Ex Parte Anderson et al

Patent Trial and Appeal Board

Dec 4, 2013

10437638 (P.T.A.B. Dec. 4, 2013)

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.
10/437,638 05/14/2003 Peter R. Anderson 247079-000198USPT 7026
70243 7590 12/05/2013
NIXON PEABODY LLP
300 S. Riverside Plaza
16th Floor
CHICAGO, IL 60606
EXAMINER
YOO, JASSON H
ART UNIT PAPER NUMBER
3718
MAIL DATE DELIVERY MODE
12/05/2013 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 PETER R. ANDERSON,
DANIEL P. FIDEN, and JOEL R. JAFFE
____________________

Appeal 2011-012620
Application 10/437,638
Technology Center 3700
____________________

Before ANTON W. FETTING, MEREDITH C. PETRAVICK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/437,638

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1-20 and 25-31.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and ENTER NEW GROUNDS OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b).
The rejected claims are directed to methods of conducting a wagering
game, as well as wagering game systems. Claims 1, 10, 13-15, 25, 27, and
29 are the only independent claims.
EXEMPLARY CLAIM
Claim 1, reproduced below, is representative of the claims on appeal.
1. A method of conducting a wagering
game, the wagering game including a game
sequence in which a player makes a wager and a
wagering game outcome is determined, the method
comprising the acts of:
conducting the wagering game using a
gaming system configured to receive player input
via a player input device, and configured to
generate at least one wagering game outcome
using a processor and to communicate the outcome
to the player via a display device,
displaying the outcome via the display
device, the outcome including an array of
randomly-selected symbols; and
if the array includes a winning symbol
combination that yields an award, identifying the

1 Our decision will refer to Appellants’ Specification (“Spec.,” filed May 14,
2003), Appeal Brief (“App. Br.,” filed February 23, 2011), and Reply Brief
(“Reply Br.,” filed July 22, 2011), as well as the Examiner’s Answer
(“Ans.,” mailed May 24, 2011).

