Ex Parte Nicastro

Board of Patent Appeals and Interferences

May 26, 2010

10202924 (B.P.A.I. May. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN P. NICASTRO, SR.
____________

Appeal 2009-005664
Application 10/202,924
Technology Center 3700
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Decided: May 26, 2010
____________

Before: JENNIFER D. BAHR, STEVEN D.A. McCARTHY, and
MICHAEL W. O'NEILL, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
John P. Nicastro, Sr. (Appellant) appeals under 35 U.S.C. § 134
(2002) from the Examiner's decision rejecting claims 1-46. We have
jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

The Invention
Appellant's claimed invention is directed to a gaming machine having
a basic game and a bonus game. Spec. 3:3-4.
Claim 1, reproduced below, is illustrative of the claimed invention.
1. A gaming machine for use by a player
having player skills comprising;
a data storage device storing a program for a
bonus game;
a processor operably connected to the data
storage device, the processor executing the
program for the bonus game on the occurrence of a
bonus game entry combination;
a display operably connected to the
processor; and
a player input device operably connected to
the processor,
wherein the bonus game requires the player
to use the player skills.

The Rejections
The Examiner relies upon the following as evidence of
unpatentability:
Okada US 4,508,345 Apr. 2, 1985
Luciano, Jr. US 6,050,895 Apr. 18, 2000
Walker US 6,193,606 B1 Feb. 27, 2001
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The Examiner makes the following rejections:
Under 35 U.S.C. § 102(b):
(A) Claims 1, 2, 5, 6, 8-10, 14, 15, 17, 21, 22, 25-27, 30, 31, 33, 34, 36,
37, 39, and 40 as anticipated by Okada.

Under 35 U.S.C. § 103(a):
(B) Claims 16, 19, 20, 28, 35, and 41 as unpatentable over Okada.
(C) Claims 3, 4, 12, 13, 18, 23, 24, 32, and 38 as unpatentable over Okada
and Walker.
(D) Claims 7, 11, 29, and 42-46 as unpatentable over Okada and Luciano,
Jr.

SUMMARY OF DECISION
We AFFIRM-IN-PART and enter a NEW GROUND of REJECTION.

OPINION
Does Okada describe a "display"?
Contentions
The Examiner found that Okada describes a "display" as recited in
claim 1. Ans. 4. Appellant argues that the "display" in Okada is a set of
"mechanical reels" and not a "graphical display device" as required by claim
1, read in light of the Specification. Appeal Br. 13. Appellant does not
present separate arguments for dependent claims 2, 5, 6, and 8, which thus
stand or fall with representative claim 1. 37 C.F.R. § 41.37(c)(1)(vii)
(2007). In addition, Appellant does not separately argue the Examiner's
rejections of claims 3 and 4 as unpatentable over Okada and Walker and of
claims 7 and 42 as unpatentable over Okada and Luciano. Appeal Br. 19.
Therefore, we understand Appellant to be relying on the argument presented
for claim 1.
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Issue
Thus, the first issue in this appeal is whether Okada's mechanical reels
satisfy the "display" limitation in claim 1, and particularly whether the
"display" of claim 1 is limited by the Specification to a "graphical display
device" of the type that would exclude mechanical reel display devices.
Principles of Law
The inventor may define specific terms used to describe his invention,
but must do so "with reasonable clarity, deliberateness, and precision" and,
if done, must "[']set out his uncommon definition in some manner within the
patent disclosure' so as to give one of ordinary skill in the art notice of the
change" in meaning. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)
(quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387-88 (Fed.
Cir. 1992).
Though understanding the claim language may be
aided by the explanations contained in the written
description, it is important not to import into a
claim limitations that are not a part of the claim.
For example, a particular embodiment appearing in
the written description may not be read into a
claim when the claim language is broader than the
embodiment.
Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004). See also Liebel-Flarsheim Co. v. Medrad Inc., 358 F.3d 898, 906
(Fed. Cir. 2004) (discussing recent cases wherein the court expressly
rejected the contention that if a patent describes only a single embodiment,
the claims of the patent must be construed as being limited to that
embodiment).
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Analysis
In this case, the Specification states that the "display 16 is a graphical
display device, such as a video monitor … for displaying images generated
by the processor 12 during a game." Spec. 6:6-8 (emphasis added). This
passage is exemplary in nature, essentially telling the reader that the
particular display "16" of the described embodiment can be a particular type
of display. This passage does not set forth a definition of the term "display"
"with reasonable clarity, deliberateness, and precision." In re Paulsen, 30
F.3d at 1480. Thus, we find that the Specification does not specifically
define the term "display." Moreover, even assuming arguendo that the
sentence alluded to by Appellant were considered a definition of the term
"display" as "a graphical display device," as asserted by Appellant, such a
definition would encompass any display of writing, drawing, or meaningful
symbols. See, e.g., Webster's New World Dictionary, 609 (David B.
Guralnik ed., 2nd Coll. Ed., Simon & Schuster, Inc. 1984) (defining
"graphic" or "graphical" as "of the GRAPHIC ARTS, " "a) of handwriting;
used or expressed in handwriting b) written, inscribed, or recorded in letters
of the alphabet, meaningful symbols, etc." or "having markings suggestive
of written or printed characters" and defining "graphic arts" as "broadly, any
form of visual artistic representation, esp. painting, drawing, photography,
etc.").
We find that Okada describes a gaming machine having a mechanical
reel-type display with printed symbols (col. 2, ll. 10-19) whose final
positions are controlled by a microcomputer 25 (col. 3, ll. 59-66). Thus, the
Examiner's reading of the display of claim 1 on Okada's display falls under a
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broad, reasonable interpretation of "display" in light of the Specification. In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Conclusion
Okada's display is a "display" as recited in claim 1. Thus, we affirm
the Examiner's decision with respect to claim 1. Likewise, we affirm the
Examiner's decision with respect to dependent claims 2-8 and 42.

