Ex Parte Luciano

Board of Patent Appeals and Interferences

May 19, 2010

10407726 (B.P.A.I. May. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT A. LUCIANO
____________

Appeal 2009-006584
Application 10/407,726
Technology Center 3700
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Decided: May 19, 2010
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Before JOHN C. KERINS, STEVEN D.A. McCARTHY and MICHAEL W.
O’NEILL, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2009-006584
Application 10/407,726

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STATEMENT OF THE CASE
Robert A. Luciano (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 30-48, the only claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

SUMMARY OF DECISION
We REVERSE.
THE INVENTION
Appellant’s claimed invention is to a gaming machine and method for
playing multiple games in which a game controller activates a secondary
game based on a triggering event in a primary game, and symbols generated
in the outcome of the secondary game may be used to improve the outcome
of the primary game as well as remain available to be used one or more
additional times to improve the outcome of future primary games, the
gaming machine being provided with a bank display that includes a reel
display for replicating the outcome of the primary game and with a symbol
display for displaying one or more symbols from the outcome of a secondary
game. Independent claim 30 is reproduced below, and is further illustrative
of the overall claimed subject matter:
30. A gaming machine, comprising:

a primary game comprising a set of reels and a
plurality of symbols located on each reel in the set
of reels;

a first mechanism for spinning the set of reels and
generating a primary outcome for the primary
game, wherein the primary outcome is the
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resulting combination of two or more symbols on
the set of reels;

a secondary game comprising a plurality of wheels
and a plurality of symbols located on each wheel
in the plurality of wheels, wherein activating the
secondary game results in generating a secondary
outcome and the secondary outcome comprises
one or more symbols selected on the set of wheels;

a game controller operatively connected to the
primary game and the secondary game, wherein
the game controller activates the secondary game
based upon the presence of a triggering symbol in
the primary outcome; and

a bank display comprising a reel display for
replicating the primary outcome of the primary
game, and a symbol display for displaying the one
or more symbols generated in the secondary
outcome, wherein the one or more symbols
generated in the secondary outcome are used to
improve the primary outcome of the primary game
and are available to be used at least one more time
to subsequently improve the outcome of one or
more future primary games, and wherein the reel
display presents an improved outcome that
includes one or more symbols from
the outcome of the primary game and one or more
symbols generated during the secondary outcome.

THE REJECTIONS
The Examiner has rejected:
(i) claims 30-37, 39-45, 47 and 48 under 35 U.S.C. § 103(a) as being
unpatentable over Mayeroff (US 6,224,483 B1, issued May 1, 2001) in view
of Takemoto (JP 6-91034, published April 5, 1994), Kaminkow (US
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6,695,696 B1, issued February 24, 2004) and Crawford (US 6,270,412 B1,
issued August 7, 2001); and
(ii) claims 38 and 46 under 35 U.S.C. § 103(a) as being unpatentable
over Mayeroff in view of Takemoto, Kaminkow, Crawford and Koza (US
4,652,998, issued March 24, 1987).
.
ISSUES
Did the Examiner err in concluding that a combination of the
teachings of the Mayeroff, Takemoto, Kaminkow and Crawford patents
renders obvious the subject matter of claims 30-37, 39-45, 47 and 48?
Did the Examiner err in concluding that a combination of the
teachings of Mayeroff, Takemoto, Kaminkow, Crawford and Koza renders
obvious the subject matter of claims 38 and 46?

