Ex Parte Golden

Patent Trial and Appeal BoardApr 26, 2013

10926567 (P.T.A.B. Apr. 26, 2013)

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. 10/926,567 08/26/2004 Alan H. Golden 316.001US1 9677 97462 7590 04/26/2013 Mark A. Litman & Associates, P.A. 7001 Cahill Road, Ste. 15A Edina, MN 55439 EXAMINER COLLINS, DOLORES R ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 04/26/2013 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 ALAN H. GOLDEN ____________________ Appeal 2011-002716 Application 10/926,567 Technology Center 3700 ____________________ Before JENNIFER D. BAHR, BENJAMIN D. M. WOOD, and MITCHELL G. WEATHERLY, Administrative Patent Judges. Opinion for the Board filed by BAHR, Administrative Patent Judge, with whom WOOD, Administrative Patent Judge, joins. Opinions Concurring filed by BAHR and WOOD, Administrative Patent Judges. Opinion Dissenting-in-part filed by WEATHERLY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Alan H. Golden (“Appellant”) appeals under 35 U.S.C. § 134 from the decision of the Examiner rejecting claims 1-21. Claims 22 and 23 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2011-002716 Application 10/926,567 2 We affirm-in-part. The claims are directed to methods of playing a game of craps and a casino craps layout. Claims 1 and 17, reproduced below, are illustrative of the claimed subject matter: 1. In the method of play of a game of craps, wherein at least one player places a proposition wager on random events generated by dice, and random dice outcomes are provided, the improvement comprising providing a player at least one wagering opportunity on a single roll of the dice selected from the group consisting of a) a wager that the next roll of the dice will be a hard 4, 6, 8 or 10; and b) a wager that the next roll of the dice will be any pair of numbers; and a player placing a wager on at least one of the at least one wagering opportunities. 17. A casino craps layout having provided thereon specific wagering areas for placing a proposition wager on at least one proposition wagering opportunity on a single roll of the dice selected from the group consisting of a) a wager that the next roll of the dice will be a hard 4, 6, 8 or 10 and b) a wager that the next roll of the dice will be a pair of numbers. REJECTIONS Appellant seeks our review of the following rejections: 1. Claims 1, 9, and 17 stand rejected under 35 U.S.C. § 102(b) as being anticipated by JOHN SCARNE, SCARNE’S ENCYCLOPEDIA OF GAMES, Harper & Row Publishers (1973) (“Scarne”). Ans. 3. 2. Claims 2-8, 10-16, and 18-21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Scarne. Ans. 4-5. Appeal 2011-002716 Application 10/926,567 3 OPINION Anticipation of claims 1, 9, and 17 by Scarne 1. Claims 1 and 9 Appellant contends that Scarne fails to disclose the steps recited in independent method claim 1 of “providing a player at least one wagering opportunity on a single roll of the dice” and in claim 9 of “providing a player at least one proposition wagering opportunity”1 in which the wagering opportunity is selected from the group comprising (a) an any hard way bet and (b) an any pair bet. App. Br. 10. We agree. While Scarne describes the traditional “hard way” bet in craps, this traditional bet is a running wager, not a proposition wager as required in the claims. Scarne, p. 457. Therefore, the Examiner erred in concluding that Scarne describes the proposition wagers recited in claims 1 and 9. For this reason, we reverse the Examiner’s rejection under § 102(b) of claims 1 and 9. 2. Claim 17 The Examiner’s rejection of claim 17 is affirmed because, assuming the “specific wagering areas” limitation is a positive recitation of indicia, there is not a “new and unobvious functional relationship” between such indicia and the layout. Obviousness of claims 2-8, 10-16, and 18-21 over Scarne 1. Claims 2-8 and 10-16 Appellant argues that Scarne’s failure to describe the proposition wagering opportunities recited in independent claims 1 and 9 warrants 1 A proposition wager as used in Appellant’s Specification and in the traditional game of craps is a wager that is always resolved on the next single roll of the dice. Spec., p. 11, ll. 17-18; p. 12, ll. 24-26. Appeal 2011-002716 Application 10/926,567 4 reversing the rejection of dependent claims 2-8 and 10-16. App. Br. 12. We agree for the reasons expressed above in connection with our analysis of the Examiner’s rejection under § 102(b) of independent claims 1 and 9. Therefore, we reverse the rejection under § 103(a) of claims 2-8 and 10-16. 2. Claims 18-21 The Examiner’s rejection of claims 18-21 is affirmed because there is not a “new and unobvious functional relationship” between the claimed “printed odds” and the layout. DECISION For the reasons stated above, we reverse the Examiner’s rejections of claims 1-16 and affirm the Examiner’s rejections of claims 17-21. 