Ex Parte Aoki

Patent Trial and Appeal Board

Sep 2, 2016

12913118 (P.T.A.B. Sep. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/913,118 10/27/2010
70243 7590
NIXON PEABODY LLP
70 West Madison, Suite 3500
CHICAGO, IL 60602
09/07/2016
FIRST NAMED INVENTOR
Dion K. Aoki
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
247079-000624USPT 3303
EXAMINER
YEN,JASONTAHAI
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
09/07/2016 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):
docketingchicago@nixonpeabody.com
ipairlink@nixonpeabody.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DION K. AOKI
Appeal2014-001149
Application 12/913,118 1
Technology Center 3700
Before PATRICK R. SCANLON, MICHELLE R. OSINSKI, and
BRUCE T. WIEDER, Administrative Patent Judges.
SCANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 1-8, 11-18, and 21-25 under 35 U.S.C. § 103(a) as
being unpatentable over Jackson (US 2009/0017906 Al, published January
15, 2009), Weiss (US 6,077, 162, issued June 20, 2000), and Yoshizawa
(US 2009/0233680 Al, published September 17, 2009).
The Examiner includes claims 10 and 20 in the sole ground of
rejection (Final Act. 2; Ans. 4), but contradictorily indicates that claims 10
1 Appellant identifies WMS Gaming, Inc. as the real party in interest.
Appeal Br. 1.
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Application 12/913, 118
and 20 would be allowable if rewritten in independent form (Final Act. 7;
Ans. 8). In view of this indication, Appellant indicates that claims 10 and 20
are not the subject of this appeal. Appeal Br. 4. We thus confine our
decision to claims 1-8, 11-18, and 21-25. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claims 1, 14, and 21 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter.
1. A method for conducting a community event
in which a plurality of players at respective gaming
terminals are participating, the method comprising:
displaying the community event on one or
more displays;
displaying a plurality of player-selectable
elements for each participating player on at least
one of the one or more displays, the player-
selectable elements including elements of a first
type and a second type;
in response to any participating player
selecting an element of the first type, using a
controller to award an individual award associated
with the selected element of the first type only to the
selecting player; and
in response to any participating player
selecting an element of the second type, using a
controller to award a community award associated
with the selected element of the second type to all
participating players, wherein the community award
is randomly selected from a group of community
awards displayed on the one or more displays.
Appeal Br., Claims App.
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ANALYSIS
Appellant argues claims 1-8, 11-18, and 21-25 as a group. Appeal
Br. 5. We take independent claim 1 as representative pursuant to 37 C.F.R.
§ 41.37(c)(l)(iv) (2015), with claims 2-8, 11-18, and 21-25 standing or
falling with claim 1.
The Examiner finds that Jackson discloses a method "for conducting a
community event in which a plurality of players at respective gaming
terminals are participating" including the steps of displaying the community
event on one or more displays and displaying a plurality of player-selectable
elements for each player. Final Act. 3. In particular, the Examiner finds that
Jackson's credit award symbols represent a first type of player-selectable
element and the jackpot symbols represent a second type of player-selectable
element. Id.
The Examiner further finds that Jackson discloses awarding an
individual award when a player selects an element of the first type. Id. The
Examiner, however, determines that Jackson does not disclose awarding a
community award to all participating players when a player selects an
element of the second type, wherein the community award is randomly
selected from a group of displayed community awards. Id.
The Examiner finds that Weiss discloses a community game in which
a jackpot is awarded to all participating players when at least one player
achieves a winning outcome by selecting a correct tile. Id. at 3--4. The
Examiner further finds that that this procedure provides "a cooperative
group gaming experience which encourages camaraderie and communal
spirit by allowing a plurality of players to participate and share in an award
when at least one player in a community of players achieves a winning
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outcome." Id. at 4 (citing Weiss, 1:47-52). The Examiner determines that it
would have been obvious to one of ordinary skill in the art at the time of the
invention to incorporate "the teaching of Weiss" (i.e., awarding a jackpot to
all participating players when at least one player achieves a winning
outcome) into Jackson's "pick-a-tile" communal game in order to provide
the cooperative group gaming experience that encourages camaraderie and
communal spirit. Id.
In addition, the Examiner finds that Yoshizawa discloses randomly
selecting a community award or jackpot from a group of displayed jackpots
and concludes that "[i]t would have been obvious to one of ordinary skill in
the art to utilize the teaching of Yoshizawa into [the combination of Jackson
and Weiss] in order to enhance the game play by introducing a random
element to the game play." Id. (citing Yoshizawa, Fig. 6A, i-f 233).
Appellant argues that Jackson discloses "a game that is premised on
competition between multiple players" and "[t]he fundamental nature of
Jackson's game is distinguishable from the 'community' game of the
pending claims." Appeal Br. 6. This argument is not persuasive because it
attacks Jackson individually and fails to address the Examiner's proposed
combination of references. One cannot show nonobviousness by attacking
references individually where the rejections are based on a combination of
references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellant also argues that there is no "meaningful distinction"
between the credit awards and jackpot awards of Jackson. Appeal Br. 7.
According to Appellant, "[t ]he jackpot award (grand prize) and all the other
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awards associated with selections in Jackson differ only in the amount of
credits that are awarded." Id.
We disagree with this argument. As noted above, the Examiner finds
that Jackson discloses "credit award" symbols that represent a first type of
player-selectable element and "jackpot" symbols that represent a second
type of player-selectable element. Final Act. 3. Jackson discloses a slot
