Ex Parte Gelber et al

Patent Trial and Appeal Board

Jun 23, 2016

11664440 (P.T.A.B. Jun. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/664,440 06/22/2007 Phil Gelber
70243 7590 06/27/2016
NIXON PEABODY LLP
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.
247079-002119USPX 1368
EXAMINER
70 West Madison, Suite 3500 HSU, RYAN
CHICAGO, IL 60602
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
06/27/2016 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHIL GELBER and WILLIAM WADLEIGH
Appeal2013-010142
Application 11/664,440
Technology Center 3700
Before MICHELLE R. OSINSKI, KEVIN W. CHERRY, and
MATTHEWS. MEYERS, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
Phil Gelber and William Wadleigh (Appellants) 1 appeal under
35 U.S.C. § 134 from the Examiner's final decision rejecting claims 1-9 and
26-34 under 35 U.S.C. § 103(a) as unpatentable over Hagiwara (US
5,580,055, iss. Dec. 3, 1996), Muir (US 2005/0192090 Al, pub. Sept. 1,
2005), and Kryuchkov (US 2004/0102244 Al, pub. May 27, 2004). Final
Act. 3-7. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is WMS Gaming Inc.
Appeal Br. 2.
Appeal2013-010142
Application 11/664,440
THE CLAIMED SUBJECT MATTER
Claims 1, 9, and 26 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter on appeal.
1. In a reel-based gaming machine, a method of displaying a
gaming outcome, comprising:
displaying a reel image on a display, wherein the reel
image includes a plurality of pay lines;
modifying the reel image to reflect a gaming outcome,
wherein modifying includes generating at least a winning
combination and a non-winning combination on corresponding
pay lines; and
highlighting the winning combination with a three-
dimensional effect that distinguishes the winning combination
from the non-winning combination, wherein highlighting the
winning combination includes modifying symbols on the reel
image to make the symbols from the winning combination
appear to move off from the pay line into three-dimensional
space.
OPINION
Claims 1-3, 5-7, 9, 26-28, 30-32, and 34
The Examiner finds that Hagiwara teaches a method of displaying a
gaming outcome in a reel-based gaming machine that includes, inter alia,
displaying a reel image on a display, wherein the reel image includes a
plurality of pay lines, and generating a winning combination and a
non-winning combination on corresponding pay lines. Final Act. 3 (citing
Hagiwara, Abstract, 6:45-58, 7:60-8:15). 2 The Examiner finds that Muir
2 We note that we do not agree with the Examiner's finding that Hagiwara
teaches highlighting the winning combination with a three-dimensional
effect that distinguishes the winning combination from the non-winning
combination (Final Act. 3) for the reasons advanced by Appellants. See
Appeal Br. 7-10; Reply Br. 2--4. We rely on additional findings of the
Examiner with respect to Muir and Kryuchkov in affirming the rejection.
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Application 11/664,440
teaches highlighting winning combinations with three dimensional effects.
Id. at 2, 4 (citing Muir i-f 18) ("The monitor may be arranged in spaced
relationship relative to the game playing arrangement such that, when an
image appears on the monitor, it imparts a three-dimensional effect to a
scene comprising the game playing arrangement and the image on the
monitor. For example, win lines may be indicated on the monitor after a win
occurs. The win lines may be animated over the top of those symbols of the
game playing arrangement which make up the winning combination or
winning combinations to highlight the win or wins."). The Examiner
concludes that "[ o ]ne would be motivated to incorporate the teachings of
Muir in highlighting winning combinations [using a three-dimensional reel
effect image] in order to present a more exciting visual interface while
producing the expected result of indicating to the user a winning
combination." Id. at 4.
The Examiner also finds that Muir teaches that a "three-dimensional
effect carried on the [monitor] provides a 'zooming in and out effect."' Id.
at 2; see also id. at 4 (citing Muir i-f 53). The Examiner additionally finds
that "zooming in and out" "create[ s] an effect that is analogous to symbols
that appear to move off the pay[]line." Ans. 6. In further support of this
finding that zooming in and out results in rendering two-dimensional images
in a three-dimensional gaming environment to produce an effect of the
symbols moving off of the pay line, the Examiner turns to Kryuchkov's
teaching of "the rendering of display symbols to appear to grow or shrink as
'if they were moving off into the distance or moving closer."' Final Act. 2
(citing Kryuchkov i-f 195); id. at 4 (citing Kryuchkov, Abstract, i-f 27). The
Examiner concludes that one of skill in the art would be motivated to
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Application 11/664,440
incorporate the teachings of Kryuchkov to "produce the expected result of
providing a more exciting visual experience to a player in the gaming arts"
"so that the highlighted winning combination will appear to move off from
the pay line into three-dimensional space." Id. at 4; see also Ans. 6 (citing
Kryuchkov i-fi-127, 71) (noting that Kryuchkov teaches how to adapt three
dimensional effects in a two-dimensional environment and that "[b ]y
utilizing depth in a three-dimensional gaming environment the symbols will
appear to move off the pay[] line as required by the instant claims.").
