Ex Parte Frenkel

Patent Trial and Appeal Board

Mar 27, 2013

11183247 (P.T.A.B. Mar. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BRIAN FRENKEL
____________________

Appeal 2010-012170
Application 11/183,247
Technology Center 3700
____________________

Before MICHAEL C. ASTORINO, HYUN J. JUNG, and
BART A. GERSTENBLITH, Administrative Patent Judges.

JUNG, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/183,247

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STATEMENT OF THE CASE
Brian Frenkel (Appellant) appeals under 35 U.S.C. § 134 from a
rejection of claims 1-23, 25-38, and 40-51. App. Br. 2-3. Claims 24 and 39
are canceled. App. Br., Claims App’x. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

THE CLAIMED SUBJECT MATTER
The claims relate to systems and methods for providing interactive
gaming among a plurality of players. Spec. ¶ [0001]. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A system for interactive gaming among a
plurality of players, comprising:
a host computer system; and
a plurality of player terminals communicably
coupled to the host computer system via a network;
wherein the plurality of player terminals are
located at a plurality of licensed gaming locations;
and
wherein the plurality of player terminals are
configured to engage the plurality of players in a
common interactive card game operated by the
host computer system, wherein each of the
plurality of players receives a hand, wherein the
players act on their hands in turn during the course
of the game, and wherein the plurality of player
terminals comprise means for dispensing player
winnings from the player terminal.

THE REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
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Vuong
Karmarkar
US 5,762,552
US 6,508,709 B1
Jun. 9, 1998
Jan. 21, 2003
Walker
Moody
Crawford '304
Crawford '103
US 2001/0004609 A1
US 2002/0169015 A1
US 2005/0090304 A1
US 2006/0287103 A1
Jun. 21, 2001
Nov. 14, 2002
Apr. 28, 2005
Dec. 21, 2006

THE REJECTIONS
Appellant seeks our review of the following rejections:
Claims 1, 2, 4-7, and 49 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Crawford '103.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Crawford '103 and Vuong.
Claims 8-14 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Crawford '103 and Moody.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Crawford '103 and Crawford '304.
Claims 16-23, 34-38, 48, and 51 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Vuong and Crawford '103.
Claims 25-31 and 40-46 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Vuong, Crawford '103, and Moody.
Claims 32 and 47 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Vuong, Crawford '103, and Crawford '304.
Claim 33 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Vuong, Crawford '103, Crawford '304, and Karmarkar.
Claim 50 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Crawford '103 and Walker.

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ANALYSIS
The Examiner finds that Crawford '103 discloses the subject matter of
claims 1, 2, 4-7, and 49. Ans. 4-6. The Examiner also makes findings of
fact and thereafter concludes that the subject matter of claims 3, 8-23, 25-38,
40-48, 50, and 51 would have been obvious to one having ordinary skill in
the art at the time the invention was made in view of the teachings of
Crawford '103 and at least one of Vuong, Moody, Crawford '304,
Karmarkar, and Walker. Id. at 7-18.
Appellant does not contest the findings of fact made by the Examiner
as to the scope and content of the prior art; the differences, if any, between
the prior art and the claimed invention; or the level of ordinary skill in the
art, and does not contest the Examiner’s conclusions of anticipation and
obviousness of the claimed subject matter. App. Br., passim; Reply Br.,
passim. Thus, Appellant provides no arguments contesting the substance of
the Examiner’s underlying findings as to the prior art and ultimate
conclusions of anticipation and obviousness of the subject matter of claims
1-23, 25-38, and 40-51.
Instead, Appellant limits his challenge of the Examiner’s adverse
decision to an attempt to swear behind and thus remove Crawford '103,
relied upon by the Examiner in all the rejections. App. Br. 7-17; Reply Br.
1-5. Appellant contends that Declarations pursuant to 37 C.F.R. § 1.131 by
the inventor Brian Frenkel (Frenkel Declaration) and two attorneys of record
for the application, William F. Vobach (Vobach Declaration), and Irvin E.
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(Gene) Branch (Branch Declaration)1 filed on December 10, 2008, are
sufficient to eliminate the eligibility of Crawford '103 as prior art by
establishing an earlier date of conception with continuous diligence of the
subject matter disclosed and claimed. App. Br. 9-10. The Frankel
Declaration avers that the inventor met with Mr. William F. Vobach prior to
May 23, 2005, to explain the invention and then met again with Mr. Vobach
and Mr. Gene Branch prior to May 23, 2005, to discuss search results and
the invention in greater detail. Frankel Decl. ¶¶ 5, 7; see also Vobach Decl.
¶¶ 4-6; Branch Decl. ¶ 4. The Examiner states that the Declarations were
reviewed and considered. Final Office Action 14 (mailed Jul. 14, 2009);
Ans. 19. However, the Examiner finds that the Declarations “may disclose
the overall general description of the invention, however, the declarations
fails [sic] to disclose ALL of the claimed limitations.”2 Final Office
Action 15.

