10458002 (B.P.A.I. Oct. 28, 2011)

Ex Parte Gauselmann

Board of Patent Appeals and InterferencesOct 28, 2011

10458002 (B.P.A.I. Oct. 28, 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. 10/458,002 06/09/2003 Michael Gauselmann ATR-PG-568 2192 32566 7590 10/28/2011 PATENT LAW GROUP LLP 2635 NORTH FIRST STREET SUITE 223 SAN JOSE, CA 95134 EXAMINER HARPER, TRAMAR YONG ART UNIT PAPER NUMBER 3717 MAIL DATE DELIVERY MODE 10/28/2011 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 GAUSELMANN ____________________ Appeal 2009-014710 Application 10/458,002 Technology Center 3700 ____________________ Before: JENNIFER D. BAHR, LINDA E. HORNER, and KEN B. BARRETT, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2009-014710 Application 10/458,002 2 STATEMENT OF THE CASE Michael Gauselmann (Appellant) filed a request for rehearing under 37 C.F.R. § 41.52 (hereinafter “Request”), dated October 18, 2011, of our decision mailed October 11, 2011 (hereinafter “Decision”). In that Decision, we affirmed the Examiner’s rejection of claims 2 and 28 under 35 U.S.C. § 103(a) as unpatentable over Okuda (US 6,224,484 B1, iss. May 1, 2001) and Witty (US 2003/0036429 A1, pub. Feb. 20, 2003). OPINION Appellant’s Request alleges that this panel failed to appreciate that Okuda’s “‘bonus chance condition’” requires a particular outcome in the main game, and that Okuda’s “only example of a ‘bonus chance condition’ result in the main game (that allows the player to participate in the lottery game) is a ‘bonus chance combination” in the main game.” Request 2-3 (emphasis in original). The Request asserts that Okuda does not envision that the “bonus chance condition” can include the mere end of the main game irrespective of the outcome of the main game. This would make no sense since Okuda treats the “bonus chance condition” as a relatively rare occurrence deserving of participation in the lottery game. Request 3. Appellant’s arguments do not persuade us that we misapprehended the teachings of Okuda. As indicated in the findings set forth on pages 4 and 5 of the Decision, we fully appreciated that “Okuda describes a gaming system wherein ‘[a]t least one bonus chance combination may be set as the bonus chance condition for proceeding to the lottery game’” and a judging device “determines ‘whether or not the at least one bonus chance combination is formed in the main game played in each of the gaming machines.’” As Appeal 2009-014710 Application 10/458,002 3 those findings illustrate, Okuda clearly teaches providing flexibility in setting the bonus chance combination(s), with respect to both the number of and the range of bonus chance combinations that may be set. See Decision 5. We find no support in Okuda’s disclosure for Appellant’s contention that “Okuda treats the ‘bonus chance condition’ as a relatively rare occurrence deserving of participation in the lottery game.” To the contrary, Okuda criticizes prior art systems that are “not sufficient to impress the existence of the progressive unit on the player,” and thus “not sufficient to make the interest of the player to the gaming system with the progressive unit stronger than the interest to the gaming machine without the progressive unit,” and specifically contemplates associating the bonus chance combination with a plurality of play results, as well as setting the bonus chance combination such that two or more bonus chances are generated in one main game, in order to increase the number of bonus chances offered by the progressive unit. Okuda, col. 1, ll. 55-57, 60-63; col. 9, ll. 30-40. In other words, Okuda evinces a desire to provide plentiful bonus chances to more effectively impress the existence of the progressive unit on the player in order to more strongly attract the player to play the main game. See Okuda, col. 2, ll. 10-12 (stating the object of providing a progressive gaming system which more strongly attracts players). Appellant’s assertion that Okuda does not envision the “bonus chance condition” including the mere end of the main game irrespective of the outcome of the main game is consistent with the Examiner’s findings of record and with the findings relied on in our Decision. See Decision 3 (citing to the Examiner’s findings at Ans. 4). Indeed, the Examiner proposed to modify Okuda “such that the triggering event for triggering Appeal 2009-014710 Application 10/458,002 4 playing and display of the jackpot (lottery) game is the end of the play of the main game.” Decision 4; Ans. 4-5. To the extent that Appellant’s assertion hints that the Examiner must find in the applied prior art a specific teaching, suggestion, or motivation for making the proposed modification, the Supreme Court has stated that such a rigid approach is incompatible with its precedent concerning obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). As we pointed out on page 6 of our Decision, the relevant inquiry is whether the Examiner has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 419). “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. See also Perfect Web Tech., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (“while an analysis of obviousness always depends on evidence … it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference”). Appellant asserts that “the Appeal Board is ignoring how one skilled in the art would logically interpret Okuda. Okuda’s teaching cannot be stretched to an unreasonable interpretation in an attempt to try to make it read on Applicant’s claims.” Request 4. This assertion does not address the obviousness rationale relied upon in the rejection made by the Examiner and affirmed by this panel. Neither the Examiner nor this panel found that Okuda’s disclosure anticipates all of the limitations of claims 2 and 28. Appellant’s Request alleges several advantages to initiating the jackpot game after every main game. Request 2. For the most part, these allegations simply reiterate arguments made on page 6 of Appellant’s Appeal Brief. Appellant’s Request alleges a new fact (i.e., that “[m]odern slot Appeal 2009-014710 Application 10/458,002 5 machines generate a conventional signal at the end of each game”1) not raised in the Appeal Brief. Appellant’s attempt to belatedly present such a new argument is unavailing, since a new argument advanced in a request for rehearing, but not advanced in Appellant’s Brief, is not properly before the Board and will not be considered.2 Furthermore, Appellant has not pointed to any evidence to support the argument that end of game signal generation is conventional. An attorney's arguments in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).3 For the above reasons, the arguments in Appellant’s Request do not convince us that we erred in affirming the Examiner’s rejection of claims 2 and 28. DECISION Appellant’s Request has been granted to the extent that we have reconsidered our Decision in light of the arguments in Appellant’s Request, but is denied with respect to our making any modification to the Decision. 1 Notably, the statement stops short of alleging that all conventional gaming machines generate end of game signals, such that Appellant’s jackpot game could simply be added on to any gaming machine without knowing anything about the software, as alleged by Appellant. 2 See In re Schreiber, 128 F.3d 1473, 1479 (Fed. Cir. 1997); Cooper v. Goldfarb, 154 F.3d 1321, 1331 (Fed. Cir. 1998). 3 We note that such evidence would tend to show that modification of Okuda’s gaming system so as to trigger the lottery game at the end of each main game would not have been beyond the technical grasp of a person of ordinary skill in the art. Appeal 2009-014710 Application 10/458,002 6 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). DENIED hh