Ex Parte Hoffman

Patent Trial and Appeal BoardNov 12, 2015

11009253 (P.T.A.B. Nov. 12, 2015)

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. 11/009,253 12/10/2004 Anthony Harris Hoffman 27024-031 3208 36614 7590 11/13/2015 MANATT, PHELPS & PHILLIPS LLP ROBERT D. BECKER 1841 Page Mill Road Suite 200 PALO ALTO, CA 94304 EXAMINER RADA, ALEX P ART UNIT PAPER NUMBER 3716 MAIL DATE DELIVERY MODE 11/13/2015 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 ANTHONY HARRIS HOFFMAN ____________ Appeal 2013-001834 Application 11/009,2531 Technology Center 3700 ____________ Before JAMES A. WORTH, BRUCE T. WIEDER, and TARA L. HUTCHINGS, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1–7 and 9–23. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on November 5, 2015. We REVERSE. CLAIMED SUBJECT MATTER Appellant’s claimed invention “relates to a system and method for a blackjack tournament played in an on-line environment . . . .” (Spec. ¶1.) Claims 1 and 11 are the independent claims on appeal. Claim 1 is representative. It is reproduced below (emphasis added): 1 Appellant does not identify a real party in interest. Appeal 2013-001834 Application 11/009,253 2 1. A method for conducting an on-line blackjack tournament comprising: providing a central game site accessible to a plurality of players, at remote locations over an electronic communications network; initiating a round of real-time blackjack among the plurality of players and a dealer, wherein the round of blackjack comprises playing a predetermined number of hands of blackjack, wherein the round of blackjack comprises playing at least two sub-rounds of blackjack, wherein a set of settlement events in a sub-round of blackjack comprises comparing the dealer’s blackjack score with at least one blackjack score of one player among the plurality of players, wherein each of the at least two sub-rounds of blackjack terminates after the set of settlement events occurs in each of the sub-rounds, wherein one or more players of the plurality of players to take an initial action is determined for one or more of the sub- rounds of blackjack, wherein an initial action in a first sub-round of blackjack is taken by a first player of the plurality of players, wherein an initial action in a second sub-round of blackjack is taken by a second player of the plurality of players, and wherein the second player taking the initial action in the second sub-round of blackjack is different from the first player taking the initial action in the first sub-round of blackjack; dealing the predetermined number of hands of blackjack to one or more players of the plurality of players and the dealer from a limited set of card values representing a shoe of cards, wherein the shoe of cards comprises a limited number of cards drawn from at least one full standard deck of cards; and declaring one or more winners among the plurality of players after the predetermined number of hands have been played. Appeal 2013-001834 Application 11/009,253 3 REJECTIONS Claims 1, 2, 6, 7, 11, 12, 16, 17, 22, and 23 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Goldberg (US 6,712,702 B2, iss. Mar. 30, 2004) and Stavinsky (US 5,423,551, iss. June 13, 1995). Claims 3–5, 7, 9, 10, 13–15, and 17–21 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Goldberg, Stavinsky, and Merimovich (US 2005/0164793 A1, pub. July 28, 2005). ANALYSIS The Examiner finds that Goldberg teaches “wherein the round of blackjack comprises playing a least two sub-rounds of blackjack (col. 2, line 4 – col. 3, line 57) . . . .” (Non-Final Action 2.) Goldberg discloses blackjack tournaments that have “a pre-established number of tournament blackjack games to be played.” (Goldberg, col. 3, ll. 44–46.) The Examiner also finds that Goldberg et al is silent in regards to wherein one or more players of the plurality of players to take an initial action is determined for one or more of the sub-rounds of blackjack, and wherein the second player taking the initial action in the second sub-round of blackjack is different from the first player taking the initial action in the first sub-round of blackjack . . . . (Non-Final Action 4.) Stavinsky discloses a card game different from blackjack. (See Stavinsky, col. 1, ll. 41–col. 2, l. 3.) The Examiner finds: Stavisky [sic] teaches a card game wherein one or more die is used to determine which player would start the game (col. 3, lines 39-43). Stavisky also teaches that a spin wheel, a random number generator to determine [sic] the player who starts the game. Once the winner is declared the process of Appeal 2013-001834 Application 11/009,253 4 selecting a player to begin starts over again. Stavisky further teaches that the player who is selected to start the game preferably has the option of cutting the cards, or passing the cut to the next player. If the player elects to pass the cut, the next player located clockwise from the selected player cuts the cards. In the preferred embodiment, the original player selected to start the game still starts the game even though the cut was passed. In another form, the player elected to start the game can pass the cut and the right to start the game to the next player. Therefore Stavisky implies that a second player different from the initial first player is selected by a chance means to start the next game immediately after the first game. By determining which player to take action in a traditional game such as blackjack, one of ordinary skill in the art would provide an unbiased decision to challenge a player’s skills in a traditional type game. Therefore, it would have been obvious to one of ordinary skill in the art at the time of [sic] the invention was made to modify Goldberg to include one or more players of the plurality of players to take an initial action is determined for one or more of the sub-rounds of blackjack, and wherein the second player taking the initial action in the second sub-round of blackjack is different from the first player taking the initial action in the first sub-round of blackjack as taught by Stavisky to provide an unbiased decision to challenge a player’s skills in a traditional type game. (Non-Final Action 4–5, emphasis added.) Appellant replies: The Examiner’s response and reliance on Stavinsky’s disclosure of passing the cut of cards to the next player does not rebut Appellant’s explanation that Stavinsky does not expressly nor inherently disclose that the second player taking the initial action in the second sub-round of blackjack is different from the first player taking the initial action, as recited in claims 1 and 11. To conclude that Stavinsky “implies/suggests that a second player different from the initial first player is selected by a chance means to start the next game immediately after the first Appeal 2013-001834 Application 11/009,253 5 game,” is an overly broad interpretation and scope of Stavinsky and is unsupported. In particular, contrary to the Examiner’s assumption, the player to start a new game can pass the cut to the same player who started the previous game, thereby the same player ends up starting both games. Further, Stavinsky does not disclose keeping track of the starting player of a previous game, and then using this information to determine the starting player for the next game. Therefore, Stavinsky does not expressly nor inherently disclose that the second player taking the initial action in the second sub-round of blackjack is different from the first player taking the initial action, as recited in claims 1 and 11. (Reply Br. 5, emphasis added.) Stavinsky discloses that the player who starts the game can be selected by chance. (Stavinsky, col. 3, ll. 39–43.) Although Stavinsky discloses that the selected player can “pass[] the cut to the next player” (id., col. 3, ll. 45–46), the Examiner does not point to anything in Stavinsky to indicate that the player selected to start the second game must be different from the player selected to start the first game. Instead, the Examiner’s findings indicate that each player selection process in Stavinsky is random and not constrained by the result of any previous selection. Thus, contrary to the Examiner’s statement, Stavinsky teaches that the player selected to start the first game may also be selected to start the second game. Therefore, we reverse the rejection of claim 1 under § 103(a). For the same reason, we reverse the rejection of independent claim 11, which contains similar language and reverse the rejections of dependent claims 2– 7, 9, 10, and 12–23. Appeal 2013-001834 Application 11/009,253 6 DECISION The Examiner’s rejections of claims 1–7 and 9–23 under 35 U.S.C. § 103(a) are reversed. REVERSED mls