Ex Parte Berman et al

Board of Patent Appeals and Interferences

Mar 15, 2012

10983106 (B.P.A.I. Mar. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRADLEY BERMAN and ADAM MARTIN
____________

Appeal 2010-003694
Application 10/983,106
Technology Center 3700
____________

Before KEN B. BARRETT, MICHAEL C. ASTORINO, and
JAMES P. CALVE, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003694
Application 10/983,106

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the decision of the
Examiner rejecting claims 1-9, 11-16, 19, and 22-43. Claims 10, 17, 18, 20,
and 21 have been cancelled. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM-IN-PART.

THE INVENTION
Claim 1 illustrates the claimed subject matter on appeal:
1. A method for presenting gaming payouts, comprising:
rotating a plurality of concentric shapes, wherein each of
the concentric shapes includes indicia representative of a
portion of a collective payout result;
stopping the rotation of the plurality of concentric
shapes;
demarcating at least one segment on each of the plurality
of concentric shapes as part of the collective payout result;
and
determining the collective payout result using
demarcated numeric indicia from each of the concentric
shapes in succession to construct a multi-digit numeral that
itself reveals the collective payout result.

REJECTIONS
The Examiner rejected claims 1-9, 11-14, 22, and 33-43 under 35
U.S.C. § 103(a) as unpatentable over Mangano (US 6,059,658; iss. May 9,
2000).
The Examiner rejected claims 15, 16, and 19 under 35 U.S.C. § 103(a)
as unpatentable over Mangano and Luciano (US 6,705,944 B2; iss. Mar. 16,
2004).
The Examiner rejected claims 23-32 under 35 U.S.C. § 103(a) as
Appeal 2010-003694
Application 10/983,106

3
unpatentable over Mangano and Nordman (US 6,905,407 B2; iss. Jun. 14,
2005).

ANALYSIS
Claims 1-9, 11-14, 22, and 33-43 as obvious over Mangano
Appellants argue claims 1-9, 11-13, 22, 33-35, and 37-43 as a group
and present argument for claims 14, 36, and 43.1 App. Br. 12-17. We select
claim 1 as representative and also address Appellants’ arguments for claims
14, 36, and 43. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 2-9, 11-13,
22, 33-35, and 37-42 stand or fall with claim 1. The Examiner found that
Mangano rotates a plurality of concentric shapes, stops the rotation, and
determines a collective payout by demarcating segments/indicia on each
shape, but does not use numerals as indicia. Ans. 3-4. The Examiner also
found that the indicia on Mangano’s wheel represent a direct outcome, an
award, or winning a game, and determined that it would have been obvious
to include numeric values instead of indicia on Mangano’s wheel because
numbers are obvious variants of symbols and create a visual attraction. Ans.
4, 11. The Examiner further found that a group of symbols that yields a
numbered award is not patentably distinct from numbers that yield an award,
because casino and wagering games use paytables and it is well known to
convert numeric awards from credits to dollars as Appellants disclose in an
example where the numerals 1, 0, 0 can provide 100 credits or $100. Ans.
12-13.

1 Appellants’ recital of limitations of independent claims 33, 35, 38, and 40-
42 and assertion that Mangano does not discloses the limitations (App. Br.
14-15) does not present argument for the separate patentability of these
claims. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Appeal 2010-003694
Application 10/983,106

