Ex Parte Ghaly

Patent Trials and Appeals Board

Apr 30, 2019

11698515 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/698,515 01/26/2007 Nabil N. Ghaly
7590 05/01/2019
Dr. Nabil N. Ghaly
14 Longwood Drive
South Huntington, NY 11746
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5730
EXAMINER
ROWLAND, STEVE
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
05/01/2019 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 NABIL N. GHAL Y
Appeal 2017-005441 1
Application 11/698,5152
Technology Center 3700
Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and
MATTHEWS. MEYERS, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the
Examiner's decision rejecting claims 1-21. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Our decision references the Non-Final Office Action ("Non-Final Act.,"
mailed Apr. 25, 2016), the Appeal Brief ("Appeal Br.," filed Sept. 23, 2016),
the Examiner's Answer ("Ans.," mailed Dec. 15, 2016), and the Reply Brief
("Reply Br.," filed Feb. 6, 2017).
2 According to the Appellant, "Nabil N. Ghaly[] is the real party in interest."
Appeal Br. 6.
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STATEMENT OF THE CASE
Subject Matter on Appeal
The Appellant's invention relates to a "gaming device that uses
symbols occurring at one, or a plurality of winning lines, also known as pay
lines, during a plurality of independent spins, to populate one or a plurality
of new winning lines." Spec. 2.
Claims 1, 6, 14, and 19--21 are independent. Claim 21, reproduced
below with bracketed notations and paragraphing added, is illustrative of the
subject matter on appeal.
21. A method for a gaming device that includes a plurality of
reels and a microprocessor with a computer-readable medium
encoded with a computer program to control the operation of the
gaming device, wherein said gaming device employs at least one
primary pay line, and at least one secondary pay line that has a
plurality of display positions, and wherein said computer
program includes an algorithm comprising the steps of:
[(a)] assigning symbols occurring at said at least one
primary pay line, during a game that includes a plurality of spins,
to display positions at said at least one secondary pay line,
wherein the leftmost display position of the plurality of display
positions of the secondary pay line may remain vacant during the
second spin of said plurality of spins, and wherein said symbols
assigned to the display positions at the secondary pay lines
remain at said display positions until the end of the game,
[ (b)] evaluating the symbo 1 pattern at said primary pay line
for winning combination, and
[ ( c)] evaluating the symbol pattern at said secondary pay
line for winning combination.
Rejections
Claims 1, 3-7, 9--14, and 16-21 are rejected under 35 U.S.C. § 101 as
being directed to a judicial exception without significantly more.
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Claims 1-15, 17, and 19-21 are rejected under 35 U.S.C. § I03(a) as
being unpatentable over Singer et al. (US 6,935,947 Bl, iss. Aug. 30, 2005)
("Singer") and Walker et al. (US 2006/0025192 Al, pub. Feb. 2, 2006)
("Walker").
Claims 16 and 18 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Singer, Walker, and Fox (US 2004/0140618 Al, pub.
July 22, 2004).
ANALYSIS
35 USC§ 101
The Appellant argues claims 1, 3-7, 9-14, and 16-21 as a group.
Appeal Br. 28--45. We select independent claim 21 as representative. The
remaining claims stand or fall with claim 21. See 3 7 C.F .R.
§ 4I.37(c)(l)(iv).
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bankint'l, 573 U.S. 208,
216 (2014) (internal quotation marks and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice,
573 U.S. at 219 ("On their face, the claims before us are drawn to the
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concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010)
("Claims 1 and 4 in petitioners' application explain the basic concept of
hedging, or protecting against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219--20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
( 1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a
patent-eligible application." Alice, 573 U.S. at 221 (citation omitted).
"A claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
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The PTO recently published revised guidance on the application of
§ 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE,
84 Fed. Reg. 50 (Jan. 7, 2019) ("2019 Revised Guidance"). Under the 2019
Revised Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF p ATENT EXAMINING
PROCEDURE (MPEP) § 2106.05(a}-(c), (e}-(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See 2019 Revised Guidance.
Step One of the Mayo/Alice Framework
Under the first step of the Mayol Alice framework and Step 2A,
Prong 1, of Office Guidelines (see 2019 Revised Guidance, 84 Fed. Reg. at
53-54), the Examiner determined that the claims are directed to a casino-
type bonus game, best characterized as
assigning symbols occurring at said at least one primary pay line
during said plurality of spins to display positions at said at least
one secondary pay line, wherein the leftmost display position of
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said plurality of display positions of the secondary pay line may
remain vacant during the second spin of said plurality of spins.
