Ex Parte Thomas

Board of Patent Appeals and Interferences

Oct 2, 2009

09809922 (B.P.A.I. Oct. 2, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte WILLIAM L. THOMAS
__________

Appeal 2009-003302
Application 09/809,922
Technology Center 3700
__________

Decided: October 2, 2009
__________

Before TONI R. SCHEINER, MELANIE L. MCCOLLUM, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving a method of
interactive wagering. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

Appeal 2009-003302
Application 09/809,922

Statement of the Case
The Claims
Claims 1-32 are on appeal. Claims 1, 6, 10, and 21 are representative
and read as follows:
1. A method for using an interactive wagering
application to allow a user in a particular location to
participate in lottery wagering using user equipment,
comprising:
determining the particular location of the user;
providing a listing of lotteries in which the user can
participate on a visual display based on the particular
location of the user;
giving the user the ability to participate in at least one
of the lotteries using the user equipment; and
issuing an electronic lottery ticket for the at least one
of the lotteries, wherein a lottery drawing for the at least one
of the lotteries will take place at a later time.

6. The method of claim 1 further comprising recording,
in a multimedia format, the lottery drawings associated with
the lotteries in which the user participated.

10. The method of claim 1 further comprising: creating a
wager based on user inputs;
giving the user the ability to finalize the wager at a
later time; and
reminding the user to finalize the wager.

21. A method for using an interactive wagering
application to allow a user to participate in a lottery
automatically using electronic user equipment, comprising:
giving the user the ability to specify conditions via the
user equipment on which the interactive wagering
application is at least partially implemented;
automatically participating in the lottery on behalf of
the user when the conditions have been met; and
2
Appeal 2009-003302
Application 09/809,922

notifying the user of the automatic participation in the
lottery.

The prior art
The Examiner relies on the following prior art references to show
unpatentability:
Small US 4,815,741 Mar. 28, 1989
Luciano US 6,168,521 B1 Jan. 2, 2001
Archer US 6,277,026 B1 Aug. 21, 2001
Walker US 6,325,716 B1 Dec. 4, 2001
Schneier US 6,402,614 B1 Jun. 11, 2002

Rittmaster US 2002/0023010 A1 Feb. 21, 2002
McCollom US 2002/0010623 A1 Jan. 24, 2002

Dickerson GB 2,147,773 A May 15, 1985

Lottobot,
http://web.archive.org/web/19991128172018/http://lottobot.net/ (Feb. 1999),
pp. 1-22.

SGI insights, 1(5) SCIENTIFIC GAMING INTERNATIONAL 1-4 (Jan.
1999).

3
Appeal 2009-003302
Application 09/809,922

The issues
A. The Examiner rejected claims 1-6 and 11-16 under 35 U.S.C. § 103(a)
as being obvious over Schneier and Archer (Ans. 3-5).
B. The Examiner rejected claims 1 and 11 under 35 U.S.C. § 103(a) as
being obvious over Dickinson, Rittmaster, and Archer (Ans. 5-7).
C. The Examiner rejected claims 2-5, 7, 9, 12-15, 17, and 19 under 35
U.S.C. § 103(a) as being obvious over Dickinson, Rittmaster, Archer and
Lottobot (Ans. 7-8).
D. The Examiner rejected claims 6 and 16 under 35 U.S.C. § 103(a) as
being obvious over Dickinson, Rittmaster, Archer and Luciano (Ans. 9).
E. The Examiner rejected claims 8 and 18 under 35 U.S.C. § 103(a) as
being obvious over Dickinson, Rittmaster, Archer and SGI (Ans. 10).
F. The Examiner rejected claims 10 and 20 under 35 U.S.C. § 103(a) as
being obvious over Dickinson, Rittmaster, Archer and McCollom (Ans. 10-
11).
G. The Examiner rejected claims 21-32 under 35 U.S.C. § 103(a) as
being obvious over Walker, Archer and Small (Ans. 11-13).
A. 35 U.S.C. § 103(a) over Schneier and Archer
The Examiner rejected claims 1-6 and 11-16 under 35 U.S.C. § 103(a)
as being obvious over Schneier and Archer (Ans. 3-5).
The Examiner finds that “Schneier et al disclose determining the
particular location of the user . . . providing a listing of lotteries in which the
user can participate on a visual display based on the particular location of the
user . . . giving the user the ability to participate in at least one of the
lotteries using the user equipment” (Ans. 3). The Examiner finds that
4
Appeal 2009-003302
Application 09/809,922

