Ex Parte 6641477 et al

Patent Trial and Appeal Board

Dec 2, 2014

90012379 (P.T.A.B. Dec. 2, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/012,379 06/29/2012 6641477 007134.00012 3379
6449 7590 12/03/2014
ROTHWELL, FIGG, ERNST & MANBECK, P.C.
607 14th Street, N.W.
SUITE 800
WASHINGTON, DC 20005
EXAMINER
GAGLIARDI, ALBERT J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/03/2014 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 PATENT TRIAL AND APPEAL BOARD
________________

Ex parte REMBRANDT GAMING TECHNOLOGIES, LP
Patent Owner
________________

Appeal 2014-007853
Reexamination Control 90/012,379
Patent 6,641,477
Technology Center 3900
________________

Before JASON V. MORGAN, HUNG H. BUI, and
MICHELLE N. WORMMEESTER, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL1
Introduction
Rembrandt Gaming Technologies, LP (“Patent Owner”), appeals
under 35 U.S.C. §§ 134(b) and 306 from the Examiner’s final rejection of
claims 1, 32, and 34 of U.S. Patent No. 6,641,477 (“’477 patent”). Claims
2–31, 33, and 35 are not subject to reexamination. Final Act. 1–2. We have
jurisdiction under 35 U.S.C. §§ 6(b), 134(b), and 306.
We AFFIRM-IN-PART.

1 An oral hearing for this appeal was held November 5, 2014.
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Invention
Michael J. Dietz, II, invented an “electronic slot machine . . . which
allows a player to completely replace up to all of the initial symbols
displayed after the first draw in order to create, improve or even lose a
winning combination.” ’477 patent Abstract.
Exemplary Claims
Claims 32 and 34, reproduced below with key limitations emphasized,
are representative:
32. A method of operating an electronic gaming apparatus
having a plurality of symbols arrayed in multiple symbol
columns and rows on its monitor comprising the steps of:
selecting initial symbols to be arrayed in said multiple
symbol columns and rows;
displaying the initial symbols selected in an array of
multiple symbol columns and rows on said monitor after a
display of a simulated spinning motion;
designating a chosen number, from one to all, of said
initial displayed symbols for replacement;
selecting said chosen number of replacement symbols;
replacing said chosen number of initial symbols on said
monitor with replacement symbols after the display of a
simulated spinning motion;
determining whether said replacement symbols and any
remaining initial symbols arrayed in said multiple symbol
columns and rows constitute a winning combination; and,
rewarding a winning combination.
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34. A method of operating an electronic gaming apparatus
having a plurality of symbols arrayed in multiple symbol
columns and rows on its monitor so as to appear to be on a
plurality of vertical reels comprising the steps of:
selecting initial symbols to be arrayed in said multiple
symbol columns and rows;
displaying the initial symbols selected in an array of
multiple symbol columns and rows on said monitor so as to
appear to be on a plurality of vertical reels;
designating a chosen number, from one to all, of said
initial displayed symbols for replacement;
selecting said chosen number of replacement symbols;
replacing said chosen number of initial symbols on said
monitor with replacement symbols;
determining whether said replacement symbols and any
remaining initial symbols arrayed in said multiple symbol
columns and rows constitute a winning combination; and,
rewarding a winning combination.
Rejections
The Examiner rejects claims 32 and 34 under 35 U.S.C. § 102(b) as
being anticipated by Wain (GB 2 097 160 A; Oct. 27, 1982). Ans. 3–4.
The Examiner rejects claims 32 and 34 under 35 U.S.C. § 102(b) as
being anticipated by the Tequila Sunrise advertisement (Orig. Ex Parte Req.
by Third Party (“Req.”), Exhibit G, pp. 5–6) (“Tequila Sunrise”). Ans. 5–
13.
The Examiner rejects claims 1 and 32 under 35 U.S.C. § 103(a) as
being obvious over Wain and Marchini (GB 2 251 112 A; June 24, 1992).
Ans. 14 (citing Req. 49–52, 99–105).
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The Examiner rejects claim 32 under 35 U.S.C. § 103(a) as being
obvious over Wain and Tequila Sunrise. (Req. Exhibit G, pp. 1–4). Ans. 14
(citing Req. 50–52, 106–08).
ISSUES2
1. Did the Examiner err in relying on Tequila Sunrise as prior art?
2. Did the Examiner err in concluding claim 32 only requires a single
display of a simulated spinning motion?
3. Did the Examiner err in finding Wain discloses “determining
whether said replacement symbols and any remaining initial symbols
arrayed in said multiple symbol columns and rows constitute a winning
combination,” as recited in claim 34?

