Ex Parte Naicker et al

Patent Trial and Appeal Board

Aug 29, 2013

11253089 (P.T.A.B. Aug. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/253,089 10/17/2005 Theo Naicker 05-652 1292
20306 7590 08/30/2013
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32ND FLOOR
CHICAGO, IL 60606
EXAMINER
ROWLAND, STEVE
ART UNIT PAPER NUMBER
3718
MAIL DATE DELIVERY MODE
08/30/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte THEO NAICKER and FRANCESCO VERARDI
____________

Appeal 2011-009198
Application 11/253,089
Technology Center 3700
____________

Before: JOHN C. KERINS, WILLIAM A. CAPP and
BEVERLY M. BUNTING, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 6-11, 14-18, 21-24, 27 and 29. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2011-009198
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THE INVENTION
Appellants’ invention relates to wager games. Spec. 2. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A method of facilitating playing a wager game having
a plurality of levels of play, including at least a first level and a
second level on a gaming device, comprising the steps of:
determining the outcome of play at the first level, the first
level having an outcome that is either a winning result or a
losing result in accordance with a pay table associated with the
wager game; and
in the event the play at the first level is a losing result:
(a) continuing with play of the wager game at a second
level and determining the result of play at the second level, the
play at the second level having an outcome that is either a
winning result or losing result; and
(b) providing the gaming device with data for displaying
of the outcome of play at the first and the second levels;
wherein, in the wager game, the continuation of play at
the second level always proceeds in the event that play at the
first level has a losing result;
wherein the wager game is selected from the group of
wager games consisting of slots and poker;
wherein the method further comprises the steps of:
providing a first pay table for determining a winning result for
the outcome of play at the first level, and providing a second
pay table different from the first pay table for determining a
winning result for the outcome of play at the second level in the
event that the play at the first level is not a winning result, and
wherein the first pay table comprises a list of one or more
winning results and the second pay table comprises a list of one
or more winning results, and wherein the statistical probability
of the outcome of play producing a winning result in the second
pay table is less than the statistical probability of the outcome
of play producing a winning result in the first pay table.
Appeal 2011-009198
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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:

The following rejections are before us for review:
1. Claims 1, 6, 8 and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Slomiany and Tarantino.
2. Claims 22-24 and 27 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Slomiany, Gilliland and Tarantino.
3. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Slomiany, Tarantino and Gilliland.
4. Claims 10, 11 and 14 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Slomiany, Tarantino and Walker.
5. Claims 15-18, 21 and 29 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Slomiany, Walker, Tarantino and Gilliland.

OPINION
Unpatentability of Claims 1, 6, 8 and 9
Appellants argue claims 1, 6, 8 and 9 as a group. App. Br. 13-18. We
select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that Slomiany discloses all of the elements of
claim 1 except that it does not teach first and second pay tables for winning
results where the probability of a winning result in the second pay table is
less than the probability of a winning result in the first pay table. Ans. 3-4.
Tarantino
Walker
Slomiany
Gilliland
US 6,474,645 B2
US 2003/0114217 A1
US 2003/0207707 A1
US 2005/0096121 A1

