IGTDownload PDFPatent Trials and Appeals BoardMar 3, 20212020004636 (P.T.A.B. Mar. 3, 2021) Copy Citation 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. Appeal 2020-004636 Application 15/070,885 4 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 Appeal 2020-004636 Application 15/070,885 5 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 6 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” Appeal 2020-004636 Application 15/070,885 7 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. Appeal 2020-004636 Application 15/070,885 8 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 9 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 Copy with citationCopy as parenthetical citation