Ex Parte Guinn et al

Patent Trial and Appeal Board

Feb 23, 2017

13676772 (P.T.A.B. Feb. 23, 2017)

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.
13/676,772 11/14/2012 Andrew C. Guinn 247079-000696USPT 6442
70243 7590
NIXON PEABODY LLP
70 West Madison, Suite 3500
CHICAGO, IL 60602
EXAMINER
NGUYEN, ANH-VO V
ART UNIT PAPER NUMBER
3717
NOTIFICATION DATE DELIVERY MODE
02/27/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketingchicago @ nixonpeabody.com
ipairlink @ nixonpeabody. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW C. GUINN, JEREMY M. HORNIK, JOEL
R. JAFFE, JEREMIE D. MOLL, JEFFRY L. NAUMAN, and
STEVEN ROSEN
Appeal 2015-004720
Application 13/676,772
Technology Center 3700
Before JENNIFER D. BAHR, JAMES P. CALVE, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Andrew C. Guinn et al. (“Appellants”) appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 1, 3—10, 12—14, and
16—21.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants submit the real party in interest is WMS Gaming, Inc. Appeal
Br. 2.
Appeal 2015-004720
Application 13/676,772
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A gaming system comprising:
at least one input device;
at least one display device;
at least one processor; and
at least one memory device that stores a plurality of
instructions that, when executed by the at least one processor,
cause the at least one processor to operate with the at least one
display device and the at least one input device to display a
wagering game having more than one array of symbol positions,
the more than one array of symbol positions being populated by
a plurality of symbols for indicating a randomly selected
outcome, each of the more than one array of symbol positions
forming a plurality of groups of symbol positions, the groups of
symbol positions being rows or columns, wherein a single reel
populates more than one non-adjacent group of symbol positions
of at least one of the more than one array of symbol positions and
at least one group of symbol positions of another of the more than
one array of symbol positions.
REJECTIONS
1) Claims 1, 3, 5, 6, 8, 10, 12, 14, 17, and 19-21 are rejected under 35
U.S.C. § 103(a) as unpatentable over Yoseloff (US 6,464,581 Bl,
issued Oct. 15, 2002) and Yoshizawa ‘314 (US 2008/0194314 Al,
published Aug. 14, 2008).
2) Claims 4 and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yoseloff, Yoshizawa ‘314, and Yoshizawa ‘851
(US 2007/0207851 Al, published Sept. 6, 2007).
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Application 13/676,772
3) Claims 7 and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yoseloff, Yoshizawa ‘314, and Berman (US
2008/0045323 Al, published Feb. 21, 2008).
4) Claims 9 and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yoseloff, Yoshizawa ‘314, and Reynolds (US
2009/0298571 Al, published Dec. 3, 2009).
DISCUSSION
Rejection 1
The Examiner finds that Yoseloff discloses most of the limitations of
independent claims 1,10, and 21 except for “having more than one array of
symbol positions and the single reel populates at least one group of symbol
positions of another of the more than one array of symbol positions.” Final
Act. 2—3 (citing Yoseloff, col. 3,11. 21—27, col. 9,11. 44^48, 63—67, col. 10,
11. 23—42). The Examiner finds that Yoshizawa ‘314 “teaches a slot machine
having more than one array of symbol positions wherein a single reel
populates at least one group of symbol positions of another of the more than
one array of symbol positions.” Id. at 3 (citing Yoshizawa ‘314, || 9, 91,
117, 123—124; Figs. 8, 10). The Examiner concludes that it would have been
obvious to modify Yoseloff with Yoshizawa ‘314 “to implement the
wagering game having more than one array of symbol positions and the
single reel populates at least one group of symbol positions of another of the
more than one array of symbol positions.” Id. The Examiner determines
that one of ordinary skill in the art would be motivated to do so “to enhance
game play by providing, visually, additional feeling of anticipation of game
outcome.” Id.