“Schneier et al does not expressly disclose . . . issuing an electronic lottery
ticket . . . wherein a lottery drawing for the at least one of the lotteries will
take place at a later time” (Ans. 5). The Examiner finds that “Archer teaches
. . . issuing an electronic lottery ticket for the at least one of the lotteries,
wherein a lottery drawing for the at least one of the lotteries will take place
at a later time” (Id.). The Examiner finds it obvious to combine Schneier
and Archer to “allow[] a user to retrieve the[] results of a lottery ticket either
online or [at] an authorized payment center” (Id.).
Appellant argues that “[f]irst, the Examiner has failed to point out any
suitable suggestion or motivation to combine Schneier and Archer. Second,
there cannot exist a suggestion or motivation to combine Schneier with
Archer in the manner suggested by the Examiner at least because Schneier
teaches away from such a combination” (App. Br. 12-13). Appellant also
argues that
the Examiner fails to indicate why one skilled in the art
would modify Schneier from providing instant lotteries to
providing lotteries whose associated drawings take place at a
later time. The only lotteries that Schneier mentions are
instant-type lotteries having predetermined results and
Schneier's entire disclosed system is contingent on the fact
that the lotteries are instant with predetermined results.

(Reply Br. 3.)
In view of these conflicting positions, we frame the obviousness issue
before us as follows:
Has Appellant demonstrated that the Examiner erred in concluding
that it would have been obvious to modify Schneier to issue an electronic
lottery ticket for a later lottery drawing as taught by Archer?
5
Appeal 2009-003302
Application 09/809,922

Findings of Fact (FF)
1. The Examiner finds, and Appellant does not dispute, that
Schneier teaches the determining the particular location of a user, providing
a listing of lotteries in which the user can participate and giving the user the
ability to participate in the steps required by claim 1 (see Ans. 3-4). We
therefore adopt the Examiner’s fact finding regarding Schneier.
2. The Examiner finds, and Appellant does not dispute, that
Archer teaches issuing electronic lottery tickets for lotteries, where a lottery
drawing will take place at a later time (see Ans. 5). We therefore adopt the
Examiner’s fact finding regarding Archer.
3. The Examiner finds that
it would have been obvious to one of ordinary skill in the art
at the time of the invention was made to modify Schneier et
al to include issuing an electronic lottery ticket for the at
least one of the lotteries, wherein a lottery drawing for the at
least one of the lotteries will take place at a later time as
taught by Archer to provide known methods to yield to
predictable results that allows a user to retrieve the[] results
of a lottery ticket either online or [at] an authorized payment
center.

(Ans. 5.)
Principles of Law
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
6
Appeal 2009-003302
Application 09/809,922

nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
The Supreme Court has emphasized that “the [obviousness] analysis need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR Int'l v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Id. at 416. “If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.” Id. at 417. Moreover, an
“[e]xpress suggestion to substitute one equivalent for another need not be
present to render such substitution obvious.” In re Fout, 675 F.2d 297, 301
(CCPA 1982). As noted by the Court in KSR, “[a] person of ordinary skill is
also a person of ordinary creativity, not an automaton.” 550 U.S. at 421.
Analysis
Applying the KSR standard of obviousness to the Examiner’s findings
of fact, we agree with the reasoning of the Examiner. It is undisputed that
Schneier teaches determining the particular location of a user, providing a
listing of lotteries in which the user can participate, and giving the user the
ability to participate in the steps required by claim 1 (see Ans. 3-4; FF 1). It
is also undisputed that Archer teaches issuing electronic lottery tickets for
lotteries, where a lottery drawing will take place at a later time (see Ans. 5;
FF 2).
The Examiner provides several specific reasons to use the Archer
method, including that “[b]y issuing lottery tickets for lottery drawings for a
7
Appeal 2009-003302
Application 09/809,922

later time, one of ordinary skill in the art provide a system that facilitates the
sale of lottery tickets without disturbing bearer-type tickets and the like”
(Ans. 14). The Examiner also reasons that modifying Schneier “to include
the purchasing of an electronic ticket for at least one lotteries, wherein the
drawing for the at least one lotteries will take place at a later time as taught
by Archer” yields “predictable results that allows a user to retrieve there [sic,
their] results of a lottery ticket either online or an authorized payment
center” (Ans. 14-15).
We agree with the Examiner that the combination of Schneier and
Archer is a “predictable use of prior art elements according to their
established functions.” KSR, 550 U.S. at 417.
We are not persuaded by Appellant’s argument that the “motivation
that the Examiner has pointed to in Archer (i.e., the elimination of bearer-
type tickets) is insufficient because it is merely conclusory. Appellant
submits, therefore, that the Examiner's purported motivation is a broad,
conclusory statement without factual support” (App. Br. 14). In KSR, the
Supreme Court rejected the rigid application of the teaching, suggestion, and
motivation test by the Federal Circuit, stating that
The principles underlying [earlier] cases are instructive
when the question is whether a patent claiming the
combination of elements of prior art is obvious. When a
work is available in one field of endeavor, design incentives
and other market forces can prompt variations of it, either in
the same field or a different one. If a person of ordinary skill
can implement a predictable variation, § 103 likely bars its
patentability.

