Ex Parte Englman et al

Board of Patent Appeals and Interferences

May 21, 2012

10876984 (B.P.A.I. May. 21, 2012)

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.
10/876,984 06/25/2004 Allon G. Englman 247079-000259USPT 2868
70243 7590 05/21/2012
NIXON PEABODY LLP
300 S. Riverside Plaza
16th Floor
CHICAGO, IL 60606
EXAMINER
BUMGARNER, MELBA N
ART UNIT PAPER NUMBER
3717
MAIL DATE DELIVERY MODE
05/21/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALLON G. ENGLMAN and JEREMY M. HORNIK
____________

Appeal 2010-005370
Application 10/876,984
Technology Center 3700
____________

Before STEFAN STAICOVICI, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Allon G. Englman and Jeremy M. Hornik (Appellants) appeal under
35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-12, 15-44,
and 46-50. Claims 13, 14, and 45 have been cancelled. Appellants’
representative presented oral argument on May 8, 2012. We have
jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellants’ invention relates to a gaming device and a method for
playing a wagering game including a bonus game “where a player is
allowed to select among different player-selectable game elements and the
selected game elements are arranged into groups such that an award
associated with the group is maximized.” Spec. 3, para. [0008].
Claims 12, 25 (reformatted and bracketed reference identifiers
added), and 35 are illustrative of the claimed invention and read as follows:
12. A method of playing a wagering game, comprising:
conducting the wagering game at a gaming terminal, the
wagering game having a standard number of indicia;
displaying a plurality of concealed indicia simultaneously
during the wagering game;
selecting, via player inputs, a number of the plurality of
concealed indicia until a predetermined number of indicia is chosen,
the predetermined number of indicia not equal to the standard
number of indicia;
revealing only the selected indicia;
arranging the revealed indicia into groups after the selecting
step is finished, the groups corresponding to one or more of a
plurality of predefined winning combinations, wherein the
arrangement is made so as to maximize at least one of the plurality of
predefined winning combinations; and
awarding a wagering game payoff based on the arranging.

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25. A gaming terminal comprising
[A] a wagering game having a plurality of player-selectable
game elements concealing associated indicia for incorporation into
groups having up to a standard number of indicia,
[B] the gaming terminal displaying the plurality of player-
selectable game elements, the associated indicia being revealed only
after a player selection, the player selection continuing until a
predetermined number of indicia is selected, the predetermined
number of indicia not equal to the standard number of indicia, only
the revealed indicia being arranged into groups corresponding to one
or more of a plurality of winning combinations, the revealed indicia
being arranged after a player has finished selecting to maximize at
least one of a plurality of winning combinations.

35. A gaming system comprising:
at least one display;
at least one gaming terminal for playing a wagering game; and
a controller coupled to the at least one gaming terminal and the
at least one display, the controller operative to
(i) cause the display to display a plurality of player-
selectable game elements, the plurality of player-selectable
game elements concealing a plurality of value-associated
outcomes and at least one end-wagering game outcome, the at
least one end-wagering game outcome not being playable for
an associated award,
(ii) determine a wagering game payoff based on
selections by a player of the player-selectable game elements,
the wagering game ending when the at least one end-wagering
game elements is selected, and
(iii) arranging the selected player-selectable game
elements to maximize the wagering game payoff after the at
least one end-wagering game element is selected, the arranged
selected player-selectable game elements not including the at
least one end-wagering game outcome.

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Colin US 2002/0119813 A1 Aug. 29, 2002
Beaulieu US 2003/0153379 A1 Aug. 14, 2003
Angel US 6,695,695 B2 Feb. 24, 2004
Baerlocher US 2004/0082376 A1 Apr. 29, 2004

The following rejections are before us for review:
The Examiner rejected claims 12, 19, and 25 under 35 U.S.C. § 112,
second paragraph, as being indefinite.
The Examiner rejected claims 12, 15-29, 33, and 34 under 35 U.S.C.
§ 102(a) as anticipated by Angel.
The Examiner rejected claims 12, 19, and 25 under 35 U.S.C.
§ 102(b) as anticipated by Colin.
The Examiner rejected claims 30-32 under 35 U.S.C. § 103(a) as
unpatentable over Angel.
The Examiner rejected claims 44 and 46-49 under 35 U.S.C. § 103(a)
as unpatentable over Angel and Beaulieu.
The Examiner rejected claims 1-11, 35-43, and 50 under
35 U.S.C. § 103(a) as unpatentable over Colin, Baerlocher, and Angel.1

SUMMARY OF DECISION
We REVERSE and ENTER NEW GROUNDS OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b).