Nov. 5, 2002
Jun. 19, 2003
Nov 6, 2003
May 5, 2005
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The Examiner finds that a Bunco (dice) game embodiment in Slomiany
always plays a second stage if two or more stages have been bet upon even
though the player does not win on the first stage. Ans. 14. The Examiner
also finds that Slomiany discloses a poker game embodiment that provides
for a “free ride” or advancement to a second level after a first level loss. Id.
The Examiner relies on Tarantino as suggesting plural pay tables based on
statistical probabilities as claimed. Ans. 5. The Examiner concludes that it
would have been obvious to a person of ordinary skill in the art at the time
of the invention to combine Slomiany’s Bunko embodiment with
Slomiany’s poker and slots embodiment and also with Tarantino to achieve
the claimed invention. Id. According to the Examiner, a person of ordinary
skill in the art would do this to give a player a small chance of winning a
major payout, thereby creating a sense of excitement, anticipation and
inducing continued play. Id.
Appellants traverse the Examiner’s rejection by arguing that Slomiany
does not disclose that first round losers can still win in subsequent rounds.
App. Br. 13, Reply Br. 1-4. Appellants distinguish their invention on the
basis that Slomiany only advances to the second round occasionally and on a
random schedule, whereas the instant invention always proceeds to the
second round after a first round loss. App. Br. 14, Reply Br. 1-4. Also,
Appellants argue that Slomiany’s Bunco embodiment is an ongoing game,
which is distinguishable from independent games such as slots or poker. Id.
Appellants also argue that, since Slomiany’s free rides are infrequently
granted, a person of ordinary skill in the art would not be motivated to
always elevate a game to a second round when no winning result is achieved
in the first round. App. Br. 17-18.
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The Examiner responds by stating that modifying Slomiany so that its
poker and slots embodiments will always proceed to the second round, as in
the Bunco embodiment, instead of only occasionally, would have been well
within the capability of a person of ordinary skill in the art at the time the
invention was made. Ans. 16.
Appellants next argue that Tarantino’s pay table varies according to
how the player makes wagers at its one and only level of play. App. Br. 15,
Reply Br. 4. Thus, according to Appellants, Tarantino has nothing to do
with a “‘loser can still win’” game, playing at multiple levels. App. Br. 16.
Also, Appellants argue that Tarantino does not adjust pay tables at different
levels based on whether the player won or lost at the first level.1 Id.
The Examiner responds that Tarantino discloses a card game where
the pay table for a first hand allows for more winning combinations than the
pay table for subsequent hands. Ans. 16. In addition, the Examiner states
that it is well known in the art that pay table and payout manipulation are the
levers of revenue management for a casino. Id. Thus, according to the
Examiner, using the mechanisms of pay table and payout manipulation to
balance coin-in and payout with player interest and excitement is
instrumental to a casino to maximize its income stream. Id. The Examiner

1In their Reply Brief, Appellants raise a “teaching away” argument for
the first time on appeal. See Reply Br. 5. This argument is untimely. Ex
parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“Any
bases for asserting error, whether factual or legal, that are not raised in the
principal brief are waived.”). In any event, a reference does not teach away
if it merely discloses an alternative invention but does not “criticize,
discredit, or otherwise discourage” investigation into the invention claimed.
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellants have not
directed us to any language in Slomiany that criticizes, discredits or
otherwise discourages investigation into adjusting pay tables in the second
round based on winning or losing in the first round.
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reiterates, therefore, that it would have been obvious to combine the multiple
stages of Slomiany with the pay table manipulation of Tarantino at the time
the invention was made.
The fact that Appellants have identified differences between the prior
art and the claimed invention does not mandate a finding of non-
obviousness. Section 103 expressly contemplates that there may be
differences between the prior art and the claimed invention and yet the
claimed invention may still not be patentable. See 35 U.S.C. § 103(a).2 The
Supreme Court, in its seminal decision on obviousness, explained that if a
person of ordinary skill can implement a predictable variation of the prior
art, section 103 likely bars the patentability of the predictable variation.
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). In the instant case,
Appellants point to differences between the prior art and the claimed
invention, but they offer no persuasive argument or technical reasoning to
convince us that such differences are anything more than mere predictable
variations of Slomiany that are within the capabilities of a person of ordinary
skill in the art. KSR, 550 U.S. at 421 (a person of ordinary skill is a person
of ordinary creativity, not an automaton).
Although Tarantino adjusts the pay table between two or more hands
in the same round (or level), it still teaches someone of ordinary skill that
pay tables can be adjusted among a plurality of winning and losing hands.
Furthermore, Appellants do not challenge the Examiner’s position that it is

