Ex Parte Hornik et al

Patent Trial and Appeal Board

Mar 28, 2013

11331611 (P.T.A.B. Mar. 28, 2013)

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.
11/331,611 01/13/2006 Jeremy Hornik 247079-000346USPT 2964
70243 7590 03/28/2013
NIXON PEABODY LLP
300 S. Riverside Plaza
16th Floor
CHICAGO, IL 60606
EXAMINER
GALKA, LAWRENCE STEFAN
ART UNIT PAPER NUMBER
3717
MAIL DATE DELIVERY MODE
03/28/2013 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 HORNIK, JOEL R. JAFFE, DION AOKI and
JAMES POOLE
____________

Appeal 2011-005853
Application 11/331,611
Technology Center 3700
____________

Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.
DECISION ON APPEAL

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STATEMENT OF THE CASE
Jeremy Hornik et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision to reject claims 1-20.1 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b). An oral hearing was conducted on
March 7, 2013.
We REVERSE.
THE INVENTION
Appellants’ invention relates to “a wagering game having a unique
feature to allow a player to select a new function for a symbol.” Spec. para.
[0002]; figs. 3-7.
Claim 10 is representative of the claimed invention and reads as
follows:
10. A gaming terminal for playing a wagering game,
comprising:
a display displaying a plurality of symbols that indicate a
randomly selected outcome of the wagering game; and
an input device for allowing a player to select a function
for a selected one of the plurality of symbols, the function being
chosen from a plurality of functions, wherein the number of the
plurality of functions presented to the player varies depending
on a predetermined criteria;
wherein, in response to the input device being activated
and the randomly selected outcome including the selected one
of the plurality of symbols, the selected function is attributed to
only the selected one of the plurality of symbols included in the
randomly selected outcome.

1 The Examiner indicated that claim 21 is allowable if rewritten in
independent form including all of the limitations of the base claim and any
intervening claim. Final Rej. 8.
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THE EVIDENCE
The Examiner relies upon the following evidence:

Wilcox US 5,019,973 May 28, 1991
Thomas US 6,190,255 B1 Feb. 20, 2001
Demar2 US 6,203,429 B1 Mar. 20, 2001
Acres
Brossard
US 6,254,483 B1
US 6,364,767 B1
Jul. 3, 2001
Apr. 2, 2002
Demar3
Beaulieu
Shackelford
US 2002/0132659 A1
US 2004/0235558 A1
US 7,377,850 B2
Sep. 19, 2002
Nov. 25, 2004
May 27, 2008

The following rejections are before us for review:4
I. The Examiner rejected claim 10 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description
requirement.
II. The Examiner rejected claims 10, 11 and 16 under 35 U.S.C.
§ 102(e) as anticipated by Shackelford.
III. The Examiner rejected claims 1-5 under 35 U.S.C. § 103(a) as
unpatentable over Shackelford and Wilcox.
IV. The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Shackelford, Wilcox and Brossard.
V. The Examiner rejected claims 7-9 under 35 U.S.C. § 103(a) as
unpatentable over Shackelford, Wilcox and Demar’659.

2 Hereafter “Demar ‘429.”
3 Hereafter “Demar ‘659.”
4 The Examiner has withdrawn the rejection of claim 13 under 35 U.S.C.
§ 112, first paragraph, for failing to comply with the enablement
requirement. Ans. 3.
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VI. The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Shackelford and Demar ‘429.
VII. The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as
unpatentable over Shackelford and Thomas.
VIII. The Examiner rejected claims 14 and 15 under 35 U.S.C.
§ 103(a) as unpatentable over Shackelford and Brossard.
IX. The Examiner rejected claims 17, 18 and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Shackelford, Wilcox and
Beaulieu.
X. The Examiner rejected claim 19 under 35 U.S.C. § 103(a) as
unpatentable over Shackelford, Wilcox, Beaulieu and Acres.

ANALYSIS
Rejection I
Written Description of claim 10
Independent claim 10 recites a gaming terminal for playing a
wagering game including “a display displaying a plurality of symbols that
indicate a randomly selected outcome of the wagering game;” and “an input
device for allowing a player to select a function for a selected one of the
plurality of symbols,” wherein “the selected function is attributed to only the
selected one of the plurality of symbols included in the randomly selected
outcome.” App. Br., Claims Appendix. The Examiner takes the position
that “Appellant[s] [are] using the negative limitation of ‘only’ and needs
specific support for it in the [S]pecification.” Ans. 13. Specifically,
according to the Examiner, (1) “[j]ust because a player purchases a
conversion of a selected symbol to a wild symbol does not mean that is the
only wild symbol in the game. It is very easy to imagine another symbol in
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the game having a wild function too” (Ans. 12); and (2) “[t]he base outcome
could already include wild symbols or similar functions” (Ans. 12-13).
To satisfy the written description requirement, the disclosure must
convey with reasonable clarity to skilled artisans that Appellants were in
possession of the claimed invention as of the filing date. Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The inquiry into
whether the description requirement is met is a question of fact. In re
Wertheim, 541 F.2d 257, 262, (CCPA 1976); In re Ruschig, 379 F.2d 990,
996 (CCPA 1967).
We agree with Appellants that “[t]he [S]pecification explains that the
selected function may be attributed to a selected plurality of symbols” and
that “only those symbols may be changed.” App. Br. 7; Spec. paras. [0008]-
[0013]; see also App. Br. 3; Spec. para. [0041]; figs. 3, 7. As such, we find
that Appellants’ Specification and drawings convey with reasonable clarity
to a person of ordinary skill in the art that the selected function is attributed
to only the selected one of the plurality of symbols included in the randomly
selected outcome, as called for by independent claim 10.
Accordingly, the rejection of independent claim 10, under 35 U.S.C. §
112, first paragraph, for failing to comply with the written description
requirement, cannot be sustained.

