Ex Parte Walker

Board of Patent Appeals and Interferences

Aug 30, 2010

10371787 (B.P.A.I. Aug. 30, 2010)

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.
10/371,787 02/21/2003 Stephen Tobin Walker 5815-00200 9620
35617 7590 08/30/2010
DAFFER MCDANIEL LLP
P.O. BOX 684908
AUSTIN, TX 78768
EXAMINER
COBURN, CORBETT B
ART UNIT PAPER NUMBER
3714
MAIL DATE DELIVERY MODE
08/30/2010 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 STEPHEN TOBIN WALKER
____________

Appeal 2010-007564
Application 10/371,787
Patent 6,394,899
Technology Center 3700
____________

Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
and LINDA E. HORNER and KEN B. BARRETT, Administrative Patent
Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-007564
Application 10/371,787
Patent 6,394,899

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STATEMENT OF THE CASE
Stephen Tobin Walker (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s rejection dated August 16, 2004 in reissue
application 10/371,787. The reissue application seeks to reissue U.S. Patent
6,394,899 B1 (“the ‘899 patent”), issued May 28, 2002, based on
Application 09/430,812, filed October 29, 1999. The reissue application
contains claims 1-65. The Examiner has rejected all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b).
The Examiner entered a new ground of rejection of claims 1-50 under
35 U.S.C. § 101 in the Examiner’s Answer because the claimed invention is
directed to non-statutory subject matter. Ans. 3. The Examiner informed
Appellant that he must, within two months from the date of the Answer,
exercise one of two options to avoid sua sponte dismissal of the appeal as to
claims 1-50: (1) file a reply under 37 C.F.R. § 1.111 to reopen prosecution;
or (2) file a reply under 37 C.F.R. § 41.41 addressing the new ground of
rejection to maintain the appeal as to the claims subject to the new ground.
Ans. 27-28. Appellant failed to exercise either option. As such, we dismiss
the appeal as to claims 1-50. The remainder of this decision addresses the
rejections only as they apply to claims 51-65. We AFFIRM.
THE INVENTION
Appellant’s claimed invention is a knowledge-based wagering game
using a pari-mutuel format where the players’ payout is determined by the
correctness and speed with which the answers are given by a player vis-à-vis
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a pool of other players. ‘899 patent, col. 2, ll. 9-14. Claim 51, reproduced
below, is the sole independent claim on appeal and is representative of the
subject matter on appeal.
51. A knowledge based wagering system, comprising:
a computer system coupled to at least one user input
device and at least one display device, wherein the computer
system comprises software that is adapted to:
display a knowledge based wagering game upon
the display device;
accept wagers entered upon the input device to
form a wager pool;
send at least one inquiry involving a particular
category of knowledge from the computer system to the
display device;
allow entry of a response to the inquiry upon the
input device;
record the length of time in which the response is
entered upon the input device; and
determine payment of an amount from the wager
pool depending on whether the response is correct and on
the recorded time in which the response is entered.
THE REJECTIONS
We review the following Examiner’s rejections:
1. Claims 51-65 under 35 U.S.C. § 251 as being an improper recapture
of broadened claimed subject matter surrendered in the application for
the patent upon which the present reissue is based.
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2. Claims 51-65 under 35 U.S.C. § 103(a) as being unpatentable over
Graves (U.S. 4,593,904; issued June 10, 1986) and NTN Trivia.2,3
ISSUES
The issues presented by this appeal are:
1. Do claims 51-65 impermissibly recapture subject matter
surrendered during prosecution of the ‘899 patent?
2. Would the proposed combination of Graves and NTN Trivia
have rendered obvious software adapted to determine payment depending on
whether a response is correct and on a recorded time in which the response
is entered, as called for in claim 51?
I. RECAPTURE REJECTION
A. FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.

