Lee M. Amaitis et al.

Patent Trials and Appeals Board

Aug 5, 2019

13561303 - (D) (P.T.A.B. Aug. 5, 2019)

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.
13/561,303 07/30/2012 Lee M. Amaitis 04-7121-C4 8026
63710 7590 08/05/2019
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
HSU, RYAN
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
08/05/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
lkorovich@cantor.com
patentdocketing@cantor.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LEE M. AMAITIS, JOSEPH M. ASHER,
HOWARD W. LUTNICK, DARRIN M. MYLET, and ALAN B. WILKINS
____________

Appeal 2018-003808
Application 13/561,303
Technology Center 3700
_______________

Before LINDA E. HORNER, LISA M. GUIJT, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–6, 8–12, 16–30, 33, and 36–39.2 We have jurisdiction
under 35 U.S.C. § 6(b).

1 Interactive Games LLC is identified as the real party in interest. Appeal
Br. 3.
2 Appeal is taken from the Final Office Action dated May 17, 2017.
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We REVERSE.

CLAIMED SUBJECT MATTER
Claims 1 and 33 are the independent claims on appeal. Claim 1,
reproduced below, is exemplary of the subject matter on appeal.
1. A method comprising:
transmitting, by at least one server of a gaming
service provider, a first component of a gaming
application to a plurality of devices over a non-Internet
network and a second component of the gaming
application to the plurality of the devices over the Internet,
wherein the gaming application includes software
instructions to present a graphical representation of a slot
machine on respective devices, and wherein the gaming
application is configured to interface with a server
application and enable respective devices to engage in a
slot machine game together with the server application;
detect selection of an option related to the slot
machine;
in response to detecting the selection of the option,
determining by the at least one server whether the device
is located within a pre-defined location; and
allowing, by the at least one server, the device to
engage in the slot machine game, in response to
determining that the device is located in the pre-defined
location.

THE REJECTIONS3
I. Claims 1–6, 8–12, 16–30, 33, and 36–39 stand provisionally
rejected on the ground of nonstatutory double patenting as being

3 The Final Office Action includes objections to the drawings. Final Act. 5‒
6. Appellants do not seek our review of these objections, which are a
petitionable, not appealable, matter.
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unpatentable over claims 1–30 of U.S. Application No. 13/561,335 and
claims 1–18 of U.S. Application No. 13/561,299.
II. Claims 1–6, 8–12, 16–30, 33, and 36–39 stand rejected under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
III. Claims 1–6, 8–12, 16–30, 33, and 36–39 stand rejected under
35 U.S.C. § 112, second paragraph, as indefinite.
IV. Claims 1–3, 6, 8–12, 16–18, 23–25, 27–29, 33, and 37–39 stand
rejected under 35 U.S.C. § 102(b) as anticipated by Wells (US
2003/0064805 A1; published Apr. 3, 2003).
V. Claims 4, 5, 19, and 26 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Wells and Carter, Sr. (US 7,510,474 B2; issued Mar.
31, 2009).
VI. Claim 20 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Wells and Nguyen (US 2005/0181870 A1; published Aug.
18, 2005).
VII. Claims 21 and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wells and Mages (US 2003/0006931 A1; published Jan.
9, 2003).
VIII. Claim 30 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Wells and Lardie (US 2005/0026670 A1; published Feb.
3, 2005).

