Ex Parte Nauman

Patent Trial and Appeal Board

Dec 12, 2017

13161001 (P.T.A.B. Dec. 12, 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.
13/161,001 06/15/2011 Jeff L. Nauman 247079-000679USPT 4495
70243 7590
NIXON PEABODY LLP
70 West Madison, Suite 3500
CHICAGO, IL 60602
EXAMINER
HENRY, THOMAS HAYNES
ART UNIT PAPER NUMBER
3717
NOTIFICATION DATE DELIVERY MODE
12/14/2017 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):
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 JEFF L. NAUMAN
Appeal 2016-008175
Application 13/161,001
Technology Center 3700
Before JENNIFER D. BAHR, BRANDON J. WARNER, and
SEAN P. O’HANLON, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jeff L. Nauman (Appellant)1 appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision, set forth in the Non-Final Action dated September
25, 2015 (hereinafter “Non-Final Act.”), rejecting claims 1-24. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The Appeal Brief (Dec. 7, 2015, hereinafter “Appeal Br.”) identifies WMS
Gaming, Inc. as the real party in interest. Appeal Br. 1.
Appeal 2016-008175
Application 13/161,001
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A gaming system comprising:
a gaming machine primarily dedicated to playing at least
one casino wagering game, the gaming machine including an
electronic display device and one or more electronic input
devices, at least one of the one or more electronic input devices
configured to detect a physical item associated with a monetary
value that establishes a credit balance, and at least one of the one
or more electronic input devices to receive a cashout input that
initiates a payout from the credit balance, the credit balance
changing based on play of the wagering game;
one or more controllers configured to:
initiate the casino wagering game in response to a
wager input, the wager input decreasing the credit balance;
determine a randomly selected outcome of the
casino wagering game;
display on the electronic display device an array of
symbols indicating the randomly selected outcome from a
plurality of outcomes including one or more winning
outcomes each represented solely by standard symbols in
the array of symbols, the array of symbols including a
plurality of rows and a plurality of columns;
in response to the array of symbols including a
special symbol distinct from the standard symbols, the
special symbol not included in the one or more winning
outcomes, change the special symbol into a modified
symbol and display the modified symbol, the modified
symbol corresponding with a second standard symbol of
the array of symbols to form a modified array, the second
standard symbol being selected based on a predetermined
condition; and
award an award in response to a winning outcome
represented on the array, the modified array, or both the
array and modified array.
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Application 13/161,001
REJECTIONS
I. Claims 1-10, 12-22, and 24 stand rejected under
35 U.S.C. § 103(a) as unpatentable over O’Halloran
(US 6,439,993 Bl, issued Aug. 27, 2002) and Green
(US 8,235,794 B2, issued Aug. 7, 2012).
II. Claims 11 and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over O’Halloran, Green, and Marks
(US 7,749,064 B2, issued July 6, 2010).
DISCUSSION
Rejection I
Claims 1, 2, 4—10, 12—14, 16—22, and 24:
Appellant groups claims 1, 2, 4-10, 12-14, 16-22, and 24 subject to
this ground of rejection together. Appeal Br. 5. In accordance with
37 C.F.R. § 41.37(c)(l)(iv), we select claim 1 to decide the appeal as to
these claims, with claims 2, 4-10, 12-14, 16-22, and 24 standing or falling
with claim 1.
The Examiner finds that O’Halloran discloses a gaming machine as
recited in claim 1, including one or more controllers configured, in pertinent
part, to display a special symbol, which the Examiner reads on O’Halloran’s
wild card symbol 30. Non-Final Act. 3-4. The Examiner also finds that
O’Halloran teaches changing wild card symbol 30 into a modified symbol
corresponding to a second standard symbol of the array of symbols, in that
the wild card symbol “can be substituted with any other symbol to produce a
winning combination.” Id. The Examiner acknowledges that “O’Halloran
does not disclose physically displaying the special symbol as the modified
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Application 13/161,001
symbol,” but finds that Green teaches changing a wild card symbol into the
appropriate modified symbols to create a winning payout. Id. at 4. The
Examiner determines it would have been obvious to combine O’Halloran
with Green, by changing O’Halloran’s wild card symbol 30 (i.e., the
symbol) into another, standard symbol (i.e., the “K” symbol) from the array
on the display, as taught by Green, “in order to provide more entertainment
value to the game patron and also instructions as to what constitutes a
winning combination from the available symbols that can be displayed.” Id.;
see Green 10:66-11:10.
