Ex Parte Webb

Patent Trial and Appeal Board

Nov 26, 2013

11924265 (P.T.A.B. Nov. 26, 2013)

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.
11/924,265 10/25/2007 Derek J. Webb AMK-2674-174 1944
7590 11/26/2013
Galaxy Gaming, Inc.
6980 O'Bannon Drive
Las Vegas, NV 89117
EXAMINER
COLLINS, DOLORES R
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
11/26/2013 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 DEREK J. WEBB
________________

Appeal 2011-011707
Application 11/924,265
Technology Center 3700
________________

Before MICHAEL L. HOELTER, SCOTT A. DANIELS, and
JILL D. HILL, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-011707
Application 11/924,265

2
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1-19. App. Br. 5. Claims 1, 11, and 12 are independent
method claims. Claim 20 has been canceled. App. Br. 5. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a casino poker game and,
more particularly, to a casino Pai Gow poker game.” Spec. para. [0003].
Independent claim 1 is illustrative of the claims on appeal and is reproduced
below:
1. A method of playing a Pai Gow card game comprising:
(a) dealing cards to a player and to a dealer;
(b) the player and dealer dividing their cards into first
and second player hands and first and second dealer hands,
respectively, each of the first and second player hands and the
first and second dealer hands having a hand rank; and
(c) resolving the game based on a comparison of the first
and second player hand ranks with the first and second dealer
hand ranks, wherein the resolving step is practiced differently
depending on whether one of the first and second player hands
includes a Joker such that a winning player hand rank achieved
without a Joker is resolved differently than said winning hand
rank achieved with a Joker.

REFERENCE RELIED ON BY THE EXAMINER
Evers US 6,007,424 Dec. 28, 1999

Appeal 2011-011707
Application 11/924,265

3
THE REJECTIONS ON APPEAL1
1. Claims 1-19 are held to claim an abstract idea and are rejected as
ineligible subject matter under 35 U.S.C. § 101. Ans. 4.
2. Claims 1, 2, 8, and 12-15 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Evers. Ans. 6.
3. Claims 3-7, 9-11, and 16-19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Evers. Ans. 7.

ANALYSIS
All the claims are rejected under § 101 as being ineligible subject
matter. Ans. 4-6. All the claims are also rejected under §§ 102 and 103 as
being either anticipated by or unpatentable over Evers. Ans. 6-7. We
initially address the Examiner’s §§ 102/103 rejections under the presumption
that all the claims are patent eligible under § 101. Such a presumption is for
the sake of this analysis only and has no impact on the actual issue of
whether or not all the claims are patent eligible under § 101.

The rejection of claims 1, 2, 8, and 12-15
as being anticipated by Evers
Appellant presents separate arguments for claims 1, 8, and 12. App.
Br. 19-21. We address these claims separately with claim 2 standing or
falling with claim 1 and with claims 13-15 standing or falling with claim 12.
See, 37 C.F.R. § 41.37(c)(1)(vii).

1 The Examiner enters a New Ground of Rejection changing the rejection of
claims 2 and 15 from a rejection based on §103 to a rejection based on
§ 102. Ans. 3.
Appeal 2011-011707
Application 11/924,265