1 We note that William F. Vobach and Irvin E. (Gene) Branch also made
declarations pursuant to 37 C.F.R. § 1.131. However, 37 C.F.R. § 1.131(a)
states that
the inventor of the subject matter of the rejected claim, the
owner of the patent under reexamination, or the party qualified
under §§ 1.42, 1.43, or 1.47, may submit an appropriate oath or
declaration to establish invention of the subject matter of the
rejected claim prior to the effective date of the reference or
activity on which the rejection is based.
Thus, we consider the declarations by William F. Vobach and Irvin E.
(Gene) Branch as evidence for supporting the declaration by the inventor of
the subject matter of the rejected claims, Brian Frenkel. Ex Parte Ovshinsky,
10 USPQ2d 1075, 1077 (BPAI 1989).
2 The Examiner notes that,
[f]or example, the declarations do not disclose the limitation
according to claim 1, each of the plurality of players receives a
hand, wherein the players act on their hands in turn during the
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Appellant contends that each and every limitation of the claims is
disclosed within the Declarations and that any claim limitation not expressly
recited within the Declarations would have been obvious to one of ordinary
skill in light of the Declarations. App. Br. 10-11. The Examiner responds
that the Declarations are ineffective in overcoming Crawford '103 and notes
that the earliest filing date of Crawford '103 is May 23, 2005, which is
before the filing date of the subject application. Ans. 19. The Examiner
states that the interviews described in the Declarations do not provide
sufficient evidence to disqualify Crawford '103. Id. In particular, the
Examiner finds that the Declarations do not provide enough evidence of
conception before actual reduction to practice before May 23, 2005, and
does not provide evidence of diligence between the time of the meeting and
reduction to practice. Id. at 19-20. The Examiner also finds that the
Declarations fail to disclose all of the claimed limitations with evidence of
diligence to reduction to practice before May 23, 2005. Id. at 20.

