Ex Parte Evans

Patent Trial and Appeal Board

Dec 31, 2015

11557869 (P.T.A.B. Dec. 31, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111557,869 11108/2006
29159 7590 01/05/2016
Neal, Gerber & Eisenberg LLP (IGT)
2 N. LaSalle Street
Suite 1700
Chicago, IL 60602-3801
FIRST NAMED INVENTOR
Christina M. Evans
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.
025094-3433 1244
EXAMINER
CHAN, ALLEN
ART UNIT PAPER NUMBER
3714
NOTIFICATION DATE DELIVERY MODE
01105/2016 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@ngelaw.com
patents@igt.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte CHRISTINAM. EVANS
Appeal2013-010331
Application 11/557,869
Technology Center 3700
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
MARK A. GEIER, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Christina M. Evans (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner's decision to reject under 35 U.S.C. § 103(a) claims
1 Should there be further prosecution of this application (including any
review for allowance), the Examiner may wish to review the claims for
compliance under 35 U.S.C. § 101 in light of the Director's examination
guidance on patent eligible subject matter. See 2014 Interim Guidance on
Patent Subject Matter Eligibility, 79 Fed. Reg. 74619 (Dec. 16, 2014)(and
any updates thereof), which supplements the "Preliminary Examination
Instructions in view of the Supreme Court Decision in Alice Corporation
Pty. Ltd. v. CLS Bank International, et al.," Memorandum to the Examining
Corps, June 25, 2014.
Appeal2013-010331
Application 11/557,869
1---61 as unpatentable over Walker (US 2006/0073884 Al; pub. Apr. 6,
2006), Tessmer (US 2003/0104853 Al; pub. June 5, 2003), and Gerrard
(US 2004/0048644 Al; pub. Mar. 11, 2004). We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter "enables a plurality of players to play for
one or more progressive awards, such as accumulated value progressive
awards, at gaming machines or gaming devices of a gaming system." Spec.
para. 15; Figs. 2B, 3, 4, 6-8. Claims 1, 14, 24, 29, 44, and 55 are
independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A gaming system comprising:
a plurality of gaming machines, each gaming machine
including:
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, which when executed by the at least one
processor, cause the at least one processor to operate with
the at least one input device and the at least one display
device to enable a player to play a primary game upon a
wager; and
a central controller configured to communicate with the
plurality of gaming machines, the central controller
programmed to:
(i) maintain a progressive award, the progressive
award associated with a first triggering event and a
second triggering event, the second triggering event
being different than the first triggering event,
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Application 11/557,869
(ii) designate one of the players of one of the
gaming machines as a winning player of the progressive
award when the first triggering event occurs while the
player is playing one of the primary games of one of the
gaming machines, and
event:
(iii) for each occurrence of the first triggering
(a) cause the second triggering event to
subsequently occur, wherein said second triggering
event occurs regardless of whether the winning
player is playing one of the gaming machines, and
(b) when the second triggering event
subsequently occurs, cause the progressive award
to be provided to the designated winning player.
ANALYSIS
Appellant argues claims 1---61 as a group. Appeal Br. 19-26. We
select claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv) (2014).
Claims 2---61 stand or fall with claim 1.
The Examiner finds that Walker discloses the gaming system
substantially as claimed except Walker "does not explicitly disclose that the
second triggering event subsequently occurs for each occurrence of the first
triggering event." Final Act. 3; Ans. 5. The Examiner also finds that "[a]s
shown by [Tessmer], triggering events which must occur are well known in
the art, such as triggering events which occur after a passage of a
predetermined amount of time (see par. [0045], an event trigger can be a
passage of a fixed interval of time)." Final Act. 3; Ans. 5. The Examiner
concludes that it would have been obvious to use the timed triggering event
of Tessmer in place of the optional triggering events of Walker because
"this is merely substituting one triggering event for another." Final Act. 3-
4; Ans. 5---6. The Examiner further finds that "as [Walker] teaches that it
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Application 11/557,869
may be advantageous to provide an award to the first player (see par.
