Ex Parte Loose et al

Patent Trial and Appeal Board

Oct 31, 2016

12357078 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/357,078 0112112009 Timothy C. Loose
70243 7590 11/02/2016
NIXON PEABODY LLP
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.
247079-000093USC4 1009
EXAMINER
70 West Madison, Suite 3500 HU, KANG
CHICAGO, IL 60602
ART UNIT PAPER NUMBER
3717
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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 TIMOTHY C. LOOSE and WAYNE H. ROTHSCHILD
Appeal2014-001869
Application 12/357,078
Technology Center 3700
Before EDWARD A. BROWN, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Timothy C. Loose and Wayne H. Rothschild ("Appellants") appeal
under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims
94--98, 100-105, 107-110, 112, 113, and 124--130, which are all the pending
claims. 1 See Appeal Br. 1, 2. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We REVERSE.
According to Appellants, the real party in interest is WMS Gaming,
Inc. Appeal Br. 1.
Appeal2014-001869
Application 12/357,078
CLAIMED SUBJECT MATTER
Appellants' disclosed invention "relates generally to gaming
machines and, more particularly, to a gaming machine with a video image
superimposed over a primary display of the machine." Spec., p. 1, 11. 4--5.
Claims 94, 100, 108, and 126 are independent. Claim 100, reproduced
below with emphasis added, is illustrative of the subject matter on appeal.
100. A gaming machine for playing one or more wagering
games compnsmg:
a plurality of mechanical reels operable to display a
plurality of symbols for indicating an outcome of a wagering
game; and
a transmissive display operable to display images spaced
away from and overlaying the plurality of mechanical reels, the
transmissive display being operable to be transparent during a
first play of the wagering game so as to permit clear viewing of
the plurality of mechanical reels by the player, the transmissive
display further being operable to increase its opacity on a
portion of the transmissive display to cause at least one, but not
all, of the plurality of mechanical reels to be obscured from
view by the player during a second play while the unobscured
ones of the plurality of mechanical reels can be clearly viewed
by the player.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Ozaki
Nonaka
US 2001/0031658 Al
US 2004/0214637 Al
Oct. 18, 2001
Oct. 28, 20042
2 We note that Nonaka has a filing date, which the Examiner relies
upon for 35 U.S.C. § 102(e) purposes, of Oct. 31, 2003.
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Appeal2014-001869
Application 12/357,078
REJECTIONS
The following rejections are before us for review:
I. Claims 94--96, 98, 100-103, 105, 107-109, 112, 124--128, and
130 stand rejected under 35 U.S.C. § 102(e) as anticipated by
Nonaka. Non-Final Act. 4--8.
II. Claims 97, 104, 105, 110, 113, and 129 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Nonaka and
Ozaki. Id. at 8.
ANALYSIS
Rejections I and II both rely on Nonaka for disclosing a gaming
machine with a plurality of reels and a transmissive display overlaying the
reels, where a portion of the transmissive display changes opacity to obscure
from view at least one reel to thereby effectively reduce the number of
viewable reels. 3 See Non-Final Act. 4--8.
Appellants' principal argument against these rejections is that Nonaka
does not qualify as prior art under 35 U.S.C. § 102(e) based on declarations
that were submitted to the Examiner for consideration in an attempt to
"swear behind" the filing date of Nonaka. See Appeal Br. 6-9; Reply
Br. 1-8.4 In particular, Appellants submitted a Declaration under 37 C.F.R.
§ 1.131 of the named inventors, dated March 23, 2011 ("Rule 131
3 This feature, or a similar feature of using the transmissive display to
effectively reduce a number of viewable reels or columns of symbols, is
recited in each of the independent claims.
4 We note that the Reply Brief does not include page numbers. For
reference convenience, we designate the cover page of the brief as page 1
and number the pages consecutively therefrom.
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Appeal2014-001869
Application 12/357,078
Declaration" or "Inventors' Declaration") and a Declaration under 37 C.F.R.
§ 1.132 of attorney Michael J. Blankstein, dated March 24, 2011 ("Rule 132
Declaration" or "Attorney's Declaration") for consideration by the
Examiner. 5 The Inventors' Declaration and the Attorney's Declaration were
submitted in an effort to show earlier conception of the claimed subject
matter-namely, the feature of a portion of the transmissive display
