Gregory Piccionielli et al.Download PDFPatent Trials and Appeals BoardJul 1, 20212021000474 (P.T.A.B. Jul. 1, 2021) Copy Citation 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. 13/815,837 03/15/2013 Gregory A. Piccionielli GAP15002USU 3259 147182 7590 07/01/2021 Gregory B. Gulliver 1862 E. Belvidere Rd. Unit 117 Grayslake, IL 60030 EXAMINER PINHEIRO, JASON PAUL ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 07/01/2021 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): USPTO@dockettrak.com docketing@goapogee.com gbgulliver65@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GREGORY A. PICCIONIELLI and MICHAEL M. GERARDI Appeal 2021-000474 Application 13/815,837 Technology Center 3700 ____________ Before MICHAEL C. ASTORINO, AMEE A. SHAH, and MATTHEW S. MEYERS, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1–6 and 8–11. Claims 12–19 are withdrawn. Non-Final Act. 3. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as “Gregory A. Piccionelli and Michael M. Gerardi.” Appeal Br. 4. Appeal 2021-000474 Application 13/815,837 2 STATEMENT OF THE CASE Claimed Subject Matter The Appellant’s application “relates to systems and methods wherein a player participates in a game of chance in which the player’s location with respect to a physical location, for example a randomly selected location in an interactive walkway, determines whether the player wins the game.” Spec. 1. Claims 1, 6, and 9 are the independent claims on appeal. Claim 9, reproduced below, is illustrative of the claimed subject matter. 9. A gaming method comprising the steps of: i) providing a gaming system comprising: a) a walkway comprising 1) a plurality of walkway segments, each of the walkway segments of the plurality of walkway segments being associated with 1) A) a plurality of signal generators, with each signal generator associated with at least one of the plurality of walkway segments, B) a physical location, and C) an identifying indicium, and 2) at least one receiver in communication with the at least one signal generator, the at least one receiver being adapted to receive a transmission and activate at least one of the signal generators upon receipt of the transmission for a predetermined period, b) an at least one transmitter adapted to communicate with the at least one receiver, and c) at least one controller in a telecommunication device adapted to communicate with the at least one transmitter and with at least one player, and Appeal 2021-000474 Application 13/815,837 3 to select an identifying indicium from a set of at least one identifying indicium associated with the at least one walkway segment, ii) providing by the controller an invitation to at least one player to participate in a game making use of the gaming system, the game comprising at least one round, each of the at least one round having a duration, iii) selecting by the controller an identifying indicium corresponding to a walkway segment and associating the selected identifying indicium with at least one of said at least one round, iv) determining whether at least one player is within a preselected distance from the at least one walkway segment to which the selected at least one identifying indicium corresponds during at least one time within the duration of the round associated with the selected identifying indicium, and v) alerting the at least one player that the player has been determined to have been within the preselected distance from the at least one walkway segment during the duration of the at least one round associated with the selected identifying indicium by activating at least one of said at least one signal generators. Appeal Br., Claims App. References The prior art relied upon by the Examiner is: Name Reference Date Hale et al. (“Hale”) US 2003/0104824 A1 June 5, 2003 Schneier et al. (“Schneier”) US 2006/0093142 A1 May 4, 2006 Mattila US 2007/0021166 A1 Jan. 25, 2007 Nguyen et al. (“Nguyen”) US 2007/0167225 A1 July 19, 2007 Ackley et al. (“Ackley”) US 2008/0039204 A1 Feb. 14, 2008 Assaad et al. (“Assaad”) US 2008/0045284 A1 Feb. 21, 2008 Appeal 2021-000474 Application 13/815,837 4 Rejections Claims 1–5 are rejected under pre-AIA 35 U.S.C. § 102(e) as anticipated by Mattila. Claim 6 is rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Hale and Nguyen. Claim 8 is rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Hale, Nguyen, and Ackley. Claim 9 is rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Mattila and Assaad. Claims 10 and 11 are rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Mattila, Assaad, and Schneier. ANALYSIS The Rejection of Claims 1–5 as Anticipated by Mattila The Appellant argues that the Examiner’s rejection of independent claim 1 as anticipated by Mattila is improper. Appeal Br. 12. Specifically, the Appellant argues that the Examiner’s finding that Mattila discloses step ii of claim 1, i.e., “defining physical coordinates of a game space, prior to determining the position of the telecommunication device,” is improper. Appeal Br. 12 (emphasis added). The Appellant points out the Examiner’s finding that Mattila teaches “defining physical coordinates of a game space” relies on in-game mapping. Appeal Br. 12–13 (citing Mattila ¶ 41). Indeed, the Examiner’s finding as to step ii of claim 1 is particular to Mattila’s disclosure of in-game mapping. See Non-Final Act. 3–4 (citing Mattila ¶ 43); Ans. 13–16. Appeal 2021-000474 