Ex Parte Gagner

Board of Patent Appeals and Interferences

Sep 12, 2008

10223506 (B.P.A.I. Sep. 12, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARK B. GAGNER
____________

Appeal 2007-4344
Application 10/223,506
Technology Center 3700
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Decided: September 12, 2008
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Before WILLIAM F. PATE, III, LINDA E. HORNER, and DAVID B. WALKER,
Administrative Patent Judges.

WALKER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b)(2002). We
affirm-in-part.
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Appellant claims a reel spinning gaming machine that displays a portion of
its mechanical reels using a stroboscopic effect. (Specification 1:5-6). Claims 1
and 22, reproduced below, are representative of the subject matter on appeal.
1. A gaming machine for conducting a wagering game,
comprising:
a physical rotating reel including a perimeter and a
plurality of symbol positions along the perimeter;
a strobe for illuminating the reel; and
a control system for triggering the strobe at any
one of a plurality of frequencies selectable by the control
system when a portion of the reel perimeter selected by
the control system is at a display area generally within a
view of a player.
22. A gaming machine for conducting a wagering game,
comprising:
a physical rotating reel including a perimeter and a
plurality of symbol positions along the perimeter;
a strobe for illuminating the reel; and
a control system for repeatedly triggering the
strobe when a selected portion of the perimeter is at a
display area generally within a view of a player such that
the rotating reel appears to stop with the selected portion
in the display area even though the reel is still in actual
motion.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejection:
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Wayne US 3,684,290 Aug. 15, 1972
Kurth US 5,095,252 Mar. 10, 1992
Jooste GB 2 089 086 A Jun. 16, 1982

1. Claim 22 stands rejected under 35 U.S.C. § 102(b) as anticipated by
Jooste.
2. Claims 1-21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Jooste in view of Kurth and Wayne.

ISSUE
The issue before us is whether the Examiner erred in rejecting 1) claim 22
under 35 USC § 102(b) as anticipated by Jooste, and 2) claims 1-21 under 35
U.S.C. § 103(a) as unpatentable over Jooste in view of Kurth and Wayne. The
anticipation issue turns on whether Jooste teaches a control system for repeatedly
triggering the strobe such that the rotating reel appears to stop with the selected
portion in the display area even though the reel is still in actual motion. The
obviousness issue turns on whether it would have been obvious to one of skill in
the art at the time of the invention to use the stroboscopic control system of Kurth
to replace the mechanical stopping means of Jooste.
Rather than repeat the arguments of Appellant or the Examiner, we make
reference to the Briefs and the Answer for their respective details. Only those
arguments actually made by Appellant have been considered in this decision.
Arguments which Appellant could have made but chose not to make in the Briefs

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have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2007).

FINDINGS OF FACT
We find the following enumerated findings to be supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed.
Cir. 1988) (explaining the general evidentiary standard for proceedings before the
Office).

