Binh Nguyen

Patent Trials and Appeals Board

Feb 16, 2021

2020002924 (P.T.A.B. Feb. 16, 2021)

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.
12/797,616 06/10/2010 Binh T. Nguyen 902-P013 5186
68803 7590 02/16/2021
TI Law Group, PC
1055 E Brokaw Road
Suite 30-355
San Jose, CA 95131-2116
EXAMINER
MCCULLOCH JR, WILLIAM H
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
02/16/2021 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):
TILGDocket@yahoo.com
aspence@tipatents.com
dthomas@tipatents.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BINH T. NGUYEN

Appeal 2020-002924
Application 12/797,616
Technology Center 3700
____________

Before EDWARD A. BROWN, MICHAEL J. FITZPATRICK, and
BRANDON J. WARNER, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
non-final decision rejecting claims 1–28. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies Nguyen Gaming LLC as assignee and real party in
interest. Appeal Br. 2.
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STATEMENT OF THE CASE
The Specification
The “disclosure relates generally to a gaming device, gaming method
and gaming system, and more particularly, to . . . supporting second chance
gaming.” Spec. ¶1.
The Claims
Claims 1–28 are rejected. Non-Final Act. 1. No other claims are
pending. Id.; see also Appeal Br. (Claims App.) A-1–A-11. Claims 1, 8, 16,
and 24 are independent. Claims App. A-1–A-11. Claim 1 is illustrative and
reproduced below.
1. A gaming device, comprising:
at least one display configured to present a first game of
chance;
a bill acceptor configured to receive a wager to play the
first game of chance and establish a credit balance from which
the wager is deducted;
a game manager configured to initiate the first game of
chance after receipt of the wager;
a session manager configured to manage a user game play
session involving the first game of chance; and
a near-hit manager configured to:
determine whether at least one of a plurality of
symbols in the first game of chance is a predetermined
near-hit triggering symbol;
determine a location of the predetermined near-hit
triggering symbol if it is determined that at least one of the
plurality of symbols is a predetermined near-hit triggering
symbol;
determine whether a near-hit triggering event
occurred based on the location of the predetermined near-
hit triggering symbol;
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determine a near-hit award credit associated with
the near-hit triggering event if it is determined that a near-
hit triggering event occurred;
record each of the near-hit award credits obtained
during the user game play session;
record an accumulated near-hit award credit over a
plurality of user game play sessions, wherein the
accumulated near-hit award credit is used to play a second
chance game on the gaming device;
determine if there is sufficient accumulated near-hit
award credit;
(viii) [sic2] enabling a user to purchase additional
near-hit award credit if it is determined that there is
insufficient accumulated near-hit award credit;
determine if the user purchased additional near-hit
award credit;
increase the accumulated near-hit award credit if it
is determined that the user purchased additional near-hit
award credit; and
facilitate play of a second chance game on the
gaming device using the accumulated near-hit award
credit if there is sufficient accumulated near-hit award
credit,
wherein the near-hit triggering event occurs when
the predetermined near-hit triggering symbol is at least
two positions away from a payline.
Id. at A-1–A-2.

2 The inclusion of “(viii)” appears to be a typographical error as no other
Roman numerals are provided in the claim and neither the Examiner nor
Appellant addresses or even acknowledges “(viii).”
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The Examiner’s Rejections
The Examiner made the following rejections:
1. claims 1–28 under the judicial exception to 35 U.S.C. § 101
(Non-Final Act. 3);
2. claims 24, 26, and 28 under 35 U.S.C. § 102(b) (pre-AIA) as
anticipated by US 2007/0060254 A1, published March 15, 2007 (“Muir”)
(id. at 13); and
3. claims 1–23, 25, and 27 under 35 U.S.C. § 103(a) (pre-AIA) as
unpatentable over Muir and US 2006/0068893 A1, published March 30,
2006 (“Jaffe”) (id. at 16).
DISCUSSION
Rejection 1—Patent Eligibility
The Examiner determined that claims 1–28 are patent-ineligible under
the judicial exception to 35 U.S.C. § 101. Non-Final Act. 3.
Patent Eligibility Framework
Section 101 provides that “[w]hoever 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. However,
the Supreme Court has “long held that this provision contains an important
implicit exception: [l]aws of nature, natural phenomena, and abstract ideas
are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014).
In analyzing patent-eligibility questions under the judicial exception
to 35 U.S.C. § 101, we “first determine whether the claims at issue are
directed to a patent-ineligible concept.” Alice, 573 U.S. at 218. If the claims
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are determined to be directed to an ineligible concept, then we “consider the
elements of each claim both individually and ‘as an ordered combination’ to
determine whether the additional elements ‘transform the nature of the
claim’ into a patent-eligible application.” Id. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)).
On January 7, 2019, the Director issued 2019 Revised Patent Subject
Matter Eligibility Guidance (“Revised Guidance”), which explains how the
Director directs patent-eligibility questions under the judicial exception to 35
U.S.C. § 101 to be analyzed. 84 Fed. Reg. 50–57; see also October 2019
Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf).