2 “NTN Trivia” refers to Carol Rust, Electronic Trivia Game Takes off in
Popularity, HOUSTON CHRONICLE, Mar. 3, 1996; Nick’s NTN Game Info,
http://lnridge.net/ntn/gameinfo/htm (2000-2002); NTN Network, History,
http://www.ntn.com/history.htm; NTN Network, What is NTN?,
http://www.ntnnetwork.com/owner/what.html; and NTN Players Plus
Program, Players FAQ, http://www.ntnnetwork.com/player/faq.html.
3 The Examiner also rejected claims 24-50 under 35 U.S.C. § 112, first
paragraph, for lack of an enabling disclosure, claims 24-50 under 35 U.S.C.
§ 251 for improper recapture, and claims 1-50 under 35 U.S.C. § 103 as
being unpatentable over Graves and NTN Trivia. We do not reach these
rejections because we have dismissed the appeal as to claims 1-50.
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1. Appellant admits that “[w]hen performing the cursory
comparison between the reissue claims 24, 39, and 51 and original claim 1,
it appears clear that the reissue claims are broadened when compared to the
original patent claims.” App. Br. 8.4
2. Appellant further admits that claim 51 is missing elements 2, 3,
and 95, which “constitute a subset of the missing elements that were
surrendered during prosecution of the Original Application. Accordingly,
pursuant to the second sub-step, broadening of the reissue claims 24, 39, and
51 appear somewhat related to the surrendered subject matter.” App. Br. 10.
B. PRINCIPLES OF LAW
What has become known as the “recapture rule,” prevents a patentee
from regaining through a reissue patent subject matter that the patentee
surrendered in an effort to obtain allowance of claims in the patent sought to
be reissued. In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997).
If a patentee attempts to “recapture” what the patentee previously
surrendered in order to obtain allowance of original patent claims, that
“deliberate withdrawal or amendment … cannot be said to involve the
inadvertence or mistake contemplated by 35 U.S.C. § 251, and is not an
error of the kind which will justify the granting of a reissue patent which

