Ex Parte Lee et al

Patent Trial and Appeal Board

May 27, 2016

13198159 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/198, 159 08/04/2011
49840 7590 06/01/2016
Atlanta Baker Donelson
Intellectual Property Department
Monarch Plaza, Suite 1600
3414 Peachtree Rd.
A1LANTA, GA 30326
FIRST NAMED INVENTOR
Marion O'Neill Lee
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2170615-3 7227
EXAMINER
RENWICK, REGINALD A
ART UNIT PAPER NUMBER
3714
NOTIFICATION DATE DELIVERY MODE
06/01/2016 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
following e-mail address( es):
atlip@bakerdonelson.com
tdavis@bdbc.com
ipdocketing@bakerdonelson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARION O'NEILL LEE and JARED BRANDON EMRICH
Technology Center 3700
Appeal2014-004025
Application 13/198,159
Before NINA L. MEDLOCK, CYNTHIA L. MURPHY, and
TARA L. HUTCHINGS, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants (Marion O'Neill Lee and Jared Brandon Emrich)
appeal under 35 U.S.C. § 134 from the Examiner's rejection of claims 1-13.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2014-004025
Application 13/198,159
STATEMENT OF THE CASE
The Appellants' invention relates "to a system for and method of
participating in an electronic game with the use of a mobile device wherein
the game requires the physical presence of the players." (Spec. 1, 11. 8-11.)
Illustrative Claim1
1. A method of playing a mobile computer device
based game, comprising the steps of:
providing a first player's mobile computer device having
a select mobile device game application;
providing a second player's mobile device having the
select mobile computer device game application;
entering the occurrence of a game related event by a first
player which has physically occurred at a remote location that
enables the first player to advance in a mobile computer device
game application into the first player's mobile computer device
utilizing the mobile computer device game application;
transmitting the occurrence of the game related event from
the first player's mobile computer device to a central server
associated with the mobile computer device game application;
verifying the occurrence of the game related event by
sending a message from the central server to the second player's
mobile computer device located at the remote location,
transmitting a verification response from the second
player's mobile computer device to the central server,
changing a score associated with the first player which is
stored on the central server in response to the verifying of the
occurrence of the game related event.
1 This illustrative claim is quoted from the Claims Appendix ("Claims
App.") set forth on pages 26-31 of the Appeal Brief.
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Application 13/198,159
Rejections2
I. The Examiner rejects claims 1, 5, and 10 under 35 U.S.C.
§ 102(b) as anticipated by Kelly. 3 (Final Action 4.)
II. The Examiner rejects claims 2, 3, 6-8, and 11 under 35 U.S.C.
§ 103(a) as unpatentable over Kelly in view of Official Notice. (Id. at 7.)
III. The Examiner rejects claims 4, 9, 12, and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Kelly and Groth. 4 (Id. at 9.)
IV. The Examiner rejects claims 2 and 3 under 35 U.S.C. § 112,
second paragraph, as being indefinite. (Id. at 4.)
ANALYSIS
Claims 1, 5, and 10 are the independent claims on appeal, with the rest
of the claims on appeal (i.e., claims 2--4, 6-9, and 11-13) depending
therefrom. (See Claims App.) Independent claim 1 is directed to "[a]
method for playing a mobile computer device based game," independent
claim 5 is directed to "[a] method of providing a mobile computer device
based game," and independent claim 10 is directed to "[a] mobile computer
device based game system." (Id.)
Rejection I
Independent claim 1 recites "entering the occurrence of a game related
event by a first player which has physically occurred at a remote location."
2 The Examiner's rejection under 35 U.S.C. § 101 (see Final Action 3) has
been withdrawn (see Answer 2).
3 US 2010/0004039 Al, published January 7, 2010.
4 US 2007/0167136 Al, published July 19, 2007.
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Application 13/198,159
(Claims App.) The Examiner finds that Kelly discloses such an entering
step. (See Final Action 5---6.) In Kelly, "[a] user plays a round of golf and
enters the number of eagles, birdies, pars, bogeys, double bogeys, triple
bogeys they received" into the system. (Kelly i-f 41.)
The Appellants argue that the claimed invention enters "each move
(game related event) in a game while the Kelly reference enters the end
results of the game." (Appeal Br. 8.) We are unpersuaded by this argument
because we agree with the Examiner that a player's final score for a round of
golf (i.e., the number of eagles, birdies, pars, etc.) is a "game related event"
as required by independent claim 1. (See Answer 5.) We note that
independent claim 1 does not require the game related event to be a "move,"
does not require "each" game related event to be entered, and does not
require the occurrence of more than one game related event.
Independent claim 1 also requires the occurrence of the game related
event to "enable[] the first player to advance in a mobile computer device
game application." (Claims App.)5 The Examiner finds that, in Kelly, the
entry of a golfer's final score (i.e., the game related event) into the system
enables such advancement. (See Final Action. 5-6.) In Kelly, "the system
receives a set of scores for 18 holes of golf played by a golfer," "computes a
Splashie score," "enters top ranked golfers into a golf tournament," and "the
winner of the tournament is determined based on the Splashie score
received." (Kelly i-f 43.)
The Appellants argue that Kelly's system, "simply records scores
(eagles, birdies, pars, etc.) regardless of whether it advances the player in the
5 In the Appellants' words, the recited occurrence is "an advancing event in
the game." (Appeal Br. 8.)
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Application 13/198,159
game or not, i.e., it is simply a score." (Appeal Br. 8.) We are unpersuaded
by this argument because we agree with the Examiner that Kelly's entry of a
top-ranked golfer into the golf tournament constitutes advancement in the
game. (See Answer 5.) We note that independent claim 1 does not preclude
the entry of other occurrences (e.g., non-top-ranked scores) that are
insufficient to enable advancement in the game (e.g., are not entered into the
golf tournament).
Independent claim 1 also recites the step of "changing a score