8
Appeal 2009-003302
Application 09/809,922

KSR, 550 U.S. at 417. Instead, the Supreme Court found that “a court must
ask whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id. The substitution of a
delayed lottery type ticket of Archer for the lottery tickets of Schneier is
reasonably understood as a predictable variation which would have been
obvious to the creative artisan of ordinary skill.
We also do not find persuasive Appellant’s argument that the
Examiner’s reasons for combination are “wholly insufficient” (Reply Br. 3).
The Examiner has provided a specific reason to combine the references,
which is sufficient to provide a case of obviousness. Appellant has provided
no rebuttal evidence.
We are not persuaded by Appellant’s argument that “the Examiner has
employed hindsight reconstruction in combining the references” (App. Br.
15). Modification of Schneier’s lottery method to issue delayed game
lottery tickets as taught by Archer is the product of ordinary skill, ordinary
creativity and common sense, not of innovation. See KSR, 550 U.S. at 421.
Thus, no impermissible hindsight was employed by the Examiner.
We are not persuaded by Appellant’s argument that Schneier teaches
away from the invention because “the system of Schneier is not capable of
supporting a lottery for which drawing takes place at a later time” (App. Br.
17). This argument requires Schneier to anticipate the claim in order to
render it obvious. Further, there is no specific teaching in Schneier which
teaches away from the use of a lottery in which the drawing takes place later.
Like our appellate reviewing court, “[w]e will not read into a reference a
teaching away from a process where no such language exists.” DyStar
9
Appeal 2009-003302
Application 09/809,922

Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1364 (Fed. Cir. 2006).
Conclusion of Law
Appellant has not demonstrated that the Examiner erred in concluding
that it would have been obvious to modify Schneier to issue an electronic
lottery ticket for a later lottery drawing as taught by Archer.
B. - 35 U.S.C. § 103(a) over Dickinson, Rittmaster, and Archer
The Examiner rejected claims 1 and 11 under 35 U.S.C. § 103(a) as
being obvious over Dickinson, Rittmaster, and Archer (Ans. 5-7).
The Examiner finds that Dickinson teaches “providing a listing of
lotteries in which the user can participate on a visual display . . . and giving
the user the ability to participate in at least one of the lotteries using the user
equipment” (Ans. 6). The Examiner finds that Rittmaster teaches
determining the location of users and that “limiting lottery availability based
on geographic information determined from players helps to ensure lottery
legality in certain jurisdictions” (Ans. 6). The Examiner finds that Archer
teaches “issuing an electronic lottery ticket for the at least one of the
lotteries, wherein a lottery drawing for the at least one of the lotteries will
take place at a later time” (Ans. 6).
The Examiner finds it would have been obvious
to modify Dickinson et al to include limit[ed] lottery
availability based on geographic information determined
from players and issuing electronic tickets for lotteries
taking place at a later time as taught by Rittmaster et al and
Archer to ensure lottery legality in certain jurisdictions . . .
and provide known methods to yield to predictable results
that allow[] a user to retrieve . . . results of a lottery ticket
either online or [at] an authorized payment center.
10
Appeal 2009-003302
Application 09/809,922

(Ans. 7.)
Appellant argues that “[f]irst, the Examiner has failed to point out any
suitable suggestion or motivation to combine Dickinson, Rittmaster and
Archer” (App. Br. 21). Appellant also argues that “[s]econd, there cannot
exist a suggestion or motivation to combine Dickinson with Rittmaster and
Archer in the manner suggested by the Examiner at least because Dickinson
teaches away from such a combination” (App. Br. 21).
In view of these conflicting positions, we frame the obviousness issue
before us as follows:
Has Appellant demonstrated that the Examiner erred in concluding
that it would have been obvious to modify Dickinson to limit player access
to legal lotteries as taught by Rittmaster and to issue an electronic lottery
ticket for a later lottery drawing as taught by Archer?
Findings of Fact (FF)
4. The Examiner finds, and Appellant does not dispute, that
Dickinson teaches “providing a listing of lotteries in which the user can
participate on a visual display . . . and giving the user the ability to
participate in at least one of the lotteries using the user equipment” (Ans. 6).
We therefore adopt the Examiner’s fact finding regarding Dickinson.
5. The Examiner finds, and Appellant does not dispute, that
Rittmaster teaches “limiting lottery availability based on geographic
information determined from players helps to ensure lottery legality in
certain jurisdictions” (Ans. 6). We therefore adopt the Examiner’s fact
finding regarding Rittmaster.
11
Appeal 2009-003302
Application 09/809,922

6. The Examiner finds, and Appellant does not dispute, that
Archer teaches issuing electronic lottery tickets for lotteries, where a lottery
drawing will take place at a later time (see Ans. 5). We therefore adopt the
Examiner’s fact finding regarding Archer.
7. The Examiner finds that
it would have been obvious to one of ordinary skill in the art
at the time of the invention was made to modify Dickinson
et al to include limit[ed] lottery availability based on
geographic information determined from players and issuing
electronic tickets for lotteries taking place at a later time as
taught by Rittmaster et al and Archer to ensure lottery
legality in certain jurisdictions as desirabl[e] and provide
known methods to yield to predictable results that allow[] a
user to retrieve . . . results of a lottery ticket either online or
[at] an authorized payment center.

