Ex Parte Hornik et alDownload PDFPatent Trial and Appeal BoardJun 25, 201311280826 (P.T.A.B. Jun. 25, 2013) Copy Citation 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. 11/280,826 11/15/2005 Jeremy M. Hornik 247079-000326USPT 8431 70243 7590 06/25/2013 NIXON PEABODY LLP 300 S. Riverside Plaza 16th Floor CHICAGO, IL 60606 EXAMINER RENWICK, REGINALD A ART UNIT PAPER NUMBER 3714 MAIL DATE DELIVERY MODE 06/25/2013 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JEREMY M. HORNIK, MATTHEW J. WARD, PETER W. FLEMMING and MICHAEL P. CASEY ____________ Appeal 2011-004887 Application 11/280,826 Technology Center 3700 ____________ Before MICHAEL L. HOELTER, LYNNE H. BROWNE and MITCHELL G. WEATHERLY, Administrative Patent Judges. BROWNE, Administrative Patent Judge DECISION ON APPEAL Appeal 2011-004887 Application 11/280,826 2 STATEMENT OF THE CASE Jeremy M Hornik et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. THE INVENTION Claims 1, 15 and 20, with emphasis added, are reproduced below: 1. A wagering game system, comprising: a gaming control system configured to conduct a group game for a plurality of gaming terminals and to assign at least one object to the group game following the occurrence of a winning combination or event on a gaming terminal in association with a player at the gaming terminal, wherein, upon satisfaction of a predetermined triggering event on at least one of the plurality of gaming terminals or within the group game, a realization event occurs and provides an award for each object in a randomly selected group of objects, the randomly selected group of objects comprising objects associated with a plurality of players, in the group game at a time of said predetermined realization event. 15. A method of conducting a group game comprising a plurality of players and involving a plurality of gaming terminals, comprising the steps of: communicatively coupling a plurality of gaming terminals to a controller configured to execute instructions for the group game; permitting a player at each gaming terminal of the plurality of gaming terminals to collect one or more objects in the group game; Appeal 2011-004887 Application 11/280,826 3 displaying objects collected by each player on a display associated with the group game; initiating a realization event affecting a randomly determined plurality of the displayed objects in response to a triggering event; and awarding an award to each of a plurality of players associated with the respective randomly determined plurality of displayed objects affected by the realization event. 20. A gaming terminal connected to a network for playing a group wagering game, comprising: at least one display for displaying a wagering game conducted at said gaming terminal; wherein, in response to one of a plurality of predetermined events at a gaming terminal, at least a portion of a value of an award or a wager input from a player at the gaming terminal is applied to said group wagering game to acquire an object therein. PRIOR ART Pease US 5,326,104 Jul. 5, 1994 Simunek US 5,401,024 Mar. 28, 1995 Walker US 6,142,872 Nov. 7, 2000 Cannon US 2005/0059468 A1 Mar. 17, 2005 Senari Software, Social Studies, retrieved June 17, 2009 from http://senari.com/geography.html (2003) (hereinafter “Senari”). Appeal 2011-004887 Application 11/280,826 4 GROUNDS OF REJECTION1 1. Claim 15 stands rejected under 35 U.S.C. § 102(e) as anticipated by Cannon. 2. Claims 1-4 and 9-14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Pease and Simunek. 3. Claims 5-8 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Pease, Simunek and Senari. 4. Claims 16-19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Cannon and Senari. 5. Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Walker. OPINION Rejection Based on Cannon The Examiner finds that Cannon discloses each and every limitation of independent claim 15. In particular, the Examiner finds that Cannon discloses “permitting a player at each gaming terminal of the plurality of gaming terminals to collect one or more [objects] in the group game wherein the objects are marked locations on a bingo card (0079).” Ans. 4. The Examiner further finds that Cannon discloses “initiating a realization event affecting a randomly determined plurality of the displayed objects in response to a bingo ball selection event (triggering event).” Id. 1 The final Office action mailed June 23, 2009, states that claims 18 and 19 are rejected as anticipated by Cannon. App. Br. 16. The Examiner set forth New Grounds of Rejection rejecting claims 18 and 19 as unpatentable over Cannon in view of Senari. Ans. 9. Appeal 2011-004887 Application 11/280,826 5 Appellants argue that Cannon fails to disclose objects that are collected because Cannon’s bingo card locations are previously designated on the player’s bingo cards. See App. Br. 13-14; Reply Br. 3-4. Appellants’ argument is unpersuasive as it is not responsive to the rejection as articulated by the Examiner. The Examiner found that Cannon’s marked bingo card locations read on the claimed “objects.” Cannon’s marked bingo card locations are not predetermined, but are “collected” by the players as the bingo balls are selected. Thus, this argument is not persuasive. Appellants contend that Cannon’s bingo card locations cannot fairly be read on the claimed “objects” in view of Appellants’ Specification and the ordinary and customary meaning of “object.” See App. Br. 14-15. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Thus, the claimed “objects” are not limited to virtual buildings or other virtual “structures, such as a bridge, or particular items such as crops, flowers or the like.” App. Br. 14. Further, we agree with the Examiner that the definition of “object” proffered by Appellants is broad enough to encompass the marked bingo card locations disclosed by Cannon in that the bingo card locations are selected to become marked bingo card locations. Accordingly, this argument is not persuasive. Appellants argue that Cannon fails to disclose the step of initiating a realization event affecting a randomly determined plurality of the displayed objects in response to a triggering event. See App. Br. 15; Reply Br. 4-7. The Examiner finds that in Cannon the selection of the bingo ball is the claimed triggering event. See Ans. 5. Appellants have apprised us of no error in this finding. The Examiner further finds that in Cannon “the Appeal 2011-004887 Application 11/280,826 6 daubing of a select bingo card location that causes a bingo or winning pattern” is the claimed realization event. Ans. 5. Appellants have apprised us of no error in this finding. The Examiner finds that this realization event affects a randomly determined plurality of the displayed objects (i.e. the marked bingo card locations). See Ans. 5. Appellants argue that Cannon’s realization event affects a predetermined grouping of bingo spots. See App. Br. 15; Reply Br. 5-6. We disagree. In Cannon each marked bingo card location is randomly determined and is not predetermined. Cannon, para. [0086]. In Cannon the realization event (i.e. calling of bingo) affects the randomly determined plurality of displayed objects (marked bingo card locations) as claimed. The fact that the marked bingo card locations must be displayed in a predetermined pattern in order for the realization event to occur is inapposite. Thus, Appellants argument is unpersuasive. For these reasons, we sustain the Examiner’s rejection of claim 15. Rejections Based on Cannon and Senari Claims 16-18: Claims 16-18 depend directly or indirectly from claim 15. 2 Appellants do not present arguments for the patentability of claims 16-18 in view of the combination of Cannon and Senari other than that the deficiencies of claim 15 are not cured. App. Br. 22-23; Reply Br. 2-3, see also App. Br. 16. Accordingly, we sustain the Examiner’s rejection of claims 16-18. 2 We note that the Examiner’s failure to designate the rejection of claim 18 under 35 U.S.C. § 103(a) as a new ground of rejection is a petitionable matter which was rendered moot by Appellants filing of the instant Reply Brief. MPEP § 1207.03 (IV). Appeal 2011-004887 Application 11/280,826 7 Claim 19: The Examiner finds that “Cannon discloses that the triggering event comprises a predetermined minimum valuation of objects in said playing space, wherein there is a requirement of 5 bingo card tiles being daubed.” Ans. 10. Appellants argue “a minimum number of tiles [required to win] does not anticipate a predetermined minimum ‘valuation’” of that tile. App. Br. 17. We agree with Appellants that one of ordinary skill in the art would not consider the claimed “predetermined minimum valuation of objects in said playing space” to be met by the predetermination of winning pattern positions as argued by the Examiner. Ans. 13. For this reason, we do not sustain the Examiner’s rejection of claim 19. Rejection Based on Walker The Examiner finds that Walker discloses all of the limitations of independent claim 20 except that “Walker does not specifically disclose that the gaming machines are networked, however Walker does disclose that the gaming machines are linked and provides a network as a means for providing said link (Fig.1).” Ans. 10. Appellants argue that Walker fails to disclose “an award or wager input by a player at the gaming terminal is applied to said group wagering game ‘to acquire an object therein’ as a ‘response to one of a plurality of predetermined events at a gaming terminal’….” App. Br. 24; Reply Br. 11-12. The Examiner finds that Walker discloses linked progressive slot machines. See Ans. 10. As explained in Walker “[t]he progressive jackpot prize is