Ex Parte Gilmore et al

Board of Patent Appeals and Interferences

Apr 22, 2012

10641368 (B.P.A.I. Apr. 22, 2012)

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.
10/641,368 08/14/2003 Jason C. Gilmore 247079-000222USPT 9620
70243 7590 04/23/2012
NIXON PEABODY LLP
300 S. Riverside Plaza
16th Floor
CHICAGO, IL 60606
EXAMINER
PANDYA, SUNIT
ART UNIT PAPER NUMBER
3718
MAIL DATE DELIVERY MODE
04/23/2012 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 JASON C. GILMORE and BRADLEY A. ROSE
____________________

Appeal 2010-004575
Application 10/641,368
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and
KEN B. BARRETT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/641,368

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STATEMENT OF THE CASE
Jason C. Gilmore and Bradley A. Rose (Appellants) appeal under 35
U.S.C. § 134 from the Examiner’s decision rejecting claims 1-3, 6-12,
14-18,1 20, and 21 under 35 U.S.C. § 102(b) as anticipated by Gauselmann
(US 2002/0052233 A1, pub. May 2, 2002). We have jurisdiction under 35
U.S.C. § 6(b). An oral hearing was held on April 12, 2012.
We REVERSE.
THE INVENTION
The claims are directed to a gaming machine apparatus and method
with a win multiplier feature. Spec. 2, l. 5. Claim 1, reproduced below, is
illustrative of the claimed subject matter.2
1. A method of conducting a slots game having a basic game
and a special feature displayed within the basic game, the
basic game including a paytable defining awards and
winning symbol combinations associated with the respective
awards, the method comprising:
receiving a wager to play the basic game;
displaying a plurality of symbols along one or more
paylines to indicate an outcome of the basic game; and

1 The Examiner’s omission of claims 15-17 in the statement of the rejection
(Fin. Rej. 2; Ans. 3) was ostensibly inadvertent, in light of the Examiner’s
discussion of these claims in the rejection itself. See App. Br. 12 (including
claims 15-17 in the ground of rejection to be reviewed on appeal)
2 Independent claim 9 calls for the special feature to be implemented “if the
displayed plurality of symbols along one of the paylines yields a
predetermined award and meets a predetermined criterion.” Independent
claim 17 is directed to a gaming apparatus and includes a processor
operative to implement the special feature “if the displayed plurality of
symbols along one of the paylines yields a predetermined award and meets a
predetermined criterion.”
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if the displayed plurality of symbols for the basic game
includes one of the winning symbol combinations arranged
along a first one of the paylines and meets a predetermined
criterion, implementing the special feature within the basic
game by:
associating multipliers with symbols within the
winning symbol combination arranged along the first one
of the paylines;
after associating multipliers with symbols within the
winning symbol combination, selecting from the
displayed plurality of symbols for the basic game one of
the symbols of the winning symbol combination;
revealing the multiplier associated with the selected
symbol;
multiplying, by the revealed multiplier, an award
associated with the first one of the paylines; and
awarding the multiplied award.
OPINION
Gauselmann does not directly disclose associating multipliers with
symbols within a winning symbol combination, or with a plurality of
symbols along a payline that yields a predetermined award, selecting one of
the symbols of the winning symbol combination or along the payline that
yields the predetermined award, and revealing the multiplier associated with
the selected symbol, as required in independent claims 1, 9, and 17.
The Examiner found that Gauselmann incorporates by reference the
disclosures of Thomas (US 6,190,255 B1, iss. Feb. 20, 2001) and Schneider
(US 6,089,976, iss. Jul. 18, 2000). Ans. 4. The Examiner relies on Thomas’
disclosure in column 5, lines 35-62, and on Schneider’s disclosure in column
3, lines 26-35, in an attempt to account for the features not directly disclosed
by Gauselmann. Ans. 4, 6, 7.
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The portion of the disclosure of Thomas alluded to by the Examiner
describes a bonus game resource that might be used as a multiplier of coins
or credits awarded in a bonus game. See col. 5, ll. 55-62. According to
Thomas, the bonus game resource may also cause the processor to award
coins or credits in the basic game. Col. 5, ll. 38-40. The portion of the
disclosure of Schneider alluded to by the Examiner describes a secondary
bonus display, which replaces the primary game display and allows the
player to touch images on the screen to reveal bonus amounts associated
therewith. See col. 3, ll. 27-31. Schneider teaches that the player continues
to touch images one at a time until two matching bonus amounts are
obtained, and a credit meter is incremented or the player is paid based on the
matching bonus amounts. Col. 3, ll. 31-35.
We agree with Appellants that Gauselmann incorporates the teachings
of Thomas and Schneider directed to “conventional aspects” of gaming
devices that display random, or pseudo random, combinations of symbols
selected by a processor running a program, and, further, that nothing in
Gauselmann, Thomas, or Schneider would lead one of ordinary skill in the
art to conclude that such “conventional aspects” include the multiplier bonus
game resource feature taught by Thomas or the secondary bonus display and
image selection feature of Schneider. See Gauselmann, para. [0014]; Reply
Br. 4.
Moreover, even assuming that Gauselmann incorporates the teachings
of Thomas and Schneider in their entireties, Gauselmann and the teachings
of Thomas and Schneider relied upon by the Examiner do not provide an
identical disclosure of a gaming apparatus or method including each and
every element of the invention recited in each of independent claims 1, 9,
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and 17. See App. Br. 17, 18, 21, 22. In particular, Gauselmann, Thomas,
and Schneider do not teach associating multipliers with symbols within a
winning symbol combination, or with a plurality of symbols along a payline
that yields a predetermined award, selecting one of the symbols of the
winning symbol combination or along the payline that yields the
predetermined award, and revealing the multiplier associated with the
selected symbol, as required in independent claims 1, 9, and 17. Thomas
teaches a multiplier feature generally, but mentions nothing about
associating multipliers with symbols of a winning symbol combination.
Schneider teaches replacing a primary game display with a secondary bonus
display comprising images having bonus amounts associated therewith, but
does not teach associating bonus amounts (or multipliers) with symbols of a
winning combination of a basic or primary game.
To establish anticipation, every element and limitation of the claimed
invention must be found in a single prior art reference, arranged as in the
claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383
(Fed. Cir. 2001). It is not enough, in an anticipation rejection, that the prior
art reference discloses part of the claimed invention, which an ordinary
artisan might supplement to make the whole, or that it includes multiple,
distinct teachings that the artisan might somehow combine to achieve the
claimed invention. Net MoneyIn, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369
(Fed. Cir. 2008).
For the above reasons, the Examiner has not established that
Gauselmann anticipates the subject matter of independent claims 1, 9, and
17, and their dependent claims. We are constrained to reverse the rejection.
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DECISION
The Examiner’s decision is reversed.
REVERSED

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