Ex Parte Borowski et al

Patent Trial and Appeal BoardOct 9, 2012

10262788 (P.T.A.B. Oct. 9, 2012)

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. 10/262,788 10/02/2002 Joseph Carl Borowski JR. SGI-0514 2675 7590 10/10/2012 Dority & Manning, P.A. P.O. Box 1449 Greenville, SC 29602 EXAMINER GRABOWSKI, KYLE ROBERT ART UNIT PAPER NUMBER 3725 MAIL DATE DELIVERY MODE 10/10/2012 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 PATENT TRIAL AND APPEAL BOARD _________________ Ex parte JOSEPH CARL BOROWSKI, JR. and CARLA SCHAEFER _________________ Appeal 2010-009486 Application 10/262,788 Technology Center 3700 _________________ Before KEN B. BARRETT, PHILLIP J. KAUFFMAN, and BARRY GROSSMAN, Administrative Patent Judges. GROSSMAN, Administrative Patent Judge DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a lottery ticket. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM the rejection of claims 4, 6, 7, and 10-13. Appeal 2010-009486 Application 10/262,788 2 STATEMENT OF THE CASE The claimed invention is directed to a lottery ticket having multiple panels which may be folded one upon the other. The result of the claimed structure, when folded, provides a lottery ticket having a staggered, sequentially increasing size arrangement of the panels. It is this staggered overlay of multiple panels which the Appellants refer to as a three-dimensional arrangement and visual display. (Br. 5; Spec. fig. 5). The rejection of claims 4, 6, 7, and 10-13 is on appeal. Claim 13, the only independent claim, reproduced below is illustrative of the claimed subject matter: 13. A lottery ticket having a multi-panel visual display, said lottery ticket consisting essentially of four panels with each panel having a front face and a rear face, with the panels being foldable from an open position showing each front face of each panel to a closed position showing the visual display of faces from at least three of the panels, wherein the four panels when viewed in an open position from left to right correspond sequentially to a first panel, second panel, third panel and fourth panel, wherein the fourth panel is larger in size than the second panel, the second panel is larger in size than the first panel, and the first panel is larger than or equal in size of the third panel; and at least one game area containing a lottery game appearing on at least one of the panels. Appeal 2010-009486 Application 10/262,788 3 THE REJECTION Claims 4, 6, 7, and 10-13 stand rejected under 35 U.S.C. §103(a) as unpatentable over Stern (US 6,267,233 B1, iss. Jul. 31, 2001) and Heninger (US 5,125,689, iss. Jun. 30, 1992). CONTENTIONS AND ISSUE Appellants argue claims 4, 6, 7, and 10-13 as a group, and we select independent claim 13 as representative.1 Br. 9; see 37 C.F.R. § 41.37(c)(1)(vii)(2011). Claims 4, 6, 7, and 10-12 stand or fall with claim 13. 37 C.F.R. § 41.37 (c)(1)(vii) Independent claim 13 specifies the size relationship between the four interconnected panels. It is this staggered overlay of multiple panels which the Appellants refer to as a three-dimensional arrangement and visual display. (Br. 5; Spec. fig. 5). The Examiner found that Stern discloses the subject matter of independent claim 13 except (1) the panel sizing specified and (2) the indicia being associated with a lottery ticket. 1 With regard to claims 4, 6-7 and 10-12, which depend directly or indirectly from independent claim 13, Appellant merely states that some or all of the dependent claims “may possess” features that are independently patentable. Br. 9. Such an assertion does not rise to the level of separate argument. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board reasonably interpreted 37 C.F.R. § 41.37 (c)(1)(vii) as requiring “more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art”). Appeal 2010-009486 Application 10/262,788 4 Concerning panel sizing, in the embodiment shown in Figure 3, Stern’s fourth panel is the smallest of his panels, while the claimed fourth panel is the largest of the panels. The Examiner concluded that it would have been an obvious matter of design choice to make the fourth panel the largest of the panels since such a modification would have involved a mere change in the size of the panel. Ans. 3. Concerning the indicia, Stern does not disclose at least one of the panels including at least one game area containing a lottery game. See Ans. 4. The Examiner found that Heninger discloses panels having lottery ticket indicia. Ans. 5, 8; See also, e.g., Heninger col. 1, ll. 1-13, and Fig. 4. The Examiner concluded that it would have been obvious to a person of ordinary skill in the art to incorporate at least one game area containing a lottery game on at least one of the panels of