Ex Parte Jenkins

Patent Trial and Appeal BoardSep 10, 2014

12211625 (P.T.A.B. Sep. 10, 2014)

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. 12/211,625 09/16/2008 Deborah L. Jenkins 101217.00037 8807 7590 09/10/2014 Scott Haire H.E.B., LLC 777 Main Street Suite 3100 Fort Worth, TX 76102 EXAMINER GRANT, MICHAEL CHRISTOPHER ART UNIT PAPER NUMBER 3715 MAIL DATE DELIVERY MODE 09/10/2014 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 DEBORAH L. JENKINS ________________ Appeal 2012-007645 Application 12/211,625 Technology Center 3700 ________________ Before: MICHAEL L. HOELTER, LYNNE H. BROWNE, and MICHAEL L. WOODS, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 1‒20. App. Br. 4. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. THE CLAIMED SUBJECT MATTER The disclosed subject matter “relates to game systems, and more particularly to a system and method for a reusable card-based game that allows a user to reuse a durable card or use a virtual card to participate in the Appeal 2012-007645 Application 12/211,625 2 game.” Spec. para. 1. Independent claim 1 is illustrative of the claims on appeal and is reproduced below: 1. An apparatus for gaming, comprising: a card reader system for reading card data from a game card associated with a player; an instant win game system for associating an instant win game entry with the card data; a jackpot game system for associating a jackpot game entry with the card data. REFERENCES RELIED ON BY THE EXAMINER Luciano US 6,168,521 B1 Jan 2, 2001 Weil US 2005/0075160 A1 Apr. 7, 2005 Schneier US 7,887,405 B2 Feb. 15, 2011 THE REJECTIONS ON APPEAL Claims 1, 4, 5, 7, and 13‒201 are rejected under 35 U.S.C. § 102(b) as being anticipated by Luciano. Ans. 5. Claims 1‒3 and 6 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Weil and Schneier. Ans. 12. 1 We take it as inadvertent error that claim 7 was omitted from the Examiner’s statement of this anticipation rejection in that “the basis of rejection for Claim 7 over Luciano was clearly stated.” Ans. 21; see also Ans. 9, 10 and particularly paragraph 11. We also note that Appellant presents arguments contesting this anticipation rejection of claim 7. App. Br. 13, 14. On a different note, regarding claims 19 and 20, the Examiner states that because the Examiner clearly lists a rejection of parent claim 7 under §103(a), “therefore, these claims [i.e., claims 19 and 20] should be incorporated in the 35 USC 103 rejection.” We decline to either add a new rejection of claims 19 and 20 under § 103 or re-state the present anticipation rejection of these claims as a rejection under § 103 which involves different references. Appeal 2012-007645 Application 12/211,625 3 Claims 7‒12 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Weil, Schneier, and Luciano. Ans. 13. ANALYSIS The rejection of claims 1, 4, 5, 7, and 13‒20 as being anticipated by Luciano Appellant presents separate arguments for claims 1, 5, 13–15, 19, and 20. App. Br. 10‒14. We address each argument made with claims 4 and 16‒18 standing or falling with their respective parent claim. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claim 1 Apparatus claim 1 includes the limitations of both “an instant win game system” and “a jackpot game system.” Appellant does not dispute the Examiner’s finding that Luciano discloses a “jackpot game system” (see Ans. 6) but instead contends that Luciano fails to disclose the claimed “instant win game system.” App. Br. 10, 11; see also Reply Br. 4, 5. On this point, the Examiner identifies where Luciano teaches “[i]n another game, which includes an ‘instant’ lottery feature, the draw is a random selection of chances from a predetermined pool of prize values or game outcomes.” Ans. 5, 6 (referencing Luciano 4:15‒25). Appellant acknowledges this teaching (“[t]his is the only use of the term ‘instant’ within Luciano” (App. Br. 11; see also Reply Br. 4)) but contends that Luciano’s disclosure of such other game “is further described in the specification as being a ‘quick pick’ play that uses a random number generator to generate numbers for the next available lottery game.” App. Br. 11. In other words, Appellant contends that Luciano’s description of this Appeal 2012-007645 Application 12/211,625 4 “another game” involving an “instant” feature (Luciano 4:18‒20) is not a description of an “instant win game” as claimed. See, e.g., Reply Br. 4, 5. The Examiner disagrees and reasons that “Luciano is describing being able to purchase an outcome where you instantly know if you win (because you receive a random selection from a pool of prize values or game outcomes).” Ans. 16. The Examiner elaborates and indicates where “Luciano discloses instant win games completely separately and and [sic] without reference to quick pick” lottery games. Ans. 17. Indeed, Luciano states that “[a] system in accordance with the invention will accommodate multiple types of game play” and that “one type of game play” is directed to a “lottery draw” whereas “[i]n another game,” an “instant” feature is provided. Luciano 3:62 to 4:20. Accordingly, we are not persuaded the Examiner erred in finding claim 1 anticipated