Ex Parte Davis et al

Patent Trials and Appeals BoardMar 26, 2019

14103247 - (D) (P.T.A.B. Mar. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/103,247 12/11/2013 29159 7590 03/28/2019 Neal, Gerber & Eisenberg LLP (IGT) 2 N. LaSalle Street Suite 1700 Chicago, IL 60602-3801 FIRST NAMED INVENTOR Dwayne A. Davis 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. 025094-7421 I P001384-003 7057 EXAMINER DUFFY, DAVID W ART UNIT PAPER NUMBER 3716 NOTIFICATION DATE DELIVERY MODE 03/28/2019 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): amasia@ngelaw.com patents@igt.com ipusmail@ngelaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DWAYNE A. DA VIS and PALMER A. DZURELLA 1 Appeal2017-005329 Application 14/103,247 Technology Center 3700 Before JILL D. HILL, FRANCES L. IPPOLITO, and NATHAN A. ENGELS, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Dwayne A. Davis and Palmer A. Dzurella ("Appellants") appeal under 35 U.S.C. Â§ 134(a) from the Examiner's non-final decision rejecting claims 1-23. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. BACKGROUND Independent claims 1, 7, and 15 are pending. Independent claim 1, reproduced below, illustrates the claimed invention. 1. A gaming system comprising: a housing; 1 Appellants identify the real party in interest as IGT. Appeal Br. 2. Appeal2017-005329 Application 14/103,247 at least one display device supported by the housing; a plurality of input devices supported by the housing, said plurality of input devices including: (i) an acceptor, and (ii) a cashout device; at least one processor; and at least one memory device which stores a plurality of instructions which when executed by the at least one processor, cause the at least one processor to operate with the at least one display device and the plurality of input devices to: (a) if a physical item is received via the acceptor, establish a credit balance based, at least in part, on a monetary value associated with the received physical item, wherein said physical item is selected from the group consisting of: a ticket associated with the monetary value and a unit of currency, (b) for each of a first predetermined quantity of at least one play of a first game: (i) determine, via the at least one processor, a first game symbol combination for a player, and (ii) display, via the at least one display device, any award associated with the determined first game symbol combination, ( c) for each of the first predetermined quantity of at least one play of a second game: (i) determine, via the at least one processor, a second game symbol combination for an opponent, wherein said generation occurs independent of any generated first game symbol combination, and (ii) display, via the at least one display device, any award associated with the determined second game symbol combination, ( d) display, via the at least one display device, a first competition game action based on at least one of the generated first game symbol combinations for the player, ( e) display, via the at least one display device, a second competition game action based on at least one of 2 Appeal2017-005329 Application 14/103,247 the generated second game symbol combinations for the opponent, ( f) after the first predetermined quantity of at least one play of the first game and after the first predetermined quantity of at least one play of the second game: (i) determine, via the at least one processor, a competition outcome based on the first competition game action and the second competition game action, and (ii) provide the player any award associated with the determined competition outcome, and (g) if a cashout input is received via the cashout device, cause an initiation of any payout associated with the credit balance. Appeal Br. 44--45 (Claims App'x.). REJECTIONS I. Claims 1-23 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Kusuda (US 2008/0287175 Al, pub. Nov. 20, 2008) and Callan (US 6,220,595 B 1, iss. Apr. 24, 2001) or Civilization IV, Manual (2005) available at http://store.steampowered.com/manual/3900. Non-Final Act. 2. II. Claim 14 stands rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Kusuda, Callan, and Tessmer (US 2003/0125103 Al, pub. July 3, 2003). Non-Final Act. 7. ANALYSIS Rejection I: Claims 1-23 The Examiner finds that Kusuda discloses, inter alia: a first game having a first quantity of play and a first game symbol for a player, the first game symbol having an associated award; a second game having first 3 Appeal2017-005329 Application 14/103,247 quantity of play and a second game symbol for an opponent, the second game symbol having an associated award; a first competition game action based on the first game symbol ("spin outcomes used to determine attacking by first player"); a second competition game action based on the second game symbol ("counter attack"); determining a competition outcome based on the first competition game action and the second competition game action; and providing any award associated with the determined competition outcome. Non-Final Act. 2--4 (citing Kusuda ,r,r 118,232,234,235). The Examiner finds that Kusuda also discloses the game being "limited by time," but Kusuda does not disclose