11791815 (P.T.A.B. Sep. 26, 2014)

Ex Parte Pacey et al

Patent Trial and Appeal BoardSep 26, 2014

11791815 (P.T.A.B. Sep. 26, 2014)

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. 11/791,815 05/29/2007 Larry J. Pacey 247079-000403USPX 6644 70243 7590 09/26/2014 NIXON PEABODY LLP 300 S. Riverside Plaza, 16th Floor CHICAGO, IL 60606 EXAMINER WEATHERFORD, SYVILA ART UNIT PAPER NUMBER 3717 MAIL DATE DELIVERY MODE 09/26/2014 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 LARRY J. PACEY and ALFRED THOMAS ____________________ Appeal 2012-006734 Application 11/791,815 Technology Center 3700 ____________________ Before RICHARD E. SCHAFER, CAROLYN D. THOMAS, and JEFFREY A. STEPHENS, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 file this appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1–21. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 The real party in interest is identified as WMS Gaming Inc. App. Br. 3. Appeal 2012-006734 Application 11/791,815 2 Claimed Subject Matter The claims are directed to a gaming machine, such as a slot machine, in which symbols are moved or “pushed” into new positions. Spec. 1, ll. 5– 6. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A gaming machine comprising: an input device for receiving a wager; one or more displays for displaying a wagering game having a plurality of symbols arranged in an array, the array comprising one or more variable positions and one or more first pass- through positions, and wherein each of the one or more variable positions is associated with a predetermined one of the first pass-through positions ; and a controller operative to: i. randomly vary a first symbol in each of the one or more variable positions, while holding any second symbol in each of the first pass-through positions; ii. translate the first symbol, if any, from each of the one or more variable positions to the associated predetermined one of the first pass-through positions; and iii. remove, from the predetermined one of the first pass-through positions, any second symbol being held in the predetermined one of the first pass-through positions, in response to the first symbol appearing in the associated variable position. Rejection The Examiner maintains in the Answer the rejection of claims 1–21 under 35 U.S.C. § 103(a) as unpatentable over Falciglia (US 5,971,849, issued Oct. 26, 1999) and Mierau (US 2004/0048650 A1, published Mar. 11, 2004). Ans. 4–15. Appeal 2012-006734 Application 11/791,815 3 ISSUES ON APPEAL The issues presented on appeal are whether the Examiner erred in finding that Falciglia discloses translating the first symbol “to the associated predetermined one of the first pass-through positions,” as recited in claim 1, and whether the Examiner articulated sufficient reasoning for combining Falciglia and Mierau. ANALYSIS Falciglia – “associated predetermined one” Appellants argue that Falciglia does not disclose claim 1’s requirement that each variable position be “associated with a predetermined one of the first pass-through positions.” App. Br. 15–17; Reply Br. 4–6. The Examiner finds that Falciglia “giv[es] the user the option to move the symbol to any position in the matrix that is in the corresponding column or ‘same’ column as the selectable display region.” Ans. 16. Although we agree with the Examiner that Falciglia therefore discloses “an associated predetermined set of positions” (id.), we find that a set of positions is not the same as a single predetermined position expressly required by the claims. Falciglia therefore falls short of disclosing an associated predetermined one limitation. Motivation to Combine Falciglia and Mierau Appellants also argue that the Examiner has not provided sufficient motivation for combining Falciglia’s randomly varying symbols while holding any second symbol with Mierau’s moving of symbols from one position to a different predetermined position, i.e., the Examiner “provides Appeal 2012-006734 Application 11/791,815 4 no articulation or rationale that explains the fact of this missing connection.” See App. Br. 18–19. We agree that the Examiner has not provided sufficient reasoning for combining Falciglia with Mierau. In the rejection, the Examiner concludes that “Falciglia’s movement of symbols could be modified to incorporate a system controlled nudge feature of nudging or pushing symbols from the variable positions to each consecutive pass-through positions.” Ans. 7. The Examiner does not, however, sufficiently articulate the rational underpinning that explains the desirability of the combination. “To facilitate review, this analysis should be made explicit.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing with approval In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). The Board’s primary function on appeal is to review decisions of Examiners. We decline to consider in the first instance a potential rationale for combining Falciglia and Mierau. See App. Br. 19–20. Because entering a new ground of rejection pursuant to our “authority under 37 C.F.R. 41.50(b) is discretionary, no inference should be drawn from a failure to exercise that discretion.” MPEP § 1213.02 (9th ed., Mar. 2014).2 2 Should there be further prosecution of this application (including any review for allowance), the Examiner may wish to review whether Mierau’s nudge feature meets the “predetermined one” limitation missing from Falciglia. Appeal 2012-006734 Application 11/791,815 5 Conclusion Since we agree with at least one of the arguments advanced by Appellants, we need not reach the merits of Appellants’ other arguments. For the foregoing reasons, we are constrained to reverse the Examiner’s decision to reject claims 1–21 under 35 U.S.C. § 103(a) as unpatentable over Falciglia and Mierau. DECISION Upon consideration of the record in light of Appellants’ contentions and the preponderance of relevant evidence, we reverse the Examiner’s decision to reject claims 1–21. REVERSED llw