Ex Parte Pacey

Board of Patent Appeals and Interferences

Mar 18, 2009

10375675 (B.P.A.I. Mar. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte LARRY J. PACEY
__________

Appeal 2008-1844
Application 10/375,675
Technology Center 3700
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Decided:1March 18, 2009
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims 1-23, all of
the pending claims. The claimed invention relates to a gaming system, and

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 10/375,675

the Examiner has rejected the claims as either anticipated by or obvious in
view of the prior art. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm in part.
STATEMENT OF THE CASE
The Specification states that “[g]aming machines, such as slot
machines, video poker machines and the like, have been a cornerstone of the
gaming industry” (Spec. 2: 13-14). “One concept that has been successfully
employed to enhance the entertainment value of a game is the concept of a
‘secondary’ or ‘bonus’ game that may be played in conjunction with a
‘basic’ game” (id. at 2: 27-29).
The Specification discloses that, “[i]n accordance with the present
invention, the gaming machine may track a predetermined number (e.g.,
four) of past winning symbol combinations, display the past winning
combinations . . . , and provide a ‘repeat win’ or ‘match to win’ bonus to the
player if a current play of the game yields one of the past winning
combinations” (id. at 7: 1-5).
Claims 13, 15, 17, 19, and 21 are representative and read as follows:
13. A method of conducting a wagering game, comprising:
displaying a plurality of past outcomes of the wagering game; and
awarding a bonus if a current outcome of the wagering game has a
predetermined association with any of the displayed plurality of past
outcomes.

15. The method of claim 13, wherein the wagering game is
conducted via a plurality of gaming machines linked to the controller.

17. The method of claim 13, wherein the displayed plurality of past
outcomes are a predetermined number of winning outcomes.

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19. The method of claim 13, wherein the wagering game is a reel
slot game including symbol-bearing reels that are rotated and stopped
to place combinations of symbols in visual association with a display
area, and wherein the displayed plurality of past outcomes are one or
more of the combinations of symbols.

21. The method of claim 13, wherein the displaying step includes
displaying the plurality of past outcomes on a history display, and
wherein the past outcomes are added to and removed from the history
display using a first-in, first-out scheme.

The claims stand rejected as follows:
• Claims 1, 2, 5, 6, 10-14, 17, 18, 22, and 23 under 35 U.S.C.
§ 102(b) as anticipated by Morrison;2 and
• Claims 3, 4, 7-9, 15, 16, and 19-21 under 35 U.S.C. § 103(a) as
obvious in view of Morrison and Sharpless.3
ANTICIPATION
Issue
The Examiner has rejected claim 13, among others, as anticipated by
Morrison. The Examiner finds that claim 13 is anticipated because
“Morrison teaches a gaming system and method comprising: a history
display for displaying a plurality of past outcomes . . . (see Abstract); and a
controller (42) for awarding a bonus if a current outcome of the wagering
game has a predetermined association with any of the displayed plurality of
past outcomes” (Ans. 3).
Appellant contends that, in the claimed system, a bonus is awarded if
the current outcome matches any of the displayed past outcomes, whereas