the game being limited by "a predetermine quantity of plays," or having its "determine" step occur "after the predetermined quantity of plays." Id. at 4 (citing Kusuda ,r 122). The Examiner finds, however, that Callan discloses "the well-known concept of limiting the play of a game by a goal, an amount of time, or a predetermined number of turns." Id. (citing Callan 4: 12-19). The Examiner concludes that one skilled in the art "would have recognized the advantages of limiting a game to a set number of turns or time and determining a winner at that point ... to ensure that the game did not go on for too long and thus delay further rounds of play." Id. The Examiner further concludes that it would have been obvious to one skilled in the art to modify Kusuda with Callan to limit play to a predetermined number of plays/turns and make a "determination of the winner after that point ... to ensure the game did not last too long and delay further rounds of play." Id. Under an alternative theory, the Examiner finds that Civilization IV discloses a tum-based multiplayer game, wherein game victory is obtained by the first of ( 1) defeating "opponents in combat or achieving the most 4 Appeal2017-005329 Application 14/103,247 success" or highest points, or (2) a "predetermined number of turns." Id. at 4--5 (citing Civilization IV pp. 105-106, 172-173). The Examiner concludes that one skilled in the art "would have recognized the advantages of allowing a player to win by combat while still providing an upper limit on the length of a game so that [the game] does not drag on indefinitely and thus risk boring the user." Id. at 5. The Examiner further concludes that it would have been obvious to one skilled in the art to limit Kusuda with Civilization IV' s "predetermined number of turns with a score determination [ after the predetermined number of turns] in addition to the ability to win by defeating the opponent ... to allow the players to compete while still ensuring that games ended in a reasonable amount of time." Id. at 5. Appellants argue the claims subject to the first ground of rejection as a group. We select claim 1 as the representative claim for the group, and the remaining claims subject to the first ground of rejection stand or fall with claim 1. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). Principle of Operation and Intended Purpose of Kusuda Appellants initially argue that "modifying Kusuda with Callan ( or Civilization in the alterative) changes the principal [ of] operation of Kusuda and results in Kusuda being unsatisfactory for its intended purpose." Appeal Br. 29. According to Appellants, Kusuda discloses that "the competition game continues until a player or opponent is defeated" such that, if Kusuda's game is modified "such that a player is defeated after a predetermined number of turns, the principle of operation of Kusuda is improperly changed and Kusuda is rendered unsatisfactory for its intended purpose." Id. at 30- 33. 5 Appeal2017-005329 Application 14/103,247 Regarding suitability for Kusuda's intended purpose, the Examiner responds that Callan and Civilization disclose "[a] determination to end a round, fight, competition or game between a player and opponents ... when a player has defeated an opponent or after some number of turns." Ans. 2. Civilization IV provides "multiple paths to victory and whatever comes first ends the game," be it (1) "a time victory, whereby the player with the highest score at the end of the tum wins and defeats their opponents," or (2) "a conquest victory for defeating their rivals or opponents, prior to the time limit." Id. at 2-3 (citing Civilization IV p. 105). According to the Examiner, "[t]his operation is similar to boxing where the match is over when one fighter is knocked out or after some number of rounds a decision is made based on the actions in the match," and "is present in many other fighting games, such as numerous Street Fighter games." Id. Appellants reply that the Examiner's "reasoning is flawed because, contrary to the Examiner's assertion otherwise, adding an upper limit to the number of turns of play in Kusuda represents a mechanic that is repeatedly taught against in Kusuda." Reply Br. 3. Appellants further contend that the Examiner's reasoning utilizes "improper hindsight" and disregards "the express teachings of Kusuda and the ramifications [ of the proposed] modification." Id. We address Appellants "teaching away" argument below. Also, we note that "[a]ny judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper." In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). 