Ex Parte Roireau

Patent Trial and Appeal Board

Jun 11, 2013

11277094 (P.T.A.B. Jun. 11, 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.
11/277,094 03/21/2006 Alan Roireau 60583-383 4255
27305 7590 06/12/2013
HOWARD & HOWARD ATTORNEYS PLLC
450 West Fourth Street
Royal Oak, MI 48067
EXAMINER
DUFFY, DAVID W
ART UNIT PAPER NUMBER
3716
MAIL DATE DELIVERY MODE
06/12/2013 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 ALAN ROIREAU
____________________

Appeal 2011-001964
Application 11/277,094
Technology Center 3700
____________________

Before: LINDA E. HORNER, BARRY L. GROSSMAN, and
NEIL A. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/277,094
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
32. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The claims are directed to a gaming system and method for providing
a bonus award to one player in response to input from another player(s).
Spec., para. [0002]. Claims 1, 14, 23, and 26 are independent, with claims 1
and 23 being system claims, and 14 and 26 being method claims. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A gaming system, comprising:
a plurality of game devices, each game device for
allowing a player to make a wager on a game and for awarding
the respective player an award as a function as a result of a
winning condition for the game played by the respective player;
a game controller coupled to the game devices for
playing the game, randomly establishing the actual outcome of
the game, and determining if of the players has a winning
condition;
a shared experience controller coupled to the game
devices for recognizing a bonus condition for one of the
players, responsively providing a choice between at least two
items to at least one other player, and providing a bonus award
to the one player in response to the at least one other player
selecting one of the items, where the one player is not provided
with the choice between the at least two items.

REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Walker US 2004/0204235 A1 Oct. 14, 2004

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REJECTIONS
The Examiner made the following rejections:
Claim 1-32 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Ans. 4.
Claim 1-32 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Walker. Ans. 4.

OPINION
The rejection under 35 U.S.C. § 112, first paragraph

The Examiner has rejected claims 1-32 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
The Examiner contends that the limitation “where the one player is not
provided with the choice between the at least two items,” included in all the
independent claims, does not find adequate support in the Specification.
Ans. 4.1 The Examiner acknowledges that “[t]he claims as amended provide
a system whereby a player receives a bonus condition, a choice is provided
to ‘at least one other player’ and a bonus award is provided to the player,
where the player is not provided with the choice,” Ans. 9, but finds a basis
for the rejection as:
The specification as filed does not positively dictate that
the one player is not provided with the choice. The
specification repeatedly states that at least one other player is

