11227869 (B.P.A.I. Feb. 7, 2011)

Ex Parte Blankstein

Board of Patent Appeals and InterferencesFeb 7, 2011

11227869 (B.P.A.I. Feb. 7, 2011)

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. 11/227,869 09/15/2005 Michael J. Blankstein 247079-000099USC1 8348 70243 7590 02/07/2011 NIXON PEABODY LLP 300 S. Riverside Plaza 16th Floor CHICAGO, IL 60606 EXAMINER COBURN, CORBETT B ART UNIT PAPER NUMBER 3714 MAIL DATE DELIVERY MODE 02/07/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte MICHAEL J. BLANKSTEIN ____________________ Appeal 2009-009806 Application 11/227,869 Technology Center 3700 ____________________ Before: WILLIAM F. PATE III, JOHN C. KERINS, and STEVEN D.A. MCCARTHY, Administrative Patent Judges. PATE III, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-009806 Application 11/227,869 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 23, 25-30, and 32-42. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to bonus games for a gaming machine with a game show theme. Claim 23, reproduced below, is illustrative of the claimed subject matter: A method of conducting a wagering game on a gaming machine, comprising: (i) receiving a wager to play a basic game including a randomly selected outcome; (ii) in response to the randomly selected outcome being a bonus-game entering outcome, displaying a representation of a randomly selected string of concealed numbers; (iii) randomly selecting a number from a plurality of numbers; (iv) displaying the randomly selected number via an animated sequence of an object having indicia indicating the plurality of numbers; (v) receiving a selection from a player as to whether the randomly selected number is higher or lower than a next concealed number in the randomly selected string of concealed numbers; (vi) revealing the next concealed number in the randomly selected string of concealed numbers; (vii) repeating acts (iii), (iv), (v) and (vi) if the player selection is correct; and (viii) awarding a player a bonus award in response to the player selection being a correct selection. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Yoseloff US 6,312,334 Nov. 6, 2001 Appeal 2009-009806 Application 11/227,869 3 (Deluxe) Dice Game, http://gscentral.net/dice.htm (last visited Jan. 4, 2011) (hereinafter “Dice Game”). REJECTION Claims 23, 25-30 and 32-42 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Yoseloff in view of Dice Game and Official Notice. Ans. 3. OPINION Appellant states that claims 23, 25-30, and 32-42 are argued as a group that stands or falls together. Br. 5. Appellant discusses each of the independent claims under a separate heading but, in each case, advances substantially the same arguments. In light of the differing scope of independent claims 23, 29 and 36 some separate discussion is warranted. Dependent claims are grouped with their respective parent claims. In making the above rejection the Examiner read the price in Dice Game as “a randomly selected string of concealed numbers.” Ans. 5. Appellant has successfully shown this finding is erroneous because the concealed numbers are tied to the price of a prize—a non-random number. Br. 6. Despite the Examiner’s erroneous finding, we agree with the Examiner’s conclusion that the subject matter described by independent claims 23, 29 and 36 amounts to nothing more than combining techniques known in the prior art to yield predictable results and therefore would have been obvious to one of ordinary skill in the art. First, claims 23 and 29 do not actually require randomly selecting a string of numbers. Method claim 23 requires “displaying a representation of a randomly selected string of concealed numbers.” The step of displaying a Appeal 2009-009806 Application 11/227,869 4 “representation” of random numbers, such as the blank boxes depicted in Figure 10, a row of asterisks, or a row of underscores, is indistinguishable from the step of displaying a representation of non-random numbers. Apparatus claim 29 requires “at least one display for displaying a plurality of hidden numbers, the plurality of hidden numbers being determined randomly.” The functional recitation requiring the display to display a random number does not impart any structural distinction to the claimed structure—the display—as compared to a display that displays a non-random number. Thus, even though Appellant has successfully shown the Examiner incorrectly found that the price in Dice Game was “random,” this is irrelevant to the subject matter described by claims 23 and 29, since those claims do not actually require random numbers as Appellant suggests. Claim 36 requires the bonus game to include “a first randomly determined hidden number and a second randomly determined hidden number.” For purposes of claim 36, and, assuming arguendo, that random numbers were a requirement of claims 23 and 29, our finding that the price in Dice Game is not random does not change our ultimate conclusion of obviousness. We agree with the Examiner’s alternate rationale that it would have been obvious to one of ordinary skill in the art to generate random numbers for the hidden numbers as opposed to relying upon the price of an item such as a car. Ans. 8. One of ordinary skill in the art would recognize that eliminating an actual prize, such as a car, would be desirable, if not essential, when implementing the game in electronic form. Ans. 8. Without the value of an actual prize to determine the concealed numbers, it would have been obvious to one of ordinary skill in the art to use random numbers as the concealed numbers. Appeal 2009-009806 Application 11/227,869 5 Appellant argues that in contrast to Dice Game, which displays the random number at the same time it is selected via the dice roll, the claims require a random number to be first be selected and then displayed. Br. 7. We adopt the Examiner’s response to this argument as our own. See Ans. 8. Regarding Appellant’s argument that the Examiner failed to establish that the proposed combination would yield predictable results (Br. 9-11) and that there is no teaching, suggestion, or motivation to make the proposed combination (Br. 11-12), we again adopt the Examiner’s responses as our own. See Ans. 10-12. DECISION For the above reasons, the Examiner’s rejection of claims 23, 25-30 and 32-42 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED nlk NIXON PEABODY LLP 300 S. Riverside Plaza 16th Floor CHICAGO IL 60606