4
Claim 1
The Examiner finds that Evers anticipates all the limitations of claim
1 directed to a Pai Gow card game including the limitation “wherein the
resolving step is practiced differently depending on whether one of the first
and second player hands includes a Joker such that a winning player hand
rank achieved without a Joker is resolved differently than said winning hand
rank achieved with a Joker.” Ans. 6-7. Evers teaches alternate results for
Pai Gow poker depending on whether a regular 52-card deck is employed or
a regular 52-card deck plus a Joker is employed. Evers 4:12-15, 5:15-50,
see also Abstract. Evers teaches that when using a deck plus a Joker, a hand
having five aces is possible with the payout being 800 to 1 as compared with
a hand having only four aces where the payout is 20 to 1 (i.e., four of a
kind). Evers 5:16-50, see also Ans. 7. Based on these teachings, the
Examiner finds that “Evers teaches the concept of having a different
resolving step with a Joker compared to a hand without a joker as discussed
supra. (See tables 1 and 2 and col 5 lines 15-28).” Ans. 7.
Appellant acknowledges that the addition of a Joker in Evers serves
“to increase the player chance of achieving a higher hand rank and adds the
additional possibility of the hand rank of ‘5 Aces’ (see Table 2).” App. Br.
19. Hence, in one sense, Appellant seems to acknowledge that a hand
achieving a hand rank via only four cards has a chance of achieving a higher
hand rank if the fifth card is a Joker. However, Appellant contends that “a
concept of the invention is to reward a player that achieves a winning hand
rank without using a Joker. If the same winning hand rank is achieved with
the hand including a Joker, the game is resolved differently.” App. Br. 19-
20, see also Reply Br. 1, 2. Appellant contends that “[i]n Evers, winning
Appeal 2011-011707
Application 11/924,265

5
hands are resolved in the same manner regardless of whether a hand includes
a Joker.” App. Br. 20.
To be more specific, the claim language at issue is directed to a
resolving step that “is practiced differently depending on whether” a Joker is
involved or not. The Examiner references Evers for teaching “the possibility
of having 5 aces with a joker and not having this payout/result without a
Joker in a player’s hand.” Ans. 7. Appellant (and Evers) clearly indicates
that in Pai Gow poker, a hand is made up of seven cards divided by the
owner into two smaller hands totaling 5 and 2 cards respectively. Spec.
para. [0006]; Evers 1:15-26. Hence, when investigating the rank of these
separately formed hands, all the cards therein are investigated, not just some
of them. Thus, in Evers, a 5-card hand having four aces with a
miscellaneous (non-joker) fifth card is resolved differently than a 5-card
hand having the same four aces and a fifth Joker card. As a consequence,
we are not persuaded by Appellant’s assertion that claim 1 was amended to
distinguish over Evers “to clarify that a winning player hand rank achieved
without a Joker is resolved differently than the same winning hand rank
achieved with a Joker.” App. Br. 20, see also Reply Br. 1, 2. Appellant
does not explain how this limitation is not disclosed by Evers’ teaching of
five aces having a payout of 800 to 1 which is different from Evers’ teaching
of four of a kind (i.e. four aces) having a payout of 20 to 1.
Appellant also contends that in Evers, a player can achieve “five aces
without a joker (e.g., which is possible with the use of multiple decks).”
Reply Br. 2. We are not persuaded by this example as Evers is directed to
using a standard 52 card deck (Evers 1:12-15, 2:59-60 and 4:12-15) and
Appellant does not indicate where Evers discloses using multiple decks
Appeal 2011-011707
Application 11/924,265

6
during play such that the above hypothetical might occur. Further, even if
Appellant’s example were possible, the fact that an alternate possibility of
achieving five aces exists does not detract from achieving five aces (instead
of only four) using a Joker as identified by the Examiner.
Accordingly, and in view of the record presented, we are not
persuaded of Examiner error by Appellant’s contentions and as such, we
sustain the Examiner’s rejection of claims 1 and 2 as anticipated by Evers.
Claim 8
Claim 8 depends from claim 7 which ultimately depends from claim
1. Appellant contends that “the rejection of claim 8 is per se misplaced”
because claim 7 is rejected under another rejection based on § 103 and not
under the present rejection based on § 102. App. Br. 20-21. Appellant does
not dispute that the additional limitation of claim 7 is disclosed in Evers
(see, e.g., Evers 1:15-26, 2:16-26, 4:20-34), but instead that claim 7 “does
not form part of the rejection.” App. Br. 20-21.
We agree with Appellant that claim 7 was not listed by the Examiner
as being anticipated by Evers and instead was listed as being obvious in
view of Evers. See Ans. 6-7. It is clear that Evers discloses the step set
forth in claim 7 of dealing seven cards to each player and also to the dealer
and that all parties subdivide their respective seven cards into separate hands
of “five cards and two cards, respectively” as claimed. See, e.g., Evers 1:15-
26 and 2:16-26. Appellant does not argue that Evers fails to disclose this
limitation even when Appellant presents arguments addressing the issue of
obviousness. App. Br. 21-23. Appellant has had two opportunities (once in
the Appeal Brief and once in the Reply Brief) to argue that this limitation in
claim 7 is not disclosed in Evers, but elected not to do so. Accordingly, as
Appeal 2011-011707
Application 11/924,265

