Ex Parte Okada

Patent Trial and Appeal Board

Feb 12, 2013

11734829 (P.T.A.B. Feb. 12, 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.
11/734,829 04/13/2007 Kazuo Okada 90193CIP(311824) 1803
21874 7590 02/12/2013
EDWARDS WILDMAN PALMER LLP
P.O. BOX 55874
BOSTON, MA 02205
EXAMINER
LIDDLE, JAY TRENT
ART UNIT PAPER NUMBER
3716
MAIL DATE DELIVERY MODE
02/12/2013 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 KAZUO OKADA
____________

Appeal 2011-004252
Application 11/734,829
Technology Center 3700
____________

Before LINDA E. HORNER, SCOTT A. DANIELS, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Kazuo Okada (“Appellant”) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-7. We have jurisdiction under
35 U.S.C. § 6(b).
The Claimed Subject Matter
Claims 1 is illustrative of the claimed subject matter and is reproduced
below.
1. A slot machine comprising:
a symbol display device capable of variably displaying a
plurality of symbols;
an image display device; and
a controller,
said controller programmed to execute,
(A) executing a game in which said plurality of symbols
are variably displayed and then stop-displayed to said symbol
display device after game media are BET in number equal to or
less than a previously set maximum number of BETs, and game
media are paid out in number according to said plurality of
symbols stop-displayed or a combination thereof;
(B) displaying to said image display device a normal
payment image showing that game media paid out in said
processing (A) are paid out in number according to said
plurality of symbols or a combination thereof during a period
when game media are paid out in said processing (A);
(C) shifting a mode from a non-insurance mode to an
insurance mode on condition that a predetermined number of
game media is inserted;
(D) counting the number of games played after shifting to
said insurance mode, in said insurance mode;
(E) paying out a predetermined number of game media
when the number of games counted in said processing (D)
reaches a specific number; and
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(F) displaying to the image display device a specific
payment image showing that a payment paid out in said
processing (E) is a payment based on the number of games
reaching the specific number during a period when game media
are paid out in said processing (E).
References
The Examiner relies upon the following prior art references:
Okada US 5,178,390 Jan. 12, 1993
McGinnis US 6,120,377 Sept. 19, 2000
Walker US 2003/0228901 A1 Dec. 11, 2003

Rejections
The Examiner makes the following rejections:
I. Claims 1-3 and 5-7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Okada and Walker; and
II. Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Okada, Walker, and McGinnis.

SUMMARY OF DECISION
We AFFIRM.
OPINION
Rejection I – Okada and Walker
The Examiner determined that Okada and Walker render obvious the
subject matter of claims 1-3 and 5-7. Ans. 3-6. The Examiner found that
Okada discloses most of the limitations of the claims, but “does not
explicitly disclose an image display device that can show normal and
specific images.” Ans. 4. The Examiner thus relied upon Walker as
teach[ing] an image display device that displays a normal
payment image showing that game media are paid out in
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number according to said plurality of symbols or a combination
thereof during a period when game media are paid out (fig. 5);
and displaying to said image display device a specific payment
image showing that a payment based on a specific event is
being processed (fig. 4; [0161], [0214]-[0215[]]).
Id. The Examiner concluded that it would have been obvious to one of
ordinary skill in the art at the time of invention “to combine the insurance
game of Okada with the image display of Walker in order to provide greater
entertainment for the player, thus encouraging the player to remain at the
gaming machine for a longer period of time.” Id. at 6.
Appellant raises several contentions.1 First, Appellant asserts that
“[n]o explanation is provided of why it would have been obvious to combine
Walker with Okada or how the combined teachings of the references meet
all of the limitations of Claim 1.” App. Br. 7.
Second, Appellant contends that there is no teaching or suggestion in
Walker of “a specific payment image showing that a payment paid out . . . is
a payment based on the number of games reaching the specific number . . . .”
Id. at 8. Rather, Walker’s display “is based on time, not number of games
played.” Reply Br. 3. Thus, Appellant asserts that “providing an image
based on a payment as taught by Walker in the slot machine of Okada does
not produce the claimed invention,” App. Br. 8, and there is “no suggestion
in Walker for the proposed modification,” Reply Br. 3. According to
Appellant:

1 Appellant has not separately argued claims 2, 3, and 5-7. See App. Br. 6
(“Claim 1 is discussed as representative of the claims in this ground of
rejection.”) Thus, claims 2, 3, and 5-7 stand or fall with claim 1 from which
they depend. 37 C.F.R. § 41.37(c)(1)(vii) (2011); e.g., In re Lovin, 652 F.3d
1349, 1351 (Fed. Cir. 2011).
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[w]hat is missing is some reasoning, based on evidence in the
prior art or knowledge within the level of ordinary skill in the
art, why one of ordinary skill in the art would have been
motivated to modify Okada to provide a specific payment
image when a payment is based on the count of the number of
games reaching a specific number in the insurance mode in
view of the teaching of providing a display based on a payment
in Walker.
App. Br. 8.
Third, Appellant contends that a general teaching “of providing a
display upon occurrence of a payment in Walker, does not provide
motivation for the specific modification of Okada necessary to arrive at the
claimed invention.” Id. at 8-9. In particular, Appellant asserts that he
recognized the problem in the prior art that players often were
not aware that a payment was a return for reaching a certain
number of games in an insurance mode, as opposed to a
payment based on a winning combination of symbols, and
therefore erroneously believed ‘that more than a proper number
of game media have been paid’ . . . to reach the insurance
payout.
Id. at 9 (quoting Spec. at 50). Appellant contends that because there is “no
indication in Okada or Walker that this problem about payouts was a known
problem in the gaming art . . . [i]t is improper to assume that the problem
was known in determining whether Appellant’s providing of a specific
payment image was an obvious solution to the problem.” Id. (citing In re
Sponnoble, 405 F.2d 578, 585 (CCPA 1969)).
Finally, Appellant asserts that the Examiner’s stated rationale for why
it would have been obvious to one of ordinary skill in the art to combine the
references—“to provide greater entertainment for the player”—does not
provide “clear and particular” evidence for the combination. See Reply Br.
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2-3 (citing In re Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999)). Thus,
Appellant asserts that the rejection fails to establish a prima facie case of
obviousness.
We address each of Appellant’s arguments. First, as noted above, the
Examiner determined that it would have been obvious to one of ordinary
skill in the art at the time of invention to combine the insurance game of
Okada with the image display of Walker “to provide greater entertainment
for the player, thus encouraging the payer to remain at the gaming machine
for a longer period of time.” Ans. 6. Thus, contrary to Appellant’s first
contention, the Examiner provided an explanation of why it would have
been obvious to combine the teachings of Walker with those of Okada.
Second, the Examiner relied on Okada, not Walker, as disclosing
counting the number of games played after shifting to an insurance mode.
See Ans. 4. The Examiner’s reliance on Walker was specific to Walker’s
disclosure of an image display device that can show “normal and specific
images.” Id. As such the failure of one reference to disclose each and every
element of the claims is inapposite where a second reference discloses the
missing element(s). See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one
cannot show non-obviousness by attacking references individually where, as
here, the rejections are based on combinations of references”); see also In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (same); In re Young,
927 F.2d 588, 591 (Fed. Cir. 1991) (“The test for obviousness is what the
combined teachings of the references would have suggested to one of
ordinary skill in the art.”). The Examiner noted that the combination of the
specific payment image of Walker with the insurance game of Okada
“would yield . . . the predictable results of a specific payment image
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showing up when the insurance payment is paid. Much the same as the
specific payment image showing up when a guaranteed payment is paid.”
Id. at 8 (citing Walker, para. [0215]). Further, as explained above, the
Examiner provided a specific reason as to why one of ordinary skill in the
art at the time of invention would have been motivated to combine these
disclosures.
Third, we recognize that the Specification supports Appellant’s
argument that Appellant recognized a problem in the prior art—namely,
confusion with respect to when game media were paid based on a winning
combination of symbols as compared to reaching a certain number of games
played in an insurance mode, App. Br. 9—and proposed a solution that seeks
to accomplish an object of the invention to “allow[] a player to have
sufficient trust on [sic] the slot.” Spec. at 2, ll. 34-35. Appellant, however,
has not presented evidence that one of ordinary skill in the art would not
have recognized the true cause of the alleged problem or that there was any
confusion or doubt at the time of invention as to the cause of player
confusion, even assuming such confusion in fact existed. See In re
Sponnoble, 405 F.2d 578, 586 (CCPA 1969) (indicating that appellant
“discovered the cause of the moisture transmission to be the passage of
moisture through, rather than around, the center plug” and that the “crux of
the matter in this case is the discovery by appellant that passage through the
center plug was a major cause of moisture transmission”); see also Cross
Medical Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293,
1323 (Fed. Cir. 2005) (noting that in Sponnoble, “those of ordinary skill in
the art . . . recognized a moisture-transfer problem . . . [but] believed that
moisture was transmitted around the plug . . . [whereas] Sponnoble
