Ex Parte Marshall et al

Patent Trial and Appeal Board

May 31, 2013

10958193 (P.T.A.B. May. 31, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CONNIE T. MARSHALL, JONI LEIGH HAMILTON,
JON CHARLES ZARING, KEVIN DWIGHT SATTERFIELD,
JENNIFER ANN VOGH, MASOOD GARAHI, RICHARD E. MCNUTT,
and THOMAS LASZLO ARONSON
____________

Appeal 2011-004552
Application 10/958,193
Technology Center 3700
____________

Before LINDA E. HORNER, BARRY L. GROSSMAN, and
NEIL A. SMITH, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 5, 7-9, 20, 22-24, and 41-54. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to interactive wagering systems
and methods. Spec., p. 1, ll. 6-7. Claim 5, a method for interactive
wagering, and claim 20, a system for interactive wagering, are independent
claims. Claim 5 is illustrative of the subject matter on appeal, and recites:
5. A method for interactive wagering,
comprising:
displaying a track wager requirement and a
plurality of selectable options for the track wager
requirement that are substantially aligned in a first
dimension with the track wager requirement;
receiving a first user selection of one of the
plurality of selectable options for the track wager
requirement;
in response to receiving the first user
selection:
simultaneously displaying a race wager
requirement substantially aligned in a second
dimension with the track wager requirement; and
displaying a plurality of selectable options
for the race wager requirement that are
substantially aligned in the first dimension with the
race wager requirement, wherein the selected and
at least one of the unselected selectable options for
the track wager requirement is simultaneously
displayed with the plurality of selectable options
for the race wager requirement;
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receiving a second user selection of one of
the plurality of selectable options for the race
wager requirement; and
in response to receiving the second user
selection:
simultaneously displaying an additional
wager requirement substantially aligned in the
second dimension with the race wager
requirement; and
displaying a plurality of selectable options
for the additional wager requirement that are
substantially aligned in the first dimension with the
additional wager requirement, wherein the
additional wager requirement is selected from the
group consisting of a wager type selection, a horse
selection, and an amount selection, and wherein
the selected and at least one of the unselected
selectable options for the race wager requirement
is simultaneously displayed with the plurality of
selectable options for the additional wager
requirement; and
receiving a third user selection of one of the
plurality of selectable options for the additional
wager requirement.

REFERENCES
The Examiner relied upon the following prior art references:

Mashruwala US 5,295,242 Mar. 15, 1994
Mir US 6,450,887 B1 Sep. 17, 2002
Brenner, et al. (“PCT
‘699”)