Appellant does not contest the Examiner’s combination of O’Halloran
with Green. Appeal Br. 5-11. Rather, Appellant contends that the
definition of “special symbol” or “morphing symbol” in paragraph 53 of
Appellant’s Specification “specifically excludes wild symbols” such as in
O’Halloran. Id. at 7. According to Appellant, “[although a wild symbol
may not be part of a pay table, it may be part of a winning combination and
therefore is excluded from the definition of a special symbol.” Id. at 11.
The Examiner, on the other hand, states in the Answer (July 1, 2016,
hereinafter “Ans.”) that paragraph 53 of Appellant’s Specification “is not a
‘definition’ but rather an embodiment.” Ans. 4.
When claim terminology is construed in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). We must be careful not to read a particular embodiment appearing in
the written description into the claim if the claim language is broader than
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Application 13/161,001
the embodiment. See Super guide Corp. v. DirecTV Enterprises, Inc., 358
F.3d 870, 875 (Fed. Cir. 2004) (“[I]t is important not to import into a claim
limitations that are not a part of the claim. For example, a particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.”). The
challenge is to interpret claims in view of the specification without
unnecessarily importing limitations from the specification into the claims.
See E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir.
2003). Thus, we must look to Appellant’s Specification to determine
whether the language in paragraph 53 of the Specification excluding wild
cards constitutes an express definition of “special symbol,” or whether it
constitutes a description of a particular embodiment of the invention.
Appellant’s Specification states:
A special symbol, or morphing symbol, according to the
embodiments described herein is distinguishable from a standard
symbol in the array of symbols. Unlike standard symbols,
morphing symbols preferably do not have a pay table value
associated with them prior to morphing into another symbol in
the array. It is contemplated, however, that a morphing symbol
may have a pay table value associated therewith such that the
morphing symbol may be considered a “paying ” symbol. In such
embodiments, the paying symbol would be pre-defmed as a
morphing symbol.
Spec. 51 (emphasis added).
Thus, the terms “special symbol” and “morphing symbol” are used as
synonyms in Appellant’s Specification. Paragraph 51 describes two
embodiments of “special symbols” or “morphing symbols.” The first
embodiment, which is the preferred embodiment, of “special symbol” or
“morphing symbol” does not have a pay table associated with it prior to
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Application 13/161,001
morphing into another symbol in the array. Id. The second embodiment of
“special symbol” or “morphing symbol” may have a pay table associated
with it and, thus, “may be considered a ‘paying’ symbol.’” Id.
Appellant’s Specification goes on to state:
It is noteworthy that the pay tables used with the
embodiments of the present invention do not include special,
morphing symbols. This is because the morphing symbols of the
embodiments described herein do not have a pay table value
associated therewith prior to morphing into another symbol in
the array. Thus, the morphing symbols can be distinguished from
the standard symbols listed in the pay table, WILD symbols, or
the like, all of which can contribute to a standard winning symbol
combination.
Spec. ^ 53 (emphasis added).
Paragraph 53 of the Specification further describes the first (i.e.,
preferred) embodiment of “special symbol” or “morphing symbol,” which
does not have a pay table associated with it. Thus, the language in
paragraph 53 distinguishing “special symbols” or “morphing symbols” from
“WILD symbols” applies specifically to the first (i.e., preferred)
embodiment of “special symbol” or “morphing symbol,” but not to the
second embodiment of “special symbol” or “morphing symbol” described in
paragraph 51 of the Specification.