Per the Revised Guidance, the first step of Alice (i.e., Office Step 2A)
consists of two prongs. In Prong One, we must determine whether the claim
recites a judicial exception, i.e., an abstract idea, a law of nature, or a natural
phenomenon. 84 Fed. Reg. at 54 (Section III.A.1.). If it does not, the claim
is patent eligible. Id. With respect to the abstract idea category of judicial
exceptions, an abstract idea must fall within one of the enumerated
groupings of abstract ideas in the Revised Guidance or be a “tentative
abstract idea,” with the latter situation predicted to be rare. Id. at 51–52
(Section I, enumerating three groupings of abstract ideas), 54
(Section III.A.1., describing Step 2A Prong One), 56–57 (Section III.C.,
explaining the identification of claims directed to a tentative abstract idea).
If a claim does recite a judicial exception, we proceed to Step 2A
Prong Two, in which we determine if the “claim as a whole integrates the
recited judicial exception into a practical application of the exception.” Id.
at 54 (Section II.A.2.). If it does, the claim is patent eligible. Id.
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If a claim recites a judicial exception and fails to integrate it into a
practical application, we then proceed to the second step of Alice (i.e., Office
Step 2B). In that step, we evaluate the additional limitations of the claim,
both individually and as an ordered combination, to determine whether they
provide an inventive concept. Id. at 56 (Section III.B.). In particular, we
look to whether the claim:
• adds a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in the
field, which is indicative that an inventive concept may be
present; or
• simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception, which is
indicative that an inventive concept may not be present.
Id.
With this framework in mind, we now consider whether Appellant’s
claims are patent-eligible.
Application of Revised Guidance, Step 2A,
Prong One
The Examiner determined that the underlined language of claim 1,
reproduced below, recites one or more abstract ideas.
1. A gaming device, comprising:
at least one display configured to present a first game of
chance;
a bill acceptor configured to receive a wager to play the
first game of chance and establish a credit balance from which
the wager is deducted;
a game manager configured to initiate the first game of
chance after receipt of the wager;
a session manager configured to manage a user game play
session involving the first game of chance; and
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a near-hit manager configured to:
determine whether at least one of a plurality of
symbols in the first game of chance is a predetermined
near-hit triggering symbol;
determine a location of the predetermined near-hit
triggering symbol if it is determined that at least one of the
plurality of symbols is a predetermined near-hit triggering
symbol;
determine whether a near-hit triggering event
occurred based on the location of the predetermined near-
hit triggering symbol;
determine a near-hit award credit associated with
the near-hit triggering event if it is determined that a near-
hit triggering event occurred;
record each of the near-hit award credits obtained
during the user game play session;
record an accumulated near-hit award credit over a
plurality of user game play sessions, wherein the
accumulated near-hit award credit is used to play a second
chance game on the gaming device;
determine if there is sufficient accumulated near-hit
award credit;
(viii) enabling a user to purchase additional near-hit
award credit if it is determined that there is insufficient
accumulated near-hit award credit;
determine if the user purchased additional near-hit
award credit;
increase the accumulated near-hit award credit if it
is determined that the user purchased additional near-hit
award credit; and
facilitate play of a second chance game on the
gaming device using the accumulated near-hit award
credit if there is sufficient accumulated near-hit award
credit,
wherein the near-hit triggering event occurs when
the predetermined near-hit triggering symbol is at least
two positions away from a payline.

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Non-Final Act. 6–7. The Examiner determined that the underlined claim
language recites an abstract idea in the certain methods of organizing human
activity category that is similar to those of claims that courts have previously
found ineligible. Id. at 7–8 (citing Alice, 573 U.S. 208; Bilski v. Kappos,
561 U.S. 593 (2010); In re Smith, 815 F.3d 816 (Fed. Cir. 2016); In re
Marco Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. 2018); and Planet
Bingo, LLC v. VKGS LLC, 576 F. App’x 1005 (Fed. Cir. 2014)). In
particular, the Examiner determined that the underlined claim language
recites “a method of exchanging and resolving financial obligations between
a player and an operator of the gaming machine based on probabilities
created during the game.” Non-Final Act. 8. The Examiner explained:
Based on the reasoning in Smith, the recited steps of conducting
a wagering game in the instant claims relate to the “fundamental
economic practice” of wagering. In Smith, the court found that
wagering activities, similar to the game features claimed here,
are fundamental economic practices, which are in turn abstract
ideas recognized in several court decisions including Alice and
Bilski.
Id.; see also id. (“In re Marco Guldenaar reached similar conclusions to
those in Smith.”).
Appellant generally argues against the Examiner’s determination that
claim 1 recites an abstract idea. See, e.g., Appeal Br. 35–40. However,
none of Appellant’s arguments rebuts or shows error in the Examiner’s
reliance on Smith and Guldenaar. Appellant mentions the former but not the
latter, arguing:
It is also not particularly clear which cases the Examiner
relies on to support the conclusion that the claims are allegedly
directed to an abstract idea. Pages 7–8 of the Office Action did
make reference to Planet Bingo, LLC v. VKGS LLC, 576 Fed.
