Ex Parte Miller

Patent Trial and Appeal Board

Mar 27, 2013

10771221 (P.T.A.B. Mar. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KENNETH L. MILLER
____________

Appeal 2011-002272
Application 10/771,221
Technology Center 3700
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Before KEN B. BARRETT, GAY ANN SPAHN, and
BENJAMIN D.M. WOOD, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Kenneth L. Miller (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 1-20. Appellant’s representative
presented argument at oral hearing on March 21, 2013. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

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Claimed Subject Matter
The claimed subject matter relates generally to “wagering on horse
races.” Spec. 1. Claims 1, 10, and 17 are the independent claims on appeal.
Claim 1, reproduced below, with emphasis added, is illustrative of the
appealed subject matter.
1. A method for managing horseracing bets, comprising:
receiving a plurality of bets each from a respective bettor,
each bet comprising:
a selection of five horse races selected by the bet’s
respective bettor from a plurality of horse races
scheduled to be run at a track in a day;
a selection of a respective horse for each of the
five horse races selected; and
a bet amount;
wherein at least one selected horse race of a first
bet of the plurality of bets comprises a different horse
race from at least one selected horse race of a second bet
of the plurality of bets;
combining each bet amount to form a betting pool; and
determining an amount of a total payout for the day
based at least in part on the betting pool.

Evidence Relied Upon
The prior art relied upon by the Examiner in rejecting the
claims on appeal is:
Levy US 3,909,002 Sep. 30, 1975
Weingardt US 5,275,400 Jan. 4, 1994
Brenner US 5,830,068 Nov. 3, 1998
Stronach US 2004/0235542 A1 Nov. 25, 2004

Scarne, John, Scarne’s New Complete Guide to Gambling, Fully Revised,
Expanded, Updated Edition, 32-55 (Simon and Schuster 1974) (1961).
(hereinafter “Scarne”).

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Rejections
The following Examiner’s rejections1, under 35 U.S.C. § 103(a), are
before us for review2:
I. claims 1-5, 9-14, 18, and 19 as unpatentable over Brenner,
Scarne, and Levy;
II. claims 6 and 15 as unpatentable over Brenner, Scarne, Levy and
Weingardt; and
III. claims 7, 8, 16, 17, and 20 as unpatentable over Brenner,
Scarne, Levy, and Stronach.

OPINION
Rejection I – Obviousness based on Brenner, Scarne, and Levy
The Examiner finds that “Brenner discloses . . . a selection of five
horse races selected from a plurality of horse races scheduled to be run at a
track in a day (col. 7, lines 35-41, col. 12, lines 9-26, and figures 3-4).” Ans.
4. However, the Examiner also finds that “[t]he prior art is further silent
regarding explicitly teaching the method [sic, step?] of allowing the

