Gregory Piccionielli et al.

Patent Trials and Appeals Board

Jul 1, 2021

2021000474 (P.T.A.B. Jul. 1, 2021)

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
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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withdrawn.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.
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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
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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

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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.
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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
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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
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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
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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
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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
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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
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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