4 “App. Br.” refers to Appellant’s [Second] Supplemental Appeal Brief,
received August 1, 2006.
5 Appellant defines element 2 as “[e]nrolling a plurality of individuals”,
element 3 as “[a]ffording each player an opportunity to wager”, and
element 9 as “[d]isplaying players’ ranking”. App. Br. 8.
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includes the [subject] matter withdrawn.” Mentor Corp. v. Coloplast, Inc.,
998 F.2d 992, 995 (Fed. Cir. 1993) (quoting Haliczer v. United States, 356
F.2d 541, 545 (Ct. Cl. 1966)); see also Hester Indus., Inc. v. Stein, Inc., 142
F.3d 1472, 1480 (Fed. Cir. 1998).
The Federal Circuit’s opinion in Clement discusses a three-step test
for analyzing recapture.
Step 1 involves a determination of “whether and in what ‘aspect’ any
claims sought to be reissued are broader than the patent claims.” 131 F.3d at
1468.
Step 2 involves a determination of whether the broader aspects of the
reissue application claims relate to surrendered subject matter. Id. at 1468-
69.
Step 3 is applied when the broadening relates to surrendered subject
matter and involves a determination of “whether the surrendered subject
matter has crept into the reissue [application] claim.” 131 F.3d at 1469
(citations omitted). Step 3 has three sub-steps.
Sub-step (1): if the reissue claim is as broad as or broader than the
canceled or amended claim in all aspects, the recapture rule bars the claim;
Sub-step (2): if the reissue claim is narrower in all aspects, the
recapture rules does not apply, but other rejections are possible;
Sub-step (3): if the reissue claim is broader in some aspects, but
narrower in others, then:
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(a) if the reissue claim is as broad as or broader in an aspect germane
to a prior art rejection, but narrower in another aspect completely unrelated
to the rejection, the recapture rule bars the claim;
(b) if the reissue claim is narrower in an aspect germane to [a] prior
art rejection, and broader in an aspect unrelated to the rejection, the
recapture rule does not bar the claim, but other rejections are possible. 131
F.3d at 1470.
In North American Container, Inc. v. Plastipak Packaging, Inc., 415
F.3d 1335 (Fed. Cir. 2005), the Federal Circuit had occasion to further
address sub-step (3)(a) of Clement. North American Container involved a
reissue patent, which had been held invalid in district court based on a
violation of the recapture rule. During prosecution of the application for
patent, an examiner rejected the claims over a combination of two prior art
references: Dechenne and Jakobsen. To overcome the rejection, North
American Container limited its application claims by specifying that a shape
of “inner walls” of a base of a container was “generally convex.” North
American Container convinced the examiner that the shape of the base, as
amended, defined over “both the Dechenne patent, wherein the
corresponding wall portions 3 are slightly concave … and the Jakobsen
patent, wherein the entire reentrant portion is clearly concave in its entirety.”
Id. at 1340. After a patent issued containing the amended claims, North
American Container filed a reissue application seeking reissue claims in
which (1) the language “inner wall portions are generally convex” was
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eliminated, but (2) the language “wherein the diameter of said re-entrant
portion is in the range of 5% to 30% of the overall diameter of said side
wall” was added. Id. at 1341-42. Thus, the claim sought to be reissued was
broader in some aspects and narrower in other aspects.
The Federal Circuit, applying the Clement three-step test, held that the
reissue claims were broader in scope than the originally-issued claims in that
they no longer required the “inner walls” to be “generally convex.” The
Federal Circuit further found that the broadened aspect (i.e., the broadened
limitation) “relate[d] to subject matter that was surrendered during
prosecution of the original-filed claims.” North American Container, 415
F.3d at 1350. The Federal Circuit observed “the reissue claims were not
narrowed with respect to the ‘inner wall’ limitation, thus avoiding the
recapture rule.” Id. The Federal Circuit stated:
[t]hat the reissue claims, looked at as a whole, may be of
“intermediate scope” is irrelevant…. [T]he recapture rule is
applied on a limitation-by-limitation basis, and … [North
American Container's] deletion of the “generally convex”
limitation clearly broadened the “inner wall” limitation.
Id. Thus, the Federal Circuit in North American Container further refined
sub-step (3)(a) of Clement: “broader in an aspect germane to a prior art
rejection” means broader with respect to a specific limitation (1) added to
overcome prior art in prosecution of the application which matured into the
patent sought to be reissued and (2) eliminated in the reissue application
claims.
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C. ANALYSIS
Appellant argues claims 51-65 as a group. App. Br. 7-12. As such,
we select claim 51 as representative, and claims 52-65 stand or fall with
claim 51. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant admits that claim 51 fails the first and second steps of the
Clement test (Facts 1 & 2).
As to the third step of the Clement test, Appellant argues that claim 51
is narrower than canceled claims 40, 56, and 71 of the original application
and that “the reissue claims do not entirely omit the added limitations that
consist of all five of the surrendered elements. Specifically, the reissue
claims only omit four of the five surrendered elements since the ‘identifying’
element is clearly set forth in each of the reissue claims.” App. Br. 11. As
such, Appellant appears to argue that under sub-step (3)(b) of the Clement
test, reissue claim 51 is broader in some aspects, but narrower in an aspect
germane to a prior art rejection, and thus the recapture rule does not bar the
claim.
This is not the proper application of the recapture rule. The recapture
rule is applied on a limitation-by-limitation basis. North American
Container, 415 F.3d at 1350. By Appellant’s own admission, claim 51
entirely omits limitations 2, 3 and 9 of patented claim 1, which were
surrendered during the original prosecution. As in North American
Container, the fact that reissue claim 51, looked at as a whole, may be of
intermediate scope because it includes one of the five surrendered
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limitations, is irrelevant. Id. As such, claim 51 fails step (3) of the Clement
test, and is barred by the recapture rule. Claims 52-65 fall with claim 51.
II. OBVIOUSNESS REJECTION
A. ADDITIONAL FINDINGS OF FACT
3. Graves describes that prior art video entertainment devices
generally consist of “a game program that is self-contained within the unit
with the player playing against the machine itself,” and this provides
disadvantages in that the “machines lack versatility and do not provide one
player the ability to interact with other players,” etc. Graves, col. 1, ll. 23-
35.
4. In the system of Graves, numerous remote display units are
connected via a data link with a central receiving and processing station.
Graves, col. 1, ll. 6-9 and 44-48. The central processing station receives
responses to inquiries from each remote display unit, compares all of the
responses received, and selects winners “based on the responses and an
established algorithm for winner selection.” Graves, col. 1, ll. 57-63.
5. Graves describes as one “example” that “players who select the
‘least’ selected multiple choice answer to a posed question could be