Appx. 1005 (Fed. Cir. 2014) and In re Smith, 2015-1664, -- F.3d
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-- (Fed Cir. March 10, 2016). However, these cases are
applicable [sic, inapplicable] here because the present claims are,
respectively, not managing a bingo game, and not conducting a
blackjack game.
Appeal Br. 44. This terse argument fails to distinguish in any meaningful
manner Appellant’s claims from those at issue in Smith, Planet Bingo, or
Guldenaar.
“The Supreme Court has not established a definitive rule to determine
what constitutes an ‘abstract idea’ sufficient to satisfy the first step of the
Mayo/Alice inquiry. Rather, both [the Federal Circuit] and the Supreme
Court have found it sufficient to compare claims at issue to those claims
already found to be directed to an abstract idea in previous cases.” Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (emphasis
added); see also Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d
1288, 1294 (Fed. Cir. 2016) (“[T]he decisional mechanism courts now apply
[to identify an abstract idea] is to examine earlier cases in which a similar or
parallel descriptive nature can be seen—what prior cases were about, and
which way they were decided.” (emphasis added)). This is precisely what
the Examiner has determined here. The Examiner has compared Appellant’s
claim 1 (as well as claims 2–28) to other claims courts have previously
adjudicated. And the Examiner has noted the similarity between Appellant’s
claims and those that courts have previously adjudicated to be ineligible
because they recite abstract ideas.
This is precisely what the Federal Circuit did in Guldenaar. There,
the court followed Smith and other cases in determining that claims directed
to a “method of playing a dice game” were ineligible. The court in
Guldenaar held:
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In re Smith, 815 F.3d 816 (Fed. Cir. 2016), is highly
instructive in this case. In Smith, we concluded that the claimed
“method of conducting a wagering game” using a deck of playing
cards was drawn to an abstract idea. We likened the claimed
method to the method of exchanging financial obligations at
issue in Alice and the method of hedging risk at issue in Bilski.
Id. at 819. We agreed with the Board’s reasoning that “[a]
wagering game is, effectively, a method of exchanging and
resolving financial obligations based on probabilities created
during the distribution of the cards.” Id. at 818–19. We also
found that the method of conducting a wagering game was
similar to the subject matter we previously held to be patent-
ineligible in OIP Technologies, Inc. v. Amazon.com, 788 F.3d
1359, 1362 (Fed. Cir. 2015), and Planet Bingo, LLC v. VKGS
LLC, 576 F. App’x 1005, 1007 (Fed. Cir. 2014). Smith, 815 F.3d
at 819.
Guldenaar, 911 F.3d at 1160.
On the record presented, we are not apprised of error in the
Examiner’s determination that claim 1 recites an abstract idea.
We are also not apprised of error in the Examiner’s determination that
claims 2–28 also recite abstract ideas. Appellant asserts that “[t]he
Examiner analyzed only claim 1.” Appeal Br. 45. But that is not correct.
The Non-Final Action states:
Independent claims 8, 16, and 24 recite abstract ideas that are
substantially encompassed by the abstract idea of claim 1.
Dependent claims, such as claims 2–5, 11–15, 18–22, and 25–
27, include the feature of accumulating award credits to be used
to play another game of chance at a later time, which is an
extension of the abstract idea of claim 1. Other dependent
claims, such as claims 6, 7, 9, 10, 17, and 28, further define the
abstract idea as requiring a game in the form of a slot machine
game that includes a plurality of symbols and winning
determination based on paylines.
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Non-Final Act. 7. Appellant’s mere statement that “[t]he limitations recited
in these claims [(i.e., claims 2–28)] can impact either Step 1 or Step 2 of the
Alice test” (Appeal Br. 45) is insufficient to show error in the Examiner’s
determination that they recite abstract ideas.
Application of Revised Guidance, Step 2A,
Prong Two
In Prong Two of Step 2A, we determine whether any of the claims as
a whole integrates the recited judicial exception (here, an abstract idea) into
a practical application of the exception. In doing so, we first determine
“whether there are any additional elements recited in the claim[s] beyond the
judicial exception(s).” 84 Fed. Reg. at 54–55. The Examiner determined
that the additional elements of the claims, i.e., beyond those reciting abstract
ideas, “merely provide instructions to implement an abstract idea on a
computer, or merely use a computer as a tool to perform an abstract idea,
add only extra solution activity to the abstract idea, and/or generally link the
use of the abstract idea to a particular technological environment or field of
use.” Non-Final Act. 9; see also id. at 5–7 (identifying the additional
limitations of claim 1), 9–10 (summarizing the additional elements of all
claims); see also 84 Fed. Reg. at 55 (listing non-exclusive factors/examples
that show integration and those that do not). The Examiner further
determined that “there is no indication [of] an improvement in the
underlying computer technology.” Non-Final Act. 9.
