Ex Parte Seelig et al

Patent Trial and Appeal Board

Jun 25, 2013

10883952 (P.T.A.B. Jun. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JERALD C. SEELIG and LAWRENCE M. HENSHAW
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Appeal 2011-007320
Application 10/883,952
Technology Center 3700
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Before LINDA E. HORNER, BARRY L. GROSSMAN, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Jerald C. Seelig and Lawrence M. Henshaw (“Appellants”) appeal
under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-16.
We have jurisdiction under 35 U.S.C. § 6(b).
The Claimed Subject Matter
Claims 1, 5, and 10 are the independent claims on appeal. Claim 1 is
illustrative of the claimed subject matter and is reproduced below.
A method of playing a game, the method
comprising the following, but not necessarily in the
order shown:
(A) providing a plurality of activatable segments,
each activatable segment being configured to
communicate a potential outcome of the game;
(B) randomly and sequentially activating and
deactivating the plurality of activatable segments of the
display device;
(C) providing a player input device;
(D) allowing a player to manipulate the player
input device while the plurality of activatable segments
are being randomly activated and deactivated;
(E) randomly determining the outcome of the
game;
(F) determining at least one activatable segment
that communicates the outcome of the game; and
(G) subsequent to the player manipulating the
player input device, activating the activatable segment
of the display device that communicates the outcome of
the game in such a way to communicate the outcome of
the game to the player, wherein it appears that the
outcome of the game was at least partially influenced by
when the player manipulated the player input device.

App. Br. 9 (Claims App’x, Claim 1).

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Independent claim 5 is directed to a gaming device which comprises, inter
alia, “a controller in communication with each display segment and the
player input device, the controller being configured to . . . (b) randomly
determine an outcome of the game . . . and (f) cause the display segment that
can communicate the outcome of the game to be activated, wherein the
outcome of the game is communicated to the player and it appears that the
outcome of the game was at least partially influenced by when the player
activated the player input device.” Id. at 11 (Claims App’x, Claim 5).
Claim 10 is similarly directed to a gaming device which comprises, inter
alia, “(D) random outcome means for randomly determining an outcome of
the game” and “(E) outcome display means for causing the display means to
display the outcome of the game thereby communicating the outcome of the
game to the player, wherein it appears that the outcome of the game was at
least partially influenced by when the player activated the player input
device.” Id. (Claims App’x, Claim 10).

References
The Examiner relies upon the following prior art references:
Seelig US 6,817,945 B2 Nov. 16, 2004

Williams Electronic Games, Inc. “Phantom Haus” Operations Manual,
July 1996 (“Phantom Haus”).

Rejections
The Examiner makes the following rejections:
I. Claims 1-16 are rejected under 35 U.S.C. § 102(b) as
anticipated by Phantom Haus; and
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II. Claims 1-16 are rejected on the ground of nonstatutory
obviousness-type double patenting over claims 1-36 of Seelig.

SUMMARY OF DECISION
We REVERSE.
OPINION
Rejection I
The Examiner found that Phantom Haus discloses each and every
element of the claims. Ans. 5-6.1 In particular, the Examiner found that
Phantom Haus discloses a base game of chance referred to as a “REGULAR
REEL GAME” and a board game apparatus “SKELETON DANCE.” Id. at
5. The Examiner found that to play Phantom Haus, “a player places a
wager, and the ‘REGULAR REEL GAME’ is played. When the three reels
display ‘GHOST’ symbols, one of several bonus ‘GAMES’ may be
played . . . .” Id. The Examiner also found that one of the bonus games,
“SKELETON DANCE,” is “played where the lights behind the stained glass
windows are automatically ‘randomly turned on and off.’” Id. The
Examiner describes the game as follows:
The game player makes a selection by manipulating or pressing
the “START” button, stopping or deactivating the flashing
resulting in one or more windows remaining lit. The player
receives an award of credits according to the number of
windows lit.

Id. at 5-6. The Examiner found that, by such action, the game makes it
appear that the outcome of the game was at least partially influenced by the