6 Appeal2017-005329 Application 14/103,247 Specifically, regarding changing the principle of operation of Kusuda, the Examiner responds that the proposed combination "maintain[ s] the ability to win by defeating an opponent" as long as defeat occurs before a tum limit is reached, and still providing a score determination at the time of the tum limit to determine the outcome of the game. Ans. 4--5. According to the Examiner, "merely adding an upper limit to the number of turns of play in Kusuda does not destroy its principle [ ofJ operation or render it non- functional," rather, "such a combination allows for the game to proceed as normal while providing a definite end point to avoid a game dragging on." Id. at 5. Appellants proffer no formal definition or explanation of Kusuda's principle of operation or intended purpose. Appellants perhaps are contending that Kusuda's intended purpose and principle of operation are both limited to a competition game that continues until a player or opponent is defeated. Appeal Br. 30-32. We find support in Kusuda for this being a proper principle of operation of intended purpose. While the embodiments disclosed in Kusuda continue until one player is defeated, such an outcome is not disclosed by Kusuda to be a fundamental principle or purpose. Rather, Kusuda states that it is an object of the present invention to provide a multiplayer competition game device which can realize a high rendering effect by varying the physical strength value of a character being attacked according to the type and value of the offensive of an opponent character to determine the winner or the loser according to the physical strength value, as well as drastically changing the images of the characters. It is also an object of the present invention to provide a game machine or a game program which can display the motion of virtual reels of a video slot game machine in a realistic manner and display the 7 Appeal2017-005329 Application 14/103,247 content of the lottery table being used appropriately on a display screen with a limited space. It is also an object of the present invention to provide a game machine or a game program which can change the constitution of the dividend list for each of the games. It is also an object of the present invention to provide a game machine or a game program which can continue the multiplayer competition game regardless of the amount of the credit left. It is also an object of the present invention to provide a game machine or a game program which can perform a multiplayer competition game having a high strategic characteristic such as developing tactics according to the opponent's behavior. Kudusa ,r 13. Indeed, Kusuda does not disclose any importance of continuing game play until a player or opponent is defeated. For this reason, we are not persuaded by Appellants' arguments regarding the proposed combination of references changing the principle of operation of Kusuda or being contrary to the intended purpose of Kusuda. Teaching Away Appellants also argue that "modifying Kusuda as suggested by the Examiner would result in certain instances where a player or opponent is not defeated within the predetermined quantity of symbol generations based on the symbols randomly generated during such plays," one skilled in the art "when reading Kusuda in its entirety, would quickly recognize that Kusuda teaches away from the Examiner's proposed modifications." Appeal Br. 33. Regarding the Examiner's finding that Kusuda does not discourage having a timer or counter to end games, Appellants argue that "the lack of an express teaching away does not provide an untethered authorization to combine references independent of the ramifications of such a combination." Id. at 34. 8 Appeal2017-005329 Application 14/103,247 Regarding teaching away, "[t]he prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed .... " In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Because Kusuda does not "criticize, discredit, or otherwise discourage" limiting a competition to a certain number of turns, Kusuda does not teach away from the Examiner's proposed combination with Callan or Civilization IV. We are not persuaded by Appellants' argument. Combination of Kusuda and Callan Appellants argue that the Examiner's proposed combination of Kusuda and Callan fails to disclose a limitation recited in independent claims 1, 7, and 15. Appeal Br. 36. According to Appellants, because Callan's game ends (1) at the end of a predetermined period, or (2) when each player has had a predetermined number of turns, Callan does not include any further outcome determinations after the end of its game. Id. That is, once the game of Callan concludes, no outcome determinations occur until the beginning of the next game. Thus, Appellants contend, Callan does not "determin[ e] a competition outcome based on the first competition game action and the second competition game action," or "provid[ e] the player any award associated with the determined competition outcome." Id. The Examiner responds that Appellants' arguments are based on an incorrect assumption that "the Examiner is replacing the mechanism for winning in Kusuda rather than adding to it." Ans. 3. To the contrary, the Examiner is applying the teaching of Callan or Civilization IV to the game 9 Appeal2017-005329 Application 14/103,247 of Kusuda to increase the available options to end a game. Id. Thus, when Kusuda is combined with Callan or Civilization IV, the player can (1) "play until they win lose or quit, e.g. chess, tennis, Monopoly, track and field events; play for an amount of time with a score determination at the end of time, e.g. football, hockey, 24 Hours of Le Mans;" (2) "play for a number of rounds, e.g. baseball;" or (3) "combinations