1 Although claim 50 was not included in the heading of this rejection,
because claim 50 appears in the body of the rejection, we shall consider this
to be a mere typographical error on the part of the Examiner. See Ans. 8 and
11.
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ANALYSIS
The indefiniteness rejection
Claims 12 and 25
The Examiner found that the variables “a number of the plurality of
concealed indicia” (as per claim 12), “a predetermined number of indicia”
(as per claims 12 and 25), and “a standard number of indicia” (as per claims
12 and 25) are indefinite because the claims fail to define the particular
wagering game played. Ans. 4.
The Examiner appears to require that the claims specify exactly the
game played so that the “number of the plurality of concealed indicia,” the
“predetermined number of indicia,” and the “standard number of indicia”
can be exactly determined. However, by not specifying the wagering game
played, the claims are merely broad, not indefinite. See In re Johnson, 558
F.2d 1008, 1016 n.17 (CCPA 1977) (breadth is not indefiniteness). The test
for definiteness under 35 U.S.C. § 112, second paragraph, is whether “those
skilled in the art would understand what is claimed when the claim is read
in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs,
Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted).
In this case, Appellants’ Specification describes playing a bonus
game including providing a number of concealed cards 54 (“a plurality of
concealed indicia”)2, selecting a number of cards (“a number of the plurality
of concealed indicia”) until a pre-selected number (“predetermined number
of indicia”) that is different from a standard poker hand (“standard number
of indicia”) is reached, and arranging the selected cards (“predetermined

2 Parenthetical nomenclature to claim 12. See App. Br., Claims
Appendix.
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number of indicia”) into winning combinations having up to the number of
the standard poker hand (“standard number of indicia”). Spec. 7-8, para.
[0033]; Spec. 8, para. [0035]; and Spec. 10, para. [0044].
As such, the variables, “a number of the plurality of concealed
indicia” (as per claim 12); “a predetermined number of indicia” (as per
claims 12 and 25); and “a standard number of indicia” (as per claims 12 and
25), are clear and no further detail is necessary to know the metes and
bounds of the claims. Thus, we conclude that the claim language, when
read in light of the Specification, is not indefinite.
Accordingly, we shall not sustain the indefiniteness rejection of
claims 12 and 25 under 35 U.S.C. § 112, second paragraph.

Claim 19
The Examiner found that the limitation of “the number of cards in the
standard poker hand being between three to seven cards” is indefinite
because it allows “for the possibility of 4 and 6 card poker hand[s] which
are not a standard number of poker hands.” Ans. 4-5.
The Examiner appears to require that the claims specify exactly the
number of cards in a standard poker hand. However, by not specifying the
exact number of cards in a standard poker hand, the claims are merely
broad, not indefinite. Appellants’ Specification describes a standard poker
hand as having three, five, or seven cards. Spec., 8, para. [0035]. Hence,
the limitation of “the number of cards in the standard poker hand being
between three to seven cards” is clear and no further detail is necessary to
know the metes and bounds of the claims. Thus, we conclude that the claim
language, when read in light of the Specification, is not indefinite.
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Accordingly, we shall not sustain the indefiniteness rejection of claim
19 under 35 U.S.C. § 112, second paragraph.