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)(iv). AFFIRMED-IN-PART mls Appeal 2011-002716 Application 10/926,567 1 BAHR, Administrative Patent Judge, concurring. I agree with the Examiner that Scarne discloses a craps layout that satisfies the limitations of claim 17. Ans. 3. Claim 17 requires nothing more than a casino craps layout “having provided thereon specific wagering areas” for placing a particular type of proposition wager. Claim 17 does not recite any specific structure for the recited “areas.” Rather, claim 17 defines them only by their intended use, i.e., for placing a particular type of wager. Scarne’s layout can reasonably be considered to have a plurality of areas provided thereon, some of which are covered with indicia and others of which are devoid of indicia, but all of which are fully capable of being used for placing a proposition wager of the type alluded to in claim 17. Moreover, even if the “specific wagering areas for placing a proposition wager . . .” limitation of claim 17 were construed as requiring indicia,2 claim 17 does not specify the content of such indicia, and thus does not distinguish the indicia of the Scarne layout. To the extent that any content of such imputed indicia may be implied by the recited use of the “specific wagering areas,” any such implied content has significance which is discernible only to the human mind and thus does not constitute a 2 Such a construction would, in my opinion, amount to improperly importing unclaimed limitations from the Specification into the claim. We must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.”). Appeal 2011-002716 Application 10/926,567 2 patentable distinction over the Scarne layout. See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (noting that claim language directed to the substance of printed matter cannot impart patentability where it is “‘useful and intelligible only to the human mind.’”) (quoting In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969)). In essence, such implied content is tantamount to instructions to the player of the craps game (i.e., to place particular bets there) and does not change the function of the craps layout. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) (holding that the attachment of a set of instructions to a known product does not constitute a patentable distinction over the known product). Therefore, I vote to affirm the rejection of claim 17 under 35 U.S.C. § 102(b) as anticipated by Scarne. Claims 18-21 The “printed odds” limitations of claims 18-21 have significance which is discernible only to the human mind and thus do not constitute a patentable distinction over the Scarne layout. In essence, these limitations amount to instructions to the player of the craps game (i.e., instructing the payout for a win on a given bet) and do not change the function of the craps layout. Thus, the Examiner correctly determined “there is no novel and unobvious functional relationship between the printed matter and the substrate.” Ans. 5. Thus, I vote to affirm the rejection of claims 18-21 under 35 U.S.C. § 103(a) as unpatentable over Scarne. Appeal 2011-002716 Application 10/926,567 1 WOOD, Administrative Patent Judge, concurring. I agree with Judge Weatherly (Dissent-in-Part 2-3) that claim 17 requires indicia suitable to establish physical space on the layout for players to place chips to make one or both of the bets recited in claim 1. I also agree that the claimed indicia are best understood as “printed matter,” and that there is a functional relationship between the indicia and the casino craps layout. But I join Judge Bahr’s decision to affirm the rejection of claim 17 because for printed matter to be given patentable weight, there must be a new and unobvious functional relationship between the printed matter and the substrate. In In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983), the Federal Circuit stated in the obviousness context, that “[t]he bare presence or absence of a specific functional relationship, without further analysis, is not dispositive.” Id. at 1386. “Rather,” the Court continued, “the critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate.” Id. (emphasis added). The court subsequently applied Gulack in the anticipation context. King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1278 (Fed. Cir. 2010). There the court considered whether an otherwise anticipated claim becomes patentable under 35 U.S.C. § 102 with the addition of printed matter, i.e., instructions informing someone about the existence of an inherent property of that method. The court held, again, that “the relevant inquiry here is whether the additional instructional limitation of [the claim] has a ‘new and unobvious functional relationship’ with the known method.” Id. (emphasis added) (citing In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004); quoting Gulack, 703 F.2d at 1386). The court found no functional relationship at all, and therefore that the informing step added no novelty to the known method. Appeal 2011-002716 Application 10/926,567 2 Here, the functional relationship between the claimed indicia and the layout is old; that is, as with indicia appearing on prior-art layouts, the claimed indicia define locations for placing particular bets. See, e.g., Scarne 459 (noting that layouts vary in the types of wagers offered). Absent the required new and unobvious functional relationship, the Examiner correctly gave the claimed indicia no patentable weight, and correctly found that Scarne discloses a casino craps layout that anticipates claim 17. Appeal 2011-002716 Application 10/926,567 1 WEATHERLY, Administrative Patent Judge, dissenting-in-part. I join in the portions of the Board’s opinion pertaining to claims 1-16. Because I conclude that the Examiner’s rejection of claim 17 and the respective dependent claims 18-21 should be reversed, I respectfully dissent from the portions of the Board’s decision affirming the rejections of claims 17-21. Appellant argues that Scarne fails to describe the claimed craps layout, which includes “wagering areas for placing a proposition wager on at least one proposition wagering opportunity on a single roll of the