Ex Parte Englman et al

Patent Trial and Appeal Board

Mar 29, 2016

12306221 (P.T.A.B. Mar. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/306,221 12/22/2008
70243 7590
NIXON PEABODY LLP
70 West Madison, Suite 3500
CHICAGO, IL 60602
03/31/2016
FIRST NAMED INVENTOR
Allon G. Englman
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.
247079-000472USPX 1507
EXAMINER
MOSSER, ROBERT E
ART UNIT PAPER NUMBER
3714
NOTIFICATION DATE DELIVERY MODE
03/31/2016 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 ALLON G. ENGLMAN, BENJAMIN T. GOMEZ,
MICHAEL W. MASTROPIETRO, and BRADLEY A. ROSE
Appeal2014-002452
Application 12/306,221
Technology Center 3700
Before LINDA E. HORNER, CHARLES N. GREENHUT, and
MICHELLE R. OSINSKI, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Allon G. Enghnan et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner's decision rejecting claims 1-3, 6-12, 14-20, 22-25,
and 27-29. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
Appellants' claimed subject matter relates to "gaming machines[] and
methods for playing wagering games." Spec. para. 1. Claims 1, 9, 15, 16,
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Application 12/306,221
and 23 are independent claims. Claim 1 is illustrative of the subject matter
on appeal and is reproduced below.
1. A gaming system comprising:
a plurality of gaming terminals for playing a plurality of
wagermg games;
an input device for receiving a wager to play at least one
of the plurality of wagering games including a trail-based bonus
game that is achieved in response to a bonus game triggering
outcome in a basic game;
one or more processors configured to determine that one
of the wagering games achieved the bonus game triggering
outcome in the basic game and is playing the trail-based bonus
game;
at least one of the one or more processors configured to
enter at least another of the plurality of wagering games into the
trail-based bonus game;
a display for displaying the trail-based bonus game, the
trail-based bonus game including a plurality of elements along a
trail, each of the plurality of elements having an associated
award; and
at least one memory device storing instructions that, when
executed by the at least one of the one or more processors, cause
the gaming system to:
in response to receiving a selection of one of the
plurality of elements along the trail, crediting the award
associated with the selected element to the wagering game
associated with the received selection; and
in response to one of the plurality of wagering
games meeting a predetermined award-all criterion during
the trail-based bonus game, awarding to the wagering
game meeting the award-all criterion the associated award
for all of the plurality of elements.
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EVIDENCE
The Examiner relied upon the following evidence:
Darrow
Salley
Lemay
Brown
Cannon
Glavich
Hornik
us 2,026,082
us 5,865,676
US 6,645,073 B2
US 6,793,575 B2
US 2005/0020340 Al
US 6,932, 701 B2
US 7,331,859 B2
REJECTIONS
Dec. 21, 1935
Feb.2, 1999
Nov. 11, 2003
Sept. 21, 2004
Jan.27,2005
Aug. 23, 2005
Feb. 19,2008
Appellants appeals from the Final Action, dated November 6, 2012,
which contained the following rejections:
1. Claims 1-3, 7-11, 14-20, and 22 under 35 U.S.C. § 103(a) as
unpatentable over Lemay, Cannon, and Hornik.
2. Claim 28 under 35 U.S.C. § 103(a) as unpatentable over Lemay,
Cannon, Hornik, and Darrow.
3. Claim 29 under 35 U.S.C. § 103(a) as unpatentable over Lemay,
Cannon, Hornik, and Salley.
4. Claims 6 and 12 under 35 U.S.C. § 103(a) as unpatentable over
Lemay, Cannon, Hornik, and Brown.
5. Claims 23-25 and 27 under 35 U.S.C. § 103(a) as unpatentable
over Lemay, Cannon, Hornik, Brown, and Glavich.
ANALYSIS
First Ground of Rejection
Appellants argue claims 1-3, 7-11, 14, and 15 subject to the first
ground of rejection as a group. Appeal Br. 11-14. We select claim 1 as the
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representative claim for the group, and claims 2, 3, 7-11, 14, and 15 stand or
fall with claim 1. 37 C.F.R. § 41.37( c )(1 )(iv). Appellants present additional
arguments for claims 16-20 and 22 subject to the first ground of rejection.
Appeal Br. 14-16. We address these additional arguments separately below.