4
Appellants argue that Mangano does not disclose using its card values
“to construct a multi-digit number that itself reveals the collective payout
result” as recited in claim 1. App. Br. 13. As a result, Appellants argue that
a paytable of probabilities is provided to determine the payout, unlike the
claimed invention where the discrete numerals provided via the concentric
shapes provide the payout result. App. Br. 13. Appellants also argue that
replacing card values with numerals in Mangano will not yield the invention
of claim 1 because Mangano only provides a symbol pattern whose outcome
is based on a correlated paytable and nothing indicates that the resulting
number pattern itself would provide the payout result. App. Br. 14.
We agree with the Examiner that substituting numerals for symbols in
Mangano would result in the construction of a multi-digit numeral that itself
reveals the collective payout result as recited in claim 1. Claim 1 does not
recite any particular units for the multi-digit numeral or collective payout
result and we decline to read any such units from the Specification into
claim 1. Moreover, Appellants disclose that numerals are demarcated on
rotating wheels/shapes to “build” a multi-digit number that indicates the
payout award (Spec. 8, ll. 22-29), and demarcating “0” “2” “5” results in a
multi-digit number “025”, which may represent 025 (twenty-five) credits
“where the actual payout award is then determined by the monetary value
associated with each credit.” Spec. 8, l. 26 to 9, l. 2. In the example of Fig.
3A, three values “build” a payout amount which is “035” (because the most
significant value (0) is on the top) which may mean $35 or 35 quarters or 35
tokens or 35 credits or 35 other units. Spec. 11, ll. 11-16. Appellants
indicate that these embodiments disclose the method of claim 1 (App. Br. 5)
and argue that the inner or outer shape may represent the most significant
Appeal 2010-003694
Application 10/983,106

5
number (App. Br. 12-13). Thus, the numbers “1”, “0”, and “0” could
represent 100 or 001 dollars, tokens, credits, quarters, or other payout result.
We agree with the Examiner that the modified Mangano would construct a
multi-digit number that itself reveals the collective payout result as recited in
claim 1 when interpreted in light of Appellants’ Specification. As such, we
sustain the rejection of claims 1-9, 11-13, 22, 33-35, and 37-42.
Claim 14
The Examiner found that Mangano discloses the step of “determining
the collective payout result based on an aggregation of the demarcated
segments, until a predetermined event occurs.” Ans. 6. Mangano discloses
winning outcome or bonus outcome in a primary game as a predetermined
event that results in a payout or secondary game. Mangano, col. 2, ll. 16-30.
Appellants disclose gaming payouts as a bonus activity resulting from the
occurrence of a predetermined event in a primary gaming activity. Spec. 5,
ll. 2-4. Appellants have not shown error in the Examiner’s findings. App.
Br. 16. As such, we sustain the rejection of claim 14.
Claim 36
The Examiner found that Mangano teaches stacked rotatable shapes
(wheels) as called for in claim 36. Ans. 7 (citing Fig. 1). Appellants argue
that Fig. 9A of their Specification discloses a stacked arrangement and the
Examiner has identified nothing in Mangano that teaches or suggests such
stacking. App. Br. 16. We agree. As such, we cannot sustain the rejection
of claim 36.
Claim 43
Appellants argue that the Examiner did not make any finding that
Appeal 2010-003694
Application 10/983,106

6
Mangano determines a “collective payout result using a sum of demarcated
numeric indicia from each of the concentric shapes to identify the collective
payout result” as recited in independent claim 43. App. Br. 17; Reply Br. 4.
We agree. The Examiner did not point out where Mangano uses a sum of
demarcated numeric indicia to determine the collective payout result. See
Ans. 3-4. As such, we cannot sustain the rejection of claim 43.
Claims 15, 16, and 19 as obvious over Mangano and Luciano
Appellants argue that claims 15 and 16 are directed to repeating the
rotating of the shapes, stopping the rotation, demarcating the segment(s), and
determining a payout result until a termination symbol is demarcated. App.
Br. 17. Appellants also argue that the “lose a turn” symbol in Luciano does
not disclose a termination function that causes the repeating of the claimed
functions to cease. Id. We agree with the Examiner that Luciano discloses a
termination symbol (a lose a turn symbol). Ans. 8, 12-13. When the middle
wheel 44 stops at the “Oops! Lose Spin” symbol, upper wheel game 14 will
not be activated and wheels 42, 44, 46 will not spin. Luciano, col. 9, ll. 54-
60; fig. 2. Appellants disclose that a termination (T) indicator may indicate
that further spins are awarded or no further spins are awarded and the player
may or may not receive an award. Spec. 11, l. 28 to 12, l. 7; fig. 3C.
Appellants also argue that Luciano does not remedy the deficiencies
of Mangano as to claim 1; thus, the combination of Mangano and Luciano
fails to teach the limitations of claims 15, 16, and 19, which depend from
claim 1. App. Br. 17-18. As set forth supra, Mangano discloses the method
of claim 1, so there are no deficiencies for Luciano to cure in this regard.
Regarding claim 19, the Examiner found that Luciano discloses a
multiplier symbol that can be multiplied by the multi-digit numeral in the
Appeal 2010-003694
Application 10/983,106

