Ex Parte Aoki et al

Patent Trials and Appeals Board

Jul 8, 2019

13484977 - (D) (P.T.A.B. Jul. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/484,977 05/31/2012 Dion K. Aoki
70243 7590 07/10/2019
NIXON PEABODY LLP
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.
247079-000461USC1 7131
EXAMINER
70 West Madison, Suite 3500 DUFFY,DAvrnw
CHICAGO, IL 60602
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
07/10/2019 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, ALLON G. ENGLMAN, JOEL R. JAFFE,
SHRIDHAR P. JOSHI, LARRY J. PACEY, and ALFRED THOMAS
Appeal2017-009772
Application 13/484,977
Technology Center 3700
Before EDWARD A. BROWN, WILLIAM A. CAPP, and
GEORGE R. HOSKINS, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Dion K. Aoki et al. ("Appellants") 1 appeal under 35 U.S.C. § 134
from the Examiner's final decision rejecting claims 1-8, 10-18, and 372 in
this application. The Board has jurisdiction over the appeal under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 The Appeal Brief identifies Bally Gaming, Inc. as the real party in interest.
Br. 1.
2 Claim 38 has been canceled. See Adv. Act. (dated Jan. 10, 2017). We,
therefore, do not review the various rejections of claim 38 set forth in the
Final Office Action on appeal, dated July 8, 2016.
Appeal2017-009772
Application 13/484,977
CLAIMED SUBJECT MATTER
Claims 1 and 10 are independent. Claim 1 illustrates the claimed
subject matter:
1. A gaming system comprising:
an input device for receiving a wager to play a wagering
game; and
a display for displaying an array of symbols that indicates
a randomly selected outcome of the wagering game;
wherein in response to the randomly selected outcome
including a winning symbol combination resulting in awarding a
credit award to a player, at least one symbol that is not a part of
the winning symbol combination is removed from the array and
causes other symbols displayed in the array to move into a
position of the array vacated by the at least one removed symbol,
the at least one removed symbol includes a subscript symbol
indicating that the symbol is to be removed, the at least one
removed symbol and subscript symbol appearing in any position
in the array of symbols.
Appeal Br., Claims App.
REJECTIONS ON APPEAL
Claims 6-8 and 11 stand rejected under 35 U.S.C. § 112 ,r 2 as
indefinite.
Claims 1-8, 10-15, 17, and 37 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Singer (US 7,887,407 Bl, iss. Feb. 15, 2011)
and Webb (US 2006/0046830 Al, pub. Mar. 2, 2006).
Claims 16 and 18 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Singer, Webb, and Van Asdale (US 2004/0023714 Al,
pub. Feb. 5, 2004).
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Application 13/484,977
ANALYSIS
A. Indefiniteness (claims 6---8 and 11)
The Examiner determines claims 6-8 and 11 are indefinite in reciting
a "cascade." Final Act. 3--4. The Examiner concludes Appellants'
Specification does not provide "a clear definition" of the term "cascade." Id.
at 3. The Examiner further determines it is unclear from the claims and the
Specification whether the term "cascade" refers to (1) a symbol removal and
movement operation such as described in independent claims 1 and 10, or
(2) some more particular movement of symbols such as like a waterfall. Id.
at 3--4.
Appellants respond that the term "cascade" in dependent claims 6-8
and 11 specifies one exemplary way of displaying the symbol removal and
movement recited in their respective independent claims 1 and 10. Br. 5---6
(citing Spec. ,r,r 68, 103, 132). Appellants especially rely on their
Specification disclosure that: "Generally, in a cascade, a symbol in the
primary display 14 disappears, and a symbol that is adjacent to the
disappearing symbol moves and fills in the position vacated by the
disappearing symbol." Spec. ,r 68; see also id. ,r,r 66-70 (describing Figs. 4--
6). Based on this disclosure, Appellants construe the independent claims as
"allow[ing] symbols from anywhere in the array to be moved into the
position vacated by the removed symbol," such that the replacement
"symbols do not have to be adjacent to the removed symbol as they must in a
cascade." Br. 5-6 (emphases added). Thus, Appellants construe dependent
claims 6-8 and 11 as requiring that "the cascade occurs with adjacent
symbols." Id. at 6.
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Application 13/484,977
The Examiner answers that Appellants' argument is inconsistent with
the above-quoted sentence in paragraph 68 of the Specification. Ans. 2.
According to the Examiner, Appellants construe the term "cascade" to mean
moving a symbol from an adjacent space, whereas the Specification instead
describes removing a symbol and moving an adjacent symbol into the
removed space. Id. The Examiner determines it is "unclear" whether "the
disappearing of the symbol is part of the 'cascade' action or not," because
Appellants' Specification indicates that it is, whereas the language of
claim 6 indicates that it is not. Id. at 2-3 ( emphasis added).
