Ex Parte Aoki et al

Patent Trial and Appeal BoardApr 25, 2016

13484977 (P.T.A.B. Apr. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/484,977 05/31/2012 Dion K. Aoki 70243 7590 04/27/2016 NIXON PEABODY LLP 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. 247079-000461USC1 7131 EXAMINER 70 West Madison, Suite 3500 DUFFY,DAvrnw CHICAGO, IL 60602 ART UNIT PAPER NUMBER 3716 NOTIFICATION DATE DELIVERY MODE 04/27/2016 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): docketingchicago@nixonpeabody.com ipairlink@nixonpeabody.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DION K. AOKI, ALLON G. ENGLMAN, JOEL R. JAFFE, SHRIDHAR P. JOSHI, LARRY J. PACEY, and ALFRED THOMAS Appeal2014-002717 Application 13/484,977 Technology Center 3700 Before EDWARD A. BROWN, WILLIAM A. CAPP, and GEORGE R. HOSKINS, Administrative Patent Judges. HOSKINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Dion K. Aoki et al. ("Appellants") 1 appeal under 35 U.S.C. Â§ 134 from the Examiner's final decision rejecting claims 1-18, 20, and 37 in this application. The Board has jurisdiction over the appeal under 35 U.S.C. Â§ 6(b ). SUMMARY OF DECISION We AFFIRM and designate the affirmance as a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. Â§ 41.50(b). 1 The Appeal Brief identifies WMS Gaming, Inc. as the real party in interest. Appeal Br. 1. Appeal2014-002717 Application 13/484,977 CLAIMED SUBJECT MATTER Claims 1, 10, and 20 are independent. Claim 1 illustrates the claimed subject matter: 1. A gaming system comprising: an input device for receiving a wager to play a wagering game; and a display for displaying an array of symbols that indicates a randomly selected outcome of the wagering game; wherein in response to the randomly selected outcome including a winning symbol combination resulting in awarding a credit award to a player, at least one symbol that is not a part of the winning symbol combination is removed from the array and causes other symbols to move into a position of the array vacated by the at least one removed symbol, the at least one removed symbol includes a subscript symbol indicating that the symbol is to be removed, the at least one removed symbol and subscript symbol appearing in any position in the array of symbols. Appeal Br., Claims App. REJECTIONS ON APPEAL Claims 1-5, 9-18, 20, and 37 stand rejected under 35 U.S.C. Â§ 102(b) as anticipated by Van Asdale (US 2004/0023714 Al, pub. Feb. 5, 2004). Final Act. 2-5. In a new ground of rejection entered in the Answer, as an alternative to the anticipation rejection, the same claims also stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Van Asdale. Ans. 3-5. Claims 6-8 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Van Asdale. Final Act. 5. 2 Appeal2014-002717 Application 13/484,977 ANALYSIS A. Anticipation by Van Asdale Appellants argue the Examiner erred in finding Van Asdale discloses a "removed symbol includes a subscript symbol indicating that the symbol is to be removed," as recited in each independent claim. Appeal Br. 8-9; Reply Br. 10-11. 2 We agree, for the following reasons. The Examiner pertinently cited Van Asdale' s disclosure of a "sprite character when on the reel." Final Act. 2. Specifically, Van Asdale discloses "an object or sprite that moves horizontally across the screen and hits or clips one or more of the rotating symbols, so that the symbols rotate .... " Van Asdale i-f 66. The Examiner reasoned "when the sprite or object is overlapping the rotating symbol set it would be a subscript that is 'included' with the symbol" as claimed. Adv. Act. 2. Further according to the Examiner, "[t]he claims do not require that the subscript be a permanent part of the symbol or fixed to the position of the array;" rather the subscript symbol "may appear anywhere, just as Van Asdale's moving sprite or object symbol." Id. The Examiner cited Appellants' Figure 4 as showing a subscript symbol 70 being an additional image associated with a removed symbol 68 and "co-located at the same array position," not "a part of' symbol 68. Ans. 8 (further relying on Figure 7, similarly showing subscript symbol 78 and removed symbol 76). During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). 2 The Reply Brief does not include page numbers. Our citations treat the title page as page number 1, so the Reply Brief contains page numbers 1-13. 