7
demarcated segments of Mangano. Ans. 8. Appellants recite the limitations
of claim 19 and assert that Mangano and Luciano do not describe these
limitations. App. Br. 18. This contention does not persuade us of error in
the Examiner’s findings or present any additional argument for the separate
patentability of claim 19. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
We sustain the rejection of claims 15, 16, and 19.
Claims 23-32 as obvious over Mangano and Nordman
Appellants argue claims 23-32 as a group and separately argue claim
26. App. Br. 18-20. We select claim 23 as representative and address the
separate arguments for claim 26. See 37 C.F.R. § 41.37(c)(1) (vii) (2011).
Claims 24, 25, and 27-32 stand or fall with claim 23.
Independent claim 23 recites a method of presenting gaming payouts
by rotating a plurality of demarcating elements, stopping the rotation to form
a multi-digit numeral from the numeric indicia identified by the demarcated
portions of a plurality of concentric indicia, and providing a payout result to
correspond to the multi-digit numeral. The Examiner found that Mangano
discloses all the claimed elements except rotating the demarcating elements.
Ans. 9. The Examiner found that rotating a demarcating element would be
an obvious variant to rotating wheels and that Nordman discloses rotatable
concentric shapes and a demarcating element. Ans. 9. Appellants argue that
Mangano does not disclose any use of numeric indicia by which a multi-
digit numeral identified by demarcated portions can be formed or a payout
result that corresponds to the multi-digit numeral itself. App. Br. 19.
Appellants also argue that Nordman does not cure the deficiencies of
Mangano in this regard. App. Br. 19. As set forth supra for claim 1,
Mangano discloses a method that demarcates numeric indicia to form a
Appeal 2010-003694
Application 10/983,106

8
multi-digit numeral that corresponds to the payout result. Therefore, there
are no deficiencies for Nordman to cure and we sustain the rejection of claim
23-25 and 27-32.
Claim 26, which depends from independent claim 23, recites that
“stopping the rotation of the plurality of demarcating elements comprises
stopping each of the plurality of demarcating elements individually in
response to a player input.” The Examiner found that video simulation of
the concentric shapes can be stopped by the player at one time or one-by-one
as controlled by the processor. Ans. 10. The Examiner also found that a
player hitting a stop spin button is very well known and an obvious variant
of letting reels or wheels stop at a predetermined time or by player control
and determined that it would have been obvious to include these features as
obvious variants of one another in Mangano’s game system to give players
the option of stopping the wheels to thereby make players feel in control of
the outcomes. Ans. 10. Appellants’ assertion that none of the references
disclose this feature (App. Br. 19) is not persuasive because it does not
explain how the Examiner’s rationale is in error. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011). As such, we sustain the rejection of claim 26.

DECISION
The rejection of claims 1-9, 11-14, 22, 33-35, and 37-42 under 35
U.S.C. § 103(a) as unpatentable over Mangano is AFFIRMED.
The rejection of claims 36 and 43 under 35 U.S.C. § 103(a) as
unpatentable over Mangano is REVERSED.
The rejection of claims 15, 16, and 19 under 35 U.S.C. § 103(a) as
unpatentable over Mangano and Luciano is AFFIRMED.
Appeal 2010-003694
Application 10/983,106

9
The rejection of claims 23-32 under 35 U.S.C. § 103(a) as
unpatentable over Mangano and Nordman 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)(1)(iv).

AFFIRMED-IN-PART

mls