Ex Parte Amaitis et alDownload PDFPatent Trial and Appeal BoardMar 13, 201712836863 (P.T.A.B. Mar. 13, 2017) Copy Citation 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. 12/836,863 07/15/2010 Lee AMAITIS 10-2289 3083 63710 7590 03/15/2017 INNOVATION DIVISION CANTOR FITZGERALD, L.P. 110 EAST 59TH STREET (6TH FLOOR) NEW YORK, NY 10022 EXAMINER LEE, WEI ART UNIT PAPER NUMBER 3714 NOTIFICATION DATE DELIVERY MODE 03/15/2017 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): patentdocketing @ cantor.com lkoro vich @ c antor. com phowe @ cantor.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LEE AMAITIS and NOEL FUENTES Appeal 2014-007402 Application 12/836,863 Technology Center 3700 Before LINDA E. HORNER, ERIC C. JESCHKE, and PAUL J. KORNICZKY, Administrative Patent Judges. KORNICZKY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants, Lee Amaitis et al.,1 appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1—22. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART and ENTER NEW GROUNDS OF REJECTION. Appellants identify CFPH, L.P. as the real party in interest. Appeal Br. 3. Appeal 2014-007402 Application 12/836,863 THE CLAIMED SUBJECT MATTER The claims are directed to amusement devices and games involving successive choices. Spec. 1, Title. Claims 1 and 2 are the independent claims. Appeal Br. 15—19. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An apparatus comprising: a non-transitory machine readable medium having stored thereon a plurality of instructions that when executed by a processor cause the processor to: facilitate play of a plurality of games of blackjack; based on respective outcomes of each of the plurality of games of blackjack, determine that progress towards a bonus game should be made; based on the progress towards the bonus game made based on the respective outcomes of each of the plurality of games, determine that the bonus game should be played; in response to determining that the bonus game should be played, present a first respective set of first respective choices to a player, in which the first respective choices are non-distinct from one another other than in respective aesthetics and respective positions; receive a first selection of a respective choice from the first respective set of choices from the player; in response to receiving the first selection, determine that the first selection includes a correct choice; in response to determining that the first selection includes the correct choice, offer the player an award to end the bonus game; determine that the player does not desire to end the bonus game; in response to determining that the player does not desire to end the bonus game, present a second respective set of second respective choices to the player, in which the second choices are non-distinct from one another other than in aesthetics and positions; 2 Appeal 2014-007402 Application 12/836,863 receive a second selection of a respective choice from the second respective set of choices from the player; in response to receiving the second selection, determine that the second selection includes an incorrect choice; and in response to determining that the second selection includes the incorrect choice, end the bonus game without providing the offered award to the player. Id. at 15. REFERENCES In rejecting the claims on appeal, the Examiner relied upon the following prior art: Marks Taylor Nicely Cuddy Nguyen Souza Schultz US 2003/0236116 A1 US 2004/0102238 A1 US 2004/0116179 A1 US 2004/0204223 A1 US 2005/0043088 A1 US 2005/0054419 A1 US 2008/0113702 A1 Dec. 25, 2003 May 27, 2004 June 17, 2004 Oct. 14, 2004 Feb. 24, 2005 Mar. 10, 2005 May 15,2008 REJECTIONS The Examiner made the following rejections: 1. Claims 1—6, 12, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Schultz and Cuddy.2 2. Claims 7—9 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Schultz, Cuddy, and Souza. 3. Claims 10, 11, and 13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Schultz, Cuddy, and Marks. 2 The rejection of claim 15 also references Nguyen. Final Act. 5. 3 Appeal 2014-007402 Application 12/836,863 4. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Schultz, Cuddy, and Taylor. 5. Claims 17—22 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Schultz, Cuddy, and Nicely.3 Appellants seek our review of these rejections. ANALYSIS The Rejection of Claims 1, 2, and 15 as Unpatentable Over Schultz and Cuddy Claims 1 and 2 Appellants argue claims 1 and 2 as a group. Appeal Br. 8—11. We select claim 1 as the representative claim, and claim 2 stands or falls with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner determines that the combination of Schultz and Cuddy discloses all of the limitations of claim 1. Final Act. 2-4. Appellants argue that the Examiner’s rejection is incorrect for three reasons. Appeal Br. 8—11. First, Appellants contend that Schultz does not disclose two limitations in claim 1: based on respective outcomes of each of the plurality of games of blackjack, determine that progress towards a bonus game should be made, and based on the progress towards the bonus game made based on the respective outcomes of each of the plurality of games, determine that the bonus game should be played. Appeal Br. 8. Appellants argue that: First, there is no teaching or suggestion^ of any plurality of games ... or suggestion of a plurality of games being a basis for a bonus game. Second, there is no teaching or suggestion of a 3 The rejection of claim 20 also references Nguyen. Final Act. 10. 