Ex Parte Martin et al

Patent Trial and Appeal Board

Apr 29, 2013

11371415 (P.T.A.B. Apr. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN R. MARTIN, PATRICK G. RICE,
and SAMUEL N. ZAMMUTO
____________

Appeal 2011-003055
Application 11/371,415
Technology Center 3700
____________

Before PHILLIP J. KAUFFMAN, BARRY L. GROSSMAN, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-8 and 16-20. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We AFFIRM and designate our affirmance as a NEW GROUND OF
REJECTION under 37 C.F.R. 41.50(b).
CLAIMED SUBJECT MATTER
Claims 1 and 16 are independent claims. Claim 1 is illustrative of the
subject matter on appeal, and recites:
1. A method of playing a predictions-based game based
on a particular event, comprising:
inputting identification information into a non-
predictions based electronic gaming system through a user
interface;
inputting prediction information into the non-predictions
based electronic gaming system through the user interface;
relaying the identification information and prediction
information to a central management system that is configured
to operate the predictions-based game;
monitoring the status of the particular event;
determining whether the prediction information is in
accordance with an outcome of the particular event at the
central management system;
relaying results of said determining step to the non-
predictions based electronic gaming system; and
displaying the results of the particular event on a display
of the non-predictions based electronic gaming system.

1 Appellants identify the real party in interest as Arachnid, Inc., the assignee
of the pending application.
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REFERENCES
The Examiner relied upon the following prior art references:
REJECTIONS
Appellants seek review of the following rejections:
1. Claims 1-8 and 16-20 rejected under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement;
2. Claim 4 rejected under 35 U.S.C. § 112, first paragraph, for failing
to comply with the enablement requirement;
3. Claims 1-8 and 16-20 rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter which Appellants regard as the invention;
4. Claims 1, 3, and 5-8 rejected under 35 U.S.C. § 102(e) as
anticipated by Fujimoto;
5. Claims 2, 16, 19, and 20 rejected under 35 U.S.C. § 103(a) as
unpatentable based on Fujimoto and Miguel;
6. Claim 4 rejected under 35 U.S.C. § 103(a) as unpatentable based
on Fujimoto and Paterson; and
7. Claims 17 and 18 rejected under 35 U.S.C. § 103(a) as
unpatentable based on Fujimoto, Miguel, and Cannon.

Paterson US 5,026,053 Jun. 25, 1991
Miguel US 5,971,397 Oct. 26, 1999
Cannon US 6,652,378 B2 Nov. 25, 2003
Fujimoto US 2005/0079910 A1 Apr. 14, 2005
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ANALYSIS
Claims 1-8 and 16-20 Rejected Under 35 U.S.C. § 112, First Paragraph,
For Failing to Comply With the Written Description Requirement
The Examiner found that the limitation “‘non-predictions based’” to
describe the gaming system is not supported in the Specification as filed and
“seems contrary” to the nature of the disclosed games. Ans. 4.2 The
Examiner also found that “[t]he games listed [in the Specification] are not
inherently ‘non-predictions-based’.” Id. at 11. Additionally, the Examiner
found that the Specification “does not have positive support for the negative
limitation.” Id. at 11-12. Based on this analysis, the Examiner found the
claims failed to comply with the written description requirement in Section
112, first paragraph.
Appellants argue that the disclosed electronic games are “‘non-
predictions-based’” games. App. Br. 6.3 Appellants assert that dart games,
video games, trivia games, and parlor games, “are games played by users
and are not used to make wagers or predictions on an event.” Id. (emphasis
added). Alternatively, Appellants assert that the disclosed games “can be
played as games that do not involve predictions.” Reply Br. 3 (emphasis
added). Based on these assertions, Appellants conclude that “there is
sufficient support in the specification to show that the Applicants had
possession of the claimed limitation of a “‘non-predictions based’ game as
of the filing date and that the embodiments described in the specification
sufficiently demonstrate ‘non-predictions based’ games.” Id.

