Ex Parte Alderucci et alDownload PDFPatent Trial and Appeal BoardSep 29, 201612253343 (P.T.A.B. Sep. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/253,343 10/17/2008 63710 7590 10/03/2016 INNOVATION DIVISION CANTOR FITZGERALD, L.P. 110 EAST 59TH STREET (6TH FLOOR) NEW YORK, NY 10022 FIRST NAMED INVENTOR Dean P. Alderucci 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. 08-2268 9133 EXAMINER HOEL, MATTHEW D ART UNIT PAPER NUMBER 3714 NOTIFICATION DATE DELIVERY MODE 10/03/2016 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): patentdocketing@cantor.com lkorovich@cantor.com phowe@cantor.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DEAN P. ALDERUCCI and MARK A. MILLER Appeal2015-001505 Application 12/253,343 1 Technology Center 3700 Before HUBERT C. LORIN, MICHAEL C. ASTORINO, and AMEE A. SHAH, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1-19. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to the Appellants, "[t]he real party in interest of the present application is CFPH, L.P." Appeal Br. 3. Appeal2015-001505 Application 12/253,343 Claimed Subject Matter Claims 1, 5, 8, 11, 12, 16, and 19 are independent. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method for conducting a wagering game using an inventory of indicia, the method comprising: receiving, by a gaming device, respective wagers from a player to play each of a series of hands; for each hand of play, randomly selecting, by the gaming device, a plurality of individual indicia from the inventory by a) selecting a respective value of each indicia with reference to the inventory of indicia and b) selecting a respective suit of each indicia without reference to the inventory of indicia, the combination of indicia selected defining a respective at least one hand outcome and depleting, by the gaming device, a number of indicia with the selected values from play for subsequent hands without regard for the selected suits; comparing at least one respective hand outcome to a predetermined schedule of winning outcomes and if said hand outcome matches one of said schedule of winning outcomes, issuing an award to the player; and prior to play of a subsequent hand displaying the number of indicia with each value remaining in the inventory as depleted to enable a player to deduce any scheduled winning outcomes eliminated as a result of depletion of said indicia from play. Rejections I. Claims 1-19 are rejected under 35 U.S.C. § 102(b) as being anticipated by Odom et al. (US 2005/0143158 Al, pub. June 30, 2005, hereinafter "Odom"). Final Act. 2--4. 2 Appeal2015-001505 Application 12/253,343 IL Claims 1-19 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-24 of copending Application No. 12/263,779. Id. at 6-7. III. Claims 1-19 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-5 of copending Application No. 12/254,485. Id. at 7. ANALYSIS Rejection I The Appellants argue that Odom fails to teach "randomly selecting, by the gaming device, a plurality of individual indicia from the inventory by a) selecting a respective value of each indicia with reference to the inventory of indicia and b) selecting a respective suit of each indicia without reference to the inventory of indicia," and "depleting, by the gaming device, a number of indicia with the selected values from play for subsequent hands without regard for the selected suits," as recited in claim 1. Appeal Br. 9, Reply Br. 2. In support of their argument, the Appellants point out that the claim limitations require "a card with a value and a suit[, which] may be selected multiple times (e.g., four ace of hearts could possibly be selected from a deck because the hearts is not referenced in a selection or depletion)." Reply Br. 2. As such, the claimed method cannot be played with Odom's finite deck of cards. See id. With Odom's finite deck of cards, once a card having a value and suit is selected that card is depleted from the deck and not usable. See id.; see also Odom, para. 31. As such, the Appellants' argument . . 1s persuasive. 3 Appeal2015-001505 Application 12/253,343 We also note that the Examiner points to claim 2, which depends from independent claim 1, and recites "wherein the series of hands includes hands of blackjack." Appeal Br., Claims App. The Examiner explains that because claim 2 depends from independent claim 1, claim 2 has a narrower scope than claim 1. See Ans. 5. The Examiner determines that ifthe narrow scope of claim 2 includes hands of Blackjack, then the broader claim 1 must also include hands of Blackjack. See id. From this, the Examiner implies that playing hands of Blackjack, which is disclosed by Odom, corresponds to the subject matter of claim 1. See id. at 4--5. The Examiner's reasoning, however, is flawed because it fails to account for the requirements of claim 1. In other words, to the extent that claim 2 requires hands of Blackjack, the hands cannot be played with Odom's finite deck of playing cards. Thus, we do not sustain the Examiner's rejection of independent claim 1, and its depending claims, as anticipated by Odom. Additionally, independent claims 8 and 12 include substantially similar limitations as claim 1; and independent claims 5, 11, 16, and 19 include similar limitations to claim 1. See Appeal Br., Claims App. For similar reasons as discussed above, we do not sustain the Examiner's rejection of independent claims 5, 8, 11, 12, 16, and 19, and any depending claims thereon, as anticipated by Odom. Rejections II & III Claims 1-19 are provisionally rejected on the ground ofnonstatutory obviousness-type double patenting as being unpatentable over claims 1-24 4 Appeal2015-001505 Application 12/253,343 of copending Application No. 12/263,779 and claims 1-5 of copending Application No. 12/254,485. Id. at 6-7. The Appellants do not contest these rejections. However, we note that the Appellants filed a response on April 10, 2012 to the initial of nonstatutory obviousness-type double patenting rejections provided in a Non-Final Office Action, mailed October 12, 2011. The Appellants' response, at pages 10-11 with added emphasis, stated: Applicants request a deferral of this rejection until claims have been allowed. Applicants cannot properly address the rejection until a allowed set of claims exists because the claims may change. Applicants ask that the Office raise any double patenting rejection at a time when the claims have been allowed if such a rejection is then proper. Since the Appellants' response, there have been amendments to many of claims 1-19 of the present application, as well as to claims 1-24 of Application No. 12/263,779 (now US 8,408,988 B2, issued April 2, 2013), and claims 1-5 of copending Application No. 12/254,485 (now US 9,320,963 B2, issued April 26, 2016). Based on the foregoing, we do not reach these rejections. DECISION We REVERSE the Examiner's decision rejecting claims 1-19 under 35 U.S.C. § 102(b) as being anticipated by Odom. We do not reach the Examiner's rejections of: claims 1-19 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-24 of copending Application No. 12/263,779; and claims 1-19 on the ground of nonstatutory obviousness-type double 5 Appeal2015-001505 Application 12/253,343 patenting as being unpatentable over claims 1-5 of copending Application No. 12/254,485. REVERSED 6 Copy with citationCopy as parenthetical citation