Ex Parte Jaffe et al

Board of Patent Appeals and Interferences

May 30, 2012

11238326 (B.P.A.I. May. 30, 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.
11/238,326 09/29/2005 Joel R. Jaffe 247079-000314USPT 9195
70243 7590 05/30/2012
NIXON PEABODY LLP
300 S. Riverside Plaza
16th Floor
CHICAGO, IL 60606
EXAMINER
RADA, ALEX P
ART UNIT PAPER NUMBER
3716
MAIL DATE DELIVERY MODE
05/30/2012 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 JOEL R. JAFFE and WILLIAM WADLEIGH
____________________

Appeal 2010-006043
Application 11/238,326
Technology Center 3700
____________________

Before: KEN B. BARRETT, CHARLES N. GREENHUT, and
MICHAEL L. HOELTER, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-006043
Application 11/238,326
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
27. App. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection.

The claims are directed to a wagering game with symbols collection.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1 A wagering game terminal, comprising:
a wager input device for receiving wager inputs at said
wagering game terminal, said wagers applied to a wagering
game in which outcomes are randomly selected from a plurality
of outcomes; and
a display for displaying symbols indicative of each
randomly selected outcome, said symbols including special
event symbols that are added to a special event collection
associated with a player in response to said special event
symbols being displayed on said display in a predetermined
manner, said special event collection triggering a special event
on said wagering game terminal when complete;
wherein said wagering game terminal is configured to
store special event symbols that have been added to said special
event collection upon conclusion of a current gaming session
associated with the player and to restore previously stored
special event symbols to said special event collection in a
subsequent gaming session associated with the player.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Morro
Crawford
US 5,947,820
US 6,270,412 B1
Sep. 7, 1999
Aug. 7, 2001
Giobbi US 2001/0046893 A1 Nov. 29, 2001
Appeal 2010-006043
Application 11/238,326
3
REJECTIONS
Claims 1-20 are rejected under 35 U.S.C. § l03(a) as being
unpatentable over Morro and Crawford. Ans. 3.
Claims 21-27 are rejected under 35 U.S.C. § l03(a) as being
unpatentable over Morro, Crawford, Giobbi. Ans. 8.

OPINION
Background
The problem facing Appellants was that in wagering game terminals,
whether in a basic game or bonus game, once a player leaves a
gaming session, he or she has to start from the beginning in the
next gaming session. Typically, upon termination of play, the
player is awarded the balance of any credits, but also loses any
unused or unredeemed game assets that he or she may have
accumulated. Further, any selections the player may have made,
for example, any paths the player may have taken or options he
or she may have chosen during the game, are reset so that there
are no indications of where the player has been or what he or
she has done.
Spec. p. 2, para. [0007].
Appellants addressed this problem by providing a system wherein,
“players may carry over the symbols and/or symbol combinations they have
collected across multiple gaming sessions and multiple gaming terminals. In
this way, the players may retain the benefit of their previous gaming
experiences.” Spec. p. 3, para. [0009]. Such an arrangement is advantageous
when a special event, such as a bonus game is triggered upon completion of
a collection of special symbols during gameplay, a “special event
collection,” because “[t]he special event collection may be completed over
multiple gaming sessions without restarting the special event collection.”
Spec. p. 4, para. [0013].
Appeal 2010-006043
Application 11/238,326
4
Game asset information may be retained through a “ticket-in-ticket-
out” (TITO) system connecting various terminals 100a, 100b on a network
212 or it may be stored and retrieved in a stand-alone terminal. Spec. p. 8,
para. [0038]; p. 10, para. [0043].When a player 300 cashes out of any
wagering game terminal, the terminal may generate a game-specific file 308
storing various information about the game. A game record 310 for the file
308 is created and stored in a database 306 or local memory 202. Spec. p. 8-
9, para. [0039], p. 9-10, para. [0043]. The player is issued a ticket having a
unique identifier for the game record 310. Spec. p. 9, para. [0040]. When the
player subsequently returns to the same, or a different, terminal the ticket
may be presented to an information reader 110 so that the appropriate game
record 310 may be retrieved based on the unique identifier on the ticket.
Spec. p. 9-10, paras. [0042]-[0043].

