Ex Parte Hollibaugh et al

Patent Trial and Appeal BoardOct 23, 2017

12266427 (P.T.A.B. Oct. 23, 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. 12/266,427 11/06/2008 Larry R. Hollibaugh 025766-0113/P001205-002 4065 29159 7590 10/25/2017 Neal, Gerber & Eisenberg LLP (IGT) 2 N. LaSalle Street Suite 1700 Chicago, IL 60602-3801 EXAMINER LIDDLE, JAY TRENT ART UNIT PAPER NUMBER 3716 NOTIFICATION DATE DELIVERY MODE 10/25/2017 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): 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 LARRY R. HOLLIBAUGH and RONALD P. PAPSON Appeal 2016-008738 Application 12/266,427 Technology Center 3700 Before JOHN C. KERINS, EDWARD A. BROWN, and LYNNE H. BROWNE, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Larry R. Hollibaugh and Ronald P. Papson (Appellants)1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1, 4—9, 11, 13, 14, 17—21, 23, and 25—29, which are the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 The real party in interest is identified as IGT. Appeal Br. 2. Appeal 2016-008738 Application 12/266,427 CLAIMED SUBJECT MATTER Claims 1, 14, and 25 are independent. Claim 1, reproduced below, illustrates the claimed subject matter: 1. A wager gaming machine, comprising: a housing; a display device supported by the housing; a ticket reader supported by the housing and configured to receive a ticket and read a code of the ticket; a wager button supported by the housing; a cashout button supported by the housing; at least one input device supported by the housing; a processor; and a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to operate with the display device, the wager button, the cashout button, the at least one input device; and the ticket reader to: (a) receive, via the ticket reader, the ticket including the code; (b) read, via the ticket reader, the code of the ticket and determine a group identification code based on the read code; (c) determine whether the group identification code corresponds to an invisible game, wherein the invisible game is not presented in any menus on the display device for game play selection and wherein the invisible game is accessible via a discounted ticket that is obtained at a price below a value of the discounted ticket when used for wager gaming and that is obtained independent of results of any prior plays of any games; (d) if the group identification code corresponds to the invisible game, display a play of the invisible game including a randomly determined invisible game outcome; (e) if the group identification code does not correspond to the invisible game: 2 Appeal 2016-008738 Application 12/266,427 (i) determine any wagering games different from the invisible game that correspond to the group identification code and that can be enabled on the wager gaming machine, wherein a first set of one or more wagering games different from the invisible game correspond to a first group identification code and a second different set of one or more wagering games different from the invisible game correspond to a second different group identification code; (ii) if at least one wagering game different from the invisible game corresponds to the group identification code and can be enabled on the wager gaming machine, display a menu indicating the at least one wagering game and not indicating the invisible game; (iii) establish a credit balance based at least in part on the read code; (iv) receive, via the at least one input device, a selection of one of the indicated at least one wagering game; (v) place a wager on a play of the selected wagering game following receipt of an actuation of the wager button, the credit balance being decreasable by the wager; (vi) randomly determine and display an outcome of said play of the selected wagering game; and (vii) determine and display any award associated with the determined outcome, the credit balance being increasable by any award; and (f) following an actuation of the cashout button when the credit balance is greater than zero, initiate a payout associated with the credit balance. Appeal Br. 19-21 (Claims App.). 3 Appeal 2016-008738 Application 12/266,427 REJECTION Claims 1, 4—9, 11, 13, 14, 17—21, 23, and 25—292 * 4are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. ANALYSIS Appellants argue for patentability of claims 1, 4—9, 11, 13, 14, 17—21, 23, and 25—29 as a group. See Appeal Br. 15—18. We select claim 1 as representative of this group, and the remaining claims of the group stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). Claim 1 recites, inter alia, that “the invisible game is accessible via a discounted ticket that is obtained at a price below a value of the discounted ticket when used for wager gaming and that is obtained independent of results of any prior plays of any games.’ '’ Appeal Br. 19 (Claims App. (emphasis added)). The Examiner finds that the Specification does not support the emphasized limitation of claim 1. Final Act. 2—3. Appellants contest this finding. Appeal Br. 15. In support, Appellants submit that the Specification discloses that: (1) a casino may give a discounted ticket away for free (Spec. 17:7—8); (2) although a casino employee may give a casino patron a ticket that has an invisible contract and a nominal price, “an invisible contract may be provided free of charge, for a nominal fee, as a bonus or other incentive, as part of a package, etc., according to the determination of the casino” {id. at 21:29—22:3 (emphasis added)), and (3) a bonus game may be triggered during the play of a game of 2 The rejection heading contains a typographical error of “25—2”; however, the Final Rejection correctly identifies claims 25—29. See Final Act. 1—2. 