course of the game; another example, claim 6, wherein one or
more of the plurality of player terminals includes means for
receiving a user input to view hole cards dealt to the user in the
course of the interactive game, wherein the hole cards are
otherwise not viewable at the terminal; another example claim
17, from the host computer system, sending signals relating to
the state of the game to the player terminals; at a host computer
system iteratively receiving signal from the player terminals
wherein the signal indicate player actions in the game; another
example claim 29, wherein at least one of the one or more
jackpots comprises a bad bet jackpot for having a hand with a
value at or above a specific value beaten by a hand whit [sic] a
value at or above a different specific value.
Final Office Action 14-15.
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Appellant replies that the Examiner raises for the first time the
question of diligence. Reply Br. 2. Appellant argues that the Examiner has
not apparently considered the statements made in the Declarations and looks
only to the supporting documents, such as an email and search request. Id.
Appellant argues that conception and diligence have been demonstrated by
facts. Reply Br. 3-4.
37 C.F.R. § 1.131 provides (emphasis added):
(a) When any claim of an application or a patent under
reexamination is rejected, the inventor of the subject matter of
the rejected claim, the owner of the patent under reexamination,
or the party qualified under §§ 1.42, 1.43, or 1.47, may submit
an appropriate oath or declaration to establish invention of the
subject matter of the rejected claim prior to the effective date of
the reference or activity on which the rejection is based. The
effective date of a U.S. patent, U.S. patent application
publication, or international application publication under PCT
Article 21(2) is the earlier of its publication date or date that it
is effective as a reference under 35 U.S.C. 102(e). Prior
invention may not be established under this section in any
country other than the United States, a NAFTA country, or a
WTO member country. Prior invention may not be established
under this section before December 8, 1993, in a NAFTA
country other than the United States, or before January 1, 1996,
in a WTO member country other than a NAFTA country. Prior
invention may not be established under this section if either:
(1) The rejection is based upon a U.S. patent or U.S.
patent application publication of a pending or patented
application to another or others which claims the same
patentable invention as defined in § 41.203(a) of this title, in
which case an applicant may suggest an interference pursuant to
§ 41.202(a) of this title; or
(2) The rejection is based upon a statutory bar.
(b) The showing of facts shall be such, in character and
weight, as to establish reduction to practice prior to the
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effective date of the reference, or conception of the invention
prior to the effective date of the reference coupled with due
diligence from prior to said date to a subsequent reduction
to practice or to the filing of the application. Original
exhibits of drawings or records, or photocopies thereof, must
accompany and form part of the affidavit or declaration or their
absence must be satisfactorily explained.
Appellant does not contest that the effective date of Crawford '103 as
prior art under 35 U.S.C. § 102(e) is May 23, 2005. See App. Br. 10; Reply
Br. 3-4. Appellant asserts that the Frenkel Declaration establishes that the
claimed subject matter was conceived prior to the effective date. In
particular, the Frenkel Declaration states that the declarant explained the
invention and discussed various features prior to May 23, 2005. Frenkel
Decl. ¶ 5. At a later date but still prior to May 23, 2005, the Frenkel
Declaration states that the declarant discussed the invention in greater detail.
Id. at ¶ 7. Even accepting Appellant’s argument that the Frenkel Declaration
is sufficient to establish that conception of the invention occurred prior to
May 23, 2005, 37 C.F.R. § 1.131 requires that the showing of facts be such,
in character and weight, as to establish conception of the invention prior to
the effective date of the reference coupled with due diligence from prior to
said date to a subsequent reduction to practice or to the filing of the
application. We cannot find, nor does Appellant point to, evidence of any
actual reduction to practice in the Declarations, and thus, Appellant’s
showing of facts must establish due diligence from prior to May 23, 2005, to
July 14, 2005, the filing date of the application.
To satisfy the due diligence showing requirement of 37 C.F.R.
§ 1.131, Appellant must present proof of diligence, no matter how short the
period to be covered. In re Mulder, 716 F.2d 1542, 1545 (Fed. Cir. 1983)
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(noting that focusing on the shortness of the period to be covered—two
days—is misleading where there is no evidence of record showing
diligence). Moreover, to establish diligence, the inventor must provide
specific details as to what was done and when it was done during the critical
period. See Gould v. Schawlow, 363 F.2d 908, 918 (CCPA 1966).
The Frenkel Declaration fails to provide an explanation of Appellant’s
activities with regard to the invention set forth in the claims to support
Appellant’s assertion of diligence. The Frenkel Declaration states that “I
decided to proceed with filing a patent application” prior to May 23, 2005.
Frenkel Decl. ¶ 7. The Frenkel Declaration also states that “Exhibit 1 of this
declaration includes an email sent to me by Mr. Branch on May 25, 2005”
and that the “email includes a document having draft claims and figures.”
Frenkel Decl. ¶ 8. The statements “I provided Mr. Branch comments on the
draft claims and figures on May 31, 2005,” and “[o]n July 8, 2005, Mr.
Branch sent me a complete draft of the patent application, which I reviewed
and provided comments on July 13, 2005” fail to indicate on which days
during the periods between May 25, 2005, and May 31, 2005, and between
July 8, 2005, and July 13, 2005, the declarant reviewed the drafts provided
by Mr. Branch or whether the declarant spent the entirety of the time periods
noted reviewing the drafts.3 Frenkel Decl. ¶¶ 8-10; see also Reply Br. 4.
Moreover, the statement on page 5 of the Reply Brief that the “Inventor was
thoughtfully and diligently engaging in the process of constructively