Non-Final Act. 4. The Examiner determines that this is a concept that is an
"idea in and of itself," which is abstract. Id. The Examiner provides
"examples of abstract ideas 'in and of themselves' as given in the July 2015
Interim Eligibility Guidance," including: "[ c ]omparing new and stored
information and using rules to identify options[; o ]btaining and comparing
intangible data[; u ]sing categories to organize, store and transmit
information[; and o ]rganizing information through mathematical
correlations." Id. ( emphasis omitted).
The Appellant's characterization of the invention is similar to the
Examiner's characterization of the claims:
The current invention discloses a method and apparatus
for a gaming device ( slot machine) that includes one, or a
plurality of primary pay lines, as well as one or a plurality of
secondary pay lines, wherein symbols occurring at the primary
pay lines during a plurality of independent spins are mapped into
the secondary pay lines. If a player places a bet on a secondary
pay line, then win determinations are made for primary and
secondary pay lines.
Appeal Br. 28. The Appellant contends that the Examiner's determination
that the claims are directed to an abstract idea - an idea in and of itself- is
in error because none of the examples of abstract ideas are applicable to the
invention claimed. Id. at 28-30.
The Federal Circuit has explained that "the 'directed to' inquiry
applies a stage-one filter to claims, considered in light of the [S]pecification,
based on whether 'their character as a whole is directed to excluded subject
matter."' Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
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1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an "abstract idea" for which computers are invoked merely as a
tool. See id. at 1335-36. Here, the Specification, including the claim
language, make clear that the claims focus on an abstract idea, and not on
any improvement to computer technology and/or functionality.
An examination of claim 21 shows a "method for a gaming device."
Appeal Br., Claims App; see Spec. Title. The "gaming device" incudes "a
plurality of reels and a microprocessor with a computer-readable medium
encoded with a computer program to control the operation of the gaming
device." Id. The method being implemented by a "gaming device" does not
itself connote a specific structure, as the term is understood simply as a
device for gaming (i.e., gambling). Gaming Definition 1,
DICTIONARY.COM, https://www.dictionary.com/browse/gaming (last
visited Apr. 19, 2019). The Specification discloses that a gaming device
may be a video slot machine with "a micro-processor is used to control the
functions performed by the machine and a CRT, or an LCD screen is
provided to depict the action of the rotating reels." Spec. 1. Accordingly,
the gaming device's "plurality of reels" may be simulated. Id. at 4 ("video
slot machine that employs ... simulated reels"). The Specification also
discloses that the "microprocessor[ is] well known in the art." Id. at 10.
The method of claim 21 includes the steps of (a) assigning symbols
occurring at said at least one primary pay line to display positions of a
secondary pay line during a game having a plurality of spins, (b) evaluating
if a primary pay line has a winning symbol pattern, and ( c) evaluating if a
secondary pay line has a winning symbol pattern. See id. These steps are
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"well within the skill of the computer programmer." Id. at 15; see id. at 7,
Figs. 7-9 ( showing "a logical flow diagram illustrating the main program
functions performed by the game code executed on the microprocessor that
controls the gaming device according to the preferred embodiment of the
invention"). Moreover, assigning symbols occurring at said at least one
primary pay line to display positions of a secondary pay line during a game
having a plurality of spins (step (a)) is a manifestation of the application of
the wagering principles during game play; and evaluating if primary and
secondary pay lines have a winning symbol pattern (steps (b) and (c)) are a
manifestation of the application of wagering principals during game play to
determine the party that receives the benefit of the wager and the party that
receives the loss of the wager.
Thus, steps (a) through (c), under the broadest reasonable
interpretation of the claim limitations in light of the Specification, are
directed to exchanging and resolving financial obligations between a player
and an operator of a gaming machine based on probabilities created during
the game, or wagering, which is a fundamental economic practice. And,
when viewed through the lens of the 2019 Revised Guidance, the
Examiner's analysis depicts the claimed subject matter as the ineligible
"certain methods of organizing human activity" under Prong One of Revised
Step 2A. These concepts are similar to the activities found to be abstract in
In re Smith, 815 F.3d 816 (Fed. Cir. 2016) and Planet Bingo, LLC v. VKGS,
LLC, 576 F. App'x 1005 (Fed. Cir. 2014). See 2019 Revised Guidance at
52, n.13; Smith, 815 F.3d at 819 (concluding that "claims[] describing a set
of rules for a game[] are drawn to an abstract idea"); Konami Gaming, Inc. v.
