Ex Parte Napolitano et al

Patent Trial and Appeal Board

Aug 28, 2018

12543203 (P.T.A.B. Aug. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/543,203 08/18/2009
101546 7590 08/30/2018
Thomas F. Bergert
Williams Mullen
321 East Main Street, Suite 400
Charlottesville, VA 22902
FIRST NAMED INVENTOR
Thomas J. Napolitano
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.
042061.0036 6865
EXAMINER
PIERCE, WILLIAM M
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
08/30/2018 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):
tbergert@williamsmullen.com
ip@williamsmullen.com
patents@igt.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS J. NAPOLITANO and
DAVID J. RAHMER
Appeal2017-007485
Application 12/543,203
Technology Center 3700
Before JOSEPH A. FISCHETTI, MICHELLE R. OSINSKI, and
AMEE A. SHAH, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Thomas J. Napolitano and David J. Rahmer ("Appellants") 1 appeal
under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-
16 and 19-23. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as IGT Global Solutions
Corporation. Appeal Br. (Nov. 14, 2016), 3.
2 Claims 17 and 18 are cancelled, and claims 24 and 25 are withdrawn.
Response (Mar. 2, 2015), 5---6.
Appeal2017-007485
Application 12/543,203
THE CLAIMED SUBJECT MATTER
Claims 1, 15, and 23 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter on appeal.
1. A game, comprising:
a game representation object;
a visual representation of a primary game on the game
representation object, including one or more pre-determined sets
of primary game indicia, the one or more pre-determined sets
comprising at least two distinct images;
a first prize award section on the game representation
object that includes a visual indication of at least one primary
game prize associated with two or more primary game indicia
appearing in a pre-defined pattern on the game representation
object;
a visual representation of a secondary game on the game
representation object including a pre-defined pattern of
secondary game indicia that includes at least one of the at least
two distinct images from the primary game indicia, wherein the
pattern of secondary game indicia defines one or more potential
winning patterns on the game representation object; and
a second prize award section on the game representation
object that includes a visual indication of at least one secondary
game prize associated with at least one of the displayed primary
game indicia appearing in one of the potential winning patterns
of the secondary game.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Falciglia
Holman
Guttin
Rogers
us 5,935,002
us 6,076,860
US 6,241,246 B 1
US 7,654,529 B2
2
Aug. 10, 1999
June 20, 2000
June 5, 2001
Feb.2,2010
Appeal2017-007485
Application 12/543,203
THE REJECTIONS
I. Claim 19 stands rejected under 35 U.S.C. § 112, second paragraph
as being indefinite. Non-Final Act. (June 15, 2016), 3--4.
II. Claims 1-10, 15, 16, and 20-23 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Rogers. Id. at 5-6.
III. Claims 11-14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Rogers "in view of matters considered well
known to game machines." Id. at 6.
IV. Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Rogers, Holman, and Guttin. Id. at 8-9.
V. Claims 1, 3-15, and 20-23 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Falciglia "in view of award indicia well
known on wagering substrates as taught by Rogers." Id. at 6-8.
VI. Claims 2, 16, and 19 stand rejected 35 U.S.C. § 103(a) as
unpatentable over Falciglia "in view of admitted prior art in the
previous office action" and further in view of Holman and Guttin.
Id. at 9-11.
OPINION
Rejection I
Appellants do not present any substantive arguments contesting the
Examiner's rejection of claim 19 under 35 U.S.C. § 112, second paragraph
as being indefinite. See Appeal Br. 12-23 (presenting arguments only as to
the anticipation and obviousness rejections). Consequently, Appellants have
waived any argument of error, and we summarily sustain the rejection of
claim 19 under 35 U.S.C. § 112, second paragraph as being indefinite. See,
e.g., In re Berger, 279 F.3d 975, 984--85 (Fed. Cir. 2002) (holding that the
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Board did not err in sustain a rejection under 35 U.S.C. § 112, second
paragraph, when the applicant failed to contest the rejection on appeal);
Hyattv. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that
summary affirmance without consideration of the substantive merits is
appropriate where an appellant fails to contest a ground of rejection).
Rejection II
Claims 1-10 and 23
The Examiner finds that Rogers discloses all of the limitations of
independent claims 1 and 23, stating:
Rogers shows a representation object 300, primary game with
primary game indicia ( such as 6, 11, 20, 8, 14 ), a first prize award
section (such as $7, $10, $2, $1000 and $1), a secondary game
representation object in a predefined pattern of indicia that
includes primary game indicia such as "6" that matches defining
a potential winning pattern and a second prize award section at
the top of the ticket that defines a secondary game prize to be
awarded if you "match any of YOUR NUMBERS to either one
o[fJ the LUCKY NUMBER[S], win that prize for that number.