Claim 1
Appellants argue that "unlike the random and intermittent operation of
Lemay' s bonus feature, Can[ n ]on' s competitive bonus game continues until
it is complete." Appeal Br. 12-13. Appellants assert that the Final Action
fails to identify "a teaching or suggestion by Cannon (or Lemay) as to how
Cannon's continuous competitive play would be even combined with
Lemay's random and intermittent single-game bonus feature." Id. at 13.
Appellants further assert that any such combination would "chang[ e] the
principle of how Lemay's bonus feature operates." Id.
The Examiner relied on Lemay to teach the gaming system
substantially as recited in claim 1, except the Examiner found that Lemay
"does not explicitly teach that the taught trail game enables a second
machine to participate in a common bonus game." Final Act. 3--4. The
Examiner found that Cannon teaches "enabling a plurality of gaming
machines to participate in a common instance of a bonus game" and that it
would have been obvious to one of ordinary skill in the art "to have enabled
a second gaming machine to participate in a common bonus event[,] as
taught by Cannon[,] in the trail[-]based bonus game of Lemay in order to
appeal to [a] respective player's competitive nature as taught by Cannon."
Id. at 4 (citing Cannon, Abstract, para. 5, Figs. 7, 8).
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Cannon teaches that it was known in the prior art to provide players
with bonus games in which the players play against the house. Cannon,
para. 4. Cannon suggests that a way to improve such gaming systems and to
pique and maintain players' interests in gaming and appeal to the players'
competitive natures and provide for larger payoffs in comparison with other
bonus games, is to use a bonus controller that operatively couples multiple
gaming apparatus to each other. Id., paras. 5, 7.
We agree with the Examiner that Cannon suggests an improvement to
bonus games offered on gaming systems by allowing multiple players to
play a bonus game against each other. The Examiner's reasoning for
modifying the bonus game of Lemay based on the teaching of Cannon to
appeal to players' competitive nature is based on rational underpinnings and
taken explicitly from Cannon. As noted by the Examiner in the Answer, the
proposed combination simply modifies Lemay' s gaming system to join
gaming machines together so that another player can participate with the
first player in the bonus game. Ans. 4. Contrary to Appellants' argument,
the Examiner does not propose to incorporate the racing bonus game of
Cannon into the gaming system of Lemay. A person of ordinary skill in the
gaming art would recognize that the technique of using a bonus controller to
operatively couple multiple gaming apparatus to each other would improve
similar devices, running different bonus games, in the same way. Appellants
do not contend that application of Cannon's technique to Lemay's gaming
system would have been beyond the skill of one of ordinary skill in the art.
SeeKSRint'l Co. v. Teleflex Inc., 550U.S. 398, 417 (2007) ("[I]fa
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technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill"). Accordingly, Appellants have not demonstrated
error in the Examiner's proposed modification of Lemay with the teachings
of Cannon.
Appellants further argue that the Final Action engages in
impermissible hindsight reconstruction because "no relevant discussion was
identified in the Final Office Action regarding a teaching or suggestion in
Hornik or Lemay of how Hornik's non-trail picking game would be
combined with Lemay's intermittent bonus game." Appeal Br. 13 (arguing
that the Examiner's reasoning supporting the combination is "nothing more
than a conclusory statement"). Appellants further assert that any such
combination would "change the principle of how Lemay' s random and
intermittent bonus trail-game operates." Id.
The Examiner relied on Hornik to teach "awarding to the wagering
game meeting the award[-]all criterion the associated award for all of the
plurality of elements." Final Act. 5 (citing Hornik, Abstract, claim 23). The
Examiner determined that it would have been obvious to modify Lemay, as
modified by Cannon to allow for multiple players in the bonus game, to
implement the award-all feature of Hornik:
to provide the ability for players to win and be awarded all of the
prizes in the trail group responsive to one criteria occurring in
[the] game while not sacrificing the ability of players to win and
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be awarded other awards in the trail game responsive to the
occurrence of a second different criteria occurring in [the] game.
Id.
Hornik discloses a gaming system including a bonus game that allows
players to select from among a plurality of player-selectable elements to
reveal a prize. Hornik, Abstract, claim 23. Hornik describes that "[p]layers
can become bored with [current bonus games that allow players a set
number of picks] because the player can only win a percentage of the total
bonus amount." Id., col. 1, 1. 66 - col. 2, 1. 2. Hornik discloses a bonus
game to overcome this boredom by providing "[a ]t least one of the choices
on each level allows the player to win all of the bonus items on a particular
level." Id., col. 2, 11. 4-9. Hornik further discloses that "[i]n some
embodiments, there may also be included a safe that includes an 'AW ARD
ALL OF ALL TYPES' symbol that automatically opens all of the safes."
