Ex Parte Overholt

Patent Trial and Appeal Board

Jan 4, 2018

11929469 (P.T.A.B. Jan. 4, 2018)

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.
11/929,469 10/30/2007 Brian Overholt 2931-204290 8682
23643 7590 01/08/2018
Barnes & Thornburg LLP (IN)
11 S. Meridian Street
Indianapolis, IN 46204
EXAMINER
LEWIS, JUSTIN V
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
01/08/2018 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):
INDocket@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN OVERHOLT1
Appeal 2017-000719
Application 11/929,469
Technology Center 3700
Before EDWARD A. BROWN, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Brian Overholt (Appellant) seeks our review under 35 U.S.C. § 134(a)
of the Examiner’s decision rejecting claims 1—27. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The Appeal Brief lists Muncie Novelty Company, Inc. as the real party in
interest. Appeal Br. 1.
Appeal 2017-000719
Application 11/929,469
THE CLAIMED SUBJECT MATTER
The claimed invention is directed to a gaming ticket. Spec. 12.
Claim 1 is illustrative of the claims on appeal and is reproduced below, with
emphases added.
1. A gaming ticket comprising:
a gaming piece having a gaming combination; the gaming
piece comprising a game face side and an opposing reverse side;
a covering piece coupled together with the gaming piece
to conceal the gaming combination, the covering piece
comprising a first side and an opposing second side; and
a plurality of foil portions coupled to at least one of the
game face side, the opposing reverse side, the first side and the
second side, wherein the plurality of foil portions are spaced-
apart from each other on the at least one of the game face side,
the opposing reverse side, the first side and the second side and
are spatially separatedfrom any portion of the gaming ticket that
conceals a gaming combination on said at least one of the game
face side, the opposing reverse side, the first side and the second
side; and
wherein at least a portion of the foil portions comprise
graphics.
Appeal Br. 15 (Claims App.).
REFERENCES RELIED ON BY THE EXAMINER
Nannicola
Weeks
Paris
Pittman
Lieberman Zadjman
US 5,743,524
US 4,993,753
US 5,386,985
US 6,234,536 B1
US 6,443,494 B1
Apr. 28, 1998
Feb. 19, 1991
Feb. 7, 1995
May 22, 2001
Sept. 3, 2002
THE REJECTIONS ON APPEAL
(I) Claims 1—4, 7—11, 13, 15—19, 22, 23, 26, and 27 are rejected under
35 U.S.C. § 103(a) as unpatentable over Nannicola and Weeks.
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Application 11/929,469
(II) Claims 5 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nannicola, Weeks, and Pittman.
(III) Claims 6, 12, 24, and 25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nannicola, Weeks, and Lieberman Zadjman.
(IV) Claims 14 and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nannicola, Weeks, and Paris.
ANALYSIS
Rejection (I)
Claims 1—4, 7—11, 15—19, 22, 23, 26, and27
The Examiner finds that Nannicola discloses a gaming ticket with
many of the elements recited by claim 1, but does not disclose a plurality of
foil portions as required. See Final Act. 2—3. The Examiner turns to Weeks
to remedy this deficiency, finding Weeks discloses “a plurality of foil (col.
3, lines 53-55) portions [opaque areas] (18) coupled to at least one of a game
face side (17). . . wherein the plurality of foil (col. 3, lines 53-55) portions
(18) are spaced-apart from each other (fig. 1 ).” Id. at 3. The Examiner
reasons that it would have been obvious to replace windows 26 and 34 of
Nannicola with foil material, such as the material used in opaque areas 18 of
Weeks, “to render the concealing material of each individual area easily
removable by rubbing or erasing, as taught by Weeks.” Id. (citing Weeks,
3:53—58). The Examiner’s proposed modification to the gaming ticket of
Nannicola is made while “retaining the printed Nannicola prize amounts
38a—c thereon.” Id.
