Ex Parte Gauselmann

Board of Patent Appeals and Interferences

Jan 12, 2009

10142210 (B.P.A.I. Jan. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MICHAEL GAUSELMANN
__________

Appeal 2008-5139
Application 10/142,210
Technology Center 3700
__________

Decided: January 12, 2009
__________

Before ERIC GRIMES, RICHARD M. LEBOVITZ, and STEPHEN
WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a gaming
method and a gaming device. The Examiner rejected most of the claims as
anticipated and the remainder of the claims as obvious. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
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STATEMENT OF THE CASE
The invention relates to a gaming method that comprises a main game
resulting in random outcomes. (Spec. 2). At least one of the outcomes
enables a secondary game. (Id.) When the secondary game is activated, it
displays indicia, which a player can position on a second game display
device. (Id.) When all the indicia of the secondary game are positioned, the
player gets a pay out based on the order and combination of the indicia. (Id.)
Claims 1-25, all the pending claims, are on appeal. The claims were
rejected as follows:
• Claims 1-6, 8-11, 13-20, 22, 24 and 25 are rejected under 35 U.S.C.
§ 102(e) as being anticipated by Cole.1
• Claims 7 and 21 are rejected under 35 U.S.C. § 103(a) as obvious
over Cole in view of Anderson.2
• Claims 12 and 23 are rejected under 35 U.S.C. § 103(a) as obvious
over Cole in view of Noble.3
Claims 1, 5, 7 and 12 are argued separately. Claims 2-4, 6, 8-11, 13-
20, 22, 24 and 25 stand or fall with Claim 1. Claim 5 stands or falls alone.
Claim 21 stands or falls with Claim 7. Claim 23 stands or falls with claim
12. 37 C.F.R. § 41.37(c)(vii). The separately argued claims read:
1. A gaming method comprising:
conducting a main game to obtain one of a plurality of
outcomes, at least one of said outcomes enabling a secondary game;
selecting indicia for said secondary game;

1 U.S. Patent No. 6,533,273 B2, issued to Cole et al., Mar. 18, 2003.
2 U.S. Patent No. 6,364,766 B1, issued to Anderson et al., Apr. 2, 2002.
3 U.S. Patent No. 4,804,185, issued to Noble et al., Feb. 14, 1989.
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positioning said indicia in a display in response to a player
designating positions of said indicia so as to create a combination of indicia
in a particular arrangement; and
providing an award to said player, wherein the award amount is
based on said particular arrangement.

5. The gaming method of Claim 1 wherein said selecting indicia
comprises selecting indicia by said player.

7. The gaming method of [claim 1 wherein said indicia are
selected pseudo randomly,] wherein once a first indicia is selected, it may
not be selected again during said secondary game.