Appellant argues that this was “lip service” by the Examiner and that
he “made no serious efforts to consider any ‘practical application’ of the
claims.” Appeal Br. 40. As Appellant explains, “the Examiner was
considering only limitations not absorbed into the Examiner’s underlined
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claim – abstract idea. In this regard, the Examiner examined only hardware
components of claim 1 and ignored all other limitations.” Id. However, that
is precisely what the Examiner was supposed to do. See 84 Fed. Reg. at 54–
55 (“Examiners evaluate integration into a practical application by:
(a) Identifying whether there are any additional elements recited in the claim
beyond the judicial exception(s); and (b) evaluating those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application.” (emphasis added)).
Application of Revised Guidance, Step 2B
In Step 2B, we evaluate the additional elements of the claims, both
individually and as an ordered combination, to determine whether they
provide an inventive concept. The Examiner identified the additional
elements as follows:
Claims 1–28 encompass the following additional element(s) or
combination of elements in the claim(s) other than the abstract
idea per se: a gaming device comprising at least one display, a
bill acceptor (or currency acceptor) to receive a wager to play the
first game of chance and establish a credit balance from which
the wager is deducted (at least claim 1), a memory (at least claim
3), an output device which may be a printer to provide a game
voucher (at least claims 4 and 21), a plurality of rotatable reels
on the display (at least claim 7), a slot machine (at least claim 9),
a portable electronic device (at least claim 23). Moreover the
claims require ‘managers’ to carry out various functions of the
abstract idea, such as “a session manager configured to manage
a user game play session” in claim 1. These managers are
interpreted as program instructions executed by a processor.
Non-Final Act. 9–10. The Examiner found that these are conventional
features specified at a high level of generality. Id. at 10. For example, the
Examiner noted that the additional elements are encompassed by what the
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Specification refers to as a “conventional slot machine.” Id. (citing Spec.
¶26).
As Appellant did in relation to Prong One of Step 2A, Appellant
criticizes the Examiner for considering only the additional limitations
beyond those encompassing the abstract idea. Appeal Br. 42 (“While pages
9–10 [of the Non-Final Action] provide some discussion, the discussion is
only as to ‘additional features’ as compared to the Examiner’s alleged
underlined abstract idea.”). Again, however, that is precisely what the
Examiner was supposed to do. See 84 Fed. Reg. at 56 (“[I]f a claim has
been determined to be directed to a judicial exception under revised Step 2A,
examiners should then evaluate the additional elements individually and in
combination under Step 2B to determine whether they provide an inventive
concept.” (emphasis added)).
For the foregoing reasons, we affirm the rejection of claims 1–28
under the judicial exception to 35 U.S.C. § 101.
Rejection 2—Anticipation
The Examiner found that Muir anticipates claims 24, 26, and 28.
Non-Final Act. 13.
Independent Claim 24
Muir discloses “[a] gaming device having a game that includes several
nearly missed outcomes associated with a designated outcome, where the
player is provided an award for achieving a nearly missed outcome.” Muir
Abstract.
In one embodiment, where the gaming device provides a
slot game, a designated outcome is a predefined combination of
symbols generated on a payline. In one example, the slot game
includes five reels and a payline, wherein each reel defines a
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number of stop positions. In this example, a designated outcome
occurs if the gaming device generates five like symbols on the
payline. The near miss outcome associated with the designated
outcome occurs if the gaming device generates four like symbols
on the pay line and the fifth like symbol is generated on the fifth
reel at least one reel stop position away from the payline. It
should be appreciated that the near miss outcome may include
any number of required symbols appearing any number of stop
positions away from the pay line. In addition, the near miss
outcome may include four like symbols where the fifth like
symbol is not generated on the reel.
Id. ¶18. Relying on Muir’s teaching above wherein “‘a designated outcome
is a predefined combination of symbols,’” Appellant argues that “Muir does
not teach or suggest ‘determine whether at least one of the displayed set of
symbols for the first game of chance is a predetermined near-hit triggering
symbol’ as recited in claim 24.” Appeal Br. 9. As Appellant explains it,
“Muir evaluates each game to determine whether a specific combination of
symbols was obtained and not just a single near-hit triggering symbol.” Id.
The Examiner responds that Appellant’s argument is not
commensurate with the scope of the claim, which “is not limited to only a
single near hit-triggering symbol.” Ans. 31. The Examiner is correct. See
Claims App. A-10 (claim 1 reciting “determine whether at least one of the
displayed set of symbols . . . is predetermined hear-hit triggering symbol.”).
The Examiner further points out, and in reference to the scenario
described in paragraph 18 of Muir, that the “exemplary fifth reel symbol of
Muir constitutes a single near-hit triggering symbol which Appellant asserts
is required by the claims.” Ans. 31. The Examiner again is correct. In fact,
Muir explicitly describes the exact same near-hit scenario that Appellant’s
Specification describes as being an embodiment of Appellant’s claimed
invention, although Muir calls it “a near miss outcome.” Compare Muir ¶18
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(describing a “near miss outcome” as one in which the payline bears four
like symbols but not a fifth like symbol), with Spec. ¶54 (describing a “near-
hit event” as one in which the payline bears four like symbols but not a fifth
like symbol); see also Spec. Fig. 5B (illustrating the near-hit event described
in ¶54).