3 Appeal2014-002717 Application 13/484,977 [U]nder the broadest reasonable interpretation, the Board's construction "cannot be divorced from the specification and the record evidence," In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011 ), and "must be consistent with the one that those skilled in the art would reach," In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999). A construction that is "unreasonably broad" and which does not "reasonably reflect the plain language and disclosure" will not pass muster. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (quoting In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010)). The claims recite the "removed symbol includes a subscript symbol." We determine the Examiner applied an unreasonably broad construction of the term "includes" in light of the Specification. Figure 4 of the application shows "a peach symbol 68 includes the bomb symbol subscript 70," and Figure 7 similarly shows "a watermelon symbol 76 includes a nudge symbol subscript 78." Spec. i-fi-170, 74. That disclosure markedly differs from Van Asdale's object or sprite moving across the screen to hit or clip a removed symbol, thereby having only a fleeting association with the removed symbol. We disagree with the Examiner's determination that Van Asdale's object or sprite is "include[ d]" with the removed symbol by virtue of hitting or clipping the removed symbol. The Specification further indicates "[i]n yet other embodiments" than Figures 4 and 7, a character or object interacts with symbols to remove them from the array. Spec. i1 91. This provides further support that a subscript symbol included with a removed symbol, as shown in Figures 4 and 7, is different from character/object interaction. Thus, we do not sustain the rejection of claims 1-5, 9-18, 20, and 37, as anticipated by Van Asdale. 4 Appeal2014-002717 Application 13/484,977 B. Obviousness based on Van Asdale Independent Claims 1, 10, and 20 The Examiner found Van Asdale discloses each and every limitation of claim 1, except perhaps "a winning symbol combination that provides an award causes removal and replacement" of a symbol. Ans. 3--4. The Examiner determined it would have been obvious to modify Van Asdale to incorporate that subject matter. Id. at 4. Focusing on Van Asdale Figure 4, the Examiner found Van Asdale discloses symbol combinations that provide an award. Ans. 3 (citing Van Asdale i-f 54). The Examiner further found Van Asdale discloses a triggering symbol combination may be required to activate a rotating symbol set 100, 102, or 104, wherein the removed symbol 106 is not part of the triggering symbol combination. Ans. 3 (citing i-fi-156 and 67). The Examiner determined it would have been obvious to have selected an award-winning symbol combination as the rotation- triggering symbol combination, "as it would be merely selecting from among the limited options of symbol combinations." Id. at 4, 7. The Examiner also determined this would have been "a routine engineering decision expedient to one of ordinary skill in the gaming art." Id. at 4. Appellants argue the Examiner erred in finding Van Asdale' s removal of symbol 106 from the displayed array causes another symbol 108 to move into a position of the array vacated by the removed symbol 106, as recited in claim 1. Appeal Br. 5---6; Reply Br. 5---6. Appellants assert that finding is in error because "other symbols in the array ... do not move into the place of the replaced symbol." Appeal Br. 6. Appellants note "[t]he symbols in the array around the rotated symbols do not change and are not moved in place of' removed symbol 106. Id. Appellants assert "hidden symbols 108 are in 5 Appeal2014-002717 Application 13/484,977 the same array position as the initial symbol 106 when the initial symbol 106 is rotated" and replaced by hidden symbol 108. Id. We are not persuaded of Examiner error in this regard, because Appellants misconstrue the scope of claim 1. Claim 1 pertinently recites "other symbols ... move into a position of the array vacated by" the removed symbol. Appeal Br. Claims App. Claim 1 does not specify that the "other symbols" must come from another position in the initially displayed array of symbols. Indeed, Appellants' construction of claim 1 is inconsistent with dependent claim 9, which states the other symbols are "new symbols that were not previously in the array." Id. The Specification illustrates an embodiment of claim 9 in Figures 10-12. Spec. i-fi-181-82. A broadest reasonable interpretation of the