Ex Parte Slomiany et al

Patent Trial and Appeal Board

Oct 10, 2017

13468015 (P.T.A.B. Oct. 10, 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.
13/468,015 05/09/2012 Scott D. Slomiany 3083332US-US01 9721
72742 7590
Barclay Damon, LLP
Barclay Damon Tower
125 East Jefferson Street
Syracuse, NY 13202
EXAMINER
MCCLELLAN, JAMES S
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
10/12/2017 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):
IPDocket@barclaydamon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT D. SLOMIANY, LAWRENCE E. DEMAR,
DUNCAN F. BROWN, and STEVEN JAY KATZ
Appeal 2016-002724
Application 13/468,015
Technology Center 3700
Before LYNNE H. BROWNE, JILL D. HILL, and GORDON D. KINDER,
Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Scott D. Slomiany et al. (Appellants) appeal under 35 U.S.C. § 134
from the rejection of claims 1, 3, 6, 8—12, and 14—22.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
1 The Office Action Summary (Form PTOL-326) indicates that claim 23 is
rejected. Final Act. 1. However, none of the rejections address claim 23.
See generally id. Furthermore, claim 23 is not commensurate in scope with
any other pending claim. Accordingly, we understand the inclusion of claim
23 with the rejected claims on the Office Action Summary to be a
typographical error.
Appeal 2016-002724
Application 13/468,015
CLAIMED SUBJECT MATTER
The claims are directed to a system and method for an interactive
multiple participant wagering game. Spec. 1. Claims 1 and 21 are
independent. Claim 1, reproduced below with emphasis added, is illustrative
of the claimed subject matter:
1. A system for operating a plurality of electronically linked
gaming machines comprising:
a base game playable on each said linked gaming machine;
a bonus game playable on each said linked gaming
machine;
a wager input mechanism;
a controller for operatively engaging said linked gaming
machines to interactively play said bonus game with at least two
participants;
a player interface mechanism providing input from each
player participating in said interactive play, said input occurring
during play of said bonus game and affecting said interactive
play of said bonus game for all said participating players to a
bonus game conclusion; and
calculating a payout, if any, that can differ for each said
participating player based upon said interactive play of said
bonus game.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Tracy
McClintic
Rozkin
US 2002/0151342 A1 Oct. 17, 2002
US 2003/0114219 A1 June 19, 2003
US 2006/0073882 A1 Apr. 6, 2006
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Appeal 2016-002724
Application 13/468,015
REJECTIONS
I. Claims 1,3,6, 8—12, 14, 17—19, 21, and 22 stand rejected under
35 U.S.C. § 102(b) as anticipated by McClintic.
II. Claims 15 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over McClintic and Rozkin.
III. Claim 16 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over McClintic and Tracy.
DISCUSSION
Rejection I
Appellants argue claims 1,3,6, 8—12, 14, 17—19, 21, and 22 together.
See Appeal Br. 9-12. We select independent claim 1 as the illustrative
claim, and claims 3, 6, 8—12, 14, 17—19, 21, and 22 stand or fall with claim
1. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that McClintic discloses each and every limitation
of claim 1. See Final Act. 2—3. In particular, the Examiner finds that
McClintic discloses “a player interface mechanism providing input from
each player participating in said interactive play (e.g., paragraph 57), said
input affecting said interactive play of said bonus game for all said
participating players to a bonus game conclusion.” Id.
Claim 1 requires “a player interface mechanism providing input from
each player participating in said interactive play, said input occurring during
play of said bonus game and affecting said interactive play of said bonus
game for all said participating players to a bonus game conclusion.” Appeal
Br. (Claims App.). Appellants contend that McClintic fails to disclose this
limitation. See id. at 9. In support of this contention, Appellants argue that
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Application 13/468,015
“McClintic fails to disclose any situation in which the user can then
contribute to the outcome of the [play of the bonus game] once it starts.” Id.
at 10.
Responding to this argument, the Examiner finds that McClintic’s
“Bonus Game 500 is described in detail in Fig. 6.” Ans. 2. The Examiner
further explains that “[i]t is the Examiner’s position that all of the process
steps within Fig. 6 (i.e., steps 502-526) occur ‘during’ play of the bonus
game.” Id. at 3. In the claim chart that follows this explanation, the
Examiner equates McClintic’s step 506 with the limitation at issue. See id.
In other words, the Examiner finds that the player modifications taking place
in step 506 occur during play of the bonus game and affect the play of the
game until its conclusion.
Appellants contest this finding, arguing that “[t]he presently claimed
invention requires ‘linked gaming machines to interactively play said bonus
game with at least two participants.’” Appeal Br. 10 (emphasis omitted); see
