Ex Parte Napolitano et al

Patent Trial and Appeal BoardMar 9, 2018

12611787 (P.T.A.B. Mar. 9, 2018)

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. 12/611,787 11/03/2009 Thomas J. Napolitano 055002.0004 3141 101546 7590 Thomas F. Bergert Williams Mullen 321 East Main Street, Suite 400 Charlottesville, VA 22902 EXAMINER LEWIS, JUSTIN V ART UNIT PAPER NUMBER 3638 NOTIFICATION DATE DELIVERY MODE 03/13/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): tbergert@williamsmullen.com ip @ williamsmullen. com patents@igt.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS J. NAPOLITANO, WILLIAM JOHN MILLER, DINAH ANN GEORGE, JOHN LOUIS CAPONE, and ROSS DALTON Appeal 2017-005617 Application 12/611,787 Technology Center 3700 Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and BRANDON J. WARNER, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Thomas J. Napolitano et al. (“Appellants”)1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1-28. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, the real party in interest is IGT Global Solutions Corporation. Appeal Br. 3. Appeal 2017-005617 Application 12/611,787 THE CLAIMED SUBJECT MATTER Claims 1, 25, and 26 are independent. Claim 1 is reproduced below and is illustrative of the subject matter on appeal. 1. A scratch off game card, comprising: a substrate having at least one area with printed indicia thereon; at least one removable layer covering at least a portion of the printed indicia; and at least one overlying screen comprising a pattern of opaque ink elements printed on the at least one removable layer such that the ink elements are blended into smooth tones when viewed by a human eye at a distance and thereby allow the indicia to be at least partially visible. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Holman US 6,076,860 June 20, 2000 Guttin US 6,241,246 B1 June 5,2001 Wicker US 7,976,068 B2 July 12, 2011 REJECTIONS2 I. Claims 1-3, 7-12, 14, 15, and 17-28 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Holman and Guttin. Non-Final Act. 3- 12. 2 Appellants also address the Examiner’s objection to claim 22. Appeal Br. 9; Reply Br. 2; see also Non-Final Act. 2. The propriety of this objection is reviewable by petition under 37 C.F.R. § 1.181, and is not appealable. See In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (stating that there are many kinds of decisions made by examiners that are not appealable to the Board when they are not directly connected with the merits of issues involving rejections of claims (citing In re Hengehold, 440 F.2d 1395, 1403 (CCPA 2 Appeal 2017-005617 Application 12/611,787 II. Claims 4-6, 13, and 16 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Holman, Guttin, and Wicker. Id. at 12-14. OPINION Rejection I The Examiner finds that Holman teaches a scratch off game card having most of the limitations of independent claim 1, including, inter alia, “at least one overlying (fig. 1) screen (18) comprising a pattern (fig. 1) of ink elements (col. 4, lines 11-12) printed (col. 3, lines 42—43) on the at least one removable layer (16) (fig. 1).” Non-Final Act. 3—4. The Examiner acknowledges that Holman “fails to disclose: i) said ink elements being opaque; and ii) the ink elements being blended into smooth tones when viewed by a human eye at a distance, thereby allowing the underlying indicia to be at least partially visible.” Id. at 4. However, the Examiner finds that Guttin teaches the concept of providing: i) elements (individual dots on scratch-off layer 22 shown in fig. 1) that are opaque (fig. 1); and ii) the elements (individual dots of scratch-off layer shown in fig. 1) being blended into smooth tones when viewed by a human eye at a distance (fig. 1; . . .), thereby allowing underlying indicia (e.g. [,] letters 16) to be at least partially visible (fig- I)- Id. The Examiner determines that it would have been obvious to provide the Holman layer 18 with the constituent pattern teachings of the Guttin scratch-off layer shown in fig. 1 (composed of a plurality of fine opaque dots, spaced in such a 1971))). The basis of the Examiner’s objection does not relate to matters involved in the rejections before us in this appeal. Thus, we do not review the objection. 3 Appeal 2017-005617 Application 12/611,787 manner as to yield an overall at least translucent layer through which the underlying indicia can be seen), in order to present information on the card as desired, with an enhanced play action functionality, as taught by Guttin (col. 1, lines 66-67). Id. Appellants argue that the Examiner erred in finding that Guttin discloses a scratch-off layer comprising a pattern of opaque ink elements. Appeal Br. 14. In particular, Appellants assert that “the shading in the drawing figures of Guttin represents transparent ink, or alternatively an opaque scratch-off layer covered by an overprint layer having the same letters as the underlying grid.” Id. According to Appellants, “[t]he shading in the drawings is provided purely as a way to depict color distinctions.” Id.; see also id. (Appellants asserting that “the statement in the Office Action that Guttin shows ‘a plurality of fine opaque dots, spaced in such a manner as to yield an overall at least translucent layer’ has no basis in the [Specification [of Guttin]” (quoting Non-Final Act. 4)). We agree with Appellants. An Examiner’s factual finding regarding what a reference discloses must be supported by a preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the evidence is the standard that must be met by the PTO in making rejections”). In order to satisfy this standard, the evidence must demonstrate that it is more likely than not that the alleged facts are actually true. See Bosies v. Benedict, 27 F.3d 539, 542 (Fed. Cir. 1994) (the preponderance of the evidence standard requires the finder of fact to believe that the existence of a fact is more probable than its nonexistence). 