Ex Parte Jones

Patent Trial and Appeal Board

Sep 28, 2018

14296860 (P.T.A.B. Sep. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/296,860 06/05/2014
59582 7590 10/01/2018
DICKINSON WRIGHT PLLC
2600 WEST BIG BEA VER ROAD
SUITE 300
TROY, MI 48084-3312
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Mark H. Jones
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.
35761-00054 6458
EXAMINER
LAYNO, BENJAMIN
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
10/01/2018 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 MARK H. JONES
Appeal2017-008489
Application 14/296,860
Technology Center 3700
Before ANNETTE R. REIMERS, LISA M. GUIJT, and
PAUL J. KORNICZKY, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Mark H. Jones (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner's decision to reject claims 1, 3, 4, 6, 7, 9, 10, 12, and 14 under 35
U.S.C. § 103 as unpatentable over Jones (US 7,669,853 B2, issued Mar. 2,
2010) and Kling (US 7,614,624 B2, issued Nov. 10, 2009). Claims 5 and 11
have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
1 The Examiner indicates that "[c]laims 2, 8 and 13 are objected to as being
dependent upon a rejected base claim, but would be allowable if rewritten in
independent form including all of the limitations of the base claim and any
intervening claims." Final Office Action 7 (hereinafter "Final Act.") ( dated
Aug. 16, 2016).
Appeal2017-008489
Application 14/296,860
We AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter "relates generally to a roulette-style game
of chance. More specifically, the present disclosure relates to a roulette-
style game of chance that utilizes a card shuffling device to determine the
outcome." Spec. ,r 2, Figs. 2--4. Claims 1, 7, and 12 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A method of playing a game of chance, comprising:
providing a game layout surface for a game of chance with
a plurality of discrete wagering areas relevant to outcomes of the
game of chance, each of the plurality of wagering areas
configured for receiving a wager on the outcome of the game of
chance, the plurality of discrete wagering areas inducting thirty
eight separate card indicia wagering areas corresponding to the
following card indicia, A through 9 of spades and A though 9 of
diamonds and A through 8 and 10 of hearts and A through 8 and
10 of clubs and a black joker and a color joker;
providing a card shuffling device adjacent the game layout
surface, the card shuffling device being configured to rotate
about a vertical axis and including thirty eight slots each
configured to receive an individual card therein;
providing a set of cards consisting of thirty eight
individual cards, each of the thirty eight cards having indicia
thereon relevant to the outcome of the game of chance, wherein
the indicia on the thirty eight cards consists of A through 9 of
spades, A through 9 of diamonds, A through 8 and 10 of hearts,
A through 8 and 10 of clubs, a black joker, and a color joker;
locating each of the individual cards in a respective slot in
the card shuffling device;
accepting one or more wagers in one or more of the
plurality of wagering areas;
rotating the card shuffling device;
selecting a single card from one of the slots to determine
the outcome of the game of chance via the card shuffling device;
and
2
Appeal2017-008489
Application 14/296,860
resolving the one or more wagers based on the indicia of
the single card according to the payouts of a conventional
roulette game.
ANALYSIS
Claims 1. 3. 4. 6. 7. 9. and 10
Appellant does not offer arguments in favor of independent claim 7 or
dependent claims 3, 4, 6, 9, and 10 separate from those presented for
independent claim 1. See Appeal Br. 10-17. 2 We select claim 1 as the
representative claim, and claims 3, 4, 6, 7, 9, and 10 stand or fall with claim
1. 37 C.F.R. § 4I.37(c)(l)(iv). We address claims 12 and 14 separately
below.
Independent claim 1 is directed to a method of playing a game of
chance and each includes the step of "providing a set of cards consisting of
thirty eight individual cards." Appeal Br. 20, 21, Claims App. The
Examiner finds that Kling "provides proper motivation for removing face
cards." See Final Act. 6 (citing Kling 7:64--8:3); see also id. at 4; Ans. 6-7. 3
As such, the Examiner concludes that it would have been obvious to modify
Kling "by removing [a] certain number of cards from the set of fifty-four
cards, and removing a corresponding number of wagering areas" and that
"[ d]etermining exactly what cards to remove and the number of cards to
remove ... would have been a game design choice." See Final Act. 4.