2 Citations to “Ans. ___” are to the indicated page in the Examiner’s Answer
mailed September 27, 2010.
3 Citations to “App. Br. ___” are to the indicated page in the Appeal Brief
filed September 8, 2010.
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To satisfy the written description requirement in Section 112, first
paragraph, a patent specification must describe the claimed invention in
sufficient detail that one skilled in the art can reasonably conclude that the
inventor had possession of the claimed invention. Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). An applicant shows
possession of the claimed invention by describing it with all of its limitations
using such descriptive means as words, structures, figures, diagrams, and
formulas that fully set forth the claimed invention. Lockwood v. Am.
Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). The fact that the
examples in the Specification “are not all inherently ‘non-predictions-based’
games,” as found by the Examiner, is not determinative. It is the description
in the Specification that controls. Although the exact claim terms need not
be used in haec verba, the specification must contain an equivalent
description of the claimed subject matter. Id.
The Examiner is correct in finding that the phrase “non-predictions
based,” which is used in the claims, does not appear in the Specification.
However, that fact, alone, does not establish that the Specification is not
compliant with the written description requirement. Lockwood v. American
Airlines, 107 F.3d at 1572. The phrase “predictions-based” is used
throughout the Specification to describe certain electronic gaming systems
(e.g., see title of the application; and paragraphs [0002], [0005], [0008],
[0021], and [0023]). Paragraph [0021] states that “in addition to playing
darts on the electronic dart game machine 100, one may also utilize the
electronic dart game machine to input predictions for a predictions-based
game.” Paragraph [0023] provides an example where an electronic dart
machine includes a menu that offers the user the option of using the machine
to play darts, or the alternative to play a “predictions-based” game.
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Paragraph [0030] and Figure 3 amplify on this example in describing how a
game menu allows a user to decide “whether to play a first game, such as
darts, or a second game, such as a predictions-based game.” We conclude
that a person skilled in the relevant technology would understand from the
entire Specification that the option of using the machine to play darts is
intended to be a “non-predictions” based use of the machine, thus
establishing that the inventors had possession of the claimed invention.
Accordingly, we do not sustain the Examiner’s rejection of claims 1-8 and
16-20 under Section 112, first paragraph, for failure to comply with the
written description requirement.
Claim 4 Rejected Under 35 U.S.C. § 112, First Paragraph,
For Failing to Comply With the Enablement Requirement
The Examiner found that the limitation in claim 4 reciting “wherein
the non-predictions based electronic gaming system is a pool table having an
activation assembly” is not enabled because it “lacks any structure disclosed
as necessary to carry out the method of the instant application.” Ans. 4-5.
The Examiner also found that the incorporated application, U.S. Serial No.
10/737,054 “has no user interface capable of carrying out these functions [of
accepting identification and prediction information from a user] and includes
no capability to communicate with other devices” as called for in claim 4.
Ans. 12. The Examiner concluded that “[o]ne of ordinary skill in the art
would not have been able to make or use the invention without undue
experimentation.” Id. at 5, 12.
Appellants disagree with the Examiner’s conclusion and argue that the
disputed limitation is “described” at least in U.S. Serial No. 10/737,054,
which is incorporated by reference in paragraph 16 of the Specification.
App. Br. 7. Appellants also assert that the Specification lists “pool tables”
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as an example of “‘electronic gaming systems’” similar to the dart game
machine used as a specific example. Reply Br. 4.4
35 U.S.C. § 112, first paragraph, requires that, in order to meet the
statutory requirement “to enable” any person skilled in the relevant
technology to make and use the claimed invention “the specification . . .
must teach those skilled in the art how to make and use the full scope of the
claimed invention without ‘undue experimentation’.” In re Wright, 999 F.2d
1557, 1561 (Fed. Cir. 1993) (internal citation omitted).
An enablement inquiry typically begins with a construction of the
claims. AK Steel Corp. v. Sollac, 344 F.3d 1234, 1241 (Fed. Cir. 2003)
(citing MPEP § 2164.08 (“‘All questions of enablement are evaluated
against the claimed subject matter. The focus of the examination inquiry is
whether the substantial scope of the claim is enabled. Accordingly, the first
analytical step requires that the examiner determine exactly what subject
matter is encompassed by the claims.’”)).
Claim 4 depends on independent claim 1. The Examiner has not
rejected claim 1 on the basis of failing to provide an enabling disclosure.
Thus, the Examiner has not raised any issue as to whether a “non-predictions
based electronic gaming system,” as recited in claim 1, is enabled. Claim 4
recites that the “non-predictions based electronic gaming system [recited in
claim 1] is a pool table having an activation assembly.” Thus, the only issue
is whether the Specification also enables the more specific embodiment of a
pool table in claim 4.
Whether undue experimentation is needed is not a single, simple
factual determination, but rather is a conclusion reached by weighing many