winners.” Graves, col. 1, ll. 63-65. Again in the description of one
embodiment of the system, Graves refers to an example of Figure 2 in which
is shown a sample question with a set of corresponding responses, for which
the player has been instructed that he will receive a reward if he selects the
response that was least selected by the other players at the different
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locations. Graves, col. 3, l. 66 – col. 4, l. 2. Graves explains in the context
of this example that “[i]t is not the objective of the player to guess the most
likely answer, but, rather he is trying to determine which response the other
players would choose as a least likely response and avoid that response.”
Graves, col. 4, ll. 4-8.
6. Graves describes that a time limit is displayed that tells the
player how much time he has within which to input his response, and if he
does not input his response within the allotted time, he may forfeit the game,
be provided an additional game, or receive a refund. Graves, col. 4, ll. 9-15.
B. ANALYSIS
Appellant presents arguments only for independent claim 51, and does
not separately argue any of dependent claims 52-65. App. Br. 13-18. As
such, we select claim 51 as representative, and claims 52-65 stand or fall
with claim 51.
The Examiner found that Graves teaches a computer 10 coupled to a
display 12, where the system allows a player to place a wager, and then once
the wager is accepted, the player can access the computer system at the
central station. Ans. 19-20. The computer system sends at least one inquiry
involving a particular area of knowledge to the display device, and allows
players to choose a response, which response is sent back to the central
server. Ans. 20. The Examiner proposed to substitute the NTN Trivia game
into the system of Graves, such that the modified system would record the
length of time in which the response is entered and determine a payout based
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on the correctness of the response and the amount of time it took to answer
the question. Id.
The inventive concept described in Graves was to provide a system
that would allow players to play a game against other players via a network
(Facts 3 & 4). While Graves describes one example in which the object of
the game is for the player to select the least likely response (Fact 5), Graves
certainly suggests that other algorithms, besides the specific example
disclosed, could be used in the system of Graves to select winners (Fact 4).
As such, Graves does not teach away from substituting a different algorithm
for selecting winners, such as the algorithm taught in NTN, in place of
Graves’s exemplary algorithm, as argued by Appellant. Contra App. Br. 13-
14. “A reference may be said to teach away when a person of ordinary skill,
upon reading the reference, . . . would be led in a direction divergent from
the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327,
1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192
F.3d 1353, 1360 (Fed. Cir. 1999)). We find that Graves would not have led
a person of ordinary skill away from the substitution proposed by the
Examiner.
Further, while Graves takes into account whether a player inputs a
response within an allotted time period to determine whether the player is
eligible for a payout (Fact 6), we agree with Appellant that Graves does not
explicitly teach using the time it takes a player to answer a question to
determine a payout amount. App. Br. 14-15. That said, we do not agree
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with Appellant that Graves would have led one skilled in the art away from
using an algorithm in the system of Graves that ranks a player based on the
time taken, such as taught in NTN. See App. Br. 14-16. Again, Graves
suggests that other algorithms for selecting winners can be used in its system
(Fact 4), and thus, depending on the algorithm used, different factors can be
taken into account. Even though Graves does not explicitly record and use
the time it takes a player to answer a question to determine a payout amount,
Graves certainly would not have led a person of ordinary skill away from
using a different algorithm to determine winners that takes this factor into
account.
Appellant has not presented any persuasive arguments to show why
the Examiner’s reasons to combine are not based on a rational underpinning.
Rather, Appellant argues generally that the Examiner’s position is
“speculative” and that “the burden is on the Examiner to find some
suggestion in the prior art references themselves.” App. Br. 17.
Appellant’s argument is based on outdated law. A rigid application of the
teaching-suggestion-motivation test was disavowed in KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398 (2007), in which the Court stated:
Helpful insights, however, need not become rigid and
mandatory formulas; and when it is so applied, the TSM test is
incompatible with our precedents. The obviousness analysis
cannot be confined by a formalistic conception of the words
teaching, suggestion, and motivation, or by overemphasis on
the importance of published articles and the explicit content of
issued patents. The diversity of inventive pursuits and of
modern technology counsels against limiting the analysis in this
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way. In many fields it may be that there is little discussion of
obvious techniques or combinations, and it often may be the
case that market demand, rather than scientific literature, will
drive design trends. Granting patent protection to advances that
would occur in the ordinary course without real innovation
retards progress and may, in the case of patents combining
previously known elements, deprive prior inventions of their
value or utility.
Id. at 419.
The Examiner’s reasons for modifying Graves as proposed included:
(1) “the format of NTN is more rewarding for players as they are rewarded
for their actual knowledge, not for their knowledge based guessing ability, as
disclosed by Graves”; (2) both of the games are directed to multiple choice
knowledge games, so that incorporation of another type of trivia game into
the system of Graves would be an obvious design choice; (3) “the players
would be more excited to play as they are rewarded based upon how fast
they answer the question as well as the accuracy in which they answer,
creating a more exciting and competitive environment”; (4) “the trivia
format of NTN would provide more excitement to the player rewarding them
for quickness, thus encouraging further play and further revenue for the
house that would be keeping a share.” Ans. 11.
We find that the Examiner’s reasons for substituting the algorithm of
NTN for the algorithm of Graves are based on considerations of market
demand and trends, as evidenced by NTN, and are thus based on a rational
underpinning. As such, we will sustain the rejection of claims 51-65 under
35 U.S.C. § 103.
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CONCLUSIONS
Claims 51-65 impermissibly recapture subject matter surrendered
during prosecution of the ‘899 patent.
The proposed combination of Graves and NTN Trivia would have led
one having ordinary skill in the art to software adapted to determine
payment depending on whether a response is correct and on a recorded time
in which the response is entered.
DECISION
The appeal is dismissed as to claims 1-50.
The decision of the Examiner to reject claims 51-65 is AFFIRMED.

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)(1)(iv) (2007).

AFFIRMED

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