ANALYSIS
Issue 1—Tequila Sunrise as prior art
The Examiner relies on Tequila Sunrise in rejecting claims 32 and 34
under 35 U.S.C. § 102(b), and in rejecting claim 32 under 35 U.S.C.
§ 103(a). Appellant contends the Examiner has not shown Tequila Sunrise
qualifies as a printed publication under 35 U.S.C. § 102(b). App. Br. 12–19.
We agree with Appellant, the Examiner presents insufficient evidence
showing that Tequila Sunrise represented a printed publication under 35
U.S.C. § 102(b).
To qualify as a printed publication, Tequila Sunrise would have had to
have been disseminated or otherwise made accessible to persons interested

2 We only address these issues, which are dispositive. We do not address
additional, non-dispositive issues raised by Appellant’s arguments.
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and ordinarily skilled in gaming machine design before the critical date. See
Orion IP, LLC v. Hyundai Motor America, 605 F.3d 967, 974 (Fed. Cir.
2010). The Examiner finds Tequila Sunrise “was publicly distributed to
describe the bonus features, game play, and machine configuration for the
Tequila Sunrise slot game.” Ans. 10 (emphasis added). However, the
Examiner does not provide persuasive support for this finding.
The Examiner cites to a sworn statement that Tequila Sunrise was
distributed in Australia as early as 1993. Ans. 18 (citing Req. Appendix G,
Decl. of Peter Chick (“Chick Decl.”)). However, even the conclusory
statement that Tequila Sunrise was “distributed in Australia at least as early
as 1993 by Aristocrat Leisure Industries to customers and potential
customers of licensed gaming machine dealers” fails to state the purported
distribution was public in nature or to identify the purported recipients as
persons interested and ordinarily skilled in gaming machine design. Chick
Decl. 2.
Furthermore, we agree with Appellant the 1993 copyright date in
Tequila Sunrise does not show the requisite availability in 1993, as the
Examiner finds. Ans. 18. Instead, the 1993 “copyright date merely
establishes ‘the date the document was created or printed.’” App. Br. 13
(citing Hilgraeve, Inc. v. Symantic Corp., 271 F. Supp. 2d 964, 975 (E.D.
Mich. 2003)). Thus, we find the evidence of record is insufficient to show
Tequila Sunrise was disseminated or otherwise made accessible to persons
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interested and ordinarily skilled in gaming machine design. Therefore, we
find the Examiner erred in relying on Tequila Sunrise as prior art.3
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 102(b)
rejection of claims 32 and 34 as being anticipated by Tequila Sunrise. We
also do not sustain the Examiner’s 35 U.S.C. § 103(a) rejection of claim 34
as being obvious over Wain and Tequila Sunrise.
Issue 2—Single display of a simulated spinning motion
In rejecting claim 32 as being anticipated by Wain, or obvious over
Wain in view of Marchini, the Examiner interprets the claim “replacing said
chosen number of initial symbols . . . after the display of a simulated
spinning motion” (emphasis added) as referring to the recitation “displaying
the initial symbols . . . after a display of a simulated spinning motion”
(emphasis added). Ans. 38. The Examiner concludes this interpretation
falls within a broad but reasonable interpretation, in light of the
Specification, because of the ostensible antecedent/postcedent relationship
between the two recitations (i.e., “after a display” and “after the display

