Ex Parte 7690991 et al

Patent Trial and Appeal Board

Jun 16, 2014

95000561 (P.T.A.B. Jun. 16, 2014)

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.
95/000,561 10/26/2010 7690991 1637.1001REX 9980
21171 7590 06/17/2014
STAAS & HALSEY LLP
SUITE 700
1201 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
BONSHOCK, DENNIS G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/17/2014 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 PATENT TRIAL AND APPEAL BOARD
____________________

GLOBAL BETTING EXCHANGE
Third Party Requestor, Respondent

v.

THE SPORTING EXCHANGE, LTD.
Patent Owner, Appellant
____________________

Appeal 2013-009036
Inter partes Reexamination 95/000,561
US Patent 7,690,991 B2
Technology Center 3900
____________________

Before HOWARD B. BLANKENSHIP, MEREDITH C. PETRAVICK, and
WILLIAM V. SAINDON, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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STATEMENT OF THE CASE
The Sporting Exchange, LTD. (Appellant and Patent Owner) has filed a
request for rehearing under 37 C.F.R. § 41.79(a) (“Req.”), received January 8,
2014, in response to our Decision mailed December 9, 2013 (“Decision” or
“Dec.”). Patent Owner requests rehearing of our Decision sustaining the
Examiner’s rejections of claims 1-7, 12-26, and 31-35 of US 7,690,991 B2 (“the
’991 patent”) under 35 U.S.C. § 103.
Third Party Requestor (alt., “TPR”) filed comments in opposition to Patent
Owner’s request under 37 C.F.R. § 41.79(c) (“TPR Opp’n”) on February 10, 2014.
Third Party Requestor argues the Board’s conclusion regarding obviousness was
correct. See TPR Opp’n 2-5 (providing an overview of the Board’s decision and
arguing why it was correct).
We have considered Patent Owner’s request for rehearing and Third Party
Requestor’s opposition. We do not modify our decision.

ISSUES RAISED ON REQUEST FOR REHEARING
1. Did the Board misapprehend the “aggregation” feature of the claims?
2. Did the Board misapprehend the teachings of the cited references?
3. Did the Board misapprehend or overlook the secondary evidence of non-
obviousness?
4. Did the Board overlook the proper grouping of the claims?

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OPINION
ISSUE 1 – “Aggregation”
Patent Owner argues that the Board misapprehended the “aggregation”
feature of the claims. Req. 2-7. Patent Owner takes issue with the Board’s
construction and offers–for the first time–its own construction for the term
“aggregation.” Req. 6.
In the Decision, the Board reviewed the specification and found that the
“‘aggregation’ feature” of the claims means that “as necessary, an individual’s bet
may be filled by more than one other bettor or may be used with one or more other
bettors to fill another bet.” Dec. 51; see also TPR Opp’n 2, 6-7 (discussing the
Board’s construction, in view of the specification and the prior art).
Patent Owner argues that the Board’s interpretation is inconsistent with the
specification. Specifically, Patent Owner argues that the Board confused
“aggregation” with post-aggregation “fulfillment.” Req. 3-6. However, the Board
never stated that aggregation requires fulfillment. Instead, the Board merely stated
that aggregation allows bets to be filled in a particular fashion. To wit, the Board
stated that, with “aggregation,” “an individual’s bet may be filled by more than one
other bettor . . . .” Dec. 5 (emphasis added). For an individual’s bet to be filled by
a plurality of other bettors, the plurality’s bets must be added together. Thus, the
Board accounted for the distinction between aggregation (summing like bets) and
fulfillment (executing the bets). See also TPR Opp’n 6-7 (explaining why the
Board’s construction was correct).