ANALYSIS
Rejection I
The Examiner rejects claims 1–6, 8–12, 16–30, 33, and 36–39 on the
ground of nonstatutory double patenting as being unpatentable over claims
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1–30 of U.S. Application No. 13/561,335 and claims 1–18 of U.S.
Application No. 13/561,299. Final Act. 7–10.
Appellants argue that a terminal disclaimer has been filed that renders
the rejection moot. Appeal Br. 7. However, we have been unable to locate a
terminal disclaimer in the record before us, nor has the Examiner expressly
withdrawn the rejection. See Ans. 1–7.
We decline to reach this undisputed provisional rejection. See In re
Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010) (precedential). The rejection
is provisional, and Application Nos. 13/561,299 and 13/561,335 remain
copending and not allowed; accordingly, the issues are not ripe for decision.
Rejection II
Regarding independent claim 1, the Examiner determines that,
although disclosed in the Specification, the claim term “non-Internet
[network],” which the Examiner characterizes as a negative claim limitation,
is “not explicitly defined in the Specification;” rather, “the Specification
merely states exemplary communication technologies.” Final Act. 11 (Spec.
6:17–7:5); see also Ans. 3 (finding “[t]he generic claim language in the
original disclosure does not satisfy the written description requirement for
the genus claimed”). The Examiner concludes that the Specification’s
“general listing of different communication technologies . . . does not
provide or impose any limitations [as] to how the non-Internet
communications path is accomplished.” Final Act. at 12. The Examiner
concludes that “the breadth of the limitation effectively covers all ways for
non-Internet communications.” Id. at 11‒12.
Appellants submit that “[i]nformation . . . well known in the art need
not be described in detail in the specification.” Appeal Br. 9 (citing MPEP
§ 2163(II)(A)(2) (emphasis omitted). Appellants also submit that the
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Specification provides written description support for the claim term
“non-Internet [network]” because the Specification discloses that “[a]mong
other things, certain embodiments of the present invention incorporate
non-Internet based technology with respect to a communications network in
order to avoid the problems encountered in operating a gaming system via
the Internet.” Id. (citing Spec. 2:13–15) (emphasis omitted); see also id. at
10 (citing Spec. 7:9–12, 16–20). Appellants conclude that “one of ordinary
skill in the art would not require more details tha[n] what was originally
disclosed [in the Specification].” Id. at 10. Appellants further rely on
MPEP § 2173.05(I): “There is nothing inherently ambiguous or uncertain
about a negative limitation. So long as the boundaries of the patent
protection sought are set forth definitely, albeit negatively, the claim
compiles with the requirements of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C.
112, second paragraph.” Id. at 8.
To satisfy the written description requirement, the specification must
describe the claimed invention in sufficient detail that one skilled in the art
can reasonably conclude that the inventor had possession of the claimed
invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir.
1991). Specifically, the specification must describe the claimed invention in
a manner understandable to a person of ordinary skill in the art and show
that the inventor actually invented the claimed invention. Id. at 1562–63;
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc).
The Specification describes that “undesirable aspects” of
“Internet-based electronic gaming systems” include a lack of security (i.e.,
against tampering) and privacy. Spec. 2:2–5. The Specification similarly
describes “an Internet gaming system is prone to hacking, viruses, and other
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shortcomings of conducting business over the Internet,” and does the
Internet “provide location verification.” Id. at 2:5–10. The Specification
also discloses that “[i]n one embodiment, the convenience gaming system
communications network is entirely independent of the Internet,” and “[i]n
another embodiment, the convenience gaming system operation makes
minimal use of the Internet, such that only information for which there is no
security issues is transmitted via the Internet and/or information may be
encrypted.” Id. at 4:26–5:1.
We construe the term “Internet” to mean “[a] global computer
network providing a variety of information and communication facilities,
consisting of interconnected networks using standardized communication
protocols.” https://www.lexico.com/en/definition/internet (last visited June
21, 2019). Thus, incorporating the prefix “non-,” as in “non-Internet
network” means a network that is not connected to this global computer
network, as defined supra.4 Thus, because one of ordinary skill in the art
would recognize that a non-Internet network is a network that is not
connected to the Internet network, we determine that the Specification
describes the claimed invention in a manner understandable to a person of
ordinary skill in the art, such that the inventors actually invented the claimed
invention. We apply the same analysis to independent claim 33, which
recites “a non-Internet network,” and dependent claims 2–6, 8–12, 16–30,
and 36–39. Appeal Br. 24 (Claims App.). Accordingly, we do not sustain

