Ex Parte Gauselmann

Board of Patent Appeals and Interferences

Feb 21, 2012

10458429 (B.P.A.I. Feb. 21, 2012)

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.
10/458,429 06/09/2003 Michael Gauselmann ATR-A-111-1P 2692
32566 7590 02/21/2012
PATENT LAW GROUP LLP
2635 NORTH FIRST STREET
SUITE 223
SAN JOSE, CA 95134
EXAMINER
HSU, RYAN
ART UNIT PAPER NUMBER
3716
MAIL DATE DELIVERY MODE
02/21/2012 PAPER
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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL GAUSELMANN
____________

Appeal 2009-014948
Application 10/458,429
Technology Center 3700
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

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The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-14 and 16-26. App. Br. 2. The Examiner
makes three grounds of rejection that are before us for review:
claims 1, 2, 5, 9, 11, 14, 16, 17, 19, 22, 24, and 26 under 35
U.S.C. § 103(a) as unpatentable over Barrie1 and Bennett '7582;
claims 3, 4, and 18 are rejected under § 103(a) as unpatentable
over Barrie, Bennett '758, and Webb3; and
claims 6-8, 10, 12, 13, 20, 21, 23, and 25 are rejected under
§ 103(a) as unpatentable over Barrie, Bennett '758, and Bennett '0134.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
The claimed subject matter pertains to a video slot machine where
virtual reels on a display appear to rotate and are stopped to reveal an array
of symbols. Spec. 1. Some symbols have predetermined functions, such as
“a multiplier symbol that multiplies an award for winning combinations
across a pay line.” Spec. 6. Independent claim 1 (directed to a gaming
method) is reproduced in an appendix to this decision. Independent claim 16
is directed to a gaming device and includes a processor programmed to
perform the gaming method of claim 1. See App. Br. 9 (“Claims 1 and 16
are virtually identical as being a method and the gaming device that carries
out the method.”).
Claim 1 calls for a step of designating a symbol position in an array
wherein the position displays a symbol different than would otherwise be

1 US 5,833,537, issued Nov. 10, 1998.
2 US 6,648,758 B2, issued Nov. 18, 2003.
3 US 6,336,860 B1, issued Jan. 8, 2002.
4 US 6,251,013 B1, issued Jun. 26, 2001.
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displayed in the position, the symbol having a predetermined function and
“the at least one particular first symbol position previously designated
containing no randomly selected symbol.” For simplicity, we refer to this
claimed feature as “a designated symbol position without a randomly
selected symbol.”
Barrie discloses a game device having an array of traditional symbols
118a-i, and persistent symbols 124a-c. A persistent symbol is a symbol that
persists in its location and effect through two or more sequential rounds of a
game. Abstract, col. 3, ll. 13-14, 23-26, 36-43. A persistent symbol occurs
on the basis of some game event, such as a predetermined time, number of
rounds, or is randomly generated (col. 5, ll. 32-39); and, can function to
multiply the payout of a winning combination. Col. 4, ll. 23-33.
Additionally, Barrie’s traditional and persistent symbols can be located at
the same play position. For example, Figure 1 depicts ring 124b and plum
118d in the same play position. Col. 3, ll. 43-46.
The Examiner finds that the combination of the randomly selected
traditional symbols, and the persistent symbols, provide “a selectively
designated space on the array that will have a predetermined function.” Ans.
4. However, Barrie lacks “a designated symbol position without a randomly
selected symbol” as called for by claim 1. See Ans. 4, App. Br. 12. To
remedy Barrie’s deficiency with respect to claim 1, the Examiner turns to the
disclosure of Bennett '758.
The Examiner finds Bennett '758 discloses a video spinning reel game
where a player can select a special symbol having a predetermined function
that is not randomly selected. See Ans. 4-5. Bennett '758 discloses that a
player selects substitute special symbols in a bonus game, such as a wild
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symbol that may also multiply wins. Col. 1, ll. 46-50. For example, Figure
5 depicts two reels having special “wild” symbols where payline 1 has a
wild symbol 100 “x10” that multiplies payline 1 by ten. Col. 5, l. 64 – col.
6, l. 1. Bennett '758’s special symbol is not random only to the extent that it
is chosen by a player. During game play Bennett '758 does not disclose that
the special symbol remains in the same position. App. Br. 9. As such, the
Appellant’s contention that all of Bennett '758’s symbols are randomly
selected for each spin of the reels is reasonable because the game is a
spinning reel game, the special symbols are on the reels, and Bennett '758’s
does not disclose the special symbols as being excluded from spinning.
App. Br. 12. Thus Bennett '758 does not disclose the claimed feature, “a
designated symbol position without a randomly selected symbol.”
The Examiner concludes it would have been obvious to incorporate
Barrie’s overlaying traditional and persistent symbols with Bennett '758’s
feature of having a special symbol. Ans. 5. However, Barrie’s traditional
symbol and Bennett '758’s special symbol are both displayed randomly; and,
the Examiner does not reasonably articulate how Barrie’s persistent symbol,
as modified by Bennett '758’s special symbol, results in a “a designated
symbol position without a randomly selected symbol.”
The Examiner’s conclusion of obviousness is alternatively supported
as being a simple substitution of one element for another element, or that the
combination only unites old elements together. Ans. 5-6. However, the
Examiner’s reasoning to substitute or unite Bennett '758’s special symbol
with the Barrie’s traditional symbols and persistent symbols has not been
articulated reasonably because it does not account for the claimed feature, “a
designated symbol position without a randomly selected symbol.”
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The Examiner also finds typical games use a random number
generator to present symbols to a player. Ans. 14-15. The Examiner
determines the presentation to be predetermined and not randomly selected.
Id. However outputs from a random number generator are randomly
generated. See Barrie, col. 5, ll. 37-39.
Since neither Barrie nor Bennett '758 teaches “a designated symbol
position without a randomly selected symbol” and the Examiner’s
conclusion of obviousness has not reasonably accounted for this claimed
feature via technical reasoning, we are constrained to reverse the Examiner’s
rejection of independent claims 1 and 16. For the reasons provided above,
the rejection of dependent claims 2, 5, 9, 11, 14, 17, 19, 22, 24 and 26 as
unpatentable over Barrie and Bennett '758 is also reversed.
The remaining rejections based on Barrie and Bennett '758 in
combination with Webb or Bennett '013 rely on the same findings and
reasoning that we are constrained to reverse, as discussed above. As such,
we cannot sustain the rejections under § 103(a) of claims 3, 4, and 18 as
unpatentable over Barrie, Bennett '758, and Webb, and claims 6-8, 10, 12,
13, 20, 21, 23 and 25 as unpatentable over Barrie, Bennett '758, and Bennett
'013.

