Ex Parte Schwartz et alDownload PDFPatent Trial and Appeal BoardDec 9, 201411897716 (P.T.A.B. Dec. 9, 2014) Copy Citation 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. 11/897,716 08/31/2007 Marc B. Schwartz 797.003US1 6122 97462 7590 12/09/2014 Mark A. Litman & Associates, P.A. 7001 Cahill Road, Ste. 15A Edina, MN 55439 EXAMINER HYLINSKI, STEVEN J ART UNIT PAPER NUMBER 3717 MAIL DATE DELIVERY MODE 12/09/2014 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 MARC B. SCHWARTZ and GLORIA F. MITCHELL ____________ Appeal 2012-011615 Application 11/897,716 Technology Center 3700 ____________ Before LINDA E. HORNER, STEFAN STAICOVICI, and LISA M. GUIJT, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Marc B. Schwartz and Gloria F. Mitchell (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1–16, which are all the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. THE INVENTION Appellants’ claimed invention relates to a “method of providing a wagering game on a video wagering system.” Br. 32, Claims Appendix. Appeal 2012-011615 Application 11/897,716 2 Claims 1 and 14 are independent. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method of providing a wagering game on a video wagering system comprising a gaming system comprising a processor, player input controls, a video display and game control software in which the video display provides selectable areas, and in which player input controls allow selection of individual selectable areas by input at the player input; the method comprising steps of:[] the processor recognizing value at risk entered at the player input in exchange for a first number of player input usable selections provided by the processor; the selections comprising two categories of selections, a first category of selection having a first effect upon at least some selection results and a second category of selection having a second effect upon at least some selection results; the processor recognizing player input exercising at least some but less than all player input usable selections of frames to reveal at least one symbol for each selection made, symbols being used by the processor to provide potentially positive award results, positive award results, potential negative results, negative results or neutral results; at least the first effect of the first category of selection can at least reduce a negative effect or potential negative effect by at least some degree; wherein the processor identifies player input action making an election to forfeit at least one player input usable selection after the processor has received at least some of the player input usable selections, whether or not an award has been accumulated. Appeal 2012-011615 Application 11/897,716 3 THE REJECTIONS Appellants seek review of the following rejections: 1. Claims 1–121 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting. 2. Claims 1–4, 6–11, and 13–16 are rejected under 35 U.S.C. § 102(b) as anticipated by Baerlocher (US 6,506,118 B1; iss. Jan. 14, 2003). 3. Claims 5 and 12 are rejected under 35 U.S.C. § 103(a) as unpatentable over Baerlocher. ANALYSIS Obviousness-type double patenting rejections The Examiner provisionally rejected claims 1–12 on the basis of nonstatutory obviousness-type double patenting as unpatentable over claims 1–12 of Application 11/897,657, claims 1 and 4–12 of Application 11/897,718, and claims 2–8 of Application 11/897,719. Since entry of these rejections, Appellants have abandoned the ’657, ’718, and ’719 applications.2 Abandonment of the ’657, ’718, and ’719 applications avoids obviousness-type double patenting between the claims of these applications and the claims on appeal. Accordingly, we reverse the nonstatutory obviousness-type double patenting rejections of claims 1–12. 1 Appellants list claim 13 as rejected under this ground. Br. 9, 10. The ground of rejection as presented in both the Final Rejection, from which this appeal is taken, and the Examiner’s Answer, does not include claim 13. Final Rej. 4;Ans. 6. 2 The Office issued Notices of Abandonment in the ’657 application and the ’719 application on April 10, 2012, and in the ’718 application on April 26, 2012. Appeal 2012-011615 Application 11/897,716 4 Anticipation rejection Appellants offer arguments pertaining to all the claims subject to this rejection (claims 1–4, 6–11, and 13–16) and offer additional arguments for claims 6, 11 and 13, and 15 and 16. Br. 24 (offering arguments pertaining to claim 6); Br. 24–26 (offering arguments pertaining to claims 11 and 13); Br. 26–28 (offering arguments pertaining to claims 15 and 16). For the arguments pertaining to all of the claims, we select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). We separately consider the additional arguments pertaining to claims 6, 11 and 13, and 15 and 16. Claim 1 Appellants argue that the Examiner erred in rejecting claim 1 as anticipated by Baerlocher because Baerlocher fails to disclose a method in which: (1) symbols are “used by the processor to provide potentially positive award results, positive award results, potential negative results, negative results, or neutral results,” (2) the “first effect of the first category of selection can at least reduce a negative effect or potential negative effect by at least some degree,” and (3) “the processor identifies player input action making an election to forfeit at least one player input