Does Okada describe "wherein the bonus game is a different type"?
Contentions
Claims 21 and 36 both recite that a "bonus game is a different type of
game than the basic game." The Examiner found that Okada describes a slot
machine having a bonus game utilizing physical skills to stop each reel.
Ans. 3. Appellant argues that Okada does not disclose a bonus game of a
different type than the basic game because only a "slot machine game" is
played. Appeal Br. 18. Appellant argues claims 21 and 36 together. Appeal
Br. 18. Dependent claims 22, 25-27, 37, 39, and 40 stand or fall with
independent claims 21 and 36. 37 C.F.R. § 41.37(c)(1)(vii) (2007). In
addition, Appellant does not separately argue the Examiner's rejections of
claim 23, 24, and 38 as unpatentable over Okada and Walker; of claims 28,
35, and 41 as unpatentable over Okada; and of claims 29, 44, and 46 as
unpatentable over Okada and Luciano. Appeal Br. 19. Therefore, we
understand Appellant to be relying on the arguments presented for claims 21
and 36.
Issue
The issue is whether Okada's "skill stop" bonus game is a different
type of game from the regular slot machine game.
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Analysis
We find that Okada describes a slot machine having a "SKILL.STOP"
"bonus game" wherein the reels are rotated slowly and the player is allowed
to stop each reel independently and at a time they choose (col. 2, ll. 23-38,
col. 5, ll. 12-27). Thus, we find that Okada describes two separate game
types, a standard game based on chance (i.e., a standard slot machine) and a
bonus game based on skill (i.e., reaction time).
Appellant argues that Okada's bonus game is not of a different type
because Okada's bonus game is also a slot machine-type game. Appeal Br.
18. However, no limitation of claim 21 or claim 36 excludes games that are
slot games. Instead, claims 21 and 36 merely require games of "different
type[s]." We do not find a special definition of "different type" of game in
the Specification, nor does Appellant allude to one. Instead, the
Specification merely gives examples of each type of game. See, e.g., Spec.
14:1-17, 13:22-26 ("[t]he bonus game . . . can be any game of chance or
player skill adding excitement to the [basic] game and providing additional
opportunities for the player to continue play."). Thus, Okada's bonus game,
involving a different type of slot machine play using a different player skill,
satisfies the "different type of game" requirement of the "bonus game" of
claims 21 and 36.
Conclusion
The Examiner did not err in finding that Okada describes a "bonus
game" which is a "different type of game" than the basic game, as required
by claims 21 and 36. Therefore, we sustain the Examiner's rejections of
claims 21-29, 36-41, 44, and 46.
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New Ground of Rejection
Issue
Claim 9 recites a gaming machine having a "means for playing" both
a "basic game" and a "bonus game." Claim 30 recites a system having
similar "means for" limitations as claim 9, as well as a "means for switching
to a bonus game." Appellant states that the structure corresponding to these
"means for" are "a processor 12, a data storage device 14, a display 16, and
player input devices 17." Appeal Br. 5, 7, 15, 17.
Therefore, the issue is whether the Specification describes the
corresponding structure for the means-plus-function elements recited in
claims 9 and 30 as required by 35 U.S.C. § 112, sixth paragraph.
Principles of Law
If an applicant for patent employs means-plus-function language in a
claim, the applicant is required to "set forth in the specification an adequate
disclosure showing what is meant by that language. If an applicant fails to
set forth an adequate disclosure, the applicant has in effect failed to
particularly point out and distinctly claim the invention as required by the
second paragraph of section 112." In re Dossel, 115 F.3d 942, 946 (Fed.
Cir. 1997) (quoting In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir.
1994)).
"[I]n a means-plus-function claim 'in which the disclosed structure is a
computer, or microprocessor, programmed to carry out an algorithm, the
disclosed structure is not the general purpose computer, but rather the
special purpose computer programmed to perform the disclosed algorithm.'"
Aristocrat Tech. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333
(Fed. Cir. 2008) (citing WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d
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1339, 1349 (Fed. Cir. 1999). "[T]he corresponding structure for a § 112 ¶ 6
claim for a computer-implemented function is the algorithm disclosed in the
specification." Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed.