Id., col. 7, 11. 18-20.
We agree with the Examiner that Hornik suggests an improvement to
bonus games offered on gaming systems by allowing players to win all of
the awards offered in a bonus game if an award-all criterion is met. The
proposed modification to modify Lemay to include an award-all feature
along the trail-based bonus game would have been obvious to one of
ordinary skill in the gaming art in light of Hornik as a means to make the
bonus game more exciting to players and thus attract and maintain players'
attention. As noted by Hornik, providing an award-all option in the bonus
game overcomes players' boredom with a bonus game that provides only a
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limited number of awards of all available awards. As noted by the Examiner
in the Answer, the proposed combination simply modifies Lemay' s gaming
system to include an award-all criterion in the trail-based bonus game of
Lemay. Ans. 6. A person of ordinary skill in the gaming art would
recognize that the technique of using an award-all feature would improve
similar devices, running different bonus games, in the same way. Appellants
do not contend that application of Hornik's technique to Lemay's gaming
system would have been beyond the skill of one of ordinary skill in the art.
See KSR, 550 U.S. at 417 ("[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill"). Accordingly,
Appellants have not demonstrated error in the Examiner's proposed
modification of Lemay with the teachings of Hornik.
For these reasons, Appellants have not demonstrated error in the
Examiner's rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over Lemay, Cannon, and Hornik. Accordingly, we sustain the rejection of
claims 1-3, 7-11, 14, and 15 as unpatentable under 35 U.S.C. § 103(a).
Claim 16
In addition to the same arguments addressed above for claim 1,
Appellants further assert the Examiner erred in rejecting independent claim
16 because the Examiner takes an unreasonably broad interpretation of
"player-selectable elements." Appeal Br. 15 (arguing that the Examiner
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essentially read the word "player" out of the claim and improperly ignored
the Specification) (citing Spec. paras. 50, 51, 54).
Independent method claim 16 recites a method of playing a wagering
game comprising "displaying a plurality of player-selectable elements, the
player selectable elements having associated awards and location related
indicia that are associated with locations along the trail" and "selecting, via a
player at one of the plurality of gaming machines, one of the plurality of
player-selectable elements."
The Examiner found that Lemay discloses these two steps of method
claim 16. Final Act. 8 (citing Lemay, Fig. 3 (elements 328m, 328d), Fig. 4,
and col. 6, 11. 46-50). The Examiner explained that "[t]he phrase 'player-
selectable elements' ... is not afforded any specific definition in the
[Appellants'] [S]pecification with relation to the manner of the selection
beyond the inclusion of a player" and that "the claim elements related to the
selection do not preclude the involvement of a machine in concert with the
player in the performance [of] the selection." Ans. 9 (stating that
Appellants' arguments about the nature and degree of machine involvement
in making a selection is beyond the scope of the claim language).
The PTO gives claim terms their broadest reasonable interpretation
consistent with the Specification. In re Am. Acad. of Sci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004). The Specification describes an
embodiment of a racing bonus game, in which "[t]o move the car 172, the
player selects a player-selectable element." Spec. para. 50. The
Specification explains that as "illustrated [in Figure] 5, the player-selectable
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elements are represented as a group of cards l 78a, l 78b, l 78c, l 78d." Id.
In the embodiment described, the player selects card l 78a (in Figure 6), and
"the other cards l 78b, 1 78c, l 78d are randomly distributed to the other
players." Id., paras. 50-51. The Specification describes that "[i]n other
embodiments, the other players select the other cards l 78b, l 78c, l 78d
based on a predetermined order." Id., para. 51. The Specification explains
that "[t]he players continue to select cards until all of the players go around
the board 174 at least once." Id., para. 53. The Specification further
describes that first and second place finishers in the bonus game race
compete in a championship race, in which "the players select player-
selectable elements, e.g., cards, to advance his/her car 172" and that "[ o ]ther
cards are either selected by or passed out to the other player(s)." Id., para.
