Ex Parte Pececnik

Patent Trial and Appeal Board

Sep 19, 2018

14184710 (P.T.A.B. Sep. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/184,710 02/20/2014
150951 7590 09/21/2018
Baker & Hostetler LLP / Interblock USA, LC
Cira Centre 12th Floor
2929 Arch Street
Philadelphia, PA 19104-2891
FIRST NAMED INVENTOR
Joze Pececnik
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.
333.041US1 1013
EXAMINER
TORIMIRO, ADETOKUNBO OLUSEGUN
ART UNIT PAPER NUMBER
3714
NOTIFICATION DATE DELIVERY MODE
09/21/2018 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):
eofficemonitor@bakerlaw.com
Sarah. Carrancej a@interblockgaming.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOZE PECECNIK 1
Appeal2017-010313
Application 14/184,710
Technology Center 3700
Before JENNIFER D. BAHR, DANIEL S. SONG, and
BENJAMIN D. M. WOOD, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner's
Final Office Action (hereinafter "Final Act.") rejecting claims 1-8 and 10-
18 in the present application. We have jurisdiction under 35 U.S.C. §§ 6(b)
and 134(a).
We AFFIRM.
1 The Appellant identifies the real party in interest as Elektroncek d.d.
(Appeal Brief (hereinafter "App. Br.") 3).
Appeal2017-010313
Application 14/184,710
The claimed invention is directed to a communal gaming system
having at least two individual player wagering terminals that have individual
mechanical components for individual gaming events (Abstract).
Independent claim 1, which is illustrative of the invention, reads as follows
(App. Br. 17, Claims App'x, emphasis added):
1. A communal gaming system having a processor, a central
display area for displaying a common wagering event on a
communal display facility and at least two individual player
wagering terminals configured to enable wagering on the
common wagering event,
wherein the at least two individual wagering terminals
each have individual mechanical components providing
individual gaming events and input controls for those individual
gaming events; and
further wherein the individual gaming events are selected
from the group consisting of secondary games that are
mechanical games selected from the group consisting of dice,
balls, playing cards, candy wheels and roulette wheels, with
moveable game pieces restrained by a covering and enclosing
element that is transparent or translucent, the covering or closing
element further selected from the group consisting of a cage,
bubble, box and cylinder.
Independent claim 13 is directed to a method of wagering on a
communal gaming system including individual player terminals that receive
a local wager on a wagering game unique to the terminal (App. Br. 19,
Claims App'x).
The Examiner rejects claims 1-8 and 10-18 under 35 U.S.C. § I03(a)
as obvious over Kovacs (US 2012/0122564 Al, pub. May 17, 2012) in view
of Nordman (US 2005/0054428 Al, pub. Mar. 10, 2005) (Final Act. 3).
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Application 14/184,710
ANALYSIS
Only those arguments actually made by the Appellant have been
considered in this decision. Arguments that the Appellant could have made
but chose not to make have not been considered and are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv); In re Jung, 637 F.3d 1356, 1365-
66 (Fed. Cir. 2011); Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010
(precedential)).
In the Final Office Action, the Examiner rejects independent claims 1
and 13, finding that Kovacs substantially discloses the invention claimed,
including individual player terminals that also provide individual gaming
events unique to the individual player terminal (Final Act. 3, citing Kovacs
Abst., ,r,r 5, 7, 8, Figs. IA, IB, 3B). However, the Examiner concedes that
Kovacs:
does not explicitly disclose further wherein the individual
gaming events are selected from the group consisting of
secondary games that are mechanical games selected from the
group consisting of dice, balls, playing cards, candy wheels and
roulette wheels, with moveable game pieces restrained by a
covering and enclosing element that is transparent or translucent,
the covering or closing element further selected from the group
consisting of a cage, bubble, box and cylinder.
(Final Act. 3--4).
The Examiner finds that Nordman discloses this limitation in an
analogous invention in its disclosure of "an individual gaming event that
could be incorporated in a communal game, where the primary or secondary
game could include a mechanical game display including a plurality of
rotatable display mechanism in a closed gaming device system." (Final Act.
4, citing Norman ,r 30; Fig. 1 ).
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Application 14/184,710
Based on these findings, the Examiner concludes that:
It would have been obvious to a person of ordinary skill in the
art at the time of the invention to modify Kovacs' gaming system
and method which enables multiple players to simultaneously
play multiple individual games or group games on a central
display as taught by Nordman's gaming device having multiple
transverse rotating displays for the purpose of providing the user
and player of the game with a variety of playable individual
games. This yields the expected result of increasing the player's
enjoyment and satisfaction in the game.
(Final Act. 4).
Preliminarily, we observe that instead of the obviousness rejection set
forth above based on the combination of Kovacs and Nordman, the
Appellant's Appeal Brief identifies the rejection appealed as: "Claims 1-18
have been rejected under 35 USC 102(a)(l) as anticipated by Kovacs (US
2012/0122564)." (App. Br. 10). In the Answer, the Examiner points out
that the Appellant "in error argues an old rejection over Kovacs that was
replaced with a new rejection by Kovacs in view of Nordman. The
[Appellant] in error failed to respond to the previously presented new
rejection." (Ans. 7). Accordingly, the Examiner requests that the rejections
be affirmed (Ans. 8).
Indeed, the Appeal Brief does not appear to respond to the Final
Office Action of February 25, 2016, but instead, appears to be directed to an
earlier Non-Final Office Action dated September 11, 2015, in which claims
1-18 were rejected as anticipated by Kovacs, and claims 2--4 were rejected
as obvious over Kovacs alone (App. Br. 10, 14). The present status of this
application is that claim 9 has been canceled, and claims 1-8 and 10-18
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Application 14/184,710