4 Appeal 2014-007402 Application 12/836,863 progress towards a bonus game but rather only a triggering or non-triggering of the bonus game. Id. at 9. According to Appellants, Schultz do[es] not teach or suggest progress towards a bonus game based on outcomes from multiple games. . . . Rather ... a bonus game is taught to be triggered or not triggered based on the outcome of a single multi-hand game. ... If all of the hands are win[n]ing hands, then the bonus game is triggered. If any other number are winning hands, then the bonus game is not triggered. Reply Br. 4. Appellants’ argument that Schultz does not disclose the two disputed limitations because a bonus game is triggered only by winning “a single multi-hand game” is not persuasive. Appeal Br. 9; Reply Br. 4. We agree with the Examiner that each blackjack hand is an individual blackjack game. Ans. 11 (citing Schultz | 53, Figs. 4C and 6). Schultz states that a triggering event “is a condition that need to be satisfied in order to initiate a bonus game,” such as “any possible game outcome” or “player activity/actions.” Schultz H 53—54. In one of Schultz’s exemplary embodiments, “the triggering event may be winning all active hands (e.g., all seven hands of blackjack).” Id. Schultz monitors the results of the plurality of games and “determines the progress towards a bonus game,” e.g., winning seven games of blackjack, as recited in claim 1. See, e.g., id. 53—54, Fig. 6. Based upon the outcomes of the plurality of games, Schultz “determines [whether] the bonus game should be played,” as recited in claim 1. Id. Thus, Schultz discloses the two disputed limitations in claim l.4 Appellants do not show error by the Examiner. 4 If Appellants’ argument is that Schultz does not disclose the two disputed limitations because Schultz’s exemplary embodiment does not state that a player may trigger a bonus game by winning seven non-sequential 5 Appeal 2014-007402 Application 12/836,863 Second, Appellants contend that Cuddy does not disclose two limitations in claim 1: in response to determining that the first selection includes the correct choice, offer the player an award to end the bonus game, and in response to determining that the second selection includes the incorrect choice, end the bonus game without providing the offered award to the player. Appeal Br. 9. Appellants argue that “there is no teaching or suggestion [in Cuddy] that an incorrect choice leads to an ending of a bonus game without an award being provided” (Appeal Br. 11), and Cuddy teaches that “the bonus game ends and the player obtains the awards associated with the currently highlighted selections.” Reply Br. 6 (citing Cuddy 1 63). In response to Appellants’ arguments, the Examiner explains that Cuddy discloses that the player chooses a “selection,” and, if the selection is a “termination symbol or terminator,” the bonus game ends. Ans. 15—16 (citing Cuddy ^fl[ 57, 63). Cuddy, for example, states: [T]he player may either end the bonus game and accept the awards associated with the current highlighted selections or continue selecting selections. . . . [W]ith every selection, the player is risking that the awards associated with prior selected highlighted selections will no longer be provided to the player. Cuddy 1 63. Cuddy discloses that a player may choose to end the bonus game and accept the offered awards, or choose an incorrect “selection” and risk losing the offered awards. Thus, Cuddy discloses both an award to end games (see Reply Br. 4—5), then Appellants’ argument is not commensurate with the scope of claim 1. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (stating limitations not appearing in the claims cannot be relied upon for patentability). 6 Appeal 2014-007402 Application 12/836,863 the bonus game and the risk of no award if the bonus round is continued, as recited in claim 1.5 Appellants do not show error by the Examiner. Third, Appellants argue that the Examiner’s new citations to certain portions of Cuddy are new grounds of rejection improperly presented for the first time in the Examiner’s Answer, instead of in the Final Action. Reply Br. 2, 5. Whether a Final Action is premature for failing to present the bases for all rejections is a matter reviewable by petition under 37 C.F.R. § 1.181, not by appeal to the Patent Trial and Appeal Board. 37 C.F.R. § 41.40(a). Requests to seek review of the Examiner’s failure to designate a rejection as a new ground of rejection in an Examiner’s answer must be made in a petition to the Director under 37 C.F.R. § 1.181. Id. Failure of Appellants to timely file such a petition constitutes a waiver of any arguments that a rejection must be designated as a new ground of rejection. Id. Further, Appellants filed a Reply Brief responding to the substance of the arguments raised in the Examiner’s Answer. By filing a Reply Brief, Appellants chose to proceed with this Appeal. As such, we do not reach Appellants’ argument that the Examiner raised an undesignated new ground of rejection. For the reasons above, the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) in view of Schultz and Cuddy is sustained. Claim 2 falls with claim 1. 