Appellants argue that "[t]he three-dimensional effects described and
illustrated by Muir ... are not extended to the use of three-dimensional
effects to distinguish[] a winning pay[]line from a non-winning pay[]line."
Appeal Br. 11. In particular, Appellants argue that the "win lines" of Muir's
paragraph 18 "fail[] to rise to the level needed to allow one skilled in the art
to determine how to implement such a win line." Id.; see also Reply Br. 4
(Appellants arguing that they are "uncertain how one would arrange the
monitor of Muir in spaced relationship relative to the game playing
arrangement such that a three-dimensional effect could be applied to a win
line as described at [0018] in Muir").
We are not persuaded by Appellants' argument. The rejection is
based on what Hagiwara and Muir would have suggested to a person of
ordinary skill in the art, not necessarily a bodily incorporation of Muir's
device into Hagiwara's device. See In re Keller, 642 F.2d 413, 425 (CCPA
1981 ). That is, modification of the base reference may be required, and the
question is whether the modification would require skills beyond the
capabilities of a person of ordinary skill. KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007) ("if a technique has been used to improve one device,
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Application 11/664,440
and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill."). We are not
persuaded that adaptation of Muir's monitor to provide three dimensional
effects to highlight winning combinations in Hagiwara's reel based game
would have been beyond the capabilities of a person of ordinary skill in the
art, considering that both Hagiwara and Muir incorporate rotatable reels
(Hagiwara, 1: 12-14; Muir i19). We "take account of the inferences and
creative steps that a person of ordinary skill in the art would employ," and
we find that a person of ordinary skill in the art would overcome any
difficulties within their level of skill to modify Hagiwara's game so as to be
compatible with a three dimensional effect for a win line as taught by Muir.
KSR, 550 U.S. at 418; see also id. at 421 ("A person of ordinary skill is also
a person of ordinary creativity, not an automaton.").
Appellants also argue that Kryuchkov fails to teach methods of
highlighting pay lines. Appeal Br. 12; see also Reply Br. 5. We are not
persuaded by Appellants' argument because it does not address the rejection
as articulated, which relies on Muir (not Kryuchkov) for teaching the use of
a three dimensional effect to highlight winning combinations (such as the
disclosed animated win lines over the top of the game symbols), and relies
on Kryuchkov merely for teaching that zooming in and out (and thereby
causing the symbols to grow or shrink) makes the symbols appear as "if they
were moving off into the distance or moving closer" (i.e., moving off into
the distance relative to the pay line or moving closer relative to the pay line).
Final Act. 2 (citing Kryuchkov i-f 195).
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Appellants also argue that none of the references teach highlighting
the winning combination by modifying symbols on the reel image to make
the symbols from the winning combination appear to move off the pay line
into three-dimensional space. Reply Br. 5. We are also not persuaded by
this additional argument by Appellants because it merely asserts that no
single reference teaches all of the limitations, as opposed to addressing the
combination of references. See In re Keller, 642 F.2d 413, 425 (CCPA
1981) (one cannot show nonobviousness by attacking references
individually when the rejection is based on a combination of references).
Appellants further argue that shrinking or zooming in on a symbol are
not three dimensional effects, but "well known two-dimensional effects" and
that Kryuchkov merely "describe[ s] generic three-dimensional renderings
used to display a set of reels in a slot game, and not a way of making sure
that 'the symbols will appear to move off the pay[]line." Reply Br. 4--5. We
are not persuaded by this further argument in that the Examiner finds that
Muir teaches "provid[ing] a 'zooming in or out effect' to enhance the three-
dimensional effect" and that Kryuchkov teaches that symbols that shrink
appear to move off into the distance and symbols that grow appear to move
closer. Muir i-f 53; Kryuchkov i-f 195; Final Act. 2, 4; Ans. 6. These findings
adequately explain how Muir and Kryuchkov teach symbols that appear to
move off the pay line through zooming out/shrinking (i.e., symbols move off
into the distance relative to the pay line) and/or zooming in/growing (i.e.,
symbols move closer to the user relative to the pay line). For the foregoing
reasons, we are not persuaded that the Examiner erred in concluding that the
combination of Hagiwara, Muir, and Kryuchkov renders obvious the subject
matter of independent claims 1, 9, and 26. Accordingly, we sustain the
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rejection of claims 1, 9, and 26, and dependent claims 2, 3, 5-7, 27, 28, 30-
32, and 34 for which Appellants rely on the same arguments and reasoning
(see Appeal Br. 12), under 35 U.S.C. § 103(a) as unpatentable over
Hagiwara, Muir, and Kryuchkov.