Appellant contends that "Kling' s specification does not ever discuss
or contemplate the game played with 38 cards." Appeal Br. 14; see also
2 Appeal Brief (hereinafter "Appeal Br.") (filed Jan. 17, 2017).
3 Examiner's Answer (hereinafter "Ans.") (dated Mar. 22, 2017).
3
Appeal2017-008489
Application 14/296,860
Reply Br. 5. 4 In particular, Appellant contends that "[ t ]he entirety of Kling
teaches directly away from an arrangement that utilizes less than 54 cards -
or at a minimum that utilizes the same number of cards as a traditional
roulette game (i.e. 38 cards)." Reply Br. 3 (bolding omitted); see also
Appeal Br. 11-12, 14.
Appellant has the better position, Kling discloses:
As discovered by the inventors, a roulette game using 54 values
(52 cards plus two 'joker" values) of five different suits
(including jokers) can lead to many more and more interesting
bets than can a conventional roulette game using only 38 values
(36 plus the "O" and "00" values) of three different colors.
Kling 2:16-21 (emphasis added); see also Appeal Br. 11; Reply Br. 3.
Kling further discloses that "[ t ]he present invention includes more potential
selected values (54 versus only 38), more colors or 'suits' (five versus three),
more ways to win (through both roulette-type and poker-type bets), and
more varied types of bets and side bets that may be made." Kling 3:29-33
(emphasis added); see also Appeal Br. 12; Reply Br. 3.
In this case, even assuming arguendo that Kling discloses removing
face cards, as the Examiner proposes (see Final Act. 4, 6; Ans. 6-7), Kling
appears to criticize/ discourage the use of "only" 3 8 cards. See Kling 2: 16-
21, 3:29-33; see also Appeal Br. 11-12, 14; Reply Br. 3, 5; In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994) ("A reference may be said to teach away
when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant."); In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
4 Reply Brief (hereinafter "Reply Br.") (filed May 22, 2017).
4
Appeal2017-008489
Application 14/296,860
Accordingly, the Examiner fails to establish by a preponderance of the
evidence that Kling discloses the step of "providing a set of cards consisting
of thirty eight individual cards." See Appeal Br. 20, Claims App. ( emphasis
added); PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed.
Cir. 1998) (The transition phrase "consisting of' is understood to exclude
any elements not specified in the claim.).
However, in the Answer, the Examiner appears to take an alternate
position. In particular, the Examiner finds that Jones discloses "all of the
elements and steps" of claim 1 except the claimed card indicia. See Ans. 7-
8 (bolding omitted). The Examiner reasons that:
The combined teachings of Jones and Kling ... teach
thirty-eight cards since Jones has thirty-eight slots in the
shuffling device wheel, while Kling . . . alone uses different
cards than Jones. This is merely a difference in the printed
matter. This printed matter difference between Jones' thirty-
eight cards (having the indicia "1" - "3 6 ', "O" and "00"), and the
claimed thirty-eight cards (having the indicia "A through 9 of
spades, A through 9 of diamonds, A through 8 and 10 of hearts,
A through 8 and 10 of clubs, a black joker, and a color joker") of
the present invention, resides in the meaning and information
conveyed by printed matter. Such differences are considered
unpatentable, In re Gulack, 217 USPQ 401, Ex parte Breslow,
192 USPQ 431.
Id. at 8 (bolding omitted, italics added); See In re Reeves, 62 F.2d 199
(CCPA 1932) (Written information or printed matter per se has long been
held outside the scope of the statutorily defined categories of patent-eligible
subject matter.). 5
5 We do not consider the order in which prior art is applied in a rejection to be
significant. See, e.g., In re Bush, 296 F.2d 491,496 (CCPA 1961) (When a
rejection is based on a combination of references, the order in which prior art
5
Appeal2017-008489
Application 14/296,860
In this case, Appellant does not address the Examiner's findings that
the combined teachings of Jones and Kling disclose the limitations of claim
1 and that the claimed card "indicia" is "merely a difference in the printed
matter." See Ans. 7-8 (bolding omitted); see also Reply Br. 1-8.
