Ex Parte Nicely et al

Patent Trial and Appeal Board

May 8, 2013

11937310 (P.T.A.B. May. 8, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK C. NICELY,
SCOTT A. CAPUTO, and PAUL B. STROUBE
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Appeal 2011-002543
Application 11/937,310
Technology Center 3700
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Before GAY ANN SPAHN, BENJAMIN D.M. WOOD, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Mark C. Nicely et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 1-7 and 9-26. The Examiner
objected to claim 8 as being dependent upon a rejected base claim and
indicated the allowability of claim 27. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
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Claimed Subject Matter
Claims 1, 16, and 25 are the independent claims on appeal. Claim 1,
reproduced below, with emphasis added, is illustrative of the appealed
subject matter.
1. A method of operating a gaming system, said method
comprising:
causing at least one processor to operate with at least one
display device and at least one input device to:
(a) enable a player to place a primary wager;
(b) deal only three cards to the player to form a player
hand from a virtual deck of playing cards;
(c) deal only three cards to form a dealer hand from the
virtual deck of playing cards;
(d) enable the player to select up to one card to replace in
the player hand;
(e) if the player selects one of the cards in the player
hand to replace, replace the selected card in the player hand
with a card from the virtual deck of playing cards;
(f) replace up to one card in the dealer hand with a card
from the virtual deck of playing cards according to a set of
predetermined rules and based on the cards in the player's
hand; and
(g) compare a value of the player hand to a value of the
dealer hand; and
causing the at least one processor to provide a primary
award to the player if the value of the player hand is greater
than the value of the dealer hand.

Independent claim 16 is directed to a gaming system operable
under control of at least one processor, wherein the at least one
processor “cause[s] a replacement of up to one card in the dealer hand
with a card from the virtual deck of playing cards according to a set of
predetermined rules and based on the player hand.”
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Independent claim 25 is directed to a gaming system operable
under control of at least one processor, wherein the at least one
processor “replace[s] up to one card in the dealer hand with a dealer
replacement card selected from the at least one deck of playing cards
according to a set of predetermined rules and based on the tracked
values of the cards dealt to the player and the dealer.”

Rejections
The following Examiner’s rejections, under 35 U.S.C. § 103(a), are
before us for review:
I. claims 1-7, 9-19, and 21-26 as unpatentable over Buford (US
2006/0049581 A1, published Mar. 9, 2006) and Bui (US 2003/0034608 A1,
published Feb. 20, 2003); and
II. claim 20 as unpatentable over Buford, Bui, and Kenny (US
2006/0186599 A1, published Aug. 24, 2006).

OPINION
Rejection I – Obviousness based on Buford and Bui
The Examiner finds that Buford substantially discloses the subject
matter of independent claims 1, 16, and 25, but fails to explicitly disclose
that “said predetermined rules that the dealer must follow are based on the
card’s [sic] in the player’s hand.” Ans. 4-5. To cure the deficiency of
Buford, the Examiner turns to Bui to disclose that “such features as
predetermined rules that require dealer’s [sic] to draw cards based on a
player’s hand is known in the art.” Ans. 5 (citing to Bui, p. 1, para. [0009]-
[0012]).
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Appellants argue that “modifying Buford with Bui changes the
princip[le of] operation of Buford and results in Buford being unsatisfactory
for its intended purpose.” App. Br. 17.
Buford discloses a casino draw poker game, “wherein a player and/or
a dealer can replace a card in their hand of their choosing.” Buford, Title
and p. 1, para. [0017]. The game is played according to a set of 13 rules,
wherein rule 5 indicates that “[e]ach player and dealer shall receive three
cards face down,” and “[t]he player may look at his own cards but sharing of
information is not allowed.” Buford, p. 1-2, para. [0018]. Rule 7 indicates
that “[t]he dealer shall then examine his cards,” rule 8 indicates that “the
player may discard one of his three cards for the next card in the deck” or
“[t]he player may also stand pat with his original three cards,” and rule 9
indicates that “[t]he dealer shall then have the option to discard one card or
none at all according [to] the house way explained later.” Id. The dealer
replaces a card according to “a set house way for deciding how to play the
hand (whether to discard and which card(s) to discard,” “there should be no
discretion on the part of the dealer himself or herself,” and “[h]ow to play
the hand should be according to a predetermined strategy.” Buford, p. 3,
para. [0030]. In a variation of the above rules where the player replaces a
card first, it is noted that “the operations . . . can be performed in any
sensible order,” such as “[f]or example, . . . the dealer can draw before the
player draws.” Buford, p. 3, para. [0035].
Bui discloses a method of playing a card game with multiple wager
options. Bui, Title. More particularly, Bui discloses a method of playing a
mini-Baccarat type game. Bui, Abstr. The Examiner relies on Bui’s
paragraphs [0009]-[0012], wherein Bui’s paragraph [0009] indicates that
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“[t]raditional Mini-Baccarat is played with two cards,” and “[a] third card is
only drawn under [certain] rules.” It is noted that Bui specifically discloses
that when the cards are dealt, “[t]he cards are turned face up.” Bui, p. 1,
para. [0006]. Bui’s paragraphs [0010]-[0012] set forth Rules 1-3,
respectively, wherein Rules 2 and 3 specify when the dealer’s hand and
when the player’s hand draw a third card. However, there is no discussion
in Bui of replacing a card in the player’s hand or in the dealer’s hand.
Based on the above-discussed disclosures of Buford and Bui, we are
persuaded by Appellants’ argument that the principle of operation of Buford
would be changed if Buford were modified by the teachings of Bui in the
manner proposed by the Examiner and this would result in Buford being
unsatisfactory for its intended purpose. See App. Br. 17; see also In re Ratti,
270 F.2d 810, 813 (CCPA 1959) (“This suggested combination of references
would require a substantial reconstruction and redesign of the elements
shown in [the primary reference] as well as a change in the basic principles
under which the [primary reference] construction was designed to operate.”
(Emphasis added)). First, we note that Buford’s draw poker game and Bui’s
mini-baccarat type game are very different games with different rules and it
is not clear, nor has the Examiner adequately explained, how Bui’s mini-
baccarat type game rules 1-3 could be applied to Buford’s draw poker game.
Regardless, in view of Bui’s disclosure that the cards are dealt face up, the
rules of Bui’s mini-baccarat type game could not be implemented into
Buford’s draw poker game without violating Buford’s rule 5 against the
sharing of information. This is true even in the variation disclosed in Buford
where the dealer draws before the player draws. Thus, we agree with
Appellants that the Examiner’s proposed modification of Buford with the
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teachings of Bui would change the principle of operation of Buford and
would result in Buford being unsatisfactory for its intended purpose.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1, 16, and 25, and claims 2-7, 9-15, 17-19, 21-24, and 26
dependent thereon, under 35 U.S.C. § 103(a) as unpatentable over Buford
and Bui.

Rejection II – Obviousness based on Buford, Bui, and Kenny
The Examiner’s rejection of claim 20 does not rely on the teachings of
Kenny to cure the deficiency in the combination of Buford and Bui
discussed supra. Appellants argued that “Kenny does not cure this
deficiency,” and we agree. App. Br. 26. Accordingly, we do not sustain the
Examiner’s rejection of claim 20 under 35 U.S.C. § 103(a) as unpatentable
over Buford, Bui, and Kenny.

DECISION
We reverse the Examiner’s decision to reject claims 1-7 and 9-26.

REVERSED

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