Ex Parte Lee

Board of Patent Appeals and Interferences

Jun 15, 2009

09727248 (B.P.A.I. Jun. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CHRISTOPHER A. LEE
__________

Appeal 2009-000172
Application 09/727,248
Technology Center 3700
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Decided:1 June 15, 2009
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Before LORA M. GREEN, RICHARD M. LEBOVITZ, and
MELANIE L. McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
and system for placing interactive wagers. The Examiner has rejected the
claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-000172
Application 09/727,248

STATEMENT OF THE CASE
Claims 1-46 are pending and on appeal (App. Br. 3). The claims have
not been argued separately and therefore stand or fall together. 37 C.F.R.
§ 41.37(c)(1)(vii). We will focus on claim 1, which reads as follows:
1. A method for placing interactive wagers on races that are to be
run using an interactive wagering application that is implemented using user
equipment, comprising:
providing a user at the user equipment with an opportunity to direct
the interactive wagering application to automatically select, using a random-
number generation application, which runner or runners are to be used in a
wager for a race to be run; and
providing the user with an opportunity to use the interactive wagering
application to place the wager.
Claims 1-46 stand rejected under 35 U.S.C. § 103(a) as obvious over
Stronach (WO 00/67215 A1, Nov. 9, 2000) in view of Tulley (US 6,688,976
B1, Feb. 10, 2004) (Ans. 3).
The Examiner relies on Stronach for disclosing “that upon actuation
of the quick pick button the wagering terminal automatically selects racing
candidates based on various algorithms” (id.). The Examiner finds that
Stronach teaches “all of the claimed invention, except explicitly a random
number generator means for automatically selecting candidates or racers
located remotely from the wagering terminal or at a host location” (id. at 4).
The Examiner relies on Tulley for disclosing “a lottery system that
comprises . . . a controller (host system) networked to remote terminals or
player devices. . . . If requested from the player via the player device, the
controller implements a ‘quick pick’ application that randomly generates
lottery numbers for the player.” (Id.)
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The Examiner concludes that it would have been obvious
to modify the wagering system of Stronach with the random
“quick pick” number generated application at the host system of
Tulley et al. Such a modification would provide an alternative
and/or equivalent random means of automatically selecting
candidates for the player in the event that the player is
indecisive about what selections to make.
(Id. at 5.)
ISSUE
Has Appellant demonstrated that the Examiner erred in concluding
that it would have been obvious to use a random-number generation
application to select runner(s) in Stronach’s wagering system?
FINDINGS OF FACT
1. Stronach discloses a multimedia wagering system including
a race providing system for facilitating wagering on race events,
and a plurality of multimedia wagering terminal[s] in
communication with the race providing system for wagering on
the race events. The race provider includes means for selecting
race events for wagering. The wagering terminal includes a
multimedia display for displaying the selected race events, a
user interface for placing a wager on the selected race event,
payout means for providing a payout on the selected race
events, and data processing means in communication with the
multimedia display, the user interface and the payout means for
facilitating wagering on the selected race events.
(Stronach 4: 7-15.)
2. In an embodiment, Stronach discloses:
The data processing means includes a handicapping receiver for
receiving handicapping data from the race providing system, an
odds receiver for receiving odds data from the race providing
system, and a wagering processor in communication with the
handicapping receiver and the odds receiver for selecting one or
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Application 09/727,248

more racing candidates for the wager in accordance with the
received handicapping data and the received odds data.
(Id. at 5: 6-11.)
3. Stronach also discloses:
In one variation . . . , the user interface 136 includes a select
button for initiating reselection of the racing candidates, and the
wagering processor 166 is configured to reinitiate selection of
racing candidates upon receipt of the reselection command from
the user interface 136. In this variation, preferably the
wagering processor 166 is configured with a number of
different candidate selection algorithms, with each algorithm
giving different weights to the various handicapping data, and
is configured to use a different one of the selection algorithms
after each reselection command received from the user
interface 136. In this manner, the wagering processor 166
typically selects different racing candidates for each actuation
of the select button.
(Id. at 10: 21-29.)
4. Tulley discloses lottery “systems and methods wherein a lottery
number combination is associated with a limited number of occurrences,
such as a limited number of lottery tickets or a limited number of players”
(Tulley, col. 1, ll. 30-35).
5. Tulley also discloses “the lottery number combination [can be]
selected by a lottery system. . . . For example, the lottery system may use a
‘quick pick’ random process to select a lottery number combination for a
player.” (Id. at col. 5, ll. 4-10.)
PRINCIPLES OF LAW
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l v. Teleflex Inc., 550 U.S. 398, 416 (2007). In addition, “any need
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Application 09/727,248

or problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.” Id. at 420. It is also proper to “take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” Id. at 418. “A person of ordinary skill is also a person of ordinary
creativity, not an automaton.” Id. at 421.
ANALYSIS
Stronach discloses a method for placing interactive wagers on races
comprising providing a user with an opportunity to direct the interactive
wagering application to automatically select which runner or runners are to
be used in a wager (Findings of Fact (FF) 1-3). Tulley discloses a lottery
system using “a ‘quick pick’ random process to select a lottery number
combination for a player” (FF 5). We agree with the Examiner that it would
have been obvious to utilize Tulley’s random process in the method of
Stronach in order to automatically select runner(s) using a random-number
generation application.
Appellant argues, however, that “the Office Action has failed to point
to any motivation why one skilled in the art would provide an ‘alternative’
means of automatically selecting candidates in Stronach when Stronach
already includes a means for automatically selecting candidates,” e.g., a
reselection button (App. Br. 7). We are not persuaded.
We understand Appellant’s concern that Stronach already includes a
means for automatically selecting candidates. However, Stronach does not
require that this reselection button use algorithms giving different weight to
handicapping data. Instead, Stronach discloses that this is a preferred
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embodiment (FF 3). Given that it was known in the gambling art to use
random processes to select picks (FF 5), we agree with the Examiner that it
would have been obvious to use an algorithm giving no weight to the
handicapping and odds data.
Appellant also argues:
[O]ne of ordinary skill in the art would not find it obvious to
apply . . . a random selection process from a game that has
equal odds to a race where each runner typically has different
odds. It would be counterintuitive. Typically, there is one or
more runners favored to win and one or more long shot runners
that are unlikely to win. Using a random process to select
runners, unlike Stronach’s automatic runner selection
algorithms, does not take this into account.
(App. Br. 9-10.) We are not persuaded.
One of ordinary skill in the art is well aware that individuals do not
always make wagers based on handicapping and odds data. Although it may
be the “smarter” choice to make picks based on this data, sometimes it may
be more fun to make a pick for another reason. In addition, the owner of the
system may very well have an incentive to include a random algorithm
rather than a determinative algorithm so as to not help the user to make the
“smarter” pick.
CONCLUSION
Appellant has not shown that the Examiner erred in concluding that it
would have been obvious to use a random-number generation application to
select runner(s) in Stronach’s wagering system. We therefore affirm the
obviousness rejection of claims 1-46.
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Application 09/727,248

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

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