Ex Parte Webb

Board of Patent Appeals and Interferences

Jun 17, 2009

11011377 (B.P.A.I. Jun. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DEREK J. WEBB
__________

Appeal 2009-002071
Application 11/011,377
Technology Center 3700
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Decided:1June 17, 2009
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims 1-25, all of
the pending claims, which are directed to a method and apparatus for playing

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-002071
Application 11/011,377

a casino game. The Examiner has rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
In Texas Hold ‘Em, “each player has the use of seven cards in order to
form a five card poker hand” (Spec. ¶ 0005). “In Texas Hold Em each
player receives two cards face down. Additionally, there are five
community cards dealt face up. The term ‘community card’ refers to a non-
player specific card that is exposed (face up) and available for use by any of
the players in order to form a poker hand.” (Id. at ¶ 0006.)
The Specification discloses “a casino version of Texas Hold ‘Em”
having “competition wagers” that are won based on the best poker hand, and
“a proposition wager against a typical 7-card scale with payouts for 5-card
hands exceeding a predetermined rank (such as two pair)” (id. at ¶ 0014).
The competition wagers involve “no house advantage or commission …
[but] a reasonable house advantage is built into the proposition … wager”
(id.). The “proposition wager is the sole source of the reasonable house
advantage” (id. at 8).
The claims have not been argued separately and therefore stand or fall
together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 1 is representative and reads
as follows:
Claim 1: A method of playing a casino game, comprising:
(a) receiving a competition wager from each player, the competition
wager being without a house advantage;
(b) receiving a proposition wager from each player;
(c) a dealer dealing hands of playing cards to each player and at least
one community card to a community card area;
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(d) resolving the competition wager according to a poker rank of one
player hand against a poker rank of another player hand; and
(e) resolving the proposition wager according to the poker rank of
each player hand against a payout scale.
OBVIOUSNESS
Issue
The Examiner has rejected claims 1-25 under 35 U.S.C. § 103(a) as
obvious in view of Malek ‘882,2 Malek ‘120,3 Kangsanaraks,4 and Scarne. 5
The Examiner finds that Malek ‘882 discloses a casino poker game
that comprises receiving competition and proposition wagers from players,
dealing cards, and resolving the wagers according to the poker ranks of the
player hands and dealer hand (Ans. 4-5). The Examiner also finds that
Scarne discloses the use of community cards in a poker game (id. at 5), and
that Malek ‘120 discloses paying winning hands in casino poker games
according to a payout scale (id.). The Examiner finds that Kangsanaraks
teaches reducing payouts as an alternative to charging a commission on
winning bets in casino games (id. at 6).
The Examiner concludes that it would have been obvious for one of
skill in the art to combine the Malek ‘882 poker game with the Scarne poker
game variation using community cards and to modify the Malek ‘882 game
rules so that “if the player hand is better than the dealer hand, the first wager

2 Malek, US 5,265,882, Nov. 30, 1993
3 Malek, US 5,395,120, Mar. 7, 1995
4 Kangsanaraks, US 5,496,038, Mar. 5, 1996
5 John Scarne, Scarne's Encyclopedia of Card Games, 1973, HarperCollins,
pgs. 18-26

