Ex Parte Englman

Patent Trial and Appeal BoardNov 13, 2013

10077667 (P.T.A.B. Nov. 13, 2013)

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. 10/077,667 02/15/2002 Allon G. Englman 247079-000127USPT 2996 70243 7590 11/14/2013 NIXON PEABODY LLP 300 S. Riverside Plaza 16th Floor CHICAGO, IL 60606 EXAMINER HSU, RYAN ART UNIT PAPER NUMBER 3716 MAIL DATE DELIVERY MODE 11/14/2013 PAPERPAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ALLON G. ENGLMAN ____________________ Appeal 2011-007511 Application 10/077,667 Technology Center 3700 ____________________ Before EDWARD A. BROWN, PATRICK R. SCANLON, and JILL D. HILL, Administrative Patent Judges. SCANLON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-007511 Application 10/077,667 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-7, 9-15, 17, 18, 25-31, 33, 35, 37-39, and 41-52. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. THE INVENTION Appellant’s claimed invention relates to methods of conducting a wagering game and a gaming machine. Claims 1, 25, 48, and 51 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A method of conducting a wagering game on a gaming machine, the method comprising: receiving a single wager from a player to purchase a series of plays of a basic portion of the game, the series of plays comprising a fixed number of plays of the wagering game, the single wager being allocated to the entire series of plays and not being associated with any specific one of the series of plays, the single wager being an amount made by any player such that different players pay the same amount; in response to the single wager, providing the player with the series of plays of the basic portion of the wagering game, the wagering game including a plurality of outcomes, the plurality of outcomes including a plurality of winning outcomes corresponding to first awards to be awarded to the player, the plurality of winning outcomes including different winning outcomes having corresponding different ones of the first awards; Appeal 2011-007511 Application 10/077,667 3 randomly selecting at least one outcome from the plurality of outcomes for each play in the series of plays of the basic portion of the wagering game; in response to the randomly selected outcome being one of the plurality of different winning outcomes in anyone of the plays, providing the player with the first award corresponding to the randomly selected outcome; and providing an accumulation feature that accumulates a game-play element of the game over a plurality of the plays in the series of plays of the basic portion of the wagering game, the accumulated game-play element providing a second award to the player in response to a predetermined criterion being met, the accumulation feature is reset to include no accumulated game-play elements prior to each purchased series of plays. REFERENCES The Examiner relies upon the following prior art references: Feinberg Duhamel Osawa US 5,851,010 US 6,416,406 B1 US 6,857,958 B2 Dec. 22, 1998 Jul. 9, 2002 Feb. 22, 2005 REJECTIONS The following rejections are before us on appeal: I. Claim 37 stands rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and Appeal 2011-007511 Application 10/077,667 4 distinctly claim the subject matter which Appellant regards as the invention. Ans. 3, 8-10.1 II. Claims 1-7, 9-15, 17, 25-31, 33, 35, 37-39, 41, and 43-52 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Osawa and Feinberg.2 Ans. 3. III. Claims 18 and 42 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Osawa, Feinberg, and Duhamel. Ans. 8. ANALYSIS Rejection I The Examiner has entered a new ground of rejection rejecting claim 37 as indefinite under 35 U.S.C. § 112, second paragraph because it contains improper means-plus-function language. Ans. 3, 8-10. In response, Appellant acquiesces “to the Board’s sua sponte dismissal of the appeal of dependent claim 37.” Reply Br. 2.3 However, the Board did not dismiss the appeal of dependent claim 37. Rather, in the Order Remanding Appeal to Examiner dated June 3, 2010, the present application was remanded to the Examiner pursuant to 37 C.F.R. § 41.35(c) for consideration of whether 1 References to “Ans.” herein refer to the Examiner’s Answer dated January 31, 2011, which replaced the prior Examiner’s Answers dated August 6, 2009 and October 5, 2009. 2 In the statement of this ground of rejection, the Examiner lists claims 25 and 31 rather than claims 25-31. Ans. 3. We take this to be a typographical error and believe that the Examiner intended to include claims 26-30. See Ans. 5-6 (referring to claims 26-30). 3 We note that Appellant has incorrectly identified the two pages of the Reply Brief as “Page 2 of 2” and “Page 3 of 2.” We will refer to these pages as page 1 and page 2, respectively. Appeal 2011-007511 Application 10/077,667 5 claim 37 and the claims depending therefrom met the requirements of 35 U.S.C. § 112, second paragraph. Accordingly, the appeal of claim 37 has not been dismissed. As Appellant presents no argument against the Examiner’s rejection of claim 37 under 35 U.S.C. § 112, second paragraph, we summarily sustain this ground of rejection. See Manual of Patent Examining Procedure (MPEP) § 1205.02 (8th ed., Rev. 9, August 2012) (“If a ground of rejection stated by the examiner is not addressed in appellant’s brief, that ground of rejection will be summarily sustained by the Board.”). We agree with Appellant that claims 38 and 39 may also be indefinite because of their dependence from claim 37. Reply Br. 1. Should there be further prosecution of this application, we recommend that the Examiner consider whether claims 38 and 39 are indefinite under 35 U.S.C. § 112, second paragraph. Rejection II Claims 1-7, 9-15, 17, and 43-52 The