(Ans. 7.)
Analysis
Applying the KSR standard of obviousness to the Examiner’s findings
of fact, we agree with the reasoning of the Examiner. It is undisputed that
Dickinson teaches electronically providing lottery listings and permiting
player participation (FF 4). Rittmaster teaches determining the particular
location of a user, providing a listing of lotteries in which the user can
participate and giving the user the ability to participate in steps required by
claim 1 (FF 5). It is also undisputed that Archer teaches issuing electronic
lottery tickets for lotteries, where a lottery drawing will take place at a later
time (FF 6).
We are not persuaded by Appellant’s argument that “without a proper
showing of a suggestion or motivation to combine the references, a finding
12
Appeal 2009-003302
Application 09/809,922

of obviousness is improper” (App. Br. 23). We have already pointed out
that in KSR, the Supreme Court rejected the rigid application of the teaching,
suggestion, and motivation test upon which Appellant’s arguments regarding
reason to combine rely (see App. Br. 21-23; KSR, 550 U.S. at 417). “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR, 550 U.S.
at 416.
We are not persuaded by Appellant’s argument that “the Examiner
fails to indicate why one skilled in the art would modify Dickinson from
providing a stationary, stand-alone lottery machine that is preprogrammed to
provide certain games to a machine that determines the user’s location”
(Reply Br. 5).
The Examiner provides at least one clear reason to use Rittmaster with
Dickinson, which is to ensure that users of the Dickinson device will stay
within the law and only participate in lotteries which are legal for their
geographic location (FF 7). Simply because the lottery machine is a stand-
alone, stationary device does not suggest that when the device is installed,
there is no interest in ensuring that the location is legal. Further, there is no
reason to suppose that even stand alone devices may not, occasionally, be
subject to a transfer of location.
The Examiner also provides a specific reason to use the Archer
method with those of Dickinson and Rittmaster, that “[b]y issuing lottery
tickets for lottery drawings for a later time, one of ordinary skill in the art
provide[s] known methods to yield [the] predictable result[] that a user” can
13
Appeal 2009-003302
Application 09/809,922

retrieve their lottery results “either online or at an authorized payment
center” (Ans. 16).
We agree with the Examiner that the combination of Dickinson,
Rittmaster and Archer is a “predictable use of prior art elements according to
their established functions.” KSR, 550 U.S. at 417.
We are not persuaded by Appellant’s argument that “the Examiner has
employed hindsight reconstruction in combining the references” (App. Br.
23). Modification of Dickinson’s lottery method to limit use to legal
jurisdictions as taught by Rittmaster and to issue delayed game lottery
tickets as taught by Archer is the product of ordinary skill, ordinary
creativity and common sense, not of innovation. See KSR, 550 U.S. at 421.
Thus, no impermissible hindsight was employed by the Examiner.
We are not persuaded by Appellant’s argument that “Dickinson
actually teaches away from being modified to include the features of
[A]ppellant’s claimed invention” (App. Br. 24). Appellant identifies no
specific teaching in Dickinson which teaches away from ensuring that the
stand-alone lottery machine is sited in a legal location, as taught by
Rittmaster (see App. Br. 25-26). Like our appellate reviewing court, “[w]e
will not read into a reference a teaching away from a process where no such
language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006).
Conclusion of Law
Appellant has not demonstrated that the Examiner erred in concluding
that it would have been obvious to modify Dickinson to limit player access
14
Appeal 2009-003302
Application 09/809,922