Appellant has not apprised us of error in the Examiner’s rejection of
claim 24 as anticipated by Muir. Accordingly, we affirm this rejection of
claim 24.
Dependent Claim 26
Claim 26 recites: “The gaming system of claim 24, wherein the
gaming system comprises: a memory configured to store the accumulated
near-hit award credit.” Claims App. A-11. The Examiner found this
additional limitation taught by Muir “because the system of Muir provides a
number of free plays of the game, which indicates that the number must be
stored within the gaming system in order to allow the player to access them
at a later time.” Non-Final Act. 15. Appellant asserts: “In contrast to the
cited prior art reference, claim 26 recites: ‘wherein the gaming system
comprises: a memory configured to store the accumulated near-hit award
credit.’” Appeal Br. 10. However, Appellant does not provide any
explanation or basis for that assertion. Accordingly, Appellant has not
apprised us of error in the Examiner’s rejection of claim 26 as anticipated by
Muir. Thus, we affirm this rejection of claim 26.
Dependent Claim 28
Claim 28 recites:
The gaming system of claim 24, wherein the near-hit
manager determines whether the near-hit award credit is to be
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awarded based on the position of the predetermined near-hit
triggering symbol, wherein the near-hit triggering event occurs
when the predetermined near-hit triggering symbol is at least two
positions away from a predetermined payline[.]
Claims App. A-11 (emphasis added). The Examiner found these additional
limitations taught by Muir’s disclosure that “[t]he near miss outcome
associated with the designated outcome occurs if the gaming device
generates four like symbols on the payline and the fifth like symbol is
generated on the fifth reel at least one reel stop position away from the
payline.” Non-Final Act. 15 (quoting Muir ¶18). Appellant argues against
the rejection based on the same unpersuasive reason it argues against the
rejection of claim 24 — i.e., that “Muir does not teach or suggest the use of a
‘predetermined near-hit triggering symbol.’” Appeal Br. 11. That argument
is likewise unpersuasive here. Accordingly, Appellant has not apprised us of
error in the Examiner’s rejection of claim 28 as anticipated by Muir. Thus,
we affirm this rejection of claim 28.
Rejection 3—Obviousness
The Examiner determined that Muir in view of Jaffe renders obvious
claims 1–23, 25, and 27. Non-Final Act. 16. The Examiner found that Muir
teaches most of the subject matter of the rejected claims but relies on Jaffe
for teaching certain additional features recited therein. Id. at 16–30. The
additional features of these claims include, for example, “the predetermined
near-hit triggering symbol is at least two positions away from a payline”
(independent claim 1 (emphasis added)); “record an accumulated near-hit
award credit over a plurality of user game play sessions” (independent
claim 1 (emphasis added)); “permitting use of the accumulated near-hit
award credit for the second chance game on the first gaming device or a
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second gaming device when there is sufficient accumulated near-hit award
credit to play the second game of chance” (independent claim 8 (emphasis
added)); “at least one second gaming device configured to initiate the second
chance game, . . . wherein the second chance game is different from a
second chance game played on the at least one first gaming device”
(independent claim 16 (emphasis added)).
Like Muir, Jaffe discloses a wagering game terminal such as a slot
machine. Jaffe ¶3.
[Jaffe] allows players playing at one of the wagering game
terminals 100a or 100b to store game assets that they may have
accumulated for subsequent retrieval at a later time. The game
assets may be any aspect of a basic and/or bonus game, whether
tangible or intangible, that a player may win or accumulate,
including, but not limited to, symbols and symbol combinations,
monetary or non-monetary awards, features or characteristics of
a game (e.g., a wild symbol, free spins, etc.), features or
characteristics of a player (e.g., extra lives, strength, skills,
intelligence, equipment, etc.), a bonus game, and the like. By
allowing the players to retain their game assets when they depart,
the players are given much incentive to return to the wagering
game terminals 100a and 100b at a later time.
Id. ¶37. To facilitate retention of game assets, Jaffe teaches “issu[ing] each
player a ticket when the player departs a wagering game terminal 100a or
100b, which ticket can be used later to retrieve all the assets that the player
has accumulated in the current game.” Id. ¶38. “Then, when the player
returns to any wagering game terminal 100a or 100b on the network 212, he
or she may retrieve his or her game asset information by presenting the
ticket.” Id. ¶38. The ticket “may be a paper ticket (e.g., barcode) or an
electronic ticket (e.g., magnetic).” Id. ¶40. Further, a “player can use his or
her mobile phone to remotely access the wagering game and use the
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accumulated assets at a time and place according to the player’s desire.” Id.
¶47.