3 The Examiner notes Appellant does not dispute the assertion that Tequila
Sunrise slot machines were sold in Australia as early as 1993. Ans. 30; see
also Chick Decl. 2. However, this assertion does not show Tequila Sunrise
represents a printed publication under 35 U.S.C. § 102(b) as the sale of these
machines does not show what Tequila Sunrise marketing material (e.g., the
Tequila Sunrise reference) was disseminated or otherwise made accessible to
persons interested and ordinarily skilled in gaming machine design before
the critical date. We also note, in passing, the sale or public use of such
machines in Australia does not represent the sale or public use of such
machines in this country, and therefore, the Tequila Sunrise machines
themselves, at least based on the evidence presented, cannot be used to show
the claimed invention lacked novelty or was obvious.
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. . .”) and because the ’477 patent discloses embodiments that do not require
a second spin. Ans. 39 (citing ’477 patent col. 9, ll. 8–17 (disclosing games
where the player can switch the positions of two symbols or substitute a
tenth symbol for one of the other nine symbols)).
Appellant contends the Examiner erred because the broadest
reasonable interpretation of the two display recitations requires both a first
simulated spinning motion (depicting the selection of initial symbols) and a
second simulated spinning motion (depicting the selection of replacement
symbols). App. Br. 39–40 (citing, e.g., App. Br. Appendix C, Decl. of Nick
Farley (“Farley Decl.”) ¶ 28–33). Appellant points to multiple examples in
the ’477 patent disclosing a second spin. App. Br. 40 (citing’477 patent
Title, Fig. 5, col. 1, ll. 10–13, col. 2, ll. 34–37, col. 3, ll. 27–29, and col. 7, ll.
37–40). Appellant notes the second recitation of “a simulated spinning
motion” (emphasis added) uses neither “the” nor “said,” and thus, Appellant
argues the second simulated spinning motion recitation does not refer back
to the first recitation of “a simulated spinning motion.” App. Br. 40.
Appellant also argues the recitation “after the display of a simulated
spinning motion” would be rendered meaningless were it to refer to the
display of the first simulated spinning motion. Id. (citing Farley Decl. ¶ 30).
We agree with Appellant the Examiner’s interpretation of claim
recitations is unreasonably broad. In particular, the recitation “replacing
said chosen number of initial symbols” necessarily occurs after “designating
a chosen number . . . of said initial symbols,” which necessarily occurs after
“displaying the initial symbols.” That is, the recitations explicitly set forth
the order in which these three steps are performed. The first performed step
of displaying the initial symbols occurs “after a display of a simulated
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spinning motion.” Thus, if the recitation “after the display of a simulated
spinning motion” did not exist, the third replacing step would still occur
“after a display of a simulated spinning motion.” Therefore, interpreting the
second display of a simulated spinning motion to refer to the first display of
a simulated spinning motion would render the recitation “after the display of
a simulated spinning motion” superfluous.
We conclude an artisan of ordinary skill would have read the
recitation “after the display of a simulated spinning motion” to mean the
display of a second simulated spinning motion. This interpretation would
give meaning to the second “after the display . . .” recitation and accords
with the general teachings of the ’477 patent. Although the Examiner
correctly notes the ’477 patent discloses embodiments that do not require a
second spin (Ans. 39), an artisan of ordinary skill would have recognized
that such embodiments fall outside the scope of claim 32 (but not outside the
scope of claims 1 and 34, which lack comparable recitations).
The Examiner’s findings do not show, and the Examiner does not
even contend, Wain discloses a second simulated spinning motion. Ans. 3,
40. In particular, the Examiner cites to the same portion of Wain as
disclosing both the first simulated spinning motion and the second simulated
spinning motion. Id. (citing, e.g., Wain 2, ll. 17–23). The cited portion of
Wain merely discloses simulating the rotation of reels after actuation of the
machine, not simulating a second rotation of the reels. Wain 2, ll. 17–23.
Accordingly, we do not sustain the Examiner’s § 102(b) rejection of
claim 32 as being anticipated by Wain.
The Examiner alternatively concludes that even if claim 32 requires “a
second simulated spinning motion, the use of a second simulated motion
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would have been obvious in view of . . . Marchini.” Ans. 39; see also Ans.
14 (citing Req. 49–52, 99–105). However, the Examiner’s findings merely
show that Marchini teaches or suggests rotating a reel through one or more
positions. Req. 51, 104 (cited by Ans. 14). Specifically, Marchini teaches a
“nudge” function that provides a player with the opportunity to improve a
combination. Marchini 4, ll. 20–26 (cited by Req. 51, 104). The Examiner’s
findings do not show that a “nudge” function cures the noted deficiency of
Wain because the Examiner’s findings do not show that a “nudge” teaches
or suggests a second spin.
Accordingly, we also do not sustain the Examiner’s § 103(a) rejection
of claim 32 as being obvious over Wain and Marchini.
Issue 3—Scope of determining step
In rejecting claim 34, the Examiner finds Wain, by providing a player
