Ex Parte Hornik

Board of Patent Appeals and Interferences

Sep 22, 2011

11196127 (B.P.A.I. Sep. 22, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/196,127 08/03/2005 Jeremy M. Hornik 247079-000344USPT 6651
70243 7590 09/22/2011
NIXON PEABODY LLP
300 S. Riverside Plaza
16th Floor
CHICAGO, IL 60606
EXAMINER
RUSTEMEYER, MALINA K
ART UNIT PAPER NUMBER
3716
MAIL DATE DELIVERY MODE
09/22/2011 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 JEREMY M. HORNIK
____________________

Appeal 2009-013968
Application 11/196,127
Technology Center 3700
____________________

Before JOHN C. KERINS, STEVEN D.A. McCARTHY, and
EDWARD A. BROWN, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-013968
Application 11/196,127

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STATEMENT OF THE CASE
Jeremy M. Hornik (Appellant) appeals under 35 U.S.C. § 134(a) from
a final rejection of claims 1-20 (App. Br. 2). An oral hearing was held on
September 13, 2011. We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b). We REVERSE.
THE INVENTION
The claimed invention relates to a method of conducting a wagering
game on a gaming machine, and a gaming machine for conducting a
wagering game. Claim 1, reproduced below, is representative of the subject
matter on appeal.
1. A method of conducting a wagering game
on a gaming machine, comprising:
displaying a plurality of selectable elements;
displaying an indicator defining an area
having a size adapted to contain at least one of the
plurality of selectable elements, the size of the area
defined by the indicator being variable during the
wagering game, the variation of the size of the area
defined by the indicator varying a quantity of the
selectable elements contained within the indicator;
moving the indicator to vary which of the
plurality of selectable elements are contained
within the indicator;
stopping the indicator with two or more of
the plurality of selectable elements contained
within the indicator; and
providing an award based on the two or
more contained selectable elements.

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THE REJECTIONS
The following Examiner's rejections are before us on appeal:
1. Claims 1, 10, and 16 are rejected under 35 U.S.C. § 102(b) over
Kaminkow (US 6,817,944 B2; issued Nov. 16, 2004).
2. Claims 2-9, 11-15, 17, and 20 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kaminkow and Baerlocher (US
6,585,591 B1; issued Jul. 1, 2003).
3. Claims 18 and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kaminkow, Baerlocher, and Seelig (US
2005/0075156 A1; issued Apr. 7, 2005).
ISSUES
The following issues have been presented in this appeal:
1. Did the Examiner err in finding that Kaminkow discloses all of
the limitations recited in claims 1, 10, and 16?
2. Did the Examiner err in concluding that the combination of
Kaminkow and Baerlocher would have rendered obvious the subject matter
recited in claims 2-9, 11-15, 17, and 20?
3. Did the Examiner err in concluding that the combination of
Kaminkow, Baerlocher, and Seelig would have rendered obvious the subject
matter recited in claims 18 and 19?
ANALYSIS
Claims 1, 10, and 16
Claim 1 recites, inter alia, the steps of "displaying an indicator
defining an area having a size adapted to contain at least one of the plurality
of selectable elements, the size of the area defined by the indicator being
variable during the wagering game, the variation of the size of the area
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defined by the indicator varying a quantity of the selectable elements
contained within the indicator"; and "moving the indicator to vary which of
the plurality of selectable elements are contained within the indicator."
(Emphasis added.) The Examiner stated that "an 'indicator' is used to
visually show something." (Ans. 8.) The Examiner found Kaminkow
discloses that "anytime the player selects a box (variable area), an indicator
showing the value (defining a variable area) of the box selected appears.
The box turns from blank to some type of picture, which contains an
'indicator' of the value of the selected box." (Ans. 8, citing Figs. 4A-4F of
Kaminkow.) The Examiner also found Kaminkow teaches the limitations
recited for the "moving" step, in that as the player selects various boxes, the
"indicator" moves to vary which of the selectable elements are contained
within the indicator. (Ans. 8.)
Appellant contends the Examiner did not adequately identify the
claim elements in Kaminkow, but cited to large portions of Kaminkow's
specification without specifying which specific elements described therein,
or which components shown in the referenced figures, disclose the claim
elements. (App. Br. 6.) In view of the record before us, we agree with
Appellant that the Examiner's factual findings with respect to Kaminkow,
and the Examiner's application of Kaminkow to the claimed subject matter,
are inadequate to support the rejection. We understand the Examiner's
position to be that the matrix of boxes (i.e., masked selections 102) in
Kaminkow's display device corresponds to the claimed "selectable
elements"; the individual boxes have a "variable area"; and the numerical
value that appears within one or more of the individual boxes each time a
player selects a box corresponds to the claimed "indicator." See Figures 4B-
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4F of Kaminkow, which show numerical values appearing within some
boxes following selections.
The Examiner's findings are not supported by Kaminkow's disclosure.
Particularly, the Appellant correctly contends that the portions of Kaminkow
relied on by the Examiner do not disclose that the boxes in the display have
a variable area. (App. Br. 7.) Figures 4A-4F do not show that the number,
size or shape of the boxes changes during the game. In addition, the
Examiner did not identify any specific disclosure in Kaminkow that the size
of the "indicator" appearing within any one of the boxes following a player
selection changes during the game, much less that the size of the "area"
defined by the "indicator" is variable during the game. Hence, the
Examiner's finding that Kaminkow discloses the limitations recited for the
step of "displaying" in claim 1 is not supported by a preponderance of the
evidence.
Appellant also correctly contends that the Examiner did not identify
any specific disclosure in Kaminkow that supports the position that the
"indicator" appearing within any one of the boxes moves during the game.
(App. Br. 7-8.) Rather, Kaminkow shows in Figures 4B-4F that each
number remains in the same respective box in which it appeared following
each subsequent selection. Hence, because the Examiner's finding that
Kaminkow discloses the step reciting "moving the indicator to vary which of
the plurality of selectable elements are contained within the indicator" in
claim 1 is not supported by a preponderance of the evidence, we do not
sustain the anticipation rejection of claim 1.
Independent claim 10 is directed to a gaming machine for conducting
a wagering game comprising, inter alia, "a controller coupled to the at least
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one display and operative to (i) vary the size of the area defined by the
indicator, and (ii) move the indicator to vary which of the plurality of
selectable elements are contained within the indicator." (Emphasis added.)
The Examiner's findings for claim 10 are identical to those made for claim 1.
(Ans. 4.) For similar reasons as those discussed above with respect to claim
1, the Examiner's finding that Kaminkow discloses a controller that is
operable to meet the claim limitations (i) and (ii) recited in claim 10 is not
supported by a preponderance of the evidence. Hence, we also do not
sustain the anticipation rejection of claim 10.
Independent claim 16 is directed to a method of conducting a
wagering game on a gaming machine comprising, inter alia, "displaying an
indicator defining an area for containing two or more of the plurality of
selectable elements, [and] varying a size of the area of the indicator to vary
a quantity of the plurality of selectable elements identified with the
indicator." (Emphasis added.) The Examiner's findings for claim 16 are
identical to those made for claim 1. (Ans. 4.) For similar reasons as those
discussed above with respect to claim 1, the Examiner's finding that
Kaminkow discloses the limitations recited for the "displaying" step in claim
16 is not supported by a preponderance of the evidence. Hence, we also do
not sustain the anticipation rejection of claim 16.