12. The gaming method of Claim 1 wherein said indicia positioned
by said player is displayed by flip cards.

ANTICIPATION
The Issue
The Examiner rejected claims 1-6, 8-11, 13-20, 22, 24 and 25 under
35 U.S.C. § 102(e) as anticipated by Cole. The Examiner’s position is that
Cole disclosed a gaming device and method comprising all the elements of
Appellant’s claims. (Ans. 3-4).
Appellant contends that Cole does not disclose every feature of
Appellant’s claims. According to Appellant, the particular arrangement of
the indicia on Cole’s bonus reel, “even though settable by the player, has
nothing whatsoever to do with the award amount granted to the player,
since the award amount is based on the random selection of a single indicia
by the bonus reel.” (Supp. App. Br. 9) (emphasis in original). Referring to
the appealed claims, Appellant argues that Cole does not teach the claimed
“wherein the award amount is based on said particular arrangement,” citing
Cole at col. 13, ll. 5-7. That is, “none of [Cole’s] embodiments grants an
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award wherein an award amount is based on a particular arrangement.”
(Supp. App. Br. 10). Appellant stresses that Cole is “unconcerned about the
particular arrangement of symbols when granting an award.” (Reply Br. 1-
3).
The issue with respect to the rejection of independent claim 1 is
whether Cole disclosed the claimed step “providing an award to said player,
wherein the award amount is based on said particular arrangement.”
With respect to Claim 5’s step of “selecting indicia by said player,”
Appellant argues that “[i]n Cole, the indicia selected to be arranged on the
bonus reel 40 are selected by the outcomes of the main game. There is no
player selection of the Cole indicia.” (Supp. App. Br. 10). Appellant agrees
that Cole’s player may designate one indicium on the bonus reel as a “win
all” indicium, but argues that the “win all” indicium itself is not selected by
the player. (Supp. App. Br. 10-11).
The issue with respect to Claim 5 is whether Cole disclosed the step
“selecting indicia by said player.”
Findings of Fact Relating to Anticipation
1. Cole discloses a gaming device and method for playing a main game
and a bonus event using reels that are operated by spinning. (Col. 2,
ll. 1-6).
2. Cole’s device includes a processor programmed to carry out the game.
(Col. 6, ll. 27-29).
3. Cole’s display shows the operation of a main game in which one of a
plurality of outcomes is obtained by spinning the reels. (Figs. 1 and
2).
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4. In Cole’s game, at least one of the outcomes enables a player to play a
secondary game. (Col. 6, l. 45 – col. 7, l. 33).
5. In Cole’s game, winning values from the first game may be selected
as indicia and displayed on a bonus reel for the secondary game.
(Col. 2, ll. 45-56; at col. 7, ll. 1-15).
6. The indicia may comprise numbers, letters, pictures, symbols, or
numeric payout amounts. (Col. 4, ll. 50-51; col. 7, ll. 2-15).
7. In Cole’s game, a player may associate first awards with the
additional reel until all the positions on the reel are filled. (Col. 4, ll.
50-53).
8. In Cole’s game, “after the additional reel is full, the player is
permitted to continue playing and replace lower value first awards on
the additional reel with later received higher value first awards.”
(Col. 2, ll. 53-56).
9. In Cole’s game, a player is awarded a bonus amount for receiving
particular combinations of indicia on more than one additional reels
(Col. 8, ll. 39-51) or bonus boards, when boards instead of reels are
used. (Col. 3, ll. 14-20).
10. In Cole’s game, a player is permitted to choose the location of an
indicia to be associated with the secondary game, such as a location
on the bonus board or reel. (Col. 3, ll. 21-24; col. 12, l. 63 – col. 13, l.
7).

Principles of Law Relating to Anticipation
A person shall be entitled to a patent unless—
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(e) the invention was described in . . . a patent granted on an
application for patent by another filed in the United States before the
invention by the applicant for patent. 35 U.S.C. § 102(e).