1 We note that, by stating that the “aggregation feature . . . means that,” an example
of the scope of the term is provided. Dec. 5. We do not consider “aggregation” to
be limited to the one-to-many example we discuss in this decision on rehearing.
Accord id. (“‘aggregation’-type bets include one-to-many as well as many-to-many
relationships”).
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Patent Owner further argues that the Board’s interpretation of “aggregation”
relied on the wrong sections of the specification. Req. 3. The specification does
not provide any explicit definition for “aggregation.” Thus, the Board relied on the
various examples from the specification to interpret “aggregation,” including the
example at column 7, lines 39-47. Patent Owner argues that this portion of the
specification relates to post-aggregation fulfillment, and not to aggregation.
However, this paragraph describes the concomitant processes of aggregation and
fulfillment. Specifically, the paragraph gives an example where Alex and
Belinda’s bets are added together, then fulfilled to execute the bet. See also TPR
Opp’n 7 (further discussing this example). Patent Owner argues that the Board
should have looked instead to Figure 3, which is a screenshot displaying
aggregated sizes of available bets. Req. 5. But Figure 3 does nothing to explain
any further the process of aggregation; it is merely a screenshot.
In addition, for the first time, Patent Owner proposes a construction for
“aggregation.” Req. 6; see also TPR Opp’n (characterizing Patent Owner’s claim
construction as “NEW” in the section II title). Patent Owner did not propose a
claim construction for “aggregation” in either its Appeal Brief or Rebuttal Brief.
Patent Owner offers no explanation as to why it has not previously offered this
construction. A request for rehearing must state the points believed to have been
misapprehended or overlooked in a Board’s decision. See 37 C.F.R. § 41.79(b)(1).
The Board could not have misapprehended or overlooked an argument that was not
raised on appeal, and arguments not raised in the briefs before the Board and
evidence not previously relied upon in the briefs are not permitted in the request
for rehearing. See id.; see also In re Avid Identification Systems, Inc., 504 Fed.
Appx. 885, 891 (Fed. Cir. 2013) (nonprecedential) (Board properly refused to
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consider arguments first raised in the request for rehearing). Thus, Patent Owner
has waived this argument.
Furthermore, Patent Owner’s proposed construction, even if it had been
proposed at a stage during which it could have been properly considered by the
Examiner or the Board, is not commensurate with the broadest reasonable
interpretation. Patent Owner proposes that “aggregation” means “‘aggregation’ of
bets at the same price . . . to provide an aggregated size . . . available at said same
price.” Req. 6 (emphasis removed). This proposed construction is circular and
does not serve to meaningfully construe the claim. See also TPR Opp’n 7 (“Patent
Owner’s [proposed construction] provides no insight into the meaning of the term
‘aggregation.’”); id. at 6-7 (providing an additional reason that Patent Owner’s
proposed construction is improper: it renders a portion of claim 1 superfluous).
Lastly, to the extent Patent Owner is suggesting that the Board’s
interpretation of the “aggregation” feature does not consider price (e.g., odds), we
note that is not the case. In particular, the Board considered aggregation to be for
the purpose of filling bets. See Dec. 5 (“‘aggregation’ . . . means that . . . [a] bet
may be filled . . . .”). A bet is an amount at an odds. See, e.g., ’991 patent 7:41-46
(“Alex submits a bet to lay Arsenal for £50 at a price of 2”). Thus, contemplation
of the amount and the odds of a bet is required to allow filling of the bet, or it
could not be filled.
In view of the above, we are not persuaded that the Board misapprehended
the “aggregation” feature of the claims.

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ISSUE 2 – Teachings of the References
Patent Owner next argues that by misapprehending the “aggregation”
feature, the Board misapprehended the teachings of the cited references. Req. 7-9;
cf. TPR Opp’n 2-5 (agreeing with the Board’s interpretation of the teachings of the
cited references). However, this argument is unpersuasive because the Board did
not misapprehend the “aggregation” feature, for the reasons explained above.
Moreover, Patent Owner misapprehends the grounds of rejection. As stated
in the Decision, “Silverman is used to teach all of the bidding, matching, and
aggregation features of the claims . . . .” Dec. 9. The Examiner did not rely on
Lavnick for a teaching of aggregation, as was made clear in the Decision:
the rejection here does not rely on any teaching in Lavnick of
aggregation. Instead, the rejection relies on Silverman to teach
aggregation.
Dec. 11. Likewise, the Examiner relied on Silverman, not WagerNet, to teach
aggregation. Id. at 9. Accordingly, while the Board made a finding that one of
ordinary skill in the art would have understood Lavnick and WagerNet to disclose
aggregation of bets (Dec. 7-8), the Board made clear that the Examiner’s rejections
relied on Silverman to teach “aggregation.” Dec. 11; see also TPR Opp’n 3-5
(explaining how the Board relied on Silverman, not Lavnick or WagerNet, to teach
aggregation).
The Board’s consideration of Lavnick and WagerNet’s disclosure of
aggregation of bets was as one relevant factor in its analysis of secondary
considerations and in resolving the level of ordinary skill in the art. Dec. at n. 8
and 15-17. The Board’s findings on this matter are explained in detail on pages 6
to 8 of the Decision. Patent Owner’s arguments against these findings rely on an
attempt to impose its own precision in word choice with respect to the terms
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“fulfillment” and “matching” on WagerNet and Lavnick. See Req. 9. However,
the important consideration is what the prior art discloses, rather than which
particular words the prior art uses. See In re Neugebauer, 330 F. 2d 353, 356
(CCPA 1964) (“The claims as a whole must be analyzed in light of the disclosure
to see if the article defined thereby is distinguishable in fact, vis-à-vis in verbis,
over the prior art.” 2); In re Bode, 550 F.2d 656, 660 (CCPA 1977) (A reference
need not teach a limitation in haec verba).
With respect to WagerNet, the Board found that “your” bets are “matche[d]”
with “[a] bettor or bettors.” Dec. 8. Regardless of the words chosen by the author
of the WagerNet article, this discloses the bets of two individuals (the opposing
“bettors”), paired together in order to allow execution of a bet with another
individual (“your bet”). Id.; see also id. at 16 (describing this as a “one-to-many”-
type aggregation). This is an “aggregation,” as claimed and as the term is used in
the ’991 specification. See Dec. 5.
With respect to Lavnick, the Board found that Lavnick discloses that
WagerNet is “[s]imilar to NASDAQ,” which in turn would have been understood
by one of ordinary skill in the art at the time of invention to mean that WagerNet
performs aggregation. Dec. 6-7 (citing the “Betting Exchanges Oust the Bookies”
article, provided by Patent Owner, which recognizes the link between stock
exchanges and aggregated bets: “aggregate bets . . . create stock exchange-style
pools of liquidity”).

