Ex Parte Schultz et al

Patent Trial and Appeal Board

Mar 24, 2013

11265793 (P.T.A.B. Mar. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID B. SCHULTZ, TERENCE G. DALY,
KIMBERLY J. COHN, WILLIAM E. ROMMERDAHL,
JOHN LASALVIA, JOHN E. GAROFALO, JR.,
NATHANIAL A. HAMMOND, and JACK A. MARTIN
____________________

Appeal 2010-011155
Application 11/265,793
Technology Center 3700
____________________

Before: LINDA E. HORNER, BRETT C. MARTIN, and
BART A. GERSTENBLITH, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
David B. Schultz, et al. (Appellants) appeal1 under 35 U.S.C. § 134
from the Examiner’s rejection of claims 1-19 and 21-48. Claim 20 was
cancelled and Appellants do not appeal the rejection of claim 49.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

THE INVENTION
Appellants’ claims are directed generally to a system and method for
displaying an exploding icon. Claim 1,3 reproduced below, is illustrative of
the claimed subject matter:

1 Appellants did not provide page numbering in their brief so we have
considered the page labeled “APPEAL BRIEF” submitted on September
23, 2009 to be page 1 of the brief and any page numbering references to the
Appeal Brief herein follow accordingly.
2 Although Claim 49 is rejected in the Examiner’s Office Action, from
which this appeal is taken, Appellants explicitly state in the Brief that
“[c]laim 49 is not being appealed.” App. Br. 2. Therefore, the appeal is
withdrawn as to claim 49, and we have no jurisdiction over the Examiner’s
rejection of that claim. Consistent with the holding of BPAI precedential
opinion Ex Parte Ghuman, 88 USPQ2d at 1480 (BPAI 2008) (non-appealed
claims must be canceled), the Examiner should cancel non-appealed claim
49.
3 Appellants’ Claims Appendix submitted January 27, 2010 includes a
version of claim 1 that reflects an amendment to the fourth line to add the
word “game” after “primary,” but does not reflect an earlier amendment
submitted on December 23, 2008 that deletes the phrase “in response to
player input,” and later in the claim adds “determining the number of wild
icons produced in response to player input[.]” Both Appellants and the
Examiner focus considerable attention on the phrase “determining the
number of wild icons produced in response to player input,” so we assume
that the claim 1 shown in this Claims Appendix erroneously omits the earlier
amendment and that our reproduction of claim 1 herein accurately reflects
the record in this case.
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1. A method for playing a primary game on a gaming
machine, the method comprising:
receiving player input to activate a primary game;
activating the primary game;
presenting the activated game on a single screen of a
video display, the activated game comprising a primary game
displaying one or more game icons in various locations on a
main screen of the video display and upon the occurrence of a
triggering event, the primary game producing one or more wild
icons on the same main screen of the video display, determining
the number of wild icons produced in response to player input,
and moving the one or more wild icons about the main screen
of the video display over one or more of the game icons, and
randomly replacing one or more of the game icons with the one
or more wild icons;
determining whether the resulting combination of game
icons and wild icons form any winning combinations; and
awarding a single game payout for the primary game.

REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gilmore US 7,195,559 B2 Mar. 27, 2007

THE REJECTIONS ON APPEAL
Appellants seek review of the following rejections:
Claims 1-8, 10, 13-19, 21-27, 29-34, and 39-48 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Gilmore. Ans. 3.
Claims 9, 11, 12, 28, and 35-38 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Gilmore. Ans. 6.