The prior art
Morro discloses an electronic gaming terminal 702 which includes
wagering and other input devices 708, 710, a computer 704, and display
screen 706. Col. 3, ll. 35-45, fig. 7. Morro’s gaming terminal is configured
to display a combination electronic slot machine (at 224) and puzzle
completion game (at 218). Col. 4, ll. 9-10, fig. 2. The letters of the puzzle
that are revealed in figure 2 namely, all of the Rs, Ns, Es, and Ts, may be
revealed as a result of previous play. Col. 4, ll. 16-17. When a winning
combination is shown on the slot machine portion 224 the computer will
reveal 804 all covered letters in the puzzle portion 218 that match letters 232
in the slot machine portion 224. Col. 4, ll. 54-61. When all of the letters in
the phrase 218 have been revealed a bonus screen 302 with a game is
displayed. Col. 5, ll. 9-15, fig. 3. Morro does not disclose any means or
Appeal 2010-006043
Application 11/238,326
5
method by which a player can save the uncovered letters in the puzzle
portion 218 to ensure that when that player returns to the same or another
gaming terminal after leaving it, the player may resume completion of the
puzzle without the need to start over.
Crawford discloses a slot machine that performs the same functions as
a conventional slot machine but additionally has a “symbol save feature”
which allows a player to save any displayed symbol for use in a subsequent
game. Col. 2, ll. 60-61. After a spin, the player may elect to save one or
more of the displayed symbols for each reel position. Col. 3, ll. 51-52. “The
saved symbols are stored in a symbol save memory 54 (FIG. 2), and the save
symbols are displayed to the user in display areas 56, 57 and 58 in FIG. 3.”
Col. 4, ll. 1-3. The saved symbols in areas 56-58 can be used in combination
with reel combinations in the display windows 40-42 during subsequent
games (Fig. 4, steps 9, 13). Col. 4, ll. 8-20, 30-35. Crawford does not
disclose any means or method by which a player can save any symbols in
the areas 56-58 to ensure that when that player returns to the same or another
gaming machine after leaving it, any symbols that were in the areas 56-58
before the player left the game may be used in combination with reel
combinations in the display windows 40-42 during subsequent games.
In Giobbi,
player identification card 154 may be used to save/record the
status of a game involving a continuing performance or
progression of events when the player chooses to pause the
game. The game may be paused at any time the player wishes.
When paused, the status of the game is preferably saved in the
player’s personal record in the database 158 at the host
computer 150. Then, when the player wants to resume the
game, the player may input the player identification card 154
into any of the gaming machines 10 that execute that game. The
Appeal 2010-006043
Application 11/238,326
6
gaming machine then addresses the personal database record
associated with the personal identifier on the card 154, retrieves
the last status of the paused game, and configures itself to
initiate play of the game from the point at which the game was
paused ….
….
Thus, the player may play an entire football game or
boxing match, for example, without having to stay at the
machine the entire time, and without having to return to the
same machine in the future to conclude the game. This
embodiment could further be used, for example, for a player to
simulate a season in football, baseball, or any other team sport
or a career in boxing, tennis, or any other individual sport.
Further, in sports such as horse racing and auto racing, this
embodiment could be used to allow the player to build up a
stable of horses or a team of automobiles that would be
managed over time by the player. Thus, in addition to the
payoffs granted by the machine, the player may build up status
on the game over time, and these status improvements may be
used by casino operators to grant special bonuses ….
….
… though the present invention has been described with
respect to the portrayal of simulated sporting events, the
invention is not limited to portraying simulated sporting events
and includes the portrayal of other types of events and actions.
p. 5, paras. [0036], [0038], [0040], fig. 6.