PCT WO97/09699

Mar. 13, 1997
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REJECTION
Appellants seek review of the rejection of claims 5, 7-9, 20, 22-24,
and 41-54 under 35 U.S.C. § 103(a) based on the combination of Mir, PCT
‘699, and Mashruwala.
ANALYSIS
Appellants do not argue the claims singly or specifically. Instead they
argue the claims as a single group, although in some places they refer to
independent claims 5 and 20 generally. See, e.g., App. Br. 16, 18.
Accordingly, we select claim 5 as a representative claim. The remaining
claims on appeal rise or fall with our determination of the propriety of the
rejection of claim 5. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner found that:
Mir teaches a method which includes displaying a wager input
interface for creating a wager on a horse race having a plurality of wager
requirements and a plurality of selectable options for each of the wager
requirements (Ans. 3);
PCT ‘699 teaches a system and method for interactive wagering that
includes user selection of the race track, race, wager type, horse, and amount
(Ans. 4); and
Mashruwala teaches a display system in which a user makes a
selection of a first requirement and in response to that selection additional
selection requirements are presented to the user (Ans. 5).
Based on these findings, the Examiner concluded that it would have
been obvious to one of ordinary skill in the art at the time the invention was
made to incorporate all wager requirements into a single screen in the format
taught by Mir, with the dependencies as taught by the PCT ‘699 reference,
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and having an interface as taught by Mashruwala. Ans. 5. The rationale for
the proposed combination is to provide a simple interface for the user that is
presented so as to increase the user's comprehension and comfort in passing
through the levels of selection. Id.
Appellants allege reversible error in the Examiner’s rejection based
on: Mashruwala being non-analogous (App. Br. 10); there being no
motivation to combine the applied references (id. at 16); and the combined
references failing to show or suggest all claimed features recited by
independent claims 5 and 20 (id. at 18). The Reply Brief embellishes these
same allegations of error, asserting that there is no rational, objective reason
that would have prompted a person of ordinary skill in the art to combine the
teachings of a display of relationships between factory objects, as disclosed
in Mashruwala, with a display of wagering requirements, as disclosed in Mir
and PCT ‘699. Reply Br. 7.
Appellants do not challenge the Examiner’s findings regarding Mir or
the PCT ‘699 reference. Appellants allege error based on the findings and
conclusions regarding Mashruwala, as generally summarized above.
We find that the Examiner has adequately addressed Appellants’
arguments in the Examiner’s Answer. Ans. 6-9. As such, we adopt the
Examiner’s findings and reasoning as our own. We write below to further
explain our decision.
We agree with the Examiner that Mashruwala is analogous art
properly usable in the rejection of the appealed claims. The invention
recited in claim 5 calls for a method for interactive wagering. The claimed
method calls for displaying information and options for three categories of
information, and receiving three user selections for the three selectable
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categories and the plurality of options for the categories. One objective of
the claimed invention is to provide an easy to use interface that allows the
user to quickly navigate through the available options. Spec., p. 3, ll. 1-5.
Mashruwala states that the invention disclosed in the Mashruwala patent
“relates to an interface.” Mashruwala, 1:9-10. Thus, as found by the
Examiner (Ans. 6), Mashruwala, though not directed to the exact same field
of endeavor as the claimed invention, wagering, is reasonably pertinent to
one of the objectives of the claimed invention and a particular problem with
which the Appellant's invention is concerned, i.e., an easy to use interface
for different categories of information and options.
The Examiner cited KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398
(2007) for its holdings that a suggestion or motivation to combine need not
come directly from the prior art references themselves, and the use of a
known technique to improve a similar device in the same manner weighs
towards obviousness. Ans. 8. Specifically the Court in KSR stated:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
550 U.S. at 417.
Here, applying the Supreme Court’s holding, the fact that
Mashruwala’s improved interface relates to factory information and options
rather than wagering information and options does not establish that
Mashruwala is non-analogous art, nor does it diminish the motivation to
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combine it with Mir and/or PCT ‘699. As found by the Examiner,
Mashruwala, like the claimed invention, relates to an interface that allows
the user to quickly navigate through available options. Ans. 8 (“Mashruwala
is an improvement to [a] similar type of interface.”)
Appellants argue that there is no motivation “in any of the prior art
references” to use Mashruwala's user interface with track and race wager
requirements. Such an explicit teaching or motivation in the references is
not required under the Court’s holding in KSR. As stated in KSR,
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue.
550 U.S. at 418. The Court further explained the obviousness analysis under
Section 103 that,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.
Id. The Court specifically rejected Appellants’ argument that a motivation
to combine must be found in the applied prior art references. As further
stated by the Court,
The obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation,
or by overemphasis on the importance of published articles and
the explicit content of issued patents. … and it often may be
the case that market demand, rather than scientific literature,
will drive design trends.
Id. at 419.
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“Common sense teaches, however, that familiar items may have
obvious uses beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents together
like pieces of a puzzle.” KSR, 550 U.S. at 420. As the Supreme Court
reminds us, “[a] person of ordinary skill is also a person of ordinary
creativity, not an automaton.” Id. at 421.
Accordingly, applying these principles to the findings and conclusions
of the Examiner, Appellants’ evidence and arguments that Mashruwala is
non-analogous art which cannot be used to support a § 103 rejection, and
that there is no motivation to combine Mashruwala with the other references,
are not persuasive of error by the Examiner.
DECISION
Upon consideration of the record as a whole in light of Appellants’
contentions and the preponderance of relevant evidence, we AFFIRM the
Examiner’s decision rejecting claims 5, 7-9, 20, 22-24, and 41-54.

AFFIRMED

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