Reveal a[n] "X" symbol in the LUCKY FORTUNE,
immediately win all 10 prizes!".
Non-Final Act. 5. With respect to the element identified as the second prize
award section above, the Examiner states that "[t]his indicia on Rogers[']
game representation object is clearly a section that is capable of awarding a
second prize and has a visual indication of at least one secondary game prize
at 204 that is associated with the displayed primary game indicia most
broadly merely by being printed on the same substrate." Ans. (Feb. 16,
2017), 7. The Examiner also states that "the [E]xaminer is not giving any
patentable weight to any of the printed matter being claimed since the
[E]xaminer finds that there is no unobvious functional relationship between
the printed matter and the substrate." Id. at 4.
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Application 12/543,203
Appellants argue that "the only secondary game in Rogers is finding
a* in the LUCKY FORTUNE numbers of the ticket, and the prize in Rogers
for doing so is not associated with at least one of the displayed primary
game indicia appearing in one of the potential winning patterns of the
secondary game." Appeal Br. 16. Appellants also argue that there is a
"functional relationship between the visual representations/indications and
the game representation object, where indicia from the first game on the
game representation object are used to determine whether a player is a
winner of both the first and second games on the single game representation
object." Reply Br. 3. In particular, Appellants identify the functional
relationship as "facilitat[ing] extended play, whereby players can spend
more time playing using the single game representation object before
knowing whether or not the games have been won." Id.
We agree with Appellants that the Examiner has not adequately
supported a finding of "a second prize award section on the game
representation object that includes a visual indication of at least one
secondary game prize associated with at least one of the displayed primary
game indicia appearing in one of the potential winning patterns of the
secondary game" ( claim 1) or "a second prize award section on the game
representation object that includes a visual indication of at least one
secondary game prize to be awarded in the secondary game based upon the
primary game indicia" ( claim 23), as claimed. To the extent the Examiner is
relying on the indication that matching any of "YOUR NUMBERS" to the
"LUCKY NUMBERS" wins a prize, this indication is in relation to the
identified primary game and cannot reasonably be considered a second prize
award section for a secondary game. To the extent the Examiner is relying
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on the indication that revealing a certain symbol in the "LUCKY
FORTUNE" at 204 wins a prize (Ans. 7), this certain symbol is a completely
new symbol that is not one of the displayed primary game indicia. That the
certain symbol in the "LUCKY FORTUNE" at 204 may be printed on the
same substrate as the primary game indicia is not sufficient to reasonably
consider the secondary game prize to be associated with ( claim 1) or based
on (claim 23) the primary game indicia as claimed. To the extent that the
Examiner is taking the position that there is no functional relationship
between the second prize award section and the substrate, we agree with
Appellants that there is a functional relationship between the visual
indication of the second prize award section and the substrate, namely,
extending the play of the game representation object on the substrate by
including the same indicia that are in the primary game in the secondary
game to determine whether a second prize is to be awarded. More
particularly, the second prize award section visually indicates a secondary
game prize that is to be awarded based on the primary game indicia ( e.g., if
there is a winning pattern of primary game indicia in the secondary game).
For the foregoing reasons, we find that the Examiner erred in finding
that claims 1 and 23 are anticipated by Rogers. We do not sustain the
rejection of claims 1 and 23, and claims 2-10 which depend therefrom,
under 35 U.S.C. § 102(b) as anticipated by Rogers.
Claims 15, 16, and 20-22
In connection with independent claim 15, the Examiner relies on the
same findings as made in connection with independent claims 1 and 23.
Non-Final Act. 5-6. Appellants argue that Rogers does not disclose "means
responsive to player action so as to reveal the at least one initially
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unrevealed primary game indicia on the representation object, wherein the
revealed at least one game indicia determines whether the at least one
primary game prize and the at least one secondary game prize have been
won." Appeal Br. 16-17. More particularly, Appellants argue that "any
revealed game indicia [in Rogers] does not determine both whether the at
least one primary game prize has been won and whether the at least one
secondary game prize has been won." Id. at 1 7. The Examiner responds
that "[ e ]ven looking at the function, the revealed number 206 can be
described as being revealed to determine both whether the primary game
indicia of $6 has been won and whether at least on[ e] secondary game prize
has been won at 202." Ans. 8.
