Ex Parte EvansDownload PDFPatent Trial and Appeal BoardDec 31, 201511557869 (P.T.A.B. Dec. 31, 2015) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111557,869 11108/2006 29159 7590 01/05/2016 Neal, Gerber & Eisenberg LLP (IGT) 2 N. LaSalle Street Suite 1700 Chicago, IL 60602-3801 FIRST NAMED INVENTOR Christina M. Evans 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. 025094-3433 1244 EXAMINER CHAN, ALLEN ART UNIT PAPER NUMBER 3714 NOTIFICATION DATE DELIVERY MODE 01105/2016 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): amasia@ngelaw.com patents@ngelaw.com patents@igt.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte CHRISTINAM. EVANS Appeal2013-010331 Application 11/557,869 Technology Center 3700 Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and MARK A. GEIER, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE 1 Christina M. Evans (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner's decision to reject under 35 U.S.C. § 103(a) claims 1 Should there be further prosecution of this application (including any review for allowance), the Examiner may wish to review the claims for compliance under 35 U.S.C. § 101 in light of the Director's examination guidance on patent eligible subject matter. See 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74619 (Dec. 16, 2014)(and any updates thereof), which supplements the "Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.," Memorandum to the Examining Corps, June 25, 2014. Appeal2013-010331 Application 11/557,869 1---61 as unpatentable over Walker (US 2006/0073884 Al; pub. Apr. 6, 2006), Tessmer (US 2003/0104853 Al; pub. June 5, 2003), and Gerrard (US 2004/0048644 Al; pub. Mar. 11, 2004). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claimed subject matter "enables a plurality of players to play for one or more progressive awards, such as accumulated value progressive awards, at gaming machines or gaming devices of a gaming system." Spec. para. 15; Figs. 2B, 3, 4, 6-8. Claims 1, 14, 24, 29, 44, and 55 are independent. Claim 1 is illustrative of the claimed subject matter and recites: 1. A gaming system comprising: a plurality of gaming machines, each gaming machine including: at least one input device; at least one display device; at least one processor; and at least one memory device which stores a plurality of instructions, which when executed by the at least one processor, cause the at least one processor to operate with the at least one input device and the at least one display device to enable a player to play a primary game upon a wager; and a central controller configured to communicate with the plurality of gaming machines, the central controller programmed to: (i) maintain a progressive award, the progressive award associated with a first triggering event and a second triggering event, the second triggering event being different than the first triggering event, 2 Appeal2013-010331 Application 11/557,869 (ii) designate one of the players of one of the gaming machines as a winning player of the progressive award when the first triggering event occurs while the player is playing one of the primary games of one of the gaming machines, and event: (iii) for each occurrence of the first triggering (a) cause the second triggering event to subsequently occur, wherein said second triggering event occurs regardless of whether the winning player is playing one of the gaming machines, and (b) when the second triggering event subsequently occurs, cause the progressive award to be provided to the designated winning player. ANALYSIS Appellant argues claims 1---61 as a group. Appeal Br. 19-26. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv) (2014). Claims 2---61 stand or fall with claim 1. The Examiner finds that Walker discloses the gaming system substantially as claimed except Walker "does not explicitly disclose that the second triggering event subsequently occurs for each occurrence of the first triggering event." Final Act. 3; Ans. 5. The Examiner also finds that "[a]s shown by [Tessmer], triggering events which must occur are well known in the art, such as triggering events which occur after a passage of a predetermined amount of time (see par. [0045], an event trigger can be a passage of a fixed interval of time)." Final Act. 3; Ans. 5. The Examiner concludes that it would have been obvious to use the timed triggering event of Tessmer in place of the optional triggering events of Walker because "this is merely substituting one triggering event for another." Final Act. 3- 4; Ans. 5---6. The Examiner further finds that "as [Walker] teaches that it 3 Appeal2013-010331 Application 11/557,869 may be advantageous to provide an award to the first player (see par. [0012], [0013]), the combination of [Walker] and the timed triggering event of [Tessmer] would ensure that the first player receives the award as Walker intends." Ans. 6. 