Ex Parte Pfeifer et al

Patent Trial and Appeal Board

Sep 24, 2018

12940967 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/940,967 11/05/2010
70243 7590
NIXON PEABODY LLP
70 West Madison, Suite 3500
CHICAGO, IL 60602
09/26/2018
FIRST NAMED INVENTOR
Howard Pfeifer
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.
247079-002343USPT 8658
EXAMINER
D'AGOSTINO, PAUL ANTHONY
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
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 HOW ARD PFEIFER and STEVE ZOLOTO
Appeal2017-003379
Application 12/940,967
Technology Center 3700
Before STEFAN STAICOVICI, LEE L. STEPINA, and
FREDERICK C. LANEY, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Howard Pfeifer and Steve Zoloto ("Appellants") 1 appeal under
35 U.S.C. § 134(a) from the Examiner's decision in the Final Office Action
(dated Dec. 11, 2015, hereinafter "Final Act.") rejecting claims 7-15 and
39-57. 2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Bally Gaming, Inc. is identified as the real party in interest in Appellants'
Appeal Brief (filed Apr. 1, 2016, hereinafter "Appeal Br."). Appeal Br. 3.
2 Claims 1---6 and 16-38 are canceled. Appeal Br. 37 (Claims App.).
Appeal2017-003379
Application 12/940,967
INVENTION
Appellants' invention relates to "methods and apparatus for
controlling an audio parameter of a plurality of wagering game machines."
Spec., para. 2.
Claims 7, 11, 45--4 7, and 52 are independent. Claim 52 is illustrative
of the claimed invention and reads as follows:
52. A method comprising:
playing audio at each of a plurality of wagering game
machines at a separate, respective user-selected volume level
while each wagering game machine is playing an independent
wagenng game;
randomly triggering, by at least one of one or more
processors, a shared game among the plurality of wagering
game machines;
in response to the triggering, adjusting, by at least one
of the one or more processors, a volume level at each of the
plurality of wagering game machines from the separate,
respective user-selected volume level to a common volume
level that is common to the plurality of wagering game
machines; and
playing audio at each of the plurality of wagering
game machines at the common volume level while each
wagering game machine is participating in the shared game.
REJECTIONS 3
I. The Examiner rejects claims 7-15 and 39-57 under 35 U.S.C. § 101
as being directed to ineligible subject matter.
3 Appellants' request to withdrawn the finality of the Examiner's Final
Office Action (see Appeal Br. 19) is a petitionable matter under 37 C.F.R.
§ 1.181, not an appealable matter, and is not within the jurisdiction of the
Board. See In re Mindick, 371 F.2d 892, 894 (CCPA 1967); see also MPEP
§ 706.07(c).
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Application 12/940,967
II. The Examiner rejects claims 7-15 and 39-57 under 35 U.S.C.
§ I03(a) as being unpatentable over Rothschild et al. (US
2005/0130732 Al, published June 16, 2005, hereinafter "Rothschild")
and Tyndall et al. (US 2007/0111800 Al, published May 17, 2007,
hereinafter "Tyndall").
ANALYSIS
Rejection I
Section 101 of the Patent Act defines patent-eligible subject matter:
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. In interpreting this statutory
provision, the Supreme Court has held that its broad language is subject to
an implicit exception for "laws of nature, natural phenomena, and abstract
ideas," which are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l,
134 S. Ct. 2347, 2355 (2014).
The Supreme Court has set forth "a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Id. at
2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66 (2012)). According to the Supreme Court's framework, we must first
determine whether the claims at issue are directed to one of those concepts
(i.e., laws of nature, natural phenomena, and abstract ideas). Id. If so, we
must secondly "consider the elements of each claim both individually and
'as an ordered combination' to determine whether the additional elements
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Application 12/940,967
'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
Step One
The Examiner determines that the claims "are directed to managing an
audio/video presentation." Final Act. 2. Then, the Examiner chooses claim
52 "as representative of the other independent claims" and determines that it
describes "the abstract idea of adjusting a volume level of independently
operated game machine to a common volume [level] when there is a
common audio presentation." Id. According to the Examiner, "[t]his is an
abstract idea of itself similar to the array of cases in the area of ideas of
themselves the court held ineligible." Id. (emphasis added). 4 The Examiner
further determines that, "given the claims are directed to the technological
field of managing the audio levels in the field of gaming, the case is similar
in that regard to Planet Bingo[5], Gametek[6], and In re Webb[7] where the
claims were held abstract and ineligible." Id. at 2-3.
Moreover, the "Examiner contends that the steps to impose control
over game machines at various user-selected volumes to a common volume
commensurate with a common activity can be accomplished manually." Id.
4 Citing July 2015 Update: Interim Eligibility Guidance Quick Reference
Sheet, US PTO (2015), http://www. uspto. gov/ sites/ default/files/ documents
/ieg-july-2015-qrs.pdf.
