Ex Parte Gauselmann

Board of Patent Appeals and Interferences

Jun 22, 2009

10195118 (B.P.A.I. Jun. 22, 2009)

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.
10/195,118 07/12/2002 Michael Gauselmann ATR-A-104 2088
32566 7590 06/22/2009
PATENT LAW GROUP LLP
2635 NORTH FIRST STREET
SUITE 223
SAN JOSE, CA 95134
EXAMINER
COBURN, CORBETT B
ART UNIT PAPER NUMBER
3714
MAIL DATE DELIVERY MODE
06/22/2009 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 MICHAEL GAUSELMANN
__________

Appeal 2009-000683
Application 10/195,118
Technology Center 3700
__________

Decided:1 June 22, 2009
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
LORA M. GREEN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-4, 8-10, 12-19, 22-25, and 27-30. We
have jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-000683
Application 10/195,118

2
STATEMENT OF THE CASE
The claims are directed to a gaming method. Claims 1 and 30 are
representative of the claims on appeal, and read as follows:
1. A gaming method performed in a system of a plurality of gaming
machines connected in a network, the method comprising:
accumulating a jackpot common to the plurality of gaming machines,
at least a portion of the jackpot to be paid to a player of one of the gaming
machines based on certain criteria;
displaying a main game on a first gaming machine in the plurality of
gaming machines, the main game having a first plurality of possible
outcomes, at least a first subset of the first plurality of possible outcomes
enabling a bonus game, the first subset comprising a second plurality of
outcomes, at least one of the outcomes in the first subset being a third
outcome that is combinable with an outcome of the bonus game for
awarding a jackpot to the player, the second plurality of outcomes other than
the third outcome not enabling an award of the jackpot irrespective of any
outcome of the bonus game, the first plurality of possible outcomes
comprising a combination of elements;
displaying the bonus game on the first gaming machine in the
plurality of gaming machines; and
awarding at least a portion of the jackpot when the certain criteria are
achieved in the bonus game,
wherein the certain criteria comprises the player obtaining the third
outcome in the main game and achieving a fourth outcome in the bonus
game such that a combination of elements in the third outcome in
combination with a combination of elements in the fourth outcome causes
the jackpot to be awarded to the player based on the particular combination
of elements from the third and fourth outcomes.

30. A gaming device capable of being connected to a network, the gaming
device comprising:
one or more displays for displaying a main game and a bonus game,
the main game having a plurality of possible outcomes, at least one of the
outcomes enabling a bonus game, at least one of the outcomes of the bonus
game causing the award of at least a portion of a jackpot common to a
plurality of gaming machines in the network; and
Appeal 2009-000683
Application 10/195,118

3
a port for receiving a signal from the network indicating the frequency
with which the jackpot is to be awarded, whereby a microprocessor in the
gaming device generates an outcome in the bonus game to award the jackpot
pursuant to a signal from the network.

The Examiner relies on the following evidence:
Frohm US 6,234,987 B1 May 22, 2001
Bennett US 6,224,482 B1 May 1, 2001

We affirm-in-part.

ISSUES
The Examiner concludes that claims 1-4, 8-10, 12-19, 22-25, and 27-
30 are rendered obvious by the combination of Frohm and Bennett.
As to claims 1 and 16, and the claims dependent thereon, Appellant
contends that neither Frohm nor Bennett, either alone or in combination,
teaches or suggests any special fourth outcome in the bonus game that only
grants the progressive jackpot if a special third outcome is obtained in the
main game. As to claim 30, Appellant contends that the controller (12) of
Bennett only sets the hit rate for the base game triggering the bonus game,
not for the jackpot itself once the bonus game is triggered.
Thus, the issues to be decided on appeal are:
Has Appellant demonstrated that the Examiner erred in concluding
that the combination of Frohm and Bennett teaches a gaming method in
which a special fourth outcome in the bonus game only grants the
progressive jackpot if a special third outcome is obtained in the main game?
And
Appeal 2009-000683
Application 10/195,118

4
Has Appellant demonstrated that the Examiner failed to establish a
prima facie case that the controller (12) of Bennett reads on the limitation of
“a port for receiving a signal from the network indicating the frequency with
which the jackpot is to be awarded, whereby a microprocessor in the gaming
device generates an outcome in the bonus game to award the jackpot
pursuant to a signal from the network,” as required by claim 30?