With respect to independent claims 1, 9, and 16, Appellant contends
that the Examiner’s proposed modification to the gaming ticket of Nannicola
would not satisfy the requirement that the foil portions be spatially separated
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Application 11/929,469
from any portion of the gaming ticket that conceals a gaming combination.
See Appeal Br. 6—7. According to Appellant, windows 26 and 34 of
Nannicola cover and conceal a gaming combination, and, therefore, the use
of the foil material in these windows, as proposed by the Examiner, would
not provide the spatial separation from gaming combinations required by
claims 1, 9, and 16. See id.
In response, the Examiner finds that windows 26 and 34 of Nannicola
are separated from gaming combinations 12. Ans. 17. Apparently
addressing Appellant’s argument that what is concealed by windows 26 and
34 of Nannicola qualifies as a gaming combination, the Examiner states,
Appellant’s claim language mandates the foil portions to be
separated from “any portion” (e.g. any one portion selected as
desired) of the gaming ticket that conceals a gaming
combination. The language does not require the foil portions to
be separated from “all portions” of the gaming ticket that conceal
a gaming combination.
Ans. 18. Thus, according to the Examiner, so long as Nannicola provides at
least one gaming combination that is separated from windows 26 and 34,
these windows are separated from any gaming combination, even if
windows 26 and 34 also conceal a gaming combination.
In reply, Appellant contends that each of claims 1, 9, and 16 precludes
contact between the plurality of foil portions and a gaming combination.
Reply Br. 2—3.
Appellant has the better position on this point. We do not agree that
the term “separated from any gaming combination,” under its broadest
reasonable interpretation in light of the Specification, allows for separation
from one gaming combination, but not another gaming combination.
Although the Specification indicates that foil may be used to mask gaming
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Application 11/929,469
combinations, if desired (see Spec. 129), we consider this embodiment to be
excluded by the plain language of claims 1, 9, and 16. Appellant’s Figures 6
through 9 depict an embodiment where foil portions 15 are not in contact
with any gaming combination 45 inasmuch as foil portions 15 and gaming
combination 45 are on opposite sides of gaming piece 40 and, thus, foil
portions 15 are separated from all gaming combinations. This embodiment
corresponds to the claimed subject matter. Accordingly, the Examiner’s
finding that the proposed modification to Nannicola would result in foil
portions spatially separated from any portion of the gaming ticket that
conceals a gaming combination is based on an unreasonably broad
interpretation of claims 1, 9, and 16. Consequently, we reverse the rejection
of claims 1, 9, and 16, as well as of corresponding dependent claims 2-4, 7,
8, 10, 11, 15, 17—19, 22, 23, 26, and 27, as unpatentable over Nannicola and
Weeks.
Claim 13
Claim 13 calls for “at least a portion of the foil portion comprises
graphics.” Appeal Br. 16 (Claims App.). Appellant contends that the
Examiner’s proposed modification to the gaming ticket of Nannicola “would
arrive at a rectangular scratch-off, it would not arrive at a graphic scratch-
off. Weeks’ scratch-off is not disclosed as something written and thus the
combination of Nannicola and Weeks does not arrive at foil graphics.”
Appeal Br. 5. Additionally, Appellant asserts that, “Nannicola’s seal
windows 26 and 34 are disclosed as having a printed area, however, there is
no teaching or suggestion of using foil in the form of print f and
“[n]otwithstanding the office action statement that it would have been
obvious to replace the Nannicola seal windows with Weeks scratch-off foil
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material, ‘retaining the printed Nannicola prize amounts 38a-c thereon,’ it is
evident that removal of Nannicola’s seal windows would also remove any
graphics on such seal windows.” Id. at 6 (emphases added).
In response, the Examiner reiterates the rejection, stating that
windows 26 and 34 of Nannicola comprise graphics, and the proposed
modification to these windows merely uses the foil of Weeks as a substrate
in place of the material used by Nannicola before the modification. See Ans.