5 Planet Bingo, LLC v. VKGS LLC, 576 F. App'x 1005 (Fed. Cir. 2014).
6 Gametek LLC v. Zynga, Inc., Nos. CV 13-2546 RS, CV-13-3089-RS, CV-
13-3472-RS, CV-13-3493-RS, 2014 WL 1665090 (N.D. Cal. Apr. 25,
2014), affd. 597 F. App'x. 644 (Fed. Cir. 2015).
7 Ex Parte Webb, Appeal No. 2012-001567 (PTAB Mar. 24, 2014) (aff'd
Rule 36 by In re Webb, 609 Fed. App'x 643 (Mem) (Fed. Cir. 2015)).
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Application 12/940,967
at 3 ( emphasis added). The Examiner explains that "the system has a human
analog" because "[ o ]nee a triggering condition occurs, manual instructions
can be announced for all users to tune their game machines to a common
volume." Examiner's Answer 3 (dated Oct. 18, 2016, hereinafter "Ans.").
First, we agree with Appellants that there is substantially more to the
claims than "adjusting ... a volume level ... to a common volume level," as
recited by claim 52. See Reply Brief 2 (filed Dec. 19, 2016, hereinafter
"Reply Br."). For example, independent claim 45 requires "an independent
game mode," "a shared game mode," "a plurality of secondary display
elements ... configured to function together as a single continuous display,"
"one or more central processing units," "playing audio files associated with
a corresponding independent wagering game," and "triggering [a] shared
game." Appeal Br. 40-41 (Claims App.). Similar limitations can be found
in independent claims 46 and 4 7.
However, reducing all claims to "adjusting ... a volume level ... to a
common volume level," as recited in claim 52, alone, threatens to
"describ [ e] the claims at such a high level of abstraction and untethered from
the language of the claims all but ensures that the exceptions to § 101
swallow the rule." Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337
(Fed. Cir. 2016). Indeed, determining that the instant claims are directed to
a single element recited in claim 52 is tantamount to the violation of
reducing the Alice step-one inquiry to "simply ask[ing] whether the claims
involve a patent-ineligible concept." Id. at 1335.
Secondly, although we appreciate the Examiner's position that
"adjusting a volume level ... to a common volume level" can be
accomplished manually (see Final Act. 3), nonetheless, we note that the
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Application 12/940,967
phrase "an idea 'of itself" has been used to describe a mental process that
"can be performed in the human mind, or by a human using a pen and
paper." CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372
(Fed. Cir. 2011). Here, the Examiner fails to explain adequately how
adjusting a volume level constitutes a mental process performed in the
human mind or by a human using a pen and paper.
Thirdly, even though the courts have declined to specifically define
abstract ideas, nonetheless, they have identified abstract ideas by comparing
a claimed concept to concepts previously identified as abstract ideas by the
courts. See Enfzsh, LLC v. Microsoft Corp., 822 F.3d. 1327, 1334 (Fed. Cir.
2016). Here, the Examiner's reliance on Planet Bingo, Gametek, and Webb
is misplaced. As correctly noted by Appellants, the claims at issue "are not
directed to the game-play mechanisms of a wagering game, a shared game,
or other game that may be executed or presented on any of the gaming
machines." Appeal Br. 27.
More specifically, in Planet Bingo, the claimed methods are directed
to managing a game of "Bingo"; in Gametek the claims are directed to a
commercial transaction where players are allowed to purchase additional
objects during a game; and in Webb the claims at issue are directed to a set
of rules for playing a card game. Id. at 26-27; see also Ans. 4--5. As such,
although like Planet Bingo, Gametek, and Webb, Appellants' invention is
related to gaming, nonetheless, the abstract concepts of managing a game,
creating a commercial transaction, or setting rules for administering a
wagering game are not related to the concept of the instant claims, which
according to the Examiner is "adjusting a volume level ... to a common
volume [level]." See Final Act. 2. We, thus, agree with Appellants that the
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Examiner's reliance on Planet Bingo, Gametek, and Webb is based "on the
most vaporous of connections," which is "some association with games or
gaming-rather than evaluating the actual limitations set forth in the
[instant] claims." Reply Br. 3.
Accordingly, for the foregoing reasons, the Examiner has not
adequately demonstrated that the claims are directed to an abstract idea,
under the first step of the Alice framework, and, thus, we do not proceed to
the second step. See Enfish, 822 F.3d at 1339 (citing Alice, 134 S. Ct. at
2355). Therefore, we do not sustain the rejection of claims 7-15 and 39-57
under 35 U.S.C. § 101 as directed to ineligible subject matter.