1. Jooste teaches a gaming machine with one or more windows and a reel
assembly with a plurality of reels with symbols on their circumferences for
display at the windows. The reels are rotatable about an axis and the
symbols, which may be animals or humans, are upright when the reels are
arranged for rotation about an upwardly extending axis. One or more
stroboscopes can be used for flashing to illuminate intermittently the part of
each reel displayed at each window of the machine as the reels rotate, to give
an impression of movement of the symbols (Jooste, Abstract).
2. Each stroboscope may be operable in response to means rotatable with an
associated reel, for example to give an appearance of movement of animals
or humans (Jooste, 1:26-29).
3. As in conventional gaming machines of this nature, stopper arms 48 having
pawls 50 for engaging the star wheels 30 attached to reels 16, are provided
in the machine. The stopper arms are arranged so that they are normally in
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engagement with the notches in the star wheels and hold the reels in position
in which symbols on the reels are appropriately aligned with the windows 22
in the machine (Jooste, 2:8-20).
4. Jooste discloses stopper means for stopping the reels in random positions of
the reels while ensuring that symbols are approximately located at said at
least one window of the machine when the reels have stopped, solenoids to
operate the stopper means both for releasing the stopper means to enable the
reels to be rotated by the kicker mechanism and for stopping the reels, and a
timer for operating the solenoids in sequence so that the reels stop at
different times (Jooste, claims 11 and 12, 3:20-32).
5. Jooste does not disclose repeatedly triggering the strobe when a selected
portion of the perimeter is at a display area generally within a view of a
player such that the rotating reel appears to stop with the selected portion in
the display area even though the reel is still in actual motion.
6. Kurth teaches a system employing a stroboscopic light source that permits
an operator to remotely inspect and analyze high speed repetitive motion of
machines. The system enables an operator to freeze motion or permit slow
motion in either direction of moving parts in their natural environment
(Kurth, Abstract).
7. The strobe flash enables the human eye to observe action which is occurring
at high speed as though the action had stopped or is occurring in slow
motion (Kurth, col. 1, ll. 14-17).
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8. Kurth provides the ability to vary the relationship between an external
synchronization signal and the control signal which controls the firing of the
flash in each cycle from 0 degrees to 360 degrees and also provides the
ability to continuously adjust the phase relationship between the external
synchronization signal and the firing of the flash in each cycle to observe the
movement of the target object in slow motion (Kurth, col. 3:20-28).
9. Kurth enables an operator to inspect any event in the cycle of the target
object and also to inspect the target object in either forward or reverse slow
motion (Kurth, col. 4, ll. 37-41).
10. An operator may introduce phase control to allow observation of a
particular event during the revolution or cycle of the target object (Kurth,
col. 8, ll. 18-21). By adjusting the phase delay, an operator can vary the
relationship between the synchronization signal and the actual flash from
zero degrees through 360 degrees (Kurth, col. 8, ll. 48-50). The operator can
observe a target object in slow motion by steadily increasing or decreasing
the phase delay between the synchronization signal and the flash trigger
signal using a variable oscillator that steps up or down a phase delay counter
to vary the delay between flashes (Kurth, col. 10, ll. 12-43).
11. Wayne teaches an electronically operated gaming device which is activated
by a disc operated switch, and which can be enabled by an arm or handle
connected to the gaming device. The reels are stopped in sequence by a
series of reel stopping mechanism that are actuated in turn by a series of
time delay outputs (Wayne, Abstract).
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12. Wayne describes certain shortcomings of prior mechanical gaming
devices. The prior art devices used a plurality of reels that are started to
rotate by a handle, which is pulled down to sharply start gears and wheels
within the gaming devices rotating or, in the more modern sophisticated
devices, to engage an electric motor which starts the reels rotating (Wayne,
col. 1, ll. 18-23).
13. Wayne notes that prior art gaming devices were sometimes mechanically
operated with gears and levers within the mechanism. Such gears and levers
and other mechanical mechanisms are cumbersome, complex, and
unreliable. Such mechanical devices require a considerable amount of
maintenance in order to keep them operating in their top condition and to
make the proper pay out should the right indicia be aligned on the reels
(Wayne, col. 1, ll. 56-64).
14. Another disadvantage of the prior art devices is that, because of the fact
that they are mechanically operated, the devices are subject to wear. Once
the gears, linkages, etc., within the gaming device become worn, the
tolerances therein become sloppy and error is oftentimes introduced into the
mechanisms, that is they pay off coins when they should not and vice versa
(Wayne, col. 1, l. 65 – col. 2, l. 3).
15. Wayne teaches an electrical stopping mechanism, wherein after a preset
time the reel stop circuit provides a stop signal on a lead to the first reel,
causing that reel to stop. Each successive reel is stopped in turn by variable
clocks in a timing circuit, which sequentially energize the stopping circuit
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for each reel after predetermined random time delays (Wayne, col. 6, ll. 34-
44).