Claims 4 and 2 9
Dependent claims 4 and 29 recite "wherein the three-dimensional
effect includes a showing of one or more winning combinations on a
backside of a reel." Appeal Br. 16, 18 (Claims App.). The Examiner finds
that Kryuchkov teaches showing one or more winning combinations on a
backside of a reel. Final Act. 6 (citing Kryuchkov i-f 113 ). The Examiner
elaborates that Kryuchkov "renders in 'virtual space' pay lines that employ a
plurality of reels so that pay lines may include symbols from the front of the
reel [204] to the back of the reel [204] and to the front of the reel [206]."
Ans. 7 (citing Kryuchkov i-f 113). The Examiner concludes that it would
have been obvious "to modify a gaming machine to incorporate a three-
dimensional effect that includes a showing of one or more winning
combinations on a backside of a reel" in order "to reveal surfaces on a
virtual object that are hidden from view" and "produce[] the expected result
of increasing player interest." Id. at 8 (citing Kryuchkov i-f 105).
Appellants argue that although Kryuchkov teaches displaying a pay
line having symbols on the front and back, it does not show winning
combinations on a backside of the reel because it doesn't distinguish
between winning and non-winning combinations. Appeal Br. 13; Reply
Br. 6. As explained in more detail in connection with the independent
claims, we are not persuaded by Appellants' argument because it does not
address the rejection as articulated, which specifically relies on Muir (not
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Application 11/664,440
Kryuchkov) for teaching the use of a three dimensional effect to highlight
winning combinations.
For the foregoing reasons, we are not persuaded that the Examiner
erred in concluding that the combination of Hagiwara, Muir, and Kryuchkov
renders obvious the subject matter of dependent claims 4 and 29.
Accordingly, we sustain the rejection of claims 4 and 29 under 35 U.S.C.
§ 103(a) as unpatentable over Hagiwara, Muir, and Kryuchkov.
Claims 8 and 3 3
Claim 8 recites "wherein displaying a reel image on a display includes
displaying a view of phantom reels." Appeal Br. 17 (Claims App.). Claim
33 recites substantially similar language. Id. at 18 (Claims App.). The
Examiner finds that Kryuchkov teaches the three dimensional effect of
displaying phantom reels. Final Act. 7 (citing Kryuchkov i-f 113 ).
Appellants argue that "there is no showing in Kryuchkov of the concept of
adding reels." Appeal Br. 14 (citing Spec. 6:9--12). The Examiner responds
that the recitation of "displaying a view of phantom reels" is broader than
the concept of "adding reels" because Appellants' sole reference to
"phantom reels" in the Specification does not clearly and precisely define
the term "phantom reels" as being limited to "additional reel[ s ]." Ans. 9--10.
The Examiner interprets Kryuchkov's translucent reels that allow symbols
on the back of the reel to be visible from the front to be "analogous to a
display of phantom reels." Id. The Examiner states "[t]he translucent reels
are analogous because they present a reel with the front having an
appearance to sense but with no substantial existence." Id. at 11 (applying a
definition for "phantom" as "something apparent to sense but with no
substantial existence" from the Merriam-Webster online dictionary).
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Appellants argue that the Examiner is interpreting "phantom" as
"translucent," but the proper definition for "phantom" is "illusory." Reply
Br. 8 (citing Webster's Third New International Dictionary, published in
1993). Even assuming arguendo that "phantom" means "illusory" as argued
by Appellants, the Examiner's finding that the translucent reel is a reel with
a front having no substantial existence supports that it is an "illusory" reel in
that its front is just an illusion behind which the backside is visible.
Appellants do not persuasively address this finding by the Examiner.
For the foregoing reasons, we are not persuaded that the Examiner
erred in concluding that the combination of Hagiwara, Muir, and Kryuchkov
renders obvious the subject matter of dependent claims 8 and 33.
Accordingly, we sustain the rejection of claims 8 and 33 under 35 U.S.C.
§ 103(a) as unpatentable over Hagiwara, Muir, and Kryuchkov.
DECISION
The Examiner's decision to reject claims 1-9 and 26-34 under
35 U.S.C. § 103(a) as unpatentable over Hagiwara, Muir, and Kryuchkov 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)(l )(iv).
AFFIRMED
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