1 The other claims have the same or similar language. Independent claim 14
provides: “wherein the one player is not provided with the choice between
the at least two items.” Independent claim 23 provides: “where the one
player is not provided with the choice between the at least two items.”
Independent claim 26 provides: “where the one player is not provided with
the choice between the at least two items.” The slight difference in wording
has not been argued to provide any distinction between the claims.
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provided with a choice, but never explicitly states the player is
not provided with the choice. The specification also details in
par 73 an embodiment whereby players make choices and are
rewarded based on those choices. Reasonably interpreted, the
embodiment of par 73 provides a situation whereby a player
experiencing a bonus condition as set forth in claim 1, in this
case the selection bonus event, is provided with the choice of
the award and the resulting award.
Ans. 9-10, emphasis supplied.
Appellant believes, and we agree, that a fair reading of the statements
in the Specification, including the drawings, would clearly indicate that the
invention provides a choice to the other players and not to the player who
has triggered the bonus game. App. Br. 16-17; Rep. Br. 2-3. Appellant
points to his Specification and one embodiment where the players are
organized into teams, described in “e.g., paragraph [0079]. In particular, if
the other player(s) are on the other team, then this clearly requires that one
player is not given a choice.” Rep. Br. 2.
Appellant contends that his Specification and particularly his
drawings also support a reading that only other players, rather than the one
player who has triggered the bonus, are provided the choice or input. App.
Br. 16; Reply Br. 2-3. In particular, Appellant points to screenshot 106 of
Figure 7. App. Br 16; Reply Br. 3. Screenshot 106 presents three options
108A, 108B, and 108C for a bonus award and reads “PLAYER #1 HAS
WON A BONUS! PLEASE CHOOSE HIS AWARD!” Id. Appellant argues
that the reference in this screenshot to "PLAYER #1", instead of "YOU",
shows that a player other than the player winning the bonus award is
requested to choose the award. Id.
Secondly, Appellant points to screen shot 110 which display informs
the one player of his bonus award and states “‘THE OTHER PLAYERS
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HAVE CHOSEN! YOUR AWARD IS:’”. Appellant argues that this
“clearly indicates that the one player (1) is not provided with the choice, and
(2) is not a participant in the ‘choice’ of his or her bonus award.” App. Br.
16.
As noted above, the Examiner found that “[a]ll references to the
selection of prizes in applicant's specification merely stipulate that the
selection is made by at least one other player. Such a statement does not
positively preclude the one player from having input.” Ans. 4, emphasis
supplied.
To satisfy the written description requirement, the disclosure must
convey with reasonable clarity to skilled artisans that Appellant was in
possession of the claimed invention as of the filing date. Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The inquiry into
whether the description requirement is met is a question of fact. In re
Wertheim, 541 F.2d 257, 262 (CCPA 1976); In re Ruschig, 379 F.2d 990,
996 (CCPA 1967).
We agree with Appellant that one skilled in the art could clearly view
the player screen shots, e.g., 106 and 110, taken in the context of the other
drawings and the Specification, and reasonably determine that the "one
player" does not have input to his/her own bonus award. App. Br. 16-17.
Appellant's Specification and drawings convey with reasonable clarity to a
person of ordinary skill in the art that a bonus award is provided to the
player, where the player is not provided with the choice, as called for by the
independent claims, and therefore all of the claims. Appellant's
Specification need not describe the claimed invention in haec verba to
comply with the written description requirement. Ariad Pharm., Inc. v. Eli
Lilly and Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc).
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Regarding negative claim limitations, as here, the Federal Circuit has
held: “Negative claim limitations are adequately supported when the
specification describes a reason to exclude the relevant limitation. Such
written description support need not rise to the level of disclaimer. In fact, it
is possible for the patentee to support both the inclusion and exclusion of the
same material.” Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351
(Fed. Cir. 2012). Thus the Specification, which includes the drawings, as
filed need not “positively dictate that the one player is not provided with the
choice,” as required by the Examiner (Ans. 9), to show possession of the
invention for the purposes of the written description requirement.
Accordingly, the rejection of claim 1, and the other independent
claims, 14, 23, and 26, and claims dependent thereon, 2-13, 15-22, 24-25,
and 27-32, under 35 U.S.C. § 112, first paragraph, for failing to comply with
the written description requirement, is reversed.

The rejection under 35 U.S.C. § 103(a)

The rejection for obviousness under 35 U.S.C. § 103(a) relates to the
same limitation within the claims discussed above. The Examiner found that
“Walker does not explicitly disclose where the one player is not provided
with the choice between the at least two items.” Ans. 5. But the Examiner
found this teaching within the inherent limits of the game play in Walker.
The Examiner found that “Walker does not explicitly disclose where the one
player is not provided with the choice between the at least two items,” but
found this to be inherent in Walker. Ans. 5.
Ans. 5, emphasis supplied.
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Appellant responds that there is no basis for such a finding in Walker,
that there is no teaching that this would be the result in the event that the
available selections are less than the number of team members, and that such
a statement with no teaching of this condition is “using impermissible
hindsight with respect to Walker.” App. Br. 19-20. Further Appellant
argues that in the event that the available selections are less than the number
of team members, “the one player is presented with the selection, but just
does not make a choice in time” in contrast to the claims which recite that
the one player is not given the choice. Id. at 20. We agree. The portion of
Walker relied on by the Examiner does not teach the claimed limiting
condition of specifically not providing bonus choices to the winning player.
"A rejection based on section 103 clearly must rest on a factual basis. . . ."
In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). "The Patent Office has
the initial duty of supplying the factual basis for its rejection. It may not . . .
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis." Id.
Accordingly, we reverse the rejection of claim 1, and the other
independent claims 14, 23, and 26, and claims 2-13, 15-22, 24-25, and 27-32
dependent thereon, for obviousness under 35 U.S.C. § 103(a).

DECISION
For the above reasons, the Examiner's rejections of claims 1-32 are
reversed.

REVERSED

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