Ex Parte Locke

Board of Patent Appeals and Interferences

Jul 28, 2011

10140601 (B.P.A.I. Jul. 28, 2011)

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.
10/140,601 05/07/2002 David K. Locke 247079-000138USPT 7694
70243 7590 07/28/2011
NIXON PEABODY LLP
300 S. Riverside Plaza
16th Floor
CHICAGO, IL 60606
EXAMINER
HSU, RYAN
ART UNIT PAPER NUMBER
3716
MAIL DATE DELIVERY MODE
07/28/2011 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 DAVID K. LOCKE
____________________

Appeal 2009-009412
Application 10/140,601
Technology Center 3700
____________________

Before WILLIAM F. PATE, III, JENNIFER D. BAHR, and KEN B.
BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
David K. Locke (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1-28.1 We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM-IN-PART.

THE INVENTION
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:
receiving a wager from a player; and
conducting a risk/reward feature including
accumulating awards over a plurality of rounds,
presenting the player with an option to undertake a risk
of all of the awards accumulated during a current
one of the rounds, and
awarding all of the awards accumulated during the
rounds prior to the current one of the rounds
following an unsuccessful outcome in response to
the undertaking of said risk.

THE REJECTIONS
The following Examiner’s rejections are before us for review:
1. Claims 1-10 and 21-28 are rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter;

1 In this Decision, we refer to the Appeal Brief filed Aug. 22, 2007 (App.
Br.), the Examiner’s Answer filed Dec. 4, 2008 (Ans.), the Reply Brief filed
Jan. 16, 2008 (Reply Br.), and the Supplemental Reply Brief filed Jan. 29,
2009 (Supp. Reply Br.).
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2. Claims 1-28 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Baerlocher (US 6,599,192 B1, issued Jul. 29, 2003) and
Yoseloff (US 6,312,334 B1, issued Nov. 6, 2001)2.

OPINION
The Section 101 Rejection – Patent-Ineligible Subject Matter
The Examiner concluded that method claims 1-10 and 21-28 fail the
machine-or-transformation test. Ans. 4-5 (citing, inter alia, In re Bilski,
545 F.3 943 (Fed. Cir. 2008) (en banc), aff’d but criticized on other grounds,
Bilski v. Kappos, 130 S. Ct. 3219 (2010)). Appellant argues that the claims
are tied to a particular machine (Supp. Reply Br. 5), asserting that the claims
“relate to a gaming machine, such as slot machines, video poker machines
and the like, upon which a wagering game is implemented for a player’s
enjoyment and excitement.” Id. at 7 (emphasis added). Appellant also
argues that the claims involve a transformation of data into a visual
depiction. Supp. Reply Br. 28. We do not find Appellant’s arguments
persuasive.
In support of the “particular machine” argument, Appellant contends
that the recitation of “on a gaming machine” in the preamble of various
claims constitutes a structural limitation and thus ties the claims to a
particular machine. Supp. Reply Br. 7-8; see, e.g., claim 1 (“A method of
conducting a wagering game on a gaming machine, comprising ….”)
Appellant also quotes recited steps from various claims, and then, with much

2 The Examiner also lists Nakatani (US 5,720,663, issued Feb. 24, 1998) as
evidence relied upon. Ans. 3. Nakatani is relied upon as support for the
proposition that fighting games are prevalent in the art. Id. at 8-9.
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discussion of the Specification’s description of embodiments, explain how
the claimed steps may be performed by a machine. See, e.g., Supp. Reply 9-
12. However, we disagree with Appellant’s implied contention that the
claims are limited to those embodiments and decline to read those
embodiments into the claims. See SuperGuide Corp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though
understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim.”)
We conclude that the mere recitation of “a gaming machine” in the
preamble does not limit the scope of the claims to the use of a particular
machine. See In re Bilski, 545 F.3d at 961 (“the use of a specific machine or
transformation of an article must impose meaningful limits on the claim’s
scope to impart patent-eligibility.”) Additionally, Appellant has not shown
how the various recited claim steps are tied to a specific and particular
machine. Further, many of the referenced steps could be performed by a
human, i.e. a bookie. For example, a person, and not necessarily a machine,
could perform the “receiving a wager from a player” step of claim 1. Contra
Supp. Reply Br. 9-10.
In arguing that the claims are transformative, Appellant presents a
blanket assertion without reference to any specific claim or limitation. See
Supp. Reply Br. 26-28. Appellant states:
In the present case, each of claims 1-10 and 21-28 is limited to
a practical application (i.e., a wagering game conducted on a
gaming machine) to transform specific data (e.g., a game
outcome determined by a CPU 18 executing a wagering game,
player inputs into a risk/reward gaming feature, etc.) into visual
depictions (e.g., displayed reels, animated fight between
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characters, etc.) that represents specific objects (e.g., a game
outcome or outcomes) related to the wagering game.
Id. at 28. Appellant appears to be discussing the Specification’s general and
exemplary disclosure rather than the inventions defined by claims. We fail
to see, for example, how claim 1 requires execution of a wagering game by a
CPU, the transformation of any data (specific or otherwise) determined by
such a CPU, or a visual depiction step. As such, Appellant has not shown
how the claimed methods involve a transformation such that those claims
define patentable subject matter.
We sustain the Examiner’s rejection of claims 1-10 and 21-28 under
§ 101 as being directed to patent-ineligible subject matter.