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ANALYSIS
Anticipation by Gilmore
Claim 1
With respect to claim 1, the Examiner finds, in pertinent part, that
Gilmore teaches the recitation of “determining the number of wild icons
produced in response to player input” by way of “allowing players to select
[a] number of pay lines to wager on and input appropriate monetary input to
activate said game, the selected higher number of pay lines will allow[] for
higher probability of wild icons to be produced, hence, the wild icons are in
direct correlation with player input.” Ans. 4. Appellants argue that “such a
requirement might allow for a higher frequency of games played as the
number of played lines increases,” but that “the number of paylines played
in Gilmore has no effect on ‘determining the number of wild icons produced
in response to the player input’” because “[t]he game in Gilmore only
produces one wild icon, no matter which of the three ducks 62a, 62b or 62c
is selected.” App. Br. 7.
As the Examiner states, however, the player input (i.e., selecting the
number of paylines) “will allow for higher probability of achieving the
symbol combination to activate the bonus feature of the game” and the
“bonus features of the game include[] wild icons to be produced.” Ans. 7.
While Gilmore only teaches that one wild icon is produced in the bonus
feature, claim 1 only requires “producing one or more wild icons.”
Accordingly, contrary to Appellants’ argument that “Gilmore has no effect
on ‘determining the number of wild icons produced in response to the player
input” (App. Br. 7), Gilmore does teach player input that determines whether
or not one wild icon is to be produced. The number of paylines selected has
a direct effect on whether one (bonus feature activated) or zero (bonus
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feature not activated) wild icons are produced and therefore the player input
pointed out by the Examiner does play a role in “determining the number of
wild icons,” either one or zero, that are produced in a sufficient manner to
meet the claim language at issue. Accordingly we affirm the Examiner’s
rejection of claim 1.
Claims 2-8, 10, 13, 14, 41, and 42
Appellants make no separate argument with respect to claims 2-8, 10,
13, 14, 41, and 42, which depend from claim 1 and rely on the arguments
made with respect to claim 1 as to the rejection of these claims. App. Br. 7.4
Accordingly, for the same reasons stated above with respect to claim 1, we
affirm the Examiner’s rejection of claims 2-8, 10, 14, 41, and 42.
Claims 23-28
With respect to claim 23, Appellants argue that Gilmore does not
disclose the limitation that the “primary game appears to animate at least one
of the displayed game icons” because the “ducks 62a, 62b and 62c are
separate from the displayed game icons appearing on the reels.” App. Br. 8.
The Examiner responds by saying that Gilmore teaches this by way of
Figures 6 and 7 showing the animation of “ducks flying around the screen
and landing on a column on the reel and converting the column to [a] wild
symbol.” Ans. 10. Claim 23 specifically states that “the primary game
comprises one or more game icons” and that “the primary game appears to
animate at least one of the displayed game icons.” As such, the “ducks

4 Appellants specifically state that “by virtue of their dependence from claim
1, dependent claims 2-14 and 41-42 are not anticipated by Gilmore.” App.
Br. 7. Claims 9, 11, and 12, however, were not rejected by the Examiner as
anticipated by Gilmore, but were rejected as obvious over Gilmore. See
Ans. 6. Appellants make separate arguments with respect to the rejection of
dependent claims 9, 11, and 12, which we address infra.
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flying around the screen” referred to by the Examiner cannot meet the
animating recited in claim 23 because, as Appellants point out, they are
“separate from the displayed game icons appearing on the reels.” While
Gilmore does teach animation of the wild icon, with respect to claim 23, this
wild icon is not the same as the claimed “game icons” that are to be
animated. Accordingly, we do not sustain the Examiner’s rejection of claim
23, or that of claims 24-28, which depend therefrom.
Claims 15-19, 22, 43, and 44
Specifically with regard to claim 15, Appellants argue only that the
Examiner has agreed with Appellants that Gilmore does not show any
animated interaction between the icons. App. Br. 7. The Examiner,
however, appears to retract this statement by changing the rejection of claim
15 to state that Gilmore does present “an animated interaction between the
first game icon and a second game icon.” 5 Ans. 5; see also Ans. 8. In a
similar manner as discussed above with regard to claim 23, claim 15 requires
“producing one or more additional icons from the second game icon.” The
Examiner alleges that “the duck [] flying to a random location and
interacting with the symbols on the random location” meets this limitation.
Ans. 5. In order for the flying duck to meet this limitation, it would have to

