Ex Parte Gauselmann

Board of Patent Appeals and Interferences

Oct 11, 2011

10458002 (B.P.A.I. Oct. 11, 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 10/11/2011
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
10/11/2011 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 APPEAL

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STATEMENT OF THE CASE
Michael Gauselmann (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s rejection of claims 2 and 28 under 35 U.S.C. § 103(a) as
being unpatentable over Okuda (US 6,224,484 B1, iss. May 1, 2001) in view
of Witty (US 2003/0036429 A1, pub. Feb. 20, 2003).1 We have jurisdiction
under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
The claims are directed to a jackpot gaming system. Spec. 1:6-7.
Claim 2, reproduced below along with independent claim 1 from which it
depends, is illustrative of the claimed subject matter.
1. A method performed by a gaming device comprising:
playing a main game on a gaming machine and
displaying an outcome on the gaming machine;
accumulating a jackpot amount;
playing and displaying a jackpot game after the main
game, wherein the jackpot game is played irrespective of an
outcome of the main game, wherein playing and displaying
a jackpot game comprises predetermining an outcome of the
jackpot game solely by a jackpot control unit separate from
the gaming machine, wherein the gaming machine is one of
a plurality of gaming machines connected to the jackpot
control unit, and wherein playing and displaying a jackpot

1 Appellant has elected not to appeal the rejection of claims 1, 5-13, 15-27,
and 29. See App. Br. 2 (stating that “[o]nly the rejection of dependent
Claims 2 and 28 is being appealed.”). We suggest that the Examiner cancel
these claims upon return of jurisdiction of this application to the Examiner.
See Ex Parte Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008) (precedential).
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game comprises determining, solely by the jackpot control
unit, which gaming machine will win the jackpot based on a
triggering event unrelated to an outcome of the main game,
wherein playing a main game on a gaming machine and
displaying an outcome on the gaming machine comprises
displaying the main game on a first display in a housing of
the gaming machine, and wherein playing and displaying the
jackpot game comprises displaying the jackpot game on a
display associated with each gaming machine and external
to the housing of the gaming machine; and
awarding a player the jackpot amount for a jackpot-
winning outcome of the jackpot game.
2. The method of Claim 1 wherein playing and
displaying the jackpot game comprises playing and
displaying the jackpot game after each main game.

OPINION
The Examiner found that Okuda discloses a jackpot system and
method as called for in claims 2 and 28, with the exception that Okuda does
not disclose each gaming machine having its own individual jackpot display
external from the gaming machine and the system triggering the jackpot
game based on a triggering event irrespective of the outcome of the game,
such as the end of a main game. Ans. 4, 5.
The Examiner found that Witty discloses the use of a linked gaming
system comprising electronic gaming machines with secondary feature game
displays, with the primary game being displayed on the primary display and
the feature game being displayed on the secondary display. Ans. 5. The
Examiner further found that Witty discloses that the secondary display can
be external from the gaming machine. Ans. 6. Appellant does not dispute
these findings. The Examiner concluded that it would have been obvious to
modify Okuda to provide each gaming machine with its own external
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jackpot game display, as taught by Witty, for the purpose of providing more
emphasis on the progressive gaming machine, thus further differentiating the
main game from the bonus game, thereby making the player more inclined
to play the main game. Ans. 6. Appellant does not dispute that the
Examiner’s proposed modification would have been obvious.
The Examiner reasoned that it would have been obvious to further
modify Okuda such that the triggering event for triggering playing and
display of the jackpot (lottery) game is the end of the play of the main game,
because such a modification would have been a mere design consideration.
Ans. 4-5. Appellant argues that the proposed modification would not have
been obvious, because “[t]he examiner is basically saying … that
Applicant’s invention is obvious without any supporting prior art,” and
because Appellant’s invention possesses several advantages over the prior
art. App. Br. 6.
Accordingly, the issue joined in this appeal is whether the Examiner
erred in concluding that it would have been obvious to modify Okuda’s
system and method such that the triggering event (i.e., the “bonus chance
condition”) for proceeding to the lottery game is the end of play of the main
game.
We find that Okuda describes a gaming system comprising “a judging
device for judging whether or not the result of the main game played in each
of the gaming machines meets a predetermined bonus chance condition for
proceeding to a lottery game.” Okuda, col. 2, ll. 24-27. We further find 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 the judging device determines “whether or not the at least
one bonus chance combination is formed in the main game played in each of
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the gaming machines.” Okuda, col. 3, ll. 36-40. Okuda further points out
that “[t]he at least one bonus chance combination can include a combination
different from the winning combination.” Okuda, col. 3, ll. 40-42.
According to Okuda, while the winning combination in each main game
played in each gaming machine is set in accordance with the custom of the
main game, “the bonus chance combination may be freely instituted without
such limitations. It can be possible to treat a combination which is not
treated as the winning combination in the main game as the bonus chance
combination.” Okuda, col. 9, ll. 6-18.
The disclosure of Okuda discussed above shows that Okuda
contemplated a gaming system wherein the criteria for proceeding to the
lottery game are not limited to, or dependent upon, a successful result in the
main game, but, rather, can be liberally selected to be as inclusive or
exclusive as desired. A gaming system as disclosed by Okuda wherein the
judging device is modified, as proposed by the Examiner, to trigger
proceeding to the lottery game at the conclusion of each main game (by, for
example, simply detecting the result and signaling the end of the main
game)2 would fall at the most inclusive end of this range of options.
Therefore, the Examiner did not err in concluding that it would have been
obvious, as a mere design consideration, to modify Okuda’s system and
method such that the triggering event (i.e., the “bonus chance condition”) for
proceeding to the lottery game is the end of play of the main game.
Appellant correctly notes that neither Okuda nor Witty explicitly
discloses proceeding to the progressive bonus game (lottery or jackpot