In light of the above, Appellant fails to apprise us of error in the
Examiner’s determination that “special symbol” in claim 1 reads on a wild
card symbol, such as O’Halloran’s wild card symbol 30. Inasmuch as the
entirety of Appellant’s argument contesting the rejection of claim 1 is
predicated on this assertion of error (see Appeal Br. 5-11), Appellant thus
fails to apprise us of error in the rejection of claim 1. Accordingly, we
sustain the rejection of claim 1, as well as claims 2, 4-10, 12-14, 16-22, and
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24, which fall with claim 1, under 35 U.S.C. § 103(a) as unpatentable over
O’Halloran and Green.
Claims 3 and 15:
Claims 3 and 15 recite that the second standard symbol into which the
special symbol is changed is selected based on a predetermined location
adjacent the special symbol. Claims App. In addressing this limitation, the
Examiner points to Figure 3 of O’Halloran. Non-Final Act. 4. The
Examiner finds that O’Halloran satisfies this limitation by disclosing
“modifying the symbol to the ‘K’ symbol adjacent to the symbol.”
Ans. 8.
O’Halloran teaches that trigger wild card symbol 30 “can be
substituted with any other symbol 22 to produce a prize winning
combination.” O’Halloran 2:54-57 (boldface omitted). In the particular
example illustrated in Figure 2, which shows Kings (each denoted by “K”)
in three of the five positions on the pay line, “the prize for ‘Four Kings’
would be awarded.” Id. 2:57-58. Thus, in this example, trigger wild card
symbol 30 is substituted with (i.e., replaced by) standard symbol “K” (King)
because this produces a prize winning combination in accordance with the
conventional pay table. See id. 2:58-59 (stating, “This is the conventional
arrangement.”). However, this substitution is based on a predetermined
prize winning combination set forth in the pay tables, not on a predetermined
location adjacent trigger wild symbol 30. While the substitution in this
particular example happens to coincide with the symbol in each of the
positions adjacent trigger wild card symbol 30, O’Halloran does not disclose
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Application 13/161,001
basing the substitution decision on the predetermined condition of a position
adjacent trigger wild card symbol 30.
In Figure 3, O’Halloran discloses changing original standard symbols
into additional wild card symbols 31, in a random or pseudo-random
manner. Id. 3:11-17. This is not what is claimed in claims 3 and 15.
Claims 3 and 15 recite that the special symbol is changed into a standard
symbol, not that a standard symbol is changed into a special symbol.
Green discloses allowing the wildcard position to “cycle through its
equivalent symbols, displaying these symbols for shorten periods of time,
with this presentation technique flashing the wildcard equivalent symbols,
for example a blazing 7, a triple bar, and a cherry” in order to “provide[]
more entertainment value to the game patron, and also instructions as to
what constitutes a winning combination from the available symbols that can
be displayed.” Green 11:3-10. Thus, while Green teaches changing the
wildcard to a standard symbol on the display, Green does not teach selecting
the symbol into which the wildcard is changed based on the predetermined
condition of a position adjacent the wildcard.
For the above reasons, the Examiner does not establish by a
preponderance of the evidence that the subject matter of claim 3 or claim 15
would have been obvious. Accordingly, we do not sustain the rejection of
claim 3 or claim 15 under 35 U.S.C. § 103(a) as unpatentable over
O’Halloran and Green.
Rejection II
Appellant does not present any separate arguments against the
rejection of claims 11 and 23, electing instead to rely on the arguments
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Application 13/161,001
presented for claim 1. Appeal Br. 5. Thus, for the reasons set forth above in
addressing the rejection of claim 1, Appellant fails to apprise us of error in
the rejection of claims 11 and 23. Accordingly, we sustain the rejection of
claims 11 and 23 under 35 U.S.C. § 103(a) as unpatentable over O’Halloran,
Green, and Marks.
DECISION
The Examiner’s decision rejecting claims 1, 2, 4-14, and 16-24 is
AFFIRMED.
The Examiner’s decision rejecting claims 3 and 15 is REVERSED.
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)(l)(iv).
AFFIRMED-IN-PART
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