Ex Parte Englman

Patent Trial and Appeal Board

Nov 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
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Application 10/077,667

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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;
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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
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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.
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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.
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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.
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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.

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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
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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
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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.
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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
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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

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