to legal lotteries as taught by Rittmaster and to issue an electronic lottery
ticket for a later lottery drawing as taught by Archer.
C. - 35 U.S.C. § 103(a) over Dickinson, Rittmaster, Archer and Lottobot
The Examiner rejected claims 2-5, 7, 9, 12-15, 17, and 19 under 35
U.S.C. § 103(a) as being obvious over Dickinson, Rittmaster, Archer and
Lottobot (Ans. 7-8).
The Examiner finds that the “combination of Dickinson et al. and
Rittmaster et al. and Archer teaches a method and system as described above
with respect to claims 1 and 11” (Ans. 7). The Examiner finds that “the
combination of Dickinson et al. and Rittmaster et al. and Archer does not
explicitly teach various lottery functions recited in dependent claims 2-5, 7,
9, 12-15, 17 and 19” (Ans. 7-8). The Examiner finds it obvious to “to
incorporate the notification of lottery results and winning numbers of
LottoBot into the combination of Dickinson et al. and Rittmaster et al. and
Archer in order to increase player convenience” (Ans. 8).
The Examiner provides sound fact-based reasoning for combining
Lottobot with Dickinson, Rittmaster and Archer. As Appellant does not
identify any material defect in the Examiner's reasoning, we affirm the
rejection of claims 2-5, 7, 9, 12-15, 17, and 19 for the reasons stated by the
Examiner.
D. - 35 U.S.C. § 103(a) over Dickinson, Rittmaster, Archer and Luciano
The Examiner rejected claims 6 and 16 under 35 U.S.C. § 103(a) as
being obvious over Dickinson, Rittmaster, Archer and Luciano (Ans. 9).
The Examiner finds that the “combination of Dickinson et al. and
Rittmaster et al. and Archer teaches a method and system as described above
15
Appeal 2009-003302
Application 09/809,922

with respect to claims 1 and 11” (Ans. 7). The Examiner finds that
Dickinson and Rittmaster do not “explicitly teach recording, in a multimedia
format, the lottery drawings associated with the lotteries in which the user
participated” (Ans. 9). The Examiner finds that Luciano teaches “that the
player can activate a stored replay of the draw” (Ans. 9). The Examiner
finds that it obvious to “incorporate the recordation of lottery results in a
multimedia format presented to players of the lottery as taught by Luciano et
al. into the lottery method and system as taught by the combination of
Dickinson et al., Rittmaster and Archer in order to increase player
excitement and entertainment” (Ans. 9).
Appellant argues that “[w]hether taken alone or in combination,
neither Dickinson nor Rittmaster nor Archer nor Luciano shows or suggests
recording, in a multimedia format, the lottery drawings associated with the
lotteries in which a user participated” (App. Br. 28-29). Appellant argues
that “Luciano stores the results (i.e., winning numbers) of lottery drawings
in a numerical format, but does not record lottery drawings in a multimedia
format as required by [A]ppellant's claims” (App. Br. 29).
In view of these conflicting positions, we frame the obviousness issue
before us as follows:
Has Appellant demonstrated that the Examiner erred in concluding
that it would have been obvious over the cited art to record “in a multimedia
format, the lottery drawings associated with the lotteries in which the user
participated” as required by claims 6 and 16?

16
Appeal 2009-003302
Application 09/809,922

Findings of Fact
8. The Specification teaches that “the interactive wagering
application may provide the user with the ability to schedule a recording of
the lottery drawing” (Spec. 41, ll. 11-13).
9. The Specification teaches that “the lottery drawing, assuming it
is broadcasted, may be recorded using any suitable recording technique”
(Spec. 41, ll. 15-17).
10. Figure 9 of Luciano is reproduced below:

“Figure 9 is a flow diagram illustrating the game result process” (Luciano,
col. 2, ll. 20-21).
11. Luciano teaches that “[t]he game replay feature is one
advantageous aspect of the invention. The central accounting system 110 has
17
Appeal 2009-003302
Application 09/809,922

stored in a memory a plurality of groups of video game plays. Each group of
game plays corresponds to a winning or losing draw grouping” (Luciano,
col. 8, ll. 40-44).
12. Luciano teaches that “[w]ithin each group of video game plays,
several different video game plays are stored. When a player replays the
outcome of his lottery draw for a game, the central accounting server 110
identifies the specific group of video game plays to be chosen according to
the player's draw outcome for a game” (Luciano, col. 8, ll. 49-54).
13. Dickinson teaches a lottery game terminal with where “[v]ideo
processor 37 provides signals to select and display images on color monitor
20” (Dickinson 3, l. 35).
14. Dickinson teaches that “[f]lexible programming capability
allows a wide variety of sound effects and music to be produced with a
single system” (Dickinson 4, ll. 6-7).
Analysis
The Specification does not provide any specific limitations on what
constitutes a “multimedia format” and the originally filed Specification does
not actually include that phrase, teaching that any recording technique may
be used (FF 8-9). Luciano teaches that video lottery games may be replayed
(FF 10-12). Dickinson teaches that video lottery games may include color
monitor images and sound effects including music (FF 13-14).
We are not persuaded by Appellant’s argument that “[w]hether taken
alone or in combination, neither Dickinson nor Rittmaster nor Archer nor
Luciano shows or suggests recording, in a multimedia format, the lottery
drawings associated with the lotteries in which a user participated” (App. Br.
18
Appeal 2009-003302
Application 09/809,922