The Section 103 Rejection - Obviousness
Independent method claim 1 recites accumulating awards over a
plurality of rounds and presenting the opportunity to risk awards
accumulated in a current round and awarding all awards accumulated during
prior rounds upon an unsuccessful outcome related to the risk (i.e. when the
player loses during a current round, the player still receives awards
accumulated during previous rounds).
The Examiner appears to have found that Baerlocher discloses the
claimed invention with the exception of awarding accumulated awards from
prior rounds upon an unsuccessful outcome, and relies on Yoseloff for that
feature. Ans. 5-6, id. at 13 (referring to “the deficiency of Baelorcher.”) We
determine that the Examiner has not adequately and clearly articulated a
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rejection that accounts, in a single interpretation and combination of
references’ teachings, for all of the recited awards in the various forms of
“rounds.”
Initially, the Examiner found that Baerlocher teaches a feature that
allows accumulating awards over a plurality of rounds, and found that each
motorcycle jump constitutes a claimed round. Ans. 5-6, see also id. at 12
(Response to Argument section of the Answer: “Secondly, each attempt can
be viewed also as a round ….”) Appellant argued that neither cited
reference discloses an option to undertake risk of awards accumulated in a
current round. App. Br. 22-23. In response, the Examiner found, in the
alternative, that all of the Baerlocher’s attempts in one play constitute a
single round. Ans. 12 (“Firstly, ….”) Similarly, the Examiner finds that the
two segments of Yoseloff’s game could comprise one round. Id. at 14.
However, as Appellant points out, claim 1 calls for accumulating awards
over a plurality of rounds, and such a feature is missing where all the events
constitute a single round as in the Examiner’s scenario. See Reply Br. 20.
On the record before us, we cannot sustain the rejection of claim 1 and
its dependent claims as obvious in light of Baerlocher and Yoseloff.
Independent apparatus claim 11 recites “a risk/reward feature, under
processor control,” for performing steps that are the same or similar to those
of claim 1. Independent method claims 21, 22, 24, and 25 also contain
recitations concerning the various rounds. For the same reasons as for claim
1, we cannot sustain the rejection of claims 21, 22, 24, and 25 and their
dependent claims as being obvious.
Method claim 27, which does not explicitly recite a plurality of
rounds, refers to a risk/reward feature involving the option to risk all awards
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accumulated in a current round. The Examiner’s proposes to modify
Baerlocher by the incorporation of the risk/reward feature of Yoseloff into
the game of Baerlocher’s so as to result in a game “that would retain all of
the awards accumulated during the rounds prior to the current one of the
rounds following an unsuccessful outcome in response to the undertaking
of the risk game.” Ans. 11 (emphasis added). However, the Examiner’s
articulation of the rejection in the Grounds of Rejection portion of the
Answer does not adequately address the aspect of risking all awards
accumulated in the current round. See Ans. 9-11; compare id. at 10
(seemingly finding that Yoseloff’s play segments each equate to a “round”
within the meaning of Appellant’s claimed invention, and thus the risk is of
awards from previous rounds) with id. at 14 (responding to Appellant’s
argument (App. Br. 21-23) that the Examiner has failed to show how the
“current round” aspect is satisfied by finding that Yoseloff’s two segments
could be viewed as a single “round.”) Additionally, Examiner has not
adequately and clearly articulated a rejection that accounts, in a single
interpretation and combination of references’ teachings, for all of the steps
in the manner claimed in claim 27. On the record before us, we cannot
sustain the rejection of claim 27 or its dependent claim 28 as obvious in light
of Baerlocher and Yoseloff.

DECISION
The decision of the Examiner to reject claims 11-20 is reversed. The
decision of the Examiner to reject claims 1-10 and 21-28 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

JRG