10991308 (B.P.A.I. Dec. 13, 2011)

Ex Parte Mothwurf et al

Board of Patent Appeals and InterferencesDec 13, 2011

10991308 (B.P.A.I. Dec. 13, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/991,308 11/16/2004 Ewald Mothwurf ATR-A-134-1C 7714 32566 7590 12/13/2011 PATENT LAW GROUP LLP 2635 NORTH FIRST STREET SUITE 223 SAN JOSE, CA 95134 EXAMINER KIM, KEVIN Y ART UNIT PAPER NUMBER 3716 MAIL DATE DELIVERY MODE 12/13/2011 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 EWALD MOTHWURF, PETER LANG, FRANZ LECHNER, and DOMINIK BERGER ___________ Appeal 2009-013389 Application 10/991,308 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and MEREDITH C. PETRAVICK, Administrative Patent Judges. PETRAVICK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-013389 Application 10/991,308 2 STATEMENT OF THE CASE Ewald Mothwurf et al., (Appellants) seek our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 1, 3-18, 21, and 22. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF DECISION We REVERSE. 1 THE INVENTION This invention is “a jackpot system for use in a casino for the allocation of wins from at least one jackpot to players playing at a plurality of gaming positions.” Spec. 1:16-18. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A gaming method performed in a system of a plurality of gaming machines connected in a network comprising: accumulating a visible jackpot, visible to players, common to the plurality of gaming machines; accumulating an invisible jackpot, not visible to players, common to the plurality of gaming machines; paying the visible jackpot to one of the plurality of gaming machines meeting certain criteria; and 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed Nov. 21, 2008) and Reply Brief (“Reply Br.,” filed May 6, 2009), and the Examiner’s Answer (“Ans.,” mailed Mar. 6, 2009). Appeal 2009-013389 Application 10/991,308 3 at least partially replenishing the visible jackpot using at least a portion of the invisible jackpot, wherein an amount of the invisible jackpot used to replenish the visible jackpot is less than 100% of the invisible jackpot and is calculated based on an amount in the invisible jackpot. THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Tracy Olsen US 5,280,909 US 6,146,273 Jan. 25, 1994 Nov. 14, 2000 The following rejection is before us for review: 1. Claims 1, 3-18, 21, and 22 are rejected under 35 U.S.C. §103(a) as being unpatentable over Olsen and Tracy. ISSUE The issue is whether claims 1, 3-18, 21, and 22 are unpatentable under 35 U.S.C. § 103(a) over Olsen and Tracey. Specifically, the issue whether the Examiner erred in finding that Olsen’s taught both a visible jackpot and invisible jackpot. FINDINGS OF FACT We find that the following enumerated findings of fact (FF) are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). Appeal 2009-013389 Application 10/991,308 4 1. Olsen also describes an embodiment in which the bonus pool is a secret bonus pool 1210. See Col. 23, l. 51 – col. 24, l. 44. 2. Olson states: As each award is paid to players who match prizes, the value of the award is subtracted from the secret bonus pool 1210. Once the bonus pool 1210 reaches zero (or any predetermined value), the system exits 260 the bonus mode as priorly taught. As an option, a temperature gauge 1220 (or other suitable display) can be supported by the system 10 to indicate to all players the remaining amount of time in the bonus mode. This gauge 1220 actually represents the remaining amount of currency in the bonus pool which is no longer secret. Col. 24, ll. 34-39. ANALYSIS Claims 1, 3-9, and 14 The Appellants and the Examiner dispute whether the limitation “wherein an amount of the invisible jackpot used to replenish the visible jackpot is less than 100% of the invisible jackpot and is calculated based on an amount in the invisible jackpot” recited in claim 1 taught in the prior art. See App. Br. 11-13, Reply Br. 1-3, and Ans. 18-19. Central to this dispute is a difference in equating elements from Olsen that the claimed visible jackpot and the claimed invisible jackpot. The Appellants equate the claimed visible jackpot to Olsen’s bonus jackpot pool (or secret bonus pool) and equate the claimed invisible jackpot to Olsen’s held pool that accumulates during the bonus mode because “this is the only apparently relevant aspect of Olsen Appeal 2009-013389 Application 10/991,308 5 being relied on by the examiner.” Reply Br. 2. The Appellants then argue that 100% of the held pool is always used to replenish the secret bonus pool. App. Br. 12. On the other hand, the Examiner equates the claimed visible jackpot to Olsen’s temperature gauge 1220 and the claimed invisible jackpot to Olsen’s secret bonus pool 1210 and then argues that less than 100% of the secret bonus pool is used to replenish the temperature gauge. Ans. 18-19. The Examiner states: “Thus, the visible jackpot 1220 is being filled with the pool from the invisible jackpot 1210.” Ans. 19. We find that the Examiner erred in finding that Olsen’s temperature gauge 1220 teaches the claimed visible jackpot. The Examiner has mischaracterized the teachings of Olsen. The temperature gauge of Olsen represents the remaining amount of currency in the secret bonus pool (FF 1- 2) and not a separate jackpot. The Examiner already equates the secret bonus pool to the claimed invisible jackpot (Ans. 18). Olsen’s secret bonus pool cannot be both the claimed visible and invisible jackpot. The secret bonus pool cannot replenish itself. Therefore, we find that the Examiner has failed to establish a prima facie showing of obviousness. Accordingly, the rejection of claims 1 and 14, and claims 3-9, dependent thereon, under 35 U.S.C. § 103(a) as being unpatentable over Olsen and Tracy is reversed. Claims 10, 11-13, 15-18, 21, and 22 To traverse the rejection of claims 10, 11, 15, 17, 21, and 22, the Appellants make several arguments as to why various limitations recited in these claims are not taught by the combination of Olsen and Tracy. See App. Br. 13-18 and Reply Br. 3-5. For example, the Appellants argue that Appeal 2009-013389 Application 10/991,308 6 the prior art does not teach the visible jackpot being accumulated at a slower rate than the invisible jackpot, which is used to refill the visible jackpot. App. Br. 15-16. As discussed with regards to claims 1 and 14 above, central to these disputes is a difference in equating elements from Olsen that the claimed visible jackpot and the claimed invisible jackpot. See App. Br. 13- 18, Reply Br. 3-5, and Ans. 19-21. Again, the Examiner’s responses equate the claimed visible jackpot to Olsen’s temperature gauge 1220 and the claimed invisible jackpot to Olsen’s secret bonus pool 1210. For example, with regards to claims 11, 17, and 21, the Examiner states, “since the visible jackpot (see [F]igure 12, 1220) is replenished by the invisible jackpot 1210 (column 24, lines 30-39), the invisible jackpot must be filled at a rate faster than the invisible jackpot.” Ans. 19-20. We note that all of claims 10, 11, 15, 17, 21, and 22 require replenishing a visible jackpot using at least a portion of an invisible jackpot or a similar limitation. For the same reasons as discussed above, the Examiner has mischaracterized Olsen as teaching that the temperature gauge 1220 as a separate jackpot from the secret bonus pool 1210. Therefore, we find that the Examiner has failed to establish a prima facie showing of obviousness. Accordingly, the rejection of claims 10, 11, 15, 17, 21, and 22, and claims 12-13, 16, and 18 dependent thereon, under 35 U.S.C. § 103(a) as being unpatentable over Olsen and Tracy is reversed. DECISION The decision of the Examiner to reject claims 1, 3-18, 21, and 22 is reversed. Appeal 2009-013389 Application 10/991,308 7 REVERSED MP