Rejection II
Appellants argue the rejection under 35 U.S.C. § 103(a) of
independent claims 7, 11, 45--47, and 52 together as a group. See Appeal Br.
32 ("For the Board's convenience, independent claims 7, 11, 45-47, and 52
will be considered as a group."). Therefore, like Appellants, we select claim
52 as the representative claim to decide the appeal, with claims 7, 11, and
45--47 standing or falling with claim 52.
The Examiner finds that Rothschild discloses a gaming method played
among a plurality of gaming machines including, inter alia, playing an
independent wagering game on each gaming machine, randomly triggering a
shared bonus game among the gaming machines, and switching graphical
and audio features from the basic game to the particulars of the shared bonus
game. Final Act. 4--5 (citing Rothschild, paras. 3, 6, 20, 21, 27, 28, Fig. 3).
The Examiner further finds that Rothschild fails to disclose adjusting the
audio volume from user-selected levels on each gaming machine to a
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specified common value on all machines. Id. at 5. Nonetheless, the
Examiner finds that Tyndall discloses a method for adjusting audio volume
levels of a plurality of gaming machines from an independent mode where
the audio level of each gaming machine is user-selected to the "same level"
on all the machines when desired by the gaming establishment, such as to
broadcast a general message. Id. at 6 (citing Tyndall, paras. 12, 13, 26, 30,
44, 46, 49, 50, 51, Fig. 5). Thus, the Examiner concludes that:
[O]ne of skill in the art would recognize that use of the known
technique of Tyndall to control user-selected volumes to a
modified and synchronized common volume into the gaming
machines of Rothschild would achieve the predictable result of
overriding user-selected game machine volumes with a
specified common volume to draw more attention to the bonus
game event as players are able to hear an[ d] anticipate the
arrival of the bonus event to their game machine as it is heading
toward them.
Id. at 7 (citing Rothschild, para. 29).
Appellants first argue that Rothschild does not trigger a "shared
game" among a plurality of gaming machines. Appeal Br. 33. According to
Appellants, "it is not clear ... when Rothschild's 'shared game' is believed
to be triggered among the plurality of gaming machines." Id. Appellants
explain that because the bonus feature of Rothschild's Duck Duck Goose
game occurs sequentially on multiple gaming machines, "Rothschild fails to
adjust the volume levels of multiple machines in response to a single trigger,
as recited in claim 52, but instead must adjust each volume level individually
and sequentially in response to the respective triggers at each machine." Id.
In the alternative, Appellants assert that if triggering occurs in "unison" on
all of Rothschild's machines, then the machines are always in a shared game
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mode and, thus, "cannot be switched from independent to shared game mode
as the independent mode is essentially undefined." Id. at 33-34.
We are not persuaded by Appellants' arguments because the
Examiner is correct in that "the triggering of the machine[] to make the
machine eligible [for a bonus event] is different from the execution [(i.e., the
display)] of the bonus event." Ans. 8. Rothschild discloses that a bonus
game starts "when symbols 24 on the reels align with selected pay lines 26,
in accordance with a pay table." See Rothschild, para. 20 (emphasis
omitted). Rothschild further discloses that controller 64 controls visual
bonus indicator 28, i.e., the goose, across a plurality of machines 10. See
Rothschild, paras. 25, 36, Fig. 7d. As such, although the visual bonus
indicator 28 is displayed sequentially on each machine does not mean that
the bonus game has not been triggered for all machines to participate in the
bonus game. Stated differently, by having visual bonus indicator 28, i.e., the
goose, controlled across all machines of a bank of machines 48, visual bonus
indicator 28 is then displayed sequentially on each machine as part of the
Duck Duck Goose (bonus) group game. Therefore, as Rothschild switches
from an "independent" game mode, where symbols 24 are not aligned with
pay lines 26, to a "shared" game mode, where they are, and visual bonus
indicator 2 8 is controlled across a plurality of machines 10, Rothschild
discloses triggering a "shared game," as called for by claim 52.
Secondly, Appellants contend that in light of the Specification and the
understanding of a person skilled in the art, the phrase "shared game"
requires "concurrent participation" of all machines during the "shared"
(bonus) game. Appeal Br. 33-35 (citing Spec., para. 20; Bennett, para. 40
(US 2010/0137052 Al, pub. June 3, 2010); Lima, para. 19 (US
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Application 12/940,967
2009/0011825 Al, pub. Jan. 8, 2009)). In contrast, because Rothschild's
bonus event, i.e., the goose, travels sequentially between machines,
Rothschild's bonus game is triggered sequentially on each machine and,
thus, the bonus game does not constitute a "shared game," as called for by
claim 52. Id. at 35.