associated with the first player which is stored on the central server in
response to the verifying of the occurrence of the game related event."
(Claims App.) The Examiner finds that Kelly discloses such a score change.
(See Final Action 6-7.) In Kelly, a second golfer either confirms or denies a
score received from a first golfer, and "[i]f a confirmation is received, then
the system assigns a status of verified to the score [of the first golfer]."
(Kelly i-f 51.)
The Appellants argue that, in Kelly's system, there "is simply a one
time entry of a final score" and "the game does not change the score with
each occurrence or verification of an occurrence." (Appeal Br. 8.) We are
unpersuaded by this argument because we agree with the Examiner that
Kelly's assignment of a verified status to the first golfer's score constitutes
changing a score associated with the first player as required by independent
claim 1. (See Answer 7.)6 As noted above, independent claim 1 does not
require the occurrence of more than one game related event. We also note
6 As the Examiner's findings in this regard are supported by explicit
disclosures in Kelly, we need not address the Appellants' arguments
regarding inherency. (See Appeal Br. 9-10.)
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Application 13/198,159
that independent claim 1 does not require the change in the score to be
numerical in nature.
The Examiner rejects independent claims 5 and 10 "for at least similar
reasons as claim 1." (Final Action 7.) The Appellants advance arguments
akin to those addressed above in our analysis of independent claim 1 (see
Appeal Br. 11-16) and, for the reasons discussed above, we are unpersuaded
by these arguments.
Thus, we sustain the Examiner's rejection of independent claims 1, 5,
and 10 under 35 U.S.C. § 102(b) as anticipated by Kelly.
Rejection II
Dependent claims 2 and 8 each recites that the game related event "is
associated with an action taken by" the second player or person. (Claims
App.) The Examiner finds that it would have been obvious for a first golfer
in Kelly to be granted a gimmie 7 by a second golfer, and that the game
related event (i.e., the first golfer's final score) would be associated with this
action. (See Final Action 8.)
The Appellants argue that, with the Examiner's gimmie scenario, "the
first player only enters his own score which is not an event related to a
second player's action." (Appeal Br. 16-17; see also id. at 23.) We are
unpersuaded by this argument because we agree with the Examiner that
7 The Examiner explains that "[g]immies are sportsman gestures between
players." (Final Action 8.) "For example, if the first golfer hits his ball
close to the cup, the second golfer playing with the first player may simply
allow the first golfer to presume the ball would have made it into the cup in
a single stroke, rather than having the first player actually attempt the putt
and possibly miss it." (Answer 7.)
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"gimmies potentially lower a golf score." (Answer 7.) Specifically, for
example, "[a] gimmie gesture can influence a golf score" in that "the first
golfer might not actually have completed the hole with one stroke and may
have needed more strokes to complete the hole." (Id.) As such, the score
entered by the first golfer in Kelly would indeed be associated with a
gimmie granted (i.e., an action taken) by the second golfer.
Dependent claims 3, 6, 7, and 11 each recites limitations relating to
verification of the game related event by a "third" person, player, or
computer device if the "second" party denies verification. (Claims App.)
The Examiner finds that it would have been obvious for Kelly's golfers to
play in a foursome; and that a foursome "allow[ s] a third participant to
verify scores [of the first golfer] if second participant denies verification."
(Final Action 9.) The Examiner explains that this additional verification "is
desirable when disputes arise." (Id.)
The Appellants argue that "the number of players of any game is
irrelevant to the issue of a third party verifying an action through a third
device." (Appeal Br. 17; see also id. at 18-25.) We are not persuaded by
this argument because it does not take into consideration the Examiner's
finding that Kelly teaches "golfers have their own mobile devices to verify
scores" and the Examiner's notice that "if two parties are in a dispute a third
party can settle the dispute." (Answer 9.) In Kelly, a foursome would
provide a third-party witness of the golf game (with a third mobile device) to
settle a dispute regarding the verification of the first golfer's score. (See id.)
Thus, we sustain the Examiner's rejection of dependent claims 2, 3,
6-8, and 11 as unpatentable over Kelly in view of Official Notice.
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Rejection III
The Appellants do not argue or otherwise address this rejection (see
Appeal Br. 16-25); and thus we summarily sustain Examiner's rejection of
dependent claims 4, 9, 12, and 13 under 35 U.S.C. § 103(a) as unpatentable
over Kelly and Groth.
Rejection IV
Claim 2 recites "the observed game related event." (Claims App.,
(emphasis added).) However, claim 2 depends from independent claim 1,
which recites "a game related event" not "an observed" game related event.
(Id.) The Examiner determines that the modifier "observed" in dependent
claim 2 renders it, and claim 3 depending therefrom, indefinite. (See Final
Action 4.)
The Appellants argue that "the observed game related event" clearly
corresponds to the "game related event" recited in independent claim 1. (See
Appeal Br. 7.) We are not persuaded by this argument because we agree
with the Examiner that "it is unclear whether the claim language reciting
'game related events' and 'observed game related events' are meant to
distinguish and separately claim multiple different types of events or
whether the different elements are meant to only discuss one event."
(Answer 3.) We note, for example, that independent claim 5 recites
"transmitting a request to enter a score enabling game related event," while
independent claim 10 recites "means for entering an observed gaming game
related event." (Claims App., (emphasis added).)
Thus, we sustain the Examiner's rejection of dependent claims 2 and 3
under 35 U.S.C. § 112, second paragraph.
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Application 13/198,159
DECISION
We AFFIRM the Examiner's rejections of claims 1-13.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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