16.
In reply, Appellant contends that “[ajdding ink onto Weeks’ scratch-
off opaque metal foil adds a nonmetal layer on top of the foil, whereby the
foil layer does not comprise graphics as required by independent claim l.”2
Reply Br. 5 (emphasis added). Appellant also states, “Printing on foil,
especially Weeks’ scratch-off foil having a thickness of between three and
ten-thousandths of an inch which is removable by rubbing or erasing
(column 3, lines 56—58) is implausible.” Id.
Appellant’s arguments on this point are unavailing. The broadest
reasonable interpretation of the disputed limitation in claim 13, in light of
the Specification, requires a portion of the foil portion to comprise graphics
(Appeal Br. 16 (Claims App.)), not that the portion itself define graphics.
Thus, applying a layer of graphics on top of the foil portion, in the form of
printing, satisfies this requirement in claim 13. This interpretation is
consistent with a reading of Appellant’s claim set as a whole because claim
26 requires that “at least a portion of the graphics comprise ink.” Appeal Br.
2 Claim 1 recites, in part, “wherein at least a portion of the foil portions
comprise graphics,” whereas claim 13 recites a similar, but not identical
limitation “wherein at least a portion of the foil portion comprises graphics.”
Appeal Br. 16 (Claims App.).
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Application 11/929,469
18 (Claims App.). Although claim 26 depends from independent claim 1,
not from independent claim 13, claim 1 provides antecedent basis for “the
graphics” as recited in claim 26 with language that is quite similar to the
language at issue in claim 13, and, therefore, claims 1 and 26 are useful in
determining the broadest reasonable interpretation of claim 13. Phillips v.
AWHCorp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (enbanc) (“Because
claim terms are normally used consistently throughout the patent, the usage
of a term in one claim can often illuminate the meaning of the same term in
other claims.”).
As for the alleged implausibility of printing graphics on foil (see
Reply Br. 5), Appellant provides no persuasive technical argument or
objective evidence that the Examiner’s proposed combination is beyond the
level of skill in the art. Appellant merely describes the thickness of the foil
taught by Weeks, notes that it is easily scratched or rubbed off, and
concludes that “[wjithout a teaching or suggestion that printing on Weeks’
scratch-off foil is possible and how it may be accomplished, the suggestion
to print on Weeks’ foil would not have been obvious and is farfetched.” Id.
We find this unsupported contention to be unavailing.
We have considered all of Appellant’s arguments for the patentability
of claim 13, but are not apprised of Examiner error. Accordingly, we affirm
the rejection of claim 13 as unpatentable over Nannicola and Weeks.
Rejections (II)—(IV)
The Examiner’s use of Pittman, Zadjman, and Paris does not remedy
the deficiency discussed above regarding Rejection (I) and claims 1, 9, and
16. See Final Act. 11—15. All of the claims rejected in Rejections (II)—(IV)
depend, directly or indirectly, from one of claims 1,9, and 16. Accordingly,
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Application 11/929,469
we reverse Rejections (II)—(IV) for the same reasons discussed with respect
to Rejection (I) and claims 1, 9, and 16.
DECISION
(I) We reverse the rejection of claims 1—4, 7—11, 13, 15—19, 22, 23,
26, and 27 as unpatentable over Nannicola and Weeks with respect to claims
1—4, 7—11, 15—19, 22, 23, 26, and 27. We affirm this rejection with respect
to claim 13.
(II) We reverse the rejection of claims 5 and 20 as unpatentable over
Nannicola, Weeks, and Pittman.
(III) We reverse the rejection of claims 6, 12, 24, and 25 as
unpatentable over Nannicola, Weeks, and Lieberman Zadjman.
(IV) We reverse the rejection of claims 14 and 21 as unpatentable
over Nannicola, Weeks, and Paris.
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)(l)(iv).
AFFIRMED-IN-PART
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