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631
(Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).
“Section 103 forbids issuance of a patent when ‘the differences between the
subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.’” KSR
Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1734 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations including
(1) the scope and content of the prior art, (2) any differences between the claimed
subject matter and the prior art, (3) the level of ordinary skill in the art, and (4)
where in evidence, so-called secondary considerations. Graham v. John Deere
Co., 383 U.S. 1, 17-18 (1966). See also KSR, 127 S.Ct. at 1734 (“While the
sequence of these questions might be reordered in any particular case, the
[Graham] factors continue to define the inquiry that controls.”)
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the initial
burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468, 1472 (Fed.
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Cir. 1984). Only if this initial burden is met does the burden of coming forward
with evidence or argument shift to the appellant. Id. at 1445. See also Piasecki,
745 F.2d at 1472. Obviousness is then determined on the basis of the evidence as a
whole and the relative persuasiveness of the arguments. See Oetiker, 977 F.2d at
1445; Piasecki, 745 F.2d at 1472.

ANALYSIS
Rejection of claim 22 as anticipated by Jooste
Appellant argues that Jooste fails to disclose or suggest “a control system for
repeatedly triggering the strobe when a selected portion of the perimeter is at a
display area generally within a view of a player such that the rotating reel appears
to stop with the selected portion in the display area even though the reel is still in
actual motion” as required by claim 22 (Br. 8). According to Appellant, Jooste
teaches that stroboscope lamp 80 is activated “to give an impression of movement
of the symbols” and to “give an appearance of movement of animals or humans”
(Br. 8-9; citing Jooste, Abstract and col. 1, ll. 28-29). The Appellant therefore
argues that even if the stroboscopic lamp activation system of Jooste were
considered a control system, it clearly is not configured to repeatedly trigger the
strobe such that the rotating reel appears to stop with the selected portion in the
display area even thought the reel is still in actual motion. Appellant argues that
Jooste in fact teaches the opposite (Br. 9).
The Examiner cites Jooste, col. 2, ll. 83-91, as teaching a control system for
repeatedly triggering the strobe when a selected portion of the perimeter is at a
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display area generally within a view of a player (Answer 4). However, the
Examiner provides no citation to the reference as disclosing “such that the rotating
reel appears to stop with the selected portion in the display area even though the
reel is still in actual motion”. The Examiner disagrees with the Appellant,
because although the invention is intended to give the
impression of movement of symbols, the emphasis of the
strobes flashing upon an associated area of the reels gives
a “perceived” notion that the reel symbols are stationary
or stopped (the flashing enables the player to visually see
the symbol motion).
(Answer 10). The Examiner further found the limitation “such that the rotating
reel appears to stop with the selected portion in the display area even though the
reel is still in actual motion” to be a statement of intended use, and concluded that
Jooste is capable of that intended use (Answer 11-12). Appellant responds that the
Examiner’s intended use rationale is improper because Jooste in incapable of
performing the acts that the claimed control system is configured to perform (Br.
10).
We agree with the Appellant. Jooste teaches the activation of the
stroboscopic lamp only “to give an impression of movement of the symbols” and
to “give an appearance of movement of animals or humans” (Findings of Fact 1-
2). It does not teach repeatedly triggering the strobe such that the rotating reel
appears to stop with the selected portion in the display area even thought the reel is
still in actual motion (Finding of Fact 5). We do not find the Examiner’s intended
use argument persuasive, because the only explanation provided for why Jooste is
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capable of triggering the strobe such that the rotating reel appears to stop even
thought the reel is still in actual motion is that the player is given the perceived
emphasis on the part of the reels on which the strobes flash, which the Examiner
found would make the associated area of the reel appear to stop, although it is
continuing to move (Br. 11). This rationale is not supported by Jooste, which uses
the strobe to give an impression of movement (Findings of Fact 1-2), and uses a
separate stopper means for stopping the reels in random positions of the reels while
ensuring that symbols are approximately located at at least one window of the
machine when the reels have stopped (Findings of Fact 3-4). We see no indication
that the control system of Jooste is capable of triggering the strobe such that the
rotating reel appears to stop with the selected portion in the display area even
though the reel is still in actual motion (Finding of Fact 5). The Appellant thus has
shown error in the Examiner’s rejection of claim 22 as anticipated by Jooste.

