Ex Parte Aoki et al

Patent Trial and Appeal Board

May 31, 2016

12671704 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/671,704 02/02/2010
70243 7590
NIXON PEABODY LLP
70 West Madison, Suite 3500
CHICAGO, IL 60602
06/02/2016
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.
247079-000564USPX 3482
EXAMINER
COBURN, CORBETT B
ART UNIT PAPER NUMBER
3714
NOTIFICATION DATE DELIVERY MODE
06/02/2016 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 and ALFRED THOMAS
Appeal2013-010024
Application 12/671,704
Technology Center 3700
Before MICHELLE R. OSINSKI, KEVIN W. CHERRY, and
MATTHEWS. MEYERS, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
Dion K. Aoki and Alfred Thomas (Appellants) 1 appeal under 35
U.S.C. § 134 from the Examiner's final decision rejecting claims 1, 5-7, 9-
18, and 20-23. Claims 2--4, 8, and 19 have been cancelled. Appeal Br. 3.
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is WMS Gaming Inc.
Appeal Br. 3.
Appeal2013-010024
Application 12/671,704
THE CLAIMED SUBJECT MATTER
Claims 1, 11, and 18 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter on appeal.
1. A method of playing a keno-type wagering game, the method
compnsmg:
conducting the keno-type wagering game at a gaming
terminal, the keno-type wagering game having at least one game
card to be played by a player and a plurality of symbols to be
selected during said keno-type wagering game, said plurality of
symbols includes at least one game-termination symbol and a
plurality of other symbols;
displaying at least some of said plurality of symbols on a
display on said gaming terminal;
selecting a first-set of symbols from said plurality of other
symbols and associating said first-set with said at least one game
card;
randomly selecting a second-set of symbols from said
plurality of symbols;
terminating said random selection of said second-set upon
a random selection of a predetermined quantity of said game-
termination symbols;
after said terminating, awarding said player a winning
award in response to at least one of
said symbols of said second-set matching a symbol from said
first-set.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Mullins
Webb
Cuddy
Brunelle
us 5,158,293
US 2002/0198042 Al
US 2006/0063585 Al
US 2007/0155470Al
2
Oct. 27, 1992
Dec. 26, 2002
Mar. 23, 2006
July 5, 2007
Appeal2013-010024
Application 12/671,704
REJECTIONS
I. Claims 1, 5, 7, 9--12, 14, 15, 17, 18, 20, 22, and 23 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Brunelle and
Webb. Final Act. 2--4.
II. Claims 6, 16, and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brunelle, Webb, and Cuddy. Id. at 4--5.
III. Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brunelle, Webb, and Mullins. Id. at 5.
OPINION
Rejection I
The Examiner finds that Brunelle teaches all of the limitations of
independent claims 1, 11, and 18, except for "terminating symbols or
terminating the selection after a predetermined number of these symbols are
selected." Final Act. 2. The Examiner finds that "Webb teaches a keno
game with terminating symbols, which terminates the selection after a
predetermined number of these symbols are selected." Id. (citation omitted)
(citing Webb, Abstract, i-f 40). The Examiner concludes that it would have
been obvious to a person of ordinary skill in the art to modify Brunelle based
on the teachings of Webb "to include terminating symbols and terminating
the selection after a predetermined number of these symbols are selected in
order to increase player enjoyment and excitement." Id. at 3 (citing Webb
,-r 5).
The Examiner makes further findings that one of ordinary skill in the
art "would have known how to transfer the teachings concerning one of
these types of games [i.e., keno, slots, poker, blackjack] to be used in a
different gaming environment," and more particularly that, "[t]hose of
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Application 12/671,704
ordinary skill in the art would have known how to implement Webb's
disclosure in a keno game." Ans. 8. The Examiner cites to US
2010/0279759, for example, as evidence to support that "those of ordinary
skill know how to take the teachings applied to one type of game and port
them over into another game." Id. at 7.