Similar to the analysis in connection with independent claims 1 and
23 above, the revealed number at 206 determines only whether the primary
game has been won in that "LUCKY NUMBERS" at 202 and "YOUR
NUMBERS" at 206 are part of one in the same primary game. Moreover,
the revealed number at 206 has no bearing on whether or not a secondary
game prize has been won (i.e., if a certain symbol in the "LUCKY
FORTUNE" at 204 is present) as required by the claims.
For the foregoing reasons, we find that the Examiner erred in finding
that claim 15 is anticipated by Rogers. We do not sustain the rejection of
claim 15, and claims 16 and 20-22 which depend therefrom, under
35 U.S.C. § 102(b) as anticipated by Rogers.
Rejections III and IV
The rejections of dependent claims 11-14 and 19 rely on the same
erroneous findings that Rogers discloses "a second prize award section on
the game representation object that includes a visual indication of at least
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one secondary game prize associated with at least one of the displayed
primary game indicia appearing in one of the potential winning patterns of
the secondary game" and/or "means responsive to player action so as to
reveal the at least one initially unrevealed primary game indicia on the
representation object, wherein the revealed at least one game indicia
determines whether the at least one primary game prize and the at least one
secondary game prize have been won," as claimed. The Examiner does not
explain how well-known game machine technology and/or Holman and
Guttin might cure this underlying deficiency. Non-Final Act. 6, 8-9. The
Examiner relies on well-known game machine technology only for its
teachings relating to auto play features and to Holman and Guttin only for
their teachings relating to certain ink element features. Id.
Accordingly, we do not sustain the rejections, under 35 U.S.C.
§ 103(a), of: claims 11-14 as unpatentable over Rogers in view of matters
considered well known to game machines; and claim 19 as unpatentable
over Rogers, Holman, and Guttin. 3
Rejection V
In rejecting the claims over Falciglia "in view of award indicia well
known on wagering substrates as taught by Rogers" (Non-Final Act. 6), the
Examiner asserts:
[F]rom [F]ig. 11 of Falciglia shown is a representation object
232, a visual representation of a primary game at 156 including
3 The Board's rules provide that "[a]n appeal, when taken, is presumed to be
taken from the rejection of all claims under rejection unless cancelled by an
amendment filed by the applicant and entered by the Office." 37 C.F.R.
§ 41.31 ( c ). Although the Appeal Brief fails to reproduce claim 19 in the
Claims Appendix, we see no amendment cancelling this claim, so this appeal
is considered to be an appeal of the rejections of claim 19.
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one or more sets of primary game indicia 252 and 260 and visual
representation of a secondary game at 154 with a predefined
pattern of indicia that includes the primary game indicia such as
the number "52". . . . [A]t step 306[,] a primary award is
considered made in the primary game. The secondary game
indicia then includes primary game indicia as shown in the bingo
matrix of [F]ig. 11 that awards a second prize 318 and 320 based
upon at least one displayed primary game indicia appearing in a
potential winning pattern.
Non-Final Act. 6-7.
Appellants argue that Falciglia discloses that its identified primary
game indicia are randomly determined, not predetermined as required by the
claims, and that "Falciglia teaches away from using exact predetermined
numbers." Appeal Br. 18-19. The Examiner responds that "'pre-
determined' is very broad and does not preclude randomly drawn numbers."
Ans. 9. For example, the Examiner finds that "[ o ]ne can randomly generate
numbers to determine indicia prior to any other action taking place such that
one can describe them functionally as 'pre-determined."' Id. Appellants do
not point to, nor do we independently discern, a definition of the term
"predetermined" in the Specification. Consequently, we find nothing in the
Specification inconsistent with the Examiner's interpretation in which the
random generation of numbers prior to other action in the game is consistent
with the numbers being predetermined. The Examiner's interpretation also
appears consistent with a plain and ordinary meaning of "predetermined" as
"determined in advance" (Oxford English Dictionary, 3d ed. Mar. 2007) in
that the numbers are determined in advance of the play of the game.
Appellants also argue that "the visual indication of primary and
secondary game prizes are specific structural imitations in the claim."
Appeal Br. 19. Appellants' argument is not persuasive of error in that it fails
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to address the position by the Examiner that "first and second prize award
section[s] on the presentation object ... [are] considered to cover indicia
conventionally placed upon wagering presentation objects, such as game
machines and table layouts, to inform player of the rules, rewards and
payouts for the game" and that "[t]o have included prize award section and
indicia with respect to the prizes to be awarded on Falciglia would have been
obvious in order to inform a player of how to play the game and awards that
can be achieved." Non-Final Act. 7.
