IGT

Patent Trials and Appeals Board

Mar 3, 2021

2020004636 (P.T.A.B. Mar. 3, 2021)

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.
15/070,885 03/15/2016 Adrian Wotton 025094-7968 P001701-004 2336
29159 7590 03/03/2021
Neal, Gerber & Eisenberg LLP (IGT)
2 N. LaSalle Street
Suite 1700
Chicago, IL 60602-3801
EXAMINER
HSU, RYAN
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
03/03/2021 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
ipusmail@ngelaw.com
patents@igt.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADRIAN WOTTON and ANTON TJIOE
Appeal 2020-004636
Application 15/070,885
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and
CHARLES N. GREENHUT, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5, 7–17, 19, 20 and 23, 24. See Final
Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as IGT. Appeal Br. 2.
Appeal 2020-004636
Application 15/070,885
2
CLAIMED SUBJECT MATTER
The claims are directed to a gaming device having extending wild
symbols. Claim 1, reproduced below, with emphasis added, is illustrative of
the claimed subject matter:
1. A dedicated electronic gaming machine comprising:
a housing;
at least one display device supported by the housing;
a plurality of input devices supported by the housing, said
plurality of input devices including a payment acceptor;
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:
responsive to a physical item being received via the
payment acceptor, establish a credit balance based, at least in
part, on a monetary value associated with the received physical
item, wherein the physical item is selected from the group
consisting of: a ticket associated with the monetary value and a
unit of currency;
cause the at least one display device to display a plurality
of reels, each reel including a plurality of symbols at a plurality
of reel stop positions, wherein distinct from the plurality of reel
stop positions of the reels, each reel is associated with a plurality
of initially displayed symbol display positions and each reel is
associated with at least one initially non-displayed symbol
display position,
thereafter, for a play of a game, cause the at least one
display device to display a first quantity of symbols by
displaying, at the plurality of initially displayed symbol display
positions associated with the reels, a plurality of the symbols at
a plurality of the reel stop positions of the reels,
for the play of the game, responsive to a wild symbol at
one of the reel stop positions of one of the reels being displayed
at one of the initially displayed symbol display positions
associated with that reel and a wild symbol extension triggering
event separately occurring:
Appeal 2020-004636
Application 15/070,885
3
cause the at least one display device to display a
second, greater quantity of symbols by displaying, for that
displayed wild symbol, an extension of that displayed wild
symbol to at least one of the initially non-displayed symbol
display positions associated with that reel,
determine any awards associated with the displayed
symbols and any wild symbols displayed at any of the
initially displayed symbol display positions associated
with any of the reels, and
cause the at least one display device to display any
determined awards, wherein the credit balance is
increasable based on any determined awards, and
responsive to a cashout input being received, cause an
initiation of any payout associated with the credit balance.
Appeal Br. 28–29 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Casey US 2006/0068881 A1 Mar. 30, 2006
Jensen US 2008/0108411 A1 May 8, 2008
Jaffe US 2008/0188286 A1 Aug. 7, 2008

