Ex Parte Harris et al

Patent Trial and Appeal BoardAug 9, 2013

10892692 (P.T.A.B. Aug. 9, 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. 10/892,692 07/16/2004 Ronnie W. Harris MTO.0065P 3608 32856 7590 08/12/2013 WEIDE & MILLER, LTD. 7251 W. LAKE MEAD BLVD. SUITE 530 LAS VEGAS, NV 89128 EXAMINER PIERCE, DAMON JOSEPH ART UNIT PAPER NUMBER 3718 MAIL DATE DELIVERY MODE 08/12/2013 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 RONNIE W. HARRIS and TED GRAV ____________________ Appeal 2011-005467 Application 10/892,692 Technology Center 3700 ____________________ Before: CHARLES N. GREENHUT, BRETT C. MARTIN, and PATRICK R. SCANLON , Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-005467 Application 10/892,692 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the rejections of claims 1, 4-9 and 18-23. App. Br. 4. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter new grounds of rejection for claim 23. The claims are directed to a method and apparatus for awarding wins for game play. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1 A method of presenting a game comprising the steps of: designating a plurality of winning outcomes for said game from a plurality of potential outcomes for said game; associating an award with each winning outcome, said each award comprising at least a first award type and in one or more cases, a second award type, the award associated with each winning outcome varying depending upon a size of a wager placed by a player to play said game, wherein said wager is placed in one or more primary credits, each primary credit having a first value and wherein said first award type comprises a number of said primary credits and wherein said second award type comprises one or more secondary credits, each secondary credit having a second value, said second value being a fraction of said first value; accepting a wager in credits of said first value from each of at least two players to participate in an instance of the same game; presenting said same instance of said game to said at least two players, each player attempting to obtain a winning outcome for said game; and awarding to a player receiving a winning outcome said award associated therewith, said award comprising credits of said second value and/or credits of said first value. Appeal 2011-005467 Application 10/892,692 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: US Pat. 6,279,910 B1 issued Aug. 28, 2001 (“de Keller”) US Pub. 2005/0187014 A1 published Aug., 25, 2005 (“Saffari”). REJECTIONS Claim 23 is rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Ans. 4. Claims 1, 4-9, and 18-23 are rejected under 35 U.S.C. § 102(b) as being anticipated by Saffari. Ans. 4. Claims 4 and 21 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Saffari and de Keller. Ans. 10. OPINION The Examiner rejected claim 23 under 35 U.S.C. § 112, 1st paragraph, stating that the inserted limitation “said total value represented by a predetermined number of primary credits” “lacks antecedent basis in the original specification.” Ans. 4. This is all we know of the Examiner’s position. The reasons for the Examiner’s rejection are not clear. As Appellants point out, compliance with the written description requirement is not merely a matter of using the same language in the claims as that used the remainder of the Specification. Reply Br. 2. As we are unable to ascertain the thrust of the Examiner’s rejection, we are constrained to reverse it. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (citations omitted). Perhaps the true issue is that the limitation is ambiguous. The claim requires a plurality of winning outcomes and an award associated with each. Appeal 2011-005467 Application 10/892,692 4 Thus, the claim requires a plurality of awards. It is not clear whether the phrase “said each award having a total value” means that the “total value” is the total sum of each of the awards, meaning that there is one total value, or the “total value” is that of each award, meaning there must also be a plurality of total values. Either construction is reasonable and appears to have descriptive support. However, the ambiguity renders the metes and bounds of the claim unclear and therefore must be resolved. As such, we are “justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.” See Ex Parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). We turn to the prior-art rejections. The claims relate to wagering methods in a gaming machine wherein awards are paid in two denominations or “credits.” The Examiner correctly determined that the claims do not expressly require the second value to be lower than the first. Cf., e.g., Spec. 21-22, para. [0065]. But, if the first and second values are the same, the “fraction,” as interpreted by the Examiner is “1/1.” Ans. 5, 7. We recognize that mathematically speaking, any number could be expressed as a “fraction.” Colloquially, in the context of Appellants’ Specification however, this term would be understood to mean a portion of the whole. Cf. definitions 1 and 2 in Chambers 21st Century Dictionary.1 Given this interpretation, though not expressly recited, the claim does imply, 1 1. mathematics an expression that indicates one or more equal parts of a whole, usually represented by a pair of numbers separated by a horizontal or diagonal line, where the upper number (the numerator) represents the number of parts selected and the lower number (the denominator) the total number of parts. Compare integer. 2. a portion; a small part of something. Retrieved from http://www.credoreference.com/entry/chambdict/fraction Appeal 2011-005467 Application 10/892,692 5 consistent with all of the examples in the Specification, that the second value is less than the first, or mathematically speaking, the recited “fraction” refers to a proper one. Thus, we cannot sustain the Examiner’s rejection as premised on the Examiner’s proffered claim construction. The Examiner takes an alternate position that since Saffari has one award of 10 credits and a second award of 2 credits, the second award is a fractional amount of the first. Ans. 11. This position is clearly untenable because the claim requires the value of the credit to be a fractional amount, not the value of the award. App. Br. 19-22. While this distinction may not be very significant from a payout prospective, all words in a claim must be considered in judging the patentability of the claimed subject matter. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). Accordingly, we cannot sustain the Examiner’s rejection of claims 1, 4-9, and 18-23 on this basis either. The Examiner has not explained, and it is not apparent, how the cited portion of de Keller (Ans. 10 citing col. 3, ll. 54-58), concerning the casino’s percentage rake, has any relevance to Saffari’s interim and Bingo win awards. As such, we do not sustain the Examiner’s rejection of claims 4 and 21 as unpatentable over Saffari and de Keller. DECISION We enter new grounds of rejection for claim 23 under 35 U.S.C. § 112, second paragraph, as being indefinite. The Examiner’s rejections are reversed. Appeal 2011-005467 Application 10/892,692 6 FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) (2011). 37 C.F.R. § 41.50(b) provides “[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: (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 proceeding 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. . . . 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). REVERSED; 37 C.F.R. § 41.50(b) hh