The Examiner determined:
It would have been obvious to modify the near-miss
awards system of Muir to include a printed or electronic voucher
storing a player’s accumulated award credits such that a player
may transport his accumulated award credits to a second chance
gaming device, as taught by Jaffe, in order to allow players to
take a break or switch gaming devices without losing
accumulated credits and provide players with an incentive to
return to the gaming establishment by allowing players to benefit
from previous experiences playing at the game terminals, as is
beneficially taught by Jaffe.
Non-Final Act. 23. The Examiner further determined:
Therefore, it would have been obvious to one of ordinary skill in
the art at the time of invention to modify Muir to include the
feature of allowing access to a second chance game via a second
(different) device that is a portable electronic device, as
suggested by Jaffe, in order to beneficially allow the player to
use accumulated second chance games at a time and place of his
choosing.
Id. at 30.
Independent Claim 1
Appellant asserts that neither Muir nor Jaffe teaches or suggests the
following limitations of claim 1:
determine whether at least one of a plurality of symbols in the
first game of chance is a predetermined near-hit triggering
symbol;
determine a near-hit award credit associated with the near-hit
triggering event if it is determined that at least one of the plurality
of symbols is a predetermined near-hit triggering symbol;
determine a location of the predetermined near-hit triggering
symbol if it is determined that at least one of the plurality of
symbols is a predetermined near-hit triggering symbol;
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determine whether a near-hit triggering event occurred based on
the location of the predetermined near-hit triggering symbol; and
determine a near-hit award credit associated with the near-hit
triggering event if it is determined that a near-hit triggering event
occurred . . . wherein the near-hit triggering event occurs when
the predetermined near-hit triggering symbol is at least two
positions away from a payline.
Appeal Br. 13–14. Appellant’s assertion in this regard universally is
premised on Appellant’s failed distinction between Muir’s teachings
regarding a “near miss outcome” (Muir ¶18) and Appellant’s recitation of
“determin[ing] whether at least one of a plurality of symbols in the first
game of chance is a predetermined near-hit triggering symbol.” As
discussed above in the context of the anticipation rejection of claim 24,
however, Appellant fails to apprise us of error in the Examiner’s finding that
Muir teaches that limitation. Accordingly, Appellant also fails to apprise us
of error with respect to the other limitations contested above.
Appellant next asserts that the asserted prior art fails to teach or
suggest the following additional limitations of claim 1:
determine if there is sufficient accumulated near-hit award credit;
enabling a user to purchase additional near-hit award credit if it
is determined that there is insufficient accumulated near-hit
award credit;
determine if the user purchased additional near-hit award credit;
increase the accumulated near-hit award credit if it is determined
that the user purchased additional near-hit award credit; and
facilitate play of a second chance game on the gaming device
using the accumulated near-hit award credit if there is sufficient
accumulated near-hit award credit.
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Appeal Br. 14–16. In support of this assertion, Appellant argues a
distinction between Muir’s “buy in” (Muir ¶88) and the recited “purchase of
near-hit award credits.” Id. at 15–16. Muir discloses:
In one embodiment, no separate entry fee or buy in for a
bonus game need be employed. That is, a player may not
purchase an entry into a bonus game, rather they must win or earn
entry through play of the primary game thus, encouraging play
of the primary game. In another embodiment, qualification of
the bonus or secondary game could be accomplished through a
simple “buy in” by the player if, for example, the player has been
unsuccessful at qualifying through other specified activities.
Muir ¶88.
Appellant argues that “[t]he player of Muir is not buying additional
near-hit award credit. Rather, the player of Muir is paying an entry free [sic,
fee] to play a bonus game, i.e. a ‘buy-in’.” Appeal Br. 15; see also id. at 15–
16 (“Muir does not teach or suggest that its ‘buy-in’ can be used to ‘increase
the accumulated near-hit award credit’ as recited in claim 1. Rather, the
‘buy-in’ as taught in Muir is used to play the bonus game at that time and is
not accumulated.”); Reply Br. 2 (Muir’s “‘buy in’ allows the player to play
the bonus game. The ‘buy in’ of Muir is not to purchase near hit award
credits.”). As best we can discern from these arguments, Appellant’s
purported distinction is that Muir’s buy-in feature directly yields a bonus
game and never takes the form of a “near-hit award credit.” Such an
argument is not persuasive in the absence of any structural limitations for the
recited “near-hit award credit.” Rather, and as explained by the Examiner:
[T]he “buy in” for a bonus game play of Muir is directly
comparable to the purchase of a near-hit award credit because the
instant invention allows a player who does not have sufficient
near-hit award credit, which may be used to play a second chance
game, to simply buy the credit.
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Ans. 32–33.
Appellant also asserts that the prior art fails to teach or suggest the
following additional limitation of claim 1: “record an accumulated near-hit
award credit over a plurality of user game play sessions, wherein the
accumulated near-hit award credit is used to play a second chance game on
the gaming device” when there is sufficient accumulated near-hit award
credit. Appeal Br. 16–18. Appellant argues that, in Muir, “once an award is
obtained, the gaming device initiates a game sequence and the player must
make a wager to play the game sequence at that time.” Id. at 17. Thus, Muir
allows for accumulation of near-hit credit over a single game session only.