REJECTIONS
The Examiner withdrew the rejection under § 101. Final Act. 5; Ans.
3.
Claims 1–3, 5, 13–15, 17, and 19 are rejected under 35 U.S.C.
§ 102(a)(1) as being anticipated by Jaffe. Final Act. 7.
Claims 7–9, 11–12, 20, and 23–24 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Jaffe and Jensen. Final Act. 13.
Claims 4 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jaffe and Casey. Final Act. 18.
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Application 15/070,885
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Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Jaffe and Jensen and, Casey. Final Act. 19.
OPINION
The § 101 rejection having been withdrawn (Ans. 3) the Examiner
accurately characterizes the two issues before us:
Appellant and the Examiner disagree as whether [Jaffe’s]
additional expanded symbols result in i) are displayed in a
previously non-displayed symbol position and ii) results in
increasing a quantity of displayed symbols by expanding any
symbols to any of the initially non-displayed symbol display
positions.
Ans. 4; Reply Br. 3–6. Each of independent claims 1, 7 and 13 contains
similar limitations in these respects.
Although we do not regard the Examiner’s construction of “initially
non-displayed symbol display positions” as unreasonably broad with regard
to the first issue, we do not agree with the Examiner with regard to the
second issue that displaying an extension of the wild symbol into those
positions causes the display of a “greater quantity of symbols.”
It is axiomatic that in prosecution before the PTO claims are given
their broadest reasonable interpretation in light of the Specification.
Appellant does not facilitate our understanding of the phrase in question
with precise references to Appellant’s Specification. Appeal Br. 4. It seems
the only discussion of the recited “initially non-displayed symbol display
position” comes at paragraph 59, which states, in its entirety:
[0059] In the examples described the wild symbol is extended to
the visible area only of the display device such as 60. It is
possible however that the wild symbol may be extended to
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Application 15/070,885
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symbol positions outside the visible symbol positions to enhance
the number of possible winning hits.
Both of the sentences that form the entirety of paragraph 59 are
relevant to gaining an understanding of what positions Appellant is referring
to with each instance of the term. The second sentence refers to “symbol
positions outside the visible symbol positions” (emphasis added). Due to the
contrasting reference being to visible symbol positions, this sentence seems
like it could certainly refer to, like the positions the Examiner relies on in
Jaffee (Final Act. 8; Ans 4–7; Jaffe Figs. 3–5, paras. 31, 32, 37, 37),
positions that are within the visible area of the screen but not visible at a
particular time.
However, the matter is confused by the fact that the same sentence, by
using the term “however,” appears to be intended to describe an embodiment
being contrasted with that described in the first sentence of paragraph 59.
While the first sentence refers to a “wild symbol [] extended to the visible
area only” the second sentence does not expressly refer to symbol positions
outside the visible area of the display. Rather, the second sentence refers
only to “positions outside the visible symbol positions.” It would certainly
seem to be possible for symbol positions to be invisible or non-displayed
while being within the visible area of the display device. Such an
understanding forms the basis for the Examiner’s reliance on Jaffe for the
recited “initially non-displayed symbol display positions.”
Appellant argues the symbol display positions must essentially
coincide with reel stop positions of a reel:
the number of symbol display positions is less than the number
of reel stop positions of that reel such that the symbols of certain
of the reel stop positions of a reel are displayed to a player
(through the symbol display positions) and the symbols of certain
Appeal 2020-004636
Application 15/070,885
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of other reel stop positions of the reel are not displayed to the
player.
Appeal Br. 20–21. However, Appellant does not apprise us of any language
in the claim, or enlightenment by way of the Specification, that requires such
a narrow interpretation of the recited symbol display positions. As far as we
are aware the symbol display positions are only broadly required to be
“associated with that reel.”
The Examiner identifies two instances of “initially non-displayed
symbol display positions associated with that reel” in Jaffe. Ans. 5. The first
is the three cell by one cell sized position occupied by a symbol 72 of a
porcine character holding the word “WILD” in Figure 5. We agree with the
Examiner that this three cell by one cell sized position is reasonably
regarded as an “initially non-displayed symbol display position associated
with” at least the center reel. That there were three different single cell
symbol display positions 64 occupying that general area as seen in Figure 3,
prior to the wild card expansion of Figures 4 and 5, we do not see how this
changes the fact that in figure 5 there is a new three cell by one cell sized
position for displaying a symbol (making it reasonably regarded as a symbol
display position) that was initially (Fig. 3) “non-displayed.”
The second instance in Jaffe of an “initially non-displayed symbol
display position,” according to the Examiner, is the smaller version of the
“HAYSTACK BONUS” symbol which can be seen in Figure 6 as occupying
less space than the analogous symbols of Figures 3–5. In contrast to the first
example cited by the Examiner the smaller “symbol display position”
occupies less than an entire cell or symbol display position 64. We are
neither apprised of nor can we see any good reason to not regard the smaller
“HAYSTACK BONUS” as occupying a smaller “symbol display position”
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Application 15/070,885
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that is less than the size of the single-cell display positions 64 illustrated in
Figure 3, which position was initially “non-displayed.”
If Appellant wished to claim subject matter wherein “initially non-
displayed symbol display positions” were either outside the visible area of
the display, as may be described in paragraph 59 of Appellant’s
Specification, and/or directly correlated to non-displayed reel stop positions
as alluded to in Appellant’s arguments, language was certainly available for
Appellant to recite such requirements in the claims.2 Such requirements
being notably absent from the claim language it is our duty not to import
them. In re American Academy of Science Tech Center, 367 F.3d 1359, 1369
(Fed. Cir. 2004). Limitations not appearing in the claims cannot be relied
upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
With regard to the second issue related to the “quantity of symbols”
increasing by the wild symbol expansion discussed above, the Examiner
relies on language in Jaffe that suggests the new symbols form a cover or
layer over those previously displayed. Ans. 6–7. Although, unlike Appellant,
we do not regard that characterization as necessarily inaccurate (Reply Br.
3–5), we nevertheless agree with Appellant that when a symbol is covered
by another layer that initial symbol is no longer reasonably regarded as
being “displayed.” Appeal Br. 21. In the expansion depicted in Figures 4 and
5 of Jaffe, according to the Examiner three symbols are covered by one
symbol. This results in a net loss of two symbols being displayed and not, as
the Examiner posits, a net gain of one symbol. In the Figure 6 embodiment

2 The issue of whether there exists adequate supporting disclosure for such
subject matter pursuant to the requirements of 35 U.S.C. § 112, first
paragraph, is not before us and a matter upon which we do not express any
opinion at this time.
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more heavily relied upon for this aspect of the claim language by the
Examiner (Ans. 6–7), at most two symbols (arguably only one symbol
formed from two symbols (Reply Br. 5–6)) cover three symbols again
resulting in a net loss of displayed symbols. The Examiner has not taken the
position on the record presently before us that, according to paragraph 37,
other arrangements involving additional overlaid symbols are possible or
suggested by Jaffe. Thus, on the record presently before us, the Examiner
has not established that Jaffe’s display device displays “a second, greater
quantity of symbols” as a result of the wild symbol expansion. Accordingly,
because the Examiner has not established anticipation by Jaffe, and none of
the other cited references cure this shortcoming, we do not sustain the
Examiner’s rejections on the grounds presently set forth by the Examiner.
CONCLUSION
The Examiner’s rejections are REVERSED.
Appeal 2020-004636
Application 15/070,885
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 5,
13–15,
17, 19
102(a)(1) Jaffe 1–3, 5,
13–15,
17, 19
7–9, 11,
12, 20,
23, 24
103(a) Jaffe, Jensen 7–9, 11,
12, 20,
23, 24
4, 16 103(a) Jaffe, Casey 4, 16
10 103(a) Jaffe, Jensen,
Casey
10
Overall
Outcome
1–5, 7–
17, 19,
20, 23, 24
REVERSED