with an opportunity to improve a combination on a winning line to either
improve a winning combination or convert a losing combination into a
winning combination, discloses the disputed limitation: “determining
whether said replacement symbols and any remaining initial symbols
arrayed in said multiple symbol columns and rows constitute a winning
combination”. Ans. 4 (citing Wain 1, ll. 12–17, 2, ll. 30–36).
Appellant contends the Examiner erred because the disputed
limitation recites “‘multiple symbol columns and rows[,]’ [which] means
more than one column, each with multiple symbols, and more than one row,
each with multiple symbols.” App. Br. 31. Thus, Appellant argues “the
‘determining’ steps require consideration of replacement symbols and any
remaining initial symbols in more than one column and more than one row
to determine whether the replacement symbols and any remaining initial
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symbols constitute a winning combination.” Id. at 31–32 (emphasis added);
see also Farley Decl. ¶¶ 22–23; Reply Br. 28–29 (“merely determining
whether symbols on a single row or column betting line constitute a winning
combination does not involve ‘symbols arrayed in said multiple symbol
columns and rows . . .’”).
The Examiner responds the disputed limitation does not “require the
selection of any particular number and/or orientation of betting lines.” Ans.
31. That is, the Examiner interprets the disputed limitation encompasses
determining whether the combination on a single row betting line constitutes
a winning combination, provided the single row is part of an array of
multiple symbol columns and rows. See id.
We agree with the Examiner’s interpretation of the disputed
limitation. The determining recitation does not require ascertaining whether
multiple symbol columns and rows represent a winning combination.
Instead, the determining recitation is merely directed to ascertaining whether
symbols arrayed (i.e., displayed) in multiple symbol columns and rows
contain a winning combination. We agree with the Examiner such
consideration may involve only a subset of the arrayed symbols. Ans. 30.
Thus, the consideration could involve, for example, only a single row of
symbols in the array of symbols. Ans. 30. This interpretation is consistent
with the ’477 patent, which discloses determining whether a game is a
winner or a loser based on the combination of symbols on one or more of the
betting lines 40 (three betting lines representing all three columns and one
row each), 42 (two diagonal betting lines representing all three columns and
all three rows), and 44 (three betting lines representing one column and all
three rows each). ’477 patent col. 7, l. 65–col. 8, l. 5, Fig. 2.
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The Examiner correctly finds Wain’s symbols, when considered for
purposes of determining whether the combination on a winning line has
improved, are arrayed in columns and rows. Ans. 31–32 (citing Wain Fig.
1). Appellant does not persuasively show error in the Examiner’s finding,
but merely argues “a game where only a single horizontal betting line can
ever be active does not perform” the disputed determining step recitation.
Reply Br. 34. However, for the reasons discussed above, Appellant’s
arguments are not commensurate in scope with the disputed limitation.
Therefore, we agree with the Examiner’s finding that Wain discloses
“determining whether said replacement symbols and any remaining initial
symbols arrayed in said multiple symbol columns and rows constitute a
winning combination,” as recited in claim 34. Ans. 5.
Accordingly, we sustain the Examiner’s § 102(b) rejection of claim 34
as being anticipated by Wain.
Appellant’s arguments with respect to the Examiner’s 35 U.S.C.
§ 103(a) rejection of claim 1 as being obvious over Wain and Marchini are
similar to Appellant’s arguments with respect to the Examiner’s 35 U.S.C.
§ 102(b) rejection of claim 34 as being anticipated by Wain. App. Br. 43–
46. Appellant further argues Marchini does not cure the purported
deficiency of Wain. Id. at 45. However, for the reasons discussed above,
we find Wain is not deficient (i.e., Wain discloses the disputed determining
recitation). Therefore, for the reasons discussed above, Appellant’s
arguments are not persuasive of error in the Examiner’s rejection.
Accordingly, we also sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of claim 1 as being obvious over Wain and Marchini. Ans. 14
(citing Req. 49–52, 99–105).
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DECISION
We reverse the Examiner’s decisions: (1) rejecting claims 32 and 34
under 35 U.S.C. § 102(b) as being anticipated by Tequila Sunrise; (2)
rejecting claim 32 under 35 U.S.C. § 102(b) as being anticipated by Wain;
(3) rejecting claim 32 under 35 U.S.C. § 103(a) as being obvious over Wain
and Tequila Sunrise; and (4) rejecting claim 32 under 35 U.S.C. § 103(a) as
being obvious over Wain and Marchini.
However, we affirm the Examiner’s decisions: (1) rejecting claim 34
under 35 U.S.C. § 102(b) as being anticipated by Wain; and (2) rejecting
claim 1 under 35 U.S.C. § 103(a) as being obvious over Wain and Marchini.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED-IN-PART
rwk
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PATENT OWNER:
ROTHWELL, FIGG, ERNST & MANBECK, P.C.
607 14th Street, N.W., SUITE 800
WASHINGTON, DC 20005

THIRD-PARTY REQUESTER:
BRADLEY C. WRIGHT
BANNER & WITCOFF, LTD.
1100 13th STREET, N.W., SUITE 1200
WASHINGTON, DC 20005