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Appellants contend that Yoseloff does not disclose the recited single
reel which “populates more than one non-adjacent group of symbol
positions.” Appeal Br. 8. In support of this contention, Appellants direct us
to the embodiment described at Paragraphs 44 and 45 of the Specification
where the continuous reel does not populate all rows in the array and argue
that Yoseloff s single strip populates “all symbol positions within an active
array and, thus, only populates adjacent symbol positions . . . [and] cannot
reasonably be said to populate more than one non-adjacent group of symbol
positions.” Id. at 7—8. Appellants next contend there is no reason to modify
Yoseloff with Yoshizawa ‘314 and that it is “unclear” how the Examiner is
proposing to modify Yoseloff with Yoshizawa ‘314. Id. at 10—11. In
support of this contention, Appellants argue that the Examiner’s stated
motivation for modifying Yoseloff with Yoshizawa ‘314 is improperly based
only on Appellants’ disclosure. Id. at 11 (citing Spec. ^fl[ 46, 48).
Appellants also contend that modifying Yoseloff would frustrate its intended
purpose of providing to the user the visual appearance of a single continuous
strip. Id. at 12—13.
The Examiner maintains that Yoseloff discloses populating non-
adjacent groups of symbols because “the claim language does not provide
that the reel cannot populate adjacent groups of symbols, only that it
populates more than one non-adjacent group of symbols.” Ans. 7. The
Examiner submits that Yoshizawa ‘314 acknowledges the “advantages of
having more than one array of symbol positions ... to not only entice game
play by having additional outcomes but also increase [the] feeling of
anticipation of expected result[s] by having continuous reel strips” and for
this reason one of ordinary skill would be motivated to modify Yoseloff’s
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Figure 2 embodiment with Yoshizawa ‘314’s Figure 7 or Figure 8
embodiment. Id. at 8 (citing Yoshizawa ‘314, Figs. 7, 8). The Examiner
also explains that modifying Yoseloff with Yoshizawa ‘314 requires “the
single reel strip to traverse from left to right, across the face of the monitor
and would further meet Yoseloff s intended purpose to attract and maintain
players by providing the visual appearance of a single continuous strip
moving across the face of the monitor.” Id. at 9.
Appellants reply with an assertion that combining Yoseloff s single
reel with Yoshizawa ‘314’s multiple arrays to populate more than one non-
adjacent group of symbol positions would result in a “convoluted population
of the symbol positions [which] would be visually confusing to players.”
Reply Br. at 8—9; Appeal Br. 8. For the following reasons, we sustain the
rejection of independent claims 1,10, and 21.
Yoseloff discloses a video slot reel game with “a plain strip 4 carrying
symbols 6 on one surface 8 only which are displayed on a video screen.”
Yoseloff, Abstract, col. 5,11. 12—18; Fig. 1. Payout lines are represented by
dashed lines A, B, and C in Figure 1 of Yoseloff. Id. Yoseloff also
discloses a similar plain strip 32 that carries “symbols 34 on a front surface
36 and a rear surface 38.” Id. col. 5,11. 24—25; Fig. 2. Each strip 32
advances in a way that provides a visual appearance of a single continuous
strip moving across the face of the monitor. Id. at col. 5 11.20—29. Yoseloff
also discloses that it is “desirable within an entertainment field, such as
video gaming to be able to provide variations in the play and appearance of
the games to attract and maintain players.” Id. col. 2,11. 25—28.
Yoshizawa ‘314 discloses a slot machine “played by simulating the
rotation of the reels on the video display unit rather than rotating actual
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reels.” Yoshizawa ‘314,17. Yoshizawa ‘314’s slot machine comprises
more than one array of symbol positions, which appear as adjacent columns
or rows. See id. 1108, 119, Figs. 7, 8, and 10. For example, Figure 7 of
Yoshizawa discloses two adjacent arrays 150, 160 both consisting of 3 rows
and 3 columns. Id. Fig. 7. Yoshizawa ‘314 discloses that it’s multiple array
device results in improved “entertainment properties.” Id. 114.
In order to resolve this case, we first construe the phrase “non-
adjacent group of symbols positions” as recited in claims 1,10, and 21.
During patent prosecution, claim terms are given their broadest reasonable
interpretation consistent with the Specification as it would be interpreted by
one of ordinary skill in the art. See In re Suitco Surface, Inc., 603 F.3d
1255, 1259-60 (Fed. Cir. 2010); In re Morris, 127 F.3d 1048, 105^55 (Fed.