4 Citations to “Reply Br. ___” are to the indicated page in the Reply Brief
filed November 24, 2010.
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factual considerations. In re Wands, 858 F.2d 731, 736-37 (Fed. Cir. 1998).
Moreover, enablement is not precluded by the necessity for some
experimentation. Id. at 737. Factors to be considered in determining
whether a disclosure would require undue experimentation include: (1) the
quantity of experimentation necessary, (2) the amount of direction or
guidance presented, (3) the presence or absence of working examples, (4)
the nature of the invention, (5) the state of the prior art, (6) the relative skill
of those in the art, (7) the predictability or unpredictability of the art, and (8)
the breadth of the claims. Id. It is not necessary to review all these factors
to find a disclosure enabling. Rather, the factors are illustrative, not
mandatory, and what is relevant to an enablement determination depends
upon the facts of the particular case. See Amgen, Inc. v. Chugai Pharm. Co.,
927 F.2d 1200, 1213 (Fed. Cir. 1991); Warner-Lambert Co. v. Teva Pharms.
USA, Inc., 418 F.3d 1326, 1337 (Fed. Cir. 2005).
As discussed above, the Specification provides a comprehensive
written description of the claimed invention in the context of an electronic
dart game machine. This description provides details of a user interface and
a capability to communicate with other devices. See, e.g., Fig. 3 and Spec.,
paras. [0017], [0026]. Figure 3 is not specific to an electronic dart game; it
provides a flow diagram for a “game.”
The Specification also refers to games other than electronic dart game
machines. In the context of claim 4 and the Examiner’s rejection, the
Specification refers to “pool tables” (Spec., para. [0003]) and “a parlor game
having an activation assembly having a user interface” (Spec., para. [0009]).
The Specification also states that, in general, embodiments of the invention
may also be used with an electronic gaming system that includes a user
interface that allows a user to input information. Spec., para. [0016].
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Additionally, the Specification states that embodiments of the
invention may also be used with the remote activation assembly shown and
described in U.S. Serial No. 10/737,054, which is incorporated by reference
into the Specification. Spec., para. [0016]. This application is titled “Parlor
Game.” The specification of this application refers to “parlor games”
generally, and to a pool game played on a “pool table system” specifically.
See, e.g., paras. [0003], [0008] of U.S. Serial No. 10/737,054. The pool
table system includes an activation-sensing unit, and a remote activation
assembly that transmits an activation signal. Id. at paras. [0008], [0009].
Based on the evidence of record, and looking at factors such as the
amount of direction or guidance presented in the Specification by way of
description, flow diagrams, and working examples of similar games such as
an electronic dart game machine, as well as the nature of the invention, the
state of the prior art, and the breadth of the claims, we cannot agree that the
preponderance of the evidence supports the rejection. Accordingly, we
cannot sustain the rejection of claim 4 under Section 112, first paragraph, for
failing to comply with the enablement requirement.
Claims 1-8 and 16-20
Rejected Under 35 U.S.C. § 112, Second Paragraph, As Indefinite
The Examiner stated that claims 1 and 16 “are directed to ‘non-
predictions based gaming systems’ that allow for the entry of prediction
based game information.”5 Ans. 5. The Examiner found that it “is unclear
how a gaming system could be a non-prediction game system if it is used to
conduct a prediction game. Id. Based on this finding, the Examiner

5 We note that claims 1 and 16 are not directed to a non-predictions based
gaming system; rather they are directed to a method of playing a predictions-
based game that utilizes a non-predictions based electronic gaming system.
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concluded that claims 1-8 and 16-20 were indefinite under Section 112,
second paragraph. Id.
Appellants argue that “the claims recite using a game that is
inherently not used to make predictions about a particular event in a novel
way to allow operators to make predictions about a particular event.” App.
Br. 9-10. They also argue that the claims are not “insolubly ambiguous” and
thus not indefinite. Id. at 9; Rely. Br. 5.
During proceedings in the PTO, claims are given “their broadest
reasonable interpretation consistent with the specification” and “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(citations omitted). The PTO is required to use a different standard for
construing claims than that used by district courts. Id. at 1369. It is error for
the PTO to “appl[y] the mode of claim interpretation that is used by courts in
litigation, when interpreting the claims of issued patents in connection with
determinations of infringement and validity.” Id. (internal citation and
quotations omitted). Thus, claim interpretation in pending applications is
different from claim interpretation in federal district courts on issued patents,
which use the “insolubly ambiguous” standard advocated by Appellants.
Accordingly, contrary to Appellants’ argument, we interpret the
claims based on the “their broadest reasonable interpretation consistent with
the specification.”
Independent claims 1 and 16 are directed to methods of “playing a
predictions-based game.”6 Both claims also require steps of inputting
“identification information” and “prediction information” into a “non-