usable selection after the processor has received at least some of the player input usable selections, whether or not an award has been accumulated,” as called for in claim 1. Br. 12. We discuss each claim element below. Appeal 2012-011615 Application 11/897,716 5 (1) “symbols being used by the processor to provide potentially positive award results, positive award results, potential negative results, negative results or neutral results” Appellants argue that the language of claim 1 requires that all five symbol functions must be available, and Baerlocher does not anticipate because it allows for only three alternatives and does not allow for “potentially positive award results” and “potential negative results.” Br. 12. The Examiner interpreted the claim language to require the symbols being used to provide only one of the five listed results because the results are recited using alternative language in the claim. Ans. 18; see also Ans. 27 (“Only one of these award results need be met in order to meet the claim, which Baerlocher does as discussed above.”). We agree with the Examiner’s interpretation of the claim language. Under the broadest reasonable interpretation of the claim language, the use of the alternative “or” in the list of results requires that only one of the five results has to be met. If Appellants had intended to claim a method that requires symbols being used to provide all five results, the claim language should have clearly indicated that intention. For example, Appellants could have recited “symbols being used by the process to provide each of potentially positive award results, positive award results, potential negative results, negative results, and neutral results.” By choosing to claim the results provided by the symbols in the alternative, Appellants have left the scope of the claim, at best, vague. As such, the Examiner is reasonable in interpreting the claim language broadly as requiring only one of the claimed Appeal 2012-011615 Application 11/897,716 6 results. Appellants admit that Baerlocher discloses three of the claimed award results. Br. 12. (2) “first effect of the first category of selection can at least reduce a negative effect or potential negative effect by at least some degree” Appellants argue that the Examiner misinterpreted this claim language to call for a first category of selection that can produce a negative effect. Id. at 14. Appellants contend that the language of the claim, when properly interpreted, means that “a first category of selection may REDUCE a negative impact later received.” Id. Appellants point to an example, as described in the Specification, of a “SAFE” category of selection, “which would neutralize, moderate or reduce any negative or potential negative symbol selected.” Id. (quoting Spec. 5, ll. 8–11). The Specification describes: The player is awarded different categories of selection choices that have different effects upon the impact of symbols revealed. A preferred potential of different impacts would be a SAFE selection, which would neutralize, reduce, or moderate any negative or potential negative symbol selected, and a RISK selection that would not alter the impact of any symbol selected. The effect of the different formats of selections can vary and need not be limited to two properties only. For example, the SAFE selection may nullify an entire adverse effect of a selection (e.g., a loss of all wagers) or may merely reduce the impact of an adverse selection (e.g., a symbol indicating a loss of all wagers would be reduced to only a loss of or reduction of a portion of the wagers, such as a loss of 1X wagered unit, or a loss of a specific percentage or proportion of an initial wager or Appeal 2012-011615 Application 11/897,716 7 the winnings accumulated at the time of selecting a negative event with a SAFE wager with the other units remaining in play). Alternatively, if a selection made under a SAFE selection would ordinarily end the game (with or without attendant loss of all or a portion of initial wagers or accumulated winnings), selection under a SAFE choice could result in only a loss of a RISK selection or a SAFE selection, still allowing some possibility of a winning event to occur. Spec. 6, l. 23–Spec. 7, l. 6. See also Spec. 7 (table) (providing “a non- limiting list of negative effects and possible impacts with SAFE selections”). The Examiner found that Baerlocher discloses “good” or positively valued selections, “bad” or negatively valued selections, and neutral selections. Ans. 7–8 (citing, for example, Baerlocher, FIG. 4B, which shows an example of a “good” selection being revealed to the player; FIGs. 3J–3I, which shows an example of a “bad” selection being revealed to the player; and FIGs. 4G–4I, which shows an example of a neutral or zero-valued selection). The Examiner further found that a first effect of a first category of selection of Baerlocher can at least reduce a negative effect or potential negative effect of a later selection by at least some degree: [I]n accordance with the teaching of Baerlocher that positive, negative, and zero-valued selections can be chosen by a player in a multiple round, pick-type bonus game, and summed to affect the player’s total award value at that point in time such that positive values add to the award, negative values subtract from the award, and zero-valued selections do not change the award, that any