Ex Parte Randall et al

Patent Trial and Appeal BoardMay 5, 2016

11928837 (P.T.A.B. May. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111928,837 10/30/2007 29159 7590 05/09/2016 Neal, Gerber & Eisenberg LLP (IGT) 2 N. LaSalle Street Suite 1700 Chicago, IL 60602-3801 FIRST NAMED INVENTOR Dov L. Randall 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. 25094-3662 7901 EXAMINER HOEL, MATTHEW D ART UNIT PAPER NUMBER 3714 NOTIFICATION DATE DELIVERY MODE 05/09/2016 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): 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 DOV L. RANDALL, ANTHONY J. BAERLOCHER, ADRIAN WOTTON, KAREN M. CREGAN, PETER GERRARD, and ERICK T. CHING1 Appeal2014-002048 Application 11/928,837 Technology Center 3700 Before JOSEPH A. FISCHETTI, ROBERT L. KINDER, and TARA L. HUTCHINGS, Administrative Patent Judges. KINDER, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. Â§ 134(a) of the Examiner's rejection of claims 1-8 and 14--25. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 According to Appellants, the real party in interest is IGT. App. Br. 2. Appeal2014-002048 Application 11/928,837 STATEMENT OF THE CASE Appellants' Invention Appellants' invention relates to a "gaming device which includes a plurality of different predefined wager packages[,]" and "[e]ach predefined wager package is associated with a wager amount or value and includes one or more of a plurality of different game play features." Spec., Abstract. "The gaming device enables the player to select and wager on one of the predefined wager packages (in one embodiment using a single input device associated with that wager package) to activate the plurality of game play features associated with the selected wager package." Spec. if 15. Claims on Appeal Claims 1, 14, 15, and 23 are the independent claims on appeal. Claim 1 is illustrative of the claimed subject matter and reads: 1. A gaming system comprising: at least one input device; at least one display device; at least one processor; and at least one memory device which stores a plurality of instructions executable by the at least one processor to cause the at least one processor to operate with the at least one display device, and the at least one input device to: (a) display a first predefined wager package and a second predefined wager package, wherein said first predefined wager package is associated with a first wager amount greater than zero, a first average expected payout, a first plurality of primary game play features, and a first range of award values and the second predefined wager package is associated with the first wager amount, the first average expected payout, a second different 2 Appeal2014-002048 Application 11/928,837 plurality of primary game play features, and a different second range of award values; (b) upon receiving a single input by a player, select one of: the displayed first predefined wager package and the displayed second predefined wager package, wherein said single input is selected from the group consisting of: a single press of a button and a single touch of a touch screen associated with the at least one display device; ( c) enable the player to play a primary game, wherein said primary game includes said primary game play features associated with said selected predefined wager package; ( d) randomly determine an outcome for said primary game; ( e) determine an award value for said primary game based on said determined outcome, wherein said determined award value is from the range of award values of the selected predefined wager package; and (f) provide said determined award value to the player. ii ..pp. Br. 29 (Claims ii ..pp'x). Examiner's Rejections The Examiner rejected claims 1-7, 14--20, and 23 under 35 U.S.C. Â§ 103(a) over Slomiany (US 6,612,927 Bl, iss. Sept. 2, 2003) and Bryant (WO 01/15055 Al, pub. Mar. 1, 2001). Office Act. 2 (mailed Dec. 6, 2012). The Examiner rejected claims 8, 21, 22, 24, and 25 under 35 U.S.C. Â§ 103(a) over Slomiany, Bryant, and Walker (US 6,001,016, iss. Dec. 14, 1999). 