11496208 (B.P.A.I. Feb. 23, 2012)

Ex Parte Moshal et al

Board of Patent Appeals and InterferencesFeb 23, 2012

11496208 (B.P.A.I. Feb. 23, 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. 11/496,208 07/31/2006 Martin Paul Moshal 06-416 4579 20306 7590 02/23/2012 MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP 300 S. WACKER DRIVE 32ND FLOOR CHICAGO, IL 60606 EXAMINER LI, WEI ART UNIT PAPER NUMBER 3718 MAIL DATE DELIVERY MODE 02/23/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte MARTIN PAUL MOSHAL, CARL GOODWIN, and GRANT SMITH ____________________ Appeal 2010-007541 Application 11/496,208 Technology Center 3700 ____________________ Before: MURRIEL E. CRAWFORD, ANTON W. FETTING, and MEREDITH C. PETRAVICK, Administrative Patent Judges. PETRAVICK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007541 Application 11/496,208 2 STATEMENT OF CASE Martin Paul Moshal et al. (Appellants) seek our review under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1-5 and 8-17. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We REVERSE.1 THE INVENTION This invention is a method of synchronizing a live dealer game between a dealer or local player at a live play area and one or more remotely-participating players. Spec. 2:5-6. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method of synchronizing a live dealer game, wherein the live dealer game has a dealer at a gaming table in a live play area that deals cards, wherein the cards have a rank and suit, and wherein at least one remote player participates in the live dealer game through an electronic gaming device in communication with a server, comprising: receiving at the server an indication of the rank and suit of a dealt card, wherein the dealt card was dealt by the dealer during the live dealer game; receiving at the server a status signal indicating a status of the dealt card, wherein 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed October 16, 2009), Reply Brief (“Reply Br.,” filed Mar. 19, 2010), and the Examiner’s Answer (“Ans.,” mailed January 21, 2010). Appeal 2010-007541 Application 11/496,208 3 transmission of the status signal to the server was substantially synchronized with the dealt card being revealed at the gaming table in the live play area; and in response to receiving the status signal at the server, transmitting data indicating the rank and suit of the dealt card to the electronic gaming device of the remote player, wherein the data indicating the rank and suit is derived from the received indication of the rank and suit of the dealt card. THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Takemoto US 5,382,940 Jan. 17, 1995 Harkham Pececnik US 2002/0094869 A1 US 2007/0060259 A1 Jul. 18, 2002 Mar. 15, 2007 The following rejections are before us for review: 1. Claims 1, 2, 4, 8-11, and 13-17 are rejected under 35 U.S.C. § 102(b) as being unpatentable over Harkham. 2. Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Harkham and Takemoto. 3. Claims 5 and 12 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Harkham and Pececnik. ISSUE The issue is whether claims 1, 2, 4, 8-11, and 13-17 are anticipated under 35 U.S.C. § 102(b) by Harkham. Specifically, the issue is whether Harkham inherently describes a step of receiving at the server a status signal Appeal 2010-007541 Application 11/496,208 4 indicating a status of the dealt card as recited in claim 1. The rejection of claim 3 under 35 U.S.C. § 103(a) as being unpatentable over Harkham and Takemoto, and the rejection of claims 5 and 12 under 35 U.S.C. § 103(a) as being unpatentable over Harkham and Pececnik, each also turn on this issue. ANALYSIS The rejection of claims 1, 2, 4, 8-11, and 13-17 under 35 U.S.C. § 102(b) as being unpatentable over Harkham The Appellants and Examiner dispute whether Harkham inherently describes claim 1’s step of receiving a status signal. See Reply Br. 5-9 and Ans. 8-12. The Examiner reasons that Harkham must be transmitting a status signal to the server to indicate that the physical card has been delivered to a player or that Harkham’s system would not function properly “since the server will not know when to transmit the card type information (i.e. rank and suit), the gaming system will result in a malfunction state since the card type information was not properly transmitted to the remote players.” Ans. 9-10. To establish inherency, the extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill…. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted) (internal quotation marks omitted). We agree with the Appellants that the claimed status signal is not necessarily present in Harkham’s system and that “it is very possible that the Appeal 2010-007541 Application 11/496,208 5 card could be scanned immediately before or after being flipped over at the table (or while being flipped), and thus scanned type information could be sent immediately to the remote play, without requiring delay, thus alleviating any need for the claimed status signal” (Reply Br. 7-8). See Reply Br. 5-9. This is consistent with Harkham’s description of scanning a code that identifies a card (i.e, the claimed indication of the rank and suit) as it is removed from the card shoe and transmitting the rank and suit information to a server. Harkham [0047]. Harkham also describes that destination of the card is immediately determined, because the number of players and dealing order is fixed. Harkham [0048]. Therefore, we are persuaded by the Appellants’ argument that the Examiner erred in rejecting claim 1 as anticipated by Harkham. Independent claims 8 and 15 each recite a limitation similar to the limitation at issue above. These claims were rejected using the same rationale as claim 1. See Ans. 3-4. Accordingly, the rejection of claims 1, 6, and 15 and claims, 2, 4, 9-11, 13, 14, 16, and 17, dependent thereon, under 35 U.S.C. § 102(b) as being anticipated by Harkham is reversed. The rejection of claim 3 under 35 U.S.C. § 103(a) as being unpatentable over Harkham and Takemoto and the rejection of claims 5 and 12 under 35 U.S.C. § 103(a) as being unpatentable over Harkham and Pececnik These rejections are directed to claims dependent on claims 1 and 8, whose rejection we have reversed above. For the same reasons, we will not sustain the rejections of claims 3, 5, and 12 over the cited prior art. We note that the Examiner did not rely upon Takemoto or Pececnik to cure the deficiency of Harkahm discussed above. Cf. In re Fritch, 972 F.2d 1260, Appeal 2010-007541 Application 11/496,208 6 1266 (Fed. Cir. 1992) ("[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious."). DECISION For the above reasons, the Examiner’s rejection of claims 1-5 and 8- 17 is reversed. 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). REVERSED mls