"[T]he statutory language of 'particular[ity ]' and 'distinct[ ness] "' in
35 U.S.C. § 112, second paragraph, requires claims "to be cast in clear-as
opposed to ambiguous, vague, indefinite-terms." In re Packard, 751 F.3d
1307, 1313 (Fed. Cir. 2014). A claim is indefinite when it contains words or
phrases whose meaning is unclear to a person of ordinary skill in the art.
Ex parte McAward, Appeal No. 2015-006416, 2017 WL 3669566, at *2---6
(PTAB Aug. 25, 2017) (precedential); Ex parte Miyazaki, Appeal
No. 2007-3300, 2008 WL 5105055, at *4 (BPAI Nov. 19, 2008)
(precedential) ("[t]he test for definiteness under 35 U.S.C. § 112, second
paragraph, is whether 'those skilled in the art would understand what is
claimed when the claim is read in light of the specification"') ( quoting
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576
(Fed. Cir. 1986)).
We conclude the meaning of the term "cascade" is clear in view of
Appellants' Specification. The Specification provides: "Generally, in a
cascade, a symbol in the primary display 14 disappears, and a symbol that is
adjacent to the disappearing symbol moves and fills in the position vacated
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Application 13/484,977
by the disappearing symbol." Spec. ,r 68 ( emphasis added). We determine
this disclosure reflects a special definition of the term "cascade" that applies
within the context of the present application, and specifies that a "cascade"
requires the symbol that moves into the array position vacated by the
removed symbol must come from an array position that is adjacent to the
vacated position. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)
(inventor is free to define specific terms used to describe the invention, if
"done with reasonable clarity, deliberateness, and precision ... so as to give
a person of skill in the art notice of the change") ( citing Intellicall, Inc. v.
Phonometrics, Inc., 952 F.2d 1384, 1387-88 (Fed. Cir. 1992)). In this
regard, we disagree with the Examiner's conclusion that the word
"Generally" does not clearly indicate a special definition is being provided.
See Final Act. 3. Instead, our view is that the word "Generally" suggests
that a general meaning is being provided, when coupled with the following
verbiage "in a cascade."
Thus, we do not sustain the rejection of claims 6-8 and 11 as
indefinite.
B. Obviousness over Singer and Webb (claims 1---8, 10---15, 17, and 3 7)
In opposing the obviousness rejection over Singer and Webb,
Appellants argue the rejected claims as a group, without arguing for the
patentability of any one claim separately from other claims. See Br. 5
("Claims 1-8, 10-18 and 37 may be considered as one group that will stand
or fall together with regard to the obviousness rejection based on Singer and
Webb."); id. at 6-10. Accordingly, we select claim 1 to decide the appeal as
to this rejection, with the other claims standing or falling with claim 1. See
37 C.F.R. § 4I.37(c)(l)(iv).
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Application 13/484,977
In rejecting claim 1, the Examiner finds Singer discloses a gaming
system that displays an array of symbols which determines the outcome of a
wager. Final Act. 6 (citing Singer, Fig. 1, 3:18-24, 3:57---64, 4:19-31). The
Examiner finds Singer also discloses that a winning symbol combination
triggers a symbol removal and replacement effect, in which "at least one
symbol ... is removed from the array and causes other existing symbols
displayed in the array to move into a position of the array vacated by the at
least one removed symbol." Id. at 6-7. The Examiner concludes, however,
that Singer does not disclose the "removed symbol includes a subscript
symbol indicating that the symbol is to be removed." Id. at 7.
The Examiner cites Webb as disclosing "a wagering game with
symbol replacement whereby symbols to be moved and replaced are
indicated with a subscript symbol." Id. (citing Webb, Figs. 5B & 6A). The
Examiner finds a person of ordinary skill in the art "would have recognized
the advantages of indicating the symbols to be moved so that players may
know what is going to occur in the game and be entertained by the
anticipation of the event." Id. The Examiner determines it therefore would
have been obvious to modify Singer, in view of Webb, "to have indicated
the symbols to be moved with a subscript in order to provide the player with
information on game events and heighten the excitement by giving a sense
of anticipation of an event that will occur." Id.
Appellants firstly contend the Examiner errs in finding that Webb
discloses a "removed symbol includes a subscript symbol," as recited in
claim 1. Br. 6-10. Appellants argue Webb's display of an arrow on an
inner reel through a window in an outer reel is not the display of a subscript
symbol. Id. at 7-10. According to Appellants, the arrow symbols on the
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Application 13/484,977
inner reel "are separate symbols" from the symbols on the outer reel, such
that the symbols on the outer reel cannot be said to include the arrow
symbols on the inner reel as a "subscript." Id. at 9. Appellants assert the
arrow symbols on the inner reel, instead, "are symbols all to themselves."
Id.
The Examiner answers that the term "subscript" "means below the
line" such that the subscript symbol appears "below the main symbol" (i.e.,
the "removed" symbol of claim 1 ). Ans. 3. The Examiner cites Webb's
Figure 5B as illustrating a "7" symbol on outer reel 202 having an associated
arrow symbol 208e below the line of the "7" symbol, indicating the "7"
symbol will be moved. Id.; see Webb Figs. 5A-5B, ,r,r 88 & 92. Therefore,
the Examiner concludes arrow symbol 208e is a "subscript" symbol to
the "7" symbol in Webb's symbol array. Ans. 3. The Examiner determines
Appellants' argument that a subscript symbol cannot be a "separate" symbol
from the removed symbol is inconsistent with Appellants' Figure 4, which
illustrates a bomb subscript symbol 70 as being separate from a removed
peach symbol 68. Id.