2 Morrison, U.S. Patent 5,848,936, issued Dec. 15, 1998.
3 Sharpless et al., US 2002/0100361 A1, published May 29, 2003.
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“Morrison only awards an enhanced award when a current outcome has a
predetermined association with an immediately preceding and identical
displayed outcome” (App. Br. 9).
The main issue with respect to this rejection is: Does claim 13 read
on a gaming method, as in Morrison, that awards a bonus only if the current
outcome is the same as the most recent past outcome?
Findings of Fact
1. Morrison discloses a wagering game in which a top having sides of
different colors is spun, and players bet on which color will face up when the
top topples over (Morrison, col. 1, ll. 55-63).
2. Morrison’s wagering game also includes a bonus feature: “If the
player has made consecutive wagers on the same outcome of consecutive
games and the wagered upon game outcomes occur consecutively, the
method includes paying the player a second, greater reward” (id. at col. 1, ll.
63-67).
3. Morrison discloses that “the game may also include means to
record on a historical basis game outcomes. This historical record is
preferably embodied by a display column 60 including a plurality of lenses
62 arranged in sequential columns.” (Id. at col. 4, ll. 23-27.)
4. The lenses in Morrison’s display light up in different colors (see id.
at col. 4, ll. 27-32), so that “[b]y lighting the lenses 62 of the column display
60 in a right to left, top to bottom fashion, the players will view the historical
record of outcomes by looking at the colors projected by the lenses 62” (id.
at col. 4, ll. 35-38).
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5. Morrison’s system includes a “processor 42 [that] issues a signal
. . . which energizes the LED 64 corresponding to the color of the outcome
for the lens 62 at the next sequential location of a historical record displayed
at the display column 60” (id. at col. 5, ll. 16-20).
Principles of Law
“[A]s an initial matter, the PTO applies to the verbiage of the
proposed claims the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the
art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in the
applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997)
“[D]uring patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language explored,
and clarification imposed.” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
Analysis
Claim 13 is directed to a gaming method comprising “displaying a
plurality of past outcomes” and awarding a bonus if the current outcome
matches (or has some other “predetermined association with”) “any of the
displayed plurality of past outcomes.” Morrison discloses a gaming method
that includes displaying a plurality of past outcomes and awarding a bonus if
the current outcome matches the most recent past outcome.
The Examiner reasons that “any of the displayed plurality of past
outcomes” includes the most recent past outcome and therefore Morrison
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anticipates claim 13 (Ans. 6-7). Appellant argues that “any of the displayed
plurality of past outcomes” means that each of the displayed past outcomes,
not just the most recent one, results in a bonus if it is matched by the current
outcome (App. Br. 9-10). Appellant provides a dictionary definition of
“any” and points to the Specification’s Figure 4 as support for his claim
interpretation (id. at 6, 9-10).
As Appellant notes, one definition of “any” is “[o]ne, some, every, or
all without specification.”4 That definition, however, is accompanied by a
Usage Note, which states that “[u]sed as a pronoun, any can take either a
singular or plural verb, depending on how it is construed: Any of these
books is suitable (that is, any one). But are any (that is, some) of them
available?” (Id.)
Thus, “any” can reasonably be interpreted, as Appellant interprets it,
to refer to the entire specified group: Any match pays a bonus, so matching
the first, second, or third displayed outcome will pay a bonus.
But “any” can also be reasonably interpreted, as the Examiner
interprets it, to mean any one of a specified group: Does Morrison’s game
pay a bonus if any of the displayed outcomes is matched? Yes, it pays a
bonus if the most recent displayed outcome is matched.
Although Appellant’s interpretation is not unreasonable, neither is the
Examiner’s, and we must apply the broadest reasonable interpretation. The
Examiner’s interpretation is broader, and therefore that is the one we adopt.
“Absent an express definition in their specification, the fact that appellants

4 American Heritage Dictionary of the English Language, 3rd Ed., Houghton
Mifflin Co., New York (1992), at 83.
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can point to definitions or usages that conform to their interpretation does
not make the PTO’s definition unreasonable when the PTO can point to
other sources that support its interpretation.” Morris, 127 at 1056. Under
the broadest reasonable claim interpretation, Morrison anticipates claim 13.
Appellant argues that claims 5, 6, 17, and 18 are not anticipated
because these claims require that “the displayed plurality of past outcomes
are a predetermined number of winning outcomes,” which Morrison does
not disclose (App. Br. 11-12).
We agree with Appellant that the Examiner has not shown that
Morrison discloses the system and method defined by claims 5, 6, 17, and
18. The Examiner finds that Morrison describes displaying a predetermined
number of winning outcomes at column 4, line 67 to column 5, line 26 (Ans.
7).5 That passage, however, only discloses displaying a historical record of
outcomes of previous plays (i.e., the color that has come up on each spin of
the top) whether or not they were winning outcomes. Depending on what
colors the player(s) had bet on, all, some, or none of the displayed outcomes
could be winning outcomes.
Thus, the Examiner has not shown that Morrison describes displaying
a predetermined number of winning outcomes, as required by claims 5, 6,
17, and 18.