Stern, as disclosed by Heninger. Ans. 4. Appellant does not contest the Examiner’s findings, and therefore we accept them as fact. See Br. passim; see also Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (the BPAI “reviews the obviousness rejection[s] for error based upon the issues identified by appellant, and in light of the arguments and evidence produced thereon,” and treats arguments not made as waived). Further, Appellants do not challenge the second proposed modification to incorporate at least one of the panels including at least one game area containing a lottery game, as disclosed by Heninger. Appeal 2010-009486 Application 10/262,788 5 Thus, the issue presented by this case is whether the modification of Stern’s fourth panel to have the relative size called for in claim 13 would have been an obvious matter of design choice. ANALYSIS Appellants argue that the specific relative sizing of the panels set forth in independent claim 13 is critical to the invention and would not have been an obvious matter of design choice for three primary reasons. First, Appellants contend that since the claimed lottery ticket performs a different function than the admission ticket receptacle disclosed in Stern, the modification would not have been a matter of design choice. (Br. 4-6, citing Gardner v. TEC Systems, Inc., 725 F.2d 1338 (Fed. Cir. 1984)). Specifically, Appellants argue that the claimed ticket differs in function in that it provides: an enhanced visual feature, enhance gaming functionality by accommodating lottery games playable with multiple panels, and improved security in that all games are out of view. Br. 4-6. The enhanced visual feature of claim 13 relates to ornamentation only, and therefore does not serve to patentably distinguish the subject matter of claim 13 over the prior art. See In re Seid, 161 F.2d 229, 231 (CCPA 1947). The enhanced gaming functionality by accommodating lottery games playable with multiple panels is a feature tied to having multiple panels (as does Stern) and is not tied to the relative dimensions of those panels. Likewise, the improved security is not tied to the relative dimensions of each panel recited in claim 13 since all the lottery game indicia is out of view on Appeal 2010-009486 Application 10/262,788 6 the folded panels. For example, games may positioned out of view on a multiple panel ticket that does not have the relative panel sizes called for in claim 13. Thus, this argument is not persuasive. Second, according to Appellants, Stern teaches away from the claimed invention because Stern discloses that the smallest panel must be one of the end panels as opposed to an interior panel as claimed. (Br. 7-8). Stern discloses multiple embodiments wherein the panels are of various sizes to accommodate the specific function of the foldable substrate. For example, note the embodiments disclosed in Figures 8, 12, 15, 18, 20, and 26 all showing panels of varying sizes to suit a specific desired folded configuration. Moreover, Stern discloses that the admission tickets to be held in the flap are subject to a variation of form, size, and structure (col. 1, ll. 47-49), thus suggesting that the size of the end panel, i.e., flap 40, and other panels may also be of various form, size, and structure if it is to hold the admission ticket. Thus, contrary to Appellants’ argument, Stern does not require that the smallest panel be one of the end panels. (Stern, figs. 18, 20 depicting an end panel that is not the smallest panel). Third, Appellants argue that a person of ordinary skill in the art would not have made the proposed modification because “it is an essential feature of the Heninger package that all panels are of equal size so that the information within the package is concealed until purchase.” Br. 8. We disagree with Appellants’ characterization of Heninger. Heninger discloses that in one embodiment of the disclosed invention the four panels are of equal size (col. 1, ll. 54-57; col. 2, ll. 59-60). However, nowhere does Appeal 2010-009486 Application 10/262,788 7 Heninger disclose or suggest that it is essential that the panels are of equal size. The claims of Heninger, which are part of the disclosure, do not require that the panels are of equal size. As stated previously, the Examiner’s reliance on Heninger is simply for the disclosure that the indicia printed on a multi-panel substrate may be lottery game indicia, coupons, or other promotional information (col. 1, ll. 50-52; Ans. 4). Accordingly, we sustain the rejection of independent claim 13. Claims 4, 6, 7, and 10-12 fall with claim 13. SUMMARY We affirm the Examiner’s rejection of claims 4, 6, 7, and 10-13. 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). AFFIRMED mls