FINDINGS OF FACT
FF1 The invention relates “to gaming machines with bonus games and
progressive jackpots.” (Spec. ¶1.)
FF2 The Specification teaches that in one embodiment of the invention:
the payment of one or more progressive jackpots is triggered by
a combination of elements in both the main game and the bonus
game. For example, the progressive jackpot may be awarded
when all the reels in the main game display the special symbol,
and display areas 31-35 in the bonus game all display the
special symbol during the bonus game. Since the progressive
jackpot requires that a condition in the bonus game be satisfied,
this embodiment offers the same balance between trigger
frequency and machine profitability as a progressive jackpot
triggered strictly from the bonus game. In addition, since the
progressive jackpot is triggered in two stages, the machine
increases player excitement and makes the machine more
appealing.

(Id. at ¶26.)
FF3 The Examiner rejects claims 1-4, 8-10, 12-19, 22-25, and 27-30 under
35 U.S.C. § 103(a) as being obvious over the combination of Frohm and
Bennett (Ans. 3). Appellant does not argue claims 2-4, 8-10, 12-19, 22-25,
Appeal 2009-000683
Application 10/195,118

5
and 27-29 separately from claim 1, thus those claims stand or fall with claim
1. 37 C.F.R. § 41.37(c)(1)(vii).
FF4 The Examiner finds that “Frohm teaches the invention substantially as
claimed.” (Id.)
FF5 The Examiner finds that Frohm teaches a combination of symbols,
three Winstreaks along the payline, which combine with the combination of
symbols in the bonus game to yield a jackpot (id. (citing Frohm, Figures 7
and 8)).
FF6 The Examiner finds further:
[T]here are some second outcomes (i.e., bonus triggers) that are
different from third outcomes (i.e., other bonus triggers) that do
not enable the award of the jackpot no matter what the outcome
of the bonus game. The abstract clearly states, “The bonus
game having different expected values based on different
arrangements of the start-bonus symbols on the spinning reel
display.” This clearly indicates that some bonus triggers (i.e.,
the third group) trigger high-paying bonus games (i.e., jackpot
games) and some (the second group) trigger low-paying bonus
games (i.e., non-jackpot games).

(Ans. 4.)
FF7 Frohm is drawn to a slot machine, in which a
bonus game is triggered in response to start-bonus symbols
from the respective stopped reels appearing in the spinning real
display. The bonus game having different expected values
based on different arrangements of the start-bonus symbols in
the spinning reel display.

(Frohm, Abstract.) According to Frohm, the “provision of different
expected values for the bonus game based on different arrangements of start-
Appeal 2009-000683
Application 10/195,118

6
bonus symbols shown on the spinning reel display is believed to enhance the
level of player excitement and appeal.” (Id. at col. 2, ll. 24-27.)
FF8 Frohm teaches further that the bonus game has different expected
values based on the different arrangements of the start-bonus symbols (Id, at
col. 12, ll. 13-18). According to Frohm, “the bonus game provides a first
expected value when at least one of the three start-bonus symbols in the
display of the base game does not coincide with the pay line,” but “has a
second expected value, greater than the first expected value, when all three
of the start-bonus symbols in the display window of the base game coincide
with the pay line.” (Id. at col. 12, ll. 18-25.)
FF9 Frohm teaches an additional embodiment, in which “features of the
bonus game in addition to the bonus multiplier are varied based on different
arrangements of the start-bonus symbols in the display window of the base
game.” (Id. at col. 12, ll. 59-62.) Frohm specifically teaches:
For example, the bonus game could be divided into subsidiary
games such as video poker and simulated slot reels. One
arrangement of the start-bonus symbols in the display window
of the base game would trigger the bonus game to play video
poker, while another arrangement of the start-bonus symbols in
the display window of the base game would trigger the bonus
game to play slots on the bonus game. These subsidiary games
could have the same or different expected values.