dice” selected from the same group of two novel proposition wagering opportunities recited in claims 1 and 9. App. Br. 11. I agree. Scarne describes only a traditional craps layout, which lacks the areas for placing the wagers recited in claim 17. However, the Examiner responds by finding that the claimed layout “differs from the standard layout merely by the printing of the specific indicia/words.” Ans. 6. The Examiner also finds that the wagering areas are printed matter that is not functionally related to the underlying layout and thus may not be relied upon to distinguish the claimed layout from Scarne. Id. (citing In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983)). The basis of the Examiner’s finding of non-functionality is that the claimed wagering areas merely “render the device more convenient by providing an individual with a specific type of indicia.” Ans. 6. In essence, the Examiner disregards the claimed wagering areas as non-functional printed matter and then finds that Scarne anticipates claim 17. As an initial matter, it must be determined whether claim 17 recites printed matter. Claim 17 recites a “casino craps layout having provided App App there areas oppo wage illus oppo prop layou hard “Fig prese illus Spec l. 22 Ther “crap eal 2011-0 lication 10 on specifi are furthe rtunity” se ring oppo trates prop rtunities in Figure 1 osition wa t with the 4, 6, 8, or ure 1 show nt inventi trated in th ification th ; p. 5, l. 4; efore, I co s layout h 02716 /926,567 c wagering r limited s lected fro rtunities a osition wa Figure 1 of Appell gering are opportuni 10 or (b) a s a game on” (Spec e figure (S e layout i p. 9, l. 17 nclude tha aving prov areas for uch that th m a group re not desc gering are , which is ant’s Spec as 20 and ty to wage ny pair of table layou ., p. 4, ll. 2 pec., p. 13 s character ; p. 13, l. 1 t claim 17 ided there 2 placing a ey provid of two suc ribed by S as for both reproduced ification il 30, which r that the numbers. t that is us 2-23), and , l. 20). F ized as a “ 2; p. 13, l. recites pri on specifi propositio e a “propo h opportu carne. Th types of w below. lustrates th provide pl next roll o The Spec eful in the refers to “ or the rem table layo 20; p. 14, nted matte c wagerin n wager.” sition wag nities. Th e Specific agering e claimed ayers usin f dice will ification s practice o game tabl ainder of ut.” Spec l. 26; p. 1 r in the fo g areas,” w These ering e recited ation g the be (a) a tates: f the e layout 2 the ., p. 4, 5, l. 7. rm of a hich ” Appeal 2011-002716 Application 10/926,567 3 refers to a game table layout bearing markings that define proposition wagering areas for at least the two proposition bets recited in the claim. The presence of printed matter invokes an analysis of whether that printed matter relates functionally to the underlying substrate. The Examiner concludes that the printed matter recited in claim 17 is non- functional. I disagree. “Differences between an invention and the prior art cited against it cannot be ignored merely because those differences reside in the content of the printed matter.” In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). However, if “the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.” Id. Conversely, when a new and non-obvious functional relationship exists between claimed printed matter and the substrate on which it is printed, sections 102 and 103 are satisfied. In re Miller, 418 F.2d 1392, 1396 (CCPA 1969). I find that a functional relationship between the wagering areas and the layout exists such that the presence of the wagering areas is entitled to consideration for patentability. The specific wagering areas show players where to place their chips to make the claimed bets. The areas invite players to place chips on them to make the claimed bets. They also permit the claimed bets to be made. Conversely, if the areas were not present on the layout, it would be difficult if not impossible to make the claimed bets. Of course, the differences between the claimed subject matter must still be novel and non-obvious in light of the prior art to constitute patentable subject matter. Here, the Examiner identifies no teaching in Scarne of the bets recited in claim 17 or the wagering areas corresponding to those bets. Appeal 2011-002716 Application 10/926,567 4 I also respectfully disagree with Judge Wood’s conclusion that obviousness of the claimed wagering areas is sufficient to warrant affirming the anticipation rejection that is before us. The King decision relied upon to apply the Gulack court’s reasoning when analyzing an anticipation rejection is inapposite. The King court rested its affirmance of the anticipation rejection before it on the grounds that the printed matter at issue was not functional. King, 616 F.3d at 1279. The obviousness of the claimed printed matter was not at issue in King.3 For these reasons, I would reverse the Examiner’s rejection under § 102(b) of claim 17. Because the rejection of dependent claims 18-21 under § 103(a) over Scarne suffers the same deficiency described above, I would also reverse the rejection of claims 18-21. 3 If we were to conclude that Scarne rendered claim 17 obvious, I believe such a rejection should be denominated as a new ground of rejection. In re De Blauwe, 736 F.2d 699, 706 n.9 (Fed. Cir. 1984) (stating that when PTO advances “a position or rationale new to the proceedings, an applicant must be afforded an opportunity to respond to that position or rationale by submission of contradicting evidence”).