requirement in claim 1 for "other symbols to move into" a vacated array position includes that embodiment, as well as Van Asdale' s similar rotation of symbol sets 100, 102, and 104 to replace an initially displayed symbol 106 with an initially hidden symbol 108. Appellants also argue the Examiner erred in finding Van Asdale discloses removed symbols 106 not being part of an award-winning symbol combination, as recited in claim 1. Appeal Br. 7-8; Reply Br. 6-8. Appellants assert Van Asdale removes symbols 106 "prior to determining whether the outcomes are winning outcomes and thus such symbols may occur only in winning combinations." Reply Br. 6 (citing Van Asdale, i-fi-153 and 56). Therefore, according to Appellants, "Van Asdale discloses the opposite of the claims, the symbols are changed first and then a winning symbol combination is determined," and "[ n ]othing in Van Asdale discloses first displaying a winning symbol combination and then changing a symbol that is not in the winning symbol combination." Id. at 6-7. Appellants 6 Appeal2014-002717 Application 13/484,977 assert Van Asdale paragraphs 54, 56, and 68 support their reading that replaced symbols 106 are part of an award-winning symbol combination. Id. at 7-8. We are not persuaded of Examiner error in finding Van Asdale discloses removed symbols 106 not being part of an award-winning combination. For example, Van Asdale discloses a removed symbol 106 "may . .. form part of' an award-winning symbol combination. Van Asdale i-fi-1 54 (emphasis added), 68 (payout evaluations for symbol stack 72 also apply to rotating symbol sets 100, 102, and 104). That disclosure indicates removed symbol 106 may---or may not-be part of an award-winning combination. This reading is consistent with Van Asdale' s further disclosure of a processor that determines "if there are any winning combinations" including removed symbol 106, and then "proceeds to remove" symbol 106. Id. i1 48 (emphases added). It is further consistent with Van Asdale' s disclosure that a player may choose to replace symbol 106 in the hope that a hidden symbol 108 "provides the missing piece to the winning combination." Id. i153; see also id. i157 (if symbol 106 is "a ghost symbol or no symbol," the gaming device scrolls through hidden symbols 108 "until" an award-winning symbol combination is produced). Appellants moreover argue the Examiner erred in finding Van Asdale discloses an award-winning symbol combination causing the removal of symbol 106. Reply Br. 6, 8-10. However, the obviousness rejection is premised upon Van Asdale failing to disclose that subject matter. Ans. 4. This lack of disclosure is therefore not persuasive of Examiner error. Appellants next argue, concerning the obviousness of modifying Van Asdale to select an award-winning symbol combination as a rotation- 7 Appeal2014-002717 Application 13/484,977 triggering symbol combination, that "[t]here is nothing that suggests that a triggering combination would be a winning combination." Reply Br. 10. Further according to Appellants, Van Asdale's objective is to allow a player to activate hidden stacks to obtain a winning combination, so there would be no motivation to award the player first and then trigger the rotation. Id. We are not persuaded of Examiner error in determining it would have been obvious to have selected an award-winning symbol combination as the rotation-triggering symbol combination. Van Asdale discloses that the initial, randomly-selected display of symbols may include award-winning symbol combinations (Van Asdale i-f 54), as well as symbol combinations that trigger rotation of a rotating symbol set 100, 102, or 104 (id. i-f 56). See Ans. 3. The Examiner determines that using the same symbol combination to result in both of those outcomes would have been obvious as merely selecting from among the limited options of symbol combinations, and as a routine engineering decision expedient. Id. at 4. Appellants' argument that nothing in Van Asdale suggests or motivates that result is not persuasive, because the Supreme Court has rejected the notion that the prior art must itself teach, suggest, or motivate the modification that underlies an obviousness rejection. