Ex Parte Burman et al

Patent Trials and Appeals Board

Mar 28, 2019

13657221 - (D) (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/657,221 10/22/2012
63710 7590 04/01/2019
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
FIRST NAMED INVENTOR
Kevin Burman
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
06-2025-Cl 2046
EXAMINER
MYHR, JUSTIN L
ART UNIT PAPER NUMBER
3714
NOTIFICATION DATE DELIVERY MODE
04/01/2019 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):
patentdocketing@cantor.com
lkorovich@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN BURMAN and DEAN P. ALDERUCCI
Appeal2017-005522
Application 13/657 ,221
Technology Center 3700
Before JOHN C. KERINS, BRANDON J. WARNER, and LISA M. GUIJT,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 2-20 and 24. 2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 CFPH, LLC ("Appellant''), the applicant as provided for under 37 C.F.R.
§ 1.46, is also identified as the real party in interest Appeal Br. 2.
2 Appeal is taken from the Final Office Action dated July 13, 2015.
Appeal2017-005522
Application 13/657,221
CLAIMED SUBJECT MATTER
Claims 13, 20, and 24 are the independent claims on appeal. Claim
13, reproduced below, is exemplary of the subject matter on appeal.
13. A method for wireless gaming, comprising:
providing, by a computing device, a wireless gaming
terminal having a network interface operable to transmit and
receive gaming information;
determining, by the computing device, a location of the
wireless gaming terminal; and
interacting, by the computing device, with a user to
implement a game, wherein game play of the game is dependent
on the determined location;
wherein the game receives the determined location as an
input parameter, and alters a user interface for a predetermined
game in response thereto.
THE REJECTIONS
I. Claims 2-9, 11, 13, 18-20, and 24 stand rejected under 35
U.S.C. § I02(b) as anticipated by Amaitis (US 2005/0187020 Al; published
Aug. 25, 2005).
II. Claims 10 and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Amaitis and Nguyen (US 2008/0076572 Al; published
Mar. 27, 2008).
III. Claims 14--17 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Amaitis and Nelson (US 2003/0148809 Al; published
Aug. 7, 2003).
IV. Claims 2-8, 11-19, and 24 stand rejected on the grounds of
nonstatutory double patenting over claims 1-10 of U.S. Patent No.
8,292,741 B2.
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Application 13/657,221
V. Claims 9, 10, and 20 stand rejected on the grounds of
nonstatutory double patenting over claim 1 of U.S. Patent No. 8,292,741 B2
in view of Nguyen.
ANALYSIS
Rejection I
Independent claim 13 and claims 2-9, 11, 18, and 19 depending therefrom
Regarding independent claim 13, the Examiner finds, inter alia, that
Amaitis discloses that the game receives the determined location as an input
parameter, and alters a user interface for a predetermined game in response
thereto, as claimed, because, in Amaitis, "the gaming machine accepting
location to enable a game would be the game accepting the input parameter
since the use of the gaming device is claimed as the method of the game."
Ans. 2-3; see also Final Act. 3 (citing Amaitis ,r,r 44, 49, 54--56, Fig. 6). In
other words, the Examiner's position is that Amaitis' location "is part of
determining if a game should be run, and that the acceptance or rejection
determines the gameplay of the game by either allowing gameplay or
disabling gameplay." Ans. 3. The Examiner further finds that Amaitis
discloses "a method step of a graphic user interface for a game being
enabled based on validation." Id. (citing Amaitis ,r 44).
Appellant argues that the Examiner's finding lacks support. Appeal
Br. 10 (citing Amaitis ,r,r 44, 49, 54--56, 70, 71, Fig. 6). In particular,
Appellant submits that "permitting or disabling gaming is very different
from a game using location as an 'input parameter o(the game" and that
Amaitis fails to disclose that "any specific 'permitted game' uses a location
of a wireless gaming terminal as an input parameter of that specific game" or
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Application 13/657,221
that "any specific 'disabled game' receives any parameters whatsoever." Id.
at 10-11. Appellant also argues that "the cited passages do not disclose any
specific change or alteration of an existing user interface that is triggered by
receiving a device location." Id. at 11.
Amaitis discloses that "a location verification feature ... is operable
to permit or disable gaming from a remote location." Amaitis ,r 44. Amaitis
also discloses that
depending on the location determination technology being used,
the decision whether to permit or prohibit a gaming activity may
be made at the gaming communication device, at the gaming
server, or at any of the components of the telecommunication
network being used to transmit information between the gaming
communication device and the gaming server.
Id. ,r 51 ( emphasis added). Amaitis further discloses that
software is preferably loaded on a gaming communication device
and is operable to receive input data for gaming. The input data
may originate at associated gaming software resident on the
gaming server .... The software on the device is operable to
present a representation of a gaming environment. This can
include, among other things, a representation of a table game
such as a blackjack table or a slot machine.
Id. ,r 53 ( emphasis added).
