Ex Parte Englman et al

Patent Trial and Appeal Board

Nov 18, 2013

11240748 (P.T.A.B. Nov. 18, 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.
11/240,748 09/30/2005 Allon G. Englman 247079-000321USPT 2005
70243 7590 11/19/2013
NIXON PEABODY LLP
300 S. Riverside Plaza
16th Floor
CHICAGO, IL 60606
EXAMINER
MCCLELLAN, JAMES S
ART UNIT PAPER NUMBER
3718
MAIL DATE DELIVERY MODE
11/19/2013 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 ALLON G. ENGLMAN, MARK GAGNER,
MICHAEL W. MASTROPIETRO, PAUL McINERNY
and LARRY J. PACEY
____________

Appeal 2011-010914
Application 11/240,748
Technology Center 3700
____________

Before JOHN C. KERINS, NEIL T. POWELL, and JEREMY M.
PLENZLER, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-010914
Application 11/240,748

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STATEMENT OF THE CASE
Allon G. Englman et al. (Appellants) seek our review under 35 U.S.C.
§ 134(a) of the Examiner’s final rejection of claims 1-4, 8, 9 and 21-33.
Claims 5-7 and 10-20 are canceled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

THE INVENTION
Appellants’ invention is directed to a wagering game system.
Independent claim 1, reproduced below, is representative of the claimed
subject matter:
1. A wagering game system, comprising:

a plurality of wagering game terminals, each
wagering game terminal capable of conducting a
wagering game in which an outcome is randomly
selected from a plurality of outcomes, including a
special-event outcome; and

a network to which said wagering game terminals
are connected, said network initiating a special-
event game session on eligible ones of said
wagering game terminals upon occurrence of said
special-event outcome on one of said wagering
game terminals, the special-event game session
allowing players at eligible terminals to win
monetary amounts during the special-event game
session and after the initiation of said special-event
outcome, a first part of the monetary amounts
being awarded to the player at the eligible terminal
winning the monetary amount;

wherein said network is configured to contribute a
second part of all monetary amounts won during
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said special-event game session to a special-event
jackpot and to award said jackpot to more than one
and less than all eligible players at a conclusion of
said special-event game session.

THE REJECTIONS
Appellants appeal from the following rejections:
(i) claims 1, 2, 4, 8, 23, 24, 28, 29 and 33 under 35 U.S.C. § 102(e) as
being anticipated by Foster (US 2004/0204226 A1, published Oct. 14,
2004);
(ii) claim 3 under 35 U.S.C. § 103(a) as being unpatentable over
Foster in view of Official Notice;
(iii) claim 9 under 35 U.S.C. § 103(a) as being unpatentable over
Foster and Van Asdale (US 2005/0233798 A1, published Oct. 20, 2005);
(iv) claims 21, 22, 26, 27, 31 and 32 under 35 U.S.C. § 103(a) as
being unpatentable over Foster and Hughs-Baird (US 6,439,995 B1, issued
Aug. 27, 2002); and
(v) claims 25 and 30 under 35 U.S.C. § 103(a) as being unpatentable
over Foster in view of Cannon (US 6,984,174 B2, issued Jan. 10, 2006).