The Examiner’s rejections based on Morro and Crawford.
As Appellants point out, the Examiner’s position has been somewhat
inconsistent. Reply Br. 2-3, 8-9. The Examiner contends that in Morro “the
special event symbols added to the special event collection (218) is stored on
the gaming machine via the display.” Ans. 4. The Examiner elaborates on
this reasoning stating, “[i]t is understood by Morro that the letters revealed
and added to the phrase are stored on the display in memory.” Ans. 11.
Appeal 2010-006043
Application 11/238,326
7
Initially the Examiner contends Morro is silent regarding the restoring and
removing limitations. Ans. 4, 11. However, the Examiner, citing a dictionary
definition of restore then contends, apparently with reference to Morro, that
What ever letters (special event symbols) were revealed in the
phrase (special event collection) and stored in memory at the
end of the game, the next (subsequent) game session when a
player inserts a wager to initiate or activate the wagering game
all of the previously stored special event symbols to the special
event collection associated with the player in memory are
brought back (active) to continue play of the game. Since the
letters (special event symbols) and the phrase (special event
collection) associated with the player playing the game are
displayed and saved in memory, the next (subsequent) gaming
session the letters (special event symbols) and the phrase
(special event collection) are brought back (restored) … into
existence or use[d] to continue[] play. When the phrase (special
event collection) is revealed or solved, then the letters (special
event symbol) are removed from the display upon conclusion of
the current gaming session.
Ans. 12.
According to the Examiner’s interpretation of the claim terms
expressed above, other than specifically terming the symbols in the special
event collection “saved,” Crawford does not add anything particularly
relevant to the disclosure of Morro regarding the claimed subject matter. It is
undisputed that both Morro and Crawford place symbols in a separate
collection. It is also undisputed that Morro and Crawford, whether
considered independently or in combination, do not teach associating,
storing, or restoring in the manner that Appellants contend is necessary to
meet all the limitations of independent claims 1, 11, 19, and 20.
The limitation that is critical to the dispute between Appellants and
the Examiner is “gaming session,” a term appearing in each of the
independent claims involved in this appeal. Even if we were to presume that
Appeal 2010-006043
Application 11/238,326
8
the Examiner’s interpretations of “associated,” “store,” “restore,” “remove,”
were all reasonable, despite Appellants’ protest to the contrary, in order for
Morro or the combination of Morro and Crawford to disclose or render
obvious subject matter encompassed by any of claims 1, 11, 19, and 20, we
would need to agree that the Examiner’s interpretation of “gaming session”
is also reasonable. We conclude that it was not.
Based on the Examiner’s statement above, it is apparent that the
Examiner considers a “gaming session” to end at the end of a game and a
subsequent gaming session to begin when a player makes a new wager,
thereby starting a new game. Appellants, on the other hand, would consider
this a single gaming session because a gaming session includes stopping and
leaving the game. See Reply Br. 11. As discussed above, in Morro, the
puzzle, interpreted by the Examiner as the “special event collection,” may be
maintained from game to game as long as a player keeps wagering at the end
of each game. Defining a gaming session entirely by the actions of the
player is problematic. A player may leave between games or even during a
game and, if the state of that machine has not been altered, for example, by
another player, or because the machine is programmed to do so after a
certain time without user input, the player may return to, and continue, that
game without the need to start over. To say that the player then played
multiple gaming sessions by virtue of simply leaving the machine would be
inconsistent with the Specification which states, “once a player leaves a
gaming session, he or she has to start from the beginning in the next gaming
session.” While there is no clear express lexicographic definition of “gaming
session” in the Specification, when giving claim terms their broadest
reasonable construction, the construction cannot be divorced from the
specification. See, e.g., In re NTP, 654 F.3d 1279, 1288 (Fed. Cir. 2011).
Appeal 2010-006043
Application 11/238,326
9
The fact that the conclusion of a “gaming session” would normally require a
player to start from the beginning demonstrates that, when read in light of
the Specification, one of ordinary skill in the art would have understood
“gaming session” to mean something that concludes when the game state is
lost, for example, when a player cashes out, as discussed above. Although
the terminals in Morro and Crawford may wait for a wager or a decision by
the player to play another game, the game state, including the puzzle in
Morro or saved symbols in Crawford, is preserved. Thus we agree with
Appellants that, to the extent any associating, storing, removing or restoring,
according to the Examiner’s interpretation of those terms, occurs in Morro
or Crawford, it occurs over multiple games of a single gaming session and
not over a current and subsequent, or over multiple, gaming sessions. For
this reason, we must reverse the Examiner’s rejection of claims 1-20 based
on the combination of Morro and Crawford. Since the Examiner relied upon
the same claim interpretation and reasoning in rejecting claims 21-27 based
on the combination of Morro, Crawford, Giobbi, we must reverse this
rejection as well.

Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new grounds
of rejection of claims 1-27 under 35 U.S.C. § 103(a) as being unpatentable
over Morro and Giobbi.
It is clear that Morro discloses the basic device, method, or medium
claimed as found by the Examiner and discussed above. The Examiner
construed a number of claim terms very broadly and Appellants disputed
these constructions as also discussed above. Apparently as a result of these
broad constructions, the Examiner did not see a need to include Giobbi in
the rejection of claims 1-20. However, Giobbi as discussed above, though
Appeal 2010-006043
Application 11/238,326
10
primarily focused on sporting games, solves the exact same problem with
which Appellants were confronted in almost exactly the same way. Giobbi
teaches association of a game state, which would include the puzzle symbols
when applied to the type of game of Morro, with a player via an identifier on
a card. That state is stored in a database and can later be retrieved on the
same or a different machine after the game has lost that state. Thus, even if
we were to adopt each of Appellants’ proposed constructions for the claim
terms, the claimed subject matter would have been obvious to one of
ordinary skill in the art in light of the combined teachings of Morro and
Giobbi. Accordingly, we reject claims 1-27 under 35 U.S.C. § 103(a) as
being unpatentable over Morro and Giobbi.

DECISION
The Examiner’s rejections of claims 1-27 are reversed.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new
grounds of rejection of claims 1-27 under 35 U.S.C. § 103(a) as being
unpatentable over Morro and Giobbi.

37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .
Appeal 2010-006043
Application 11/238,326
11
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

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).

REVERSED; 37 C.F.R. § 41.50(b)

hh