Ex Parte Webb

Board of Patent Appeals and Interferences

Dec 8, 2010

10288298 (B.P.A.I. Dec. 8, 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.
10/288,298 11/06/2002 Derek J. Webb 2674-90 (AMK) 7110
23117 7590 12/09/2010
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
YOO, JASSON H
ART UNIT PAPER NUMBER
3718
MAIL DATE DELIVERY MODE
12/09/2010 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 DEREK J. WEBB
____________________

Appeal 2010-006112
Application 10/288,298
Technology Center 3700
____________________

Before ALLEN R. MacDONALD, LINDA E. HORNER, and
KEN B. BARRETT, Administrative Patent Judges.

MacDONALD, 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 2010-006112
Application 10/288,298

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STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
3, 4, 6, 8-22, 25, and 27-35. Claims 2, 5, 7, 23, 24, and 26 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claims
Exemplary claims 1 and 6 under appeal read as follows:
1. A method of playing a game of chance comprising:
(a) configuring multiple short decks of cards using only
Tens, Jacks, Queens, Kings and Aces from corresponding
multiple conventional decks of cards, wherein each of the
multiple short decks of cards has at least one distinguishing
characteristic;
(b) using at least one device or using a table, receiving a
wager from a player;
(c) dealing a five-card hand to the player from the short
decks of cards;
(d) enabling the player to discard at least one card and
draw a corresponding number of additional cards; and
(e) resolving the wager by taking the wager or paying a
payout based on a poker ranking of the five-card hand and by
multiplying the payout by a first multiplier if the five-card hand
exceeds a predetermined poker ranking and comprises cards
with matching distinguishing characteristics.
6. A method according to claim 1, wherein each of the
multiple short decks of cards has two distinguishing
characteristics, and wherein step (e) is further practiced by:
multiplying the payout by the first multiplier if the
five-card hand comprises cards matching a first of the two
distinguishing characteristics,
multiplying the payout by a second multiplier if the
five-card hand comprises cards matching a second of the two
distinguishing characteristics, and
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multiplying the payout by a third multiplier if the
five-card hand comprises cards matching both of the two
distinguishing characteristics.
Rejections on Appeal
The Examiner rejected claims 1, 3, 4, 6, 8-18, 22, 25, and 27-35 under
35 U.S.C. 101 as being directed to non-statutory subject matter.
The Examiner rejected claims 1, 3, 6, 8-16, 18, 19, 21, 22, 25, and
27-30 under 35 U.S.C. 103(a) as being unpatentable over the combination of
Andrews (US 5,908,353) and Kennedy (US 6,474,649 B1).2
The Examiner rejected claim 17, which depends from claim 16, under
35 U.S.C. 103(a) as being unpatentable over the combination of Andrews,
Kennedy, and Yoseloff (US 5,803,809).3
The Examiner rejected claim 20, which depends from claim 19, under
35 U.S.C. 103(a) as being unpatentable over the combination of Andrews,
Kennedy, and Kelly (US 5,816,918).
The Examiner rejected claims 31-35, which depend from claim 22,
under 35 U.S.C. 103(a) as being unpatentable over the combination of
Andrews, Kennedy, and Holmes (US 6,220,959 B1).4

2 Contrary to the Examiner’s various statements of the rejections under
35 U.S.C. § 103(a), claim 25 is rejected along with claim 6 at pages 5-6 of
the Final Office Action and pages 7-8 of the Examiner’s Answer.

3 The rejections of dependent claims 17 and 20 under 103(a) are not
separately argued from the rejection of their independent claims under
35 U.S.C. § 103(a).

4 Contrary to Examiner’s statement of the rejection as under
35 U.S.C. § 102(a), the Examiner’s reasoning clearly sets forth a
rejection under 35 U.S.C. § 103(a).
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Appellant’s Contentions
1. In argument Section 1 at page 14 of Appellant’s Appeal Brief,
Appellant contends that the Examiner erred in rejecting claims 1, 3, 4, 6,
8-18, 22, 25, and 27-35 under 35 U.S.C. § 101.5
2. In argument Section 2 at pages 14-16 of Appellant’s Appeal
Brief, Appellant contends that the Examiner erred in rejecting claims 1, 3, 6,
8-16, 18, 19, 21, 22, 25, and 27-30 under 35 U.S.C. § 103(a) as being
unpatentable because: “The Kennedy patent, however, does not describe a
payout multiplier for hands formed with matching distinguishing
characteristics.” (App. Br. 15).
3. In argument Section 2 at page 17 of Appellant’s Appeal Brief,
Appellant contends that the Examiner erred in rejecting claim 29 under
35 U.S.C. § 103(a) as being unpatentable because:
Since the animal characters are distinguished by suit, and since
the animal characters are only provided on seven sets (out of
32) in the eight standard decks of cards, Appellant submits that
Andrews and Kennedy additionally lack the step of
[“]configuring multiple short decks of cards . . . , wherein each
of the multiple short decks of cards has at least one
distinguishing characteristic, respectively.”
4. In argument Section 2 at pages 17-18 of Appellant’s Appeal
Brief, Appellant contends that the Examiner erred in rejecting claims 6 and
25 under 35 U.S.C. § 103(a) as being unpatentable because:
Appellant respectfully submits that it is not remotely obvious to
utilize two distinguishing characteristics in conjunction with
playing cards that already incorporate characteristics of suit and
rank. Moreover, claims 6 and 25 define first, second and third