5 The Examiner also points to column 1, lines 55-67 (Answer 4), but that
passage does not refer to displaying past outcomes.
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OBVIOUSNESS
Issue
The Examiner has rejected claims 3, 4, 7-9, 15, 16, and 19-21 under
35 U.S.C. § 103(a) as obvious in view of Morrison and Sharpless. The
Examiner finds that, although Morrison does not disclose the limitations of
the rejected dependent claims, Sharpless teaches or suggests those
limitations, and it would have been obvious to “provide Sharpless et al.’s
network of shared bonus games to the game system and method using
historical data of Morrison to enhance the payout of network gaming thus
attract more game players and bring forth profit” (Ans. 5).
Appellant contends that Morrison teaches away from combining its
teachings with Sharpless, because “the sine qua non or indispensable
requisite for the game of Morrison is simplicity” (App. Br. 15). Appellant
also argues that the Examiner has provided “no evidence that forming the
Morrison device in a network will attract more game players or bring forth
more profit,” the Examiner’s basis for combining the references (id. at 20,
Reply Brief, 15-16).
The issue with respect to this rejection is: Did the Examiner err in
concluding that the limitations of claims 3, 4, 7-9, 15, 16, and 19-21 would
have been obvious based on the teachings of Morrison and Sharpless?
Additional Findings of Fact
6. Sharpless discloses a gaming system and method for playing a
shared bonus game (Sharpless at 1, ¶ 0002).
7. Sharpless’ system includes a “gaming device 100 [that] may be
configured as one of any of a number of electronic or electro-mechanical
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gaming devices utilizing a random number generator to produce an outcome.
Base game indicator 160 may, by way of example only, be configured to
display a reel-type game, card game, or any other game of chance consisting
of a substantially random outcome.” (Id. at 3, ¶ 0034.)
8. Sharpless discloses that “a plurality of gaming devices . . . in a
common location are networked to a controller 190 for play of the shared
bonus game” (id. at 7, ¶ 0057).
Principles of Law
“[A] patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art. Although common sense directs one to look with
care at a patent application that claims as innovation the combination of two
known devices according to their established functions, it can be important
to identify a reason that would have prompted a person of ordinary skill in
the relevant field to combine the elements in the way the claimed new
invention does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, __, 127 S.Ct.
1727, 1741 (2007).
“[I]nterrelated teachings of multiple patents; the effects of demands
known to the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary skill in the
art, all [should be considered] in order to determine whether there was an
apparent reason to combine the known elements in the fashion claimed.” Id.
at __, 127 S.Ct. at 1740-41.
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“[A]ny 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.” Id. at __, 127 S.Ct. at 1741-42.
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994).
“[I]n general, a reference will teach away if it suggests that the line
of development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.” Id.
Analysis
We agree with the Examiner that the cited references would have
made obvious the inventions of claims 3, 9, 15, and 21. Claims 3 and 15 are
directed to a system and method, respectively, in which the wagering game
is conducted via a plurality of gaming machines linked to a controller.
Sharpless discloses a method of playing a shared bonus game that is
applicable to any game of chance that has a random outcome. In Sharpless’
method, a plurality of gaming devices are networked to a controller to play
the shared bonus game. Morrison discloses a game in which a plurality of
players bet on which of the randomly selected colors will face up when a top
stops spinning. We agree with the Examiner that it would have been
obvious to those of ordinary skill in the art to modify Morrison’s game by
conducting the wagering via a plurality of gaming machines linked to a
controller, in order to allow more players to participate in the game.
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Claims 9 and 21 are directed to a system and method, respectively,
where the past outcomes are added and removed on a first-in, first-out basis.
This limitation is suggested by Morrison itself, which teaches that “[b]y
lighting the lenses 62 of the column display 60 in a right to left, top to
bottom fashion, the players will view the historical record of outcomes”
(Morrison, col. 4, ll. 35-38). A top-to-bottom display of outcomes adds and
removes outcomes on a first-in, first-out basis: the newest outcome is added