Id. The Examiner responds that Appellant’s argument is inapposite because
the rejection does not rely on Muir alone for teaching this limitation. Ans.
33–34 (citing In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot
show non-obviousness by attacking references individually where, as here,
the rejections are based on combinations of references.”); see also Non-Final
Act. 22 (citing and applying teachings from Jaffe in relation to the instant
limitation).
Appellant also argues a “combination of Muir and Jaffe would be a
gaming system that allows for the collection of symbols over several games
and once a collection of symbols is collected, the player would be awarded a
special event game.” Appeal Br. 18. The Examiner responds that Jaffe
teaches that “any aspect of a base or bonus game, expressly including
awards like free spins and bonus games, may be accumulated.” Ans. 35
(citing Jaffe ¶37).3 Thus, Jaffe is not limited to accumulating symbols.

3 Paragraph 37 of Jaffe is reproduced supra.
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Appellant also argues that “the user of [the combination of] Jaffe and
Muir would need to play the same game in order to use the game assets of
Jaffe.” Appeal Br. 18. The Examiner responds that Appellant’s argument is
legally inapposite because the claim language does not preclude the recited
first and second games being the same game. Ans. 35. Appellant does not
rebut this construction. Reply Br. 2.
For the foregoing reasons, we are not apprised of error in the
Examiner’s rejection of claim 1 and, accordingly, we affirm the rejection.
Dependent Claims 2–7
Appellant argues patentability of each of claims 2–7 under separate
headings. Appeal Br. 19–21. However, in all such cases, Appellant argues
their purported patentability solely based on their ultimate dependency from
claim 1. Id. Thus, for the same reasons we affirm the rejection of claim 1,
we affirm the rejection of claims 2–7 as unpatentable over Muir and Jaffe.
Independent Claim 8
Appellant asserts that neither Muir nor Jaffe teaches or suggests the
following limitations of claim 8:
determining whether at least one of the plurality of symbols is a
predetermined near-hit triggering symbol;
determining a location of the predetermined near-hit triggering
symbol if it is determined that at least one of the plurality of
symbols is a predetermined near-hit triggering symbol; and
detecting a near-hit triggering event in the first game of chance
on the first gaming device based on the location of the
predetermined near-hit triggering symbol.
Appeal Br. 21–23. Appellant’s assertion in this regard universally is
premised on Appellant’s failed distinction between Muir’s teachings
regarding a “near miss outcome” (Muir ¶18) and Appellant’s recitation of
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“determining whether at least one of the plurality of symbols is a
predetermined near-hit triggering symbol” (claim 8). As discussed above in
the context of the anticipation rejection of claim 24, however, Appellant fails
to apprise us of error in the Examiner’s finding that Muir teaches such a
limitation. Accordingly, Appellant also fails to apprise us of error with
respect to the other limitations contested above.
Appellant next asserts that the prior art fails to teach or suggest the
following additional limitation of claim 8: “permitting use of the
accumulated near-hit award credit for the second chance game on the first
gaming device or a second gaming device when there is sufficient
accumulated near-hit award credit to play the second game of chance.”
Appeal Br. 23. This is so, Appellant argues, because Muir and Jaffe “are
both silent as to and do not teach or suggest whether the second gaming
device permits play only ‘when there is sufficient accumulated near-hit
award credit to play the second chance game.’” Id. (quoting claim 8). The
Examiner responds that “it would go against the teachings of the prior art to
allow a player to access a play of the wagering game without sufficient
credit, in some form,” because the purpose of Muir and Jaffe is to “provide
entertainment in exchange for a fee (i.e., wagering game play).” Ans. 36.
The Examiner also points out that the claim does “not specify what
constitutes ‘sufficient’ credit to play the game, so any amount the casino will
accept as sufficient meets the claim limitation.” Id. at 36–37. Appellant
does not rebut either point in its Reply Brief, which merely directs us to the
Appeal Brief arguments. See Reply Br. 2 (“Claim 8[:] Applicants
respectfully refers to Appeal Brief pages 21–24.”).
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For the foregoing reasons, we are not apprised of error in the
Examiner’s rejection of claim 8 and, accordingly, we affirm the rejection.
Dependent Claims 9–13 and 15
Appellant argues patentability of each of claims 9–13 and 15 under
separate headings. Appeal Br. 24–26. However, in all such cases, Appellant
argues their purported patentability solely based on their ultimate
dependency from claim 8. Id. Thus, for the same reasons we affirm the
rejection of claim 8, we affirm the rejection of claims 9–13 and 15 as
unpatentable over Muir and Jaffe.
Dependent Claim 14
Claim 14 recites “where the voucher is a digital voucher.” Claims
App. A-6. Appellant argues patentability of claim 14 on the basis that Muir
fails to teach this limitation. Appeal Br. 26. However, the Examiner relied
upon Jaffe for teaching this limitation. Non-Final Act. 37–38. For the
foregoing reasons, we are not apprised of error in the Examiner’s rejection
of claim 14 and, accordingly, we affirm the rejection.