Rejection II
Anticipation of claims 10, 11 and 16
Independent claim 10 recites a gaming terminal for playing a
wagering game including “a display displaying a plurality of symbols that
indicate a randomly selected outcome of the wagering [base] game;” and “an
input device for allowing a player to select a function for a selected one of
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the plurality of symbols [from the outcome of the wagering (base) game].”
App. Br., Claims Appendix. The Examiner takes the position that the adder
and multiplier symbols on the fourth and fifth reels 30 and 40, respectively,
of Shackelford, are “interpreted to be basic game symbols since they
ultimately determine the award.” Ans. 13. The Examiner further takes the
position that the “function” of the fourth and fifth reels 30 and 40 of
Shackelford “include[s] the specific amount by which an adder or multiplier
adjusts a win.” Id. The Examiner also takes the position that all of the reels
of Shackelford are “uniformly spin activated a single time, and are not
subject to independent activation or re-activation,” and, as such, the fourth
and fifth reels 30 and 40 of Shackelford would be considered as part of the
basic game outcome. Ans. 14; (citing Shackelford, claim 1, col. 7, l. 67-col.
8, l. 2; fig. 1). The Examiner concludes that since all of the reels of
Shackelford are uniformly spun, the selected symbols of the fourth and fifth
reels 30 and 40 do change functions because they may be applied to the
basic game results. Ans. 15.
Appellants argue that “the basic game [of Shackelford] is limited to
three spinning reels, while the fourth and fifth separate bonus reels may
modify the basic game outcome.” Reply Br. 3. Appellants further argue
that “[r]egardless of whether such bonus reels are spun, Shackelford
specifically teaches that only the reels 20 are part of the basic game and reels
30 and 40 are not considered in the base game random outcome.” Reply Br.
2.
Although we agree with the Examiner’s position that all of the reels of
Shackelford are uniformly spun, as correctly pointed out by Appellants,
Shackelford teaches a base game 20 (i.e., the first three reels), a first base
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game modifier 30 (i.e., the fourth reel) and a second base game modifier 40
(i.e., the fifth reel). Reply Br. 2-3; Shackelford, Abstract; col. 4, ll. 43-53;
col.4, l. 60-col. 5, l. 7; col. 5, l. 62-col. 6, l. 1; fig. 1. As such, we agree with
Appellants that the fourth and fifth reels 30 and 40 of Shackelford are bonus
reels that “are not part of the basic game [20].” Reply Br. 3. We further
agree with Appellants that (1) even if bonus reels 30 and 40 of Shackelford
were to change the “function” of the symbols of the reels of the base game
20, as proposed by the Examiner, all of the symbols of the reels of the base
game 20 would change; and (2) Shackelford fails to teach that bonus reels 30
and 40 “select the function (multiplier or adder) for a ‘selected one of the
symbols’ [of the reels of the base game 20],” as required by claim 10. App.
Br. 10.
Accordingly, Shackelford does not teach all of the limitations of
independent claim 10 or its dependent claims 11 and 16. Therefore, the
rejection of claims 10, 11 and 16 under 35 U.S.C. § 102(e) as anticipated by
Shackelford cannot be sustained.
Rejections III-X
Obviousness of claims 1-9, 12-15 and 17-20
The Examiner’s application of Wilcox, Brossard, Demar ‘659, Demar
‘429, Thomas, Beaulieu and Acres as separate additional references in
conjunction with Shackelford do not remedy the deficiencies of Shackelford
as described above. Accordingly, Rejections III-X likewise cannot be
sustained.
DECISION
The decision of the Examiner to reject claim 10 under 35 U.S.C. §
112, first paragraph, for failing to comply with the written description
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requirement, is reversed.
The decision of the Examiner to reject claims 10, 11 and 16 under 35
U.S.C. § 102(e) is reversed.
The decision of the Examiner to reject claims 1-9, 12-15 and 17-20
under 35 U.S.C. § 103(a) is reversed.

REVERSED

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