Ex Parte Marino

Patent Trials and Appeals Board

Jun 5, 2019

12497071 - (D) (P.T.A.B. Jun. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/497,071 07/02/2009 Joseph A. Marino
39564 7590 06/07/2019
FisherBroyles, LLP - MAIN CN
945 East Paces Ferry Road NE
Suite 2000
Atlanta, GA 30326
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.
007218.002US1/RLP 5723
EXAMINER
MOSSER, ROBERT E
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
06/07/2019 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):
docketing@fisherbroy les .com
patent@fisherbroyles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH A. MARINO
Appeal 2018-008116
Application 12/497,071
Technology Center 3700
Before EDWARD A. BROWN, JEFFREY A. STEPHENS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner's
decision rejecting claims 1-23. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Appellant is the real party in interest. Appeal Br. 3.
Appeal 2018-008116
Application 12/497,071
CLAIMED SUBJECT MATTER
Claims 1, 8, and 16 are independent claims. Claim 1, reproduced
below, illustrates the claimed subject matter:
1. A slot machine comprising:
a processor operable to control said slot machine;
a random number generator operable to generate random
slot machine outcomes;
three to six game reels;
each game reel depicting at least a plurality reel numbers;
memory configured to store a series of randomly,
generated lottery-style numbers, said randomly, generated
lottery-style numbers being generated by, and received from, a
lottery number generating device external to said slot machine;
wherein said processor causes said slot machine to signal
a winning outcome in response to one or more of said reel
numbers aligning along a pay line and matching one or more of
said series of randomly generated lottery-style numbers; and
wherein after a pre-established time period without a slot
machine outcome matching all randomly, generated lottery-style
numbers, a new series of randomly, generated lottery-style
numbers is generated by, and received from, said lottery number
generating device as a replacement of existing randomly,
generated lottery-style numbers to start a new game cycle.
Appeal Br. 12 (Claims App.).
REJECTIONS
Claims 1-3, 5-11, 13-20, 22, and 23 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Stem (US 2002/0160830 Al, published Oct.
31, 2002), Ellis (WO 02/058804 Al, published Aug. 1, 2002), Caro (US
2003/0050109 Al, published Mar. 13, 2003), and Gibase (US 8,628,406 Bl,
issued Jan. 14, 2014).
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Application 12/497,071
Claims 4, 12, and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Stem, Ellis, Caro, Gibase, and Kamille (US 5,092,598,
issued Mar. 3, 1992).
ANALYSIS
Obviousness over Stern, Ellis, Caro, and Gibase
(Claims 1-3, 5-11, 13-20, 22, and 23)
Appellant argues claims 1-3, 5-11, 13-20, 22, and 23 as a group, and
presents the same argument for independent claims 1, 8, and 16. See Appeal
Br. 10-11. Accordingly, we decide the appeal of this rejection based on
claim 1, with claims 2, 3, 5-11, 13-20, 22, and 23 standing or falling with
claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
The final "wherein" clause of claim 1 recites "wherein after a pre-
established time period without a slot machine outcome matching all
randomly, generated lottery-style numbers, a new series of randomly,
generated lottery-style numbers is generated by, and received from, said
lottery number generating device ... to start a new game cycle." Appeal Br.
12 (Claims App.) ( emphasis added). Appellant contends its claimed system
(i) determines that a pre-established time period has run, (ii) then determines
that no slot machine outcome matches all randomly, generated lottery-style
numbers, and (iii) finally generates new lottery-style numbers. Id. at 10.
Appellant calls these actions "a three-step process." Id.
In rejecting claim 1, the Examiner finds that Stem discloses, inter
alia, "[when] a slot machine outcome matches all, some, or none of the
randomly, generated lottery-style numbers, a new series of randomly,
generated lottery-style numbers [is] generated by, and received from, said
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lottery generating device ... to start a new game cycle," noting that Stem
"teaches the random generation of lottery numbers for each round of play
including subsequent to matching outcomes associated with winnings."
Final Act. 5 (citing Stem, Abstract, ,r,r 55, 57, 58, 65, 66, Fig. 3). The
Examiner explains that Stem teaches steps (ii) and (iii) of Appellant's three-
step process. Ans. 3 ( citing Stem ,r,r 55, 57, 58).
The Examiner states that the combination of Stem, Ellis, and Caro
does not teach the "utilization of a pre-established time period for new
generating lottery-style numbers." Final Act. 6. The Examiner relies on
Gibase as teaching that it was known "to utilize predefined time periods for
generating lottery style numbers," because Gibase teaches "[n]ew games
every 15 minutes." Id. (citing Gibase, col. 6, 11. 5-11). The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
to modify the combination to "implement[] a fixed schedule for new games
(including the generation of random numbers associated therewith)," as
taught by Gibase, "to ensure that game play maintained a pre-established
rate of play and therewith offered players regular opportunities to play
and/or win." Id. at 6-7. The Examiner explains that Stem and Gibase
together teach step (i) of Appellant's three-step process (Ans. 4) by
demonstrating that it was known to limit game play to predefined periods
(id. at 5).
Appellant contends that its "system does not simply use a pre-
established time period to determine if a match has occurred. Then if not, a
re-set occurs." Appeal Br. 10. Appellant contends it "is not claiming to
have invented time period of play but rather claims that if a first condition
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(i.e., slot numbers matching lottery-style numbers) is not met, then the
lottery-style numbers are re-set." Id.
These contentions do not apprise us of error in the Examiner's
rejection. We understand the Examiner's position is that Stem teaches new
lottery numbers are generated randomly for each new round of play,
including after games with no or partial matching, that is, "without a slot