Cir. 1997). Although the claims are interpreted in light of the Specification,
limitations from the Specification are not read into the claims. In re Van
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
The Examiner provides a claim construction, i.e., “the claim language
does not provide that the reel cannot populate adjacent group[s] of symbols,
only that it populates more than one-non-adjacent group of symbols.” Ans.
7—8. We are not persuaded by Appellants’ argument, based on the
embodiment described in Paragraphs 44 and 45 of the Specification, that the
phrase “non-adjacent group of symbol positions” excludes a single reel
which populates all groups of symbol positions, adjacent as well as non-
adjacent, in the array because such a construction requires us to improperly
read limitations from the Specification into the claims.
As Appellants do not apprise us of error in the Examiner’s claim
construction, we adopt the Examiner’s claim construction as the broadest
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reasonable interpretation. Based on this claim construction, the Examiner’s
finding that Yoseloff discloses a single strip 32 that populates non-adjacent
groups of symbol positions 50 and 54 is supported by a preponderance of the
evidence. Ans. 7—8 (citing Yoseloff, Fig. 2, col. 2,11. 34-43.).
With respect to Appellants’ contention that the Examiner’s proposed
modification of Yoseloff with Yoshizawa ‘314 is unclear, we first note that
the rejection is based on the combined teachings of Yoseloff and Yoshizawa
‘314. The Examiner finds that Figure 2 of Yoseloff discloses a single array
of symbol positions, i.e., a 6 column x 4 row array. See Yoseloff, Fig. 2.
The Examiner refers to Yoshizawa ‘314’s teaching of multiple arrays to
modify Yoseloff to include more than one array. Final Act. 3. If, for
example, the embodiment illustrated in Figure 7 of Yoshizawa ‘314 is
applied to Yoseloffs Figure 2 embodiment, one of ordinary skill in the art
would understand the rejection to result in Yoseloffs single reel traversing
from left to right and populating two arrays each consisting of 6 columns
and 2 rows. See Ans. 9. Consequently, Appellants’contentions that the
Examiner’s proposed combination results in a convoluted population of the
symbol positions which would be visually confusing to players and would
frustrate Yoseloffs intended purpose of providing to the user the visual
appearance of a single continuous strip are both not persuasive.
The Examiner articulates a reason that one of ordinary skill in the art
would combine teachings of Yoseloff and Yoshizawa ‘314, i.e., to “enhance
game play by providing, visually additional feeling of anticipation of game
outcome.” Final Act. 3. Appellants contend this reason is insufficient
because it is based only on Appellants’ disclosure. As stated above,
Yoseloff discloses that it is always desirable to provide variation in play and
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appearance of games while Yoshizawa ‘314 discloses that its use of multiple
arrays increases the entertainment value of the games. We understand the
Examiner to be equating increased entertainment value with enhancement of
game play. Further, we understand from the rejection that the Examiner
asserts that multiple arrays can increase a player’s feelings of anticipation
because the multiple arrays provide multiple game outcome opportunities.
Appellants’ argument that the stated reason for the combination is based
only on Appellants’ disclosure is, thus, not persuasive because it is derived
from the disclosures of Yoseloff and Yoshizawa ‘314. We, therefore,
determine that the Examiner has articulated a sufficient reason for the
combination of Yoseloff and Yoshizawa ‘314 that is supported by rational
underpinnings.
As Appellants have not apprised us of error, we sustain the rejection
of claims 1,10, and 21. Appellants do not argue separately for the
patentability of dependent claims 3, 5, 6, 8, 12, 14, 17, 19, and 20, but rely
on the same contentions interposed with respect to claims 1 and 10. Appeal
Br. 12. Therefore, we sustain the rejections of claims 3, 5, 6, 8, 12, 14, 17,
19, and 20 for the same reasons stated for claims 1 and 10.
Rejections 2, 3, and 4
Claims 4, 7, and 9 depend from claim 1. Claims App. Al—A2.
Claims 13, 16, and 18 depend from claim 10. Claims App. A2—A3.
Appellants do not argue separately for the patentability of these claims, but
rely on the same contentions presented in connection with claims 1 and 10.
Appeal Br. 12. Therefore, we sustain the rejections of claims 4, 7, 9, 13, 16,
and 18 for the same reasons stated for claims 1 and 10.
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DECISION
The Examiner’s decision rejecting claims 1, 3—10, 12—14, and 16—21
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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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