Rejection of claims 1-21 as unpatentable over Jooste in view of Kurth
and Wayne.
The Appellant makes two main arguments against the combination of Jooste
in view of Kurth and Wayne: 1) Kurth is not analogous art to Jooste (Br. 11-13);
and 2) Wayne fails to support the combination advanced by the Examiner (Br. 18-
23).
With respect to the analogous art argument, the Examiner found
Furthermore, Jooste provides a stroboscope system for
purposes of giving the impression or appearance of
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movement. While Kurth provides a means for a person to
visually see movement. Thus, making it particularly
pertinent to the particular problem with which Jooste is
concerned, considering that if Jooste is concerned with
giving the impression of movement one has to be capable
of seeing or visualizing the movement (particular
problem to be solved). One of ordinary skill would be
motivated to combine the teachings to find alternative
ways to implement a stroboscope lighting system to
enhance visualization of moving objects or give a
participant the ability to analyze moving objects, as
taught by Kurth (Abstract).
(Answer 13) (emphasis in original).
The Appellant argues that Kurth would not have logically commended itself
to a wagering game system designer trying to solve the problem faced by the
Appellant, which Appellant describes as “lessening the processing burden on the
control system” (Br. 12, citing Specification, 3:7-8 and 8:11). However, the
Supreme Court in KSR found error in the lower court’s holding that courts and
patent examiners should look only to the problem the patentee was trying to solve.
KSR, 127 S.Ct. at 1742. Under the correct analysis, any need or problem known in
the field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed. Id.
We therefore find that the Appellant takes too narrow a view of what would
be analogous art. Both Jooste and Kurth use a strobe to control the speed of
apparent motion of the target (Findings of Fact 2 and 6), albeit for respective
purposes of operating a game machine and inspecting equipment. The difference
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is that Jooste teaches a mechanical stopping means to physically stop the reels
(Findings of Fact 3-4), while Kurth teaches that it is possible also to use the strobe
to enable the human eye to observe action which is occurring at high speed as
though the action had stopped (Finding of Fact 7). We find Kurth to be analogous
art in this instance.
Wayne teaches that gears and levers and other mechanical mechanisms used
in certain gaming devices are cumbersome, complex, and unreliable (Findings of
Fact 13-14); and uses an electrical stopping mechanism (Finding of Fact 15) rather
than the mechanical stopping means of Jooste (Findings of Fact 3-4). Wayne thus
teaches that electrical alternatives to mechanical mechanisms are preferable in
gaming devices similar to those disclosed in Jooste, and provides the motivation to
substitute other methods without gears and levers for the mechanical mechanism of
Jooste. Kurth provides an alternate stopping mechanism, wherein the frequency of
the strobe already present in Jooste can be adjusted to permit the gaming machine
operator to observe action which is occurring at high speed (e.g., the spinning of
the reels) as though the action had stopped (Finding of Fact 7). We conclude that
Wayne does support the Examiner’s proposed combination and provides
motivation to replace the mechanical stopping means of Jooste with a non-
mechanical stopping means.
The Appellant argues claims 1-10 and 13-20 as a group. We treat claim 1 as
representative.
The Appellant argues that neither Jooste nor Kurth teaches an act of, or
control system for, triggering the strobe “at any one of a plurality of frequencies
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selectable by the control system” (Br. 14-15). The Examiner disagrees (Answer
14). We do not find the Appellant’s argument persuasive, because the phase
control process of Kurth (Finding of Fact 10) necessarily varies the frequency of
the strobe light among a plurality of selectable frequencies to allow the operator to
view the movement of the target either forward or backward in slow motion or to
apparently stop the rotation at any phase of rotation, even though the target object
continues to rotate (Findings of Fact 7-9). The Appellant thus has failed to show
that the Examiner erred in rejecting claim 1. Claims 2-10 and 13-20 are not argued
separately and thus fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)(2007). See
also In re Young, 927 F.2d 588, 590 (Fed. Cir. 1991).
The Appellant separately argues that claims 11-12 are patentable because
neither Jooste nor Kurth teach a control system that triggers the strobe each time
the selected portion of the perimeter is at the display area so that the reel appears
stationary (Br. 16).1 As stated above in connection with the anticipation rejection,
Jooste does not meet this claim limitation (Finding of Fact 5). However, Kurth
does teach that the strobe flash enables the human eye to observe action which is
occurring at high speed as though the action had stopped or is occurring in slow
motion (Finding of Fact 7), which meets the disputed limitation.
The Appellant further argues that the modification of Jooste to meet this
limitation would render Jooste unsatisfactory for its intended purpose, and

