Ex Parte Rothschild

Patent Trial and Appeal Board

Mar 15, 2013

10850993 (P.T.A.B. Mar. 15, 2013)

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.
10/850,993 05/21/2004 Wayne H. Rothschild 247079-000210USPT 2109
70243 7590 03/15/2013
NIXON PEABODY LLP
300 S. Riverside Plaza
16th Floor
CHICAGO, IL 60606
EXAMINER
LIM, SENG HENG
ART UNIT PAPER NUMBER
3717
MAIL DATE DELIVERY MODE
03/15/2013 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 WAYNE H. ROTHSCHILD
____________

Appeal 2011-006730
Application 10/850,993
Technology Center 3700
____________

Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and
ANNETTE R. REIMERS, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Wayne H. Rothschild (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1-17, 19-27, 29-52, 54-63,
and 96-105, which are all of the pending claims. An oral hearing was held
on March 7, 2013. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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THE INVENTION
Appellant’s claimed invention relates to “an adaptable electro-
mechanical gaming machine in a gaming network.” Spec., para. [002].
Claims 1, 11, 41, 62, and 96 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A gaming network comprising:
a coupled apparatus having a controller; and
a plurality of electro-mechanical gaming machines
coupled to and remote from the coupled apparatus, each of the
plurality of electro-mechanical gaming machines comprising:
at least one electro-mechanical device that displays
a plurality of randomly selected generic symbols
associated with an outcome of a wagering game, and
a variable display for displaying a thematic video
image spatially separated from and at least partly
superimposed upon the electro-mechanical device such
that the thematic video image is disposed in front of the
electro-mechanical device between the electro-
mechanical device and a player of the gaming machine,
the thematic video image adapting a visual appearance of
the randomly selected generic symbols to a theme of the
wagering game, the thematic video image interacting
with a selected one of the randomly selected generic
symbols to create a first thematic symbol constituted
from the thematic video image and the selected one
generic symbol, the thematic video image having a shape
distinct from the shapes of the generic symbols, the first
thematic symbol being related to the theme of the
wagering game,
wherein the electro-mechanical gaming machine is
configured by the controller to change the wagering game
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played via the electro-mechanical gaming machine to a
different wagering game, the electro-mechanical gaming
machine being configured by the controller to modify the
thematic video image such that the modified thematic video
image adapts the visual appearance of the randomly selected
generic symbols to a different theme of the different wagering
game, wherein the modified thematic video image interacts
with the selected one generic symbol to create a second
thematic symbol constituted from the modified thematic video
image and the selected one generic symbol, the modified
thematic video image having a shape distinct from the shapes of
the generic symbols, the second thematic symbol being related
to the different theme of the different wagering game.
THE EVIDENCE
The Examiner relies upon the following evidence:
Acres1 US 5,655,961 Aug. 12, 1997
Ozaki US 2001/0031658 A1 Oct. 18, 2001
Oberberger US 2002/0077178 A1 Jun. 20, 2002
Walker US 2002/0198044 A1 Dec. 26, 2002
Morrow US 2003/0064771 A1 Apr. 3, 2003
Wells US 2003/0064784 A1 Apr. 3, 2003
Loose US 2003/0087690 A1 May 8, 2003
Motegi US 2003/0119577 A1 Jun. 26, 2003

1 The Examiner relies on Acres as evidence that “it is notoriously well
known in the art that the Rom [sic, ROM] of a gaming device can be easily
replaced or modified.” Ans. 18 (citing Acres, col. 20, ll. 47-56).
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THE REJECTIONS
Appellant seeks review of the following rejections:
1. Claims 1-17, 19, 22-27, 29, 30, 32-34, 37-50, 54, 55, 57-63, 96, and
101-105 under 35 U.S.C. § 103(a) as being unpatentable over Ozaki,
Morrow, and Loose2;
2. Claims 20, 21, 51, and 52 under 35 U.S.C. § 103(a) as being
unpatentable over Ozaki, Morrow, Loose, and Oberberger;
3. Claims 31 and 56 under 35 U.S.C. § 103(a) as being unpatentable
over Ozaki, Morrow, Loose, and Walker;
4. Claims 35 and 36 under 35 U.S.C. § 103(a) as being unpatentable
over Ozaki, Morrow, Loose, and Motegi; and
5. Claims 97-100 under 35 U.S.C. § 103(a) as being unpatentable over
Ozaki, Morrow, Loose, and Wells.
ANALYSIS
Rejection 1
Appellant argues the claims subject to the first ground of rejection as a
group. App. Br. 18-27. We select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011). Appellant provides additional arguments for the
patentability of dependent claims 102 and 105 (App. Br. 28-29), which we
address infra.