DECISION
We REVERSE the rejections of claims 1-14 and 16-26.

REVERSED

Klh

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APPENDIX

1. A gaming method wherein an array of symbols is
displayed and an award is granted based on the displayed array
of symbols, the method comprising:
displaying a first array of symbol positions by the gaming
machine;
designating at least one particular first symbol position
in the first array of symbol positions, the step of designating
causing any symbol located at a designated symbol position to
be a first special symbol for a first game, the first special
symbol being different from a symbol that would be displayed
in the designated first symbol position had that symbol position
not been designated, wherein causing the first special symbol to
appear at a designated first symbol position results in that first
special symbol to have a predetermined function;
displaying a first array of symbols comprising randomly
selected symbols at all the symbol positions in the first array of
symbol positions, other than the first symbol position, after the
step of designating at least one particular first symbol position
in the first array of symbol positions, such that the first array of
symbols includes randomly selected symbols and the first
special symbol from the step of designating at least one
particular first symbol position in the first array of symbol
positions, the resulting first array of symbols being a first game,
the at least one particular first symbol position
previously designated containing no randomly selected symbol
occurring during the step of displaying the first array, so that a
function of the first symbol position is completely
predetermined prior to displaying the first array of symbols;
granting any award to the player for the first game based
upon obtaining winning combinations of the symbols displayed
in the first game including winning combinations of the
randomly selected symbols with the first special symbol, the
first special symbol being retained in the designated first
symbol position for at least one subsequent game;
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designating at least one particular second symbol
position in the first array of symbol positions during a second
game, the step of designating at least one particular second
symbol position in the first array of symbol positions causing
any symbol located at such a designated second symbol
position to be a second special symbol for the second game, the
second special symbol being different from a symbol that would
be displayed in the designated second symbol position for the
second game had that symbol position not been designated,
wherein causing the second special symbol to appear at a
designated second symbol position results in that second special
symbol to have a predetermined function;
displaying a second array of symbols comprising
randomly selected symbols at all the symbol positions in the
first array of symbol positions, other than the first symbol
position and the second symbol position, after the step of
designating at least one particular second symbol position in the
first array of symbol positions, such that the second array of
symbols includes randomly selected symbols selected after the
first game, the first special symbol from the step of designating
at least one particular first symbol position, and the second
special symbol from the step of designating at least one
particular second symbol position, the resulting second array of
symbols being a second game,
the at least one particular second symbol position
previously designated containing no randomly selected symbol
occurring during the step of displaying the second array, so
that a function of the second symbol position is completely
predetermined prior to displaying the second array of symbols;
and
granting any award to the player for the second game
based upon obtaining winning combinations of the symbols
displayed in the second game including winning combinations
of the randomly selected symbols with the first special symbol
and the second special symbol.
(Emphasis added.)