2 Setting all possible combinations as the “[a]t least one bonus chance
combination” denoting “the bonus chance condition for proceeding to the
lottery game” would yield this result.
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game) at the end of each main game. However, “[t]he obviousness analysis
cannot be confined by a formalistic conception of the words teaching,
suggestion, and motivation, or by overemphasis on the importance of
published articles and the explicit content of issued patents.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 419 (2007). Instead, 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”).
The modification proposed by the Examiner in this case is nothing more
than a logical extrapolation of the teachings of Okuda to its most inclusive
extreme, as indicated above.
Appellant argues that the claimed invention offers many advantages
not afforded by the prior art. App. Br. 6-7. Appellant refers to the statement
on page 2 of the Specification, in lines 13-15 that “[a]n advantage of the
jackpot system described above is that it may operate independently of the
original gaming system, so the jackpot system is simple to add to an existing
system.” App. Br. 6. Appellant’s first few arguments focus on this theme.
See id. Appellant’s argument that the claimed invention can be added to a
variety of different slot machines without affecting the odds of winning the
jackpot does not point to a distinction over Okuda’s system, which
contemplates use with a variety of gaming machines playing different main
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games, and which adjusts “the probabilities at which the bonus winning
combinations are formed in the lottery games played in the progressive unit
3, in accordance with the type of the main game played in each gaming
machine 2 to thereby make the probabilities of the pay-outs of the
progressive bonuses substantially equal to each other.” Okuda, col. 13, ll.
39-52. Appellant also argues that Appellant’s claimed jackpot system can
be made by a different manufacturer than the gaming machines and added to
the gaming system without coordination or modification of the gaming
machine software. App. Br. 6. We adopt the Examiner’s comments in lines
2-11, on page 11 of the Answer, which respond to Appellant’s arguments.
Appellant asserts that the claimed invention “is a radical departure
from conventional jackpot systems whose play is dependent on obtaining a
certain outcome in the slot machine game.” App. Br. 6. This argument is
not an entirely accurate characterization of Okuda’s system, which, as we
found above, affirmatively seeks not to be bound by the conventional
winning combinations of the main games in setting the criteria for
proceeding to the lottery game, but, rather, teaches that the criteria can be
liberally selected to be as inclusive or exclusive as desired. We are not
persuaded that the claimed triggering event represents a patentable
distinction over Okuda’s system.
For the above reasons, the Examiner did not err in concluding that
Okuda and Witty render obvious the subject matter of claims 2 and 28.

DECISION
The Examiner’s decision is affirmed.
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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

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