Ex Parte Jaffe et al

Patent Trial and Appeal Board

May 20, 2016

11253173 (P.T.A.B. May. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111253,173 10/18/2005
70243 7590
NIXON PEABODY LLP
70 West Madison, Suite 3500
CHICAGO, IL 60602
05/24/2016
FIRST NAMED INVENTOR
Joel R. Jaffe
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.
247079-0003 l 9USPT 1099
EXAMINER
PINHEIRO, JASON PAUL
ART UNIT PAPER NUMBER
3717
NOTIFICATION DATE DELIVERY MODE
05/24/2016 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
following e-mail address( es):
docketingchicago@nixonpeabody.com
ipairlink@nixonpeabody.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOEL R. JAFFE, MICHAEL P. CASEY, and
JEFFREY M. LICHTMAN
Appeal2014-005704
Application 11/253, 173
Technology Center 3700
Before LYNNE H. BROWNE, JILL D. HILL, and LISA M. GUIJT,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Joel R. Jaffe et al. ("Appellants") 1 appeal under 35 U.S.C. § 134(a)
from the Examiner's decision to reject claims 1-3 and 11-20. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellants identify the real party in interest as WMS Gaming Inc. Appeal
Br. 3.
Appeal2014-005704
Application 11/253, 173
THE CLAIMED SUBJECT MATTER
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. A computer-implemented method of conducting a
wagering game that includes randomly selecting an
outcome of a plurality of outcomes, wherein said selecting
is determined according to a gaming volatility math
feature of said wagering game, said method comprising:
receiving, via at least one input device, one or more
wager inputs indicating one or more wagers from a player
to initiate a current gaming session of said wagering game;
accessing, via at least one of one or more
processors, stored game data associated with said player,
said game data representing one or more wagers and one
or more outcomes occurring during game-play of said
wagering game in a previous gaming session in which said
gaming volatility math feature was at a first volatility;
altering, via at least one of said one or more
processors, said gaming volatility math feature from said
first volatility to a higher volatility for said current gaming
session in direct response to said game data indicating that
said game-play exceeds a designated threshold; and
selecting, via at least one of said one or more
processors, at least one randomly-selected outcome in
accordance with said gaming volatility math feature of
said wagering game at said higher volatility.
2
Appeal2014-005704
Application 11/253, 173
THE REJECTIONS 2
Claims 1-3, 11-13, and 16-20 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Schneider (US 2003/0078101 Al; pub. Apr. 24,
2003). 3
Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Schneider and Walker (US 2004/0259627 Al; pub. Dec.
23, 2004).
ANALYSIS
Claims 1-3, 11-13, and 16-20-Anticipation
Regarding independent claims 1, 12, and 18, the Examiner finds, inter
alia, that Schneider discloses altering the gaming volatility math feature
from a first volatility to a higher volatility for the current gaming. Final Act
3 (citing Schneider i-fi-138, 45, 58-86, 90, 96, 99). In support, the Examiner
determines that "adding an ace to an Aces bonus poker game as disclosed in
Schneider ... would inherently lower the frequency of higher awards,"
because the addition "makes a high award winning hand[] more difficult to
obtain." Ans. 8 (citing Schneider i196). In further support, the Examiner
points to Schneider's disclosure that "the addition of an extra ace would give
a 'perceived' edge to the player (i.e., not a true edge)." Id. (citing Schneider
i1 96) (emphasis omitted).
2 The Examiner's rejection of claims 4--10 under 35 U.S.C. § 112, first
paragraph, is not subject to appeal because claims 4--10 have been cancelled.
See Amendment (dated June 24, 2014); Adv. Act. (dated June 27, 2013).
3 Because the Examiner finds Schneider discloses the subject matter of
claim 3, the omission of claim 3 from the Examiner's statement of the
rejection is considered a typographical error. See Final Act. 4--6.
3
Appeal2014-005704
Application 11/253, 173
Appellants argue that "Schneider adopts the commonly recognized
definition of wagering game volatility: 'highly volatile games with
paybacks that center around low frequency-high prize value awards."'
Appeal Br. 11 (citing Schneider i-f 96); see Reply Br. 2. Appellants submit
that "[ t ]he basic laws of probability require that increasing the ratio of aces
in a deck increases the probability of having an ace in any given hand and
increases the probability of winning one of the high-value awards that are
given for 4-ace hands." Reply Br. 3. Regarding Schneider's discussion of a
"perceived edge," Appellants contend that Schneider does not explain why
adding an ace is a perceived edge to winning and note that other unexplained
game modifications may neutralize the inherent advantage of adding the ace.
Id. Appellants conclude that "[a]dding an Ace to the deck may change
volatility (or it may not) but by no means can one assume that adding an Ace
increases volatility," as required by the claims. Appeal Br. 12.
We agree with Appellants that the Examiner erred in finding that
Schneider expressly or inherently discloses altering the gaming volatility
math feature from a first volatility to a higher volatility as required by claims
1, 12, and 18. Appellants' Specification defines a "low volatility game" as a
game featuring "frequent basegame pays, or awards, and bonus rounds,"
with "relatively small awards." Spec. i-f 47. Appellants' Specification also
describes an increase in game volatility as one in which "the awards and the
bonus rounds become less frequent but the size of the awards increases." Id.
Thus, we interpret the claims as requiring the gaming volatility to be altered
from a first volatility to a higher volatility marked by less frequent awards of
greater sizes.
4
Appeal2014-005704
Application 11/253, 173
Schneider describes electronic gaming machines that include a game
tailoring system for generating a game enhancing reward for players after a
trigger event has occurred, wherein the game enhancing reward could be
"increas[ing] the probability of occurrence for certain desirable game
outcomes," accomplished by, for example, "adding desirable cards to the
deck." Schneider i-fi-156, 63, 73. Schneider more specifically discloses
adding an extra ace to a deck in Aces bonus poker as an incentive award for
a high volatility player. Schneider i1 96. Thus, Schneider discloses
enhancing rewards by increasing their probability, which describes altering
the gaming volatility from a first volatility to a lower volatility marked by
more frequent awards (presumably of lesser sizes), contrary to the claimed
requirement. We also do not agree with the Examiner that Schneider's
characterization of adding the extra ace as a "perceived" edge means that the
advantage is not actually realized as a higher probability of winning an
award; Schneider does not suggest or disclose that such an edge is not also
real. 4
Accordingly, we do not sustain the rejection of independent claims 1,
12, and 18, and claims 2, 3, 11, 13, 16, 17, 19, and 20 depending therefrom.
Claims 14 and 15 - Obviousness
The Examiner's reliance on Walker does not cure the deficiencies in
the Examiner's finding with respect to Schneider, as discussed supra and as
applied to independent claim 12. Therefore, we also do not sustain the
Examiner's rejection of claims 14 and 15, which depend from claim 12.
Final Act. 9--10.
4 An ordinary definition of the term "perceive" is "to become conscious of."
WEBSTER'S THIRD NEW lNTER'L DICTIONARY, 1675 (1993).
5
Appeal2014-005704
Application 11/253, 173
DECISION
We REVERSE the Examiner's rejection of claims 1-3 and 11-20.
REVERSED
6