5 As alleged by Appellants, the Examiner states in the Final Office Action
dated May 1, 2009 that “the examiner respectfully agrees with the applicant”
that “the animation disclosed by Gilmore does not show any animated
interaction between the icons” (p. 6) and also includes the basis for rejecting
claim 15 with claims 1, 17, 23, 29, and 49 (p. 2), which does not
specifically address the animated interaction of claim 15. In the Answer,
however, the Examiner includes a specific rejection of claims 15 and 17
addressing the claimed animated interaction (Ans. 5) that does not appear in
the Final Office Action and states that he now “respectfully disagrees” with
Appellants’ “argument that Gilmore does not disclose the primary game
animating at least one of the displayed icons” (Ans. 8).
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be produced “from the second game icon” as recited in claim 15, which it is
not because it is a separate icon that moves onto the screen and replaces the
game icons in a particular column. See, e.g., Gilmore Figures 6 and 7.
Accordingly, to be consistent with our reversal of claim 23, we also do not
sustain the rejection of claim 15 or its dependent claims 16-19, 21, 22, 43,
and 44.
Claim 29
With respect to claim 29, Appellants argue, “[s]imilarly to
independent claim 1, independent claim 29 recites that ‘player input affects
the number of wild icons produced.’” App. Br. 8. Appellants go on to state
that “Gilmore does not disclose determining the number of wild icons
produced in response to player input, and Gilmore also does not disclose that
the number of wild icons is affected by player input.” Id. As stated supra,
we have already determined that the language of claim 1 is sufficiently
taught by Gilmore as set forth by the Examiner and so, likewise, we also
agree with the Examiner that Gilmore teaches the “affecting” limitation at
issue here in claim 29 for the same reasons as stated for claim 1.
Accordingly, we affirm the rejection of claim 29.
Claims 30-34, 39, 40, 47, and 48
Appellants make no separate arguments with respect to claims 30-34,
39, 40, 47, and 48, which depend from claim 1 and rely on the arguments
made with respect to claim 1. 6 App. Br. 7. Accordingly, for the same

6 Similar to the arguments with respect to claim 1, Appellants specifically
state that “by virtue of their dependence from claim 29, dependent claims
30-40 and 47-48 are also not anticipated by Gilmore.” App. Br. 8. Claims
35-38, however, were not rejected by the Examiner as anticipated by
Gilmore, but were rejected as obvious over Gilmore. See Ans. 6.
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reasons stated above with respect to claim 29, we affirm the Examiner’s
rejection of claims 30-34, 39, 40, 47, and 48.
Rejection of Claims 9, 11, 12, and 35-38
The Examiner rejects claims 9, 11, 12, 28, and 35-38 as obvious over
Gilmore. Ans. 6. In the Response to Arguments section rebutting
Appellants’ arguments with respect to the obviousness rejection, the
Examiner interprets the animation claimed in the dependent claims subject
to the obviousness rejection as being directed to printed matter and points
out that “when the claimed printed matter is not functionally related to the
substrate it will not distinguish the invention from the prior art in terms of
patentability.” Ans. 10 (citing In re Gulack, 703 F.2d 1381 (Fed. Cir.
1983)). 7 Appellants did not file a Reply Brief contesting the Examiner’s
interpretation of these dependent claims and as such, the printed matter
interpretation on which this rejection is based stands unrebutted.
Accordingly, we affirm the Examiner’s rejection of claims 9, 11, 12, and 35-
38 as unpatentable over Gilmore.

DECISION
For the above reasons, we REVERSE the Examiner’s decision to
reject claims 15-19 and 21-28 and we AFFIRM the Examiner’s decision to
reject claims 1-14 and 29-48.

Appellants make separate arguments with respect to the obviousness
rejection of dependent claims 35-38, which we address infra.
7 The Examiner’s printed matter statement would also ostensibly apply to
claim 28 because this claim is subject to the same obviousness rejection the
Examiner is responding to when the printed matter issue arises in the
Answer, but we do not address the specific printed matter rejection of claim
28 because we already reverse the rejection of claim 23, from which claim
28 depends.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

JRG