positively-valued selection chosen by the player in the system of Baerlocher will inherently reduce a future negative impact of a future negatively-valued selection when Appeal 2012-011615 Application 11/897,716 8 the values associated with player picks are summed, by definition of mathematics. Ans. 20–21 (citing Baerlocher, Figs. 3E–3J); see also Ans. 10 (finding that the because the award offer of 50 was increased to 75 as a function of a positively valued selection No. 124 in Fig. 3F, that positively valued selection No. 124 completely reduced the future impact of the negatively valued selection No. 120 in Fig. 3J). Although the Specification describes a SAFE category of selection, which reduces the negative effect of a selection made as a “SAFE” selection, the claim language is much broader than this embodiment. In particular, the claim recites that the first category of selection has a first effect upon at least some selection results, where the first effect can at least reduce a negative effect or potential negative effect by at least some degree. The claim language does not recite, for example, that the first category of selection imposes the first effect on a selection made during a first category mode of selection (such as a “SAFE” mode).3 Rather, the claim recites broadly that the first effect is upon “at least some selection results.” We agree with the Examiner’s interpretation of the claim language as being broad enough to 3 Appellants argue that claim 1 has been amended to read “. . . wherein at least the first effect of the first selection within the first category of selection can at least reduce a negative effect or potential negative effect by at least some degree.” Br. 13. We find no evidence of such an amendment in the Record, and this quoted claim language does not appear in the Claims Appendix to the Appeal Brief or elsewhere in the Appeal Brief where claim 1 is reproduced. The Examiner also confirmed that “the claims were never amended to contain the ‘first selection within the first category’ language.” Ans. 20. Appeal 2012-011615 Application 11/897,716 9 encompass the positive effect of a first, good selection reducing the negative effect of a subsequent, bad selection. (3) “the processor identifies player input action making an election to forfeit at least one player input usable selection after the processor has received at least some of the player input usable selections, whether or not an award has been accumulated” Appellants argue that claim 1 recites a method in which “it is possible for a player to forfeit remaining selections after making the minimum required selections and receiving NO award.” Br. 23. Appellants argue that the Examiner erred in finding that Baerlocher discloses this claimed method, because in Baerlocher, “since it is a Bonus Game, should the player make the minimum required selections and elect to STOP, they are GUARANTEED of receiving a positive value award.” Id. We agree with the Examiner (Ans. 24–25) that Appellants’ argument goes beyond the scope of the claims. The claims recite that it is possible for the player to forfeit remaining selections irrespective of whether an award has been accumulated. We agree with the Examiner’s findings (Ans. 10, second full paragraph; Ans. 22, first full paragraph) that Baerlocher discloses the claimed method that allows the player to make an election to forfeit at least one player input usable selection, as called for in claim 1. Accordingly, we agree with the Examiner’s determination that Baerlocher anticipates claim 1. Appellants’ arguments have not demonstrated error in the rejection. As such, we affirm the rejection of Appeal 2012-011615 Application 11/897,716 10 claim 1. Dependent claims 2–4, 7–10, and 14 fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claim 6 Claim 6 depends from claim 1 and recites that “the processor recognizes player input of the category of selection used on each selection.” Br. 33. Appellants argue that the Examiner erred in rejecting claim 6 because “it is once again misinterpreting the two Categories of Selection (SAFE and RISK) as revealed masked symbol impact results.” Br. 24. Again, Appellants’ arguments regarding the categories of selection are not commensurate with the scope of the language Appellants chose to use in claim 1. For the reasons discussed above in our analysis of claim 1 with respect to the scope of the claimed “categories of selection,” we likewise affirm the rejection of claim 6 for the reasons set forth by the Examiner. See Ans. 12 (citing Baerlocher, Figs. 4A–4C and selection 203, and finding that the player in Baerlocher has effectively elected the positive category of selection by virtue of which frame he has chosen). Claims 11 and 13 Claim 11 depends from claim 104 and recites that “there are at least 25 frames and the processor allows player input of at least five selections and at 4 Claim 10 recites, “The method of claim 9 wherein there are at least ten frames from which selections may be made from the player input.” Claim 9 recites, “The method of claim 1 wherein the processor allows input from the player position with respect to only a number of selections fewer than a total number of frames from which selections may be made from the player input.” Appeal 2012-011615 Application 11/897,716 11 least one selection is a first category of selection and at least one selection is a second