High 5 Games, LLC., No. 2:14-cv---01483-RFB-NJK, 2018 WL 1020120
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(slip op. 19) ("Changing how often a symbol appears and where it appears in
a slot game without more is simply altering the manner of display of random
symbols- i.e. changing the rules of the game."). Accordingly, we disagree
with the Appellant's contention that the claims are not directed to an abstract
idea, specifically a fundamental economic practice long prevalent in our
system of commerce. Appeal Br. 31-36 (citing Alice, Bilski).
Under Step 2A, Prong 2 of the 2019 Revised Guidance (84 Fed. Reg.
at 54), we look to whether the claims "apply, rely on, or use the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception," i.e., "integrates the ... judicial
exception into a practical application."
In this regard, the Appellant contends that the claims are not directed
to an abstract idea because they include a gaming devices that employ
microprocessor controls, use a primary and secondary pay lines and reels,
and map symbols occurring at primary pay lines into the secondary pay
lines. Appeal Br. 33-34, 37. However, these claim elements are not
suggestive of a use of a particular machine that is integral to the claim.
As for the "microprocessor with a computer-readable medium
encoded with a computer program to control the operation of the gaming
device," this claim element is not suggestive of a particular machine that is
integral to the claim. Indeed, the Specification describes the
"microprocessor[ as] well known in the art." Spec. 10. Additionally, the
Specification describes a "micro-controller with a central processing unit
(CPU) 30 and system memory." Id. at 9. The system memory includes
read-only memory (ROM) 34 and battery-backed random-access memory
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(RAM) 36, and may include a removable flash memory or a hard drive. Id.
"The system memory is used to store game-related data." Id. The foregoing
components are generic hardware components used in their ordinary
capacities. The Appellant does not contend that they invented any of those
components or their basic functions or that those components, claimed
generally, were unknown in the art as of time of the invention. Computers
"have become the substrate of our daily lives-the 'basic tool[ ], ' Gottschalk
v. Benson, 409 U.S. 63, 67 ... (1972), of a great many of our social and
economic interactions-generic computer functions, such as storing,
analyzing, organizing, and communicating information, carry no weight in
the eligibility analysis. See Alice, 134 S.Ct. at 2357." In re Marco
Guldenaar Holding B. V., 911 F.3d 1157, 1165 (Fed. Cir. 2018) (Mayer
concurring).
As for the use of primary and secondary pay lines and a rotation of
reels, these elements may be simulations on the display of a video slot
machine. Spec. 4 ("video slot machine that employs ... simulated reels").
And, the mapping symbols from a primary pay line to a secondary pay line
is indicative of programming that is "well within the skill of the computer
programmer." Id. at 15; see id. at 7, Figs. 7-9 (showing "a logical flow
diagram illustrating the main program functions performed by the game
code executed on the microprocessor that controls the gaming device
according to the preferred embodiment of the invention"). Therefore, the
foregoing elements are generic software instructions. That the invention is
related to gaming on a computer, i.e., in the area of technology, does not
make the claim not abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 716 (Fed. Cir. 2014) (limiting the use of the abstract idea "to a
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particular technological environment" does not make the abstract idea
patent-eligible) ( citation omitted).
The Appellant contends that the "steps set forth by the claims of the
current invention" are different than those of Planet Bingo, which include
"selecting, storing, and retrieving the bingo numbers, assigning the control
number, and checking to see whether the set of numbers is a winner," as
they cannot be performed mentally, nor "carried out by a human using pen
and paper" because a "computer is [] integral" to the invention. Appeal
Br. 36-37. We disagree with the Appellant. For step (a), the assignment of
symbols from a primary pay line to a secondary pay line is similar to the
assignment of a control number. For steps (b) and ( c ), the evaluation of a
winning symbol pattern is tantamount to checking to see whether the set of
numbers is a winner. Therefore, the steps are merely instructions to
implement the concept of claim 21 on a computer and does not impart patent
eligibilty. See Planet Bingo, 576 F. App'x at 1008 ("'[I]f a patent's
recitation of a computer amounts to a mere instruction to 'implemen[t ]' an
abstract idea 'on ... a computer,' ... that addition cannot impart patent
eligibility.' Alice, 134 S.Ct. at 2358 (quoting Mayo, 132 S.Ct. at 1301)."
The Appellant argues that the Examiner does not demonstrate "that
the rejected inventions fail the machine or transformation test." Reply Br. 8.
However, in determining patent eligibility "the machine-or-transformation
test is a useful and important clue, an investigative tool," but "not the sole
test for deciding whether an invention is a patent-eligible 'process."' See
Bilski, 561 U.S. at 604.