5 Contrary to Appellant’s statement, claims 19-21 are not rejected under
35 U.S.C. § 101.
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multipliers for winning payouts based on combinations of
hands including the two distinguishing characteristics.
(App. Br. 18).
5. In argument Section 2 at page 18 of Appellant’s Appeal Brief,
Appellant contends that the Examiner erred in rejecting claims 14-16 under
35 U.S.C. § 103(a) as being unpatentable because: “In this chart, the payout
for the side wager is entirely unrelated to the underlying game, and
Appellant submits that such payouts can be distinguished from the payout
multiplier defined in the claimed invention.”
6. In argument Section 5 at pages 19-21 of Appellant’s
Appeal Brief, Appellant contends that the Examiner erred in rejecting
claims 31-35 under 35 U.S.C. § 103(a) as being unpatentable because:
“In contrast, according to the claimed invention, the payout is
multiplied if the player’s winning hand includes cards with matching
distinguishing characteristics, regardless of a dealer hand.” (App. Br.
21).
Issues on Appeal
Did the Examiner err in rejecting claims 1, 3, 4, 6, 8-18, 22, 25, and
27-35 under 35 U.S.C. 101 as being directed to non-statutory subject matter?
Did the Examiner err in rejecting claims 1, 3, 6, 8-22, 25, and 27-35
as being obvious because the references fail to teach or suggest the argued
limitations?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
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We disagree with Appellant’s conclusion. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellant’s Appeal Brief. We concur
with the conclusion reached by the Examiner.
As to Appellant’s contention numbered as 1 above, we agree with the
Examiner’s conclusion that the claims are directed to non-statutory subject
matter. The Examiner rejected the claims as filed as being directed to non-
statutory subject matter. Appellant attempted to render the claims statutory
by adding “using at least one device or using a table” to the claims by
amendment. We conclude that this amendment fails to limit the original
claim in any meaningful way. Merely claiming that one step in a non-
statutory method will now be carried out by some unnamed “device” does
not render statutory the non-statutory method.
As to Appellant’s contention numbered as 2 above, we agree with the
Examiner that Kennedy teaches “multiplying the payout by a first multiplier
if the hand comprises cards with matching distinguishing characteristics”
(Final Action 5 (citing col. 7, ll. 50-67)). The language of claim 1 is equally
broad and states “multiplying the payout by a first multiplier if the five-card
hand exceeds a predetermined poker ranking and comprises cards with
matching distinguishing characteristics.” Nothing in the language of the
claim requires the more limited “hands formed with matching distinguishing
characteristics” as argued by Appellant. Further, we disagree with Appellant
that his single wager patentably distinguishes over Kennedy’s use of a main
wager covering the value of the hand and side wager to cover the cards with
matching distinguishing characteristics. Following the legal standard set
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forth by the Court in KSR, we conclude that the situation before us is most
analogous to that found in Anderson’s-Black Rock, Inc. as discussed by the
Court in KSR:
In Anderson’s-Black Rock, Inc. v. Pavement Salvage Co.,
396 U.S. 57 . . . (1969), the Court elaborated on this approach.
The subject matter of the patent before the Court was a device
combining two pre-existing elements: a radiant-heat burner and
a paving machine. The device, the Court concluded, did not
create some new synergy: The radiant-heat burner functioned
just as a burner was expected to function; and the paving
machine did the same. The two in combination did no more
than they would in separate, sequential operation. Id., at 60-62
. . . . In those circumstances, “while the combination of old
elements performed a useful function, it added nothing to the
nature and quality of the radiant-heat burner already patented,”
and the patent failed under § 103. Id., at 62 . . . (footnote
omitted).
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416-17 (2007). We conclude
that combining the two pre-existing elements (main wager and side wager)
into a single wager adds nothing of significance to the nature and quality of
the gaming method already patented and is well within the level of skill in
the art. Therefore, the Examiner did not err based on this contention set
forth by Appellant.
As to Appellant’s contention numbered as 3 above, we agree with the
conclusion of the Examiner. Appellant’s argument that “the animal
characters are distinguished by suit, and . . . the animal characters are only
provided on seven sets (out of 32) in the eight standard decks of cards” is
particularly misplaced given the teachings in Kennedy that “the cards of
each set having respective animal characters thereon” and “more or fewer
than thirteen cards may be included in each set” (col. 4, ll. 5-7). We agree
with the Examiner that providing distinguishing characteristics on multiple
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short decks of cards would have been obvious in view of the teachings of
Kennedy.
As to Appellant’s contention numbered as 4 above, we again agree
with the conclusion of the Examiner that it would have been obvious to add
further levels of distinguishing characteristics and further levels of wager
payouts.
As to Appellant’s contention numbered as 5 above, we disagree with
Appellant’s conclusion for the reasons already set forth above.
As to Appellant’s contention numbered as 6 above, we disagree with
Appellant’s conclusion. Appellant’s conclusion is premised on Kennedy
always requiring that the symbols on the player’s cards match the symbol in
the dealer’s hand. The poker embodiment in Kennedy only requires that the
symbols in the player’s hand match (i.e., match each other) (col. 9,
ll. 24-30).

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1, 3, 4, 6, 8-18, 22,
25, and 27-35 as being unpatentable under 35 U.S.C. § 101.
(2) The Examiner has not erred in rejecting claims 1, 3, 6, 8-22, 25,
and 27-35 as being unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1, 3, 4, 6, 8-22, 25, and 27-35 are not patentable.
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DECISION
The Examiner’s rejections of claims 1, 3, 4, 6, 8-22, 25, and 27-35 are
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)(1)(v).

AFFIRMED

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NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203