We appreciate Appellants' position that the Specification describes a
"shared game" as "' [ w ]agering game machines ... [that] cooperatively
function together in a coordinated manner."' Appeal Br. 34 ( citing Spec.,
para. 20) (emphasis added). However, we do not agree with Appellants that
just because Rothschild's visual bonus indicator 28, i.e., the goose, travels
sequentially between displays 58, 60, 62 of machine bank 48, this does not
mean that a "shared game" is not being played on these machines. As
discussed supra, even though visual bonus indicator 28 is displayed
sequentially on each machine, because visual bonus indicator 28 is
controlled across a plurality of machines 10 this means that the Duck Duck
Goose group (bonus) game is played on all machines. We further agree with
the Examiner that the phrase "cooperatively function together in a
coordinated manner is broader [ and] includes sequential operations ... so
long as they are coordinated." Ans. 8. The Examiner is correct in that
although Rothschild's goose is displayed sequentially on multiple gaming
machines, nonetheless, all the machines in Rothschild are "engaged in a
shared bonus event," that is, all of the machines of machine bank 48
cooperate in a coordinated manner such that the goose travels among
displays 58, 60, 62. See id.; see also Rothschild, Fig. 3. Moreover, such an
interpretation is consistent with the description in Bennet of a "shared game"
where "one gaming machine ... is at least partly dependent on at least one
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Application 12/940,967
other gaming machine." Bennet, para. 40 ( emphasis added). Similarly, in
Lima, as players play against each other in a "community game" (Lima,
Abstract), the gaming machines "cooperate in a coordinated manner," as per
Appellants' Specification or are "partly dependent" on each other, as per
Bennet.
Appellants further argue that the Examiner's reasoning for switching
from a user-selected volume level to a common level, as taught by Tyndall,
when Rothschild's gaming machines play a shared bonus game, lacks
rational underpinnings. Appeal Br. 35-36. Appellants contend that "there is
no benefit" for providing a common volume level on all of Rothschild's
machines "because each of the machines executes the Duck Duck Goose
bonus feature at different times" and, thus, "switching the volume level of
all the machines cannot provoke anticipation regarding only one of the
machines." Reply Br. 8. According to Appellants, "[t]he most effective
approach would be to set the volume of the participating game machine
higher than the other game machines, because the singular higher volume
can provide directional cues to the whereabouts of the goose indicator."
Appeal Br. 3 6.
We are not persuaded by Appellants' arguments for the following
reasons. First, we note that Appellants' argument is premised on the faulty
proposition that Rothschild's gaming machines do not all participate in the
Duck Duck Goose group (bonus) game. However, for the reasons discussed
supra, even though visual bonus indicator 28 is displayed sequentially on
each machine, because visual bonus indicator 28 is controlled across a
plurality of machines 10 means that the Duck Duck Goose group (bonus)
game is played on all machines.
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Secondly, we note that Rothschild discloses changing the "audio
performance of gaming machines ... when a visual bonus indicator is
shown" and that the sequential display of visual indicator 28 "provide[ s] an
incentive for players to play gaming machines that the visual bonus indicator
28 appears to be heading toward." Rothschild, paras. 27, 29 (emphasis
omitted). Hence, we agree with the Examiner that "Rothschild allows a
player to anticipate when the bonus 'appears to be headed towards them' ...
such that one of [ordinary] skill in the art would appreciate that this is a
result of audio and visual cues." Ans. 9 (emphasis added). We, thus, agree
with the Examiner that the skilled artisan would modify the volume setting
of Rothschild's machines to a common value, as taught by Tyndall, "to draw
more attention to the bonus game event as players are able to hear an[ d]
anticipate the arrival of the bonus event to their game machine as it is
heading toward them." Final Act. 7. Hence, as Rothschild's bonus game is
triggered on all machines visual bonus indicator 28 appears sequentially and
audio performance is changed and, thus, modifying the volume setting of
Rothschild's machines to a common value, as taught by Tyndall, to provide
an incentive to users to play those machines where the bonus is heading,
does not lack rational underpinnings.
In conclusion, for the foregoing reasons, we sustain the rejection of
claim 52 under 35 U.S.C. § 103(a) as unpatentable over Rothschild and
Tyndall. Claims 7, 11, and 45--47 fall with claim 52.
As for the rejection of dependent claims 8-10, 12-15, 39--44, 48-51,
and 53-57, Appellants do not set forth any other substantive arguments. See
Appeal Br. 32-36. Accordingly, for the same reasons discussed supra, we
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likewise sustain the rejection of dependent claims 8-10, 12-15, 39-44, 48-
51, and 53-57 over the combined teachings of Rothschild and Tyndall.
SUMMARY
The Examiner's decision to reject claims 7-15 and 39-57 under
35 U.S.C. § 101 as directed to ineligible subject matter is reversed.
The Examiner's decision to reject claims 7-15 and 39-57 under
35 U.S.C. § 103(a) as unpatentable over Rothschild and Tyndall is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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