of the these options, e.g. timed chess, boxing, mixed martial arts." Id. at 3--4. Thus, Kusuda discloses one option and Callan and Civilization IV teach that more than one option may be used, and ending the game at the first occurring outcome. Id. at 4. The Examiner further responds that Callan discloses that "the object of the game is to possess the highest total value of property-type playing pieces (3 :45-46, rule 1) and that the game may end when one player has acquired all the pieces or after a number of turns (4:12-18, rule 5)." Ans. 5. According to the Examiner, "[i]t is implicit in Callan that the value of the property-type playing pieces ... would ... determine the winner after the number of turns," and determining the winner would occur "after the number of plays by each of the player and the opponent and the associated 'game actions' or moves by the players during the game." Id. at 5---6. Appellants reply that "while Callan includes determining a winner after a predetermined number of playing turns, such playing turns are not plays of a game," because a "play" of Callan' s game "includes a quantity of playing turns wherein for each playing tum, either a number of spaces for movement ... or a change of a variable rule is determined," such that if each player tum is a play of the game, Callan determines "no outcome or award pertaining to the acquisition of playing pieces ... after each playing tum," such that Callan does not cure the deficiencies of Kusuda. Reply Br. 4. 10 Appeal2017-005329 Application 14/103,247 According to Appellants, if "each playing tum of Callan is a play of a game, then Callan lacks any determination of an outcome ( associated with any awards) for each play of the game," and if "the playing turns of Callan [are] part of a play of a game ... , then Callan lacks any outcome determinations after the end of the play of the game." Id. Appellants' argument is not persuasive, because the Examiner does not propose defining each of Callan's turns as a game play. Rather, the Examiner utilizes Callan' s teaching of limiting play to a predetermined quantity of turns to modify Kusuda, making a "determination of the winner after that point ... to ensure the game did not last too long and delay further rounds of play." Non-Final Act. 4. We discern no error in this combination, and we likewise discern no limitations not met by the proposed combination. Combination of Kusuda and Civilization IV Similar to above, Appellants argue that the Examiner's proposed combination of Kusuda and Civilization IV fails to disclose a limitation recited in independent claims 1, 7, and 15. Appeal Br. 38. According to Appellants, because the Civilization IV game ends at a specific tum, Civilization IV does not include any further victory (outcome) determinations after the end of its game. Id. According to Appellants, "Civilization IV specifically states that 'it is impossible to win another victory type after victory or defeat has initially taken place."' Id. Thus, Appellants contend that Civilization IV does not "determin[ e] a competition outcome based on the first competition game action and the second competition game action," or "provid[e] the player any award associated with the determined competition outcome." Id. 11 Appeal2017-005329 Application 14/103,247 Regarding Civilization IV, the Examiner clarifies that, after the tum limit is reached, "[t]he Civilization with the highest score at the end of that tum wins." Ans. 6 (citing Civilization IV p. 105, Time Victory). The Examiner contends that Civilization IV "explicitly determin[ es] the competition outcome based on the competition game actions" after at least one play of the game, the game actions including "player actions during game play that result in the score changing." Id. at 6. The Examiner notes that "Kusuda already discloses providing the player with any award" at the competition's end. Id. (citing Kusuda ,r,r 118 and 235). Appellants reply that, while Civilization IV "includes a game that ends at a specific tum, once the game of Civilization concludes, no additional victory determinations occur," such that "no outcomes are determined after the tum limit is reached." Reply Br. 5. Appellants' argument is not persuasive because, as the Examiner explains, Kusuda already discloses providing the player with an award at the competition's end. Ans. 6 ( citing Kusuda ,r,r 118 and 23 5). The Examiner is not replacing Kusuda's mechanism for winning, the Examiner is adding to it. Ans. 3. For the reasons set forth above, we sustain rejection I. Rejection II: Dependent Claim 14 Claim 14 depends indirectly from independent claim 7. Appellants make no argument that claim 14 would be patentable over Kusuda, Callan, and Tessmer, if claim 7 is not patentable over Kusuda and Callan. For the reasons explained above, we sustain Rejection II. 12 Appeal2017-005329 Application 14/103,247 DECISION We AFFIRM the rejection of claims 1-23 under 35 U.S.C. Â§ 103 as unpatentable over Kusuda and Callan or Civilization IV. We AFFIRM the rejection of claim 14 under 35 U.S.C. Â§ 103 as unpatentable over Kusuda, Callan, and Tessmer. 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 13