[0012], [0013]), the combination of [Walker] and the timed triggering event
of [Tessmer] would ensure that the first player receives the award as
Walker intends." Ans. 6. 2
Appellant contends that modifying Walker with Tessmer results in
Walker being unsatisfactory for its intended purpose. Appeal Br. 22-23;
Reply Br. 2-5. In particular, Appellant argues:
In Walker, the second condition that must be satisfied to
provide the first player post-play benefits may or may not
actually be satisfied and thus the first player may or may not be
provided any post-play benefits. That is, each satisfaction of
the first condition of Walker is not automatically coupled with a
satisfaction of the second condition of Walker .... However,
when the timed triggering event of Tessmer is combined with
the optional triggering event of Walker, the second condition of
Walker (i.e., the interpreted second triggering event of the
gaming system of representative independent Claim 1) will
always be satisfied and the first player will always be provided
the post-play benefits. Such a modification substantially
changes the principal operation of Walker (i.e., modifying
Walker from not always providing post-play benefits to always
providing post-play benefits) and results in Walker being
unsatisfactory for its intended purpose.
Appeal Br. 23 (emphasis in original); see also Reply Br. 2-5.
Appellant's argument is not persuasive. Walker discloses:
Numerous embodiments are described in this patent
application, and are presented for illustrative purposes only.
2 The Examiner cites to Gerrard for disclosing "progressive jackpots and
awards [being] well known in the art." Final Act. 4; Ans. 6. The Examiner
concludes that it would have been obvious to modify Walker and Tessmer
with the progressive awards of Gerrard "to produce a gaming system which
has progressive awards." See id. Appellant does not dispute these findings
or conclusions of the Examiner. See Appeal Br. 19-26; Reply Br. 2-7.
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Application 11/557,869
The described embodiments are not, and are not intended to be,
limiting in any sense. The presently disclosed invention(s) are
widely applicable to numerous embodiments, as is readily
apparent from the disclosure. One of ordinary skill in the art
will recognize that the disclosed invention(s) may be practiced
with various modifications and alterations, such as structural,
logical, software, and electrical modifications. Although
particular features of the disclosed invention( s) may be
described with reference to one or more particular embodiments
and/or drawings, it should be understood that such features are
not limited to usage in the one or more particular embodiments
or drawings with reference to which they are described, unless
expressly specified otherwise.
The present disclosure is neither a literal description of all
embodiments of the invention nor a listing of features of the
invention that must be present in all embodiments.
The term[] . . . "some embodiments" ... mean[ s] "one or more
(but not all) disclosed embodiments", unless expressly
specified otherwise.
Walker, paras. 183-186 (emphasis added). In other words, Walker discloses
numerous embodiments that include scenarios where a second condition is
satisfied, as well as scenarios where a second condition is not satisfied. See
id.; see also id. at paras. 30-31; Final Act. 3; Ans. 5. Given that Walker
discloses paying post-play benefits to a player upon satisfaction of a second
condition in some embodiments (i.e., one or more (but not all) disclosed
embodiments), we fail to see how the Examiner's proposed modification to
Walker to include the timed triggering event of Tessmer would render
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Application 11/557,869
-- - - - - - - - - - - '1
Walker unsatisfactory for its intended purpose._, Furthermore, we note that
Walker explicitly discloses:
In some embodiments [i.e., one or more (but not all) disclosed
embodiments], the determination of whether the second
condition is satisfied may be made repeatedly, such as during
intervals within a time period. The time period may comprise,
for example, a time period associated with the first player's
eligibility for post-play benefits, such as within one hour after
the first player terminates play at the first gaming device.
Walker, para. 30 (emphasis added); see also Final Act. 3; Ans. 5.
Moreover, assuming arguendo that modifying the structure of Walker,
with the timed triggering event of Tessmer, may result in the second
condition of Walker always being satisfied and the first player being
guaranteed post-play benefits, as Appellant contends (see Appeal Br. 23;
Reply Br. 3-5), if there are tradeoffs involved regarding features, costs,
manufacturability, or the like, such things do not necessarily prevent the
proposed combination. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157,
1165 (Fed. Cir. 2006) ("[A] given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate
motivation to combine."); Winner Int'! Royalty Corp. v. Wang, 202 F.3d
1340, 1349 n.8 (Fed. Cir. 2000) ("The fact that the motivating benefit comes
at the expense of another benefit, however, should not nullify its use as a
basis to modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another.").
3 We note that Appellant acknowledges "the intended purpose of [Walker] of
possibly providing post-play [benefits] to a player." Reply Br. 2-3.
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Appellant also contends that the Examiner does not consider Walker
as a whole. See Appeal Br. 24--26; Reply Br. 5-7. According to Appellant,
"the Examiner appears to rely on Tessmer for a triggering event that must
occur while ignoring that Walker explains, in great detail, a vast array of
different events which each may or may not occur to satisfy the second
condition of Walker." Appeal Br. 24; Reply Br. 5. Appellant further
contends:
Walker describes over twenty different types of second
conditions which each may or may not be satisfied to provide or
not provide any post-play benefits. Accordingly, only with the
benefit of improper hindsight reconstruction and not
considering Walker as a whole is the Examiner ignoring
Walker's extensive listing of different conditional events
(which each may or may not occur) to pick and choose different
elements from Walker and Tessmer (and Gerrard) to recreate
the gaming system of representative independent Claim 1 to
form the basis of these rejections.
i\.ppeal Br. 26; see also Reply Br. 6-7.
