Ex Parte Graeve et al

Board of Patent Appeals and Interferences

Jan 31, 2012

11069586 (B.P.A.I. Jan. 31, 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.
11/069,586 03/01/2005 Paul Kent Graeve 053775-5002US 6863
28977 7590 01/31/2012
MORGAN, LEWIS & BOCKIUS LLP
1701 MARKET STREET
PHILADELPHIA, PA 19103-2921
EXAMINER
TORIMIRO, ADETOKUNBO OLUSEGUN
ART UNIT PAPER NUMBER
3714
MAIL DATE DELIVERY MODE
01/31/2012 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 PAUL KENT GRAEVE and BRADLEY J. MCGILL
____________________

Appeal 2010-001496
Application 11/069,586
Technology Center 3700
____________________

Before KEN B. BARRETT, EDWARD A. BROWN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-001496
Application 11/069,586

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STATEMENT OF THE CASE
Paul K. Graeve and Bradley J. McGill (Appellants) appeal under 35
U.S.C. § 134(a) from a rejection of claims 1-74. (Non-Final Rej. dated May
3, 2007, p. 1). Claims 1-72 have been twice rejected. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.

THE INVENTION
As discussed supra, each of the claims on appeal depends directly or
ultimately from claim 1. Claim 17 is representative of the appealed claims.
Claims 1 and 17 are reproduced below.
1. A method used for conducting a game in
which a plurality of three or more players bet
against each other, comprising:
establishing a set of rules by which the
players compete against each other during the
game, wherein the rules determine a game
performance for each of the plurality of players
based on at least one financial market data value
that fluctuates based on market activity in a
financial market that is distinct from the game; and
wherein the rules define a winning player based on
the game performance of the winning player
relative to the game performance of other ones of
said plurality of players;
electronically receiving updates to the
financial market data value from a third-party data
source;
providing a forum, electronically coupled to
the third-party data source, where the players play
the game against each other in accordance with the
established set of rules and the at least one
financial market data value, wherein the plurality
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of players bet against each other during the game;
and
collecting, by a sponsor of the game, a fee
for conducting the game;
wherein each of the plurality of players is
different from the sponsor of the game.

17. The method of claim 1, wherein the fee
collected by the sponsor of the game comprises an
initial fee paid by all players who wish to
participate in the game.

THE REJECTIONS
Appellants request our review of the following grounds of rejection.
(App. Br. 8).1, 2
1. The rejection of claim 17 under 35 U.S.C. § 103(a) as being
unpatentable over Asher (US 2004/0210507 A1; pub. Oct. 21, 2004),

1 Appellants state "the rejections of pending claims 17, 42, 53-54 and 63-69
are being appealed." (App. Br. 4). Claim 67 is rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Asher, Somma, and Jakobsson.
Although this rejection is not listed in the grounds of rejection (i)-(iv) for
which Appellants request our review, we will also review the Examiner's
rejection of claim 67 in this Appeal.
2 Appellants filed an Amendment After Final Rejection to attempt to cancel
claims 1-16, 18-41, 43-52, 55-62, and 70-72, and thereby limit the pending
claims of the application to claims 17, 42, 53, 54, and 63-69. (Amdt. After
Final Rej. filed Oct. 30, 2007, pp. 2-9; App. Br. 4). The Examiner declined
to enter the Amendment. (Advisory Action dated Oct. 23, 2007; App. Br.
4). Appellants' statement that "the rejections of pending claims 17, 42, 53-
54 and 63-69 are being appealed" provides authorization for the Examiner to
cancel the remaining pending claims 1-16, 18-41, 43-52, 55-62, and 70-74
prior to any further prosecution of the present application. See Ex Parte
Ghuman, 88 USPQ2d 1478 (BPAI 2008) (precedential).
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Somma (US 5,690,337, iss. Nov. 25, 1997), and Cannon (US 2004/0229700
A1; pub. Nov. 18, 2004).
2. The rejection of claims 42, 63-66, 68 and 69 under 35 U.S.C. §
103(a) as being unpatentable over Asher and Somma.
3. The rejection of claims 53 and 54 under 35 U.S.C. § 103(a) as
being unpatentable over Asher, Somma, and Walker (US 2004/0192432 A1,
pub. Sep. 30, 2004).
4. The rejection of claim 67 under 35 U.S.C. § 103(a) as being
unpatentable over Asher, Somma, and Jakobsson (US 2002/0133419 A1,
pub. Sep. 19, 2002).