28-29). In fact, Luciano specifically teaches that “[t]he game replay feature
is one advantageous aspect of the invention” (Luciano, col. 8, ll. 40-41; FF
10). In replaying the video lottery games, particularly the games disclosed
by Dickinson, Dickinson teaches the use of color images, sound and music,
which are reasonably construed as “multimedia” (FF 13-14).
We therefore agree with the conclusion of the Examiner that it would
have been obvious to record lottery drawings in a multimedia format since
Dickinson teaches presenting the lottery drawings in a multimedia format
(FF 13-14) and Luciano teaches that for lottery drawings “[t]he game replay
feature is one advantageous aspect of the invention” (Luciano, col. 8, ll. 40-
41; FF 10).
Conclusion of Law
Appellant has not demonstrated that the Examiner erred in concluding
that it would have been obvious over the cited art to record “in a multimedia
format, the lottery drawings associated with the lotteries in which the user
participated” as required by claims 6 and 16.
E. - 35 U.S.C. § 103(a) over Dickinson, Rittmaster, Archer and SGI
The Examiner rejected claims 8 and 18 under 35 U.S.C. § 103(a) as
being obvious over Dickinson, Rittmaster, Archer and SGI (Ans. 10).
The Examiner finds that the “combination of Dickinson et al. and
Rittmaster et al. and Archer teaches a method and system as described above
with respect to claims 1 and 11” (Ans. 9). The Examiner finds that “the
combination of Dickinson et al. and Rittmaster et al. and Archer does not
explicitly teach generating lottery gift certificates” (Ans. 10). The Examiner
finds it obvious “to incorporate the generation of lottery gift certificates as
19
Appeal 2009-003302
Application 09/809,922

taught by SGI Insights into the lottery method and system as taught by the
combination of Dickinson et al., Rittmaster et al. and Archer in order to
increase player appeal to the lottery games” (Ans. 10).
The Examiner provides sound fact-based reasoning for combining
SGI with Dickinson, Rittmaster and Archer. As Appellant does not identify
any material defect in the Examiner's reasoning, we affirm the rejection of
claims 8 and 18 for the reasons stated by the Examiner.
F. - 35 U.S.C. § 103(a) over Dickinson, Rittmaster, Archer and McCollum
The Examiner rejected claims 10 and 20 under 35 U.S.C. § 103(a) as
being obvious over Dickinson, Rittmaster, Archer and McCollom (Ans. 10-
11).
The Examiner finds that the “combination of Dickinson et al. and
Rittmaster et al. and Archer teaches a method and system as described above
with respect to claims 1 and 11” (Ans. 10). The Examiner finds that the
combination “does not explicitly teach giving the user the ability to finalize
the wager at a later time and reminding the user to finalize the wager” (Ans.
11). The Examiner finds that McCollom teaches a “system in which users
are able to purchase items and coupons over a network, wherein the users
are able to finalize their purchase at a later time and be reminded to finalize
their purchase” (Ans. 11). The Examiner finds it obvious to “incorporate the
ability for users or purchases to finalize a purchase and be reminded of the
same as taught by McCollom et al. into the lottery method and system as
taught by the combination of Dickinson et al., Rittmaster and Archer” (Ans.
11).
20
Appeal 2009-003302
Application 09/809,922

Appellant argues that “McCollom merely refers to a wish list that is
part of an online shopping application. The wish list of McCollom does not
remind the user to complete a purchase stored in the wish list” (App. Br. 31).
Appellant argues that “claims 10 and 20 are directed toward an interactive
wagering application, which is not an analogous system to McCollom's
system for publishing, distributing and redeeming coupons” (Id.). Appellant
argues that “the Examiner has failed to provide an objective motivation to
combine these references” (Id.).
In view of these conflicting positions, we frame the obviousness issue
before us as follows:
Has Appellant demonstrated that the Examiner erred in concluding
that it would have been obvious over the cited art to give “the user the ability
to finalize the wager at a later time” and remind “the user to finalize the
wager” as required by claims 10 and 20?
Findings of Fact
15. The Specification teaches that “the interactive wagering
application may remind the user of the unfinalized bet at any suitable time
before the time of the lottery” (Spec. 39, ll. 23-26).
16. The Specification teaches that “[t]he reminder may take any
suitable form” (Spec. 39, ll. 26-27).
17. McCollom teaches that the “list of ideas is an easy, flexible way
for the consumer to maintain shopping lists, wish lists, etc. . . . The list of
ideas helps the consumer to become comfortable with the idea of retaining
items in preparation for future action” (McCollum 7 ¶ 0100).
21
Appeal 2009-003302
Application 09/809,922

