Ex Parte Pececnik et al

Patent Trial and Appeal Board

Apr 6, 2016

13406565 (P.T.A.B. Apr. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/406,565 02/28/2012
97462 7590 04/06/2016
Mark A. Litman & Associates, P.A.
7001 Cahill Road, Ste. ISA
Edina, MN 55439
FIRST NAMED INVENTOR
Joze Pececnik
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
333.005US1 4971
EXAMINER
LIDDLE, JAY TRENT
ART UNIT PAPER NUMBER
3716
MAILDATE DELIVERY MODE
04/06/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte JOZE PECECNIK and JAMIE ABRAHAMSON
Appeal 2014-001999 1,2
Application 13/406,565
Technology Center 3700
Before PHILIP J. HOFFMANN, TARA L. HUTCHINGS, and
MATTHEWS. MEYERS, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-5 and 7-20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Our decision references Appellants' Specification ("Spec.," filed Feb. 28,
2012), Appeal Brief ("Appeal Br.," filed Oct. 16, 2013), and Reply Brief
("Reply Br.," filed Dec. 2, 2013), as well as the Final Office Action ("Final
Action," mailed June 19, 2013) and the Examiner's Answer ("Answer,"
mailed Nov. 6, 2013).
2 According to Appellants, the real party in interest is Elektroncek d.d.
Appeal Br. 3.
Appeal2014-001999
Application 13/406,565
According to Appellants, the "invention relates to the field of casino
table wagering games, particularly casino table dice games related to the
play of the game of Craps, and most particularly to side bet wagers that may
be placed in the underlying game of Craps." Spec. 1, 11. 4---6. We reproduce,
below, independent claim 1 as representative of the appealed claims.3
1. A gaming system for playing a wagering game
during the game of craps, the gaming system comprising:
[a]) a game table configured for the play of craps;
[b]) a first specific wagering area on the game table or a
specific function on a player electronic terminal for entering a
side bet on a series of side bet events;
[ c]) a second specific area on the gaming table or indicator
on the player electronic terminal for monitoring a progression of
events within events occurring within determining dice outcomes
for the side bet events;
[d]) the second specific area identifying an occurrence of
dice roll outcomes of numbers selected from the group consisting
of 4, 5, 6, 8, 9 and 10 after establishment of a point in a round of
craps, wherein the foUowing steps i), ii) and iii) ar[ e J performed:
[i]) after a point is established on a come-out roll,
the point value selected from the group of come-out
outcomes consisting of 4, 5, 6, 8, 9 and 10 is identified,
leaving all other dice roll outcomes besides the point in
that round of craps of numbers selected from the group
consisting of 4, 5, 6, 8, 9 and 10 as total available value
number rolls;
[ii]) the second specific area having a first indicia
thereon indicating that on any occurrence of a roll
subsequent to step i), that any first available value number
roll is achieved so that the side bet event is indicated as
continuing, and an additional dice roll outcome of
3 We reformat and remove emphasis from claim 1, as well as correct errors
in the claim, including errors in lettering and numbering introduced in the
Claims Appendix of the Appeal Brief.
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Appeal2014-001999
Application 13/406,565
numbers selected from the group consisting of 4, 5, 6, 8, 9
and 10, the first indicia indicating removal of that first
available value number roll from the total available
number roll and leaving open indicia in the second specific
area identifying a second set of remaining available value
number rolls; and
[iii]) the second specific area also having a second
indicia thereon indicating that on any occurrence of a roll
subsequent to step ii), that any second available value
number roll is achieved so that the side bet event is
indicated as continuing, and indicating allowance of an
additional dice roll to attempt to achieve a subsequent
outcome of numbers selected from the group consisting of
4, 5, 6, 8, 9 and 10, the second indicia indicating removal
of that second available value number roll in addition to
having already indicated removal of the first available
value number roll from the total available number roll and
leaving open indicia in the second specific area identifying
a third set of remaining available value number rolls.
Appeal Br., Claims App.
REJECTIONS AND PRIOR ART4
The Examiner rejects the claims as follows:
claims 10-13 and 15 under 35 U.S.C. § 101 as claiming ineligible
subject matter5;
4 The Examiner withdrew the rejections of i) claims 1-8, 17, and 20 under
35 U.S.C. § 112, second paragraph, and ii) claim 6 under 35 U.S.C. § 112,
fourth paragraph. See Final Action 5-7, Advisory Action mailed Sept. 4,
2013 at 2, Answer 2-5.
5 Although the Answer seems to indicate that claim 16 may also be rejected
under 35 U.S.C. § 101 (see Answer 2), this appears to be a typographical
error, inasmuch as the Final Action expressly states that claim 16 "ha[ s] not
been rejected" under 35 U.S.C. § 101 (Final Action 5).
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Application 13/406,565
claim 18 under 35 U.S.C. § 112, second paragraph, as indefinite for
failing to particularly point out and distinctly claim the subject matter
Appellant regards as the invention;
claims 1--4 and 10 under 35 U.S.C. § 103(a) as unpatentable over
Moore (US 5,829,748, iss. Nov. 3, 1998);
claims 5-9, 11, 13, and 14 under 35 U.S.C. § 103(a) as unpatentable
over Moore and Nicely (US 2011/0018194 Al, pub. Jan. 27, 2011);
claims 12 and 15-19 under 35 U.S.C. § 103(a) as unpatentable over
Moore and Order (US 6,609,710 Bl, iss. Aug. 26, 2003); and
claim 20 under 35 U.S.C. § 103(a) as unpatentable over Moore, Order,
and Nicely.
See Final Action 3-20; see also Answer 2-5.
ANALYSIS
Section 101 rejection
The Examiner rejects claim 10-13 and 15 as directed to non-statutory
subject matter, apparently in accordance with the machine-or-transformation
test set forth in Bilski v. Kappas, 130 S. Ct. 3218, 3227 (2010). In particular,
the Examiner determines