We conclude Webb's Figure 5B discloses an array of symbols in
which a symbol to be moved includes a subscript symbol. In Figure 5B, reel
set 54a comprises concentrically arranged inner reel 200 and outer reel 202.
Webb ,r,r 88 & 92, Fig. 5A (illustrating reels 200 and 202), Fig. 5B. Outer
reel 202 includes various conventional slot machine game symbols 206, such
as a "7" symbol, a cherry symbol, and a bell symbol, which combine with
other such symbols on reel sets 54b and 54c to determine whether the player
wins or loses a wager. Id. ,r,r 76, 88, 94, Figs. 5A & 5B. Outer reel 202 of
reel set 54a also includes windows 204 through which the player may see a
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Application 13/484,977
nudge symbol 208 on inner reel 200, in the shape of an upward or downward
pointing arrow. Id. ,r 88, Fig. 5A. If such a matching display occurs when
reels 200 and 202 stop spinning after an initial play of the game, then outer
reel 202 spins again in the direction indicated by the displayed arrow, to
provide another winning opportunity for the player based on the rearranged
symbols 206 of reel sets 54a-54c. Id. ,r,r 93-94.
Figure 5B illustrates that window 204d is disposed on outer reel 202
at a position corresponding to a subscript of the "7" symbol on outer
reel 202. Thus, whenever there is an alignment between window 204d of
outer reel 202 and a nudge symbol 208 of inner reel 200, the nudge symbol
appears as a subscript of the "7" symbol. Claim 1 requires no more than
that. We agree with the Examiner that the subscript symbol may be a
separate symbol for the removed symbol, such as shown in Appellants' own
Specification. See Spec. ,r,r 66-70 ( describing Figs. 4---6, in which the
subscript bomb symbol 70 is separate from the main peach symbol 68 that is
removed).
Appellants secondly contend that, even if Webb's nudge symbols 208
on inner reel 200 are found to be a subscript to symbols 206 on outer
reel 202, symbols 206 are "not removed from the array" as recited in
claim 1, "but rather just repositioned within the array." Br. 10 (emphases
added). Appellants assert that, because symbols 206 "are fixed on the outer
reels, they cannot be removed" from the array, as claimed. Id. Therefore,
Appellants conclude, "the combination of Webb and Singer would also not
disclose a 'removed symbol including a subscript"' as claimed. Id.
The Examiner answers that Appellants' argument "is based on taking
[Singer and Webb] piecemeal rather than the combination." Ans. 3--4.
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Application 13/484,977
Specifically, the Examiner cites Singer as disclosing removing a symbol
from a display, and cites Webb as disclosing using a subscript symbol to
indicate symbols "that are going to be moved" or otherwise "adjusted in
some way." Id. at 4 (emphases added). Using such a subscript symbol to
mark the symbols in Singer's display that will be removed, in the
Examiner's view, "takes a known method of labeling symbols to be moved
and allows for better notification to the player of the symbols that will be
removed from play." Id.
We conclude Appellants' argument in support of Examiner error is
not persuasive. Nonobviousness cannot be established by attacking
references individually when unpatentability is predicated upon a
combination of prior art disclosures. See In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986). Here, the Examiner relies on Singer, not on
Webb, as disclosing that a symbol is "removed" from a symbol array as
required by claim 1. The Examiner's finding is supported by a
preponderance of the evidence. See Singer, 4:19-31 (describing Figs. 1-3).
Appellants do not challenge that finding, or the Examiner's rationale for
why it would have been obvious to modify Singer to include subscript
symbol(s) to indicate which symbol(s) are going to be moved (specifically,
removed) within Singer's symbol array, based on Webb.
For the foregoing reasons, we sustain the rejection of claims 1-8, 10-
15, 17, and 37 as having been obvious over Singer and Webb.
C. Obviousness over Singer, Webb, and Van Asdale (claims 16 and 18)
In opposing the obviousness rejection of claims 16 and 18 over
Singer, Webb, and Van Asdale, Appellants rely solely on arguments already
considered above. See Br. 5 ("Claims 1-8, 10-18 and 3 7 may be considered
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Application 13/484,977
as one group that will stand or fall together with regard to the obviousness
rejection based on Singer and Webb."); id. at 10. Accordingly, for the
reasons provided above, we sustain this rejection. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
DECISION
The rejection of claims 6-8 and 11 as indefinite is reversed.
The rejection of claims 1-8, 10-15, 17, and 37 as unpatentable over
Singer and Webb is affirmed.
The rejection of claims 16 and 18 as unpatentable over Singer, Webb,
and Van Asdale is 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)(l)(iv).
AFFIRMED
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