2 Id. at n. 4, “This principle, of general legal application, is immortalized in Latin:
In verbis, non verba, sed res et ratio, quaerenda est. (In the construction of words,
not the mere words, but the thing and the meaning, are to be inquired after.)”.

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Accordingly, the Board’s findings that Lavnick and WagerNet disclose bet
aggregation are supported by the evidence of record. See also TPR Opp’n 3
(discussing and agreeing with the Board’s findings with respect to Lavnick and
WagerNet’s disclosure of aggregation). As such, Patent Owner has not persuaded
us that the Board misapprehended the teachings of the references.

ISSUE 3 – Secondary Considerations
Patent Owner next argues that by misapprehending the “aggregation”
feature, the Board misapprehended and overlooked the secondary evidence of non-
obviousness. Req. 10-15. However, this argument is unpersuasive because the
Board did not misapprehend the “aggregation” feature, for the reasons explained
above. Moreover, the Board considered and addressed the secondary evidence of
non-obviousness at length. See Dec. 15-22; see also TPR Opp’n 4-5 (discussing
and agreeing with the Board’s secondary considerations analysis); id. at 7-8
(pointing out that Patent Owner has “failed to contest nearly all of [the Board’s]
findings with respect to secondary considerations).

ISSUE 4 – Claim Grouping
Patent Owner next argues that by misapprehending the “aggregation”
feature, the Board overlooked the different groupings of claims. Req. 15. This
argument is unpersuasive because the Board did not misapprehend the
“aggregation” feature, for the reasons explained above.
More specifically, Patent Owner argues that claim 1 recites features not
found in the other independent claims. Req. 15. However, the Board specifically
addressed claim 1 in its decision. Dec. 10 (“We select claim 1 and 3 as
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representative of their groups”). As explained in the Decision, Patent Owner did
not present separate arguments for claims 1 and 3, which were subject to the same
rejections. Id.; see also App. Br. PO 26 (stating Patent Owner would not
separately argue claim 3 because it is broader than claim 1). Thus, it was proper to
consider the resolution of the issues for claim 1 as controlling the resolution of the
issues for claim 3.3 Therefore, we are not persuaded that the Board erred in the
manner in which it grouped the claims.

CONCLUSION
Patent Owner’s Request is granted to the extent that we have reconsidered
the Decision in light of the arguments in Patent Owner’s Request. Patent Owner’s
Request is denied to the extent that we do not modify the outcome of the Decision.
This is a final decision. Parties to the proceeding seeking judicial review of
the decision must comply with the notice and service requirements of 37 C.F.R.
§ 90.2.
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).

DENIED

peb

3 We note that the Decision inadvertently referred to the groupings of claims as
“independent” and “dependent” groups instead of merely first and second groups,
respectively. Dec. 10; see also TPR Opp’n n.1 (noting that the Board mislabeled
claims 1 and 3 but that “[t]he Board correctly found . . . that there were no separate
arguments presented for [the second group] and its findings apply to all equally”).
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For PATENT OWNER:

STAAS & HALSEY LLP
Suite 700
1201 New York Avenue, N.W.
Washington, DC 20005

For THIRD PARTY REQUESTOR:

JAMES T WILSON
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
901 New York Avenue, N.W.
Washington, DC 20001-4413