3 Appeal2014-002048 Application 11/928,837 Claims 1, 14, 15, and 23 ANALYSIS Claim 1 requires a display device to display a first and second predefined wager package, with each predefined wager package having certain attributes. App. Br. 29 (Claims App'x) (limitation l(a), "display limitation"). Claim 1 also requires (b) upon receiving a single input by a player, select one of: the displayed first predefined wager package and the displayed second predefined wager package, wherein said single input is selected from the group consisting of: a single press of a button and a single touch of a touch screen associated with the at least one display device. Id. (limitation 1 (b ), "receiving limitation"). Independent claims 14, 15, and 23 each recite similar limitations. Id. at 32, 33, 35. Appellants challenge whether the combination of Slomiany and Bryant teach these limitations. Id. 31-34. The Examiner finds "Slomiany teaches all of the limitations of these claims, but lacks specificity as to selecting one of a plurality of wager packages with a single input." Ans. 4. The Examiner finds Slomiany teaches the attributes of the claimed first and second predefined wager packages. Ans. 4--5. For example, Slomiany's disclosure of using different multipliers ("IX", "2X", and "4X") to calculate the payout of each wage package corresponds to the claimed display limitation requirement of "a first range of award values" and "a different second range of award values." Ans. 5, 9. The Examiner relies on Bryant to teach the receiving limitation requirement of "upon receiving a single input by a player, select one of: the displayed first predefined wager package and the displayed second 4 Appeal2014-002048 Application 11/928,837 predefined wager package." Ans. 4. The Examiner finds buttons 64.1---64.3 (double, triple, or quadruple the base bet, respectively) of Bryant correspond to "choosing from one of a plurality of wager packages with a single input as claimed." Id. at 5---6. The Examiner notes the "base wagers of Bryant are selectable by separate inputs of lines and wagers per line, but were not relied upon by the examiner for a single input." Id. at 13. The Examiner cites certain theories from MPEP to support modifying the prior art in a manner to read upon the claims. See Ans. 10-11. For example, the Examiner suggests a modification of Slomiany that results in elimination of the separate inputs indicating the amount wagered per payline. Id. The Examiner finds such a modification will speed up play of the game and reduce the possibility for error or confusion on the part of the players. Id. The Examiner further finds a modification of Slomiany that results in automating a manual activity, such as reducing several inputs by the player into one input, is permissible as it will again speed up play of the game and reduce the possibility for error or confusion on the part of the part of the players. Id. at 11. The Examiner further finds it would have been obvious to modify Slomiany to let the player select from multiple wager packages with a single input rather than from only one wager package. Id. Appellants contend the combination of prior art does not teach or suggest the receiving limitation. App. Br. 21-24. According to Appellants, "Slomiany does not disclose 'a selection of a single wager package with a single input.'" Reply Br. 8. Appellants submit the "Max Bet Spin" button 39 of Slomiany is "a single input of a number of pay lines to wager on and a number of credits wagered per pay line," but "the player's selection of any non-maximum bet wager configuration of Slomiany requires the player to 5 Appeal2014-002048 Application 11/928,837 separately press, possibly repeatedly, the 'Select Lines' button 12 and the 'Coins Per Line' button 25." App. Br. 21. Thus, according to Appellants, while a maximum bet of Slomiany may be placed with a single input by the player, any non-maximum bet of Slomiany requires at least two separate wager inputs by the player: "at least one input of a number of pay lines and at least one input of a number of credits to wager per payline." Id. Appellants further contend Bryant also does not teach the receiving limitation requirement of "choosing from one of a plurality of wager packages with a single input." App. Br. 21-24; Reply Br. 7. Appellants assert Bryant provides access to one or more features that can be added to the base game (blocks 64 of Fig. 3), which is a result of at least three separate inputs: "(1) a number of lines of the machine on which to achieve a payout 66, and (2) a number of credits to be bet per line 68, and (3) a selection of a feature 64." App. Br. 22. Appellants contend Examiner's rationale "to modify Slomiany with Bryant as both an elimination of a step and as a duplication of parts" is unclear because the modification relies on inconsistent statements. Reply Br. 1 O; compare Ans. 10 ("selecting a wager package with only one input instead of separate inputs") with Ans. 11 ("let the player [select] one of multiple wager packages with a single input, as opposed to allowing a player to select only one wager package with a single input"). Appellants contend the selection of the claimed first and second "predefined wager package" is "the selection of one of the different pluralities of primary game play features and one of the different ranges of award values[, ]and not merely a selection of which pay