determined by allocating a portion of the money wagered at each individual linked slot machine to the progressive jackpot prize sum. Thus, the progressive jackpot Appeal 2011-004887 Application 11/280,826 8 value continues to increase until a player hits the progressive jackpot prize at one of the linked machines.” Walker, col. 1, ll. 43-48. We agree with the Examiner’s determination that the claim terminology “object” is broad enough to encompass Walker’s jackpot prize. See Ans. 15. We further agree that the claims do not define the predetermine event, which could for example read on the player hitting the jackpot as described supra. Id. Thus, Appellants’ argument is unpersuasive. For these reasons, we sustain the Examiner’s rejection of claim 20. Rejections Based on Pease and Simunek Claims 1, 2, 9, 10, 12 and 13: Appellants argue claims 1, 2, 9, 10, 12 and 13 as a group. We select independent claim 1 as the representative claim and claims 2, 9, 10, 12 and 13 stand or fall with claim 1. See App. Br. 21; see also 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner finds that Pease discloses all of the limitations of independent claim 1 except that Pease “does not specifically disclose that an award is given for each winning object in the keno game.” Ans. 6. The Examiner further finds that Simunek “discloses a payout for each winning object wherein the payout is relative to the number of winning objects.” Id. The Examiner reasons that “[b]ecause both Pease and Simunek disclose methods of awarding players in a Keno game, one skilled in the art can simply substitute the awarding method of Pease for the awarding method of Simunek for the purpose of rewarding players for each ball matched.” Id. Appellants argue that Pease fails to disclose “objects.” See App. Br. Appeal 2011-004887 Application 11/280,826 9 19. Alternatively, Appellants argue that the Examiner has failed to clearly indicate whether the rejection relies upon Pease’s LED colors or Pease’s keno numbers to read on the claimed “objects”, thus denying Appellants an opportunity to refute the rejection of claim 1. See App. Br. 19; see also Reply Br. 8-9. We understand the Examiner’s position to be that the claim terminology “object” and “objects” is broad enough to read on both Pease’s LED colors and Pease’s keno numbers. Appellants fail to show the unreasonableness of the Examiner’s position despite having been given ample opportunity to do so. Accordingly, we affirm the Examiner’s rejection as “appellants have had a fair opportunity to react to the thrust of the rejection.” See In re Jung, 637 F. 3d 1356, 1365 (Fed. Cir. 2011). Further, we agree with the Examiner that Pease’s matched keno numbers read on the claimed “object(s)” as they are discrete items that can be selected by players as defined by Appellants’ proffered definition of “object.” See App. Br. 19. Thus, Appellants arguments are not convincing. Appellants argue that Pease fails to disclose providing an award for each object. App. Br. 19-20; Reply Br. 9. Appellants’ argument is not convincing as it is not responsive to the rejection as articulated by the Examiner. The Examiner relies upon Simunek to teach providing an award for each object. Appellants further argue that Simunek fails to “disclose ‘provid[ing] an award for each object in a randomly selected group of objects’ because the “keno pay table provided in column 2 of Simunek indicates one payout unit for one matched spot, two payout units for two matched spots, six payout units for three matched spots, and 72 payout units for four matched spot.” Reply Br. 9-10. We disagree. Simunek’s pay table clearly discloses providing an award for each matched keno number (object). Appeal 2011-004887 Application 11/280,826 10 The fact that the number of objects awarded increases the award value exponentially is inapposite. We further note that Simunek discloses an embodiment wherein each matched keno number is replaced with a rotating video slot machine reel to increase the award for each “object.” Simunek, col. 3, ll. 43-46. Accordingly, Appellants’ argument is not persuasive. Appellants argue “that rejection of claim 1 also fails to provide a single reason or motivation why a person of ordinary skill in the art would be compelled to make the Examiner’s proposed combination.” App. Br. 21. We disagree. As discussed supra the Examiner’s reasoning for the proposed modification is that both Pease and Simunek are keno machines and it would have been obvious to substitute one awarding system for another. We further note that Simunek explicitly teaches that “[i]t is desirable for manufacturers of video keno games to provide new ways to increase the payout values. As payout levels increase, player interest in the game is fostered which leads to increased game revenue.” Simunek, col. 1, ll. 27-30. Thus, Appellants’ argument is not persuasive. For these reasons, we sustain the Examiner’s rejection of independent claim 1 and claims 2, 9, 10, 12 and 13 which depend therefrom and were not argued separately. Claims 3 and 4: The Examiner finds “Pease discloses that the predetermined realization event is influenced by said group of objects wherein the realization event matches selected numbers by the player (group of objects) and selected numbers by the random number generator (column 1, lines 54- 56; column 14, lines 5-7).” Ans. 6-7. Appellants argue “Pease’s alleged Appeal 2011-004887 Application 11/280,826 11 ‘realization event’ (identified by the Examiner as the process of matching numbers selected by the player with numbers selected by the game system, see Final Office Action, at 4, Item No.2) is in no way ‘influenced by’ any of Pease’s alleged ‘objects’ ….” App. Br. 22 (emphasis omitted). We agree. In Pease the realization event (matching of the numbers) occurs when the last number is selected by the gaming system. As each number is randomly selected, the previously selected numbers (group of objects) do not in any way influence the predetermined realization event. For this reason, we do not sustain the Examiner’s rejection of claims 3 and 4. Claim 11: The Examiner finds that “Pease discloses that the player is randomly selected because a player’s winning card comprises of randomly selected game objects.” Ans. 7. Appellants argue Pease does not distribute awards to randomly selected players because keno games do not select winners, but reward players for selecting winning numbers. See App. Br. 22. We agree. In Pease, while the numbers are randomly selected, the players who receive awards are limited to those who have selected the correct numbers. For this reason, we do not sustain the Examiner’s rejection of claim 11. Claim 14: The Examiner finds that Simunek “discloses awarding a player a payout proportional to the amount of matched numbers.” Ans. 8. Appeal 2011-004887 Application 11/280,826 12 Appellants argue “Pease’s keno game does not ‘award ... players having one or more objects within a randomly selected portion of a group game,’ (emphasis added), but instead, as just described, awards players for choosing numbers corresponding to numbers randomly generated by the gaming machine.” App. Br. 22. Appellants’ argument is not responsive to the rejection as articulated by the Examiner. The Examiner has relied upon the combined teachings of Pease and Simunek. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). For this reason, we sustain the Examiner’s rejection of claim 14. Rejections based on Pease, Simunek and Senari Claims 5 and 8: The Examiner finds that “Pease fails to disclose that game objects comprise of buildings or structures that reside in a larger entity comprising of a specific location.” Ans. 8. The Examiner further finds that Senari discloses game objects comprising states. See Ans. 8. The Examiner reasons that “the specific objects used to signify a winning keno card is a mere design choice as it does not add functionality to the game.” Id. The Examiner concludes “[i]t would have been obvious to one skilled in the art to modify the keno game of Pease with a theme that identifies structures within a landmass, for the purpose of ascetically improving the game.” Ans. 9. Appeal 2011-004887 Application 11/280,826 13 Appellants argue neither Pease nor Simunek discloses ‘the group of objects compris[ing] at least one of a building, buildings, a portion of a building, a structure, and a collection of structures,’ as set forth in claim 5, or the group of objects comprising portions of a larger entity, where ‘[the] larger entity comprises one of a village, town, city, region, state, country, district, province, and land-mass’ [claim 8]. Reply Br. 13. As to the later, we disagree as Senari discloses a state. Furthermore, we agree with the Examiner’s finding that designing a wagering game to utilize different pieces of land mass such as Senari’s states which form a country (the United States) instead of numbers is a design choice which would have been obvious to one of ordinary skill in the art at the time of the invention in view of the teachings of Senari. Ans. 8. For these reasons, we sustain the Examiner’s rejection of claims 5 and 8. Claims 6 and 7: Appellants do not present separate arguments for the patentability of claims 6 and 7 which depend either directly or indirectly from claim 1. App. Br. 22-23. Accordingly, we sustain the Examiner’s rejection of claims 6 and 7. DECISION The Examiner’s rejections of claims 1, 2, 5-10, 12-18 and 20 are AFFIRMED. The Examiner’s rejection of claims 3, 4, 11 and 19 are REVERSED. Appeal 2011-004887 Application 11/280,826 14 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). 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