Application 13/815,837 5 The Appellant also points out that Mattila’s method always begins with defining a starting position. Appeal Br. 12–13. The Examiner, however, does not appear to agree. See Ans. 15–16. In this case, it appears that the Examiner fails to appreciate Mattila’s disclosure as to the start of the game; i.e., “the player is mapped first into the story line. As always in the beginning of the game the player location in the story line is the story’s starting point” (Mattila ¶ 36). Accordingly, we understand the starting position of Mattila’s game to be a defined physical coordinate of a game space. The Examiner fails to explain, on this record, how the starting position of Mattila’s game does not define a physical coordinate of game space. Accordingly, the Examiner’s rejection must support a finding that the step of “defining physical coordinates of a game space,” which includes the mapping at the beginning of the game and during the game, is “prior to determining the position of the telecommunication device.” In other words, the Examiner must explain how the determination of the position of the telecommunication device occurs prior to defining physical coordinates of a game space. In this case, the Examiner’s rejection does not account for the time period between mapping the starting point and the in-game mapping as it relates to the determination of the position of the telecommunication device. In other words, the Examiner fails to explain how Mattila’s method does not determine a position of the telecommunication device prior to defining physical coordinates of the in-game mapping, as required by the claim. At best, the Examiner finds that “[t]here is no teaching or suggestion in Mattila that the position of the mobile gaming device must always be available Appeal 2021-000474 Application 13/815,837 6 before the defining of the physical coordinates of a game space.” Ans. 16. Therefore, we determine that the Examiner’s finding that Mattila discloses “defining physical coordinates of a game space, prior to determining the position of the telecommunication device” is inadequately supported. Thus, we do not sustain the Examiner’s rejection of independent claim 1 and claims 2–5, which depend therefrom, as anticipated by Mattila. The Rejection of Claim 6 as Unpatentable over Hale and Nguyen The Appellant argues that the Examiner’s rejection of independent claim 6 as unpatentable over the teachings of Hale and Nguyen is improper. See Appeal Br. 13. Specifically, the Appellant argues that the Examiner’s finding that Hale teaches an interactive walkway comprising “an at least one receiver in communication with at least one of the signal generators for a predetermined amount of time, the at least one receiver being adapted to receive a transmission and activate at least one of the signal generators upon receipt of the transmission,” is improper. See Appeal Br. 13; see also Appeal Br. 9; Spec. 17 (“Turning to FIG. 7c, controller 60 communicates with receiver 16a of interactive walkway segment 42a, which in turn activates signal generator 14a, for example a light embedded within interactive walkway segment 42a.”). In support of this argument, the Appellant points out that claim 6 requires that a “transmission must be received by the walkway and a signal generator is activated in response to the transmission.” Appeal Br. 13. The Appellant’s argument is persuasive. The Examiner’s finding as to the disputed recitation of claim 6 is particular to Hale’s teachings. See Non-Final Act. 6–7 (citing Hale ¶¶ 15, 22, 37); Ans. 16–17. The Examiner’s citations to Hale are directed to the Appeal 2021-000474 Application 13/815,837 7 receiver in Hale’s portable device 14, which receives a signal from transmitter 10 at static location 12. See Hale ¶ 37, Fig. 1. Accordingly, the Examiner finds that a receiver in portable device 14 corresponds to the claimed “at least one receiver.” However, the Examiner fails to explain, and we fail to understand, how the receiver in Hale’s portable device 14 corresponds to the claimed “receiver,” which is a part of an “interactive walkway.” See Appeal Br., Claims App. Further, the Examiner fails to rely on Nguyen in any manner that would remedy the deficiency in the Examiner’s rejection as discussed above. Thus, we do not sustain the Examiner’s rejection of independent claim 6 as unpatentable over Hale and Nguyen. The Rejection of Claim 8 as Unpatentable over Hale, Nguyen, and Ackley The Examiner’s rejection of claim 8 relies on the findings from the rejection of independent claim 6. Non-Final Act. 8–9. The Examiner fails to rely on Ackley’s teachings in any manner that would remedy the deficiency in the Examiner’s rejection as discussed above. Thus, we do not sustain the Examiner’s rejection of dependent claim 8 as unpatentable over Hale, Nguyen, and Ackley. The Rejection of Claim 9 as Unpatentable over Mattila and Assaad The Appellant argues that the Examiner’s rejection of independent claim 9 as unpatentable over the teachings of Mattila and Assad is improper. Appeal Br. 14–15. In support of this argument, the Appellant recites two limitations from claim 9; namely “at least one controller in a telecommunication device adapted to communicate with the at least one transmitter and with at least Appeal 2021-000474 Application 13/815,837 8 one player, and to select an identifying indicium from a set of