The anticipation rejection based upon Angel
Claims 12 and 15-24
Each of independent claims 12 and 19 requires that the player select
all cards that form the group of cards of the winning combination.
Specifically, independent claim 12 requires, “selecting, via player inputs, a
number of the plurality of concealed indicia … revealing only the selected
indicia … arranging the revealed indicia into groups … the groups
corresponding to one or more of a plurality of predefined winning
combinations.” Similarly, independent claim 19 requires, “selecting, only
via player inputs, a predetermined number of the simultaneously displayed
plurality of player-selectable game elements … revealing only the
associated card from each of the selected player-selectable game elements
… arranging the revealed cards into one or more card groups having
corresponding awards.”
Pointing to Figure 11 of Angel, the Examiner found that:
Angel teaches selecting a group of cards as shown
in figure 11. After the player has made their [sic]
selection, the community and selected cards are
combined to form the player’s hand. The hand is
arranged in an order that depicts the winning
combination.
Ans. 14.
In response, Appellants first note that independent claims 12 and 19
require “that the groups of revealed indicia or cards must be selected by the
player.” Reply Br. 8. In contrast, Appellants also note that because
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Angel’s three initial common cards 76 and subsequent two common cards
are not selected by the player, “Angel makes clear the player does not select
all cards of the hand.” Reply Br. 9. We agree.
In Angel’s game, each simulated player 70-74 receives two
concealed cards. In addition, three common cards are dealt face down and
spaced from the cards of the simulated players. When a player selects a
hand to play from the simulated hands, e.g., hand 78, the selected two cards
are exposed and the three common cards are revealed. An additional two
common cards are dealt face up next to the initial three common cards. The
player is then paid based on the highest five card poker hand resulting from
the selected two cards of the simulated player and the five common cards.
Angel, col. 3, ll. 28-48; col. 8, ll. 34-50; and figs. 11 and 12. As such,
although the player directly selects the cards of the simulated player and
indirectly the initial three common cards, the additional two common cards
are not selected by the player, but rather are dealt by Angel’s game. Hence,
not all of the cards forming the group of cards of the winning poker hand in
Angel are selected by the player, as required by each of independent claims
12 and 19.
In conclusion, for the foregoing reasons, we cannot sustain the
rejection of independent claims 12 and 19, and their respective dependent
claims 15-18 and 20-24 under 35 U.S.C. § 102(a) as anticipated by Angel.

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The anticipation rejection based upon Colin
Claim 12
The Examiner found that Colin teaches that “only the selected cards
are revealed (Colin: fig. 8) and arranged into a single group of
predefined winning combination.” Ans. 4. Emphasis added.
However, claim 12 requires “arranging the revealed indicia into
groups after the selecting step is finished, the groups corresponding to one
or more of a plurality of predefined winning combinations.” App. Br.,
Claims Appendix. Emphasis added.
Hence, we agree with Appellants that, “Colin does not disclose
arranging the cards into groups,” as called for by independent claim 12, but
rather “a single group of cards that constitute a single hand.” Reply Br. 4
and 5. Emphasis added.
As such, we shall not sustain the rejection of claim 12 under 35
U.S.C. § 102(b) as anticipated by Colin.

Claim 19
The Examiner found that:
[T]he art [Colin] teaches the selection of a
predetermined number (5) of cards from a
plurality of player-selectable game elements. The
game displays 13 selectable cards, a number that is
not equal to a standard poker hand. In addition,
the game defines the standard hand containing 5
cards, a number that is between three to seven
cards.
Ans. 4.
However, independent claim 19 requires that the predetermined
number of the player-selectable game elements be not equal to a number of
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cards in a standard poker hand, wherein “the number of cards in the
standard poker game being between three to seven cards.” App. Br.,
Claims Appendix.
In this case, Colin teaches selecting cards that form a complete hand
of five cards. Colin, figs. 8 and 9. Moreover, the Examiner acknowledges
that Colin teaches selecting five cards (predetermined number) from a
plurality of selectable cards (thirteen selectable cards). See Ans. 4. Since
Colin teaches selecting five cards to form a complete hand (see Colin, figs.
8 and 9), we agree with Appellants that, “the Answer apparently confuses
the terms of the claim 19 [sic] by asserting that the game in Colin ‘displays
13 selectable cards, a number that is not equal to a standard poker hand.’”
Reply Br. 7. Hence, we cannot sustain the rejection of claim 19 under 35
U.S.C. § 102(b) as anticipated by Colin.