2 “A patent may not be obtained though the invention is not identically
disclosed or described as set forth in section 102 of this title, if the
differences between the subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill in the art to
which said subject matter pertains.” Id.
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well known in the art to manipulate pay tables and payouts to maintain
player interest and optimize casino revenue. See In re Chevenard, 139 F.2d
709, 713 (CCPA 1943) (“In the absence of anything in the record to
contradict the examiner's holding, and in the absence of any demand by
appellant for the examiner to produce authority for his statement, we will not
consider this contention”). As discussed supra, combining and/or modifying
Slomiany and Tarantino to achieve the claimed invention is merely a
predictable variation of the prior art. We sustain the rejection of claims 1, 6,
8 and 9.
Unpatentability of Claims 7, 22-24, 27 and 29
Claims 22-24 and 27
Appellants argue claims 22-24 and 27 as a group. App. Br. 18-20.
We select claim 22 as representative. See 37 C.F.R. § 41.37(c)(1)(vii)
(2011).
Claim 22 is an independent claim that is substantially similar in scope
with claim 1, except that claim 22 has limitations directed to managing the
claimed gaming in a distributed computer network. Clms. App’x. The
Examiner relies on Gilliland as teaching a central gaming system for a
plurality of distributed gaming stations. Ans. 7. In traversing the rejection,
Appellants rely on the same arguments discussed above with respect to
claim 1. We sustain the rejection of claims 22-24 and 27 for the reasons
articulated above.
Claim 7
Appellants acknowledge that claim 7 stands or falls with claim 22.
App. Br. 20. Claim 7 falls with claim 22 such that we sustain the rejection
of claim 7.
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Claim 29
Claim 29 depends from claim 22 and adds the limitation: “wherein
the distributed gaming workstations are distributed in a gaming casino.”
Clms. App’x. The Examiner relies on Walker as suggesting that gaming
stations are distributed in a gaming casino. Ans. 14. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art at the time of the invention to combine Slomiany, Walker, Tarantino and
Gilliland in order to locate gaming machines in a place where it is legal to
conduct gambling operations. Id.
In traversing the rejection, Appellants argue that Walker does not
teach advancing to the second level automatically when a losing result is
achieved. App. Br. 23-24. This argument is unpersuasive for the reasons
discussed above with respect to claims 1 and 22. We sustain the rejection of
claim 29.
Unpatentability of Claims 10, 11 and 14
Appellants argue claims 10, 11 and 14 as a group. App. Br. 20-22.
We select claim 10 as representative.
Claim 10 is an independent claim that is substantially similar in scope
with claim 1, except that claim 10 has limitations directed to automatically
completing play of the same wager game at the second level. Clms. App’x.
The Examiner relies on Walker as teaching a gaming system that
automatically completes play at the second level. Ans. 10, citing Walker,
para [0286]. The Examiner concludes that it would have been obvious to a
person of ordinary skill in the art at the time of the invention to combine
Walter with Slomiany and Tarantino. Id. According to the Examiner, a
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person of ordinary skill in the art would do this to create a gaming machine
that was easier to play over a longer period of time. Id.
In addition to reiterating the same arguments discussed above with
respect to claim 1, Appellants argue that Walter’s auto-play mode merely
relates to repeating cycles of a one level game and that there is no automatic
completion of play at a second level. App. Br. 21. Appellants argue that the
combination of Slomiany, Tarantino and Walker would only suggest
automatically cycling play at the first level of Slomiany, not auto-completing
a second level of play. App. Br. 21-22. The Examiner responds that Walker
discloses automatic transition into bonus rounds from a normal game, which
the Examiner considers to be a second level of play. Ans. 18, citing Walter,
para. [0286].
Paragraph [0286] of Walker contemplates scenarios where the auto-
play feature departs from mere recycling through a single round of play.
Thus, the Examiner’s finding is supported by a preponderance of the
evidence. Appellants do not otherwise challenge the Examiner’s findings
and conclusion that Walter can be combined with Slomiany and Tarantino.
Accordingly, we sustain the rejection of claims 10, 11 and 14.

Unpatentability of Claims 15-18 and 21
Appellants argue claims 15-18 and 21 as a group. App. Br. 15. We
select claim 15 as representative.
Claim 15 is an independent claim that is substantially similar in scope
to claim 1, except that it is directed to a non-transitory machine readable
storage medium for use in playing multi-level versions of slots and poker
games. Clms. App’x. In traversing the rejection, Appellants rely on the
same arguments that we have previously discussed with respect to claim 1
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above. We sustain the rejection of claims 15-18 and 21 for the same reasons
articulated above with respect to claim 1.
DECISION
The decision of the Examiner to reject claims 1, 6-11, 14-18, 21-24,
27 and 29 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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