2 Appellant contends that modifying Walker with Tessmer results in Walker being unsatisfactory for its intended purpose. Appeal Br. 22-23; Reply Br. 2-5. In particular, Appellant argues: In Walker, the second condition that must be satisfied to provide the first player post-play benefits may or may not actually be satisfied and thus the first player may or may not be provided any post-play benefits. That is, each satisfaction of the first condition of Walker is not automatically coupled with a satisfaction of the second condition of Walker .... However, when the timed triggering event of Tessmer is combined with the optional triggering event of Walker, the second condition of Walker (i.e., the interpreted second triggering event of the gaming system of representative independent Claim 1) will always be satisfied and the first player will always be provided the post-play benefits. Such a modification substantially changes the principal operation of Walker (i.e., modifying Walker from not always providing post-play benefits to always providing post-play benefits) and results in Walker being unsatisfactory for its intended purpose. Appeal Br. 23 (emphasis in original); see also Reply Br. 2-5. Appellant's argument is not persuasive. Walker discloses: Numerous embodiments are described in this patent application, and are presented for illustrative purposes only. 2 The Examiner cites to Gerrard for disclosing "progressive jackpots and awards [being] well known in the art." Final Act. 4; Ans. 6. The Examiner concludes that it would have been obvious to modify Walker and Tessmer with the progressive awards of Gerrard "to produce a gaming system which has progressive awards." See id. Appellant does not dispute these findings or conclusions of the Examiner. See Appeal Br. 19-26; Reply Br. 2-7. 4 Appeal2013-010331 Application 11/557,869 The described embodiments are not, and are not intended to be, limiting in any sense. The presently disclosed invention(s) are widely applicable to numerous embodiments, as is readily apparent from the disclosure. One of ordinary skill in the art will recognize that the disclosed invention(s) may be practiced with various modifications and alterations, such as structural, logical, software, and electrical modifications. Although particular features of the disclosed invention( s) may be described with reference to one or more particular embodiments and/or drawings, it should be understood that such features are not limited to usage in the one or more particular embodiments or drawings with reference to which they are described, unless expressly specified otherwise. The present disclosure is neither a literal description of all embodiments of the invention nor a listing of features of the invention that must be present in all embodiments. The term[] . . . "some embodiments" ... mean[ s] "one or more (but not all) disclosed embodiments", unless expressly specified otherwise. Walker, paras. 183-186 (emphasis added). In other words, Walker discloses numerous embodiments that include scenarios where a second condition is satisfied, as well as scenarios where a second condition is not satisfied. See id.; see also id. at paras. 30-31; Final Act. 3; Ans. 5. Given that Walker discloses paying post-play benefits to a player upon satisfaction of a second condition in some embodiments (i.e., one or more (but not all) disclosed embodiments), we fail to see how the Examiner's proposed modification to Walker to include the timed triggering event of Tessmer would render 5 Appeal2013-010331 Application 11/557,869 -- - - - - - - - - - - '1 Walker unsatisfactory for its intended purpose._, Furthermore, we note that Walker explicitly discloses: In some embodiments [i.e., one or more (but not all) disclosed embodiments], the determination of whether the second condition is satisfied may be made repeatedly, such as during intervals within a time period. The time period may comprise, for example, a time period associated with the first player's eligibility for post-play benefits, such as within one hour after the first player terminates play at the first gaming device. Walker, para. 30 (emphasis added); see also Final Act. 3; Ans. 5. Moreover, assuming arguendo that modifying the structure of Walker, with the timed triggering event of Tessmer, may result in the second condition of Walker always being satisfied and the first player being guaranteed post-play benefits, as Appellant contends (see Appeal Br. 23; Reply Br. 3-5), if there are tradeoffs involved regarding features, costs, manufacturability, or the like, such things do not necessarily prevent the proposed combination. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) ("[A] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine."); Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) ("The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another."). 3 We note that Appellant acknowledges "the intended purpose of [Walker] of possibly providing post-play [benefits] to a player." Reply Br. 2-3. 