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would have been resolved according to the player hand poker rank against a
payout scale,” as taught by Malek ‘120, because this “modification would
have given the players the perception of possibly winning higher payout
odds, thus making [the] Malek 882' game more attractive” (id. at 5-6).
Finally, the Examiner concludes that it would have been obvious to
modify the Malek ‘882 game “by eliminating the 5% commission on any
of the second wagers between players” and instead reducing payoffs on the
first wagers “in order to make up the difference for the elimination of the 5%
commission” (id.).
Appellant contends that the Examiner erred in finding the
combination of references to suggest a competition wager without a house
advantage (App. Br. 12-15).
The issue with respect to this rejection is: Have Appellants
demonstrated that the Examiner erred in concluding that the cited references
would have suggested a competition wager without a house advantage, as
recited in the method of claim 1?
Findings of Fact
1. Malek ‘882 discloses “a gambling game which is a mixture of
Twenty-One, a modified Draw Poker, and Baccarat, wherein the player can
simultaneously play all three games not only against the dealer, but against
other players” (Malek ‘882, col. 1, ll. 46-50).
2. Malek ‘882 discloses the following:
Prior to any cards being dealt, each player places a first bet
against the dealer in the bank betting area 8 of his playing
station. …
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After all bets are made against the bank, the dealer then
proceeds to deal one card face-up to each player, and one card
face-down to himself. After the players assess their card against
the card of each other player, the highest ranking card on the
table has the option to place an additional bet against all other
players in the player betting area 9 of his playing station. The
player is limited to betting against other players in only those
games in which he has also bet against the dealer.
(Id. at col. 4, ll. 3-19.)
3. Malek ‘882 discloses that after the dealer settles any bets between
players and the bank, the dealer then acts as a broker for settling all bets
among players, and that “[i]n return for this, it is conceivable that the casino
would require a 5% commission on any second bets between players” (id. at
col. 5, ll. 56-68).
4. Scarne discloses a draw poker variation, Rockleigh, in which a five
card poker hand is formed the player’s cards and one or two community
cards (Scarne 22).
5. Scarne discloses a poker variation, Lame Brain, in which a five
card poker hand is formed from the player’s cards and five community cards
(id. at 25).
6. Malek ‘120 discloses “a gambling game which is a mixture of
Draw Poker and one of Twenty-One and Baccarat, wherein the player can
simultaneously play Draw Poker against the Dealer and one of Twenty-One
and Baccarat against other players” (Malek ‘120, col. 1, ll. 64-68).
7. Malek ‘120 discloses that “the dealer compar[es] his Poker hand to
that of each player to settle each wager between the dealer and each player;
and … the dealer compar[es] the Twenty-One hand of each of said at least
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two players to settle the wager between said at least two players.” (Id. at
col. 2, ll. 20-25.)
8. Malek ‘120 discloses that “[i]f the dealer does not have at least
one-pair, then all winning bets against the dealer will be paid at 1:1” but if
the dealer has at least one pair, then players are paid different odds
depending on what their winning hand is (id. at col. 4, l. 59 - col. 5, l. 5).
9. Malek ‘120 discloses that the casino could charge a 5%
commission for administering the Twenty-One portion of the game (id. at
col. 5, ll. 15-36).
10. Kangsanaraks discloses a gambling card game in which “an
optional additional percentage or ‘commission’ [is] to be taken from the
winning bets of the players of the game, in order to provide an adequate
return for the house” (Kangsanaraks, col. 8, ll. 1-4).
11. Kangsanaraks discloses that “the step of payment of a commission
fee may be eliminated by reducing the payout by the house for winning bets,
if desired” (id. at col. 8, ll. 17-19).
Principles of Law
“[W]hen the question is whether a patent claiming the combination of
elements of prior art is obvious,” the answer depends on “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007).
The obviousness analysis “can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” Id. at
418.
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Analysis
Claim 1 is drawn to a method of playing a casino game comprising (i)
receiving a competition wager from each player, the competition wager
being without a house advantage, and resolving the competition wager
according to the poker rank of one player hand against the poker rank of
another player hand, (ii) receiving a proposition wager from each player and
resolving the proposition wager according to the poker rank of each player
hand against a payout scale, and (iii) a dealer dealing cards to each player
and to a community card area.
We agree with the Examiner that the references as combined by the
Examiner would have suggested that method of claim 1. Malek ‘882
discloses a casino gambling game in which a player can simultaneously play
poker against both the dealer and against other players. Scarne discloses that
the use of community cards in poker is known in the art. Appellant does not
dispute that it would have been obvious to modify the game disclosed by
Malek ‘882 to include a poker variant using community cards.
Malek ‘120 discloses a casino gambling game, similar to that of
Malek ‘882, in which a player can simultaneously play poker against the
dealer (resolved according to a payout scale) and play twenty one (or
baccarat) against other players. Appellant does not dispute that it would
have been obvious to modify the game disclosed by Malek ‘882 to pay
winning poker bets against the dealer according to a payout scale, as
disclosed by Malek ‘120.
Both Malek ‘882 and Malek ‘120 suggest that, in return for settling
bets between players, the casino could charge a 5% commission. However,
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Kangsanaraks discloses that charging a commission and reducing the payout
on winning bets were alternative, known methods for a casino to realize an
adequate return in gambling games. We agree with the Examiner that it
would have been obvious to modify the payout scale disclosed by Malek
‘120, when used in the game disclosed by Malek ‘882, to reduce payoffs and
provide a return for the house in the player-versus-dealer bets that is
adequate to cover the cost of settling the player-versus-player bets without
the need to charge a commission; i.e., without a house advantage on play
between players. Such a system would be, in accord with KSR, within the
realm of creative steps that one of ordinary skill in the art would employ.
Appellant argues that the Examiner’s reliance on Kangsanaraks as
disclosing that a commission fee may be eliminated by reducing the payouts
by the house on winning bets is in error because, in Kangsanaraks, the
reduction of payouts by the house is identical to a house commission (App.
Br. 12). Appellant also argues that charging a commission and reducing
payouts are known alternatives in player-versus-dealer wagers, but not in
player-versus-player wagers (id. at 14-15). Appellant argues that none of the
references “even remotely discloses reducing the payout of one wager type
(i.e., player versus dealer) in order to eliminate a commission on another
wager type (i.e., player versus player)” (id. at 15).
This argument is not persuasive. In the game disclosed by Malek
‘882, a player can bet against other players only in a game in which he has
also bet against the house. Thus, over time the casino stands to earn the
same amount of money by (a) using a payout scale that pays a relatively
large amount on player-versus-dealer bets and charging a commission for
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settling player-versus-player bets or (b) using a payout scale that pays a
relatively small amount on player-versus-dealer bets but charging no
commission on player-versus-player bets. Those of skill in the art would
recognize that it is immaterial whether the house earns its money on player-
versus-player and player-versus-dealer bets, or on player-versus-dealer bets
alone, if the house is statistically likely to earn the same amount either way.
CONCLUSIONS OF LAW
Appellants have not demonstrated that the Examiner erred in
concluding that the cited references would have suggested a competition
wager without a house advantage, as recited in the method of claim 1.
SUMMARY
We affirm the rejection of claims 1-25 under 35 U.S.C. § 103(a) as
being obvious in view of Malek ‘882, Malek ‘120, Kangsanaraks, and
Scarne.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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