4 Appeal 2017-005617 Application 12/611,787 Guttin teaches a lottery ticket having “first game area 4 [that] is covered by a scratch-off layer[,] which may be opaque or transparent.” Guttin, col. 3,11. 16-17. In particular, as to the opaque scratch-off layer option, Guttin teaches that “[a]n opaque scratch-off layer is . . . applied over the target letters 16 to hide the same from view,” and, “[thereafter, at least one overprint layer is applied to the [opaque] scratch-off layer comprising the same target letters which appear on the substrate.” Id., col. 3,11. 26-30. “When the scratch-off layer is removed from a particular box 14, the target letter[s] 16 printed on the substrate will then be visible.” Id., 11. 30-32. As to the transparent scratch-off layer option, Guttin teaches “a clear transparent scratch-off layer is provided over the target letters printed on the substrate.” Id., 11. 46^17.3 “[T]he transparent layer may be provided with a color or a transparent colored layer may be printed over the scratch-off layer” {id., 11. 55-56), such that, “[w]hen the scratch-off layer is removed, the target letter appears with a different colored background than the color of the scratch-off layer” {id., 11. 59-61). The Examiner finds that Guttin teaches “elements (individual dots on scratch-off layer 22 shown in fig. 1) that are opaque (fig. 1).” Non-Final Act. 4. According to the Examiner, “Guttin’s translucent layer is simply comprised of a series of distributed black dots in figs. 1-3.” Ans. 13; see also Non-Final Act. 4 (finding that Guttin’s scratch-off layer shown in Figure 1 comprises “a plurality of fine opaque dots, spaced in such a manner as to yield an overall at least translucent layer through which the underlying 3 We note that Guttin’s teachings regarding the transparent scratch-off layer are based upon the disclosure of the Holman reference of record, which Guttin incorporates by reference. Guttin, col. 3,11. 39-63. 5 Appeal 2017-005617 Application 12/611,787 indicia can be seen”). However, this finding lacks adequate evidentiary support. The Examiner does not point to, nor do we discern, any teaching in Guttin that scratch-off layer 22, as depicted in Figures 1-3, comprises a pattern of fine opaque dots. The Examiner takes the position that “the content of the drawings must be taken for what they literally show- a scattering of fine dots in layer 22” because “Appellants cite no portion of Guttin’s written specification explicitly indicating that any shadings shown in the drawings are to be interpreted as merely depicting color distinctions.” Ans. 15. We disagree. Appellants point out that Guttin expressly describes the scratch-off layer as “entirely opaque” or “transparent.” Appeal Br. 13 (citing Guttin 3:21-63); see also Guttin 4:66-5:4 (“[OJpaque or transparent scratch-off layer[s] as previously described . . . enable a player who chooses to locate the target words, to mark each word by removing the scratch-off layer 22 from the target letters which form the target word, and visibly differentiate the target word from the remaining target letters as shown best in FIGS. 2 and 3.”). We agree with Appellants that the dots shown in Figures 2 and 3 represent “shading . . . provided purely as a way to depict color distinctions,” rather than an indication that scratch-off layer 22 comprises a pattern of opaque dots. Appeal Br. 14. The Examiner has not established by a preponderance of the evidence that Guttin, as relied upon in the rejection, teaches individual dots on scratch-off layer 22. In the Answer, the Examiner presents an alternative position. Ans. 13-14. Namely, with reference to Guttin’s disclosure of a transparent colored layer, the Examiner states that, “when said ‘color’ that is provided is black, it results in a distribution of fine opaque black dots, as shown in figs. 1-3, the aggregate of them still allowing underlying indicia to be seen 6 Appeal 2017-005617 Application 12/611,787 through the ‘screen’ of dots.” Id. at 14 (citing Guttin, col. 3,11. 55-56). However, the Examiner has not cited to any evidence in the record or provided technical reasoning to support this position. See Reply Br. 2-3. “The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not. . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies” in the cited references. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967); see In re GPAC, Inc., 57 F.3d 1573, 1582 (Fed. Cir. 1995). The Examiner’s alternative position relies on a speculative finding that a black-colored transparent layer would necessarily include a plurality of fine opaque dots, and such speculation is insufficient to support the rejection. For the foregoing reasons, we are persuaded that the Examiner erred in concluding that the combination of Holman and Guttin renders obvious the subject matter of independent claim 1. Accordingly, we do not sustain the rejection of independent claim 1, and its dependent claims 2, 3, 7-12, 14, 15, 17-24, 27, and 28 under 35 U.S.C. § 103(a) as unpatentable over Holman and Guttin. Because the Examiner relies on the same deficient findings in rejecting independent claims 25 and 26 (Non-Final Act. 10-11), we also do not sustain the rejection of claims 25 and 26 under 35 U.S.C. § 103(a) as unpatentable over Holman and Guttin. Rejection II The Examiner’s rejection of dependent claims 4-6, 13, and 16 relies on the same proposed combination of Holman and Guttin that we find deficient for the reasons stated above. Non-Final Act. 12-14. The Examiner does not make any findings as to the scope and content of Wicker that would 7 Appeal 2017-005617 Application 12/611,787 cure the deficiency in the underlying combination of Holman and Guttin. Accordingly, for the same reasons discussed above, we do not sustain the Examiner’s rejection of claims 4-6, 13, and 16 under 35 U.S.C. § 103(a) as unpatentable over Holman, Guttin, and Wicker. DECISION The Examiner’s decision to reject claims 1-28 under 35 U.S.C. § 103(a) is reversed. REVERSED 8