by Luciano. We sustain the Examiner’s rejection of claim 1 and dependent claim 4. Claim 5 Claim 5 depends from claim 1 and includes the additional limitation of a tracking system “for displaying instant win prize history data in real time.” The Examiner references Luciano’s disclosure of a video lottery terminal that “displays the current value of each prize pool and the overall estimated odds of winning a prize.” Ans. 7 (referencing Luciano 5:25‒40). Appellant contends that Luciano does not teach the display of “instant win prize history data in real time” as claimed. App. Br. 11. We agree with Appellant in that the limitation in question is directed to historical data and the Examiner’s identified disclosure in Luciano is directed to current (“current value”) and future (“estimated odds of winning”) data. We reverse the Examiner’s anticipation rejection of claim 5. Appeal 2012-007645 Application 12/211,625 5 Claim 13 Independent claim 13 includes the limitation of “a location-based instant win game system for associating an instant win game entry with the card data as a function of location data.” The Examiner references Luciano’s terminals such that “the system is location-based in that the wagering takes place at the location of certain electronic or video lottery terminals.” Ans. 6 (referencing Luciano 1:25‒35). This section of Luciano relied on by the Examiner is directed to “lottery draws” and the player’s ability to purchase a chance in a “future lottery draw” type game. Luciano 1:25‒35. Appellant contends that “Luciano does not associate an instant win game entry with card data as a function of location data.” App. Br. 12; see also Reply Br. 5, 6. We agree that this teaching in Luciano is lacking with respect to disclosing a location-based “instant win game system” and specifically one that associates “an instant win game entry with the card data as a function of location data.” We reverse the Examiner’s anticipation rejection of claim 13, and also that of dependent claims 14‒18 for similar reasons. Claims 7, 19 and 20 Method claims 19 and 20 each depend from independent claim 7. The Examiner sets forth the reasons why claim 7 is anticipated by Luciano. Ans. 10, 11. Appellant disputes that claim 7 (as well as claims 19 and 20) is anticipated by Luciano. App. Br. 13, 14; see also Reply Br. 5. Appellant initially contends that Luciano lacks the step found in claim 7 directed to “associating each of a plurality of reusable cards with a corresponding player.” App. Br. 13. The Examiner references Luciano’s discussion of how a card reader works as teaching this step. Ans. 9, 10 (referencing Appeal 2012-007645 Application 12/211,625 6 Luciano 4:40‒50). The Examiner does not further elaborate as to how the operation of a card reader teaches the step of associating each card with a corresponding player as claimed. Appellant also contends that Luciano lacks another step found in claim 7 directed to “electronically reading an identifier stored on one of the plurality of reusable cards.” App. Br. 13. Here, the Examiner references Luciano’s disclosure of inserting a card so that “the amount of money (i.e. identifier) is read off the game card.” Ans. 10 (referencing Luciano 7:20‒30). The Examiner does not elaborate as to how the amount of money stored on a card is an “identifier” as claimed. Appellant also addresses other claim steps recited in claims 7, 19, and 20 and indicates how such steps are not anticipated by Luciano.2 App. Br. 13, 14; see also Reply Br. 5. In view of the above, we reverse the Examiner’s rejection of claims 7, 19, and 20 as being anticipated by Luciano. The rejection of claims 1‒3 and 6 as being unpatentable over Weil and Schneier Appellant separately argues the rejection of claims 1, 2, and 6. App. Br. 14, 15. We address each such claim separately with claim 3 standing or falling with parent claim 1. Regarding claim 1, the Examiner primarily relies on the teachings of Weil for disclosing the claimed limitations but relies on Schneier for teaching “an instant win game system.” Ans. 12, 13. Claim 1 includes the limitations of “a game card associated with a player” (the game card having 2 For example, both claims 19 and 20 include the step of “assigning a location-based predetermined instant win game entry” based on “a location of a vendor” (claim 19) or “a location of the corresponding player” (claim 20). We have previously addressed Luciano’s disclosure of a location-based instant win game entry and have found it wanting. Appeal 2012-007645 Application 12/211,625 7 “card data” thereon) and also the limitation of associating both an instant win game entry and a jackpot game entry “with the card data.” Appellant contends that Weil does not “associate either an instant win game entry or a jackpot game entry with card data” because Weil discloses an association “with a user account, and not the prepaid stored value card.” App. Br. 14; see also Reply Br. 6. Weil Paragraph 25 (identified by the Examiner, Ans. 12) indeed discusses a “user account” in lieu of a card as per Appellant’s contention, but Weil Paragraph 6 clearly teaches “[a] user account associated with