Appellant's contention is not persuasive. At the outset, as discussed
above, (1) Walker discloses numerous embodiments that "are presented for
illustrative purposes only" (Walker, para. 183 (emphasis added)); and (2)
Walker's disclosure "is neither a literal description of all embodiments of
the invention nor a listing of features of the invention that must be present
in all embodiments" (Id. at para. 184 (emphasis added)). Further, as set
forth above5 Walker discloses numerous embodiments that include
scenarios where a second condition is satisfied, as well as scenarios where a
second condition is not satisfied. See Walker paras. 30-31, 183-186; Final
Act. 3; Ans. 5. Moreover, the Supreme Court has provided guidance when
addressing Appellant's concern regarding picking and choosing.
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As is clear from cases such as Adams, a patent composed of
several elements is not proved obvious merely by
demonstrating that each of its elements was, independently,
known in the prior art. Although common sense directs one to
look with care at a patent application that claims as innovation
the combination of two known devices according to their
established functions, it can be important to identify a reason
that would have prompted a person of ordinary skill in the
relevant field to combine the elements in the way the claimed
new invention does. This is so because inventions in most, if
not all, instances rely upon building blocks long since
uncovered, and claimed discoveries almost of necessity will be
combinations of what, in some sense, is already known.
KSR!nt'l Co. v. Teleflex, Inc., 550 U.S. 398, 418-19 (2007).
Here, there is no dispute that the element relied on by the Examiner
(i.e., a timed triggering event) is known in the prior art. See Final Act. 3;
Ans. 5 ("As shown by [Tessmer], triggering events which must occur are
well known in the art, such as triggering events which occur after a passage
of a predetermined amount of time."). i\.ppellant does not dispute that
substituting the timed trigger event of Tessmer for the optional triggering
event of Walker would ensure that the first player receives an award, which
is the Examiner's stated reason for prompting one skilled in the art to
combine Walker and Tessmer. See id. To the contrary, Appellant
acknowledges that modifying Walker with Tessmer would result in the first
player receiving an award (i.e., post-play benefits). See Appeal Br. 23;
Reply Br. 3-5. Accordingly, Appellant's contention regarding the Examiner
picking and choosing elements and not considering the art as a whole is not
persuasive.
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Further, to the extent that Appellant is arguing that Walker teaches
away from the subject invention (see Reply Br. 6), 4 considering Walker as a
whole would not lead a person of ordinary skill away from the Examiner's
proposed combination. "A reference may be said to teach away when a
person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant." In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). "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." DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re
Fulton, 391F.3d1195, 1201 (Fed Cir. 2004)).
Here, as set forth above, Walker discloses numerous embodiments
that include scenarios where a second condition is satisfied, as well as
scenarios where a second condition is not satisfied. See Walker, paras. 30-
31, 183-186; Final Act. 3; Ans. 5. Moreover, Appellant does not direct us to
any portion of Walker that criticizes, discredits, or otherwise discourages
satisfying a second condition. To the contrary, Appellant acknowledges that
Walker discloses that the second condition, which is required to provide the
first player post-play benefits, may be satisfied. See Appeal Br. 23; Reply
Br. 4. As such, considering Walker as a whole, which includes alternative
embodiments where a second condition is not satisfied, does not teach away
4 Appellant contends: "labeling the different conditional triggering events of
Walker as 'merely exemplary in nature' does not remedy that the Examiner
is ignoring different portions of Walker that would lead away [teach away]
from the gaming system of independent Claim 1." Reply Br. 6.
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from the subject invention.
We also are not persuaded that the Examiner's proposed combination
involves impermissible hindsight. As discussed above, the Examiner set
forth a reasonable rationale underlying the conclusion of obviousness.
Therefore, the Examiner did not rely on impermissible hindsight but rather
relied on the knowledge of one skilled in the art at the time of the invention.
Appellant does not provide any persuasive evidence or argument to the
contrary.
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of independent claim 1 as unpatentable over Walker, Tessmer, and
Gerrard. We also sustain claims 2-61, which fall with claim 1.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1---61 as
unpatentable over Walker, Tessmer, and Gerrard.
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
ACL
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