at the top, each of the displayed outcomes is moved down one row, and the
oldest outcome is deleted at the bottom.
Appellant argues that Morrison and Sharpless do not teach or suggest
all the limitations of the claims and that Morrison teaches away from the
combination with Sharpless (App. Br. 13-16). These arguments, however,
rely on Appellant’s definition of “any,” which we have rejected, as discussed
above.
Appellant also argues that Morrison teaches away from conducting its
game via a plurality of gaming machines linked to a controller because
Morrison teaches that one of the benefits of its game is that it “is, quite
literally, a ‘hands on’ game intentionally configured to promote the ‘team
effort at the table’” (App. Br. 17).
This argument is unpersuasive. Appellant has pointed to no evidence
in the record to show that play of Morrison’s game would change in any way
if wagering was expanded beyond the number of seats at Morrison’s table,
and conducted via additional gaming machines linked to a controller.
Adding players via gaming devices would not appear to affect how the game
itself is played by the players at the table, and would expand the number of
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players who could bet on, and thus participate in, a given game. We
therefore do not agree that Morrison teaches away from the proposed
combination, or that the combination would render Morrison’s game unfit
for its intended purpose (App. Br. 18-19).
Appellant also argues that reason asserted by the Examiner for
combining the references lacks an evidentiary basis: “There is no evidence
that forming the Morrison device in a network will attract more game
players or bring forth more profit” (App. Br. 20).
This argument is also unpersuasive. The odds in Morrison’s game
favor the house: Morrison’s top has four colors on its sides (Morrison, col.
1, ll. 56-58), and therefore a bet has a 1:4 chance of being correct, but the
house pays a correct bet only a 2:1 return (id. at col. 5, ll. 27-30). Thus, a
larger number of players will mean a larger amount of potential bets, and a
larger amount of potential profits, for the house in any particular game.
Morrison thus provides evidence that expanding the number of players that
can play the disclosed game will result in more potential profit for the
casino.
Appellant also argues that Morrison and Sharpless do not teach or
suggest displaying a plurality of past outcomes on a history display that is
common to a plurality of gaming machines, as required by claims 4 and 16
(App. Br. 20-21). This argument is unpersuasive because, for the reasons
discussed above, the prior art would have made it obvious to conduct
Morrison’s game via additional gaming machines linked to a controller.
Morrison’s history display is intended to be shared by all of the players
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playing the game (Morrison, col. 4, ll. 35-38); therefore, Morrison would
have made obvious the shared history display recited in claims 4 and 16.
Finally, Appellant argues that the Examiner has not shown that
Morrison and Sharpless teach or suggest the limitations of claims 7, 8, 19,
and 20 (App. Br. 20-22).
We agree with Appellant that the Examiner has not made out a prima
facie case of obviousness with respect to claims 7, 8, 19, and 20. These
claims require that the claimed system or method includes a “wagering game
[that] is a reel slot game including symbol-bearing reels that are rotated and
stopped.”
The Examiner has pointed to a passage of Sharpless stating that
Sharpless’ base game can be a reel-type game (Ans. 13), but the Examiner
has not provided any persuasive rationale to explain why it would have been
obvious to replace the top-based game described by Morrison with a reel-
type (slot machine) game, when doing so would completely eliminate all of
the advantages disclosed by Morrison for its game.
CONCLUSIONS OF LAW
Claim 13 reads on the gaming method taught by Morrison, which
awards a bonus only if the current outcome is the same as the most recent
past outcome.
The Examiner did not err in concluding that the limitations of claims
3, 4, 9, 15, 16, and 21 would have been obvious based on the teachings of
Morrison and Sharpless; the Examiner did err in concluding the same with
respect to claims 7, 8, 19, and 20.
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SUMMARY
We affirm the rejection of claim 13 as anticipated by Morrison.
Claims 1, 2, 10-12, 14, 22, and 23 fall with claim 1 because they were not
argued separately. 37 C.F.R. § 41.37(c)(1)(vii). We also affirm the
rejection of claims 3, 4, 9, 15, 16, and 21 as obvious in view of Morrison and
Sharpless.
We reverse the rejection of claims 5, 6, 17, and 18 as anticipated by
Morrison, and the rejection of claims 7, 8, 19, and 20 as obvious in view of
Morrison and Sharpless.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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