Independent Claim 16
Appellant asserts that neither Muir nor Jaffe teaches or suggests the
following limitations of claim 16:
determine whether at least one of a plurality of symbols in the
first game of chance is a predetermined near-hit triggering
symbol;
determine a location of the predetermined near-hit triggering
symbol if it is determined that at least one of the plurality of
symbols is a predetermined near-hit triggering symbol;
determine whether a near-hit triggering event occurred based on
the location of the predetermined near-hit triggering symbol,
wherein the near-hit triggering event occurs when the
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predetermined near-hit triggering symbol is at least two positions
away from a payline; and
determine whether at least one near-hit award credit is associated
with the near-hit triggering event based on the location of the
predetermined near-hit triggering symbol.
Appeal Br. 27–29. Appellant’s assertion in this regard universally is
premised on Appellant’s failed distinction between Muir’s teachings
regarding a “near miss outcome” (Muir ¶18) and Appellant’s recitation of
“determin[ing] whether at least one of a plurality of symbols in the first
game of chance is a predetermined near-hit triggering symbol” (claim 16).
As discussed above in the context of the anticipation rejection of claim 24,
however, Appellant fails to apprise us of error in the Examiner’s finding that
Muir teaches such a limitation. Accordingly, Appellant also fails to apprise
us of error with respect to the other limitations contested above.
Appellant next asserts that the prior art fails to teach or suggest the
following recitation of claim 16:
at least one second gaming device configured to initiate the
second chance game, the at least one second gaming device for
the second chance game includes a second chance game manager
configured to permit the user to use the accumulated near-hit
award credit to play the second chance game on the at least one
second gaming device if there is sufficient accumulated near-hit
award credit to play the second chance game, wherein the second
chance game is different from a second chance game played on
the at least one first gaming device.
Appeal Br. 29–31. This is so, Appellant argues, because (1) the prior art
fails to teach the requirement of “sufficient accumulated near-hit award
credit” before playing the second game; and (2) the prior art fails to teach
wherein the second chance game is different from a “second chance game
played on the at least one first gaming device.” Appeal Br. 29–30.
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With respect to the first argument, the Examiner responds that the
argument is essentially the same as an argument raised with respect to
claim 8. Ans. 38. The Examiner is correct, and, as we found that argument
to not apprise us of error above, it likewise does not do so here.
With respect to the second argument, the Examiner responds that
Muir teaches that the award may be “entry into a tournament” (Muir ¶13),
which would not be the same as the base game through which the award was
generated. Ans. 39. The Examiner also responds that Muir further teaches
“the bonus or secondary game may be any type of suitable game, either
similar to or completely different from the base or primary game.” Id.
(quoting Muir ¶86). Appellant does not rebut or otherwise respond to these
specific explanations. See Reply Br. 2 (“Claim 16[:] The Examiner’s
Answer restates arguments with respect to claim 8. Therefore, Applicant’s
response are the same as above.”).
For the foregoing reasons, we are not apprised of error in the
Examiner’s rejection of claim 16 and, accordingly, we affirm the rejection.
Dependent Claims 17–21, 23, 27 and 28
Appellant argues patentability of each of claims 17–21, 23, 27 and 28
under separate headings. Appeal Br. 31–35. However, in all such cases,
Appellant argues their purported patentability solely based on their ultimate
dependency from claim 16 or claim 24. Id. Thus, for the same reasons we
affirm the rejections of claims 16 and 24, we affirm the rejection of claims
17–21, 23, 27 and 28 as unpatentable over Muir and Jaffe.
Dependent Claim 22
Claim 22 recites “where the voucher is a digital voucher.” Claims
App. A-9. Appellant argues patentability of claim 22 on the basis that Muir
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fails to teach this limitation. Appeal Br. 33. However, the Examiner relied
upon Jaffe for teaching this limitation. Non-Final Act. 37–38 (regarding
identical limitation recited in claim 14; see also Ans. 40 (noting that
Appellant’s argument for claim 14 and claim 22 were identical and
unpersuasive). Thus, we are not apprised of error in the Examiner’s
rejection of claim 22 and, accordingly, we affirm the rejection.
Dependent Claim 25
Claim 25 depends from independent claim 24 and recites additional
limitations similar to those recited in independent claim 8. Claims App. A-
10–A-11. And, as in relation to claim 8, Appellant here argues that the
rejection does show that prior art teaches the requirement of “sufficient
accumulated near-hit award credit” before playing the second game. Appeal
Br. 34. However, the Examiner satisfactorily showed the limitation, as
properly construed, is met by the asserted prior art. Ans. 36–37.

SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–28 101 Eligibility 1–28
24, 26, 28 102(b) Muir 24, 26, 28
1–23, 25,
27
103(a) Muir, Jaffe 1–23, 25,
27

Overall
Outcome
1–28

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