7
claim 8 is clearly rejected as being anticipated by Evers, we deem it an
oversight that the Examiner also failed to indicate that its parent claim 7,
likewise, is anticipated by Evers.
When specifically addressing the subject matter of claim 8, Appellant
contends that “[c]laim 8 recites that a different payout is paid depending on
in [sic.] which hand the Joker is included.” App. Br. 21. Appellant contends
that “Evers makes no distinction between resolving wagers based on the use
of a Joker or any distinction regarding which of the two hands includes the
Joker.” App. Br. 21. We disagree. There is a tremendous difference in
resolving wagers based on whether the holder of four aces also holds a Joker
or not. Evers 5:15-50. Further, a player with four aces and a Joker would
receive a different payout should the player apply the Joker to the 2-card
hand versus the 5-card hand since to win in Pai Gow Poker, the player has to
beat both of the dealer’s hands, not just one of them, and the player may
apply the Joker to the smaller hand to insure that both hands are won. Evers
1:27-30, Spec. para. [0006]. Accordingly, we are not persuaded by
Appellant’s contentions and we sustain the Examiner’s rejection in view of
Evers.
Claim 12
Independent claim 12 contains language similar to that of claim 1 in
that “the resolving step is practiced differently” depending on ranking and
depending on whether a Joker is involved or not. Appellant contends that
“Evers does not in any manner process hands differently based on whether a
Joker is included in either hand” and further that “[n]one of the payouts or
rules for resolving the game is practiced differently based on whether one of
the first and second player hands includes a Joker.” App. Br. 21. We
Appeal 2011-011707
Application 11/924,265

8
disagree with Appellant for the reasons stated above. We sustain the
Examiner’s rejection of claims 12-15.
The rejection of claims 3-7, 9-11, and 16-19
as being unpatentable over Evers
In this rejection, the Examiner states that Evers teaches various
payouts “but fails to exactly teach payouts exactly as claimed by applicant's
limitations.” Ans. 7. However, the Examiner finds that it would have been
obvious “to change payouts as desired to give the casino the house a desired
advantage to add excitement to players.” Ans. 7. Hence, the Examiner is
not relying on Evers for teaching the exact payouts recited in Appellant’s
claims, but instead finds that it would have been obvious in view of Evers’
different payouts for the house to change payouts in order to adjust their
advantage.
Appellant does not challenge that it is obvious for the house to change
payouts but instead contends, repeatedly, that Evers does not disclose the
payout claimed. App. Br. 22-23. The Examiner is not relying on Evers for
the exact payouts as acknowledged above, but instead the Examiner is
relying on the finding that changing payouts is obvious which Appellant
does not dispute. Ans. 7. Appellant is not arguing the Examiner’s rejection
and as such, we sustain the Examiner’s rejection.

SUMMARY
We sustain the rejection of all the claims on appeal under §§ 102 and
103 as noted above. As per 37 C.F.R. § 41.50(a)(1), we do not reach the
rejection under § 101 because our affirmance of the Examiner’s anticipation
and obviousness rejections is dispositive as to all the appealed claims.
Appeal 2011-011707
Application 11/924,265

9
DECISION
The Examiner’s rejections of claims 1-19 are 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)(1)(iv).

AFFIRMED

Klh