Although Amaitis' disclosure of permitting or prohibiting gaming
activities based on location discloses that "game play of the game is
dependent on the determined location," as claimed (as set forth supra,
emphasis added), we determine that Amaitis' disclosure of permitting or
prohibiting gaming activities falls short of disclosing that the game ( or
gaming software) receives the determined location as an input parameter, as
claimed.
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Application 13/657,221
Although the Examiner additionally finds, with respect to the
independent claims, that "the combination of Nelson" 3 discloses "modifying
a game beyond just allowing the game to be played," because Nelson
"includes the steps of altering the way games are played including altering
wagering rules and output (i.e.[,] sound, video, e[tc].) based on a determined
location of a gaming machine," the Examiner fails to provide sufficient
notice to Appellant that the anticipation rejection is being recast as an
obviousness rejection pursuant to 35 U.S.C. § 103(a). Ans. 4 (emphasis
added) (citing Nelson ,r,r 29, 46-47); see also Ans. 2 (indicating that any
new ground of rejection will appear under the subheading "NEW
GROUNDS OF REJECTION"). Appellant does not respond to the
Examiner's determination regarding Nelson. See Reply Br. 2.
Accordingly, we do not sustain the Examiner's rejection of
independent claim 13, and dependent claims 2-9, 11, 18, and 19, under 35
U.S.C. § 102(b) as anticipated by Amaitis.
Independent claim 20
The Examiner's findings with respect to independent claim 20, which
recites in relevant part, "wherein the central server is configured to: receive
3 No inference should be drawn from our declination to exercise our
discretion to enter a new ground of rejection of independent claim 13 (and/or
independent claim 20\ under 35 U.S.C. § I03(a), as unpatentable over
Amaitis and Nelson. Upon any further prosecution, we leave it up to the
Examiner to evaluate claims 13 and 20 for patentabiHty under 35 U.S.C. §
103(a), in view of the Examiner's reliance on Nelson, for example, for
disclosing that location is an input parameter that alters at least one rule of a
game, thus, potentially curing the deficiency in the Examiner's reliance on
Amaitis alone. See, e.g., Appeal Br. 16 (Claims App.) (claim 14 recites, in
relevant part, "wherein the game receives the determined location as an
input parameter, and alters at least one nlle of a game in response thereto").
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Application 13/657,221
a determined respective location of a respective mobile terminal as an input
parameter for a game associated with the respective mobile terminal"
(Appeal Br. 17 (emphasis added)) are deficient for the same reasons stated
supra with respect to claim 13. Final Act. 5.
Accordingly, we do not sustain the Examiner's rejection of
independent claim 20 under 35 U.S.C. § 102(b) as anticipated by Amaitis.
Independent claim 24
Independent claim 24, which differs in scope from independent claims
13 and 20, recites in relevant part, "wherein, at a time when the game is
being played ... , game play of the game is dependent on the determined
location." Appeal Br. 17 (Claims App.) (emphasis added). Amaitis
discloses that a location verification feature permits or disables gaming
during a gaming session. Amaitis ,r 50 ("the gaming system may
periodically update the location determination information ... during a
gaming session, at pre-defined time intervals to ensure that movement of the
gaming communication device to an unauthorized area is detected during
play, and not just upon login or initial access"). Thus, a preponderance of
the evidence supports the Examiner's determination that Amaitis discloses
that game play is dependent on (i.e., is permitted or prohibited based on) the
determined location while the game is being played.
Accordingly, we sustain the Examiner's rejection of independent
claim 24 under 35 U.S.C. § 102(b) as anticipated by Amaitis.
Rejection II
The Examiner's reliance on Nguyen for disclosing "a virtual private
network" and "a short range modulated magnetic field communication
protocol" does not cure the deficiencies in the Examiner's reliance on
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Amaitis alone in the rejection of claim 13, as set forth supra. See Final Act.
8. Therefore, for the reasons set forth supra, we do not sustain the
Examiner's rejection of claims 10 and 12 under 35 U.S.C. § 103(a) as
unpatentable over Amaitis and Nguyen.
Rejection III
Dependent claims 14-17
Claims 14--1 7, which depend from independent claim 13, recite, in
relevant part, "wherein the game receives the determined location as an
input parameter," and "in response thereto" ( claims 14--1 7): "alters at least
one rule of a game" ( claim 14 ), "alters a wager of the game" ( claim 15),
"alters a bet option of the game" ( claim 16), and "alters an ancillary
incentive for playing the game." Appeal Br. 16 (Claims App.).
The Examiner determines that Amaitis does not teach the method
steps as recited in claims 14--17, and relies on Nelson for disclosing each of
them. Final Act. 9-11 (citations omitted). The Examiner reasons that it
would have been obvious
to have combined the teachings of Amaitis with Nelson, since
Amaitis is modifiable to include the teachings of Nelson wherein
game rules and features are modified based on detected location
in order to automatically meet desired game types that are
determined to be desirable in certain locations or to meet gaming
regulations for a set location.