4 Appeal 2016-008738 Application 12/266,427 chance (id. at 49:5). Appeal Br. 15—17. Appellants contend that because ‘ free means not costing or charging anything,” the Specification therefore discloses that a casino may give discounted tickets away at no cost or charge to patrons, which would lead an ordinary artisan to understand that those free tickets are obtained independent of results of any prior plays or any games. Id. at 16 (citing Merriam-Webster’s Online Dictionary). Appellants assert that this understanding is supported by the description of a “bonus” as a discounted ticket that is triggered by the outcome of a wagering game, in contrast to a discounted ticket that is given away for free. Id. at 17. Appellants also contend that like enjoying a free sample of orange juice at a grocer without having to purchase any products there, one of ordinary skill in the art would recognize that obtaining a free discounted ticket from a casino does not depend on a previous game play at the casino. Id. at 16. In support, Appellants reference several journal articles relating to play offers, items offered via direct mail, free rooms, and reward programs, to show that casinos have provided free items that are untied to players’ prior game plays to entice customers to visit the casinos. Id. at 16—17. Appellants conclude that one of ordinary skill in the art of gaming would recognize that because the Specification describes “discounted tickets provided based on game play in addition to free discounted tickets, free discounted tickets are independent of prior game play.” Id. at 17. Appellants assert that this conclusion is supported by the fact that the wager gaming field is mature and many prior art references existed as of the filing date of the application, providing a considerable knowledge base from which one skilled in the art could draw Appellants’ conclusion. Id. at 17—18. 5 Appeal 2016-008738 Application 12/266,427 The Examiner responds with a counter-hypothetical where a free sample of orange juice is given at a grocery store if breakfast cereals are purchased. Ans. 3. The Examiner explains that while the orange juice is free, something must be done first by a customer to receive it. Id. The Examiner also notes that casinos often give free items to “high rollers” who have already played games there. Id. at 3^4. As such, the Examiner determines that where a casino gives a patron a ticket, free of charge, this does not inherently require that the ticket was given to that patron independent of results of any prior play of any games. Id. at 4. Appellants reply that the Examiner’s position does not consider the meaning of “free of charge” in the context of the entire Specification. Reply Br. 2—3. Appellants’ contentions are not persuasive. The test for sufficiency under the written description requirement of 35 U.S.C. § 112, first paragraph, “is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). To have “possession,” “the specification must. . . show that the inventor actually invented the invention claimed.” Id. The Specification does not define “free of charge.” The description referenced by Appellants does not explicitly equate this phrase to “obtained independent of results of any prior plays of any games.” The Specification discloses that a bonus game may be triggered during the play of a game, but does not appear to describe any condition or basis for giving a discounted ticket “free of charge” to someone other than using the discounted ticket to entice a customer to play a game. 6 Appeal 2016-008738 Application 12/266,427 Further, the journal articles referenced by Appellants appear only to demonstrate that some casinos have provided free items to entice persons to visit the casinos. And, even if the wagering gaming field can be considered “mature,” as Appellants contend, this does not establish that an ordinary artisan would understand that the free tickets described in the Specification are, necessarily, obtained independent of results of any prior plays of any games. Although the written description requirement does not require the Specification to describe the claimed invention in haec verba (see Ariad, 598 F.3d at 1352), a description that merely renders the claimed invention obvious is not sufficient to meet the written description requirement; rather, “the disclosure must describe the claimed invention with all its limitations.” See Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998). Here, Appellants’ disclosure does not reasonably convey they had possession of the limitation “obtained independent of results of any prior plays of any games.” Consequently, we sustain the rejection of claim 1 under 35 U.S.C. § 112, first paragraph, written description requirement. Claims 4—9, 11, 13, 14, 17—21, 23, and 25—29 fall with claim 1. DECISION We affirm the rejection of claims 1, 4—9, 11, 13, 14, 17—21, 23, and 25-29. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 7