machine that includes first monitor screen 40 for displaying a base game and
second monitor screen 80 for displaying a communal bonus game. Jackson
i-f 31, Fig. 1. The communal bonus game includes displaying a plurality of
masked symbols 300 on second monitor screen 80. Id. i-f 33, Fig. 3. During
play of the communal bonus game, various players select from the plurality
of the masked symbols and are awarded the number of credits corresponding
to the selected symbols. Id. i-fi-134--38, Figs. 4--8. For example, "Player A"
selects symbols 320, 330, 340, 350, and 360 and is awarded 215 credits. Id.
i-f 34, Fig. 4. The selection of symbol 540, which represents the "Grand
Prize," ends the communal bonus game. Id. i-f 38, Fig. 8.
Based on this disclosure, we agree with the Examiner's finding that
Jackson's grand prize or jackpot symbol 540 represents a second type of
element, while the other, non-jackpot symbols represent a first type of
element. Contrary to Appellant's assertion, symbol 540 does not differ from
the other symbols only in the amount of credits awarded. Instead, jackpot
symbol 540 also differs in that, unlike the other symbols, its selection ends
the communal bonus game. This is a meaningful distinction that persuades
us the Examiner's factual finding is supported by a preponderance of the
evidence.
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Next, Appellant argues that the combination of Jackson and Weiss
does not disclose the limitation of awarding a community award to all
participating players because "Weiss discloses a community game system
that has a different type of award that is split between a primary value to the
selecting player and a residual value to all the other players." Appeal Br. 7.
This argument is not persuasive. Appellant is correct that Weiss
discloses awarding a portion of a communal jackpot-not the entire
jackpot-to each participating player. See Weiss, 2:3---6; see also id. at
4:42-56 (describing awarding a primary award allocation from the jackpot
to the player having the winning outcome and a residual award allocation to
all the other participating players). Each award (both primary and residual)
of Weiss, however, is allocated from the jackpot being shared by the
community of players and, in that sense, is a "community award." Appellant
has not persuaded us that the claim language requires the "community
award" awarded to each player be the same amount.
Last, Appellant argues that the Examiner does not off er any rationale
for combining Weiss' community award with Jackson's game. Appeal
Br. 8. In particular, Appellant argues that Weiss teaches away from the
"winner take all jackpot" type of game of Jackson, and the proposed
combination of Jackson and Weiss would be improper because it would
change the fundamental operation of Jackson. Id. Appellant further argues
that "Weiss would not be combined with Jackson [because] the two
underlying principles of the games (competition versus cooperation) are
fundamentally opposed to each other." Id. at 9.
The Examiner, however, does provide a rationale for combining
Jackson and Weiss. Specifically, the Examiner concludes it would have
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been obvious to incorporate Weiss' teaching of awarding a jackpot to all
participating players into Jackson's "pick-a-tile" communal game in order to
provide the cooperative group gaming experience that encourages
camaraderie and communal spirit. Final Act. 4. Thus, we determine that the
Examiner articulates adequate reasoning based on rational underpinnings to
explain why one of ordinary skill in the art would have been led to make the
proposed modification.
We also find Appellant's contention that Weiss "teaches away" from
the type of game disclosed by Jackson unpersuasive. In disclosing its
cooperative game concept, Weiss does not criticize Jackson's "winner take
all jackpot" game. Instead, Weiss expresses a preference for encouraging
"camaraderie and communal spirit" by allowing a plurality of players to
share in an award. Weiss, 1:48-52. As such, Weiss does not teach away
from the proposed combination. See DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) ("A reference
does not teach away, however, if it merely expresses a general preference for
an alternative invention but does not 'criticize, discredit, or otherwise
discourage' investigation into the invention claimed. In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004).").
Moreover, we disagree with Appellant's arguments that the
underlying principles of Jackson and Weiss are fundamentally opposed to
each other and the proposed combination would change the fundamental
operation of Jackson. The differences between Jackson and Weiss are not as
fundamental or extensive as Appellant suggests. Indeed, Jackson and Weiss
both relate to casino-type gaming methods and systems. Jackson i-f 3; Weiss,
1:5-10. And, as correctly noted by the Examiner, paragraph 24 of Jackson
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describes, in addition to the "winner take all" jackpot, "a shared event" in
which a player triggering a bonus winning event may be provided with a
portion of the bonus, while other players also may win portions of the bonus.
Ans. 9-10. Appellant's argument that this passage of Jackson does not
encourage collaboration and does not disclose a communal award where all
players benefit from one player's selection (Reply Br. 3) is not persuasive.
Accordingly, the differences between Jackson and Weiss identified by
Appellant are not so significant as to preclude one of ordinary skill in the art
from considering the proposed modification. Merely establishing that there
are differences between two references is not sufficient to establish that one
of ordinary skill in the art would be discouraged from combining the
references. See In re Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir. 1992)
(determining that two prior art references having different theories of
musical notation systems does not make a sound prima facie case of
obviousness impossible). For these reasons, we are not persuaded that the
Examiner's proposed modification would change Jackson's principle of
operation.
In view of the above, Appellant's arguments do not apprise us of
error, and we sustain the rejection of claim 1 and of claims 2-8, 11-18, and
21-25 grouped therewith.
DECISION
We affirm the decision of the Examiner rejecting claims 1-8, 11-18,
and 21-25.
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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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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