§ 101.
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This decision contains new grounds of rejection for claim 1-5, and 7-10
pursuant to 37 C.F.R. § 41.50(b). 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 the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground 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)(1)(iv) (2007).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

JRG

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