1 The Examiner withdrew the provisional rejection of claims 1-20 on the
ground of nonstatutory double patenting over claims 1-53 of copending US
Patent Application Serial No. 10/771,076. See Ans. 3; see also Final Rej. 2-
3.
2 No rejection under 35 U.S.C. § 101 as to whether method claims 1-9, 19,
and 20 are directed to non-statutory subject matter is before us. However,
upon further prosecution of this application, the Examiner should consider
the USPTO guidance to examiners found in Interim Guidance for
Determining Subject Matter Eligibility for Process Claims in view of Bilski
v. Kappos (Interim Bilski Guidance). See 75 Fed. Reg. 43922 (July 10,
2010). This guidance was incorporated in Revision 9 of the Eighth Edition
of The Manual of Patent Examining Procedure (MPEP) issued in August
2012. (See MPEP § 2106; 8th Ed., Rev. 9).
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players/bettors to select multiple horse races from a plurality of horse races
scheduled to be run at a track in a day.” Ans. 6. To cure the deficiency of
the prior art, the Examiner turns to Levy to teach “a data processing system
for use in betting games such as horse racing; more specifically, . . . the
ability for the user to select from different races in a daily double bet (a bet
wherein player selects the winner of two races) (figure 7, features 352, 354,
348, 350 and the detailed description thereof).” Id. The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
“to allow players to not only select their horses of choice, but also the races
of choice for their pick bets” because “[s]uch a modification would produce
the predictable result of increasing player interest and excitement by
allowing players a wider range of betting options.” Id.
Appellant argues that “none of the three primary references show th[e]
limitation” of “a selection of five horse races selected by the bet’s
respective bettor from a plurality of horse races scheduled to be run at a
track in a day.” App. Br. 21-22; see also App. Br., Clms. App’x.
By “three primary references,” we understand Appellant to be
referring to Brenner, Scarne, and Levy, and we are persuaded by Appellant’s
argument. The Examiner’s citation to Brenner’s column 7, lines 35-41,
column 12, lines 9-26, and Figures 3-4 does not adequately explain how
Brenner discloses the disputed claim limitation of “a selection of five horse
races selected from a plurality of horse races scheduled to be run at a track in
a day.” Brenner discloses interactive wagering systems and processes, and
includes a logic flow diagram in Figure 3 illustrating the operation of the
wagering system. Brenner, Title and col. 5, ll. 16-17. As the Examiner
points out, Brenner discloses that “[i]n order to place wagers, a user
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typically establishes an account associated with a totalisator (e.g., at a
particular racetract),” “[t]he user’s account balance and other wagering
transactional information is stored in the totalisator,” and a “user terminal
122 includes a suitable communication circuitry to establish a
communications link with totalisator 102.” Brenner, col. 7, ll. 35-41.
Emphasis omitted. The Examiner also points to Brenner’s display of wager
queue menu 256 where each wager is summarized on a line adjacent to
wager number 258. Brenner, col. 12, ll. 9-11. Wager queue menu 256
shows menu options send/delete, more bets same race, more bets other race,
and main menu, but the menu options available at step 260 are limited by the
state of the wager queue which can contain up to five wagers. Brenner, col.
12, ll. 13-23. Once the wager queue is full, additional wagers can be added
only after the wagers in the queue are sent to the racetrack. Brenner, col. 12,
ll. 18-19. If two separate bettors each place five single races bets by looping
through Brenner’s Figure 3 five times using the “MORE BETS OTHER
RACE” menu option, it is perhaps possible that Brenner discloses the
disputed claim limitation. However, the Examiner has not adequately
explained how Brenner is being applied and thus, we are constrained to
agree with Appellant’s interpretation that the Examiner’s application of
Brenner does not “show this limitation.”
The Examiner has not relied on Scarne to teach the disputed claim
limitation and thus, we agree with Appellant that Scarne does not “show this
limitation.”
The Examiner’s citation to Levy’s Figure 7 and the detailed
description of reference numerals 352, 354, 348, and 350 (Ans. 6) also does
not adequately explain how Levy discloses the disputed claim limitation of
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“a selection of five horse races selected from a plurality of horse races
scheduled to be run at a track in a day.” Levy discloses a data-processing
system for determining gains and losses from bets. Levy, Title. Levy’s
Figure 7 depicts the operating panel 300 for a horse-racing wagering
operation. Levy, col. 20, ll. 40-42. The upper portion of the panel 300 has
two rows 348 and 350 where a player can operate one of the select buttons to
make a wager on a Daily Double, and windows 352, 354 are located to the
left of the horse select rows 348, 350, respectively, to indicate the number of
the race on which the wager is to be placed. Levy, col. 24, ll. 16-22.
Appellant’s Specification defines Daily Double bets as those “in which a
bettor may bet on the winners of two consecutive races chosen by the track.”