Examiner finds that Osawa discloses a method of conducting a game that includes an accumulation feature that “is reset to include no accumulated game-play elements at the start of a player entering into the game” but does not disclose allowing “a player to purchase a series of plays of a wagering game with a single wager.” Ans. 4. The Examiner further finds that Feinberg discloses a method of conducting a game that includes allowing a player to purchase a series of plays for a single wager (i.e., “block wagering”) and concludes it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the method of Osawa to include allowing a player to purchase a series of plays with a single wager as taught by Feinberg. Ans. 4-5. Appeal 2011-007511 Application 10/077,667 6 Appellant argues that “the reset function in Osawa occurs after the accumulated feature reaches a certain threshold,” not prior to each purchased series of plays as required by claim 1. App. Br. 8.4 We agree. Osawa discloses a principal game and a secondary game that is executed separately from the principal game when the principal game results in a predetermined combination of symbols being displayed. Osawa, col. 8, ll. 38-42; col. 9, ll. 33-46. The secondary game involves accumulating certain symbols (e.g., “7,” “3BAR,” and “2BAR”) whenever three of the same symbol appear in the winning line 14 of display windows 3L, 3C, 3R. Id. at col. 10, l. 40 – col. 11, l. 6. Osawa discloses resetting the accumulated symbols after the secondary game is won or completed. Id. at col. 4, ll. 6-9; col. 10, ll. 13-17; col. 11, ll. 33-35, 50-52; fig. 5. Osawa thus does not disclose the claimed step of resetting the accumulation feature prior to each wager. As such, the combination of Osawa and Feinberg proposed by the Examiner (in which Feinberg is relied on only for disclosing purchasing a series of plays with a single wager as discussed supra) does not include resetting to include no accumulated game- play elements prior to each purchase of a series of plays, as required by claims 1, 48 and 51. The Examiner’s finding that Osawa’s reset operation “is adaptable for all circumstances” and “could be used to reset all areas at any point in the game” (Ans. 11) is not relevant in this instance where the claims positively recite a method step that is not taught or suggested by the prior art references taken alone or in combination. 4 As used herein, “App. Br.” refers to the Amended Appeal Brief filed April 17, 2009. Appeal 2011-007511 Application 10/077,667 7 Because the Examiner has not shown by a preponderance of the evidence that the claim limitation of resetting the accumulation feature to include no accumulated game-play elements prior to each purchased series of plays is taught or would have been obvious, we do not sustain the rejection of claims 1, 48 and 51 and their dependent claims 2-7, 9-15, 17, 43-47, 49, 50, and 52. Claims 25-31, 33, 35, 37-39, and 415 Claim 25 calls for a “gaming machine for conducting a wagering game” including, inter alia, an accumulation feature that “is reset to include no accumulated elements prior to each purchased series of plays.” Appellant again argues that “the reset function in Osawa occurs after the accumulated feature reaches a certain threshold,” not prior to each purchased series of plays as claimed. App. Br. 16-17. We do not find this argument persuasive with respect to claim 25, which is an apparatus claim. It is well established that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. See, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). The accumulation feature of claim 25 is recited using language that defines the gaming machine by what it does rather than by what it is and is thus a functional—not structural—limitation. See In re Swinehart, 439 F.2d 210, 212 (CCPA 1971). A prior art apparatus that is capable of performing the claimed function satisfies the functional 5 Appellant argues claims 25-31, 33, 35, 37-39, and 41 as a group. App. Br. 6, 16-20. We select independent claim 25 as the representative claim in accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 26-31, 33, 35, 37-39, and 41 stand or fall with claim 25. Appeal 2011-007511 Application 10/077,667 8 limitations in an apparatus claim. Schreiber at 1478; see also Swinehart, at 212-13 (“[T]he mere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art.”). As noted supra, the Examiner finds that Osawa’s reset operation “could be used to reset all areas at any point in the game.” Ans. 11 (emphasis added). As such, Osawa discloses a gaming machine that is capable of resetting the accumulation feature to include no accumulated game-play elements prior to each purchased series of plays. Appellant does not refute that Osawa is capable of resetting the accumulation feature to include no accumulated game-play elements prior to each purchased series of plays. We accordingly agree with the Examiner that Osawa satisfies this functional limitation of claim 25. Appellant also argues that Feinberg and Osawa teach away from their combination because Feinberg’s stated objective is for a simple game format, while Osawa desires to avoid simple, monotonous wagering games. App. Br. 10-13, 17-18. Appellant specifically asserts “[t]he skilled artisan, after reading Osawa, would have discarded Feinberg as being one of a genre of ‘simple’ wagering games that Osawa was avoiding.” Id. at 13; see also Id. at 18. However, Feinberg mentions “using a relatively simple gaming format” only in connection with discussing a desire to increase player excitement by providing the player with an even or better than even chance “of making a winning decision on each play” and “the possibility of obtaining a large value jackpot.” Feinberg, col. 1, ll. 27-35. And contrary to Appellant’s assertion (see App. Br. 11-12), Feinberg does not criticize Appeal 2011-007511 Application 10/077,667 9 games such as blackjack, craps, roulette, and baccarat as being too complex. Instead, Feinberg identifies the problem with such games as being that they “all favor the casino to win on each play.” Feinberg, col. 1, ll. 13-14. At most, Feinberg expresses a preference for “a relatively simple gaming format” and does not criticize using relatively complex gaming formats. As such, Feinberg does not teach away from the proposed combination. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).”). Osawa expresses a concern that games in which the result is “determined by an internal procedure of the gaming machine” rather than player skill can become monotonous and uninteresting. Osawa, col. 1, ll. 42-47. However, even assuming arguendo that Osawa can be viewed as “criticizing, discrediting, or otherwise discouraging” consideration of so- called monotonous games, such teaching would not teach away from the combination proposed by the Examiner. The Examiner is not proposing to modify Osawa by changing its “complex” base game to a “simple” game as taught by Feinberg or to combine or merge the gaming formats of Osawa and Feinberg in any manner. Rather, as noted supra, the Examiner proposes to modify the method of Osawa to include allowing a player to purchase a series of plays with a single wager as taught by Feinberg. Because the nature of the game is not changed, this modification does not change Osawa’s principle of operation or render Osawa unsatisfactory for its intended purpose, contrary Appeal 2011-007511 Application 10/077,667 10 to Appellant’s assertion (App. Br. 12). In addition, one of ordinary skill in the art would not be discouraged from the proposed combination merely because Feinberg and Osawa may describe “two countervailing themes” (i.e., simple and complex gaming formats) as asserted by Appellant (Id. at 13, 18). Merely establishing that there are differences between the two references is not sufficient to establish that one or both of the references “teaches away” from their combination. See In re Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir. 1992) (determining that two prior art references having different theories of musical notation systems does not make a sound prima facie case of obviousness impossible). Furthermore, as the Examiner correctly notes, Osawa and Feinberg are both “related to games of chance.” Ans. 12. For the above reasons, Appellant’s teaching away argument is not persuasive. We are also not persuaded by Appellant’s argument that the Examiner’s reasoning for combining Osawa and Feinberg lacks a rational underpinning. App. Br. 14, 18 (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). The Examiner concludes it would have been obvious to one of ordinary skill in the art to incorporate Feinberg’s block wagering system into Osawa’s method “to promote the play of a wagering game.” Ans. 5. Appellant’s arguments concerning differences between Osawa and Feinberg (App. Br. 14-16, 18-19) do not establish that the Examiner’s stated reasoning would be ineffective to support the conclusion of obviousness. Thus, we determine that the Examiner has articulated adequate reasoning based on rational underpinnings to explain why one of ordinary skill in the art would have been led to make the proposed modification. Appeal 2011-007511 Application 10/077,667 11 Lastly, Appellant argues that Osawa and Feinberg do not disclose the “claim elements related to the bonus game” of claim 25. App. Br. 19. Appellant specifically contends “[t]here is absolutely no bonus game (or secondary game) that can be ‘played’ in Osawa. Rather, it is simply an additional secondary award.” Id. We disagree. Osawa clearly discloses “a secondary game that is played supplemental [sic] to a separate principal game.” Osawa, col. 2, ll. 14-17 (emphasis added). The secondary game involves accumulating certain symbol images in the three display areas of the symbol image display portion 6a and awarding a predetermined pay-out when one of the display areas is filled with a predetermined number of the symbol images, which condition is referred to as a “win” of the secondary game. Id. at col. 10, l. 40 – col. 11, l. 21; figs. 6-9. Osawa also describes that the player can see from the display whether the secondary game is close to a win. Id. at col. 11, ll. 28-31. So, the secondary game is a game that a player plays. Furthermore, while not referred to as such, Osawa’s secondary game is a “bonus” game in the sense that it affords the player the possibility of winning a supplemental award in addition to the principle game award. In view of the above, Appellant’s arguments do not apprise us of error, and we sustain the rejection of claim 25, and of claims 26-31, 33, 35, 37-39, and 41 grouped therewith. Rejection III Claim 18 The Examiner relies on Duhamel to disclose providing a draw poker game in a gaming system. Ans. 8. We do not sustain the Examiner’s rejection of claim 18 because Duhamel does not remedy the above-noted Appeal 2011-007511 Application 10/077,667 12 deficiencies in the combination of Osawa and Feinberg with respect to claim 1. Claim 42 Appellant does not address the rejection of claim 42 under 35 U.S.C. § 103(a) as being unpatentable over Osawa, Feinberg, and Duhamel. Therefore, this ground of rejection is summarily sustained. See MPEP § 1205.02 (8th ed., Rev. 9, August 2012). DECISION We reverse the decision of the Examiner rejecting claims 1-7, 9-15, 17, 18, and 43-52. We affirm the decision of the Examiner rejecting claims 25-31, 33, 35, 37-39, 41, and 42. 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-IN-PART Klh