1 We note that claim 12 depends from claim 1 and does not contain the challenged
claim limitation. We therefore treat claim 12 as falling with claim 1, from which it
depends.
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therefore there is no suggestion or motivation to make the proposed modification
(Reply Br. 15, citing In re Gordon). The Appellant also argues, with respect to
claims 5, 11-12, and 15, that the Examiner has failed to consider Appellant’s
remarks concerning the extent to which Kurth teaches away from the combination
as alleged (Reply Br. 16). Specifically, the Appellant argues that
There is no teaching or suggestion in either Jooste
or Kurth that would lead one of ordinary skill in the art at
the time of the invention to modify Jooste “so that the
reel appears stationary,” as recited in claims 5, 11-12,
and 15. As is noted above, modifying Jooste “so that the
reel appears stationary” would undeniably render the
device of Jooste being modified unsatisfactory for its
intended purpose of conveying the appearance of motion
of the reel symbols and, accordingly, there is absolutely
no suggestion or motivation to make the proposed
modification “so that the reel appears stationary.” See In
re Gordon, supra.
(Reply Br. 22). The Examiner found that Kurth discloses that strobe “flashes
enables the human eye to observe action which is occurring at high speed as
though the action had stopped or is occurring in slow motion,” thus making it
particularly pertinent/relevant to the particular problem with which Jooste is
concerned (Answer 19, quoting Kurth col. 1, ll. 13-15). According to the
Examiner, if the player is unable to observe the motion of the reels, then they are
incapable of being provided the impression of movement of the symbols. The
Examiner therefore concluded that one of ordinary skill would be motivated to
modify the control system of Jooste with the control system of Kurth to provide a
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stroboscope lighting system that enhances visualization of moving objects and
gives a participant the ability to analyze the moving objects as taught by Kurth
(Answer 19, citing Kurth, Abstract and col. 1, ll. 13-15).
We do not find the Appellant’s argument persuasive, because we find no
teaching away in Kurth. Both Jooste and Kurth use a strobe to control the speed of
apparent motion of the target (Findings of Fact 2 and 6). The difference is that
Jooste teaches a mechanical stopping means to physically stop the reels (Findings
of Fact 3-4), while Kurth teaches that it is possible also to use the strobe to enable
the human eye to observe action which is occurring at high speed as though the
action had stopped (Finding of Fact 7). Kurth teaches that the same stroboscopic
system can enable the human eye to observe action which is occurring at high
speed as though the action had stopped or is occurring in slow motion (Id.), so
Appellant’s argument that using the strobe to apparently stop the action of the reels
would render Jooste unsatisfactory for its intended purpose to give an appearance
of movement of animals or humans is not persuasive. Moreover, Wayne teaches
that using mechanical mechanisms with gears and levers as in the stopping means
of Jooste is undesirable (Findings of Fact 12-14), and provides the motivation for
substituting the stroboscopic stopping means of Kurth for the mechanical stopping
means of Jooste (Finding of Fact 15).
CONCLUSIONS
We conclude that Appellant has shown that the Examiner erred in rejecting
claim 22 under 35 U.S.C. § 102(b) as anticipated by Jooste. We conclude that
Appellant has not shown that the Examiner erred in rejecting claim 1-21 under
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35 U.S.C. § 103(a) as unpatentable over Jooste in view of Kurth and Wayne.

DECISION
The decision of the Examiner to reject claims 1-21 is affirmed. The decision
of the Examiner to reject claim 22 is reversed.
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) (2007).

AFFIRMED-IN-PART

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