The anticipation rejection of claims 25-29, 33, and 34 based upon Angel
and of claim 25 based upon Colin
We shall not sustain the Examiner’s rejection of claims 25-29, 33,
and 34 under 35 U.S.C. § 102(a) and of claim 25 under 35 U.S.C. § 102(b).
For the reasons expressed below, independent claim 25 and dependent
claims 26-29, 33, and 34, are indefinite. Therefore, the prior art rejections
must fall because they necessarily are based on speculative assumptions as
to the meaning of the claims. See In re Steele, 305 F.2d 859, 862-63
(CCPA 1962). It should be understood, however, that our decision in this
regard is based solely on the indefiniteness of the claimed subject matter,
and does not reflect on the adequacy of the prior art evidence applied in
support of the rejections.
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The obviousness rejection over Angel
Since we have determined supra that independent claim 25 is
indefinite for the reasons set forth below, and because claims 30-32 depend
directly or indirectly from independent claim 25, likewise we shall not
sustain the Examiner’s rejection of claims 30-32 under 35 U.S.C. § 103(a).
Our decision in this regard is based solely on the indefiniteness of the
claimed subject matter, and does not reflect on the adequacy of the prior art
evidence applied in support of the rejections.

The obviousness rejections over Angel and Beaulieu
Similar to independent claims 12 and 19, independent claim 44
requires “a controller operative to … determine a bonus game payoff based
on arrangement of the selected player-selectable game elements into one or
more groups of the revealed indicia.” App. Br., Claims Appendix.
However, for the reasons set forth above, we find that not all of the cards
forming the group of cards of the winning poker hand in Angel are selected
by the player, as required by independent claim 44. The addition of
Beaulieu does not remedy the deficiencies of Angel.
Accordingly, the rejection of independent claim 44 and dependent
claims 46-49 under 35 U.S.C. § 103(a) as unpatentable over Angel and
Beaulieu likewise cannot be sustained. See In re Fine, 837 F.2d 1071, 1076
(Fed. Cir. 1988).

The obviousness rejection over Colin, Baerlocher, and Angel
The Examiner found that Colin discloses all the limitations of
independent claims 1 and 35 with the exception of “concealing end-
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wagering game outcome within the player-selectable game elements”
and “ending a game before completing a standard hand or obtaining more
th[a]n the required amount of cards needed to create [a standard] hand.”
Ans. 9. The Examiner further found that Baerlocher discloses a selectable
end-wagering game outcome. Id. The Examiner concluded that it would
have been obvious for a person of ordinary skill in the art to “include an
end-game symbol as taught by Baerlocher [in Colin’s game] in an attempt
to raise the level of excitement as taught by both inventions.” Ans. 10.
Appellants argue that including the end-game symbol of Baerlocher
in Colin’s game “would result in stray cards or even prevent the completion
of even a hand,” which “changes the fundamental operation of Colin.”
App. Br. 16. We agree.
Colin teaches a video poker game including providing a plurality of
concealed cards 64 in selection area 60, selecting one card at a time by a
user, revealing the selected card, displaying the revealed card in the user’s
hand in hand-display area 62, and repeating the selection process until the
user has selected enough cards to make a complete hand according to the
game being played, i.e., five cards in a poker game. Colin, paras. [0029],
[0032], [0033], [0034], [0036], and [0037] and figs. 4-8. One of ordinary
skill in the art would understand from these teachings that in Colin’s game
the player selects a set number of cards that form a complete hand.
Baerlocher discloses a bonus game in which a user selects symbols until a
terminating symbol is selected (end-game symbol) that ends the game.
Baerlocher, paras. [0008] and [0009]. One of ordinary skill in the art would
understand from these teachings that in Baerlocher’s game the player
selects a random number of symbols until the terminating symbol is
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selected. As such, we agree with Appellants that including the end-game
symbol of Baerlocher in Colin’s game would result in incomplete hands.
See App. Br. 16.
It is well settled that if the proposed modification or combination of
the prior art would change the principle of operation of the prior art
invention being modified, then the teachings of the references are not
sufficient to render the claims prima facie obvious. In re Ratti, 270 F.2d
810 (CCPA 1959). In this case, because including the end-game symbol of
Baerlocher in Colin’s game would result in incomplete hands, we find that
one of ordinary skill in the art would have been discouraged from providing
the end-game symbol of Baerlocher in Colin’s game. Hence, the
modification proposed by the Examiner of providing the end-game symbol
of Baerlocher in Colin’s game would not have been obvious to the person
of ordinary skill in the art.
The addition of Angel does not remedy the deficiencies of Colin and
Baerlocher as discussed above. Moreover, we note that the Examiner has
not provided an explanation of why it would have been obvious to a person
of ordinary skill in the art to modify the teachings of Colin and Baerlocher
with the teachings of Angel. The Examiner merely states that “[t]he
Examiner views awarding a player for the maximum payoff that is possible
… as an obvious feature …[because] awarding the maximum payoff was
a well-known feature in the art” Ans. 10. Thus, the Examiner has failed to
provide any articulated reasoning with rational underpinnings as to why the
subject matter of independent claims 1 and 35 are prima facie obvious.
Accordingly, for the reasons set forth above, the rejection of
independent claims 1 and 35, and their respective dependent claims 2-11,
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36-43, and 50 under 35 U.S.C. § 103(a) as unpatentable over Colin,
Baerlocher, and Angel cannot be sustained.

