Ex Parte Thomas et al

Patent Trial and Appeal BoardNov 27, 2012

11357501 (P.T.A.B. Nov. 27, 2012)

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. 11/357,501 02/17/2006 Alfred Thomas 247079-000376USPT 4863 70243 7590 11/28/2012 NIXON PEABODY LLP 300 S. Riverside Plaza 16th Floor CHICAGO, IL 60606 EXAMINER HALL, ARTHUR O ART UNIT PAPER NUMBER 3718 MAIL DATE DELIVERY MODE 11/28/2012 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 ALFRED THOMAS, JEREMY M. HORNIK, and DION K. AOKI ____________________ Appeal 2010-008688 Application 11/357,501 Technology Center 3700 ____________________ Before: CHARLES N. GREENHUT, WILLIAM V. SAINDON, and REMY J. VANOPHEM, Administrative Patent Judges. SAINDON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-008688 Application 11/357,501 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-20 under 35 U.S.C. § 103(a) as unpatentable over Pascal (US 6,196,547 B1, iss. Mar. 6, 2001) and Sklansky (US 7,044,468 B2, iss. May 16, 2006). We have jurisdiction under 35 U.S.C. § 6(b). The Claimed Subject Matter Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A gaming machine for playing a card-based wagering game comprising: a wager input device for receiving inputs from a player during the wagering game, the inputs including a wager amount; and at least one display for displaying a plurality of cards, the plurality of cards arranged in a hand, the hand indicating a randomly selected outcome selected from a plurality of outcomes, the plurality of outcomes including a qualifying-hand outcome corresponding to a qualifying hand and a plurality of winning outcomes corresponding to winning hands, the winning hands ranging from a lowest winning hand to a highest winning hand, wherein the qualifying hand is greater than the lowest winning hand, and the gaming machine, in response to the randomly selected outcome being the qualifying-hand outcome, awards a player a bonus hand. SUMMARY OF DECISION We REVERSE. Appeal 2010-008688 Application 11/357,501 3 OPINION Independent claim 1 requires a gaming machine for playing a card- based wagering game to, “in response to [a] randomly selected outcome being [a] qualifying-hand outcome, award[] a player a bonus hand.” Independent claim 7 is directed to a method that, similar to claim 1, requires a step of awarding a bonus hand. Independent claims 17 and 18 have slightly different limitations, which we will address after claims 1 and 7. Independent Claims 1 and 7 The Examiner found that Pascal describes a gaming machine that awards a player a bonus hand. Ans. 5 (citing Pascal, col. 8, ll. 4-17 and fig. 12). The Examiner further clarifies that “the player is awarded a stud hand bonus award/bonus award … and an additional card hand draw/resulting derived hand, which is appellants bonus hand” [sic]. Ans. 13. Appellants argue that Pascal describes awarding a bonus but not a bonus hand. App. Br. 6. Appellants are correct. In Pascal, a hand is dealt to a player and if that hand is of sufficient value, a bonus is paid. Col. 8, ll. 4- 14. Whether the player receives the bonus payment or not, the hand continues as normal. Col. 8, ll. 14-17. While we agree with the Examiner that the claim does not preclude a “bonus hand” from being the same hand and/or the same game (Ans. 13), we disagree that continuing the same game in Pascal reasonably qualifies as an awarding of a bonus hand. The player plays the hand regardless of whether a bonus was paid. What the player is awarded, in Pascal, is a payment, not a hand. Accordingly, the Examiner improperly addressed the “award[] a player a bonus hand” limitation of claims 1 and 7. Consequently, we do not sustain the Examiner’s rejection of claims 1 and 7, or of claims 2-6 and 8-16, which depend therefrom. Appeal 2010-008688 Application 11/357,501 4 Independent Claims 17 and 18 Independent claims 17 and 18 require a method (or medium) for playing a card-based wagering game, with a step of (1) awarding a player an award in response to a first winning outcome and a step of (2) displaying a second outcome in response to the first winning outcome being a qualifying outcome. The Examiner found that the first step is described in Pascal by way of a player being awarded a pot based on the drawn cards being a winning hand. Ans. 8 (citing Pascal, col. 7, ll. 16-35). The Examiner found that the second step is described in Pascal, and notes: (column 8, lines 4-17 and Fig. 12, Pascal; a value of the players hand or second randomly selected outcome that is associated with a stud bonus award is displayed based on a players hand being a qualifying bonus stud hand, and it would have been obvious at the time of invention to try an implementation in which the players hand or drawn cards or first randomly selected outcome is the hand that is the qualifying bonus stud hand that causes display of the hand value associated with the stud bonus award since one having ordinary skill in the art would have understood and realized from Pascal that a primary game hand is configured to trigger a bonus or additionally drawn secondary game hand in the same game upon occurrence of a qualifying bonus stud hand for the player). Appellants argue that Pascal does not disclose the second outcome of claim 17 because the bonus award in Pascal does not trigger a randomly selected outcome. App. Br. 10. The Examiner appears to rely on two different embodiments to address the two steps identified above. The embodiment cited by the Examiner in column 7 of Pascal only discusses awarding a pot if the player Appeal 2010-008688 Application 11/357,501 5 wins the game. The embodiment cited by the Examiner in column 8 differs in that a bonus award is given to the player if the initial hand is of sufficient value. Accordingly, it is not clear to us how the Examiner considers the column 8 embodiment to describe the second step identified above. To the extent the Examiner considers the further playing of the hand in the column 8 embodiment to be the second outcome, we note that this outcome is not “in response to the first … outcome being the qualifying outcome” (emphasis added) because the continuing hand is played whether or not the player is awarded the bonus. In light of the above, we do not sustain the Examiner’s rejection of claims 17 and 18, or of claims 19 and 20, which depend therefrom. DECISION We REVERSE the Examiner’s decision regarding claims 1-20. REVERSED hh