“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.”
In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). A method claim is
anticipated when all the operative steps of the method are performed by the
prior art.
Analysis of the Anticipation Issue
Claim 1
“There is no disagreement on the pertinent facts of the Cole operation,
accurately summed up by the examiner on the bottom of page 5 and lines
1-4 of page 6.” (Reply Br. 2). However, Appellant disputes whether Cole
disclosed the step of “providing an award to said player, wherein the award
amount is based on said particular arrangement.” (Supp. App. Br. 10)
(Appellant’s emphasis). Appellant’s argument is that “[t]he particular
arrangement of the indicia on Cole’s bonus reel 40, even though settable by
the player, has nothing whatsoever to do with the award amount granted to
the player, since the award amount is based on the random selection of a
single indicia by the bonus reel.” (Supp. App. Br. 9) (Appellant’s
emphasis). Appellant continues: “[t]he same award amount would be
awarded in Cole for any indicium selected no matter what the
arrangement of the indicia, even when a ‘WIN ALL’ indicium is
selected.” (Supp. App. Br. 9-10) (Appellant’s emphasis).
We find that Cole’s player places an indicium on the bonus reel and
can choose the location for the indicium on the reel. (FF6; FF10). By doing
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so, Cole’s player makes an arrangement wherein the bonus reel includes a
winning indicium. If Cole’s player fails to place the indicium on the bonus
reel, there will be no secondary game award, because arrangements that do
not included the winning indicium do not produce awards. For an award to
result, Cole’s bonus reel must have an arrangement that includes a player
selected indicium. We agree with the Examiner’s reasoning at Ans. 5-6.
Appellant appears to interpret “providing an award . . . wherein the
award amount is based on the particular arrangement” to require that
different arrangements of the indicia would result in different awards.
However, the claim language only requires that “the award amount is based
on said particular arrangement.” We do not construe “particular
arrangement” to exclude a player-made arrangement that includes a winning
indicium. Thus, any arrangement in Cole that results in an award would
meet the claimed limitation since it would be “particular” enough to result in
an award “based on” the fact that the arrangement includes a winning
indicium.
The Examiner found that Cole’s player can position the indicia. We
agree. (FF7; FF8). The Examiner found that an embodiment of Cole’s
gaming method bases the award on the arrangement. We agree. (FF9).
When payout occurs in Cole’s gaming method, it was because the
arrangement was “particular.” To the extent Appellant’s argument is that
“particular” means a placement relationship, we give the term its ordinary
meaning. During prosecution, claims are construed as broadly as reasonable
in view of the Specification, so that an Applicant may “amend [the] claims
to obtain protection commensurate with [the] actual contribution to the art.”
In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984) (citation omitted).
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The Specification does not provide a special definition for “particular.” The
“Summary” explains: “[o]nce all the indicia of the secondary game are
positioned, a pay out to the player is made based on the order and
combination of the indicia.” (Spec. 2.) We cannot interpret “particular” as
limited to “the order and combination of the indicia”4 because limitations are
not read into the claims from the specification. Liebel-Flarsheim Co. v.
Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (inappropriate to import
limitations from the specification to limit facially broad claims “unless the
patentee has demonstrated a clear intention to limit the claim”).
Appellant’s claims do not exclude providing an award to a player
making an arrangement as in Cole, and we “cannot construe the claim to add
a limitation not present in the claim itself.” Hewlett-Packard Co. v. Mustek
Systems, Inc., 340 F.3d 1314, 1323 (Fed. Cir. 2003) (claim reading
“performing a final scan of a portion of the picture” cannot be read to
exclude performing scan of entire picture).5

4 While we do not rely on them, it appears that some of Cole’s
embodiments illustrate that meaning as well. E.g., Col. 9, ll. 5-11 (a player
may be awarded a car upon receiving an indicia of a front half of a car and a
rear half of a car on side-by-side bonus reels); Col. 19, ll. 31-42 (a row,
column, or diagonal arrangement is the basis of award).

5 The reasoning used for providing an award might have potential relevance
if the method claims were tied to a particular device that necessarily
implemented steps defined to distinguish Cole’s award step. See Schumer v.
Lab. Computer Systems, 308 F.3d 1304, 1312 (Fed. Cir. 2002). However,
claim 1 is not tied to a device at all. Appellant’s device claims are not
separately argued and the device claims accordingly stand or fall with the
argued representative method claims.
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Further, there is no operative step by which the claimed award process
is distinguished from Cole’s. The claim phrase “wherein the award amount
is based on said particular arrangement” does not define a process that
distinguishes over Cole’s process. “A process is a mode of treatment of
certain materials to produce a given result.” Cochrane v. Deener, 94 U.S.
780, 788 (1877). All the operative steps of the claimed method were taught
by Cole. Put another way, a player using Cole’s method would literally
infringe Appellant’s claim, there being no treatment of materials
distinguishing Cole’s game from Appellant’s claim. “That which would
literally infringe if later in time anticipates if earlier than the date of
invention.” Lewmar Marine, Inc. v. Barient, Inc., 827 F.2d 744, 747 (Fed.
Cir. 1987).
Because Cole anticipates at least one embodiment of an arrangement
award, Cole anticipates. See Schumer, 308 F.3d at 1311 (a translation
method reciting “location of the point of origin, or angle of rotation, or
scale” is performed by a process translating one of the three) (emphasis in
original). See also, Hewlett-Packard, 340 F.3d at 1326 (“[A] prior art
product that sometimes, but not always, embodies a claimed method
nonetheless teaches that aspect of the invention.”).