Final Act. 9-11 (citing Nelson ,r,r 3, 4, 47, 54 (for disclosing "various
reasons for modifying games based on detected locations")). However, the
Examiner's stated findings, on this record, with respect to Nelson, and in
light of the Examiner's reasoning, do not address with particularity the
deficiencies in the Examiner's reliance on Amaitis in the rejection of claim
13, as discussed supra. For example, the Examiner does not provide support
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for finding that Nelson discloses that the detected location is "an input
parameter" of the game, or that the determined location alters a user
interface for a predetermined game "in response" to the game receiving the
determined location as an input parameter, as required by claim 13.
Accordingly, we do not sustain the Examiner's rejection of claims
14--17 under 35 U.S.C. § 103(a) as unpatentable over Amaitis and Nelson.
Re} ection IV
Appellant does not present any substantive arguments for the
patentability of claims 2-8, 11-19, and 24 in view of claims 1-10 of U.S.
Patent No. 8,292,741 B2. Appeal Br. 13 (stating that "this rejection can be
overcome by filing a proper Terminal Disclaimer").
Accordingly, we summarily affirm the Examiner's rejection on the
grounds of nonstatutory obviousness-type double patenting.
Rejection V
In the Appeal Brief, Appellant does not present any substantive
arguments for the patentability of claims 9, 10, and 20 in view of claim 1 of
U.S. Patent 8,292,741 B2 and Nguyen, on the grounds ofnonstatutory
obviousness-type double patenting. Appeal Br. 13 (stating that "this
rejection can be overcome by filing a proper Terminal Disclaimer"). For the
first time in the Reply Brief, Appellant asserts that, with respect to the later
rejection, the rejection is "improper" because "[i]t is improper to cite both a
reference patent and an unrelated secondary reference (Nguyen) in an
obviousness-type double patenting rejection," and also that "a proper
rejection on the grounds of nonstatutory obviousness-type double patenting
requires a common inventor or owner or a joint research agreement linking
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the cited patent/application and the present application" and that "[t]here is
no such link between the present application and Nguyen"). Reply Br. 4.
Appellant has not provided good cause as to why the untimely
arguments presented for the first time in the Reply Brief were not timely
presented in the Appeal Brief, and therefore, Appellant's arguments are
deemed waived. See 37 C.F.R. § 4I.41(b)(2); Exparte Borden, 93 USPQ2d
14 73, 14 77 (BP AI 2010) (informative) ("Properly interpreted, the Rules do
not require the Board to take up a belated argument that has not been
addressed by the Examiner, absent a showing of good cause.").
Notwithstanding, the Examiner may properly rely on a secondary
reference, in combination with claim 1 ofU.S. Patent 8,292,741 B2 to
establish a prima facie case of nonstatutory obviousness-type double
patenting. Appellant does not identify any authority, nor are we aware of
any, to support the contention that the Examiner's rejection is somehow
"improper because [it] relies on a second reference." Reply Br. 4. The
judicial doctrine of obviousness-type double patenting precludes an
applicant from extending the term of protection for a patented invention by
claiming an obvious variant of the patented invention in a subsequent patent
application. See In re Longi, 759 F.2d 889, 892 (Fed. Cir. 1985); see also
'fv1PEP § 804 (discussing the obviousness analysis for nonstatutory
obviousness-type double patenting). Here, the Examiner's reliance on
Nguyen as "evidence" of "well-kno\vn features" to render the claims not
patentably distinct from claim 1 of U.S. Patent 8,292,741 establishes a prima
facie case of obviousness-type double patenting, which Appellant fails to
rebut Final Act. 15-16; Reply Br. 4.
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Accordingly, we summarily affirm the Examiner's rejection on the
grounds of nonstatutory double patenting.
DECISION
The Examiner's rejection of claims 2-9, 11, 13, and 18-20 under 35
U.S.C. § 102(b) as anticipated by Amaitis is REVERSED.
The Examiner's rejection of claim 24 under 35 U.S.C.
§ 102(b) as anticipated by Amaitis is AFFIRMED.
The Examiner's rejection of claims 10 and 12 under 35 U.S.C.
§ 103(a) as unpatentable over Amaitis and Nguyen is REVERSED.
The Examiner's rejection of claims 14--17 under 35 U.S.C. § 103(a) as
unpatentable over Amaitis and Nelson is REVERSED.
The Examiner's rejection of claims 2-8, 11-19, and 24 on the grounds
of nonstatutory obviousness-type double patenting over claims 1-10 of U.S.
Patent No. 8,292,741 B2 is AFFIRMED.
The Examiner's rejection of claims 9, 10, and 20 on the grounds of
nonstatutory obviousness-type double patenting over claim 1 of U.S. Patent
No. 8,292,741 B2 in view ofNguyen 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)(l )(iv).
AFFIRMED
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