category selection.” Br. 34. Claim 13 also depends from claim 10 and contains the recitations similar to claim 11, except that it recites “there are at least 10 frames” and “the processor allows input . . . of at least two selections.” Id. We find persuasive Appellants’ argument (Br. 26) that the Examiner erred in rejecting claims 11 and 13 because Baerlocher does not disclose at least one selection is a first category of selection and at least one selection is a second category of selection. Under the Examiner’s interpretation of categories of selection as including positively valued selections, negatively valued selections, and neutral selections, there is no way to ensure that the selections made by a player will include at least one of both a first and a second category of selection. Accordingly, we reverse the rejection of claims 11 and 13. Claims 15 and 16 The rejection of claim 15 as anticipated by Baerlocher suffers from the same shortcoming as the rejection of claim 13, discussed above, by virtue of the dependency of claim 15 from claim 13. Accordingly, we reverse the rejection of claim 15. Claim 16 depends from independent claim 14 and recites “wherein a selection made from the first category of selections causes the processor to reduce the negative impact of a later selection in the second category of selections.” Br. 35. Appeal 2012-011615 Application 11/897,716 12 Appellants argue that the Examiner erred in rejecting claim 16 because “[t]he rejection is misinterpreting revealed masked symbol results with the Categories of Selection.” Br. 26. Again, Appellants’ arguments regarding the categories of selection are not commensurate with the scope of the language Appellants chose to use in the claims. For the reasons discussed above in our analysis of claim 1 with respect to the scope of the claimed “categories of selection,” we likewise affirm the rejection of claim 16 for the reasons set forth by the Examiner. See Ans. 14 (citing Baerlocher, Fig. 4 and pay table No. 218, and finding that “[a]ny positive award values accumulated by the player during the multiple rounds of Baerlocher’s bonus game will inherently, by the definition of mathematics, reduce the negative impact of later negatively-valued selections.”). Obviousness Claim 5 Claim 5 depends from claim 1 and recites, “wherein all first category of selections must be used before any of the second category of selections are exercised.” The Examiner found that Baerlocher teaches that the gaming implementer can determine whether the player is allowed to select from positively valued, negatively valued, or neutral categories of selection. Ans. 15 (citing Baerlocher, col. 14, ll. 25–27). This cited section of Baerlocher is discussing an embodiment in which the player has only positively valued selections in a first offer range and positively or negatively valued selections in a second offer range. Baerlocher, col. 11, ll. 60–66. Baerlocher further discloses that “[t]he multiple ranges may be implemented Appeal 2012-011615 Application 11/897,716 13 with an award offer modification embodiment illustrated in FIGS. 3A through 3J, or with an award offer replacement embodiment illustrated in FIGS. 4A through 4L.” Baerlocher, col. 12, ll. 5–8. The Examiner determined that the particular order of steps called for in claim 5 “are found obvious over Baerlocher.” Ans. 15. We agree with the Examiner’s determination of obviousness. As noted above, Baerlocher disclose an embodiment in which selections within a first offer range are made prior to selections being made from within a second offer range, in which the first offer range allows only positively valued results, and the second offer range allows both positively and negatively valued results. This disclosure renders obvious the claimed method in which all selections in a first category of selection must be used before any selections in a second category of selection are exercised. As such, we affirm the rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable over Baerlocher. Claim 12 The rejection of claim 12 as unpatentable over Baerlocher suffers from the same shortcoming as the rejection of claim 11, discussed above, by virtue of the dependency of claim 12 from claim 11. Accordingly, we reverse the rejection of claim 12. DECISION 1. The decision of the Examiner to provisionally reject claims 1–12 on the ground of nonstatutory obviousness-type double patenting is REVERSED. Appeal 2012-011615 Application 11/897,716 14 2. The decision of the Examiner to reject claims 1–4, 6–10, 14, and 16 under 35 U.S.C. § 102(b) as anticipated by Baerlocher and claim 5 under 35 U.S.C. § 103(a) as unpatentable over Baerlocher is AFFIRMED. 3. The decision of the Examiner to reject claims 11, 13, and 15 under 35 U.S.C. § 102(b) as anticipated by Baerlocher and claim 12 under 35 U.S.C. § 103(a) as unpatentable over Baerlocher is REVERSED. 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).5 AFFIRMED-IN-PART mls 5 Should there be further prosecution of this application (including any review for allowance), the Examiner may wish to review the claims for compliance under 35 U.S.C. § 101 in light of the recently issued preliminary examination instructions on patent eligible subject matter. See “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.,” Memorandum to the Examining Corps, June 25, 2014. Copy with citationCopy as parenthetical citation