2 While the Examiner’s statement of this ground of rejection omits claim 105
(Ans. 4), the detailed explanation of the ground of rejection includes
treatment of claim 105 (Ans. 8). Appellant understood claim 105 to be
included in this ground of rejection. App. Br. 29.
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Claim 1
Appellant argues that the Examiner erred in finding that Ozaki
discloses a gaming network comprising an electro-mechanical wagering
game: (1) configured by a controller to change the wagering game played to
a different wagering game; and (2) configured such that a modified thematic
video image adapts the visual appearance of a selected symbol to a different
theme of a different wagering game. App. Br. 21-24; Reply Br. 1-2. As to
the first claim feature, Appellant contends that “in its proper context,
Ozaki’s reference to ‘switching from game A to game B’ or to ‘a variety of
games’ refers to the disclosure of overlapping patterns, which are used to
indicate a condition, mode, or state of a game.” Reply Br. 4. As to the
second claim feature, Appellant contends that “[w]hile Ozaki may teach that
the overlapping pattern 32 can be the same or different from the underlying
pattern, Ozaki is silent as to different themes.” Reply Br. 6.
The Examiner pointed to paragraph [0092] of Ozaki as disclosing the
electro-mechanical gaming machine being configured by a controller to
change the wagering game to a different wagering game. Ans. 4. The
Examiner pointed to paragraphs [0068] and [0096] of Ozaki as disclosing
the electro-mechanical gaming machine being configured by a controller to
modify the thematic video image to adapt the visual appearance of the
randomly selected symbols to a different theme of the different wagering
game. Ans. 4-5, 15-17.
Ozaki discloses a pattern display device for use with gaming machines
that includes a front side display unit and a back side display unit, where the
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front side display unit can display patterns overlapping with the patterns of
the back side display unit to provide “a high game selection capability” to
the player. Ozaki, para. [0010]. Ozaki discloses a first embodiment of a slot
machine having a middle section 14b having a square opening 24, in which a
front panel 26 is fitted, transparent EL panels 28a, 28b, and 28c are stacked
behind the front panel 26, and an intermediate panel 27 is stacked on the
back of the transparent EL panels 28a, 28b, and 28c and has small openings
27a, 27b, and 27c corresponding to the transparent EL panels 28a, 28b, and
28c. Id. at paras. [0040]-[0042], [0045]. Ozaki discloses that reels 30a, 30b,
and 30c, having back patterns 31, are provided at the inside of small
openings 27a, 27b, and 27c. Id. at paras. [0046], [0048]. Transparent EL
panels 28a, 28b, and 28c can display overlapping patterns 32 that overlap
with the back patterns 31. Id. at para. [0049]. Ozaki discloses a control unit
50 having an EL display control means 50g that controls the displays on the
transparent EL panels 28a, 28b, and 28c. Id. at para. [0068]. Ozaki
discloses that the overlapping patterns 32 can have the same kinds of
patterns as, or another pattern different from that of, the corresponding back
pattern 31. Id. at para. [0049]; fig. 3. Ozaki discloses that this first
embodiment can be constructed “to let the player recognize, as the display of
the game target, a state of game (experiencing a variety of games) such as
switching from a game A to a game B based on the combination of the back
patterns 31 and the overlapping patterns 32.” Id. at para. [0092]. Ozaki
discloses that “[t]his can add more depth to the game by providing a game
selection capability to the player.” Id. Ozaki further discloses that the
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shapes and display colors of the overlapping patterns 32 can be used to
indicate the type of game (such as the switching from a game A to a game
B). Id. at para. [0096].
We understand Ozaki’s disclosure of providing a game selection
capability to the player by switching from a game A to a game B based on
the combination of the back patterns 31 and the overlapping patterns 32 to
mean that the system can be configured to allow the player to choose
between game A (e.g., a game in which only the back patterns 31 on the
reels are used to determine via a winning table A whether the player has won
the game) and game B (e.g., a game in which the combination of the back
patterns 31 and the overlapping patterns 32 are used to determine via a
winning table B whether the player has won the game). See Ozaki, paras.
[0083]-[0084] (discussing winning table A and winning table B). Thus, we
agree with the Examiner’s reading of Ozaki that game A and game B refer to
different wagering games. We also agree with the Examiner (Ans. 15-16)
that the reference to “state of game” in paragraph [0092] when read in
context of the first embodiment disclosed in Ozaki, refers to switching