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winning symbol combination by displaying a pay
line animation visually highlighting each symbol
forming the winning symbol combination, the pay
line animation being common to each of the
symbols in the symbol array that form the winning
symbol combination and the pay line animation
being unique to a level of the award.
THE REJECTIONS
The Examiner rejects the claims as follows:
Claims 1-13, 15-20, and 25-28 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement;
claims 10-13 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement;
claims 1, 4, 5, 7, 9-11, 13-15, 18-20, and 25-31 are rejected under 35
U.S.C. § 103(a) as unpatentable over Bennett (WO 00/32286, pub. Jun. 8,
2000) in view of Berman (US 6,896,615 B2, iss. May 24, 2005);
claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Bennett in view of Berman, and further in view of Loose (US
2002/0175466 A1, pub. Nov. 28, 2002); and
claims 6, 8, 12, 16, and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bennett in view of Berman or alternatively over Bennett
in view of Berman, and further in view of Singer (US 6,604,740 B1, iss.
Aug. 12, 2003).
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ANALYSIS
Written description rejection of claims 1-13, 15-20, and 25-28, and a
NEW GROUND OF REJECTION of claim 14 based on lack of written
description
Claims 1-13, 15-20, and 25-28 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. To show written description,
the test requires an objective inquiry into the four
corners of the specification from the perspective of
a person of ordinary skill in the art. Based on that
inquiry, the specification must describe an
invention understandable to that skilled artisan and
show that the inventor actually invented the
invention claimed.
Ariad Pharms. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc). As stated by the Examiner, each of these claims requires some
variation of a pay line animation highlighting symbols forming a winning
combination, however the term “highlighting” and variations thereof may
encompass activities not described in the Specification. Thus, the
Specification does not allow those of ordinary skill in the art to recognize
that Appellants invented everything that is in fact claimed, nor does the
Specification reasonably convey to those skilled in the art that Appellants
had possession of all of the subject matter that is claimed. Based on the
foregoing, we sustain the rejection of claims 1-13, 15-20, and 25-28 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. Insofar as our rationale for rejecting claims 1-13,
15-20, and 25-28 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement differs from that set forth
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by the Examiner, we denominate it a NEW GROUND OF REJECTION
under 37 C.F.R. § 41.50(b).
Pursuant to 37 C.F.R. § 41.50(b), we enter a NEW GROUND OF
REJECTION of claim 14 under 35 U.S.C. §112, first paragraph, as failing to
comply with the written description requirement. Claim 14 requires a pay
line animation highlighting symbols forming a winning combination, similar
to the requirements of each of claims 1-13, 15-20, and 25-28. Thus, the
Specification does not allow those of ordinary skill in the art to recognize
that Appellants invented everything that is required by claim 14, nor does
the Specification reasonably convey to those skilled in the art that
Appellants had possession of all the subject matter required by claim 14.
Enablement rejection of claims 10-13
Claims 10-13 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement. We note that the test for
compliance with the enablement requirement is whether the disclosure, as
filed, is sufficiently complete to enable one of ordinary skill in the art to
make and use the claimed invention without undue experimentation. In re
Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Further, when rejecting a claim
for lack of enablement, the Examiner bears the initial burden of setting forth
a reasonable explanation as to why the scope of the claim is not adequately
enabled by the description provided in the specification. In re Wright, 999
F.2d 1557, 1561-62 (Fed. Cir. 1993). Factors that may be considered in
determining whether a disclosure would require undue experimentation
include (1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of working
examples, (4) the nature of the invention, (5) the state of the prior art, (6) the
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relative skill of those in the art, (7) the predictability or unpredictability of
the art, and (8) the breadth of the claims. Wands, 858 F.2d at 737.
In this case, the Examiner does not undertake any analysis, using the
Wands factors or otherwise, to show why one of ordinary skill in the art
would have to engage in undue experimentation to practice the claimed
invention. Instead, the Examiner broadly states that the claims contain
subject matter not described in the Specification in such a way as to enable
one skilled in the art to make and/or use the invention (Ans. 6). The
Examiner then explains:
The claims incorporate the claim limitation
that that the pay line animation is separate from the
symbols in the symbol array or separate from the
respective symbol animations. It is not clear how
the pay line animation is separate from the
symbols in the symbol array or separate from the
respective symbol animations if the pay line
animation is part of the symbols in the symbol
array. As illustrated in Figs. 3-5 in the Appellant’s
specification, the pay line is not separate from the
symbols, but rather, incorporates the symbols in
the symbol array.
(Id.). It is unclear how these statements are relevant to whether the claims
are enabled or to the analysis using the Wands factors, but instead seem to be
directed to whether the claims are adequately supported by the written
description (see App. Br. 23). Because the Examiner’s Answer does not
provide any explanation of why one of ordinary skill in the art would have to
engage in undue experimentation to practice aspects of claims 10-13, the
Examiner has failed to establish that the claims are not enabled. Thus, we
do not sustain the rejection of claims 10-13 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.
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Obviousness rejections of claims 1-20 and 25-31
With respect to the rejection of claims 1, 4, 5, 7, 9-11, 13-15, 18-20,
and 25-31, Appellants argue that “neither Bennett nor Berman depicts,
describes, or in any way discloses ‘a pay line animation’” (App. Br. 27).
Specifically, Appellants’ argument is based on an overly-narrow
interpretation of the limitation “pay line animation,” as requiring animation
of a pay line itself, and not part of an overall animation of the screen (App.
Br. 31-32). We do not agree that we are required to narrowly construe this
limitation, and agree with the Examiner that the claimed “pay line
animation” may be reasonably construed to broadly include an animation
that indicates the winning event occurred for a pay line (Ans. 23). Thus,
contrary to Appellants’ arguments, we agree with the Examiner that Bennett
teaches a pay line animation by the various animations indicating a pay line
has occurred, some of which are described as explaining why the award was
awarded and the amount of the award, and that the pay line animation may
be unique to the level of award (Ans. 7-8, 22-23). We also agree with the
Examiner that Berman teaches a pay line animation by showing animations
that occur when a pay line occurs, which may be superimposed over each
symbol forming the winning combination, and which may indicate why the
award was awarded (Ans. 8-9, 23).
Further, because we do not agree with Appellants that the claim
limitation “pay line animation” requires animation of only the pay line
without animation of other objects on the screen (App. Br. 31-32), we do not
agree with Appellants that because neither Bennett nor Berman discloses
such an animation there is no apparent reason to combine these references
(App. Br. 30-36). We note the Examiner provides reasons that Berman and
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Bennett may be combined, including to better visually indicate the winning
pay line that caused the award to be awarded (Ans. 9). Thus, Appellants’
argument is not persuasive.
With respect to the rejection of claims 2 and 3, Appellants argue
Loose does not remedy the deficiency of Berman and Bennett by teaching
the claimed “pay line animation” of claim 1, from which these claims
depend (App. Br. 37). Inasmuch as we find there is no deficiency in the
rejection of claim 1, Appellants’ argument is not persuasive.
With respect to the rejection of claims 6, 8, 12, 16, and 17, Appellants
argue the rejection is in error because neither Berman nor Bennett teaches
the claimed “pay line animation” (App. Br. 37-42). This argument is not
persuasive for the same reasons discussed above with respect to independent
claim 1. Specifically, we do not agree that we are required to narrowly
construe this limitation, and agree with the Examiner that the claimed “pay
line animation” may be reasonably construed to broadly include an
animation that indicates the winning event occurred for a pay line (Ans. 23).
Thus, we agree with the Examiner that Bennett and Berman teach a “pay
line animation” as claimed, and we do not agree with Appellants that there is
no apparent reason to combine these references. Thus, Appellants’
argument is not persuasive.
DECISION
The rejection of claims 1-13, 15-20, and 25-28 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
is AFFIRMED. Insofar as our rationale differs from that of the Examiner,
we denominate our affirmance a NEW GROUND OF REJECTION.
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9
We enter a NEW GROUND OF REJECTION of claim 14 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
The rejection of claims 10-13 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the enablement requirement is REVERSED.
The rejection of claims 1, 4, 5, 7, 9-11, 13-15, 18-20, and 25-31 under
35 U.S.C. § 103(a) as unpatentable over Bennett in view of Berman is
AFFIRMED.
The rejection of claims 2 and 3 under 35 U.S.C. § 103(a) as
unpatentable over Bennett in view of Berman, and further in view of Loose
is AFFIRMED.
The rejection of claims 6, 8, 12, 16, and 17 under 35 U.S.C. § 103(a)
as unpatentable over Bennett in view of Berman or alternatively over
Bennett in view of Berman, and further in view of Singer is AFFIRMED.
This decision contains one or more new grounds of rejection pursuant
to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, 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 .…

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(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).

AFFIRMED; 37 C.F.R. § 41.50(b)

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