machine outcome matching all randomly, generated lottery-style numbers."
Final Act. 5. This position is supported by Stem. For example, Stem
describes that "a slot machine controller function of CPU 24 evaluates the
elements selected by the player against the elements displayed by each reel,
to determine if a winning [has] occurred. In the IN ORDER version of the
game, any selected element that matches a displayed element in the same
position results in a payout 63." See Stem ,r 56 ( emphasis added). Stem
also describes, "[ w ]ith completion of a payout, if any, the round is complete
and the player wins or loses more or less than that player's original wager,
according to the game played." See id. ,r 57 (emphasis added). These
exemplary passages demonstrate Stem teaches that a slot machine outcome
may, or may not, match all randomly, generated lottery-style numbers.
Claim 1 calls for generating a new series of randomly, generated
lottery-style numbers "after a pre-established time period without a slot
machine outcome matching all randomly, generated lottery-style numbers."
The Examiner proposes to combine Gibase' s teaching of game play of a
"pre-established time period" with the teachings of Stem, Ellis, and Caro to
result in the combination including the limitations recited in the final
"wherein" clause. In the Appeal Brief, Appellant does not address the
Examiner's findings for Stem. Appellant's contention that it "is not
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Application 12/497,071
claiming to have invented time period of play," but is claiming "a three-step
process not a simple matter of holding a drawing every 15 minutes" (Appeal
Br. 10), appears to address Gibase individually. But it is not the Examiner's
position that Gibase, alone, teaches Appellant's "three-step process."
Appellant's contention ignores the Examiner's findings and reasoning as to
what the references teach or suggest in combination. Non-obviousness
cannot, however, be established by attacking references individually where
the rejection is based upon the teachings of a combination of references. See
In re Keller, 642 F.2d 413,426 (CCPA 1981). The Examiner finds that the
combination of Stem, Ellis, Caro, and Gibase would have resulted in all of
the limitations of claim 1, and articulates reasons for combining the
reference teachings to result in the claimed slot machine. See Final Act. 4--
7. Appellant's contentions do not apprise us of error in either the
Examiner's findings or reasoning.
In the Reply Brief, Appellant contends "[t]here is nothing in Gibase
related to generating new lottery-style numbers to be matched if a pre-
established time period passes." Reply Br. 2. However, the Examiner finds
that Stem teaches generating new lottery-style numbers. See Final Act. 5.
Accordingly, this contention fails to address the Examiner's combination,
and thus, does not apprise us of error.
Appellant also contends that "Gibase deals with keno which is [a]
different style concept than the lottery-style game claimed." Reply Br. 2.
Appellant maintains that, in contrast to keno, "with the instant claims,
players are attempting to randomly draw numbers using a slot machine style
device in an effort to match previously, randomly selected numbers. The
actual time period it will take for a player to match the previously, randomly
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selected numbers, is unknown." Id. at 2-3. Appellant contends that the
claimed "condition," "after a pre-established time period without a slot
machine outcome matching all randomly, generated lottery-style numbers,"
"is not even feasible with a keno style game since there is no attempt to
match previously, randomly selected numbers." Id. at 3 (bold emphasis
omitted).
These contentions are unpersuasive. First, Appellant did not present
them in the Appeal Brief, or indicate in the Reply Brief that they are
responsive to any argument raised in the Examiner's Answer. As Appellant
has not otherwise shown good cause, this argument is untimely. See 37
C.F .R. § 41.41 (b )(2). Second, even considering this argument, it fails to
address the applied combination. Again, the Examiner does not rely on
Gibase alone for teaching the claimed final "wherein" clause. Nor does the
Examiner rely on Gibase for teaching a "keno style game" in which new
lottery-style numbers are generated "after a pre-established time period
without a slot machine outcome matching all randomly, generated lottery-
style numbers." Hence, Appellant's contentions do not apprise us of error.
In the Reply Brief, Appellant also contends:
Stem relates to a single device game where players attempt to
match new numbers randomly selected before each play. It is
essentially a slot machine with new winning outcomes each
game whereas the instant claims relate to a fixed winning
outcome which may change after the passage of a re-established
time period without a match.
Reply Br. 3 ( emphasis added).
This contention is also unpersuasive for several reasons. First, it was
not made in the Appeal Brief. In fact, the Appeal Brief presented no specific
argument to address the Examiner's reliance on Stem. Nor does Appellant
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otherwise indicate in the Reply Brief that its contention is responsive to any
argument raised in the Examiner's Answer. Second, Appellant's contention
does not explain why the Examiner's combination of the teachings of Gibase
with Stem's is in error. Third, claim 1 does not recite any limitation that
requires "a fixed winning outcome which may change after the passage of a
re-established time period without a match." Id. (emphasis added).
For these reasons, we sustain the rejection of claim 1 as unpatentable
over Stem, Ellis, Caro, and Gibase. Claims 2, 3, 5-11, 13-20, 22, and 23
fall with claim 1.
Obviousness over Stern, Ellis, Caro, Gibase, and Kamille
(Claims 4, 12, and 21)
Appellant relies on the same arguments presented against the rejection
of claims 1-3, 5-11, 13-20, 22, and 23 for patentability of claims 4, 12, and
21. Appeal Br. 11. Accordingly, we sustain the rejection of claims 4, 12,
and 21 as unpatentable over Stem, Ellis, Caro, Gibase, and Kamille for the
same reasons as for claim 1.
DECISION
We affirm the rejections of claims 1-23.
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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