10810782 (B.P.A.I. Jun. 13, 2012)

Ex Parte Tarantino

Board of Patent Appeals and InterferencesJun 13, 2012

10810782 (B.P.A.I. Jun. 13, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/810,782 03/26/2004 Elia Rocco Tarantino PATINV.0005P 9658 32856 7590 06/13/2012 WEIDE & MILLER, LTD. 7251 W. LAKE MEAD BLVD. SUITE 530 LAS VEGAS, NV 89128 EXAMINER RUSTEMEYER, MALINA K ART UNIT PAPER NUMBER 3716 MAIL DATE DELIVERY MODE 06/13/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ELIA ROCCO TARANTINO ____________ Appeal 2010-005800 Application 10/810,782 Technology Center 3700 ____________ Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R. MOHANTY, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005800 Application 10/810,782 STATEMENT OF THE CASE Elia Rocco Tarantino (Appellant) seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1-9, 16, and 17. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF DECISION We REVERSE.1 THE INVENTION Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method of playing a game of keno at a gaming device comprising the steps of: displaying a set of keno numbers; accepting input from a player regarding one or more player selected numbers from said keno numbers; designating said player selected numbers with a first indicator; selecting a set of game numbers; determining if one or more of said game numbers match one or more of said player selected numbers; as to each player number which is matched by a game number, removing said first indicator and displaying a match indicating secondary indicia in association with said matched player number, said match indicating secondary indicia not including said first indicator and said match indicating secondary indicia having an 1 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed Nov. 12, 2009) and Reply Brief (“Reply Br.,” filed Feb. 12, 2012), and the Examiner’s Answer (“Answer,” mailed Dec. 8, 2009). Appeal 2010-005800 Application 10/810,782 3 attribute indicating to said player that said player number was matched; and as to each player number which is not matched by a game number, removing said first indicator and displaying a non-match indicating secondary indicia in association with said unmatched player number, said non-match indicating secondary indicia not including said first indicator, said non-match indicating secondary indicia differing from said match indicating secondary indicia, and said non- match indicating secondary indicia having an attribute indicating to said player that said player was not matched; and determining the outcome of said game. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Beaulieu Luciano Bennett US 2003/0017865 A1 US 2003/0232638 A1 WO 00/32286 Jan. 23, 2003 Dec. 18, 2003 Jun. 8, 2000 The following rejections are before us for review: 1. Claims 1, 6, 8, 9, 16, and 17 are rejected under 35 U.S.C. §103(a) as being unpatentable over Luciano, Jr. and Beaulieu. 2. Claims 2-5 and 7 are rejected under 35 U.S.C. §103(a) as being unpatentable over Luciano, Jr., Beaulieu, and Bennett. ISSUE Has a prima facie case of obviousness been made out in the first instance? Appeal 2010-005800 Application 10/810,782 4 ANALYSIS The rejection of claims 1, 6, 8, 9, 16, and 17 under 35 U.S.C. §103(a) as being unpatentable over Luciano, Jr. and Beaulieu. As we understand it, there is no dispute that Luciano, Jr. discloses, as to each player number which is matched by a game number, designating the matched number with a first indicator and displaying a match indicating secondary indicia in association with said matched player number, said match indicating secondary indicia including said first indicator and said match indicating secondary indicia having an attribute indicating to said player that said player number was matched. This is shown in element 154 in Fig. 5 of Luciano, Jr. The dispute is over whether it would have been obvious to remove said first indicator and display a match indicating secondary indicia not including said first indicator. As shown in element 154 in Fig. 5 of Luciano, Jr., the first indicator is not removed but is included along with the secondary indicia. The Examiner recognized this difference between the claimed subject matter and Luciano, Jr. (Answer 5) and for that reason relied on Beaulieu to make a case for obviousness. According to the Examiner, removing said first indicator and displaying a match indicating secondary indicia not including said first indicator is disclosed in Figs. 16 and 17. Answer 5. The Appellant disagrees, arguing that Beaulieu simply discloses displaying game symbols in succession. Reply Br. 5. We have reviewed Figs. 16 and 17 of Beaulieu. We agree with the Appellant. Beaulieu states that Fig. 16 and 17 are “illustration[s] of spinning and stopped reel images” ([0036] and [0037]). We see nothing there about removing a first indicator and displaying a match indicating a secondary Appeal 2010-005800 Application 10/810,782 5 indicia not including said first indicator as the Examiner has asserted, let alone doing so as part of a method of playing a game of keno at a gaming device as claimed. For the foregoing reasons, a prima facie case of obviousness has not been made out in the first instance. The rejection of claims 2-5 and 7 under 35 U.S.C. §103(a) as being unpatentable over Luciano, Jr., Beaulieu, and Bennett. Claims 2-5 and 7 depend on claim 1. The rejection of these claims is reversed for the reasons given as to the rejection of claim 1. CONCLUSIONS The rejections of claims 1, 6, 8, 9, 16, and 17 under 35 U.S.C. §103(a) as being unpatentable over Luciano, Jr. and Beaulieu, and claims 2-5 and 7 under 35 U.S.C. §103(a) as being unpatentable over Luciano, Jr., Beaulieu, and Bennett are reversed. DECISION The decision of the Examiner to reject claims 1-9, 16, and 17 is reversed. REVERSED MP