Cir. 2005). The written description must at least disclose the algorithm that
transforms the general purpose microprocessor to a special purpose
computer programmed to perform the claimed function. Aristocrat, 521
F.3d at 1338. Moreover, one cannot rely on the premise that a person having
ordinary skill in the art would have the capability to program the gaming
machine to perform the claimed functions once the claimed functions are
described to that person. See Aristocrat, 521 F.3d 1335-37 ("It is not enough
for the patentee simply to state or later argue that persons of ordinary skill in
the art would know what structures to use to accomplish the claimed
function").
Analysis
We find that the functions recited in claims 9 and 30 are computer-
implemented because the various components identified by Appellant as the
structure of claims 9 and 30 are generic computer components. See Appeal
Br. 5, 7, 15, 17. Appellant does not identify any particular algorithms that
perform these computer-implemented functions, nor are the algorithms
apparent in the Specification.
For example, we do not find any particular algorithm described in the
Specification for carrying out the computer-implemented functions of
"playing a basic game having a bonus game entry combination" as recited in
claim 9 and similarly recited in claim 30, or of "switching to a bonus game
on occurrence of the bonus game entry combination" as recited in claim 30.
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The Specification does describe a flowchart having a bonus evaluation block
216, but does not describe the steps or decisions that determine how to
evaluate whether a bonus condition has occurred. Spec. 15:5-20; see also
fig. 7A. In addition, figure 1 depicts an empty box 12 labeled "Processor"
and an empty box 14 labeled "Data Storage Device" but neither the figure
nor the corresponding language in the Specification describes any particular
structure corresponding to these empty boxes.
To claim "means" for performing particular functions, viz., means for
playing a basic game and a bonus game, and only disclose a general gaming
machine as the structure to perform those particular functions, amounts to
pure functional claiming. Gaming machines can be programmed a variety of
ways to perform a particular function. A set of empty boxes with labels, or a
mere listing of computer hardware components, therefore, does not satisfy
the requirement of 35 U.S.C. § 112, second paragraph, that the Specification
must describe "the corresponding structure, material, or acts" that perform
the function in accordance with 35 U.S.C. § 112, sixth paragraph. See
Aristocrat, 521 F.3d 1333.
Conclusion
Because we find that the Specification does not describe the
corresponding structure for at least the above-quoted functions in claims 9
and 30 as required by 35 U.S.C. § 112, sixth paragraph, claims 9 and 30 are
indefinite under § 112, second paragraph. Claims 10-20 and 43 depend from
claim 9 and thus contain the same indefinite limitations. Likewise, claims
31-35 and 45 depend from claim 30 and also contain indefinite limitations.
Therefore, pursuant to our authority under 37 C.F.R. § 41.50(b) (2009),
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we reject claims 9-20, 30-35, 43, and 45 under 35 U.S.C. § 112, second
paragraph as indefinite because the Specification does not describe the
structure corresponding to the recited "means for" language, as required by
§ 112, sixth paragraph.
Further, the prior art rejections of claims 9-20, 30-35, 43, and 45 must
fall because they are necessarily based on a speculative assumption as to the
meaning of the claims. See In re Steele, 305 F.2d 859, 862-63 (CCPA
1962). It should be understood, however, that our decision in this regard is
based solely on the indefiniteness of the claimed subject matter, and does not
reflect on the adequacy of the prior art evidence applied in support of the
rejection.

DECISION
We affirm the Examiner's decision as to claims 1-8, 21-29, 36-42, 44,
and 46.
We reverse the Examiner's decision as to claims 9-20, 30-35, 43, and
45.
We enter a new ground of rejection for claims 9-20, 30-35, 43, and
45.

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FINALITY OF DECISION
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
"Appellant may file a single request for rehearing within two months of the
date of the original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner.…

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record.…
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. § 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
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case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

hh

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