Ex Parte 8,162,666 B2 et al

Patent Trial and Appeal Board

Mar 6, 2017

96030012 (P.T.A.B. Mar. 6, 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.
AGSE666 9683
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
96/030,012 07/18/2014
24258 7590 03/06/2017
JOHN EDWARD ROETHEL
5220 Haven Street, Suite 107
Las Vegas, NV89119
8,162,666 B2
03/06/2017 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 ACTION GAMING, INC.
Appeal 2017-000804
Reexamination Control No. 96/030,012
Patent US 8,162,666 B21
Technology Center 3900
Before STEVEN D. A. McCARTHY, DANIEL S. SONG, and
BRETT C. MARTIN, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Issued to Tyler Parham on April 24, 2012, which has been assigned to the
Patent Owner/Real Party in Interest, Action Gaming, Inc. App. Br. 2.
Appeal 2017-000804
Reexamination Control No. 96/030,012
Patent US 8,162,666 B2
STATEMENT OF CASE
The Patent Owner appeals under 35 U.S.C. §§ 134(b) and 306 from
the Examiner’s rejection of claims 11—17, 19-33, and 35^42. Claims 8, 9,
18, 34, 51, and 52 are not subject to reexamination, and claims 1—7, 10, 43—
50, and 53 have been cancelled. Final Act. 2—3. We have jurisdiction under
35 U.S.C. §§ 134(b) and 306.
We AFFIRM.
THE INVENTION
The Patent Owner’s claims are directed “generally to gaming systems
and more particularly to gaming systems and methods allowing secondary
gaming for multiple players.” Spec. col. 1,11. 13—15. Claim 11, reproduced
below, is illustrative of the claimed subject matter:
11. A method for enabling multiple-network gaming devices
to participate in a secondary game, the method comprising
allowing a plurality of players associated with the multiple-
network gaming devices to become eligible to qualify to
participate in a multiplayer secondary bonus game;
qualifying a first eligible player in the plurality of players
to participate in the multiplayer secondary bonus game based
upon the first eligible player playing the primary game;
triggering a secondary game indication cycle to run before
the multiplayer secondary bonus game is initiated, wherein the
secondary game indication cycle is capable of running for a
duration;
qualifying, during the duration of the secondary game
indication cycle, additional eligible players to participate in the
multiplayer secondary bonus game based upon the additional
eligible players playing the primary game;
upon conclusion of the secondary game indication cycle,
providing the multiplayer secondary bonus game; and
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Reexamination Control No. 96/030,012
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awarding, to every eligible player that qualified to
participate in the multiplayer secondary bonus game, at least one
award.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Cannon US 2003/0119581 A1
Parker (Parker ’306) US 2003/0199306 A1
Parker (Parker ’308) US 2003/0199308 A1
REJECTIONS
The Examiner made the following rejections:
Claims 11—17, 19—22, 24—33, 35—38, and 40-42 stand rejected under
35 U.S.C. § 102(a) and (e) as being anticipated by Parker ’306. Ans. 2.
Claims 11—17, 19—22, 24—33, 35—38, and 40-42 stand rejected under
35 U.S.C. § 102(a) and (e) as being anticipated by Parker ’308. Ans. 4.
Claims 23 and 39 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Parker ’306 or ’308 and Cannon. Ans. 6.
ANALYSIS
The Patent Owner argues all claims subject to the anticipation
rejection over Parker ’306 as a group. We select claim 11 as representative
and, accordingly, all claims stand or fall with our disposition of claim 11.
All of the Patent Owner’s arguments center on the assertion that the claims
require a two-step process of first determining eligibility of a player and then
determining whether a player qualifies for participation in a secondary game.
See generally App. Br. 11-20. The Patent Owner then argues that the
Jun. 26, 2003
Oct. 23, 2003
Oct. 23, 2003
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Examiner “did not address that the player must be eligible in order to qualify
to participate in the multiplayer secondary bonus game.” App. Br. 13.
We agree with the Examiner’s assessment that “the question is
whether or not Parker ’306 and ’308 teach the claimed step of ‘allowing’
players to become eligible prior to the separate steps of ‘qualifying’ a first
eligible player and additional eligible players for the bonus game.” Ans. 7.
We also agree, based upon the examples provided by the Examiner, that “the
‘allowing’ step of claims 11, 26, 27, and 42 requires only some conventional
manner of granting a player access to the bonus game or permission to play
the bonus game.” Ans. 8. Because it makes little sense for a player to
qualify for and then play the secondary game, yet somehow not be eligible —
i.e., any player who participates in the secondary game must have been
deemed eligible in some form or another — we further agree with the
Examiner that this eligibility determination “may also include the mere act
of playing a gaming device that has been designated as an eligible gaming
device.” Id.
The Patent Owner suggests that the Examiner’s support for this two-
step process is merely part of the qualification step and not a separate
eligibility determination. See App. Br. 13—14. As the Examiner points out,
however, “Parker ’306 teaches that additional criteria may be used to
determine a player’s eligibility to participate in the bonus game such that
only those players who play within a predetermined time period prior to the
first player’s qualifying win.” Ans. 8 (citing Parker | 6). In other words,
while a player may perform a qualifying act, such qualification may not
render the player eligible unless it falls within a predetermined time period.
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Thus, regardless of whether it is specifically defined in Parker ’306 as a
separate eligibility determining step, Parker ’306 clearly determines
eligibility based on criteria that is in addition to criteria used to determine
whether the player qualifies for the secondary game.
As the Examiner also points out, Parker ’306 “describes such
additional criteria as an ‘added restriction on entry to the participation’
(emphasis added) in the bonus game, i.e., an additional eligibility
requirement that must be met in order to quality for the bonus game.” Ans.
9 (citing Parker ’306 138). As such, we agree with the Examiner that,
regardless of specific nomenclature, Parker teaches a two-step
eligibility/qualification process as claimed. Accordingly, we sustain the
rejection of claim 11 and also of claims 12—17, 19-22, 24—33, 35—38, and
40-42 as anticipated by Parker ’306.
The analysis above applies equally to the rejection over Parker ’308,
and we likewise sustain the Examiner’s rejection of claims 11—17, 19—22,
24—33, 35—38, and 40-42 as anticipated by Parker ’308. The Patent Owner
argues the obviousness rejection over either of the Parker references
combined with Canon merely by stating that Canon fails to cure the alleged
deficiencies of the Parker references. App. Br. 30—31. Having rejected the
Patent Owner’s arguments regarding the Parker references, we also sustain
the rejection of claims 23 and 39.
DECISION
For the above reasons, we AFFIRM the Examiner’s decision to reject
claims 11—17, 19—33, and 35^42.
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Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
AFFIRMED
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