4 Although the Specification implies that non-Internet networks are more
secure, the Specification does not identify, with any specificity, any
characteristics of a non-Internet network that result in greater security as
compared to an Internet network. Therefore, we do not attribute anything
more to the definition of “non-Internet network” supra relative to security.
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the Examiner’s rejection of claims 1‒6, 8‒12, 16‒30, 33, and 36‒39 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Rejection III
The Examiner determines that the claim term “non-Internet
[network]” is indefinite because “one of ordinary skill in the art would not
recognize the metes and bounds of the invention.” Final Act. 12.
Appellants argue that “the term Internet is readily ascertainable by one
of ordinary skill in the art,” and therefore, the meaning of the claim term
“non-Internet” is definite. Appeal Br. 11.
A claim is properly rejected as indefinite under 35 U.S.C. § 112,
second paragraph if, after applying the broadest reasonable interpretation in
light of the specification, the metes and bounds of a claim are not clear
because the claim “contains words or phrases whose meaning is unclear.” In
re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014) (per curiam).
As discussed supra, we determine that the meaning of “a non-Internet
network” as claimed is clear and means a network that is not part of the
Internet, which is recognized as the global computer network providing a
variety of information and communication facilities, and consisting of
interconnected networks using standardized communication protocols.
Accordingly, we do not sustain that Examiner’s rejection of claims
1‒6, 8‒12, 16‒30, 33, and 36‒39 under 35 U.S.C. § 112, second paragraph,
as being indefinite.
Rejection IV
Regarding independent claim 1, the Examiner finds that Wells
discloses, inter alia, transmitting a first component of a gaming application
(i.e., “game outcome information”) to devices over a non-Internet network
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(i.e., “a Bluetooth connection”) and a second component of the gaming
application (i.e., information in “an entertainment mode”) to the devices
over the Internet (i.e., “a web-based browser”). Final Act. 13 (citing Wells
¶¶ 18, 21, 63, 72–74, 82, 106, Fig. 4). The Examiner also finds “Wells
discloses that during particular game operation modes, the player may select
an entertainment content source . . . which may provide content utilizing an
Internet path.” Ans. 5–6 (citing Wells ¶¶ 72, 74). The Examiner further
finds that “[a]s the entertainment module is in at least one embodiment a
component of particular game modes it has be[en] construed as the second
component of the game application which utilized an Internet path.” Id. at 6.
The Examiner finds that Wells discloses that “the gaming application
includes software instructions to present a graphical representation of a slot
machine on respective devices,” as claimed. Final Act. 13 (citing Wells
¶¶ 82–83 (for disclosing “wherein the programs stored in memory render a
graphical representation of a slot game”) (emphasis added).5
Appellants argue “[the Examiner’s] assertion that the entertainment
information corresponds to a portion of the gaming application is erroneous,
since Wells explicitly teaches that the entertainment information is
independent of gaming and that it is transmitted over the Internet when the
game is not being played.” Appeal Br. 16 (citing Wells ¶ 72)(emphasis