stand rejected as obvious over the combination of Kovacs and Nordman
(Final Act. 3).
In response to the Answer, the Appellant has submitted a Reply Brief,
which submits arguments directed to the actual rejection applied that is
based on the combination of Kovacs and Nordman (Reply Brief (hereinafter
"Reply Br.") 2). However, such late submission of new arguments in the
Reply Brief does not comply with 37 C.F .R. § 41.41 (b )(2)(precluding
arguments not previously raised in the Appeal Brief unless a good cause is
shown). The Appellant does not set forth any explanation as to its delayed
submission of its arguments, much less show good cause for the delay. In
that regard, the Examiner has not had an opportunity to consider, and
respond to, the Appellant's arguments directed to the combination of Kovacs
and Nordman as now set forth in the Reply Brief. Accordingly, pursuant to
37 C.F.R. § 41.41(b)(2), we do not consider the arguments newly raised in
the Reply Brief, which were not previously raised in the Appeal Brief.
In its Appeal Brief, the Appellant argues that Kovacs does not
disclose any mechanical components, much less the specific structures
recited in claim 1, that provide mechanical gaming events, or protection
thereof in a viewable enclosure (App. Br. 11 ). In that regard, the Appellant
argues that Kovacs does not disclose "mechanical games with mechanical
elements" as required by claim 1 (App. Br. 12; see also id. at 13). However,
these arguments are unpersuasive because as noted by the Examiner, "the
secondary reference 'Nordman' was relied upon to teach this limitation"
pertaining to the mechanical game with mechanical elements (Ans. 7). The
Appellant unpersuasively argues Kovacs individually whereas the rejection
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Application 14/184,710
is based upon the teachings of a combination of references. In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413,425
(CCPA 1981).
The Appellant also argues that while claims 5 and 10 require
"physical[] attach[ment] to at least one of the at least two player wagering
terminals," "[t]here is no evidence from Kovacs ... of the physical
attachment of the specific classes of mechanical wagering systems to the
terminals themselves." (App. Br. 13-14). However, the Appellant again
unpersuasively argues Kovacs individually whereas the rejection is based
upon the teachings of a combination of references. Nordman relied upon in
the rejection for disclosing the mechanical game with mechanical elements,
in fact, discloses the recited "physical attachment" of the mechanical game
(Nordman Fig. 1; ,r 30 ("the mechanical display device 100[] is mounted to
or connected to the top of the cabinet of the gaming device.")). The
Appellant relies on the same arguments with respect to the method claims
(App. Br. 14), these arguments being unpersuasive for the reasons discussed
above.
The Appellant further argues that:
There is no evidence of record of the use of three-
dimensional representations of actual mechanical outcomes by
Kovacs and no evidence of the use of a holographic system ....
There are no cited evidence from Kovacs of the use of
Three-Dimensional or holographic displays as recited in claims
3--4.
(App. Br. 15).
However, the Appellant does not adequately address the Examiner's
rejection, which is that:
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It would have been obvious to a person of ordinary skill in
the art at the time of the invention to modify Kovacs's central
display to have a flat screen, three-dimensional display, or a
holographic display stage as a design choice because any type of
display used with the Kovacs ' invention would perform the same
functions of providing a display to the users of the gaming system
of Kovacs et al. Therefore the examiner construes that it would
be an obvious design choice to use a different type of display
from the one presented by Kovacs et al. This yields the expected
result of providing design and manufacturing options to the
makers of the gaming system, thereby keeping the game exciting
for the players.
(Final Act. 5, emphasis added). In other words, the Examiner's rejection is
not premised on a finding that Kovacs discloses such three-dimensional or
holographic displays. Rather, the Examiner determines that the particular
type of display used for Kovac' s central display is an obvious matter of
design choice. 2
The basis of the Examiner's rejection is that it would have been a
mere design choice to use a different type of display from the one
2 It cannot be reasonably disputed that three-dimensional or holographic
displays, and areas for such displays, are well-known, the Appellant's
Specification itself establishing this fact. For instance, the Specification
states that "[p ]opular products for creating 3-D effects include Extreme 3D,
LightWave 3D, Ray Dream Studio, 3D Studio MAX, Softimage 3D, and
Visual Reality. The Virtual Reality Modeling Language (VRML) allows the
creator to specify images and the rules for their display and interaction using
textual language statements." (Spec. 23, 11. 8-11 ). The Specification also
states that Figure 2 "displays a 3D Holographic amphitheater according to
US Patent No. 8,177 ,368." (Spec. 27, 11. 22-23). Cf Randall Mfg. v. Rea,
733 F.3d 1355, 1362---63 (Fed. Cir. 2013) (prior art of record not specifically
relied upon in the rejection considered as evidence of the state of the art,
common knowledge, and common sense of one of ordinary skill in the art).
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specifically disclosed in Kovacs, and, thus, it would have been obvious to
one of ordinary skill to utilize a three-dimensional or holographic display,
with such usage attaining a predictable result (Final Act. 5). The
Appellant's argument does not specifically challenge the position that
utilization of a three-dimensional or holographic display would have been an
obvious design choice, and thus, does not adequately address the rejection
articulated by the Examiner.
Therefore, in view of the above, we are not persuaded of any error in
the Examiner's rejection of claims 1-8 and 10-18 based on the combination
of Kovacs and Nordman. Accordingly, the Examiner's rejection is affirmed.
CONCLUSION
The Examiner's rejection of claims 1-8 and 10-18 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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