between a first game and a second game, and does not refer to the “playing
state” and “waiting state” discussed in the third embodiment of Ozaki.
Further, we understand Ozaki’s disclosure that the overlapping pattern
32 can be different from the underlying back pattern 31 and the disclosure of
using different shapes and display colors of the overlapping patterns to
distinguish between different games to satisfy the claim limitation of the
game being configured to modify the thematic video image such that the
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modified thematic video image adapts the visual appearance of the randomly
selected generic symbols to a different theme of the different wagering
game. As such, we agree with the Examiner’s findings as to the scope and
content of Ozaki.
The Examiner found that Ozaki does not disclose a thematic video
image interacting with a randomly selected generic symbol to create a first
thematic symbol, where the thematic video image has a shape distinct from
the shapes of the generic symbols and the first thematic symbol relates to the
theme of a first wagering game, and a modified thematic video image
interacting with a randomly selected generic symbol to create a second
thematic symbol, where the thematic video image has a shape distinct from
the shapes of the generic symbols and the second thematic symbol relates to
a different theme of a different wagering game. Ans. 5-6. The Examiner
relied on Loose to disclose these features. Ans. 6 (citing Loose, paras.
[0012], [0014], [0022]; Figs. 5, 8a, 8b, 8c, 9c, 10b, 10c); Ans. 17 (“[T]he
base game and the bonus game are different wagering games combined
together as part of one cohesive game . . . .”).
Appellant argues that the Examiner erred in finding that Loose
discloses “a second thematic symbol being related to a different theme of a
different wagering game such as a bonus game.” App. Br. 24 (arguing “the
base game and the bonus game [disclosed] in Loose are part of the same
wagering game”). See also Reply Br. 7.
Loose discloses a spinning reel slot machine 10 comprising
mechanical rotatable reels 12a, 12b, and 12c, and a video display providing
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a video image 18 occupying the display area 16 and superimposed on the
reels 12a, 12b, and 12c. Loose, para. [0012]. Loose discloses that “[t]he
video image 18 may be interactive with the reels 12a, 12b, and 12c, may be
static or dynamic, and may include such graphics as payout values, a pay
table, pay lines, bonus game features, special effects, thematic scenery, and
instructional information.” Id. Loose discloses that “[i]f the video image 18
is a virtual image, as in FIG. 2b, the virtual image is preferably generated by
a projection arrangement” that “project[s] the virtual image in front of the
reels 12a, 12b, and 12c between the reels and a player.” Id. at para. [0014].
Loose discloses that “the video image 18 may be used to modify one or
more symbols printed on one or more of the stopped mechanical reels 12a,
12b, and 12c. For example, in response to a predetermined random or non-
random event, the video image 18 may transform a reel symbol into a
different symbol, such as a symbol needed to complete a winning
combination.” Id. at para. [0023]. Loose also discloses that “the slot
machine 10 is operable to play a basic slot game with the three mechanical
spinning reels 12a, 12b, 12c and a bonus game triggered by a start-bonus
outcome in the basic game.” Id. at para. [0016]. Loose discloses that “[t]he
bonus game may, for example, include free spins of a new set of video reels
included in the video image 18” and that “[w]inning combinations on the
video reels may be defined by the same pay table as used for the mechanical
reels or a different pay table altogether.” Id. at para. [0022].
We understand from the disclosure in Loose, that Loose’s bonus game
is a different wagering game from the base game. For example, Loose
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discloses that the bonus game can use a new set of reels and use a different
pay table than the base game. In our view, games played with a different set
of reels and different pay tables are different wagering games. Appellant has
not pointed us to any description in the Specification that would necessitate
a different interpretation of “different wagering game.” As such, we agree
with the Examiner’s finding as to the scope and content of Loose.
Appellant also argues that the Examiner erred in modifying the stand-
alone gaming machine of Ozaki to make it a networked gaming machine, as
disclosed in Morrow, because such a modification would change the
principle of Ozaki’s operation, which uses fixed memory graphics. App. Br.
25-26. Appellant has not adequately explained why Ozaki’s use of the ROM
to form a fixed memory is a principle of its operation such that making the
modification proposed by the Examiner would impermissibly change the
principle of operation of Ozaki’s gaming machine. The principle of