5 Notably, Wells discloses that “video frame data to present a game of
chance may be directly streamed from gaming machine 2 via the wireless
interface 248” and “[t]he video frame data may be stored in a memory 258
on the wireless game player 258 and then displayed on the display 125.”
Wells ¶ 81; see also id. ¶ 82 (disclosing that “the memory 258 may store a
graphical program to render a slot machine or a graphical program to render
a card game”).
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omitted); see also id. (“[Wells’s] entertainment content is not a portion of
the gaming applications.”).
Claim 1, as set forth supra, recites
transmitting, by at least one server . . . , a first component of a
gaming application to . . . devices over a non-Internet network
and a second component of the gaming application to . . . the
devices over the Internet, wherein the gaming application
includes software instructions to present a graphical
representation of a slot machine on respective devices.
The claim terms “a first component” and “a second component” of a gaming
application are not disclosed in the Specification as originally filed;
however, an ordinary definition of the term “component” is “a part or
element of a whole.” https://www.lexico.com/en/definition/component (last
visited June 21, 2019). Regarding the claim term “gaming application,” the
Specification discloses that “some example gaming applications include
horse racing and other sports, financial exchange, casino and/or virtual
casino, entertainment and other events exchange, and news and real time
entertainment” wherein “[e]ach of these applications may be embodied in
one or more software modules” and “[t]he applications may be combined in
any possible combination.” Spec. 9:17–21. We interpret the combination of
gaming applications to require that each gaming application is identifiable
on its own, as part of a combination; in other words, the claim term “a
gaming application” does not read on a combination of a slot machine
gaming application combined with an entertainment gaming application.
Wells’s gaming system involves a gaming machine for operating a
wireless game player via a wireless connection. Wells, Abstract. With
respect to “entertainment services,” relied on by the Examiner as the claimed
second component, Wells discloses that the gaming machine may have “a
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network interface . . . used to communicate with . . . remote servers” such as
“a game server, an entertainment content server, [and] a web-server.” Id. ¶
18. Wells also generally discloses “sending entertainment content to the
wireless game player” such as “a web page.” Id. ¶ 23. More specifically,
Wells discloses that
broadcasts of competitive events on which the player can wager
may be displayed. For example, dog racing or horse racing
events may be displayed as content on the remote display
125 . . . . Also, the television programming entertainment
content may be displayed while a player is engaged in playing a
game on the wireless game player 125 or between games.
Similarly, the entertainment content may include information
available on the Internet.
Id. ¶ 62. Thus, Wells at least suggests the claimed bifurcation of
components of a gaming application, because Wells discloses that for a
horse racing gaming application, the gaming machine transmits to the
wireless game player a first component (i.e., a wager or outcome for the
horse race) over a non-Internet network (i.e., a game server) and a second
component (i.e., the horse race itself) over the Internet. Wells’s disclosure is
contrary to Appellants’ arguments supra, in that Wells discloses that
entertainment content may not be “independent of gaming” and also may be
transmitted over the Internet when the game is being played.
A preponderance of the evidence, however, does not support the
Examiner’s reliance on Wells for disclosing the transmission of
entertainment content for a gaming application, wherein the gaming
application also includes software instructions to present a graphical
representation of a slot machine, as required by claim 1, or similarly, of a
table game, as required by independent claim 33. See Final Act. 13, 17
(relying on the same findings with respect to Wells for the claimed first and
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second components of a gaming application as relied upon in the rejection of
claim 1). In other words, as argued by Appellants, Wells lacks support for
the Examiner’s finding that entertainment services, as disclosed in Wells, are
a component of the same gaming application as the outcome component of a
gaming application including software for presenting graphical
representations of slot or table games (i.e., slot or table game gaming
applications), as required by claims 1 and 33. To the extent the Examiner
relies on Wells for disclosing a slot machine gaming application combined
with an entertainment gaming application, as discussed supra, we determine
that claims 1 and 33 require the bifurcation of the components to derive from
a single one of each of the gaming applications in the combination.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1 and 33, and claims 2, 3, 6, 8–12, 16–18, 23–25, 27–29,
and 37–39 depending therefrom under 35 U.S.C. § 102(b) as anticipated by
Wells.
Rejections V–VIII
The Examiner’s reliance on the following references does not cure the
deficiency in the Examiner’s reliance on Wells in the rejection of
independent claims 1 and 33 discussed supra: (i) Carter, Sr. for disclosing
private and public networks, detecting a user’s location by triangulation, and
an authorized gaming area comprising two geographically separate locations
(Final Act. 19–20); (ii) Nguyen for disclosing detecting a user’s location by
multilateration (id. at 20–21); (iii) Mages for disclosing identification of the
network or base station being accessed by the device to determine the user’s
location (id. at 21–22); and (iv) Lardie for disclosing verifying a player to
track wager information (i.e., a player’s funds) (id. at 22).
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Accordingly, we do not sustain the Examiner’s rejections of claims 4,
5, 19–22, 26, and 30 under 35 U.S.C. § 103(a) as unpatentable over Wells
and any of Carter, Nguyen, Mages, or Lardie.
DECISION
We do not reach the Examiner’s rejection of claims 1–6, 8–12, 16–30,
33, and 36–39 on the ground of nonstatutory double patenting rejection.
The Examiner’s rejection of claims 1–6, 8–12, 16–30, 33, and 36–39
under 35 U.S.C. § 112, first paragraph, is REVERSED.
The Examiner’s rejection of claims 1–6, 8–12, 16–30, 33, and 36–39
under 35 U.S.C. § 112, second paragraph, is REVERSED.
The Examiner’s rejection of claims 1–3, 6, 8–12, 16–18, 23–25, 27–
29, 33, and 37–39 under 35 U.S.C. § 102(b) as anticipated by Wells is
REVERSED.
The Examiner’s rejection of claims 4, 5, 19–22, 26, and 30 under 35
U.S.C. §103(a) as unpatentable over Wells and any of Carter, Nguyen,
Mages, or Lardie is REVERSED.

REVERSED