3 The issue here is not whether we consider two periods of five days
unreasonable periods of time in which to review drafts of a patent
application. Rather, the issue is whether Appellant has put forth “facts . . . in
character and weight, as to establish . . . due diligence” under 37 C.F.R.
§ 1.131.
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reducing his invention to practice on the effective date of Crawford '103, and
he continued that process right up to the filing of the application” also fails
to indicate actions taken by the declarant and the dates when those actions
were taken, and being unsworn and not in declaration form, can be taken
merely as argument and not to establish facts. See In re Mehta, 347 F.2d
859, 866 (CCPA 1965).4
Also, the Vobach and Branch Declarations fail to provide evidence
sufficient to establish reasonable diligence in preparing the patent
application. To establish diligence for constructive reduction to practice, the
attorney’s diligence must be shown. “[R]easonable diligence can be shown
if it is established that the attorney worked reasonably hard on the particular
application in question during the continuous critical period.” Cf. Bey v.
Kollonitsch, 806 F.2d 1024, 1027 (Fed. Cir. 1986) (interference). “[The
inventor’s] records did not show the exact days when activity specific to this
application occurred. Thus, we cannot say that the board clearly erred in
finding that ‘the documented activities with regard to [the present
application] are insufficient by themselves to prove diligence.’” Id. at 1028
(second brackets in original). “[I]t may not be possible for a patent attorney
to begin working on an application at the moment the inventor makes the
disclosure, because the attorney may already have a backlog of other cases
demanding his attention” so that “the courts have recognized that reasonable
diligence is all that is required of the attorney.” Id. “Generally, the patent
attorney must show that unrelated cases are taken up in chronological order,

4 Even if Frenkel’s Declaration were sufficient to show due diligence on the
part of inventor Frenkel, for the reasons discussed infra, we find a lack of
evidence to support reasonable diligence during the five- to six-week time
period from May 31, 2005, to July 8, 2005.
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thus, the attorney has the burden of keeping good records of the dates when
cases are docketed as well as the dates when specific work is done on the
applications.”5 Id.
The Frenkel Declaration states that Mr. Branch sent an email with a
document with draft claims and figures on May 25, 2005, after the effective
date. Frenkel Decl. ¶ 8; Exh. 1; see also Branch Decl. ¶ 5; Vobach Decl.
¶ 7. Appellant provided Mr. Branch comments on the draft claims and
figures on May 31, 2005. Frenkel Decl. ¶ 9. The Branch Declaration states
that Mr. Branch “completed a draft of the patent application in the normal
course of my work and sent it to Mr. Frenkel for review on July 8, 2005.”
Branch Decl. ¶ 7. Appellant confirms that he received a complete draft of
the patent application on July 8, 2005. Frenkel Decl. ¶ 10; see also Branch
Decl. ¶ 7. Appellant reviewed and provided comments on the draft on July
13, 2005. Frenkel Decl. ¶ 10; see also Branch Decl. ¶ 8.
The Declarations fail to provide evidence of reasonable diligence
from May 31, 2005, to July 8, 2005. It may be true that “a six-week drafting
period is well within the realm of reason for a busy patent attorney.” Reply
Br. 5. However, Branch’s statement that he completed a draft of the
application “in the normal course of [his] work,” fails to set forth “facts . . .
in character and weight, as to establish . . . due diligence” under 37 C.F.R.
§ 1.131. The Declarations provide no evidence, for example, that the
attorney had a backlog to take care of between May 31, 2005, to July 8,
2005, or that if there was a backlog that it was taken up in chronological
order. Nor do the Declarations provide any other evidence to show

5 While Bey v. Kollonitsch pertains to the context of an interference, we rely
on it simply to show examples of evidence that may be sufficient to show
reasonable diligence.
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reasonable diligence during this time period. Thus, the Declarations leave a
period of between five and six weeks in which we are left to guess whether
Mr. Branch’s statement regarding work in the normal course shows evidence
of reasonable diligence. While we acknowledge that there is no evidence to
suggest Mr. Branch was not reasonably diligent, we simply cannot fill the
gaps in Appellant’s evidence by inferring diligence on the record before us.
For the foregoing reasons, even accepting Appellant’s argument that
the Declarations are sufficient to establish conception of the invention prior
to May 23, 2005, they fail to establish due diligence from prior to the
effective date of the reference until filing of the application as required by 37
C.F.R. § 1.131. Accordingly, we conclude that the Declarations are
ineffective to overcome Crawford '103.

DECISION
For the above reasons, the Examiner’s rejection of claims 1-23, 25-38,
and 40-51 is affirmed.
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) (2011).

AFFIRMED

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