6 Appeal2013-010331 Application 11/557,869 Appellant also contends that the Examiner does not consider Walker as a whole. See Appeal Br. 24--26; Reply Br. 5-7. According to Appellant, "the Examiner appears to rely on Tessmer for a triggering event that must occur while ignoring that Walker explains, in great detail, a vast array of different events which each may or may not occur to satisfy the second condition of Walker." Appeal Br. 24; Reply Br. 5. Appellant further contends: Walker describes over twenty different types of second conditions which each may or may not be satisfied to provide or not provide any post-play benefits. Accordingly, only with the benefit of improper hindsight reconstruction and not considering Walker as a whole is the Examiner ignoring Walker's extensive listing of different conditional events (which each may or may not occur) to pick and choose different elements from Walker and Tessmer (and Gerrard) to recreate the gaming system of representative independent Claim 1 to form the basis of these rejections. i\.ppeal Br. 26; see also Reply Br. 6-7. Appellant's contention is not persuasive. At the outset, as discussed above, (1) Walker discloses numerous embodiments that "are presented for illustrative purposes only" (Walker, para. 183 (emphasis added)); and (2) Walker's disclosure "is neither a literal description of all embodiments of the invention nor a listing of features of the invention that must be present in all embodiments" (Id. at para. 184 (emphasis added)). Further, as set forth above5 Walker discloses numerous embodiments that include scenarios where a second condition is satisfied, as well as scenarios where a second condition is not satisfied. See Walker paras. 30-31, 183-186; Final Act. 3; Ans. 5. Moreover, the Supreme Court has provided guidance when addressing Appellant's concern regarding picking and choosing. 7 Appeal2013-010331 Application 11/557,869 As is clear from cases such as Adams, a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does. This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known. KSR!nt'l Co. v. Teleflex, Inc., 550 U.S. 398, 418-19 (2007). Here, there is no dispute that the element relied on by the Examiner (i.e., a timed triggering event) is known in the prior art. See Final Act. 3; Ans. 5 ("As shown by [Tessmer], triggering events which must occur are well known in the art, such as triggering events which occur after a passage of a predetermined amount of time."). i\.ppellant does not dispute that substituting the timed trigger event of Tessmer for the optional triggering event of Walker would ensure that the first player receives an award, which is the Examiner's stated reason for prompting one skilled in the art to combine Walker and Tessmer. See id. To the contrary, Appellant acknowledges that modifying Walker with Tessmer would result in the first player receiving an award (i.e., post-play benefits). See Appeal Br. 23; Reply Br. 3-5. Accordingly, Appellant's contention regarding the Examiner picking and choosing elements and not considering the art as a whole is not persuasive. 8 Appeal2013-010331 Application 11/557,869 Further, to the extent that Appellant is arguing that Walker teaches away from the subject invention (see Reply Br. 6), 4 considering Walker as a whole would not lead a person of ordinary skill away from the Examiner's proposed combination. "A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). "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." DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391F.3d1195, 1201 (Fed Cir. 2004)). Here, as set forth above, Walker discloses numerous embodiments that include scenarios where a second condition is satisfied, as well as scenarios where a second condition is not satisfied. See Walker, paras. 30- 31, 183-186; Final Act. 3; Ans. 5. Moreover, Appellant does not direct us to any portion of Walker that criticizes, discredits, or otherwise discourages satisfying a second condition. To the contrary, Appellant acknowledges that Walker discloses that the second condition, which is required to provide the first player post-play benefits, may be satisfied. See Appeal Br. 23; Reply Br. 4. As such, considering Walker as a whole, which includes alternative embodiments where a second condition is not satisfied, does not teach away 4 Appellant contends: "labeling the different conditional triggering events of Walker as 'merely exemplary in nature' does not remedy that the Examiner is ignoring different portions of Walker that would lead away [teach away] from the gaming system of independent Claim 1." Reply Br. 6. 9 Appeal2013-010331 Application 11/557,869 from the subject invention. We also are not persuaded that the Examiner's proposed combination involves impermissible hindsight. As discussed above, the Examiner set forth a reasonable rationale underlying the conclusion of obviousness. Therefore, the Examiner did not rely on impermissible hindsight but rather relied on the knowledge of one skilled in the art at the time of the invention. Appellant does not provide any persuasive evidence or argument to the contrary. Accordingly, for the foregoing reasons, we sustain the Examiner's rejection of independent claim 1 as unpatentable over Walker, Tessmer, and Gerrard. We also sustain claims 2-61, which fall with claim 1. DECISION We AFFIRM the decision of the Examiner to reject claims 1---61 as unpatentable over Walker, Tessmer, and Gerrard. 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 ACL 10 Copy with citationCopy as parenthetical citation