Lee M. Amaitis et al.

Patent Trials and Appeals Board

Aug 5, 2019

13561335 - (D) (P.T.A.B. Aug. 5, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
13/561,335 07/30/2012 Lee M. Amaitis 04-7121-C5 7438
63710 7590 08/05/2019
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
HSU, RYAN
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
08/05/2019 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):
lkorovich@cantor.com
patentdocketing@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LEE M. AMAITIS, JOSEPH M. ASHER,
HOWARD W. LUTNICK, DARRIN M. MYLET, and ALAN B. WILKINS
____________

Appeal 2018-006085
Application 13/561,335
Technology Center 3700
_______________

Before LINDA E. HORNER, LISA M. GUIJT, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–30.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Interactive Games LLC is identified as the real party in interest. Appeal
Br. 3.
2 Appeal is taken from the Final Office Action dated September 7, 2017.
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CLAIMED SUBJECT MATTER
Claims 1 and 16 are the independent claims on appeal. Claim 1,
reproduced below, is exemplary of the subject matter on appeal.
1. A method, comprising:
responsive to a device accessing a gaming system to
engage in at least one gaming activity, determining by at
least one server whether the device is located within a
pre-determined location;
transmitting gaming information to the device over
an Internet communication path and transmitting wagering
information to the device over a private communication
path, in response to determining that the device is located
in the pre-defined location; and
in response to the device accessing the gaming
system, altering certain functionality of the device to
ensure wagers received by the at least one server from the
device, while the device is located in the pre-defined
location, did not originate from outside boundaries of the
pre-defined location.

THE REJECTIONS3
I. Claims 1–30 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
II. Claims 1, 4, 5, 8–16, 19, 20, and 23–30 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Steelberg (US 7,460,863 B2; issued

3 The following rejections, under 35 U.S.C. § 103(a), have been withdrawn
by the Examiner: (i) claims 1, 4, 5, 8–16, 19, 20, and 23–30 as unpatentable
over Steelberg and Mages (US 2003/0006931 A1; published Jan. 9, 2003);
(ii) claims 2, 3, 17, and 18 as unpatentable over Steelberg, Mages, and
Paravia; and (iii) claims 6, 7, 21, and 22 as unpatentable over Steelberg,
Mages, and Valentine. Ans. 2.
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Dec. 2, 2008) and Letovsky (US 2002/0147047 A1; published Oct. 10,
2002).
III. Claims 2, 3, 17, and 18 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Steelberg, Letovsky, and Paravia (US 6,508,710 B1;
issued Jan. 21, 2003).
IV. Claims 6, 7, 21, and 22 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Steelberg, Letovsky, and Valentine (US 6,011,973;
issued Jan. 4, 2000).

OPINION
Rejection I
Claim 1 supra recites the steps of “transmitting gaming information
. . . over an Internet communication path” and “transmitting wagering
information . . . over a private communication path.” Appeal Br. 15; see
also, e.g., Spec. 2:5–6 (explaining that “an Internet gaming system is prone
to hacking”), 2:11–13 (describing that “certain embodiments of the present
invention incorporate non-Internet based technology . . . to avoid the
problems encountered in operating a gaming system via the Internet”).
Independent claim 16 includes a similar limitation. Appeal Br. 17.
The Examiner finds that the claim terms “gaming information” and
“wagering information” are not defined in the claims or Specification, and
that “one of ordinary skill in the art would not be reasonably apprised of the
scope of the invention.” Final Act. 6. Notwithstanding, the Examiner
determines that, consistent with, and absent any express definition provided
in, the Specification, the claim term “gaming information” means “data that
is associated with gaming activities” and the claim term “wagering
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information” means “data that is associated with bets or wagers or
information assisting in the placing of bets or wagers on any sporting event
or contest.” Ans. 4.
Appellants argue that the Specification provides examples of “gaming
information” and “wagering information,” such that “one of skill in the art
could readily ascertain [their meanings] when reading these terms in view of
the [S]pecification and examples provided therein.” Appeal Br. 8–9 (citing
Spec. 6:10–15, 7:1–11). Appellants do not present definitions for the claim
terms “gaming information” and “wagering information.”
A claim is properly rejected as indefinite under 35 U.S.C. § 112,
second paragraph if, after applying the broadest reasonable interpretation in
light of the specification, the metes and bounds of a claim are not clear
because the claim “contains words or phrases whose meaning is unclear.” In
re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014) (per curiam).
The Specification describes that “[g]aming information . . . may
include any information, in any format, which is necessary or desirable in
the operation of the gaming experience in which the user participates.”
Spec. 6:11–13. The Specification also describes that “gaming activities
include gambling4” and also “wagering on any type of event.” Spec. 4:10–
14. The Specification also discloses that “[g]aming can also include non-
wagering games and events.” Spec. 4:16. An ordinary definition of the term
“gaming,” consistent with the Specification, is “the act or practice of playing