1 References to “Ans.” refer to the Supplemental Examiner’s Answer filed
December 9, 2010.
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manipulation of the “START” button. The Examiner determined that “since
the stained glass windows are randomly turned on and off, the stopping or
deactivating of the flashing results in the random determination of the
outcome of the game.” Id. at 6.
The Examiner additionally explained that the REGULAR REEL
GAME is “a random slot machine-type game where the GHOST symbols
randomly appear.” Id. at 9. According to the Examiner, the player has no
control over where the GHOST symbols randomly appear. Id. The
Examiner further explained that the “REGULAR REEL GAME and the
SKELETON DANCE game can be taken as a whole to be one game. This
one game (REGULAR REEL GAME and SKELETON DANCE together)
is a game of chance because the REGULAR REEL GAME is a random slot
machine-type game.” Id. Thus, the Examiner found that “the outcome of
the SKELETON DANCE game is ultimately randomly determined.” Id.
Appellants raise several arguments in response to this rejection.
Appellants assert that Phantom Haus does not disclose “random game
outcome determination” because it is not solely the lights randomly turning
on and off that results in the outcome of the game; rather, the intervention of
the player is also a factor. App. Br. 5-6. Appellants also contend that
Phantom Haus does not require a random determination of the game
outcome first, and then the activation of an activatable segment to
communicate the randomly determined outcome to the player as called for
by the claims. Id. at 6. In particular, Appellants assert that claim 1 requires
that step G occur after steps D, E, and F because step G indicates that it is
“subsequent to the player manipulating the player input device.” Reply Br.
8. Appellants further contend that a player can influence the result of the
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REGULAR REEL game by pressing a “HOLD” button or “NUDGE”
button. Id. at 6.
A determination that a claim is anticipated under 35 U.S.C. § 102(b)
involves two analytical steps. First, we interpret the claim language, where
necessary, giving the claims their broadest reasonable interpretation in light
of the Specification. In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).
Second, we compare the construed claim to a prior art reference and make
factual findings to determine whether “each and every limitation is found
either expressly or inherently in [that] single prior art reference.” Id.
(citation omitted). The elements in the reference “must be arranged as in the
claim . . . but this is not an ‘ipsissimis verbis’ test.” In re Bond, 910 F.2d
831, 832-33 (Fed. Cir. 1990) (citations omitted). Further, an Examiner’s
factual finding regarding what a reference discloses must be supported by a
preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed.
Cir. 1985) (“preponderance of the evidence is the standard that must be met
by the PTO in making rejections”); see also In re Oetiker, 977 F.2d 1443,
1449 (Fed. Cir. 1992) (Plager, J., concurring) (“In rejecting an application,
factual determinations by the PTO must be based on a preponderance of the
evidence, and legal conclusions must be correct.”) (citation omitted).
As reflected in the claims listing above, each independent claim calls
for “randomly determining the outcome of the game” or a similarly phrased
claim element. See App. Br. 9-11 (Claim App’x, Claims 1, 5, 10).
Additionally, while the preamble of claim 1 states that the steps of the
method are “not all necessarily in the order shown,” that does not mean that
the order of every step may be different than the order identified therein.
For example, step (G) specifically provides that it occurs “subsequent to the
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player manipulating the player input device.” Thus, it must occur after the
occurrence of at least steps (C) and (D).
The Specification explains that when a player qualifies for a bonus
round, the display may “prompt the player to perform an action.” Spec.,
para. [0076]. The player may then “activate the bonus sequence by pressing
input device 90.” Id. When that occurs, in one embodiment, the controller
activates the agitator in the jumbled ball display. Id. at para. [0077]. The
Specification indicates that this activation may begin “automatically” as an
alternative to the player pressing the input device and the input device “may
be used to initiate the display sequence.” Id. At that point, however, the
Specification does not indicate that the player has any opportunity to control
the result of the bonus game. See, e.g., id. at paras. [0076]-[0081]. Rather,
the Specification indicates that “prize balls 92 are randomly selected.
Controller 76 generates a random number and then compares the random
number to a pay table . . . . For example, if the random number generator
produced 0.65, prize ball number 2 would be displayed and $5.00 would be
awarded to the player.” Id. at paras. [0079]-[0081] (emphasis added). Thus,
the random number generator determines the outcome of the game.2

2 Each independent claim appears to provide a player the ability to influence
the display segments, but not the actual outcome of the game. Each claim
calls for communicating the outcome of the game “wherein it appears that
the outcome of the game was at least partially influenced by when the player
activated the player input device.” App. Br. 9-11 (Claims App’x, Claims 1,
5, 10). This element along with the claim requirement that the outcome be
randomly determined and the Specification’s disclosure that the “random
number generator” is selecting the numbers which dictate the outcome of the
game reflect that the player lacks control over the outcome of the game.
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The rejection relies upon the action of randomly turning on and off the
lights in the Phantom Haus game as disclosing randomly determining the
outcome of the game, but as the Examiner acknowledges, it is the action of
the player pushing a button that results in the stopping or deactivating of the
flashing lights which then determine the outcome of the game. See Phantom
Haus, p. V. Thus, the Phantom Haus game gives the player the opportunity
to influence the outcome of the game such that the outcome is not randomly
determined.
The Examiner’s additional explanation that the REGULAR REEL
GAME and the SKELETON DANCE game are taken to be one whole game
does not remedy the rejection. While we agree that the initial appearance of
the GHOST symbols on the window is random (as in a random slot
machine) the SKELETON DANCE game is played after the REGULAR
REEL GAME. Thus, the random appearance of the GHOST symbols,
which triggers the SKELETON DANCE, does not randomly determine the
outcome of the SKELETON DANCE. Therefore, we disagree with the
Examiner’s determination (see Ans. 9) that “the outcome of the SKELETON
DANCE game is ultimately randomly determined.”
Accordingly, we do not sustain Rejection I.
Rejection II
The Examiner rejected claims 1-16 on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1-36 of
Seelig. Ans. 7. The Examiner concluded that, while not identical, the
claims “are not patentably distinct from each other because the claims of the
patent recite all the elements of in [sic] the claims of the present invention.”
Id. The Examiner further concluded that the “claims of the present invention
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are broader in scope” because the claims of the patent recite two additional
elements not recited in the claims of the present invention. Id.
Appellants contend that “randomly determining a game outcome
and/or randomly activating display segments” is not disclosed or suggested
by the claims of Seelig. App. Br. 8.
After reviewing Seelig’s claims, we are unable to identify where the
claims recite randomly determining a game outcome. Such phrase is not
explicitly recited in the claims. See Seelig, claims 1-36. Further, the
Examiner has not explained which, if any, element(s) of Seelig’s claims 1-36
render the random determination of a game outcome obvious to one of
ordinary skill in the art at the time of invention.
Accordingly, we do not sustain Rejection II.

DECISION
We REVERSE the Examiner’s decision rejecting claims 1-16.

REVERSED

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