Claims 2-9, 11-15, 17, and 20
The Examiner found that Kaminkow does not disclose the limitations
of claims 2-9 which depend from claim 1, claims 11-15 which depend from
claim 10, or claims 17 and 20 which depend from claim 16. (Ans. 5.) The
Examiner relied on Baerlocher for allegedly disclosing the limitations of
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each of these dependent claims, and concluded that it would have been
obvious to combine the game of Kaminkow with the additional features
disclosed in Baerlocher. (Ans. 6.) We disagree.
The Examiner found that Baerlocher discloses the additional claim
limitations pertaining to the "indicator" recited in claims 2, 7, 8, 12, and 13,
but did not identify which specific element(s) described or illustrated in
Baerlocher pertain to the claimed "indicator." (Ans. 5-6.) As such, the
Examiner's factual findings with respect to these claims are not supported by
a preponderance of the evidence. As such, the Examiner did not establish
that the applied references disclose all of the claim limitations, much less
articulate adequate reasoning as to why one skilled in the art would have
combined the teachings of Kaminkov and Baerlocher. Hence, because the
Examiner's reliance on Baerlocher does not cure the deficiencies of the
Examiner's application of Kaminkov with respect to the subject matter of
claims 1 and 10, or claim 16, as discussed supra, we do not sustain the
obviousness rejection of claims 2-9, 11-15, 17, and 20.

Claims 18 and 19
The Examiner found that the combination of Kaminkow and
Baerlocher does not disclose all of the limitations recited in claims 18 and
19, which depend from claim 17. (Ans. 7.) The Examiner relied on Seelig
for allegedly disclosing the limitations of claims 18 and 19, and concluded
that it would have been obvious to combine the game of Kaminkow with the
additional features disclosed in Baerlocher and Seelig. (Ans. 7.) However,
the Examiner's reliance on Seelig does not cure the deficiencies of the
Examiner's application of Kaminkov and Baerlocher with respect to the
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subject matter of claim 17, as discussed supra. Hence, we do not sustain the
obviousness rejection of claims 18 and 19.
CONCLUSION
1. The Examiner erred in finding that Kaminkow discloses all of
the limitations recited in claims 1, 10, and 16.
2. The Examiner erred in concluding that the combination of
Kaminkow and Baerlocher would have rendered obvious the subject matter
recited in claims 2-9, 11-15, 17, and 20.
3. The Examiner erred in concluding that the combination of
Kaminkow, Baerlocher, and Seelig would have rendered obvious the subject
matter recited in claims 18 and 19.
DECISION
Each of the Examiner's rejections is REVERSED.

REVERSED

MP