Claim 5
Claim 5 further limits claim 1 by reciting “wherein said selecting
indicia comprises selecting indicia by said player.” The Examiner found
that Cole’s indicia “may be selected by a microcomputer or the player,”
citing col. 2, ll. 44-56. (Ans. 3). Appellant argues that “[i]n Cole, the
indicia selected to be arranged on the bonus reel 40 are selected by the
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outcomes of the main game. There is no player selection of the Cole
indicia.” (Supp. App. Br. 10). We agree with the Examiner that Cole
discloses player selection of indicia at col. 2, ll. 44-56, which reads, in part:
“[i]n another embodiment, after the additional reel is full, the player is
permitted to continue playing and replace lower value first awards on the
additional reel with later received higher value first awards.” (See Ans. 7.)
When a player chooses to replace lower value awards with higher value
awards, the player is selecting indicia. We find the cited passage meets the
claim limitation “selecting indicia by said player.”

OBVIOUSNESS
Claim 7
Claim 7 recites that “once a first indicia is selected, it may not be
selected again during said secondary game.” The Examiner found that Cole
did not teach that once an indicia was selected, it may not be selected again
during the secondary game. (Ans. 4). The Examiner found that Anderson
taught a gaming machine with a primary and a secondary game; once a letter
has been selected, it turns grey and may not be selected again during the
secondary game. (Id.) The Examiner’s position is that it would have been
obvious to implement Anderson’s rule in Cole’s game, to allow an indicia to
be selected only once, so that a player could not change their mind, and so
that control over the game is maintained. (Id.)
Appellant contends that the “concept of indicia not being selected
again is contradictory to Cole’s automatic selection of indicia in the main
game. To restrict the outcome of Cole’s main game to prevent previous
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outcomes would change the odds of winning in the main game.” (Supp.
App. Br. 11).
The issue with respect to this rejection is whether Anderson’s rule
would have been an obvious variant to implement in Cole’s game.

Claim 12
The Examiner concluded that claims 12 and 23 would have been
obvious over the combined teachings of Cole and Noble. (Ans. 4). Cole did
not disclose indicia displayed by flip cards. (Id.) Noble taught a gaming
machine in which indicia are displayed as a collection of flip cards. (Id.)
“Cole states that his gaming machine method may be used with games such
as poker, which involves cards.” (Ans. 5). The Examiner found that any
method of display could be implemented on Cole’s display. (Id.) The
Examiner’s position is that it would have been obvious to use flip cards in
Cole’s gaming machine as an alternative display method enjoyed by players.
(Id.)
Appellant’s sole contention is “[g]iven that the independent claims are
allowable over Cole, these dependent claims are additionally distinguished
and allowable.” (Supp. App. Br. 11.)

Findings of Fact Relating to the Obviousness Rejections
11. Anderson discloses a gaming machine with a primary and a
secondary, or bonus, game. (Col. 1, ll. 50-62).
12. Anderson’s game is played on reels which may be mechanical or
images shown on a video screen. (Col. 1, ll. 51-67).
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13. In Anderson’s secondary game, objects such as letters are selected and
rearranged. (Col. 2, ll. 1-7).
14. Once a letter has been selected, it turns grey and may not be selected
again during the secondary game. (Col. 5, ll. 12-23).
15. Noble discloses that in gaming machines, variable displays can be
provided “such as by means of reels or disks, flip-card units, cards or
illuminated symbols.” (Col. 1, ll. 10-14).
16. Cole discloses that his gaming machine method may be used with
games such as poker or “21.” (Col. 9, ll. 13-15).