18. McCollom teaches that “[o]n subsequent visits to this list of
ideas, the last used list will be displayed and active” (McCollum 8 ¶ 0107).
19. McCollom teaches that “[i]f the shopper was here previously in
this session, it remembers where he/she left off. For example, if the shopper
left “Nugget” and went to the “Barnes & Noble” site . . . clicking on the
“Advertisements” icon would bring him/her back to the same advertisement”
(McCollum 11 ¶ 0146).
Analysis
As noted by the Court in KSR, “[a] person of ordinary skill is also a
person of ordinary creativity, not an automaton.” 550 U.S. at 421. The
person of ordinary creativity is taught by McCollom that shoppers may
finalize purchases from their shopping lists at later date and shoppers may be
reminded of the items in which they were interested by a website which
returns the shopper to the shopping list (FF 18-19).
In our opinion, applying this shopping process to the purchase of
lottery tickets is a “predictable use of prior art elements according to their
established functions.” KSR, 550 U.S. at 417. We agree with the Examiner
that the skilled artisan would have had reason to apply the McCollom
shopping process to lotteries in order to permit shoppers to “browse,
assemble and store lottery selections until electing to make a purchase”
(Ans. 11).
We are not persuaded by Appellant’s argument that “claims 10 and 20
are directed toward an interactive wagering application, which is not an
analogous system to McCollom's system for publishing, distributing and
22
Appeal 2009-003302
Application 09/809,922

redeeming coupons” (App. Br. 31). In Icon, the Federal Circuit explained
that
A reference is reasonably pertinent if, even though it may be
in a different field from that of the inventor's endeavor, it is
one which, because of the matter with which it deals,
logically would have commended itself to an inventor's
attention in considering his problem.” In re Clay, 966 F.2d
656, 659 (Fed.Cir.1992). In other words, “familiar items
may have obvious uses beyond their primary purposes.”
KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). We
therefore have concluded, for example, that an inventor
considering a hinge and latch mechanism for portable
computers would naturally look to references employing
other “housings, hinges, latches, springs, etc.,” which in that
case came from areas such as “a desktop telephone
directory, a piano lid, a kitchen cabinet, a washing machine
cabinet, a wooden furniture cabinet, or a two-part housing
for storing audio cassettes.” Paulsen, 30 F.3d at 1481-82.

In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-1380 (Fed. Cir.
2007). In methods and systems for selling lottery tickets online, we find that
an inventor would reasonably have considered references which are involved
in selling other types of products online such as McCollom.
Conclusion of Law
Appellant has not demonstrated that the Examiner erred in concluding
that it would have been obvious over the cited art to give “the user the ability
to finalize the wager at a later time” and remind “the user to finalize the
wager” as required by claims 10 and 20.

23
Appeal 2009-003302
Application 09/809,922

G. - 35 U.S.C. § 103(a) over Walker, Archer and Small
The Examiner rejected claims 21-32 under 35 U.S.C. § 103(a) as
being obvious over Walker, Archer and Small (Ans. 11-13).
The Examiner finds that Walker teaches “giving the user the ability to
set conditions via user equipment on which an interactive wagering
application is partially implemented and automatically participating in the
lottery on the behalf of the user when the conditions have been met” (Ans.
12). The Examiner finds that “Walker employs paper tickets and does not
explicitly teach electronic user equipment, Archer teaches an analogous
system for selling lottery tickets online via electronic user equipment” (Id.).
The Examiner finds that “Small teaches an analogous system for notifying
the user of the automatic participation in the lottery” (Id.). The Examiner
find it obvious “to incorporate the electronic user equipment and notify[] the
user of the automatic participated in the lottery as taught by Archer and
Small into the interactive wagering application of Walker et al. in order to
facilitate the sale and distribution of lottery tickets” (Id.).
Appellant argues that “[f]irst, the Examiner has failed to point out any
suitable suggestion or motivation to combine Walker with Archer and Small.
Second, whether taken alone or in combination Walker, Small, and Archer
do not show or suggest all of the elements of [A]ppellant's claims” (App. Br.
34-35). Appellant argues that “[w]hile Small refers to notifying a user that
he has been automatically entered into a sweepstakes drawing, Small still
does not show or suggest [A]ppellant's claimed feature of ‘notifying the user
of the automatic participation in the lottery [when user specified conditions
have been met]’” (App. Br. 39).
24
Appeal 2009-003302
Application 09/809,922