4 An ordinary definition of the term “gambling,” consistent with the
Specification is “the act or practice of betting : the act of playing a game ad
consciously risking money or other stakes to its outcome.” WEBSTER’S
THIRD NEW INT’L DICTIONARY 932 (1993).
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games for stakes.” WEBSTER’S THIRD NEW INT’L DICTIONARY 933 (1993).
In addition, an ordinary definition of the term “wagering,” consistent with
the Specification is “relating to the act of one who wagers,” wherein an
ordinary definition of the term “wager,” consistent with the Specification, is
“something that is risked on an uncertain event.” Id. at 2569 (1993).
We determine that the claim term “gaming information” means,
consistent with the Specification, any information, whether necessary or
desirable, which is related to the act of playing a game for stakes (i.e.,
wagering or risking something on an uncertain event). We also determine
that the claim term “wagering information,” means, consistent with the
Specification, any information related to the act of risking something on an
uncertain event. Although the definitions of “gaming information” and
“wagering information” are broad—for example, because the information
need only be related to gaming or wagering, such that information may be
both gaming information and wagering information, the claim is clear in that
the method requires “transmitting gaming information . . . over an Internet
communication path” and also “transmitting wagering information . . . over
a private communication path.” See In re Gardner, 427 F.2d 786, 788
(CCPA 1970) (“Breadth is not indefiniteness.”).
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1 and 16, and claims 2–15 and 17–30 depending
therefrom under 35 U.S.C. § 112, second paragraph, as indefinite.
Rejections II–IV
Appellants similarly rely on the arguments presented in support of
claim 1 as the basis for seeking reversal of the third and fourth grounds of
rejection of dependent claims 2, 3, 6, 7, 17, 18, 21, and 22. Appeal Br. 13.
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Thus, the outcome on the appeal of the third and fourth grounds of rejection
turns on the outcome on the appeal of the second ground of rejection.
Regarding independent claim 1, the Examiner relies on Letovsky for
teaching the step of transmitting gaming information and wagering
information, as claimed, and reasons, inter alia, that “[o]ne would be
motivated to incorporate the teachings of Letovsky [with the method of
Steelberg],” because “[i]n the wagering game art, the need for financial
transactions (e.g., wagers) to be transmitted securely is known to one of
ordinary skill in the art to conform to gaming jurisdictional requirements.”
Final Act. 14 (citations omitted).
Appellants argue that Mages does not disclose the steps of
transmitting gaming information and wagering information, as claimed, and
that the Examiner impermissibly relied on hindsight. Appeal Br. 10–12.
The Examiner correctly responds that Appellants’ arguments fail to
address the Examiner’s proposed combination of Steelberg and Letovsky.
Ans. 6.
Appellants reply that “Appellants inadvertently omitted arguments
addressing [Letovsky]” and argue that Letovsky fails to teach the steps of
transmitting gaming information and wagering information, as claimed.
Reply Br. 2–3 (“The system of Letovsky does not bifurcate the game into
wagering and non-wagering information as claimed.”).
We decline to consider arguments raised for the first time by
Appellants in the Reply Brief. See 37 C.F.R. § 41.41(b)(2) (“Any argument
raised in the reply brief which was not raised in the appeal brief, or is not
responsive to an argument raised in the examiner’s answer, . . . will not be
considered by the Board for purposes of the present appeal, unless good
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cause is shown.”). Appellants’ inadvertent omission of arguments directed
to the rejection as clearly articulated by the Examiner in the Final Office
Action is not good cause as to why Appellants’ arguments in the Reply Brief
were not raised earlier. Further, without the benefit of having the
Examiner’s response to these new arguments, we decline to consider them.
Accordingly, we sustain the Examiner’s rejection of claims 1–30.

DECISION
The Examiner’s rejection of claims 1–30 under 35 U.S.C. § 112,
second paragraph, as indefinite, is REVERSED.
The Examiner’s rejections of claims 1–30 under 35 U.S.C. § 103(a)
are 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)(1)(iv).

AFFIRMED