6 Unless indicated otherwise, all emphasis to quoted claim language is
added.
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predictions based electronic gaming system” through a user interface.
According to Appellants, the Specification makes clear that the “claims
recite using a game that is inherently not used to make predictions about a
particular event . . . to allow operators to make predictions about a particular
event.” App. Br. 9-10 (emphasis added).
The phrases “predictions-based” and “non-predictions based” are not
defined in the Specification. The Specification repeatedly refers to
“predictions and/or wagers” or similar phrases suggesting a relationship
between a prediction-based game and a wager. See, e.g., Spec., paras.
[0004], [0006], and [0030]. However, the Specification does not state that a
prediction-based game is any game on which a wager is placed, thus leaving
it uncertain whether that is the case. The Specification also does not state
whether a non-predictions based game is transformed into a predictions-
based game if one makes a prediction about the outcome of the game. Thus,
the claims are ambiguous as to whether the nature of the game determines its
classification as predictions-based or non-predictions based, or whether a
prediction and/or wager being placed on the outcome of the game
determines its classification.
Appellants assert that non-predictions-based games are “games played
by users and are not used to make wagers or predictions on an event,” thus
suggesting that it is not the nature of the game that determines a game’s
classification but whether a prediction and/or wager is made. App. Br. 6.
However, Appellants do not point to any evidence in the record to support
this assertion.7 Appellants alternatively and inconsistently assert that non-
predictions based games like darts or pool are games of “manual dexterity

7 “Argument in the brief does not take the place of evidence in the record.”
In re Schulze, 346 F.2d 600, 602 (CCPA 1965).
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based on coordination and skill,” not predictions of outcomes based on
chance, thus suggesting that the nature of the game determines the
classification. App. Br. 10-11. These alternative characterizations
contribute to the indefiniteness found by the Examiner. We also note that
Appellants state that football is a predictions-based game, but we take
judicial notice that football is a game involving manual dexterity based on
coordination and skill. Thus, the nature of the game, such as whether the
game involves manual dexterity, coordination, and skill is not necessarily
determinative of the classification.
Appellants also assert that some games are “inherently not used to
make predictions about a particular event.” App. Br. 9-10 (emphasis added).
However, there is no disclosure or other evidence of any games that have
that inherent quality. Claim 4 refers to “pool” as a non-predictions based
game and claim 16 refers to darts as a non-predictions based game.
However, Appellants have not provided any evidence that games like darts
and pool are “inherently” incapable of someone making a prediction about,
and/or placing a wager on, the outcome of either game. If such predictions
and/or wagers were made, both pool and darts apparently would be
classified as “predictions-based” games.
Finally, we note that the Specification states that “individuals often
make predictions and/or wagers in relation to sporting events, in an effort to
derive more excitement from the sporting events.” Spec., para. [0004]. This
suggests that sporting events or other events are not inherently predictions-
based; rather, it is the effort to “derive more excitement” and perhaps some
revenue, that defines a predictions-based and/or a wagering event.
Based on the claim language interpreted in light of the Specification,
and Appellants’ arguments and evidence, and as explained above, we agree
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with the Examiner that the claims are indefinite. Appellants have not
apprised us of error by the Examiner in the rejection. Accordingly, we
sustain the rejection of claims 1-8 and 16-20 under 35 U.S.C. § 112, second
paragraph, as indefinite.
In sustaining the rejection of claims 1-8 and 16-20, we have relied on
findings from the record which the Examiner did not make. In order to
provide Appellants a full and fair opportunity to respond to the grounds of
rejection as sustained here, pursuant to 37 C.F.R. § 41.50(b), we designate
our decision to sustain the rejection of claims 1-8 and 16-20 as a NEW
GROUND OF REJECTION.
Since all the claims are indefinite, the prior art rejections must fall,
pro forma, because they necessarily are based on speculative assumptions as
to the scope of the claims. See In re Steele, 305 F.3d 859, 862-63 (CCPA
1962). Our pro forma reversal of the prior art rejections, however, takes no
position on the merits of the rejection.
DECISION
Upon consideration of the record as a whole in light of Appellants’
contentions and the preponderance of relevant evidence, we:
REVERSE the rejection of claims 1-8 and 16-20 under 35 U.S.C.
§ 112, first paragraph;
REVERSE the rejection of claim 4 rejected under 35 U.S.C. § 112,
first paragraph;
AFFIRM the rejection of claims 1-8 and 16-20 under 35 U.S.C. § 112,
second paragraph;
REVERSE pro forma the rejection of claims 1, 3, and 5-8 under 35
U.S.C. § 102(e);
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REVERSE pro forma the rejection of claims 2, 16, 19, and 20 under
35 U.S.C. § 103(a);
REVERSE pro forma the rejection of claim 4 under 35 U.S.C.
§ 103(a); and
REVERSE pro forma the rejection of claims 17 and 18 under 35
U.S.C. § 103(a).
Pursuant to 37 C.F.R. § 41.50(b), we have designated our affirmance
of the rejection of claims 1-8 and 16-20 under 35 U.S.C. § 112, second
paragraph, as a NEW GROUND OF REJECTION.
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Regarding the new ground of rejection, Appellants must, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, exercise one of
the following options with respect to the new ground of rejection, in order 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).

AFFIRMED; 37 C.F.R. § 41.50(b)

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