In view of these conflicting positions, we frame the obviousness issue
before us as follows:
Has Appellant demonstrated that the Examiner erred in concluding
that “automatically participating in the lottery on behalf of the user when the
conditions have been met and notifying the user of the automatic
participation in the lottery” would have been obvious?
Findings of Fact
20. Walker teaches a conditional lottery ticket system which
“permits a player to purchase conditional lottery tickets (i) individually,
whereby the player’s lottery ticket is activated the next time the player-
specified activation conditions are satisfied” (Walker, col. 2, ll. 54-57).
21. Archer teaches “a method for facilitating the purchase and sale
of a lottery ticket online . . . [which] includes a step of receiving an online
request from a purchaser to purchase a lottery ticket in the context of a
lottery operated by a lottery authority” (Archer, col. 2, ll. 31-36).
22. Small teaches a lottery in which “the sweepstakes processor
105 plays the automated sweepstakes-type game using indicia specific to the
user” (Small, col. 10, ll. 60-62).
23. Small teaches that “[i]f desired, the user can be notified of the
results of the sweepstakes at the end of his or her financial transaction”
(Small, col. 10, ll. 63-65).
Analysis
Applying the KSR standard of obviousness to the findings of fact, we
agree with the reasoning of the Examiner. Walker teaches a method where a
user may purchase conditional lottery tickets which result in automatic
25
Appeal 2009-003302
Application 09/809,922

participation in the lottery when the conditions are met (FF 21). Archer
teaches purchasing lottery tickets with electronic user equipment (FF 21).
Small teaches the concept of automatically notifying the user of participation
in the lottery and of the results of the lottery (FF 22-23).
The Examiner provides a specific reason to modify Walker using
Archer and Small, specifically “to facilitate the sale and distribution of
lottery tickets which enhances revenues and an inform that a user has been
successfully entered in the lottery as desirably taught by Archer in col. 1:36-
67 and Small” (Ans. 12). We agree with the Examiner that the combination
of Walker, Archer, and Small is a “predictable use of prior art elements
according to their established functions.” KSR, 550 U.S. at 417.
We are not persuaded by Appellant’s argument that “the Examiner has
failed to point out any suitable suggestion or motivation to combine Walker
with Archer and Small” (App. Br. 34-35). We have already pointed out that
in KSR, the Supreme Court rejected the rigid application of the teaching,
suggestion, and motivation test upon which Appellant’s arguments regarding
reason to combine rely (see App. Br. 35-37; KSR, 550 U.S. at 417). “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR, 550 U.S.
at 416.
We are not persuaded by Appellant’s argument that “the Examiner has
employed hindsight reconstruction in combining the references” (App. Br.
37). Modification of Walker’s conditional lottery method to use
electronically issued lottery tickets as taught by Archer with notification of
the lottery results as taught by Small is the product of ordinary skill,
26
Appeal 2009-003302
Application 09/809,922

ordinary creativity and common sense, not of innovation. See KSR, 550 U.S.
at 421. Thus, no impermissible hindsight was employed by the Examiner.
We are not persuaded by Appellant’s argument that “[w]hile Small
refers to notifying a user that he has been automatically entered into a
sweepstakes drawing, Small still does not show or suggest [A]ppellant's
claimed feature of ‘notifying the user of the automatic participation in the
lottery [when user specified conditions have been met]’” (App. Br. 39). It is
the combination of references which renders this notification obvious. That
is, when the ordinary artisan implements the conditional lottery tickets of
Walker on the electronic system of Small, the ordinary artisan would have
reasonably followed Small’s teaching to notify the participant of their
participation in the lottery (FF 22-23).
Conclusion of Law
Appellant has not demonstrated that the Examiner erred in concluding
that “automatically participating in the lottery on behalf of the user when the
conditions have been met and notifying the user of the automatic
participation in the lottery” would have been obvious.
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C. §
103(a) as being obvious over Schneier and Archer (Ans. 3-5). Pursuant to
37 C.F.R. § 41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 2-6
and 11-16, as these claims were not argued separately.
27
Appeal 2009-003302
Application 09/809,922

We affirm the rejection of claims 1 and 11 under 35 U.S.C. § 103(a)
as being obvious over Dickinson, Rittmaster, and Archer.
We affirm the rejection of claims 2-5, 7, 9, 12-15, 17, and 19 under 35
U.S.C. § 103(a) as being obvious over Dickinson, Rittmaster, Archer and
Lottobot (Ans. 7-8).
We affirm the rejection of claims 6 and 16 under 35 U.S.C. § 103(a)
as being obvious over Dickinson, Rittmaster, Archer and Luciano (Ans. 9).
We affirm the rejection of claims 8 and 18 under 35 U.S.C. § 103(a)
as being obvious over Dickinson, Rittmaster, Archer and SGI (Ans. 10).
We affirm the rejection of claims 10 and 20 under 35 U.S.C. § 103(a)
as being obvious over Dickinson, Rittmaster, Archer and McCollom (Ans.
10-11).
We affirm the rejection of claim 21 under 35 U.S.C. § 103(a) as being
obvious over Walker, Archer and Small (Ans. 11-13). Pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 22-32, as
these claims were not argued separately.

28
Appeal 2009-003302
Application 09/809,922

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)(2006).
AFFIRMED

Ssc:
ROPES & GRAY LLP
PATENT DOCKETING 39/361
1211 AVENUE OF THE AMERICAS
NEW YORK, NY 10036-8704
29