Appellants argue, in connection with independent claim 15, that "the
Office Action does not specifically address the claim limitations of at least
one primary game indicia that is unrevealed and at least one secondary game
indicia that is revealed." Appeal Br. 20. Appellants also argue that the
Office Action does not address "the claimed means element ... , wherein
the revealed at least one game indicia determines whether the at least one
primary game prize and the at least one secondary game prize has been
won." Id. at 20-21.
The Examiner responds that the claimed "means responsive to player
action so as to reveal the at least on initially unrevealed primary game
indicia on the representation object, wherein the revealed at least one game
indicia determines whether the at least one primary game prize and the at
least one secondary game prize have been won" (Appeal Br. 27 (Claims
App.)) is the "pushing of a button 218 to display indicia 252 like a slot
machine." Ans. 10. The Examiner finds that this structure in Falciglia is
equivalent to the structure of scratch-off material, the pulling of a slot
machine-type arm, and pushing a physical button disclosed in Appellants'
Specification. Id. (citing Spec. 6:22); see also Spec. 6:21-7:1. Falciglia
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describes matrix 154 being displayed on the game screen, and the generation
of five random symbols displayed in the selectable display region 156 after
activation of spin icon 218. Falciglia 13 :4---6, 27-33. Depending on what
symbol is generated, it can be determined whether the primary game has
been won (i.e., whether a gold coin icon 246 results in an award at step 306)
(see id. 13:31-32, 17:20-23) and whether the secondary game has been won
(i.e., whether a bingo number in region 156 is matched with a corresponding
bingo number in matrix 154 results in an award at step 318) (see id. 13:27-
40, 17:55---62). See Non-Final Act. 7 (referencing steps 306 and 318).
Appellants' argument fails to adequately explain how modified Falciglia
fails to teach the means responsive to player action in accordance with the
claims.
Finally, Appellants argue that "Falciglia does not show the claim
element of 'a first prize award section on the game representation object
including a visual indication of at least one primary game prize associated
with the primary game indicia appearing in a pre-defined pattern comprising
at least two indicia on the game representation object." Appeal Br. 21.
Appellants present similar arguments with respect to claim 23. Id. at 22.
The Examiner responds that "the individual first and second prize award
sections and game indicia is considered shown as set forth in the grounds for
rejection." Ans. 10. The Examiner has modified Falciglia to include a prize
award section (Non-Final Act. 7) and has pointed to Falciglia's primary
award at 306 (id.) based on the results of the five symbols displayed in the
selectable display region 156. Appellants' argument fails to adequately
explain how modified Falciglia fails to teach a first prize award section in
accordance with the claims.
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For the foregoing reasons, we do not find that the Examiner erred in
finding that claims 1, 15, and 23 are unpatentable over Falciglia and Rogers.
We sustain the rejection of claims 1, 15, and 23, and claims 2-15, and 20-22
(for which Appellants do not present additional arguments), under 35 U.S.C.
§ 103(a) as unpatentable over Falciglia and Rogers.
Re} ection VI
In connection with dependent claims 2, 16, and 19, Appellants do not
present separate arguments and apparently rely on the same arguments and
reasoning we found unpersuasive in connection with independent claims 1,
15, and 23 as the basis for seeking reversal of the rejection of claims 2, 16,
and 19. See Appeal Br. 18. Accordingly, we also sustain the rejection of
claims 2, 16, and 19 under 35 U.S.C. § 103(a) as unpatentable over Falciglia
"in view of admitted prior art in the previous office action" and further in
view of Holman and Guttin.
DECISION
The Examiner's decision to reject claim 19 under 35 U.S.C. § 112,
second paragraph as being indefinite is summarily affirmed.
The Examiner's decision to reject claims 1-10, 15, 16, and 20-23
under 35 U.S.C. § 102(b) as anticipated by Rogers is reversed.
The Examiner's decision to reject claims 11-14 under 35 U.S.C.
§ 103(a) as unpatentable over Rogers "in view of matters considered well
known to game machines" is reversed.
The Examiner's decision to reject claim 19 under 35 U.S.C. § 103(a)
as unpatentable over Rogers, Holman, and Guttin is reversed.
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The Examiner's decision to reject claims 1, 3-15, and 20-23 under
35 U.S.C. § 103(a) as unpatentable over Falciglia "in view of award indicia
well known on wagering substrates as taught by Rogers" is affirmed.
The Examiner's decision to reject claims 2, 16, and 19 under
35 U.S.C. § 103(a) as unpatentable over Falciglia "in view of admitted prior
art in the previous office action" and further in view of Holman and Guttin 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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