5 Appellants’ argument (Reply Br. 6) that Cuddy teaches away from the claim 1 limitations is not persuasive because Cuddy does not criticize, discredit, or otherwise discourage the presentation of an award to end the bonus game and the risk of no award if the bonus round is continued, as recited in claim 1. See In re Fulton, 391 F.3d 1195, 1199-1201 (Fed. Cir. 2004) (To teach away, a reference’s disclosure must “criticize, discredit or otherwise discourage the solution claimed.”). 7 Appeal 2014-007402 Application 12/836,863 Claim 15 Dependent claim 15 recites that “the correct choice includes a bonus choice that causes the game to skip an intermediate round that would otherwise have been played if a non-bonus choice was selected.” Appeal Br. 18. The Examiner finds that Nguyen discloses the limitations of claim 15. Final Act. 5. We agree with Appellants that “[t]here is nothing in [Nguyen 1103] that could possibly be evidence of any game event causing a skipping of a round of a bonus game.” Appeal Br. 12; see also Reply Br. 8. Nguyen discloses that a player can skip a round by paying an increased fee. Nguyen 1103. Nguyen also discloses that a player may receive additional credits or points during a bonus round, but does not disclose skipping a round from the bonus round performance. Id. 1294. Therefore, the Examiner’s rejection of claim 15 under 35 U.S.C. § 103(a) in view of Schultz, Cuddy, and Nguyen is not sustained. The Rejection of Claim 18 as Unpatentable Over Schultz, Cuddy, and Nicely Dependent claim 18 recites that “determining the progress includes increasing the progress in response to a winning game of the plurality of games and decreasing the progress in response to a losing game of the plurality of games.” Appeal Br. 18 In response to the Examiner’s finding that Nicely discloses the limitations of this claim (Final Act. 9), Appellants argue that “[t]he cited portions [of Nicely] do not teach or suggest such a decrease of progress in a 8 Appeal 2014-007402 Application 12/836,863 streak game. The portions do teach an increasing streak length, but are silent regarding any decrease.” Reply Br. 8; see also Appeal Br. 14. We agree with Appellants that Nicely discloses increasing progress through “an increasing streak length,” and upon an end to the streak, a return to zero. Nicely H 39-42; Final Act. 120; Ans. 130; Reply Br. 8. As such, we do not sustain the rejection of claim 18 under 35 U.S.C. § 103(a) as unpatentable over Schultz, Cuddy, and Nicely. NEW GROUND OF REJECTION We enter a new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b) of dependent claim 18 under 35 U.S.C. § 103(a) as being unpatentable over Schultz, Cuddy, Nicely, and Marks. Marks discloses a bonus game meter 138 that increases and decreases progress toward a progressive award based on the outcome of a game.6 Marks H 83—86, Fig. lc. Thus, we determine that it would have been obvious at the time the invention was made to one of ordinary skill in the art to modify the combination of Schultz, Cuddy, and Nicely to allow the game apparatus to increase the progress in response to a winning game of the plurality of games and decrease the progress in response to a losing game of the plurality of games as disclosed by Marks, because it “attracts and retains players interested in playing an innovative slot game; and the player enjoys a new method of receiving an award.” Marks 118. 6 We note that the Specification discloses a bonus meter that may decrease. Spec. 1287. 9 Appeal 2014-007402 Application 12/836,863 The Rejections of Claims 3—14, 16, 17, and 19—22 The Board’s rules provide that “[a]n appeal, when taken, is presumed to be taken from the rejection of all claims under rejection unless cancelled by an amendment filed by the applicant and entered by the Office.” 37 C.F.R. § 41.31(c). Thus, this appeal includes an appeal of the rejections of claims 3—14, 16, 17, and 19-22. Appellants have elected not to present arguments contesting the rejections of these pending claims.7 See Appeal Br. 8—14. We summarily sustain the Examiner’s rejections of claims 3—14, 16, 17, and 19-22. DECISION For the above reasons, the Examiner’s rejections of claims 1—14 and 16, 17 and 19-22 under 35 U.S.C. § 103(a) are AFFIRMED. The Examiner’s rejections of claims 15 and 18 under 35 U.S.C. § 103(a) are REVERSED. We enter a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b) of claim 18 under 35 U.S.C. § 103(a) as unpatentable over Schultz, Cuddy, Nicely, and Marks. 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: 7 Appellants withdrew their arguments regarding the rejection of claim 9. Reply Br. 7. 10 Appeal 2014-007402 Application 12/836,863 (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN PART; 37 C.F.R, $ 41.50(b) 11 Copy with citationCopy as parenthetical citation