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Step Two of the Mayo/Alice Framework
Under the second step in the Mayo/Alice framework, and Step 2B of
the 2019 Revised Guidance, we determine that that the claim limitations,
taken individually or as an ordered combination, do not amount to
significantly more than the judicial exception. In this regard, the Examiner
determines steps concerning "controlling" - e.g., assigning symbols from a
primary pay line to a secondary pay line - and "evaluating" "do not amount
to significantly more than mere instructions to implement the idea on a
computer and/or recitation of generic computer structure that serves to
perform generic computer functions that are well-understood, routine, and
conventional activities previously known to the pertinent industry." Non-
Final Act. 4.
The method of claim 21 includes the following elements: a game
device; microprocessor with a computer-readable medium; a plurality of
reels; primary and secondary pay lines; program instructions to map symbols
from a primary pay line to a secondary pay line, and evaluating winning
symbol patterns. These claim elements, alone and in combination, are no
more than generic components operating in their ordinary capacity. Supra;
see also Spec. 15 ("[i]t is well within the skill of the computer programmer
to provide particular programs for implementing each of the steps of the
flow charts [in Figures 7-9].").
The Appellant argues that claim 21 recites significantly more than an
alleged abstract idea. See Appeal Br. 38--42. The Appellant contends that
the claimed invention includes a "computer [that] provides control functions
that are needed to implement a special purpose slot machine." Id. at 42.
Initially, we note that the claim is not particular to a slot machine, rather a
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"gaming device" that is not limited to a machine that includes a coin/credit
detector, an activation lever, and mechanical reels. Hence, the claimed
"gaming device" is not understood, under the broadest reasonable
interpretation in light of the Specification, as a special purpose slot machine.
But see Appeal Br. 45 ("It is respectfully submitted that if the claimed
invention is drawn to an abstract idea, then it makes no difference if
mechanical or simulated reels are used.").
The Appellant argues that the Examiner has not shown that the
claimed inventions are fundamental or that the cited limitations are well-
understood, routine, or conventional in the art. Reply Br. 4--5; see id. at 6-7;
Appeal Br. 36. However, the Appellant does not argue- outside of novelty
- that the claimed invention is not well-understood, routine, or
conventional. See also BSG Tech. LLC v. BuySeasons, Inc., 899 F.3d 1281,
1291 (Fed. Cir. 2018) ("BSG Tech does not argue that other, non-abstract
features of the claimed inventions, alone or in combination, are not well-
understood, routine and conventional database structures and activities.
Accordingly, the district court did not err in determining that the asserted
claims lack an inventive concept.").
Further, we find supported the Examiner's determination that the steps
of "controlling" - e.g., assigning symbols from a primary pay line to a
secondary pay line- and evaluating data is well-understood, routine, and
conventional. See, e.g., Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (storing,
recognizing, and classifying data); Elec. Power Grp. LLC v. Alstom S.A.,
830 F.3d 1350, 1355 (Fed. Cir. 2016) (selecting, collecting, analyzing and
displaying information); West View Research, LLC v. Audi AG, 685 F.
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App'x 923, 926-27 (Fed. Cir. 2017) (collecting, displaying, and
manipulating data).
The Appellant draws the conclusion that "novelty or non-obviousness
will in fact lead to eligibility under 101/ Alice." Reply Br. 7. We disagree.
An abstract idea does not transform into an inventive concept just because
the prior art does not disclose or suggest it. See Mayo, 566 U.S. at 78.
"Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the§ 101 inquiry." Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013). Indeed, "[t]he 'novelty' of any
element or steps in a process, or even of the process itself, is of no relevance
in determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter." Diehr, 450 U.S. 188-89;
see also Mayo, 566 U.S. at 91 (rejecting "the Government's invitation to
substitute§§ 102, 103, and 112 inquiries for the better established inquiry
under § 101 ").
Therefore, we are not persuaded of error in the Examiner's
determination that the limitations of the independent claims do not transform
the claims into significantly more than the abstract idea.
Thus, we sustain the Examiner's rejection of claims 1, 3-7, 9-14, and
16-21 under 35 U.S.C. § 101 as being directed to a judicial exception
without significantly more. See 37 C.F.R. § 4I.37(c)(l)(iv).
35 USC§ 103(a)
The Examiner finds that Singer teaches substantially all of the subject
matter of independent claim 21. See Non-Final Act. 11-12. The Examiner
finds that Singer teaches a gaming device having at least one primary pay
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line and at least one secondary pay line having a plurality of display
positions 30, 32, 34, 36, and 38. See id.