ANALYSIS
Rejection of claim 17 as unpatentable over Asher, Somma, and Cannon
Claim 17 depends from claim 1. Appellants do not contest the
Examiner's determination that Asher and Somma would have rendered
obvious the subject matter recited in claim 1. (Ans. 3-4). Claim 17 recites
"the fee collected by the sponsor of the game comprises an initial fee paid by
all players who wish to participate in the game." The Examiner concluded
that it would have been obvious to one of ordinary skill in the art to include
Cannon's initial fee in Asher's method to assist in paying the winners. (Id. at
9).
Appellants contend that in Asher, any fee that may be received by the
house is paid to it at the time that an initial customer purchases a financial
instrument from the house, but no initial fee is payable by a subsequent
customer (who buys the financial instrument from the initial customer) to the
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game sponsor for participation in the game. (App. Br. 9). Appellants
contend that it would not have been obvious to incorporate "an initial fee
paid by all players who wish to participate in the game" into Asher. (Id.).
These contentions are not persuasive.
The Examiner found Asher teaches collecting "a small service fee."
(Ans. 19). Paragraph [0085] of Asher cited by the Examiner describes, with
emphasis added:
This aspect of the invention could also be
employed for pure party-counter-party betting, in
which the system serves solely as a market for
matching individual investors who are willing to
take diametrically opposed positions on a
particular point, or to trade in such positions
(with the house extracting a small service fee for
its clearinghouse functions).
The Examiner found Asher teaches the limitations of claim 17. (Ans. 20).
Cannon discloses that in gaming tournaments held in casinos,
"[t]ournament players are conventionally required to pay an entry fee to
enter the tournament." (Cannon, para. [0011]). The Examiner applied
Cannon in the rejection as an additional teaching of the limitations recited
in claim 17. (Ans. 20). Appellants' contentions are directed to combining
the teachings of Asher and Cannon, but do not address the Examiner's
finding that Asher already teaches the claim limitations. Hence, Appellants
have not addressed the Examiner's articulated reasoning and rationale
underlying the conclusion of obviousness.

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Rejection of claims 42, 63-66, 68 and 69 as unpatentable over Asher and
Somma
Claim 42
Claim 42 depends directly from claim 1 and recites "the rules provide
for a random assignment of one or more financial instruments to each player
in the game." (Emphasis added). The Examiner determined that it would
have been obvious to randomly distribute the financial instruments in Asher.
(Ans. 6, citing Asher para. [0066]). Here, Asher describes, with italics
added:
Because the present invention provides for free
trading of financial instrument 76, though, it will be
recognized that even random assignment of point values
to various outcomes could be made, . . . market
participants would be free to evaluate if the point value
for a particular outcome had been fixed "too low" or "too
high" . . . and could increase (or decrease) the amount
they were willing to pay for participation in a position
whose success depended in whole or in part on such
outcome.
Appellants contend that this description in Asher teaches the random
assignment of point values to financial instruments, not the random
assignment of financial instruments to players. (App. Br. 11). Appellants
contend that this description makes clear that each player can decide if they
want to participate in the financial instrument. (Id.). These contentions are
persuasive with respect to paragraph [0066] of Asher.
The Examiner also cited to paragraphs [0004], [0030], and [0048] of
Asher, and stated "par. [0048] also further teach[es] randomized
outcome/events which include financial instrument assignment." (Ans. 20)
(emphasis added). Paragraph [0048] of Asher describes, with italics added:
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Upon determining a selection of events 210 and
establishing a wagering position thereon, the
clients will communicate such wagering
positions to the central controller 50. Central
controller 50 establishes a financial instrument 76
embodying the parameters of each wagering
position, and will return a confirmation message,
as indicated by arrows 219 and 220.
The Examiner's finding that paragraph [0048] of Asher describes the
random assignment of financial instruments is not supported by a
preponderance of the evidence. The description at paragraphs [0004] and
[0030] of Asher also does not support the Examiner's finding by a
preponderance of the evidence. Hence, we do not sustain the rejection of
claim 42.
Claims 63-66, 68, and 69
Claim 63 depends directly from claim 1 and recites "players bet on the
relative performance of a common predefined set of financial instruments
over a predetermined set of time." The Examiner found that Asher teaches
this limitation. (Ans. 7, citing Asher, Fig. 5; paras. [0002], [0081]).
Appellants contend that paragraph [0081] and Figure 5 of Asher fail to teach
the limitations of claim 63. (App. Br. 14).
However, the Examiner also found that Asher teaches "relating the
performance in a horse race to the financial instrument, where the outcome
is determined by the position and ranks the horses are placed from the race."
(Ans. 22, citing Asher, paras. [0003] and [0082]). Paragraph [0003] of
Asher describes that typical horse racing bets allow bettors to wager in
various ways, including combination bets with multiple horses, for example,
trifecta bets (top three horses in order).
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Paragraph [0082] of Asher describes, with italics added:
a system and method may be employed for
creating financial instruments 76 in connection
with horse racing or other common sporting events
that may have multiple participants, which are
currently the subject of pari-mutuel or other
wagering propositions but could also be made the
subject of a tradable point-based wagering
proposition. Financial instruments 76 may be
employed in numerous ways to establish a
particular position with respect to some aspect of
the outcome of a series of horse races, and the
positions embodied in those instruments 76 may be
traded in the same way as any of the other
instruments 76 discussed herein.
In view of Asher's teachings of relating outcomes in horse racing to
financial instruments, and using combination bets directed to relative
performance in horse racing, Appellants have not presented any persuasive
argument why the subject matter recited in claim 63 would not have been
obvious to one of ordinary skill in the art in view of the applied references.
Hence, we sustain the rejection of claim 63.
Claims 64, 65, 68, and 69 depend directly from claim 63. Appellants
have not presented any arguments for patentability for any one of claims 64,
65, 68, and 69, and hence we also sustain their rejection.
Claim 66 depends from claim 65 and recites "each player can place a
combined bet on the financial instruments from the common set that will
perform worst, second worst and third worst, during a predetermined period
of the game." The Examiner found Asher teaches "first three" performance,
and concluded that "last three" performance would have been obvious.
(Ans. 7-8, see also Ans. 22). We understand the Examiner determined that it
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would have been obvious to place a combined bet on the financial
instruments from a common set that will perform worst, second worst, and
third worst, as claimed.
Appellants contend that Asher does not teach the use of horse racing-
style bets for wagering on the relative performance of financial instruments
from a common set during a predetermined period of time. (App. Br. 15).
Appellants' also contend that Asher discloses betting on the top three
finishers of a horse race, not the three worst performing financial
instruments from a common set. (Id.). These contentions are not
persuasive. Asher teaches relating outcomes in horse races to financial
instruments, and the common use of combination bets in horse racing.
Appellants contend that Asher does not anticipate claim 66 (Id.); however,
the Examiner determined that claim 66 would have been obvious.
Appellants have not presented any persuasive reason why it would not have
been obvious to one of ordinary skill in view of Asher to place combined
bets on financial instruments from a common set that will perform worst,
second worst, and third worst, as claimed. Hence, we also sustain the
rejection of claim 66.