changing opacity to obscure from view at least one reel to thereby
effectively reduce the number of viewable reels---coupled with due diligence
from a critical period prior to the filing date of Nonaka to the filing date of
the subject application (i.e., constructive reduction to practice).
The Examiner determined, after consideration of the declarations, that
Appellants did not provide sufficient evidence to demonstrate prior
conception of the feature of a portion of the transmissive display changing
opacity to obscure from view at least one reel to thereby effectively reduce
the number of viewable reels. See Non-Final Act. 3; Ans. 2---6. In particular,
the Examiner's position is that the disclosure contained in the draft patent
application (submitted to the Board with the Appeal Brief as Exhibit H)6
provides evidence of a video image that may change in opacity, but only
with respect to a single video image that overlies all of the reels, rather than
each reel individually, so that the video image disclosed would not be able to
obscure from view at least one reel, but not all of the reels. See Ans. 4. In
5 These declarations were also submitted to the Board with the Appeal
Brief and are referenced herein (as Exhibits F and G, respectively) as they
are identified in such submission. See Appeal Br., Evidence App.
6 This document was submitted to the Examiner as "Exhibit A" of the
Inventors' Declaration; it is referenced herein as Exhibit H as it is identified
in the submission to the Board. See Appeal Br., Evidence App.
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Appeal2014-001869
Application 12/357,078
other words, the Examiner's position is that the disclosure of Exhibit H
supports only changing the opacity of the entire transmissive display, but not
changing the opacity of "a portion of' the transmissive display to effectively
reduce the number of viewable reels. See id.
Upon review of the disclosure of Exhibit H, we agree with Appellants
that sections of the draft patent application provide sufficient descriptive
evidence of the disputed feature. In particular, we agree with Appellants
that Exhibit H's disclosure of using the transmissive display (which the
Examiner acknowledges may change in opacity) to "change the number of
reels," coupled with the express disclosure in draft claim 56 of "wherein the
supplemental video image [of the transmissive display] masks at least one of
the primary columns to be removed from the wagering game," is sufficient
to evidence earlier conception of the disputed feature. 7 Reply Br. 5; see also
Exhibit H, p. 13, 11. 2-3, p. 22, 11. 2, 7-8.
The Examiner's position that removal of a reel from the game (as
described in draft claim 56) "can be done" by other methods, and is "not
necessarily" accomplished by changing the opacity of the overlying video
image, is too restrictive. Ans. 4. It is not necessary that obscuring a reel by
changing the opacity of the overlying video image be the only way to
effectively remove a reel from the game; rather, so long as one of ordinary
skill in the art, upon review of the disclosure, would appreciate that doing so
is a suitable way to effectively remove a reel from the game, this is
7 We note that, on the requirement of establishing due diligence, the
record before us does not raise any issue as to the sufficiency of Appellants'
asserted diligence. See Exhibit F i-fi-18, 9; Exhibit G i-fi-18-10; see also
Appeal Br. 7; Ans. 2-6.
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Appeal2014-001869
Application 12/357,078
sufficient disclosure to evidence possession of the disputed feature. Thus,
the identified express disclosures of Exhibit H, taken in light of the entirety
of the draft patent application, are sufficient to describe to one of ordinary
skill in the art-albeit not in the same words-the claimed feature of a
portion of the transmissive display changing opacity to obscure from view at
least one reel to thereby effectively reduce the number of viewable reels.
In view of the foregoing, we agree with Appellants that the Examiner
erred in determining that Appellants did not provide sufficient evidence to
demonstrate prior conception of the feature of a portion of the transmissive
display changing opacity to obscure from view at least one reel to thereby
effectively reduce the number of viewable reels in swearing behind the filing
date of Nonaka. Accordingly, disqualification of Nonaka as prior art under
35 U.S.C. § 102(e) is fatal to both Rejections I and II; thus, we do not
sustain them.
DECISION
We REVERSE the Examiner's rejections of claims 94--98, 100-105,
107-110, 112, 113, and 124--130.
REVERSED
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