at least one identifying indicium associated with the at least one walkway segment . . .” and “providing by the controller an invitation to at least one player to participate in a game making use of the gaming system, the game comprising at least one round, each of the at least one round having a duration . . . .” Appeal Br. 14–15. The Appellant then submits that “a location requirement must be met in order for an invitation to be sent.” Appeal Br. 15. The Appellant’s submission does not assert error in the Examiner’s rejection. Rather, the submission only provides the Appellant’s position on what the claim requires. Later, the Appellant submits, “[f]urthermore, as previously described, the Mattila et al. publication fails to teach prior defined walkway with segments as the starting point. In Mattila et al., the path is defined during the game operation by a user of the game.” Appeal Br. 15. This later submission also does not explain error in the Examiner’s rejection. It is merely the Appellant’s position of what Mattila does and does not teach. And, in this case, that which Mattila does and does not teach is not reflective of an argument. The only contention that supports the Appellant’s argument stems from the following excerpt from the Appeal Brief: The Assaad et al. publication at paragraph [0037] describes and teaches sending a text message for playing another round. The player has already played the game and is being asked to participate in an elimination round. Thus, they have already played one round before the question is asked. The Assaad et al. teaching, when combined with the Mattila et al. teachings, fail to describe Applicants’ claim limitations. Appeal Br. 15. The Appellant’s contention appears to be directed to the claim limitation “providing by the controller an invitation to at least one player to participate in a game making use of the gaming system,” as recited Appeal 2021-000474 Application 13/815,837 9 in claim 9. The Appellant’s contention is not persuasive at least because it does not respond to the entirety of Assaad’s paragraph 37, which describes with italics added: Entrants who enter a selection for a female contestant may be transmitted a text message asking them if they wish to participate in the elimination round. In addition, after registering online, the contest sponsor, via the game server 30, may send periodic text messages to participants’ registered mobile numbers informing them of, and giving them, the option to participate in the first round, elimination round, as well as other games, contests, and promotions. A player may opt out at any time by sending the appropriate text message (e.g., a particular number or “opt-out”) to the server 30 or a specific phone number. Here, Assaad teaches more than just an example asking a player to participate in an elimination round. It includes a teaching of a server sending text messages to a participants’ registered mobile number information to participate in a first round as well as other games and contests. The Examiner’s rejection of the disputed claim recitation is based on Assaad’s teaching in paragraph 37, and not just an example within paragraph 37 (i.e., an elimination round). See Non-Final Act. 11; Ans. 18. So, even if we were to agree with the Appellant that “providing by the controller an invitation to at least one player to participate in a game making use of the gaming system” does not read on providing information to a participant by use of a mobile number to continue playing a game by inviting the participate in an elimination round, the Appellant fails to address how “providing by the controller an invitation to at least one player to participate in a game making use of the gaming system” does not read on providing information to a participant by use of a mobile number to play a first round Appeal 2021-000474 Application 13/815,837 10 of a game or another game or contest. Further, we find that the Examiner’s finding that Assaad’s teaching in paragraph 37 –– and specifically, providing information to a participant by use of a mobile number to play a first round of a game or another game or contest –– corresponds to “providing by the controller an invitation to at least one player to participate in a game making use of the gaming system,” as recited in claim 9, is adequately supported. Thus, we sustain the Examiner’s rejection of independent claim 9 as unpatentable over Mattila and Assaad. The Rejection of Claims 10 and 11 as Unpatentable over Mattila, Assaad, and Schneier The Appellant provides a separate heading, but not a separate argument for the Examiner’s rejection of claims 10 and 11, which depend from claim 9. See Appeal Br. 15, Claims App. Thus, we sustain the Examiner’s rejection of claims 10 and 11 as unpatentable over Mattila, Assaad, and Schneier. CONCLUSION The Examiner’s rejections of claims 1–6 and 8 are reversed. The Examiner’s rejections of claims 9–11 are affirmed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5 102(e) Mattila 1–5 6 103(a) Hale, Nguyen 6 8 103(a) Hale, Nguyen, Ackley 8 9 103(a) Mattila, Assaad, 9 Appeal 2021-000474 Application 13/815,837 11 Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 10, 11 103(a) Mattila, Assaad, Schneier 10, 11 Overall Outcome 9–11 1–6, 8 TIME PERIOD FOR RESPONSE 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 IN PART Copy with citationCopy as parenthetical citation