54. In the example provided of a racing bonus game, the cards, which
represent the player-selectable elements, are capable of being selected by at
least one player in the bonus game. As such, one of ordinary skill in the art
would understand "player-selectable elements," when read in light of the
Specification, to refer to elements capable of being selected by at least one
player.
Lemay describes a gaming terminal that allows a player to play a main
game 326 and a bonus feature. Lemay, col. 6, 11. 26-33, Fig. 3. Lemay
discloses that the bonus feature involves sequential positions on display 322,
beginning at first position 328a through final position 328p. Id., col. 6,
11. 40--44. Lemay describes that positions 328d and 328m are associated
with intermediate prizes. Id., col. 6, 11. 46-49. In Lemay, the advancement
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of a player through the positions in the bonus feature "depends on the
appearance of bonus values or symbols in the main game 326." Id., col. 6,
11. 57-60, Fig. 4. In other words, in Lemay, the player selects whether to
continue playing the main game 326, which in tum, may or may not result in
movement of the player on the trail within the bonus feature. Id., col. 6,
1. 60 - col. 7, 1. 36. Thus, while Lemay discloses the ability of a player to
cause the reel slot machine to play a main game, the elements on the reel slot
machine are not themselves selectable by a player. For this reason, we agree
with Appellants that the Examiner has taken an unreasonably broad
interpretation of "player-selectable elements" when that claim term is read in
light of the Specification.
For these reasons, we do not sustain the Examiner's rejection of
independent claim 16, or its dependent claims 17-20 and 22, under
35 U.S.C. § 103(a) as unpatentable over Lemay, Cannon, and Hornik.
Second Ground of Re} ection
Claim 28 depends from claim 1 and recites "wherein a selected one of
the plurality of elements along the trail remains a selectable element
available for selection by at least one of the other wagering games entered
into the trail-based bonus game." Appeal Br. 29, Claims App. The
Examiner found that "[i]n a related trail based game[,] Darrow teaches that it
was known at the time of invention to enable multiple players to utilize
common trail elements in the game of Monopolyâ„¢." Final Act. 10 (citing
Darrow, Fig. 1, p. 5, 11. 33-60). The Examiner decided it would have been
obvious to "allow[] multiple players to utilize common trail elements during
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trail[ -]based games ... in order to allow group play of trail[ -]based games
without reducing the award opportunities to the players." Id. at 10-11.
Darrow is directed to the Monopoly board game. Darrow, Fig. 1. In
the passage relied on by the Examiner, Darrow teaches, in pertinent part, that
"the first player acquiring any space or area requires the next player landing
thereon to pay rent, but if he should fail promptly to demand the rental he
forfeits the same." Darrow, p. 5, 11. 40--44. We agree with Appellants that
Darrow suggests that a subsequent player that lands on a space previously
acquired by another player is penalized, by having to pay rent, rather than
being awarded a prize for landing on the space. Appeal Br. 18. As such, the
Examiner has failed to articulate adequate reasoning as to why the subject
matter of dependent claim 28 would have been obvious in view of the
disclosure in Darrow. For this reason, we do not sustain the rejection of
claim 28 under 35 U.S.C. § 103(a).
Third Ground of Rejection
Claim 29 depends from claim 1 and recites "wherein the trail-based
game is a racing game and the act of awarding the associated award to the
wagering game meeting the award-all criterion further includes at least one
display displaying a player-element associated with the winning wagering
game taking a victory lap along a trail of the trail-based bonus game."
Appeal Br. 29, Claims App. The Examiner found that "Salley teaches that
the use of victory laps in trail[ -]based games for the winner was known at
the time of invention." Final Act. 11 (citing Salley, Abstract, col. 5, 11. 32-
37). The Examiner found that it would have been obvious to "have
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incorporated the use of victory laps as taught by Salley with the player
elements acquiring an award-all victory ... in order to extend the
celebration associated with achieving an award-all event." Id.
Appellants argue that "[t]he citations relied upon from Salley ...
describe a simulated stadium having a stadium track with a number of
upstanding flag poles that 'enables a victory lap to be taken around the
track."' Appeal Br. 18 (quoting Salley, col. 5, 11. 24-35). Appellants
contend that the Examiner erred in rejecting claim 29 because Salley "does
not have any relation to a gaming system or play of a plurality of wagering
games including a trail-based bonus game." Id. at 19.