Rejection of claims 53 and 54 as unpatentable over Asher, Somma, and
Walker
Claim 53 depends directly from claim 1 and recites "the game has an
indefinite end time." The Examiner found Walker teaches this feature.
(Ans. 15). The Examiner concluded that it would have been obvious to one
of ordinary skill in the art to end the game when a score of a player reaches a
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predetermined threshold to allow "the players to play to be the first player to
reach threshold in order to win the grand prize." (Id.).
Appellants contend that each of Asher's instruments has a "designated
duration" after which it expires, not an "indefinite end time," as claimed.
(App. Br. 12, citing Asher, para. [0039]). Appellants also contend that
"substituting" an indefinite expiration in Asher's financial instruments would
render Asher inoperable and, accordingly, would not have been obvious.
(Id.). These contentions are not persuasive.
Paragraph [0039] of Asher describes, with italics added:
Information 78, illustrated in greater detail with
reference to FIG. 2, may include . . . a description
of the event(s) 84 which are the subject of the
particular instrument 76, a designated duration 86,
and the point position 88 (and/or price) established
in the particular instrument 76. . . . duration 86
may refer to a particular closing or settlement date
for the financial instrument 76, or may be based on
the events themselves that may be completed on
some uncertain date in the future.
The Examiner found that the "uncertain date in the future" described in
Asher for completing the game is an "indefinite end time" to the game.
(Ans. 21). The Examiner applied Walker in the rejection as an additional
teaching of the limitations recited in claim 53. (Id.). The Examiner's
findings for claim 53 are supported by a preponderance of the evidence.
Appellants have not addressed the Examiner's articulated reasoning and
rationale underlying the conclusion of obviousness, and hence we sustain the
rejection of claim 53.
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Appellants do not present any additional arguments for claim 54,
which depends from claim 53. Hence, we also sustain the rejection of claim
54.

Rejection of claim 67 as unpatentable over Asher, Somma, and Jakobsson
Appellants do not present any additional arguments for claim 67,
which depends directly from claim 63. Hence, we also sustain the rejection
of claim 67.

DECISION
1. The rejection of claim 17 under 35 U.S.C. § 103(a) as being
unpatentable over Asher, Somma, and Cannon is AFFIRMED.
2. The rejection of claim 42 under 35 U.S.C. § 103(a) as being
unpatentable over Asher and Somma is REVERSED, and the rejection of
claims 63-66, 68, and 69 under 35 U.S.C. § 103(a) as being unpatentable
over Asher and Somma is AFFIRMED.
3. The rejection of claims 53 and 54 under 35 U.S.C. § 103(a) as
being unpatentable over Asher, Somma, and Walker is AFFIRMED.
4. The rejection of claim 67 under 35 U.S.C. § 103(a) as being
unpatentable over Asher, Somma, and Jakobsson 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).

AFFIRMED-IN-PART
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