(Id. at col. 12, l. 62-col. 13, l. 3.)
FF10 Frohm also teaches that the payout table is set so that the machine
retains a percentage of the money played, and calculation of that percentage
necessarily requires including the bonus game in the calculations (Id. at col.
4, l. 60-col. 5, l. 11.)
Appeal 2009-000683
Application 10/195,118

7
FF11 The Examiner notes that “Frohm dos not teach linking several gaming
machines in a network so that they can accumulate a common jackpot (i.e., a
progressive jackpot.” (Ans. 4.)
FF12 The Examiner first finds that use of a progressive jackpot is well
known in the art (id.).
FF13 The Examiner cites Bennett for teaching a progressive jackpot, and
also for teaching “that such jackpots attract players because of the massive
amounts of the award,” and for teaching the “structure necessary to carry out
such a scheme (i.e., network ports, controllers, etc.)” (Id.)
FF14 The Examiner finds that Bennett teaches a “Mystery Jackpot
controller (12) that controls all aspects of the bonus game.” (Id. at 8.)
FF15 Bennett specifically teaches that the jackpot controller (12) “is
arranged to receive each of the console operation signals and to increment
the value of a random jackpot prize on the occurrence of each of these
operation signals.” (Bennett, col. 4, ll. 55-61.)
FF16 The Examiner concludes that “[i]t would have been obvious to one of
ordinary skill in the art at the time of the invention to have modified Frohm
in view of Bennett to link several gaming machines in a network so that they
can accumulate a common jackpot in order to attract players with a massive
payout.” (Ans. 4.)

PRINCIPLES OF LAW
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
Appeal 2009-000683
Application 10/195,118

8
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
In KSR Int’l v. Teleflex Inc., 550 U.S. 398, 415 (2007), the Supreme
Court rejected a rigid application of a teaching-suggestion-motivation test in
the obviousness determination. The Court emphasized that “the
[obviousness] analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” Id. at 418. Thus, an “[e]xpress suggestion to substitute one
equivalent for another need not be present to render such substitution
obvious.” In re Fout, 675 F.2d 297, 301 (CCPA 1982).
Further,

[i]f a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and
a person of ordinary skill 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.

KSR. 440 U.S. at 418. Moreover, it is proper to “take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” Id. See also id. at 421 (“A person of ordinary skill is also a person
of ordinary creativity, not an automaton.”).

ANALYSIS
As to claims 1 and 16, Appellant argues that “[t]here is no mention in
Frohm or [sic] any special ‘fourth outcome’ in the bonus game that only
Appeal 2009-000683
Application 10/195,118

9
grants a special award (e.g., a progressive jackpot) if a special ‘third
outcome’ is obtained in the main game.” (App. Br. 6.) Appellant asserts
that in Frohm, “the three Winstreak symbols on the on the center line in the
main game multiplies every award in the bonus game,” which “is unrelated
to awarding a jackpot only upon achieving a ‘third outcome’ in the main
game and a ‘fourth outcome’ in the bonus game.” (Id. at 7.) Appellant
argues that in claims 1 and 16 “only one bonus game is mentioned as being
initiated by the base game,” and there “is no suggestion of any other bonus
game relevant to the invention.” (Reply Br. 1.) Appellant contends that a
“key aspect of the invention is that there are multiple outcomes of the base
game that trigger the same bonus game but only a subset of these outcomes
both triggers the bonus game and gives the player the possibility of winning
a jackpot by a special outcome of the bonus game.” (Id.)
According to Appellant, a large progressive jackpot draws players to a
game, thus “the jackpot winning percentage and level must be carefully
controlled to achieve the optimal player excitement.” (App. Br. 7.)
Appellant asserts:
By only granting a progressive jackpot in the bonus game when
the player gets the “third outcome” in the main game (to trigger
the bonus game) and a “fourth outcome” in the bonus game,
the lower boundary of the pulls-to-hit ratio of the jackpot can be
easily controlled by the hit frequency of the “third outcome.”
The bonus game is also initiated by the main game achieving
other “second outcomes” that do not include the “third
outcome.” So, the frequency of the player simply initiating the
bonus game can be unaffected by the designer controlling the
hit frequency of the “third outcome.”

(Id.)
Appeal 2009-000683
Application 10/195,118

10
Appellant contends that in Frohm, three Winstreak symbols on the
center line of the mane game serves as a multiplier for every award of the
bonus game, and is unrelated “to awarding a jackpot only upon achieving a
‘third outcome’ in the main game and a ‘fourth outcome’ in the bonus
game.” (Id.)
Appellant argues further that Frohm does not suggest controlling how
a progressive jackpot is awarded, but only suggests multipliers for all
outcomes in the bonus game (id.). Appellants assert that controlling
multipliers is not the same as a progressive jackpot as a multiplier has a
small effect on the designer’s calculation for the game (id.). Appellant
asserts that “[e]ven if Frohm had a Bennett-type jackpot, there is no
suggestion that it could only be awarded in the bonus game (not the main
game) and that the jackpot could only be awarded in the bonus game if three
Winstreak symbol aligned on the center payline.” (Id. at 8.)
Appellant’s arguments have been considered, but are not convincing.
We agree with the Examiner’s response to arguments, that Frohm teaches a
base game that can trigger one of a number of bonus games (see, e.g., Ans.
4-7). Frohm teaches that a plurality of outcomes of the main game can
trigger the bonus game, but only a subset of those outcomes, such as three
winstreak symbols on the payline, can trigger the highest payouts in the
bonus game. While Frohm does teach the use of different multipliers used
to determine the prize in the bonus triggered by the different outcomes of the
main game, the patent also teaches that different outcomes can trigger
different bonus games, having the same or different payouts.
Appeal 2009-000683
Application 10/195,118