[c]laims 10[-] 13 and 15 are ineligible subject matter because the
claimed limitations include no recitation or insufficient recitation
of a machine or transformation, or [are] not directed to a proper
application of a law of nature, or [are] just a mere statement of a
general concept. While [dependent] claims 13 and 15 include a
processor, the processor is ancillary to the core of the claimed
invention of [independent] claim 10, and [the processor] is
merely accepting information about the die.
Final Action 5. In response, Appellants argue, among other things, that the
claims recite both a "machine" and a "transformation" in accordance with
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Application 13/406,565
Bilski. See, e.g., Appeal Br. 15-23. In the Answer, the Examiner disagrees
with Appellants' arguments that claims 10-13 and 15 recite a "machine" and
a "transformation." See Answer 2-3.
While the machine-or-transformation test is a useful tool, it is not the
only test to determine whether a claim is statutory under 35 U.S.C. § 101.
Because the Examiner only applies the machine-or-transformation test
without considering other factors, and the Examiner's analyses in the Final
Action and the Answer fail to establish a prima facie case that the claims are
directed to an abstract idea, we do not sustain the rejection. In particular, we
note that the Examiner broadly states that as "a result of careful
consideration of the listed factors" the rejected claims are "directed to an
abstract idea," but the Examiner does not articulate sufficiently the basis for
the conclusion. Final Action 3. Thus, we do not sustain the Examiner's
rejection of claims 10-13 and 15 under 35 U.S.C. § 101.
Section 112, second paragraph, rejection
The Examiner rejects claim 18 as indefinite, determining that although
the claim recites "step 1)," "[t]here is no 'step 1)' in claim 18 or any claim
from which it depends. The Examiner has understood that ... [this is] a
typographical error." Final Action 2. We note that Appellants' Claims
Appendix, included with the Appeal Brief, includes numerous typographical
errors, and, as such, it is not entirely clear whether claim 18 as currently
under consideration recites "step 1)" (that does not have antecedent basis) or
"step i)" (that does have antecedent basis). Nonetheless, the Advisory
Action mailed September 4, 2013, indicates that the Examiner entered
Appellants' Amendment filed on August 26, 2013, and this Amendment
appears to correct claim 18 to recite "step i)" in place of a previous recitation
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Application 13/406,565
of "step l ). " Thus, despite the Examiner's statement that "Appellant[ s J
ha[ ve] made no arguments regarding the rejection under 3 5 U[.] S [.] C [.]
[§] 112[,] 2nd paragraph[,] regarding claim 18, which was never withdrawn
(as noted by the Advisory Action dated 09/04/2013 in numbered item 5)," it
appears that there is no basis for the indefiniteness rejection of claim 18.
Answer 2. Therefore, we do not sustain the rejection.
Section 103 rejections
Rejections of claims 1--4, 10, and 20
Appellants argue the rejections of claims 1--4, 10, and 20 together as a
group. See Appeal Br. 25-28, n.b. at 28 ("NEW Claim 20 repeats the
limitations of claim 1 and is also not anticipated."). Appellants' chart
comparing Appellants' claim 1 with Moore's claim 1 is not sufficient to
show error in the Examiner's rejection, at least because the chart does not
address sufficiently the portions of Moore, on which the Examiner relies, to
reject the claims.
Appellants further argue the following:
Claims 1 and 10 require a first roll to establish a standard
point in craps, and the side bet wager is active on numbers rolled
ONLY AFTER the point has been established. Moore counts
all count rolls of 4, 5, 6, 8, 9 and 10 towards the side bet outcome,
AND requires a selection of a number of active number rolls.
The present claims eliminate the point number, and Moore uses
even the first roll (which is either the Point number or a neutral
number without a Point having to be established).
Appeal Br. 27. The argument is not sufficient to show error in the
Examiner's rejection. The argument does not address sufficiently the
portions of Moore on which the Examiner relies to reject the claims, and,
thus, does not prove that the Examiner's findings regarding Moore's
teachings are erroneous. Further, Appellants do not establish, for example,
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Application 13/406,565
that "[ c ]laims l and l 0 require a first roll to establish a standard point in
craps, and the side bet wager is active on numbers rolled ONLY AFTER the
point has been established," by pointing to the specific language in the
claim. Still further, Appellants' argument that "[t]he present claims
eliminate the point number" is not entirely clear, and thus, is not persuasive,
inasmuch as claim 1 recites that a point is, in fact, established. See id. at
Claims App.
Thus, based on the foregoing, we sustain the rejection of claims 1--4,
10, and 20.
Rejection of claims 5-9, 11, 13, and 14
Appellants argue claims 5-9, 11, 13, and 14 together as a group. See
Appeal Br. 28. More specifically, Appellants argue that these claims are
erroneously rejected because "Nicely does not overcome any of the
numerous deficiencies noted" above. Id. Thus, inasmuch as we sustain the
rejections of claims 1--4, 10, and 20, we also sustain the rejection of claims
5-9, 11, 13, and 14.
Rejection of claims 12-15 and 19
Inasmuch as Appellants do not argue against the rejection of these
claims, we sustain the rejection of claims 12-15 and 19.
DECISION
We REVERSE the Examiner's rejection of claims 10-13 and 15
under 35 U.S.C. § 101.
We REVERSE the Examiner's rejection of claim 18 under 35 U.S.C.
§ 112, second paragraph.
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Application 13/406,565
We AFFIRivI the Examiner's rejections of claims 1-5 and 7-20 under
35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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