Appellants generally argue that Webb fails to teach the use of
terminating symbols in the context of a keno game, such that there is no
reason to combine Webb's slots-based terminating symbols with Brunelle' s
keno game. Appeal Br. 10-12; Reply Br. 2--4. Appellants further argue that
"a person of ordinary skill in the gaming arts would not be inclined or
motivated to combine the teachings of a keno game disclosed in Brunelle
with the terminator feature for a slots game taught by Webb" (Appeal
Br. 12) because of differences in the games such as immediate knowledge of
outcomes/awards in slots as opposed to delayed knowledge of
outcomes/awards in keno (id. at 11-12).
An obviousness rejection may require modification of the invention of
the base reference. The question is whether the modification would require
skills beyond the capabilities of a person of ordinary skill. KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) ("if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill."). We are not
persuaded that adaptation of Webb's game termination symbols for
Brunelle's keno based games would have been beyond the capabilities of a
person of ordinary skill in the art. We "take account of the inferences and
creative steps that a person of ordinary skill in the art would employ," and
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Application 12/671,704
we find that a person of ordinary skill in the art would overcome any
difficulties within their level of skill. KSR Int 'l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007); see also id. at 421 ("A person of ordinary skill is also a
person of ordinary creativity, not an automaton."). Considering the evidence
supplied by the Examiner that those of ordinary skill in the art would know
how to apply teachings in one wagering game to another wagering game, we
agree with the Examiner that a person of ordinary skill in the art would be
able to apply the prior art teachings of terminating symbols to the prior art
teachings of a keno game to improve the keno game, as proposed (see, e.g.,
Ans. 8).
Appellants additionally argue that the Examiner relies on "hindsight
reasoning" in that:
terminator symbols in a slots game behave differently than how
such symbols are described in Appellants' keno-type wagering
game invention. More specifically, Webb's game ends or has to
be reinitiated without providing an award to a player, whereas
the claimed invention continues to award a winning award after
the terminating.
Reply Br. 5. We are not persuaded by Appellants' argument. Webb
explains that "if the player is able to [meet the win condition] before the
termination trigger occurs or before exhausting their free spins, then the win
condition occurs and the player is paid the award associated with the win
condition." Webb i-f 74. Similarly, in Appellants' keno game, a payout is
generated when the win condition is met before the termination symbol is
selected. See, e.g., Spec. i-fi-156-57. In this way, the terminator symbols in
either a slots game or a keno-type game can behave similarly.
Moreover, the Examiner's reasoning that one of ordinary skill in the
art would have known how to adapt Webb's game terminating symbols for
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Application 12/671,704
use in a keno game and would have been led to incorporate the symbols into
Brunelle's keno game to improve the keno game is sound. Because the
Examiner has articulated adequate reasoning having rational underpinnings
in support of the conclusion of obviousness, we determine that the
combination is not based on impermissible hindsight, but rather the
reasoning advanced by the Examiner. See In re Kahn, 441 F .3d 977, 988
(Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418) ("[R]ejections
on obviousness grounds ... [require] some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.").
For the forgoing reasons, we are not persuaded that the Examiner's
rejection of independent claims 1, 11, and 18 was in error. We are also not
persuaded that the Examiner's rejection of dependent claims 5, 7, 9, 10, 12,
14, 15, 17, 20, 22, and 23, for which Appellants rely on the same arguments
and reasoning we found unpersuasive in connection with the independent
claims, is in error. See Appeal Br. 13. Accordingly, we sustain the rejection
of claims 1, 5, 7, 9--12, 14, 15, 17, 18, 20, 22, and 23 under 35 U.S.C.
§ 103(a) as unpatentable over Brunelle and Webb.