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discovered that moisture traveled through the plug”). Thus, Appellant has
not presented sufficient evidence to persuade us that the facts of this case are
analogous to those of In re Sponnoble.
Furthermore, we agree with the Examiner that the inquiry into
whether an alleged invention would have been obvious to one of ordinary
skill in the art at the time of invention is not limited “only to the problem the
patentee was trying to solve.” Ans. 8 (quoting KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 420 (2007)). Rather, “[u]nder the correct analysis, any need
or problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.” KSR, 550 U.S. at 420. As explained above, the
Examiner found that “providing a specific image as mentioned by Walker
provides further entertainment value to the game, which not only makes the
game more enticing [to] the player, but also . . . encourage[s] potential
players to play the game as they see others winning a prize that is not based
on the symbols that are currently being displayed.” Ans. 8. Thus, the
Examiner recognized the need to entice and encourage individuals to pay the
game.
Importantly, the Examiner also found that Walker supports the stated
rationale for the proposed combination because Walker specifically
discloses that “the gaming device may do anything to attract attention, to
bring recognition upon the player receiving the payment, to generate good
feeling, etc.” Id. at 9 (quoting Walker, para. [0215]). We agree that Walker
supports the Examiner’s rationale as to why one of ordinary skill in the art at
the time of invention would have been prompted to combine the specific
payment image of Walker with the insurance game of Okada.
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Finally, in the context of the gaming industry, where the industry has
a substantial interest in encouraging more people to play, play longer, and
bet the maximum bet, see, e.g., Ans. 9, the Examiner’s stated rationale for
why it would have been obvious to one of ordinary skill in the art to
combine the references provides sufficiently clear and particular evidence
for the combination.
Accordingly, since Appellant has not persuaded us of error with
respect to the Examiner’s findings and determination of obviousness, we
sustain Rejection I.
Rejection II – Okada, Walker, and McGinnis
The Examiner concluded that Okada, Walker, and McGinnis render
obvious the subject matter of claim 4. Ans. 6. The Examiner found that
while Okada discloses counting the number of games played, id. (citing
Okada, col. 6, ll. 4-9), it “does not explicitly disclose recognition of a
maximum bet,” id. The Examiner, however, found that McGinnis “discloses
the machine recognition of a maximum number of bet.” Id. (citing
McGinnis, col. 5, ll. 16-23). The Examiner determined that it would have
been obvious to one of ordinary skill in the art at the time of invention to
“combine the game counting in insurance mode as disclosed by Okada with
the recognition of maximum bets as taught by McGinnis in order to
encourage game players to always bet the maximum number and thus
increase the profitability of the gaming machine.” Id. Thus, to “maximize
each bet and . . . increase the profitability of the gaming machine,” the
Examiner determined that it would have been obvious to one of ordinary
skill in the art to “combine the insurance game as disclosed by Okada with
the maximum bet feature as taught by McGinnis.” Id.
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Appellant acknowledges that Okada teaches that the number of games
can be counted and that McGinnis describes placing a bet from one to a
maximum of five credits. App. Br. 10. Appellant contends, however, that
Okada does not “teach or suggest that the insurance premium is a BET, nor
does it suggest counting the number of games only when the maximum
number of game media are BET,” and McGinnis “says nothing about
counting the number of games when a maximum bet is placed.” Id.
Appellant thus asserts that “[t]he error is that there is no teaching or
suggestion in McGinnis or Okada or Walker of counting only the number of
games in which the maximum number of game media are BET” and that “it
is not sufficient that some rationale can be invented for making a
modification without some factual evidence to back up that rationale.” Id. at
11.
Appellant’s argument suffers from the same deficiency previous noted
by arguing the references individually. The Examiner does not contend that
any one reference discloses counting only the number of games in which the
maximum bet is placed. Rather, the Examiner found that Okada discloses
counting the number of games and McGinnis discloses recognition of a
maximum bet. Ans. 6; see In re Keller, 642 F.2d at 426. Thus, the
Examiner determined that it would have been obvious to one of ordinary
skill in the art to count the number of games in which a maximum bet is
placed. Id. Contrary to Appellant’s contention, the Examiner’s
determination of obviousness is factually supported by the prior art and a
reasoned rationale as to why one of ordinary skill in the art would have been
prompted, by seeking to encourage a player to bet the maximum bet on a
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gaming machine, to combine these specific features of the references.2 See,
e.g., Ans. 9.
Accordingly, because Appellant has not persuaded us of error with
respect to the Examiner’s findings and determination of obviousness, we
sustain Rejection II.
DECISION
We affirm the Examiner’s decision rejecting claims 1-7.
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

Klh

2 Further, while claim 4 requires counting the number of games in which a
maximum bet is placed after shifting to insurance mode, there is no
restriction precluding the processing (D) from separately counting the total
number of games played or the number of other games played.