ANALYSIS
Claims 1, 2, 4, 8, 23, 24, 28, 29 and 33--Anticipation--Foster
Appellants argue claims 1, 2, 4, 8, 23, 24, 28, 29 and 33 as a group.
Appeal Br. 5 (noting that the claims stand or fall together). We will take
claim 1 as representative, and the remaining claims subject to this rejection
will stand or fall with claim 1.
Appellants present three main arguments as to why Foster is asserted
to not anticipate claim 1: (i) the process of awarding a bonus game payout in
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Foster does not allow for splitting awarded amounts between an individual
payout to a player and a contribution to a pooled bonus award; (ii) Foster
does not disclose winning monetary amounts during the special-event game
session; and (iii) Foster does not disclose first and second parts of a
monetary award with a first being awarded to a player and a second being
contributed to a jackpot award. Appeal Br. 6-9. The Examiner takes the
position that paragraph [0100] of Foster discloses a special-event game
payout scheme which meets the limitations set forth in claim 1. Ans. 4-5, 8-
11.
Claim 1 calls for a network of the wagering game system to initiate a
special-event game session which allows players to win monetary amounts
during the session, with a first part of the monetary amount being awarded to
the winning player at his or her terminal, and a second part of “all monetary
amounts won during said special-event game session to a special event
jackpot,” with the jackpot being awarded at the conclusion of the special-
event game session to more than one, but less than all, players who were
eligible for the special-event game session. Appeal Br., Clms. App’x, Clm.
1. Appellants’ detailed analysis and arguments traversing the anticipation
rejection all appear to be premised upon the claimed system requiring that
there be more than one win during a special-event game session, whether by
one or more than one player participating in the session. We do not read the
claim as being so limited--the claimed special-event game session may
produce only a single win during the session, which would result in the
system allocating a first part of the monetary award to the winning player,
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and contributing a second part to a jackpot to be awarded at the conclusion
of the special-event game session.1
Foster discloses a gaming system which includes a bonus game in
addition to the regular game being played. Foster, p. 9, para. [0094] et seq.
Appellants do not contest that the bonus game meets the claim limitation
calling for a special-event game session, but instead contend that the bonus
game operates differently, and does not make the payouts as set forth in
claim 1. See, e.g., Appeal Br. 6.
Foster discloses that, at the conclusion of a bonus game, the system
allocates a payout to the winning player and may also allocate a payout to a
different player or players for various actions occurring before or during the
bonus game, even if such other players did not win the bonus game itself.
Foster, p. 9-10, para. [0100]. This is essentially the same operation that
Appellants’ claimed system would perform were there only one win of a
monetary amount during the special-event game session, particularly were
that win to occur as the conclusion of the special-event game session. The
total amount to be awarded for this win would be allocated between the
winning player and a special-event jackpot, with the special-event jackpot
being awarded to more than one and less than all eligible players at the
conclusion. Appellants’ Specification describes, much in the same manner

1 Claim 1 does not actually require even a single win during the special-
event game session, “the special-event game session allowing players . . . to
win monetary amounts during the special-event game session.” Appeal Br.,
Clms. App’x, Clm. 1 (emphasis added). However, the claimed system is
configured to award amounts to a winning player and a special-event jackpot
in the event of a win, so the anticipation analysis must consider how the
Foster system is configured in the event of a win during a special-event
game session.
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as does Foster, that the amount not paid to the winning player would be
awarded to one or more players based on various actions (players’
performance) during the bonus game. Spec., p. 12, para. [0047].
Appellants’ arguments thus do not persuade us of error in the
Examiner’s position that claim 1 is anticipated by Foster. The rejection of
claim 1 is sustained. Claims 2, 4, 8, 23, 24, 28, 29 and 33 fall with claim 1.
Claim 3--Obviousness--Foster/Official Notice
Appellants argue that claim 3 is patentable for the same reasons as
presented for claim 1. Appeal Br. 10. Because we do not find claim 1 to be
patentable, the rejection of claim 3 is sustained as well.
Claim 9--Obviousness--Foster/Van Asdale
Appellants argue that claim 9 is patentable for the same reasons as
presented for claim 1. Appeal Br. 10. Because we do not find claim 1 to be
patentable, the rejection of claim 9 is sustained as well.
Claims 21, 22, 26, 27, 31 and 32--Obviousness--Foster/Hughs-Baird
Appellants argue that dependent claims 21, 22, 26, 27, 31 and 32 are
patentable for the same reasons as presented for independent claims 1, 23
and 28. Appeal Br. 10. Because we do not find claims 1, 23 and 28 to be
patentable, the rejection of these dependent claims is sustained as well.
Claims 25 and 30--Obviousness--Foster/Cannon
Appellants argue that dependent claim 25 is patentable for the same
reasons as presented for independent claim 1, and that dependent claim 30 is
patentable for the same reasons as presented for independent claim 28.
Appeal Br. 10. Because we do not find claims 1 and 28 to be patentable, the
rejection of dependent claims 25 and 30 is sustained as well.

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DECISION
The decision of the Examiner to reject claims 1-4, 8, 9 and 21-33
under 35 U.S.C. § 103(a) 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

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