Re} ection II
Dependent claim 6 recites that "upon said random selection of said at
least one game-termination symbol before selecting a predetermined
minimum quantity of symbols, said game-termination symbol becomes a
wild symbol." Appeal Br. 17 (Claims App.). Dependent claims 16 and 21
recite similar language. Id. at 19, 20 (Claims App.). The Examiner
acknowledges that the combination of Brunelle and Webb fails to teach this
limitation. Final Act. 4. The Examiner finds that "Cuddy teaches that
terminator symbols may be treated as wild symbols" and concludes that:
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Application 12/671,704
[i]t would have been obvious to one of ordinary skill in the art at
the time of the invention to have modified Brunelle and Webb in
view of Cuddy so that upon random selection of at least one
game-termination symbol before selecting a predetermined
minimum quantity of symbols, the game termination symbol
becomes a wild symbol in order to increase player excitement.
Id. at 4--5 (citing Cuddy i176).
Appellants argue that Cuddy fails to "teach or suggest that the game
termination symbol becomes a wild symbol upon or when the game
termination symbol is selected before selecting a predetermined minimum
quantity of symbols" and that "the Examiner provides no support for such
feature." Appeal Br. 15.
We agree with Appellants. Cuddy merely teaches generally that a
generated terminator symbol functions as a wild symbol in some
embodiments (Cuddy i176), but provides no teaching as to when, or under
what conditions, this would occur. Accordingly, the Examiner has failed to
explain how one of ordinary skill in the art would have been led to further
modify the game of Brunelle/Webb, so as to cause the game-termination
symbol to become a wild symbol upon the specific occurrence of being
selected before a predetermined minimum quantity of symbols is selected, as
required in claims 6, 16, and 21.
For the foregoing reasons, we are persuaded that the Examiner's
rejection of dependent claims 6, 16, and 21 was in error. Accordingly, we
do not sustain the rejection of claims 6, 16, and 21under35 U.S.C. § 103(a)
as unpatentable over Brunelle, Webb, and Cuddy.
Re} ection III
Dependent claim 13 recites that the hopper, in which at least a portion
of the plurality of symbols are displayed, is a mechanical hopper and the
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symbols are displayed on physical items within the hopper. Appeal Br. 18
(Claims App.). The Examiner acknowledges that the combination of
Brunelle and Webb fails to teach this limitation. Final Act. 5. The
Examiner finds that Mullins teaches a physical hopper with physical balls
and concludes that it would have been obvious to use a physical hopper and
balls "in order to adopt an equivalent method of choosing random keno
numbers." Id. (citing Mullins, 4:9--12).
To the extent Appellants' arguments in support of the patentability of
claim 13 relate to the perceived deficiencies in the combined teachings of
Brunelle and Webb (Appeal Br. 16), we are not persuaded of error because
we have found no such deficiencies in the combination of Brunelle and
Webb. Appellants further argue that "the teachings relied upon from
Mullins are not readily applicable or combinable with references alleged ...
to teach a keno game with terminator symbols." Reply Br. 7. More
particularly, Appellants argue that Mullins appears "limited to numbers on a
weighted physical ball for a lottery, not game-termination symbols for a
keno-type wagering game." Id. at 8 (emphasis omitted).
For reasons similar to our analysis in connection with independent
claims 1, 11, and 18, we are not persuaded by Appellants' argument. We
find that a person of ordinary skill in the art would overcome any difficulties
within their level of skill to apply the prior art teachings of physical hoppers
and balls for lotteries for their use in connection with a modified keno game,
as proposed.
For the forgoing reasons, we are not persuaded that the Examiner's
rejection of claim 13 was in error. Accordingly, we sustain the rejection of
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claim 13 under 35 U.S.C. § 103(a) as unpatentable over Brunelle, Webb, and
Mullins.
DECISION
The Examiner's decision to reject claims 1, 5, 7, 9--12, 14, 15, 17, 18,
20, 22, and 23 under 35 U.S.C. § 103(a) as unpatentable over Brunelle and
Webb is affirmed.
The Examiner's decision to reject claims 6, 16, and 21 under
35 U.S.C. § 103(a) as unpatentable over Brunelle, Webb, and Cuddy is
reversed.
The Examiner's decision to reject claim 13 under 35 U.S.C. § 103(a)
as unpatentable over Brunelle, Webb, and Mullins is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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