Principles of Law Relating to Obviousness
Obviousness is a question of law based on fact findings. The scope
and content of the prior art are determined; differences between the prior art
and the claims at issue are ascertained; and the level of skill in the art is
resolved. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). Against
that background, the obviousness or nonobviousness of the subject matter is
determined. Id.; In re Kahn, 441 F.3d 977, 985 (Fed. Cir. 2006). The
determination of obviousness is made with respect to the subject matter as a
whole, not separate pieces of the claim. See KSR Int’l Co. v. Teleflex Inc.,
127 S. Ct. 1727, 1734 (2007). “The combination of familiar elements
according to known methods is likely to be obvious when it does no more
that yield predictable results. . . . [I]f 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 application is beyond his or her skill.” Id. at 1739-40.

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Analysis of the Obviousness Issues
Claim 7
Claim 7 limits the gaming method of claims 1 and 6 by providing that
“once a first indicia is selected, it may not be selected again during said
secondary game.” Anderson disclosed a bonus game feature that “greyed”
out an indicium so that it could not be selected again in the secondary game.
(FF13). The Examiner found those of skill in the art would have been
motivated to use that feature in Cole’s game to prevent a player from
changing their mind, to make the player choose the correct move, to control
the game, and to prevent correcting mistakes. (Ans. 4). Appellant views
this idea as “contradictory to Cole’s automatic selection of indicia in the
main game,” and argues that it “would change the odds of winning in the
main game.” (Supp. App. Br 11).
Cole provided that a player could replace first choices in favor of later
choices. (FF7). We therefore do not agree with Appellant that selections in
Cole’s game must be automatic. Nor does Appellant direct us to any
teaching in Cole that the odds of winning must remain unaltered. By giving
players the option to replace choices, Cole’s game remains one of chance,
under some control by the player. It is also unclear how selecting and
graying out indicia for the secondary bonus game would affect the odds of
winning in the main game as Appellant argues. It is also not clear how
Appellant’s argument is relevant to the claims, which do not include a
limitation requiring main game odds to be unaffected. Appellant’s
arguments seem inconsistent with the way Cole’s game is played. The
Examiner found specific advantages that would have motivated one of skill
in the art to modify Cole’s game with Anderson’s “greying out” feature.
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Appellant has not provided sound reasons to reject the Examiner’s findings
of suggestion or motivation for the change.

Claim 12
Claim 12 further limits claim 1 to indicia “displayed by flip cards.”
Noble taught that game machine displays including flip cards were known.
(FF14). Cole’s games included card game displays. (FF15). The Examiner
found that flip cards provide an alternative display and “are enjoyed by
players.” (Ans. 5). We conclude the Examiner made a prima facie case of
obviousness. Using Noble’s flip card display in Cole’s games would have
been the “combination of familiar elements according to known methods”
that would have yielded only expected results. KSR, 127 S. Ct. at 1739.
Appellant did not offer any specific argument against the Examiner’s
findings or conclusion. (Supp. App. Br. 11). We conclude that the prima
facie case was not rebutted.

CONCLUSIONS OF LAW
We find that Cole disclosed the two disputed limitations “providing an
award to said player, wherein the award amount is based on said particular
arrangement,” and “selecting indicia by said player.”
We conclude that Anderson’s rule would have been an obvious
variant to implement in Cole’s game, and that Noble’s flip cards would have
been an obvious alternative display method to adopt in Cole’s game.

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SUMMARY
We affirm the rejections of claims 1 and 5 as anticipated by Cole. As
claims 2-4, 6, 8-11, 13-20, 22, 24 and 25 stand or fall with claim 1, we
affirm their rejection.
We affirm the rejection of claim 7 as obvious over the combined
teachings of Cole and Anderson. As claim 21 stands or falls with claim 7,
we affirm its rejection.
We affirm the rejection of claim 12 as obvious over the combined
teachings of Cole and Noble. As claim 23 stands or falls with claim 12, we
affirm its rejection.
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)(2006).
AFFIRMED
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