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 407, 415--418 (2007). Further, we are not persuaded by Appellants' assertion that Van Asdale's objective is limited to allowing a player to activate hidden stacks to obtain a winning combination. Reply Br. 10. Van Asdale discloses that the gaming machine may generate multiple winning symbol combinations in one spin, with the player being awarded for each winning symbol combination. Van Asdale i-fi-154--55, 68. Thus, there is no 8 Appeal2014-002717 Application 13/484,977 inconsistency in Van Asdale with awarding the player first and then triggering a rotation to reveal whether other winning combinations may exist. The Examiner's obviousness rejection of claim 1 rests upon the finding that Van Asdale discloses removed symbol 106 "includes a subscript symbol" as an object or sprite moving across the screen to hit or clip a symbol 106. Ans. 3--4. For reasons provided above, we do not sustain that finding. Nonetheless, we determine modifying Van Asdale's symbol 106 to "include[] a subscript symbol indicating that the symbol is to be removed," as claimed, would have been obvious to a person of ordinary skill in the art from Van Asdale' s disclosure. Van Asdale indicates "[ o ]ne element of gaming devices that receives considerable attention from the game designer is the displayed symbols," as they "are the player's primary focus during the game because the symbols determine the player's outcome." Van Asdale i-f 4 (emphases added). Further according to Van Asdale, "adding variety to the standard techniques of symbol generation and display in gaming devices is desirable" and "a need exists for a different and exciting way to provide and present symbols." Id. i-f 5. These art-recognized design incentives would have led a person of ordinary skill in the art to modify Van Asdale' s symbol 106 to include a feature to inform the player that the symbol 106 may or will be replaced, because the symbols are the player's primary focus. See also Van Asdale i-f 44 ("the gaming device can visually or otherwise inform the player of the hidden symbols or the potential for hidden symbols"). Such a feature would correspond to the broadly claimed "subscript" in claim 1. 9 Appeal2014-002717 Application 13/484,977 For the foregoing reasons, we sustain the rejection of claim 1 as unpatentable over Van Asdale. The analysis provided for claim 1 applies equally well to the other independent claims 10 and 20, which Appellants do not argue separately. Reply Br. 5. We denominate our affirmance as to claims 1, 10, and 20 being unpatentable over Van Asdale as a NEW GROUND OF REJECTION pursuant to 37 C.F.R. Â§ 41.50(b), because our analysis relies upon facts and reasoning the Examiner did not use. Dependent Claims 2-5, 9, 11-18, and 37 Appellants state "claims 1-5, 9-18, 20 and 37 may be considered as one group that will stand or fall together with regard to the ... obviousness rejection based on Van Asdale." Reply Br. 5. Pursuant to 37 C.F.R. Â§ 41.37(c)(l)(iv), therefore, dependent claims 2-5, 9, 11-18, and 37 fall with claim 1. No inference should be drawn from our decision not to make a new ground of rejection of dependent claims 2-5, 9, 11-18, and 37. Should there be further prosecution before the Examiner, we leave to the Examiner to determine whether to make a new ground of rejection of any other claims. 3 Dependent Claims 6--8 Claim 6 depends from claim 1 to add "the other symbols cascade into the position of the array vacated by the removed symbol." Appeal Br. Claims App. (emphasis added). The Examiner finds Van Asdale fails to 3 See 37 C.F.R. Â§ 41.50(b); see also Manual of Patent Examining Procedure (MPEP), 8th ed., rev. 8, July 2010, Â§ 1213.02. Under 37 C.F.R. Â§ 41.50(b), the Board may, in its decision, make a new rejection of one or more of any of the claims pending in the case. Because the exercise of authority under 37 C.F.R. Â§ 41.50(b) is discretionary, no inference should be drawn from the decision to exercise that discretion with respect to some but not all of the claims on appeal. 