Ex Parte Amaitis et al

Patent Trial and Appeal Board

Mar 24, 2016

10667755 (P.T.A.B. Mar. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/667,755 0912212003
63710 7590 03/28/2016
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
FIRST NAMED INVENTOR
Lee M. Amaitis
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.
03-6164 1374
EXAMINER
ARAQUE JR, GERARDO
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
03/28/2016 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 LEE M. AMAITIS, JOSEPH M. ASHER, ADAM BURGIS,
and DOMINIC CROSTHWAITE
Appeal 2014-002811
Application 10/667 ,755
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 1, 2, 15, 16, and 24---69. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b ). Appellants appeared for oral
hearing on March 3, 2016.
We AFFIRM-IN-PART.
Appeal 2014-002811
Application 10/667,755
Claim l is illustrative:
1. A method, comprising:
receiving, by at least one processor of a computer, a first
bet at a first quote, the first bet having an associated first unit
stake, the first quote corresponding with a total number of units
that could be earned by a participant in a plurality of events;
receiving, by the at least one processor, results of each of
the plurality of events, the results comprising the positioning of
the particular participant in each of the plurality of events;
for each of the plurality of events, determining, by the at
least one processor, a number of units earned by the participant
based at least in part on the positioning of the participant in the
event and a purse distribution structure defining a distribution of
a purse over a plurality of positions in the event; and
determining, by the at least one processor, an amount of a
payout for the first bet based at least in part on the first unit stake,
the first quote, and the total number of units earned by the
participant in the plurality of events.
Appellants appeal the following rejections:
1. - Ciaims 27-30, 32, 33, 50-53, 55, and 56 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement.
2. Claims 1, 15, 24--28, 31-51, and 54--69 under 35 U.S.C. § 103(a) as
unpatentable over Downes (US 6,910,965 B2, iss. June 28, 2005), The
New York Times I and II (hereinafter "New York Times") 1, and
Friedman (US 6, 126,543, iss. Oct. 3, 2000).
1 Horse Racing; Purse May Rise for Super Derby, The N.Y. Times, June 25,
1989,
http://query.nytimes.com/qst/fullpage.html?res=950DE7D8 l F31F936Al575
5COA96F948260 (last visited May 9, 2008); Plus: Auto Racing; Winston
Cup Purse Increased by Nascar, The N.Y. Times, Jan. 29, 2003,
httn://guery.nytimes.com/gst/fullnage.html?res=9F03EOD81139F93AA 157 5
2COA9659C8B (last visited May 5, 2008).
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Appeal 2014-002811
Application 10/667,755
3. Claims 2, 16, 29, 30, 52, and 53 under 35 U.S.C. 103(a) over Downes,
The New York Times I and II, Friedman, and Official Notice.
ISSUE
Did the Examiner err in rejecting claim 27 under 35 U.S.C. § 112,
first paragraph because the Specification provides support for the recitation
in claim 27 of a third type of bet which comprises an over bet and a fourth
type of bet that comprises an under bet?
Did the Examiner err in rejecting claim 1 because Downes does not
disclose determining an amount of payout based at least in part on the total
number of units earned by a participant in a plurality of events?
ANALYSIS
Written description
The Examiner asserts that the Specification does not provide adequate
support for a third and fourth bet or for the recitation that the third and fourth
bet lock in a gain or a loss associated with at least one corresponding first
and second bet respectively of the plurality of first and second bets as recited
in independent claims 27 and 50 (Final Act. 6).
The Appellants argue that the Specification discloses this subject
matter in originally filed claim 10 and on page 6, lines 13-15 and page 11,
lines 4--25 of the disclosure (Appeal Br. 8). Originally filed claim 10 recites
that a second bet locks in a gain or a loss with the first best but does not
recite a third and fourth bet or that the third and fourth bet locks in a gain or
a loss associated with at least one corresponding first and second bet
respectively of the plurality of first and second bets. Appellants
Specification at page 6, lines 13-15 states that the system permits users to
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Appeal 2014-002811
Application 10/667,755
place one or more types of index bets on a plurality of betting events having
a plurality of event participants, but says nothing about the third and fourth
bets recited in claim 27 or about locking said bets to gains or losses of a first
and second bet. Appellants' Specification at page 11, lines 4--25 states that a
user may place an over/under index bet but does not disclose third or fourth
bets as recited in claim 2 7. As such the Appellants have not shown that they
had possession of the subject matter of claim 27 and 50 at the time of the
invention. Therefore, we sustain the rejection of independent claims 27 and
50. We will also sustain this rejection as it is directed to claims 28-30, 32,
33 which are dependent from claim 27 and claims 51, 52, 53, 55, and 56
which are dependent from claim 50.
Obviousness
The Appellants argue that the prior art does not disclose determining a
number of units based at least in part on the positioning of the participant
and the purse distribution structure over a plurality of events and totaling
these units to determine a payout (Appeal Br. 12). The Examiner admits
Downes does not disclose this subject matter but states Downes does teach
that the participant's ranking is tracked and that New York Times discloses
that it is old and well known in racing to have a purse distribution system
(Final Act. 8). The Examiner concludes that it would have been obvious to
have a purse distribution system in which the participant's placing is the
same as the amount of units earned by the participant (id.). The problem
with this finding is that the Examiner finds that the units earned is the same
as the positioning of the participants in an event and that the payout is
determined in accordance with these positions in accordance with a purse
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Appeal 2014-002811
Application 10/667,755
distribution structure (id. at 8-9). However, claim l recites that the payout
is determined by totaling the number of units earned by a participant in a
plurality of events. The Examiner has not established that the positioning of
the participants which the Examiner finds are the units earned is ever totaled
or that the result of the total is used to determine a payout.
In view of the foregoing, we will not sustain the Examiner's rejection
of claim 1 or claim 2 dependent therefrom. We will also not sustain this
rejection as it is directed to the remaining claims because each of the
remaining claims subject to this rejection require that the payout is based on
the total number of units earned.
DECISION
The Examiner's rejection under 35 U.S.C. § 112, first paragraph is
sustained. The Examiner's rejection under 35 U.S.C. § 103 is not sustained.
ORDER
AFFIRMED-IN-PART
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