11
The Examiner finds, and as Bennett evidences, the addition of
progressive jackpots is well known in the gaming art, and their ability to
increase player interest is also well known in the art. Thus, given the
teachings of Frohm that different outcomes in the main game can trigger
different levels of awards in a bonus game, or different bonus games with
different levels of payouts, it would have been well within the level of
ordinary skill to add a progressive jackpot, wherein the bonus game allows
payout of the progressive jackpot only if triggered by a subset of outcomes
of the main game that trigger the bonus game.
Finally, as to Appellant’s argument that a “key aspect of the invention
is that there are multiple outcomes of the base game that trigger the same
bonus game but only a subset of these outcomes both triggers the bonus
game and gives the player the possibility of winning a jackpot by a special
outcome of the bonus game,” we first note that the language of claim 1 does
not preclude more than one bonus game, with different payouts being
available in different bonus games. While claim 1 does recite “a bonus
game,” “a” or “an” in patent law is interpreted as encompassing “one or
more,” especially when used with “comprising.” TiVo, Inc. v. EchoStar
Comm. Corp., 516 F.3d 1290, 1303 (Fed. Cir. 2008). In addition, we also
conclude that given the teachings of Frohm, it would have well been within
the level of skill of the ordinary artisan to have different levels of payout
triggered for a single bonus game based on an outcome of the main game.
As to claim 30, Appellant argues that the Examiner has not adequately
addressed that claim, “which includes the limitation that the gaming device,
for connection to a network, has ‘a port for receiving a signal from the
Appeal 2009-000683
Application 10/195,118

12
network indicating the frequency with which the jackpot is to be awarded,
whereby a microprocessor in the gaming device generates an outcome in the
bonus game to award the jackpot pursuant to the signal from the network.’”
(App. Br. 8.)
Appellant asserts further that the controller (12) of Bennett “only sets
the hit rate for the base game triggering the bonus game (‘second screen
game’), not the hit rate for the jackpot itself once the bonus game is
triggered.” (Reply Br. 2.)
Claim 30 stands on a different footing. We agree with Appellant that
the Examiner has not adequately addressed this claim. The Examiner finds
that controller (12) of Bennett reads on the limitation of “a port for receiving
a signal from the network indicating the frequency with which the jackpot is
to be awarded, whereby a microprocessor in the gaming device generates an
outcome in the bonus game to award the jackpot pursuant to a signal from
the network” as recited by claim 30. Bennett, however, teaches that
controller increments the value of the random jackpot prize, but does not
explain or provide a reason as to why and/or how the controller may be used
to award the jackpot.

CONCLUSION(S) OF LAW
We therefore conclude that:
Appellant has not demonstrated that the Examiner erred in concluding
that the combination of Frohm and Bennett teaches a gaming method in
which a special fourth outcome in the bonus game only grants the
Appeal 2009-000683
Application 10/195,118

13
progressive jackpot if a special third outcome is obtained in the main game;
but that
Appellant has demonstrated that the Examiner failed to establish a
prima facie case that the controller (12) of Bennett reads on the limitation of
“a port for receiving a signal from the network indicating the frequency with
which the jackpot is to be awarded, whereby a microprocessor in the gaming
device generates an outcome in the bonus game to award the jackpot
pursuant to a signal from the network,” as required by claim 30.
We thus, affirm the rejection claims 1-4, 8-10, 12-19, 22-25, and 27-
30 under 35 U.S.C. § 103(a) as being obvious over the combination of
Frohm and Bennett as to claims 1-4, 8-10, 12-19, 22-25, and 27-29, but are
compelled to reverse as to claim 30.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

lp

PATENT LAW GROUP LLP
2635 NORTH FIRST STREET
SUITE 223
SAN JOSE CA 95134