Spec. 2. Emphasis added. In response to Appellant’s argument that Levy
does not disclose the disputed claim language, the Examiner explains that:
before a player chooses to wager on a daily double, the player
must choose/decide which races (scheduled to be run at a track
in a day) he/she wants to wager/bet on ([i].e.[,] the player might
only want[] to place a bet on Race A and Race B), if the daily
double include[s] race[s] A and B, the player will participate in
the daily double, otherwise ([i].e.[,] if the daily double
include[s] races A and C), the player will not participate in the
daily double, which means that a selection of various ([i].e.[,]
Five) horse races are selected by the bet's respective bettor,
which means that the Levy reference teaches the limitation of a
selection of a plurality of horse races ([i].e.[,] five horse races)
selected by the bet's respective bettor from a plurality of horse
races scheduled to be run at a track in a day.
Ans. 14-15. We cannot agree with the Examiner’s reasoning because
Levy only teaches placing wagers on Daily Double races and one of
ordinary skill in the art would understand Daily Double races are
chosen by the track, not by the bettor. Thus, the Examiner has failed
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to adequately explain how Levy discloses “a selection of five horse
races selected from a plurality of horse races scheduled to be run at a
track in a day.”
In response to Appellant’s argument that none of Brenner, Scarne, and
Levy disclose the disputed claim limitation, the Examiner indicates that “the
concept of ‘a player can select multiple races to bet on from a plurality of
horse races scheduled at a track in a day’ is well known in the art” and offers
Garahi (US 2001/0041612 A1, published Nov. 15, 2001) as evidence in
support thereof. Ans. 10. Specifically, the Examiner indicates that Garahi
“teaches that the players can select multiple horse races to bet on from a
plurality of horse races scheduled at a track (in a day) ([para.] 74, [ll.] 8-
12).” Final Rej. 8-9.
However, Appellant argues that “Garahi’s ‘multiple races’ are not
more than the convention[al] groups selected by the track.” App. Br. 22
(citing Garahi, para. [0075], “[i]f the user has chosen a multi-race bet
(MRB), the user may select the type of wager (e.g., daily double, pick 3,
pick 4, etc.) at step 360.”). Reiterating, Appellant states that “read fairly,
[Garahi] teaches only the conventional groupings of races by the track (daily
double, etc.), not ‘races selected by the bet’s respective bettor from a
plurality of horse races scheduled to be run at a track in a day’ as recited in
the claims,” and “[n]o reference of record shows ‘a player can select
multiple races to bet on from a plurality of horse races scheduled at a track
in a day.” Id.
The Examiner’s reliance on Garahi as an evidence reference
supporting that “‘a player can select multiple races to bet on from a plurality
of horse races scheduled at a track in a day’ is well known in the art” has not
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been adequately explained. Garahi discloses systems and methods for cross-
platform access to a wagering interface. Garahi, Title. At paragraph [0074],
Garahi discusses Figure 9’s flow chart illustrating a place bet mode 350
where a wagerer can select “Place Bet” option 350 from main menu 200 to
build a wager by selecting a track at step 354 and selecting a race or multiple
races listed by starting times at step 356. This disclosure in and of itself is
not enough to establish that the disputed claim limitation is well known in
the art. We note that the Manual of Patent Examining Procedure (MPEP)
§ 2144.03, entitled “Reliance on Common Knowledge in the Art or ‘Well
Known’ Prior Art,” indicates that “[i]t would not be appropriate for the
examiner to take official notice of facts without citing a prior art reference
where the facts asserted to be well known are not capable of instant and
unquestionable demonstration as being well-known.” Without ruling on
whether the disputed claim limitation is “capable of instant and
unquestionable demonstration as being well-known,” we agree with
Appellant that Garahi fails to support that the disputed claim limitation is
well known and we conclude that the Examiner’s explanation of the
rejection based on “well known in the art” is inadequate.
Accordingly, we do not sustain the Examiner’s rejection of claims 1-
5, 9-14, 18, and 19 under 35 U.S.C. § 103(a) as unpatentable over Brenner,
Scarne, and Levy.

Rejections II and III – Obviousness
based on Brenner/Scarne/Levy/Weingardt
and Brenner/Scarne/Levy/Stronach, respectively
The Examiner’s remaining rejections rely on the erroneous findings
that either Brenner or Levy discloses “a selection of five horse races selected
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from a plurality of horse races scheduled to be run at a track in a day” or that
the limitation is well known in the art as evidenced by Garahi. The
Examiner has not relied on Scarne, Weingardt or Stronach to cure the
deficiency. Accordingly, for the reasons discussed supra, we do not sustain
the Examiner’s rejections of: claims 6 and 15 as unpatentable over Brenner,
Scarne, Levy and Weingardt; and claims 7, 8, 16, 17, and 20 as unpatentable
over Brenner, Scarne, Levy, and Stronach.

DECISION
We reverse the Examiner’s decision to reject claims 1-20.

REVERSED

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