We are persuaded by Appellants' argument. Lemay discloses a trail-
based bonus game, which does not resemble a stadium track or any other
type of track, but rather comprises a trail that begins at a starting position
and ends at a position distant from the starting position. Lemay, Fig. 3. We
fail to see, and the Examiner has not provided an adequate explanation, why
one having ordinary skill in the art would have been led to modify the trail-
based bonus game of Lemay to include a victory lap, based on the teaching
of Salley. For this reason, we do not sustain the rejection of claim 29 under
35 U.S.C. § 103(a).
Fourth Ground of Rejection
Claim 6
Claim 6 depends from claim 1 and recites "wherein the wagering
game is a two-stage trail-based bonus game, and a player is only eligible to
meet the predetermined award-all criterion after successful completion of a
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first stage of the two-stage trail-based bonus game." Appeal Br. 26, Claims
App. The Examiner determined that the trail game of Lemay, as modified
by Cannon and Hornik, "does not explicitly teach that the bonus trail game
is separated into a plurality of stages with the advancement of qualifying
players between stages." Final Act. 12. The Examiner found, however, that
"Brown teaches that it was known at the time of invention to have separated
a game into a plurality of stages with the advancement of qualifying players
between stages." Id. (citing Brown, Abstract, Fig. 23). The Examiner
determined that it would have been obvious to further modify the game of
Lemay to separate the trail-based game into a plurality of stages with the
advancement of qualifying players between stages, as taught in Brown, "to
extend the anticipation associated with the determination of a bonus game
winner." Id.
We agree with Appellants that the Examiner's articulated rejection
fails to provide any explanation as to how the combination of Lemay,
Cannon, Hornik, and Brown would have led one having ordinary skill in the
art to the gaming system of claim 6 in which players are eligible to meet the
award-all criterion only after successful completion of a first stage of a two-
stage trail-based game. Appeal Br. 17. For this reason, we do not sustain
the rejection of claim 6.
Claim 12
Claim 12 depends from claim 9 and recites "wherein the trail-based
game is a race, and the method further comprises providing a plurality of
prize selections to the first player to finish the race." Appeal Br. 27, Claims
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App. The Examiner found that "Brown teaches a race[-]themed game
wherein the first player that win[ s] the race make[ s] [a] selection from a
plurality of selections." Final Act. 12 (citing Brown, Figs. 14, 15). The
Examiner did not provide any articulation in the Final Action of a proposed
modification to Lemay with the teachings of Brown or of a reason for such a
modification. As such, we are persuaded by Appellants' arguments (Appeal
Br. 16) that the Examiner has failed to adequately set forth an articulation of
how the teachings of Brown would be combined by one of ordinary skill in
the art with the gaming system of Lemay. For this reason, we do not sustain
the Examiner's rejection of claim 12 under 35 U.S.C. § 103(a).
Fifth Ground of Rejection
Independent claim 23, akin to dependent claim 6, calls for a two-stage
wagering game including the step of "achieving a predetermined award-all
criterion in the second game of the plurality of trail-based bonus games,
wherein eligibility for the predetermined award-all criterion occurs only
after advancing to the second game." Appeal Br. 28-29, Claims App.
The Examiner relies on the same combination of Lemay, Cannon,
Hornik, and Brown, as set forth in the rejection of dependent claim 6, for
this limitation. Final Act. 14. The Examiner relies on Glavich to teach "to
limit the effect of the award-all game outcome to the particular stage in
which they [sic] occur." Id. at 15 (citing Glavich, Figs. 3C, 3D). Glavich is
not relied on by the Examiner to cure the deficiency of the combination of
Lemay, Cannon, Hornik, and Brown to limit the eligibility to achieve the
award-all criterion to only those players who advance to the second game, as
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called for in claim 23. For the same reasons discussed above in relation to
the rejection of claim 6, we find that the Examiner has failed to provide an
explanation as to how the combination of Lemay, Cannon, Hornik, Brown,
and Glavich would have led one having ordinary skill in the art to the
gaming system of claim 23 in which players are eligible to meet the award-
all criterion only after successful completion of a first stage of a two-stage
trail-based bonus game. For this reason, we do not sustain the rejection of
independent claim 23, or its dependent claims 24, 25, and 27, under 35
U.S.C. § 103(a).
DECISION
The decision of the Examiner to reject claims 1-3, 7-11, 14, and 15 is
AFFIRMED.
The decision of the Examiner to reject claims 6, 12, 16-20, 22-25,
and 27-29 is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED-IN-PART
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