also Reply Br. 2. Appellants contend that, in order for play to be interactive,
the players must be able to “provide input during play of the entire bonus
game.” Appeal Br. 10. However, claim 1 is not so limited. Rather, claim 1
merely requires “a player interface mechanism providing input from each
player participating in said interactive play.” Appeal Br. A-l. Claim 1 does
not even require that each player participate in interactive play and does not
preclude interaction only at the beginning of play. Thus, Appellants do not
apprise us of error.
McClintic’s Figure 6, reproduced below, illustrates McClintic’s bonus
game so long as the interaction affects play until the conclusion of the game.
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Application 13/468,015
500
526
Fig. 6
“Figure 6 “is a flowchart diagramming play of the bonus game of the
present invention.” McClintic 126. Thus, McClintic describes Figure 6 as
illustrative of play of its bonus game which starts at block 502. As the
player modifications that occur in block 506 (identified by the Examiner as
corresponding to the claimed player input), occur after the start of play at
block 502 and affect the play of the game until the conclusion of the game
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Application 13/468,015
(see McClintic 1 56), the Examiner’s finding is supported by substantial
evidence.
In addition, Appellants contend that “[t]he Examiner is wrong to
conclude that a bonus game has started when a user selects or modifies a
player.” Appeal Br. 11; see also Reply Br. 2 (arguing that McClintic fails to
disclose a bonus game that begins when the players can interact with each
other). In support of this contention, Appellants argue that “[i]f two players
are not interacting with each other, the bonus game has not begun.
Similarly, if players are not capable of affecting the interactive play of the
bonus game, they are not playing what the claims define as a ‘bonus game.’”
Appeal Br. 11.
Appellants’ argument is not commensurate in scope with claim 1. See
Appeal Br. A-l. Claim 1 does not define when play of the game starts,
require players to be interacting with each other,2 or define the bonus game
in the manner argued. See id. Although the Specification describes a bonus
game in accordance with Appellants’ arguments, we do not read limitations
from the Specification into the claim. In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993). Rather, the PTO applies to verbiage of the proposed claims
the broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in Appellants’ Specification.
In re Morris, 111 F.3d 1048, 1054—55 (Fed. Cir. 1997). Reading a claim in
2 We note that claim 1 merely requires interactive play, not interactive play
between players. Play that is interactive with the game server meets the
claim limitation at issue.
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Application 13/468,015
light of the specification, to thereby interpret limitations explicitly recited in
the claim, is a quite different thing from reading limitations of the
specification into a claim, to thereby narrow the scope of the claim by
implicitly adding disclosed limitations which have no express basis in the
claim. In re Prater, 415 F.2d 1393, 140A-05 (CCPA 1969).
Appellants conclude by contending that “the players of the bonus
game cannot interactively play the bonus game and provide input to a bonus
game conclusion.” Appeal Br. 12 (emphasis omitted); see also Reply Br. 2
(arguing that McClintic fails to disclose a bonus game that ends when the
players can no longer interact with each other).
Again, Appellants’ contention is not commensurate in scope with the
claim. Claim 1 merely requires input that affects the interactive play
“to a bonus game conclusion.” Appeal Br. A-l. Claim 1 does not require
continuous input or even continuous interaction. See id. Moreover, as
discussed supra, claim 1 does not require interaction between players. We
are cognizant of the differences between the system described in Appellants’
Specification and the system disclosed by McClintic; however, those
differences are not reflected in the limitations of claim 1. Accordingly,
Appellants do not apprise us of error.
In the Reply Brief, Appellants raise several new arguments that are
not in response to the Answer. See Reply Br. 3—5. In accordance with
37 C.F.R. § 41.41 (b)(2), lacking a showing of good cause, we do not
consider the arguments raised in the Reply Brief which are not responsive to
an argument raised in the Answer.
Accordingly, we sustain the Examiner’s decision rejecting claim 1,
and claims 3, 6, 8—12, 14, 17—19, 21, and 22, which fall therewith.
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Application 13/468,015
Rejection II—III
Appellants’ arguments do not address Rejections II and III. See
Appeal Br. 9—12. Accordingly, we sustain the Examiner’s decisions
rejecting claims 15 and 20 (subject to Rejection II) and claim 16 (subject to
Rejection III).
DECISION
The Examiner’s rejections of claims 1, 3, 6, 8—12, and 14—22 are
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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