Ex Parte Aoki

Patent Trial and Appeal Board

Jun 10, 2016

12066237 (P.T.A.B. Jun. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/066,237 03/07/2008
70243 7590
NIXON PEABODY LLP
70 West Madison, Suite 3500
CHICAGO, IL 60602
06/14/2016
FIRST NAMED INVENTOR
Dion K. Aoki
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
247079-000436USPX 7916
EXAMINER
SKAARUP, JASON M
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
06/14/2016 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):
docketingchicago@nixonpeabody.com
ipairlink@nixonpeabody.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DION K. AOKI
Appeal2014-001180
Application 12/066,237
Technology Center 3700
Before ANNETTE R. REIMERS, BEYERL Y M. BUNTING, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant, Dion K. Aoki, 1 appeals under 35 U.S.C. § 134 from the
Examiner's decision rejecting claims 1, 2, 4--7, 9-18, 20, and 21. 2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appellant identifies the real party in interest as WMS Gaming, Inc.
Appeal Br. 3.
2 Claims 3 and 8 are objected to but would be allowable if rewritten in
independent form. Claim 19 is cancelled. Appeal Br. 3; see also Final Act.
5.
Appeal2014-001180
Application 12/066,237
THE CLAIMED SUBJECT MATTER
The claims are directed to "gaming machines, and methods for
playing wagering games, and more particularly, to a gaming machine with
symbol enhancements that are based on winning outcomes." Spec. i-f 2.
Claim 1, 11, and 20 are independent. Claims 1, reproduced below, is
illustrative of the claimed subject matter:
A gaming system that automatically changes a payoff
level of a symbol, the system comprising:
at least one input device for accepting;
at least one display device displaying symbols
representing an outcome of a wagering game, said symbols
including at least two instances of a first symbol having a
currently assigned one of multiple possible payoff levels;
one or more processors; and
a memory device that stores instructions which, when
executed by said one or more processors, cause the one said or
more processors to operate with said at least one input device and
said at least one display device to:
accept a wager from a player to initiate said wagering
game;
display symbols representing said outcome of said
wagering game, said outcome being randomly selected from a
plurality of outcomes, said plurality of outcomes including a
special-event outcome that includes said at least two instances of
said first symbol; and
in response to said randomly selected outcome being said
special-event outcome, automatically assign a predetermined
next payoff level of said multiple possible payoff levels to said
first symbol for a subsequent round of said wagering game.
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Application 12/066,237
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Gura
Randall
Gilliland
US 6,270,411 Bl Aug. 7, 2001
US 6,328,649 Bl Dec. 11, 2001
US 2005/0096121 Al May 5, 2005
REJECTIONS
The Examiner made the following rejections:
1. Claims 11-18 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Randall.
2. Claims 1, 2, 4--7, 9, 10, 20, and 21 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Gilliland and Gura.
Appellant seeks our review of the two rejections.
OPINION
Rejection 1: Claims 11-18
On January 14, 2013, Appellant filed amendments to claims 1, 3, 6, 8,
11, and 15-18, which were not entered by the Examiner. See Appeal Br. 15
and Ex. G; Ans. 23-25; Advisory Act. Summary Sheet and p. 2 (mailed Jan.
25, 2013). Appellant "requests that amended claim 11 as submitted in Ex. G
be entered into the record and made part of the current appeal." Appeal Br.
15. Refusal of an Examiner to enter an amendment, in whole or in part, is a
petitionable matter, not an appealable matter, and is not within the
jurisdiction of the Board. See MANUAL OF p A TENT EXAMINING PROCEDURE
(MPEP) §§ 1002.02(c)(3) and 1201. As Appellant does not present any
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Appeal2014-001180
Application 12/066,237
substantive arguments with respect to the rejection of claims 11-18 under 35
U.S.C. § 102(b ), the rejection is summarily affirmed.
Rejection 2: Claims 1, 2, 4--7, 9, 10, 20, and 21
The Examiner finds that Gilliland discloses all of the limitations of
claim 1, but "does not explicitly teach that the designated symbol or symbol
combination of the triggering event includes 'at least two instances of a first
symbol.'" Final Act. 9. The Examiner finds that this limitation is taught by
Gura. Id. at 9-10. More specifically, the Examiner finds that Gilliland
"teaches a gaming system that automatically changes a game feature [] in
response to a triggering event" (i.e., a "special-event," as recited in claim 1 ).
Final Act. 9 (citing Gilliland i-fi-f 116, 118, 126, 128 and Figures 10, ISA,
15B, 15C). The triggering event may be the presence of a specific
"symbol." Id.; see Gilliland i-f 118 ("The random result can be any type of
symbol or symbol combination ... "). The Examiner explains that, in
response to a certain triggering event in a first round of play, a game feature
(such as the payable value of a symbol) in Gilliland may be automatically
changed in subsequent rounds of play. Final Act. 9; see, e.g., Gilliland i-fi-1
144, 148, and Fig. 15 (disclosing that the value of the same symbol
("$$$$$")increases in subsequent rounds to 5000, 5500, and 6000,
respectively).
The Examiner also finds that "Gura teaches a symbol driven
triggering event that includes 'at least two instances of a first symbol' as
claimed[]. In Gura, a winning symbol combination, such as DICE-DICE-
DICE, may trigger a designated game feature, such as a bonus game []."
Final Act. 9-10 (citing Gura 7:32-35).
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Appeal2014-001180
Application 12/066,237
In response, Appellant argues that Gilliland and Gura, either singly or
in combination, do not disclose "a special-event outcome that includes said
at least two instances of said first symbol; and in response to ... said
special-event outcome, automatically assign a predetermined next payoff
level . .. to said first symbol for a subsequent round of said wagering game,"
as recited in claim 1. Appeal Br. 7-15 (emphasis added). Appellant
correctly states the Examiner does not present "evidence (nor does the
Examiner assert) that Gilliland teaches or suggests a symbol-driven trigger
event resulting in changing a payoff level of the driving symbol or any
symbol that necessarily appears in the trigger event." Appeal Br. 9
(emphasis added). Appellant also correctly notes that "[ w ]hile the Examiner
cites Gura as teaching a triggering event that includes two of a specific
symbol, Gura does not provide the missing function limitation of the special-
event outcome including a particular symbol and changing the payoff level
of that same symbol." Appeal Br. 9.
Appellant's arguments are persuasive. The Examiner does not explain
where either Gilliland or Gura disclose that the same two symbols, which
create the special event (i.e., triggering event) in a first play, also change
payoff value in subsequent plays. Accordingly, we do not sustain the
Examiner's rejection of independent claims 1 and 20, and depending claims
2, 4--7, 9, 10, and 21, as unpatentable over Gilliland and Gura.
DECISION
The Examiner's rejection of claims 1, 2, 4--7, 9, 10, 20, and21 is
REVERSED.
The Examiner's rejection of claims 11-18 is AFFIRMED.
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Appeal2014-001180
Application 12/066,237
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv) (2015).
AFFIRMED-IN-PART
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