Ex Parte Luciano et al

Patent Trial and Appeal Board

Sep 27, 2016

12696945 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/696,945 01129/2010
66880 7590 09/29/2016
Seed IP Law Group LLP/Scientific Games
701 FIFTH A VENUE
SUITE 5400
SEATTLE, WA 98104
FIRST NAMED INVENTOR
Robert A. Luciano JR.
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.
110384.426C2 1989
EXAMINER
RADA,ALEXP
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
09/29/2016 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):
Marv.Hein@scientificgames.com
patentinfo@seedip.com
J acques@seedip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte ROBERT A. JR. LUCIANO and WARREN R. WHITE
Appeal2014-008794 1
Application 12/696,9452
Technology Center 3700
Before PHILIP J. HOFFMANN, JAMES A. WORTH,
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-15, 17, 18, 20, 21, 24--28, 30-40, 42, 43, 45, 46, 49-
55, and 58---61. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
Feb. 24, 2014) and Reply Brief ("Reply Br.," filed Aug. 5, 2014), and the
Examiner's Answer ("Ans.," mailed June 5, 2014) and Final Office Action
("Final Act.," mailed Dec. 4, 2013).
2 Appellants identify Bally Gaming International, Inc. as the real party in
interest. App. Br. 2.
Appeal2014-008794
Application 12/696,945
CLAIMED fNVENTION
Appellants' claimed invention "pertains generally to networked
gaming devices and networked gaming systems. More particularly, the
invention is a system and method for dynamically downloading 'overlay'
games that can be played on a variety of gaming machines devices from a
central server." Spec. i-f 3.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A gaming system for presenting displayable events
on a gaming device, the system comprising:
two or more gaming devices, each gaming device
including a display for displaying a base game and bonus
or secondary features associated with the base game, and
a displayable event thereon, the displayable event being
independent of the base game and bonus or secondary
features associated with the base game;
a server having a memory for storing the
displayable event, wherein the server is connected to the
two or more gaming devices via a network; and
an overlay module connected to the two or more
gaming devices and the server via the network and being
a separately executable module from the base game,
wherein the overlay module downloads the displayable
event, initiates presentation of the displayable event on the
display of the gaming device, and restores the base game
upon completion of the displayable event;
wherein the gaming system enables a state of the
displayable event to be saved and reproduced at a later
time on another gaming machine in the network
independent, separate and distinct of a state of the base
game which remains in its entirety.
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Application 12/696,945
REJECTIONS
I. Claims 1-15, 17, 18, 20, 21, 24--28, 30-40, 42, 43, 45, 46, 49-55,
and 58---61 are rejected on the ground of nonstatutory obviousness-type
double patenting as being unpatentable over claims 1-13 of U.S. Patent No.
7,285,049 in view of Morrow (US 2003/0064771 Al, pub. Apr. 3, 2003),
Baerlocher (US 6,726,563 Bl, iss. Apr. 27, 2004), Berman
(US 6,620,045 B2, iss. Sept. 16, 2003), or Rowe (US 7,083,518 B2, iss.
Aug. 1, 2006). 3
II. Claims 1-15, 17, 18, 20, 21, 24--28, 30-40, 42, 43, 45, 46, 49-55,
and 58---61 are provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1-16
of copending Application No. 11/877,584 in view of Morrow, Baerlocher,
Berman, or Rowe.
III. Claims 1-15, 17, 18, 20, 21, 24--28, 30-40, 42, 43, 45, 46, 49-55,
and 58---61 are provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1-56
of copending Application No. 12/696,981 in view of Morrow, Baerlocher,
Berman, or Rowe.
IV. Claims 1-15, 17, 18, 20, 21, 24--28, 30-40, 42, 43, 45, 46, 49-55,
and 58---61 are rejected under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.
3 We treat the Examiner's reference to canceled claims 19 and 41 as
inadvertent error. See Final Act. 4.
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Appeal2014-008794
Application 12/696,945
V. Claims 1-15, 17, 18, 20, 21, 24, 25, and 51 are rejected under 35
U.S.C. § 103(a) as unpatentable over Bennett (US 8,360,846 Bl, iss. Jan. 29,
2013) and Tarantino (US 6,605,001 Bl, iss. Aug. 12, 2003). 4
VI. Claims 26-28, 30-40, 42, 43, 45, 46, 49, 50, 52-55, and 58---61
are rejected under 35 U.S.C. § 103(a) as unpatentable over Bennett, Loose
(US 6,517,433 B2, iss. Feb. 11, 2003), and Tarantino. 5
ANALYSIS
Double Patenting
Rejections 1-111
Appellants do not argue that the Examiner erred in rejecting and
provisionally rejecting the claims on the ground of obvious-type double
patenting (i.e., Rejections I-III). See, e.g., App. Br. 5 (Appellants do not
identify double patenting among the grounds of rejection to be reviewed on
appeal). In the Reply Brief Appellants indicate that they will submit a
terminal disclaimer to overcome Rejections I-III "upon allowance of the
application." Reply Br. 4. Therefore, we summarily sustain the rejection
and provisional rejections of claims 1-15, 17, 18, 20, 21, 24--28, 30-40, 42,
43, 45, 46, 49-55, and 58---61 on the ground of nonstatutory obviousness-
type double patenting.
4 We interpret the Examiner's omission of claims 6-15 in the heading of the
rejection at page 7 of the Final Office Action as a typographical error,
because the Examiner rejects these claims in the body of the rejection. See
Final Act. 9-10.
5 We treat the Examiner's reference to canceled claim 41 as inadvertent
error. See Final Act. 13.
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Appeal2014-008794
Application 12/696,945
Rejection IV
Written Description
We are persuaded by Appellants' argument that the Examiner erred in