ANALYSIS
Claims 30-37, 39-45, 47 and 48--Obviousness
Independent claims 30 and 45 are directed to a game machine, while
independent claim 39 is directed to a method for playing multiple games.
Appellant does not separately argue any of these claims apart from the
others, and does not separately argue any of the dependent claims.
Inasmuch as the limitations in the independent machine claims track closely
the limitations in the independent method claim, essentially the same issues
are presented for consideration.
Claim 30 calls for the gaming machine to have a bank display having
a reel and a symbol display, with the reel display replicating the primary
outcome of the primary game, and the symbol display displaying the one or
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more symbols generated in the secondary outcome. The Examiner found
that the Kaminkow patent teaches a multi-reel slot machine having a
secondary display that replicates the paylines earned of the primary game, so
as to help a player understand which of the multiple paylines in a multiple
payline game constituted the winning paylines. (Answer 4). Based on this
finding, and based upon an asserted desire on the part of those of ordinary
skill in the art to reduce the complex appearance of a game machine as
disclosed by Mayeroff as modified in view of the teachings of Takemoto, the
Examiner concluded that a person of ordinary skill would provide, on the
Mayeroff/Takemoto game machine, “a display to replicate the winning
results of the primary game.” (Id.).
The Examiner’s position does not address, for the secondary display
on the modified Mayeroff/Takemoto game machine presumably found to
correspond to the claimed bank display, any disclosure of or suggestion to
also have the secondary display include a symbol display for displaying the
symbols from the outcome of the secondary game. We are unable to find an
express disclosure in the cited art of this claim feature. The Examiner
further provides no technical reasoning or analysis as to why such a feature
would have been obvious to the person of ordinary skill in the art.
The purported desire to reduce complexity is of little to no avail. In
the Mayeroff/Takemoto game machine, the secondary game, and the
outcome thereof, is not in any way combined with the outcome of the
primary game. (Mayeroff, passim.). Further, the display of the secondary
game in Mayeroff, with its “single payline indicator 45” (Mayeroff, col. 5, l.
67-col. 6, l. 1), is an exceedingly simple display for the user to understand.
These factors, coupled with Mayeroff’s game rule for the secondary game,
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that “[a]ll spins of the rotating wheel bonus game are winning spins”
(Mayeroff, col. 4, ll. 38-39), evidences that what the user sees on the payline
indicator for the wheel bonus game is what the player has definitively won.
As such, we are not persuaded that it would have been obvious to include
symbols related to the outcome of the secondary game of the
Mayeroff/Takemoto game machine on a separate bank display. The
Examiner does not rely on Crawford for any teaching pertinent to this claim
feature.
Because claims 30 and 45 require the presence of a bank display that
includes both a reel display replicating the outcome of the primary game and
a symbol display for displaying the symbols of the secondary game, we are
unable to sustain the rejection of those claims and the claims that depend
therefrom, as being unpatentable over the combination of teachings of
Mayeroff, Takemoto, Kaminkow and Crawford.
Method claim 39 does not require a bank display having both a reel
display and a symbol display as discussed above. Appellant argues, with
respect to all claims, that none of the cited art, either alone or in
combination, “teaches using symbols generated in a secondary (bonus)
outcome to improve the recited primary outcome of the primary (base)
game, the symbols being available to be used at least one more time to
subsequently improve the outcome of one or more future primary base
games.” (Reply Br. 7). Claim 39 includes method steps that require
performance of essentially these operations. (Appeal Br., Claims
Appendix).
The Examiner relies on the Crawford patent as disclosing a game
machine in which up to three symbols appearing in the outcome of a
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conventional slot machine game may be manually or automatically saved to
use in future games to improve the outcome of a future game. (Answer 5,
8). The Examiner avers that Crawford “teaches saving a number of symbols
from a primary or bonus game and applying them in a later game.” (Answer
8)(emphasis added). That finding is based upon a statement in the Abstract
of Crawford, which is repeated at column 2, lines 60-61, that the Crawford
machine has a feature “which allows a player to save in memory one or
more symbols from one or more previous games and use those symbols in a
current game . . .”. The Examiner states that, “[a] broad interpretation of this
statement places no limitation on the past or future game regarding towards
[sic.] being a primary, secondary or the same game, hence teaching using
any past game symbols from a primary/secondary in any future
primary/secondary game. (Answer 5-6).
The Examiner’s interpretation of what Crawford discloses stretches
beyond what Crawford actually teaches to those of ordinary skill in the art.
Crawford specifically discloses only a primary game with a feature enabling
the saving of symbols from the outcome of that primary game. (Crawford,
passim.; Fig. 4). That the language used by Crawford and relied on by the
Examiner does not specify at each instance that it is only a primary game
under consideration is not surprising. Crawford is directed to only a single
game mode. One of ordinary skill in the art would not expect a game to be
referred to specifically as a primary game in each instance if no secondary
game is present, in that, with only one game, one would not be required to
distinguish between two games by using descriptors such as “primary” and
“secondary”.
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Contrary to the Examiner’s finding, Crawford does not fairly teach or
disclose saving a number of symbols from a bonus (secondary) game and
applying them in a later primary game. The Examiner presents no reasoning
or analysis as to why such a feature would have been obvious to a person of
ordinary skill in the art, whether from Crawford alone or in combination
with the other cited references. As Appellant has correctly pointed out, none
of the cited references discloses using the outcome from a secondary game
to improve the outcome of a primary game, and, in addition, permitting the
symbols generated as the outcome of the secondary game to also be
available to be used at least one more time to improve a future primary
outcome in a future primary game. The obviousness rejection of claim 39
and the claims depending therefrom will not be sustained.
Claims 38 and 46--Obviousness
Claims 38 and 46 depend from claims 30 and 45, respectively. The
Koza patent added in this rejection to the combination of references
discussed above is not cited to cure the deficiency noted above in the
combination of Mayeroff, Takemoto, Kaminkow and Crawford relative to
claims 30 and 45. The rejection of these claims will thus not be sustained.

CONCLUSIONS
The rejection of claims 30-37, 39-45, 47 and 48 under 35 U.S.C.
§ 103(a) over Mayeroff in view of Takemoto, Kaminkow and Crawford will
not be sustained. The rejection of claims 38 and 46 under 35 U.S.C.
§ 103(a) over Mayeroff in view of Takemoto, Kaminkow, Crawford and
Koza will not be sustained.

Appeal 2009-006584
Application 10/407,726

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DECISION
The decision of the Examiner to reject claims 30-48 under 35 U.S.C.
§ 103(a) is reversed.

REVERSED

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