10 Appeal2014-002717 Application 13/484,977 disclose the limitation of claim 6, because Van Asdale Figure 4 "[r]ather ... discloses the symbols rotate horizontally into view." Final Act. 5 (citing Van Asdale i-f 65). The Examiner determines it would have been obvious "to have the symbols move in a downward direction instead of left to right" (and thereby "cascade" as claimed), because "this is merely visual aesthetic feature unrelated to the underlying game and would have been a matter of obvious design choice." Id. Appellants respond that the "cascade" game dynamic specified in claim 6 "requires different symbols from elsewhere in the array to replace the removed symbols." Appeal Br. 9. In Appellants' view, the downward symbol motion referenced by the Examiner is not relevant to claim 6, because the replacement symbols are not taken from another position in the displayed array. Id. at 9-10. Appellants' claim construction of the term "cascade" relies on Specification paragraph 68, which states: "Generally, in a cascade, a symbol in the primary display 14 disappears, and a symbol that is adjacent to the disappearing symbol moves and fills in the position vacated by the disappearing symbol." Id. at 10 (emphasis added). Appellants also rely on several other disclosures in the Specification describing a "cascade" in connection with the symbol above the replaced symbol in the array falling down into the array position vacated by the removed symbol. Reply Br. 12. We must be cautious against reading limitations into a claim from a preferred embodiment of a specification, even if it is the only embodiment described, absent a clear disclaimer. In re Am. A cad. of Sci. Tech Ctr., 3 67 F.3d at 1369. In this case, it appears that the only descriptions of a "cascade" in Appellants' Specification relate to a symbol above the replaced 11 Appeal2014-002717 Application 13/484,977 symbol in the displayed array falling down into the vacated array position. We, nonetheless, decline to read the term "cascade" to be limited to existing symbols in the displayed array falling down into the vacated position, thereby excluding new symbols "cascading" into the vacated position. Instead, we agree with the Examiner that a broadest reasonable construction of "cascade" consistent with the Specification includes the removed symbol being replaced by a new symbol in the array such that they both "move in a downward direction. "4 Final Act. 5. For the foregoing reasons, we sustain the rejection of claim 6 as unpatentable over Van Asdale. However, we denominate our affirmance as a NEW GROUND OF REJECTION pursuant to 37 C.F.R. Â§ 41.50(b), because our analysis of the parent claim 1 relies upon facts and reasoning the Examiner did not use. Appellants state "claims 6-8 are a ... group that will stand or fall together with regard to the obviousness rejection based on Van Asdale." Appeal Br. 4; Reply Br. 5. Pursuant to 37 C.F.R. Â§ 41.37(c)(l)(iv), therefore, claims 7 and 8 fall with claim 6. No inference should be drawn from our decision not to make a new ground of rejection of claim 7 (which depends from claim 6) and claim 8 (which depends from claim 7). Should 4 Claim 7 depends from claim 6 to add "wherein the other symbols cascade vertically in the array," and claim 8 depends from claim 7 to add "wherein the other symbols cascade in a downward direction in the array." Appeal Br. Claims App. (emphases added). Although claims 7 and 8 fall with claim 6 and are not separately argued, Appellants note claims 7 and 8 differ from claim 6 by "specify[ing] the locations on the array where the symbols are cascaded from." Appeal Br. 9; Reply Br. 11. 12 Appeal2014-002717 Application 13/484,977 there be further prosecution before the Examiner, we leave to the Examiner to determine whether to make a new ground of rejection of any other claims. DECISION The rejection of claims 1-5, 9-18, 20, and 37 as anticipated by Van Asdale is reversed. The rejection of claims 1-18, 20, and 37 as unpatentable over Van Asdale is affirmed. For the reasons discussed above, we denominate our affirmance as a NEW GROUND OF REJECTION pursuant to 37 C.F.R. Â§ 41.50(b). Section 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. ... (2) Request rehearing. Request that the proceeding be reheard underÂ§ 41.52 by the Board upon the same record .... 37 C.F.R. Â§ 41.50(b)(l}-(2). Should Appellants elect to prosecute further before the Examiner pursuant to 37 C.F.R. Â§ 41.50(b)(l), in order to preserve the right to seek review under 35 U.S.C. Â§ 141 orÂ§ 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the 13 Appeal2014-002717 Application 13/484,977 prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. If Appellants elect prosecution before the Examiner and this does not result in allowance of the application, abandonment, or a second appeal, this case should be returned to the Patent Trial and Appeal Board for Final Action on the affirmed rejection, including any timely request for rehearing thereof. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED; 37 C.F.R. Â§ 41.50(b) 14