14324967 (P.T.A.B. Jun. 12, 2017)

Ex Parte Ogilvie et al

Patent Trial and Appeal BoardJun 12, 2017

14324967 (P.T.A.B. Jun. 12, 2017)

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. 14/324,967 07/07/2014 John W. Ogilvie 6071.2.3 9460 23484 7590 John Ogilvie 2148 E. 11270 S. Sandy, UT 84092 06/14/2017 EXAMINER MENDIRATTA, VISHU K ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 06/14/2017 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): j ohn @ Ogil vieLawFirm .com j ohnw ogilvie @ gmail .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN W. OGILVIE and KRISTY L. OGILVIE Appeal 2015-004728 Application 14/324,967 Technology Center 3700 Before EDWARD A. BROWN, WILLIAM A. CAPP, and ARTHUR M. PESLAK, Administrative Patent Judges. PESLAK, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Appellants filed a Request for Rehearing (“Request” or “Req.”) in response to our Decision of March 15, 2017 (“Dec.”). We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2015-004728 Application 14/324,967 OPINION A request for rehearing “must state with particularity the points believed to have been misapprehended or overlooked by the Board.” 37 C.F.R. § 41.52(a)(1). Appellants express disagreement with the result of the Board’s decision by contending the Board misapplied the holding in In re Smith, 815 F.3d 816, 819 (Fed. Cir. 2016) and misconstrued the claims.1 Req. 1. Appellants first contend, based on Exhibits C and D attached to the Appeal Brief, that the claimed “deck of game modification cards” recited in claim 2, “includes a new and original deck of cards.” Req. 1. We decided the appeal as to the rejection of claims 1—20 under 35 U.S.C. § 101 as directed to nonstatutory subject matter based on selecting claim 1 as representative of claims 1—20 because, in the Appeal Brief, Appellants argued all claims as a group. See Dec. 4. This contention as to claim 2 is, thus, improper because it was not raised in the Appeal Brief. See Ex parte Frye, 94 USPQ2d 1072, 1076 (BPAI)(2010) (precedential) (holding that the Board reviews a rejection for error “based upon the issues identified by appellant, and in light of the arguments and evidence produced thereon”). Appellants next contend that because the claims recite “innovative game modification equipment” that are not standard playing cards, the claims distinguish from the claims in In re Smith which related “to a wagering game utilizing real or virtual standard playing cards.” Req. 1—2 1 Appellants did not offer a proposed claim construction in the Appeal Brief or Reply Brief. See Appeal Br. 9—14; Reply Brief 1—2. Any new argument based on an alleged misconstruction of the claims is thus untimely. See 37 C.F.R. §41.52 (a)(1). 2 Appeal 2015-004728 Application 14/324,967 (citing In re Smith, 815 F.3d at 817). In support of this argument, Appellants refer us to Exhibits C and D, which are not part of Appellants’ original Specification and drawings. See Spec, passim. In addition, the Patent Office records of the prosecution of Appellants’ application do not show that Exhibits C and D were submitted with an Affidavit or Declaration under 37 C.F.R. § 1.131. Exhibits C and D, thus, are not part of the evidentiary record. Additionally, Appellants did not refer to Exhibits C and D in the Appeal Brief or Reply Brief in connection with the rejection under 35 U.S.C. § 101. See Appeal Br. 9—14; Reply Brief 1—2. Thus, any argument based on Exhibits C and D is untimely. See 37 C.F.R. § 41.52 (a)(1). As stated in the Decision, the game modification instructions recited in claim 1 are directed to conventional uses of conventional game board items. Dec. 6. Appellants next contend that the claims in Smith were directed to a wagering game which the Federal Circuit equated to a fundamental economic practice and, hence, an abstract idea. Req. 2. Appellants argue that claim 1 is not directed to an abstract idea because claim 1 is not directed to a wagering game. Even assuming claim 1 is not directed to a wagering game, the Federal Circuit in Smith explained: we conclude that Applicants’ claims directed to rules for conducting a wagering game, compare to other “fundamental economic practice[s]” found abstract by the Supreme Court. As the Board reasoned here, “[a] wagering game is effectively a method of exchanging and resolving financial obligations based on probabilities created during the distribution of the cards. In Alice, the Supreme Court held a method of exchanging financial obligations was drawn to an abstract idea. 815 F. 3d at 818—819 (citations omitted). Accordingly, the court determined that a wagering game is an example of a fundamental economic practice. 3 Appeal 2015-004728 Application 14/324,967 The court did not determine that a fundamental economic practice must be a wagering game. Applying Smith's reasoning to claim 1, among the game modification instructions recited are “the bank taking back half of a player’s money,” “the bank doubling a player’s money,” “the bank taking back a player’s house or hotel,” and “allowing a player to move to any property the player chooses and then buy it.” We construe all of these limitations as relating to “exchanging financial obligations” between the bank and a player. Consequently, regardless of whether Appellants claims are directed to a wagering game between the players, claim 1, like the claims in Smith, is directed to “exchanging financial obligations,” an abstract idea. This contention, thus, does not apprise us of any points that were misapprehended or overlooked. Appellants’ final contention is that the claims in Smith were method claims while Appellants’ claims are equipment claims. Req. 2. The Board did not overlook or misapprehend that claim 1 is directed to “Game Modification Equipment.” See Dec. 2. Appellants provide no persuasive reason why Smith does not apply as well to the subject matter of claim 1. DECISION ON REQUEST FOR REHEARING Upon consideration of Appellants’ Request and for the reasons provided supra, it is ordered that the Decision shall not be modified. REQUEST DENIED 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). DENIED 4