Moreover, we note Appellant acknowledges that Kling discloses that
"specialized cards with custom indicia may be used instead of [the] standard
playing cards so long as the betting positions of the wagering area correlate
with the set of cards chosen for any given embodiment." Kling 7:64--8:3
(emphasis added); see also Appeal Br. 13; Reply Br. 4--5; Final Act. 3--4;
Ans. 6-7. We further note Appellant's Specification discloses that "[i]t will
be appreciated that the cards could bear a variety of different indicia as well
as a variety of different numbers and suits." Spec. ,r 22 (emphasis added);
see also id. ,r 24.
For these reasons, we sustain the Examiner's rejection of independent
claim 1 as unpatentable over Jones and Kling. We further sustain the
rejection of claims 3, 4, 6, 7, 9, and 10, which fall with claim 1.
Claims 12 and 14
Appellant does not offer arguments in favor of dependent claim 14
separate from those presented for independent claim 12. See Appeal Br. 17-
18. We select claim 12 as the representative claim, and claim 14 stands or
falls with claim 12. 37 C.F.R. § 4I.37(c)(l)(iv).
As an initial matter, for the reasons discussed above with respect to
claim 1, we agree with Appellant that the Examiner fails to establish by a
references are cited to the Applicant is of no significance, but merely a matter
of exposition).
6
Appeal2017-008489
Application 14/296,860
preponderance of the evidence that Kling discloses "a set of cards consisting
of thirty eight individual cards." See Appeal Br. 22, Claims App. ( emphasis
added); id. at 17-18.
Appellant contends that "the cards used in the game of Jones are not
from the standard playing card deck and are not the cards in the limitation of
claim 12." Appeal Br. 18. In particular, Appellant contends that
Id.
as shown in Figs. 6 and 7 of Jones the cards utilized are either:
the numbers 1-36, 0 and 00 with 18 cards being black, 18 cards
being red and the O and 00 being green; or a set of cards
representing the 38 possible outcomes of a roll of two six-sided
as in the game of craps.
However, as noted above, in the Answer, the Examiner finds that the
claimed card "indicia" is "merely a difference in the printed matter." See
Ans. 7-8 (bolding omitted). Appellant does not apprise us of error in these
findings of the Examiner. See Reply Br. 1-8. Moreover, as further noted
above, (1) Appellant acknowledges that Kling discloses that "specialized
cards with custom indicia may be used instead of [the] standard playing
cards so long as the betting positions of the wagering area correlate with the
set of cards chosen for any given embodiment" (Kling 7: 64--8: 3 ( emphasis
added); see also Appeal Br. 13; Reply Br. 4--5; Final Act. 3--4; Ans. 6-7);
and (2) Appellant's Specification discloses that "[i]t will be appreciated that
the cards could bear a variety of different indicia as well as a variety of
different numbers and suits" (Spec. ,r 22 ( emphasis added); see also id. ,r
24).
Appellant contends that neither Jones nor Kling "teach selection from
one of these defined cards to determine an outcome of a round of play."
7
Appeal2017-008489
Application 14/296,860
Appeal Br. 18. However, Jones discloses that "[t]he card [26] 6 associated
with that one tray 24 is then removed from its slot and a game decision is
announced based on the indicia borne on that one card [26]." Jones 7: 16-
18 (bolding omitted, italics added). As such, we agree with the Examiner
that "[a] single card is selected from one of the slots [in Jones] to determine
the outcome of the game of chance via the card shuffling device 14." Ans.
8.
For these reasons, we sustain the Examiner's rejection of
independent claim 12 as unpatentable over Jones and Kling. We further
sustain the rejection of claim 14, which falls with claim 12.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1, 3, 4, 6,
7, 9, 10, 12, and 14 as unpatentable over Jones and Kling.
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
6 Jones discloses card "24" rather than card "26." Given that number 24
represents the "tray," we consider this is a typographical error. See Jones
7:14--18, Fig. 2.
8