rejecting claims 1-15, 17, 18, 20, 21, 24--28, 30-40, 42, 43, 45, 46, 49-55,
and 58---61 under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement. App. Br. 5---6.
Regarding independent claims 1, 26, and 53, the Examiner asserts that
the Specification "does not disclose that the gaming system enables a state
of the displayable event to be saved and reproduced at a later time on
another gaming machine in the network independent, separate and distinct of
a state of the base game which remains in its entirety." Final Act. 6
Yet, Appellants' Specification, as filed, describes at paragraph 10 that
"the overlay game is generally independent from the base game or its
associated secondary or bonus features." At paragraph 24 the Specification
describes that an "overlay module 210 is a software package that interfaces
the overlay game into the gaming machine. This includes halting of the
primary game[], and upon completion and restoration of the primary game."
At paragraph 43 the Specification describes "finishing the overlay game
visual sequence, pulling into memory the primary game (if needed), and re-
initializing the primary game and gaming machine to restart and run the
primary game."
We agree with Appellants that a person skilled in the art would
interpret the descriptions at paragraphs 10, 24, and 43 of the Specification as
disclosing an embodiment in which the displayable event is independent,
separate, and distinct of a state of the base game. App. Br. 6.
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Appeal2014-008794
Application 12/696,945
Therefore, we do not sustain the Examiner's rejection of independent
claims 1, 26, and 53, and claims 2-15, 17, 18, 20, 21, 24, 25, 27, 28, 30-40,
42, 43, 45, 46, 49-52, 54, 55, and 58---61, which depend therefrom, under 35
U.S.C. § 112, first paragraph for failure to comply with the written
description requirement.
Obviousness
Rejection V
We are persuaded by Appellants' argument that the Examiner erred in
rejecting claims 1 and 51under35 U.S.C. § 103(a) because Tarantino does
not teach or suggest that "the gaming system enables a state of the
displayable event to be saved and reproduced at a later time on another
gaming machine in the network independent, separate and distinct of a state
of the base game which remains in its entirety," as recited in claim 1 and
similarly recited in claim 51. App. Br. 7-9. In the Final Action, the
Examiner relies on Chaffee as disclosing the argued limitation. Final
Act. 12-13.
Tarantino relates generally to methods of playing games, gaming
devices and systems. Tarantino, col. 1, 11. 14--15. Tarantino describes that a
player saves a game in progress by pressing a touch-sensitive save-restore
game button. Id. col. 26, 11. 41--43. The computer present scores and game
states are written to a card, voucher, or other medium that the player can
carry. Id. col. 26, 11. 43--48. Later, the player can resume the save game by
inserting the card or voucher into the game machine. Id. col. 26, 11. 48-51.
The saved game information is read from the card or voucher to initialize the
conditions and states of the game machine. Id. col. 26, 11. 51-53. When the
player elects to pause or save a game in progress, game state information is
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Application 12/696,945
generated and stored to the card or voucher, which, in tum, may be used to
access the game state information at a later time. Id. col. 26, 11. 57----67.
The Examiner finds that
Tarantino recites that the player is able to save/pause a game state
at any time, which means the player is allowed to save a game
state of a displayable event at any point and not specifically only
after the completion of a given round of play (col. 26, line 41 -
col. 27, line 13).
Ans. 22.
However, saving a game, as described by Tarantino, relates to a base
game and does not disclose or suggest that "the gaming system enables a
state of the displayable event to be saved and reproduced at a later time on
another gaming machine in the network independent, separate and distinct of
a state of the base game which remains in its entirety," as recited in claim 1
and similarly recited in claim 51.
In view of the foregoing, we do not sustain the Examiner's rejection
of claims 1 and 51, and claims 2-15, 17, 18, 20, 21, 24, and 25, which
depend from claim 1, under 35 U.S.C. § 103(a).
Re} ection VI
Independent claim 26 include language substantially similar to the
language of claim 1, and stands rejected based on the same erroneous
findings applied with respect to claim 1. Final Act. 8-9. Therefore, we do
not sustain the Examiner's rejection of independent claim 2 6 under 3 5
U.S.C. § 103(a) for the same reasons set forth with respect to claim 1. We
also do not sustain the rejection of claims 27, 28, 30-43, 45, 46, 49, 50, 52-
5 5, and 5 8----61, which each depends from one of claims 2 6 and 51, under 3 5
U.S.C. § 103(a).
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Appeal2014-008794
Application 12/696,945
DECISION
The Examiner's rejection of claims 1-15, 17, 18, 20, 21, 24--28, 30-
40, 42, 43, 45, 46, 49-55, and 58---61 on the ground ofnonstatutory
obviousness-type double patenting is affirmed.
The Examiner's provisional rejections of claims 1-15, 17, 18, 20, 21,
24--28, 30-40, 42, 43, 45, 46, 49-55, and 58-61 on the ground of
nonstatutory obviousness-type double patenting are affirmed.
The Examiner's rejection of claims 1-15, 17, 18, 20, 21, 24--28, 30-
40, 42, 43, 45, 46, 49-55, and 58---61under35 U.S.C. § 112, first paragraph,
is reversed
The Examiner's rejections of claims 1-15, 17, 18, 20, 21, 24--28, 30-
40, 42, 43, 45, 46, 49-55, and 58---61under35 U.S.C. § 103(a) are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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