the unique identification code for the first selected card is established.” In other words, Weil discloses that a user account is associated with a card and that the card has a unique identifier. Hence, Appellant’s contention that Weil teaches association with a user account and not a user’s card is not, in view of Weil’s inter-relation of the two, persuasive of Examiner error. Appellant also addresses Schneier’s lack of teaching in this regard (see, e.g., App. Br. 14, Reply Br. 6, 7), but Schneier was relied on for teaching “an instant win game system” (Ans. 13) and not the claimed association. As such, we sustain the Examiner’s rejection of claim 1 (and 3) as being unpatentable over Weil and Schneier. Appellant addresses claim 2 and the limitation of “storing history data associated with a plurality of game cards.” Appellant does not dispute that Weil Paragraphs 30 and 32 (identified by the Examiner, Ans. 12) disclose past winnings, but instead, Appellant contends again that “Weil uses the user account and not the game card” to do so. App. Br. 15. Appellant’s contention is not persuasive of Examiner error for the same reasons expressed supra. We sustain the Examiner’s rejection of claim 2 as being unpatentable over Weil and Schneier. Appeal 2012-007645 Application 12/211,625 8 Regarding claim 6, Appellant again contends that Weil discusses storing prize history data with “a user account” and not “game cards” as above. App. Br. 15. For similar reasons, Appellant’s contention is not persuasive and we sustain the Examiner’s rejection of claim 6 as being unpatentable over Weil and Schneier. The rejection of claims 7‒12 as being unpatentable over Weil, Schneier, and Luciano Appellant presents separate arguments for each of claims 7‒12 (App. Br. 15‒17) and we, in turn, address each of these arguments. Regarding claim 7, Appellant again contends that “the amount stored on the lottery card is transferred to an account that is not associated with a single card.” App. Br. 15. The matter of the account being associated with a card has previously been addressed (see supra) and Appellant’s reliance on a distinction between such associations is not persuasive of Examiner error. Claim 7 also includes the limitation of “electronically reading an identifier.” While Appellant addresses a portion of Weil Paragraph 16 referenced by the Examiner (App. Br. 15), Appellant does not address that portion of this Paragraph 16 discussing the reading of a “unique identification code [that is] retrieved from the bar code” on the card. Appellant’s silence with respect to this teaching is not persuasive the Examiner erred in relying on Weil Paragraph 16. Ans. 13. Appellant further contends that Weil fails to disclose the limitation of “assigning a predetermined instant win game entry with the reusable card identifier.” App. Br. 15. However, Appellant is arguing the art individually in that the Examiner relies on Schneier for disclosing “an instant win game Appeal 2012-007645 Application 12/211,625 9 system” and the Examiner relies on Weil for disclosing association with a card. Ans. 13‒15. Appellant does not explain how the Examiner’s stated reason to combine the two (Ans. 15) is faulty or in error. Appellant also repeats the unpersuasive contention that in Weil, the association is with respect to a “user account, and not to a reusable card identifier.” App. Br. 16. Accordingly, we are not persuaded the Examiner erred in rejecting claim 7 as being obvious over Weil, Schneier, and Luciano. Appellant’s arguments regarding claims 8, 9, and 10 are each premised on Weil “using a user account” that is not “associated [with a] reusable card identifier.” This premise is not persuasive of Examiner error for reasons previously stated. We sustain the Examiner’s rejection of claims 8, 9, and 10. Regarding claim 11, Appellant contends that “[t]he Examiner does not address claim 11, and none of the cited references disclose this limitation.” App. Br. 16. However, the Examiner does, indeed, address the limitations of claim 11. Ans. 14, 15. Appellant’s contention is not persuasive of Examiner error. We sustain the Examiner’s rejection of claim 11. Regarding claim 12, Appellant contends that “[t]he Examiner acknowledges that Weil and Schneier fail to disclose these limitations.” App. Br. 16. Appellant’s contention is not accurate in that the Examiner relies on both Weil and Schneier, as well as Luciano, for disclosing the limitations of claim 12. See Ans. 14‒16 and the stated reasons for their combination. Appellant’s contention is not persuasive of Examiner error and accordingly, we sustain the Examiner’s rejection of claim 12. Appeal 2012-007645 Application 12/211,625 10 DECISION The Examiner’s rejection of claims 1 and 4 as being anticipated by Luciano is affirmed. The Examiner’s rejection of claims 5, 7, and 13‒20 as being anticipated by Luciano is reversed. The Examiner’s rejection of claims 1‒3 and 6 as being unpatentable over Weil and Schneier is affirmed. The Examiner’s rejection of claims 7‒12 as being unpatentable over Weil, Schneier, and Luciano 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-IN-PART tkl