Ex Parte Jaffe et alDownload PDFPatent Trial and Appeal BoardMay 20, 201611253173 (P.T.A.B. May. 20, 2016) Copy Citation 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 Copy with citationCopy as parenthetical citation