NEW GROUND OF REJECTION
We make the following additional new grounds of rejection pursuant
to 37 C.F.R. § 41.50(b).
Claims 25-34 are rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the invention which applicant regards as the invention.
Independent claim 25 is directed to an apparatus, namely, a “gaming
terminal.” As shown above, limitation [A] of independent claim 25 sets
forth “a wagering game having a plurality of player-selectable game
elements concealing associated indicia for incorporation into groups having
up to a standard number of indicia.” Limitation [B] of independent claim
25 sets forth a displaying function of the claimed gaming terminal. More
particularly, limitation [B] appears to set forth the instructions of the
wagering game set forth in limitation [A]. See App. Br., Claims Appendix.
Appellants’ Specification describes a gaming terminal 10 including a
memory 32, 33, 34, displays 26, 27, and a central processing unit (hereafter
“CPU”) 30. Spec. 5, para. [0021]; Spec. 6, para. [0026]; and figs. 1 and 2.
Different patentable weight is attributed to a programmed CPU, as it is
considered a special purpose computer, as compared to memory, which
merely stores data (e.g., gaming play instructions), or a display, which can
display the data (e.g., gaming display instructions).
In this case, it is not clear from independent claim 25 whether the
wagering game of limitation [A] (and its associated instructions) is stored in
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the CPU or the memory. If the wagering game (and its associated
instructions) is stored in the CPU, the processor would be construed as a
special purpose computer. However, if the wagering game (and its
associated instructions) is stored in the memory of the gaming terminal, and
as such, constitutes stored data, it would be considered non-functional
descriptive material, and would be treated as analogous to printed matter
where what is printed on a substrate bears no functional relationship to the
substrate and is given no patentable weight. See In re Gulack, 703 F.2d
1381, 1385 (Fed. Cir. 1983) (“Where the printed matter is not functionally
related to the substrate, the printed matter will not distinguish the invention
from the prior art in terms of patentability. Although the printed matter
must be considered, in that situation it may not be entitled to patentable
weight.”). See also, In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004); In re
Lowry, 32 F.3d 1579, 1583-84 (Fed Cir. 1994).
Since we cannot determine if the wagering game (and its associated
instructions) of the gaming terminal called for in independent claim 25 is
directed to the CPU or the memory, the claim is susceptible to more than
one reasonable interpretation where the scope of the claim differs
significantly depending on which of the reasonable interpretations one
adopts. Ex Parte Miyazaki, 89 USPQ2d 1207, 1211-12 (BPAI 2008) (A
claim under examination susceptible of more than one reasonable
interpretation may be indefinite if the scope of the claim differs
significantly depending on which of the reasonable interpretations one
adopts.)

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SUMMARY
The Examiner’s decision to reject claims 1-12, 15-44, and 46-50 is
reversed.
We enter new ground of rejection of claims 25-34 under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the invention which applicant regards as the
invention.
This decision contains new grounds of rejection pursuant to 37
C.F.R. § 41.50(b)(2007). 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 the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground 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. . . .
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record. . . .

REVERSED; 37 C.F.R. § 41.50(b)

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