Singer's Figure 2 shows an "example of representative displays that
may be encountered during a typical game in accordance with the principles
of the present invention." Singer, col. 7, 11. 23-25. More specifically,
Figure 2 shows video display screen 10 with "[a] symbol matrix with fifteen
symbol positions using a five-column by three-row arrangement, as shown
generally at 20." Id. at col. 8, 11. 51-53. The five-column by three-row
arrangement corresponds to the claimed "at least one primary pay line."
Figure 2 also shows a Pair' em Up window with five symbol positions 30,
32, 34, 36, and 38. Id. at col. 8, 11. 54--55. The Pair'em Up window
corresponds to the claimed "at least one secondary pay line." Singer's
Pair' em Up concept "match[ es] two or more symbols drawn from the
symbol matrix during one or more spins." Id. at col. 3, 11. 6-10; see id. at
col. 6, 11. 21-26. Singer's "game starts with an empty Pair' em Up window"
and "[a]t the end of every spin, the symbol appearing in symbol position 3/2
is duplicated into an empty section of the Pair'em Up window." Id. at col. 3,
11. 50-53.
The Examiner also finds that Walker teaches- and Singer fails to
teach - claim 21 's recitation, "wherein the leftmost display position of the
plurality of display positions of the secondary pay line may remain vacant
during the second spin of said plurality of spins." Non-Final Act. 12 (citing
Walker, Figs. 4--7). The Examiner concludes, "[i]t would have been obvious
to a person of ordinary skill in the art ... to combine the disclosures of
Singer and Walker in order to facilitate order-dependent bonus games, i.e.[,]
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games where the order of symbols along the pay[ ]line is important." Id.
( emphasis omitted).
The Appellant argues that the Examiner's reasoning is flawed because
modifying Singer's matching game so that the symbols in the Pair'em Up
window are order-dependent lacks merit. See Appeal Br. 53. The
Appellant's argument is based on the assertion that the order of the
occurring symbols in the Pair' em Up game is not significant for a matching
game, whereas the order of the occurring symbols is significant for Walker's
poker game. Id. The Appellant's argument is persuasive.
The Examiner fails to cogently explain the modification of Singer's
teaching of the Pair' em Up concept from a matching game where order is
not dependent to concept where order is dependent. In one instance, the
Examiner "reasoned that one might want to create winning outcomes that
were order dependent; say, a run of three numbers instead of a pair." Ans. 7.
The Examiner proffers that modifying the game in this way could "show the
player where gaps existed in the run, e.g.[,] the player had a one and a three,
but still needed a two." Id. However, in this scenario, the leftmost display
position of the plurality of display positions of the secondary pay line would
be filled by a one.
In another instance, the Examiner explains that the modification does
"not transform[] the invention of Singer into an order-dependent bonus
game." Id. at 8. This appears to be a direct contradiction to the rationale
provided in the Non-Final Office Action. The Examiner's position "is not
stating that the Singer invention is now order-dependent; that is merely the
motivation to combine." Id. at 9. It is evident from this statement that the
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Examiner's reasoning does not logically connect the reason to combine the
teaching of Walker with the Pair'em Up concept of Singer.
Further, the Examiner suggests that a rationale for the modification of
Singer's game could have been understood as an obvious design choice, but
does not advance this line of reasoning because it lacks evidence. See id.
at 6. The Examiner also reasons that "a PHOSITA might fill in the
secondary window from right-to-left in order to accommodate players who
speak languages which are read that way, such as Hebrew or Arabic." Id.
at 7. However, this reasoning is not adequately supported by evidence.
Thus, we do not sustain the Examiner's rejection of independent
claim 21 as unpatentable over Singer and Walker. Independent claims 1, 6,
14, 19, and 20, includes similar subject matter as independent claim 21. The
rejection of these independent claims is based on the same reasoning as
presented in the rejection of claim 21. Accordingly, we do not sustain the
rejection of independent claims 1, 6, 14, 19, and 20, and dependent claims
2-5, 7-13, and 15-18.
The rejection of claims 16 and 18 based on Singer, Walker, and Fox
relies on the same deficiency as discussed above. The deficiency is not
cured by the additional findings and reasoning of the remaining rejection.
Thus, we do not sustain the rejection of claims 16 and 18 as being
unpatentable over Singer, Walker, and Fox.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1, 3-7, 9-14,
and 16-21 are rejected under 35 U.S.C. § 101.
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Appeal2017-005441
Application 11/698,515
We REVERSE the Examiner's decision rejecting claims 1-21 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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