lines to wager on and how much to wager per payline." Reply Br. 11. Thus, according to Appellants, the "elimination of a 6 Appeal2014-002048 Application 11/928,837 step and it's [sic] function and/or as a duplication of parts are not proper rationales to modify Slomiany with Bryant as suggested by the Examiner." Id. We are not persuaded that the Examiner has persuasively established that Slomiany and Bryant teach the claimed receiving limitation. The claimed first and second "predefined wager package" required by the display limitation are associated with specific attributes such as a "wager amount" and "average expected payout," but contain different "range of award values" and "plurality of primary game play features." See claim 1. However, buttons 64.1---64.3 of Bryant are features that are selectable by a single input to double, triple, or quadruple a base bet that has already been selected. This is not the same as choosing between predefined wager packages that each have a set of specific attributes. Buttons 64.1---64.3 of Bryant cannot enable "choosing from one of a plurality of wager packages with a single input" because multiple inputs were already required in Bryant to establish a base bet. See Reply Br. 7-8. The Examiner does not provide a persuasive reason how selection of one of the buttons (64.1---64.3) of Bryant could teach the claimed "single input" required by the receiving limitation. See Ans. 13. We are also not persuaded the Examiner has persuasively established that it would have been obvious to modify the prior art by eliminating the inputs of multiple selection steps and then merging them into a single input as claimed. For example, the Examiner's rationale for elimination of a step is unclear as it does not identify the reference and step being eliminated. See id. at 10. The Examiner appears to reason it would be more efficient to play a non-maximum bet wager in Slomiany by reducing the number of inputs to 7 Appeal2014-002048 Application 11/928,837 one button through eliminating the multiple inputs required to make such a wager. The Examiner, however, does not explain how the elimination of "Select Lines" button 12 and/or "Coins Per Line" button 25 would result in the selection of a non-maximum bet wager, nor does the Examiner establish how Slomiany would be capable of performing any non-maximum bet wager under such a modification. Likewise, the Examiner's rationale for relying on automation of a manual activity is also unclear. See id. at 11. The Examiner reasons it would be more efficient to play a game by "automat[ing] what would have been several inputs by the same player." Id. The Examiner appears to again be referring to reducing the number of inputs to play a non-maximum bet wager in Slomiany. See id. The automation of a manual activity cited by the Examiner relates to "providing an automatic or mechanical means to replace a manual activity which accomplished the same result." MPEP Â§ 2144.04(III). The Examiner, however, does not explain how the invention is an automatic or mechanical means used to replace the manual activity of placing a non-maximum bet wager in Slomiany. We are not persuaded by the Examiner's rationale to modify Slomiany with Bryant as replacing a manual activity with an automatic or mechanical means. See id. The Examiner's rationale for duplication by parts is also unclear. See id. Duplication by parts concerns parts of the invention not having to be taught in the prior art because they hold "no patentable significance[,] unless a new and unexpected result is produced." MPEP 2144.04(VI)(B). The Examiner merely reasons "it is obvious to let the player [select] one of multiple wager packages with a single input." Id. This rationale does not identify the reference or part that holds "no patentable significance." We are 8 Appeal2014-002048 Application 11/928,837 not persuaded by the Examiner's rationale to modify Slomiany with Bryant by duplication by parts. See id. For the reasons set forth above, we do not sustain the Examiner's rejection of claim 1, as well as independent claims 14, 15, and 23 which also contain, in one form or another, the limitations (a) and (b) of claim 1, as discussed, supra. See App. Br. 21-23; Reply Br. 6-9. Claims 2-8, 16-22, and 24--25 Because the remaining dependent claims depend either directly or indirectly from one of the independent claims discussed above, and because the Examiner's rejections also rely on the same combination of Slomiany and Bryant as teaching the receiving limitation, we likewise do not sustain the Examiner's rejection of claims 2-8, 16-22, and 24--25. See App. Br. 25- 28; Reply Br. 11-13. DECISION We REVERSE the Examiner's rejection of claims 1-8 and 14--25. REVERSED 9