operation of Ozaki’s gaming machine is to provide a display device and a
game machine capable of performing overlapping displays. The difference
between using ROM to store a fixed memory of graphics to be displayed by
the gaming machine versus downloading the graphics to be displayed on the
gaming machine from a remote location (e.g., server) does not affect the
overall principle of operation of Ozaki’s gaming machine. See In re
Umbarger, 407 F.2d 425, 430-31 (CCPA 1969) (finding In re Ratti, 270
F.2d 810, 813 (CCPA 1959) inapplicable where the modified apparatus will
operate “on the same principles as before.”).
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Appellant has also not argued or shown that the proposed
modification would have been beyond the level of skill of one of ordinary
skill in the art. Nor has Appellant established that Morrow’s method of
providing the graphics data from a CD-ROM, an intranet, the Internet, any
attached network, to a writable local storage medium in the gaming machine
(Morrow, para. [0012]) could not be used with Ozaki’s gaming machine.
Morrow teaches downloading the updated data from a source apart from the
local storage medium of the gaming machine as an alternative to storing
multiple games on the local storage medium of the gaming machine. Id.
Based on the teaching in Morrow of how to implement an updatable gaming
machine within a networked gaming system, we find that it would have been
within the ability of one of ordinary skill in the art to modify Ozaki’s
gaming machine to use it within a gaming network comprising a coupled
apparatus (i.e., a central computer) and a plurality of gaming machines
coupled to and remote from the coupled apparatus.
Appellant further argues that Morrow teaches away from a modified
thematic video image adapting the visual appearance of a randomly selected
symbol to a different theme of a different wagering game because Morrow
requires the symbols on the mechanical reels to remain fixed. App. Br. 26.
This argument does not address the Examiner’s proposed modification of
Ozaki with the teachings of Morrow and Loose. As the Examiner made
clear in the Answer, the Examiner’s reliance on Morrow is to show that it
was known in the art to make a stand-alone computer into a network system,
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to provide an easier method of modifying the gaming device and wherein
artwork/theme can be downloaded to modify the gaming device. Ans. 18.
As such, Appellant’s arguments have not apprised us of error in the
Examiner’s rejection of claim 1. Accordingly, we affirm the rejection of
claims 1-17, 19, 22-27, 29, 30, 32-34, 37-50, 54, 55, 57-63, 96, 101, 103,
and 104 as being unpatentable over Ozaki, Morrow, and Loose.
Claims 102 and 105
Appellant argues that the Examiner improperly relies on Ozaki as
disclosing a reel including a blank space, wherein the thematic video image
includes a video reel symbol being superimposed upon the blank space, as
called for in dependent claims 102 and 105.3 App. Br. 28-29. The Examiner
corrected the statement of the rejection in the Answer to make clear that the
Examiner relies on Loose to teach these claim elements. Ans. 19. We agree
with the Examiner that Loose discloses a mechanical reel including a blank
space (12b, Fig. 8a) and a thematic video image of a reel symbol being
superimposed upon the blank space (12b, Figs. 8b, 8c). Loose, para. [0025].
Appellant does not contest this finding as to the scope and content of Loose
in the Reply Brief. As such, we affirm the rejection of claims 102 and 105
as being unpatentable over Ozaki, Morrow, and Loose.

3 Claim 102 depends from claim 3 and recites that “at least one of the reels
includes a blank space, the thematic video image including a video reel
symbol superimposed upon the blank space.” Claim 105 depends from
claim 1 and recites that “the selected one generic symbol is a blank symbol.”
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Rejections 2-4
Appellant argued in the Appeal Brief that the rejections of dependent
claims 20, 21, 31, 35, 36, 51, 52, 56, and 97-100 were deficient in that they
failed to cite Loose, which was relied on by the Examiner in the rejection of
independent claims 11, 41, and 96, from which the rejected claims depend.
App. Br. 27-28. The Examiner cured this defect in the Answer. Ans. 12-15.
In response, Appellant requested to maintain the appeal and presented the
same arguments as to the alleged deficiency in Loose that were addressed
supra in the analysis of claim 1. Reply Br. 10, 13-14 (arguing that the base
game and bonus game discussed in Loose are part of the same wagering
game). We find these arguments unpersuasive of error in Rejections 2-4 for
the same reasons provided supra in the analysis of claim 1. As such, we
affirm Rejections 2-4.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1-17, 19-
27, 29-52, 54-63, and 96-105.
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)(1)(iv).

AFFIRMED

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