Ex Parte Seelig et al

Board of Patent Appeals and Interferences

Jun 29, 2011

09791463 (B.P.A.I. Jun. 29, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JERALD C. SEELIG and LAWRENCE M. HENSHAW

____________________

Appeal 2010-001299
Application 09/791,463
Technology Center 3700
____________________

Before DANIEL S. SONG, FRED A. SILVERBERG, and
EDWARD A. BROWN, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

Appeal 2010-001299
Application 09/791,463

2
DECISION ON APPEAL

Jerald C. Seelig et al. ("Appellants") appeal under 35 U.S.C. § 134(a)
from a Final Rejection of claims 191-227 (App. Br. 2). Claims 1-190 have
been canceled (App. Br. 2). We have jurisdiction over this appeal under 35
U.S.C. § 6(b). We AFFIRM.
The invention is directed to bonus gaming methods. Independent claim
191 is representative of the appealed claims and reads as follows (App. Br. 13,
Claims Appx., emphasis added):
191. A method for playing a game comprising the
following steps, but not all necessarily in the order shown:
(A) allowing a player to introduce a wager
amount and play a base game;
(B) defining a bonus qualifying event for the
base game, the bonus qualifying event
awarding a base game bonus prize and
qualifying the player to play a first bonus
game;
(C) determining an outcome for the base game;
and
(D) if the base game outcome comprises a base
game win:
(1) awarding a base game prize regardless
of a first bonus game outcome; and
(2) determining if the base game outcome
further comprises the bonus qualifying
event and if the base game
outcome comprises the bonus
qualifying event:
(a) determining the base game
bonus prize to be awarded to
the player;
(b) allowing the player to elect
between (i) accepting the base
game bonus prize or (ii)
playing the first bonus game
Appeal 2010-001299
Application 09/791,463

3
and forfeiting acceptance of the
base game bonus prize;
(c) if the player selects accepting
the base game bonus prize,
awarding the base game bonus
prize to the player and
terminating the game; and
(d) if the player selects playing the
first bonus game, determining
at least one first bonus game
outcome and displaying the at
least one first bonus game
outcome to the player.

THE REJECTION
Claims 191-227 are rejected under 35 U.S.C. § 102(e) as anticipated by
Jaffe (US 6,443,837, issued Sep. 3, 2002).

ISSUE
The sole issue that has been raised in the present appeal is whether the
Examiner erred in finding that Jaffe discloses each and every limitation as
recited in claim 191.

FINDINGS OF FACT
1. Jaffe discloses winning basic game outcomes that result in
payment of coins or credits, and that the player may collect the
amount of accumulated credits (col. 4, ll. 39-52).
2. Jaffe describes that "[t]he CPU 20 enters the bonus game when a
special 'start-bonus' outcome occurs on an active payline in the
basic game" (col. 8, ll. 5-7).
Appeal 2010-001299
Application 09/791,463

4
3. Jaffe describes that "[i]n one embodiment, the player is credited a
fixed 'stake' or bet amount upon initially entering the bonus
game" (col. 21, ll. 18-19).
4. Jaffe describes that "[i]n one embodiment, if the player exercises
the 'Exit' option ('action'), the player collects the present stake
value and the bonus game ends without attempting any further
levels. Thus, the 'Exit' option avoids the risk of a reduction in
stake value which would occur in a failed 'Attempt Level' action,
but also precludes the opportunity to achieve even higher stake
amounts which would occur in a successful 'Attempt Level'
action." (Col. 21, ll. 32-39).

ANALYSIS
Initially, Appellants indicate that all independent claims, that is, claims
191, 204, 211, 219, 226, and 227, stand or fall together, and argue these
claims as a group (App. Br. 3). Accordingly, we decide the appeal with
respect to the group as to the ground of rejection on the basis of claim 191.
See C.F.R. § 41.37(c)(vii).
As to claim 191, the Examiner finds that Jaffe discloses a method for
playing a game comprising, inter alia, the step of "defining a bonus qualifying
event for the base game, the bonus qualifying event awarding a base game
bonus prize and qualifying the player to play a first bonus game" (Ans. 2).
Jaffe discloses winning "basic game" outcomes that result in payment of coins
or credits which may be collected by the player (see FF 1). The Examiner
finds that Jaffe describes the trigger for the bonus round (during play of the
"basic game") as a "start-bonus," and correlates the "start-bonus" to the
Appeal 2010-001299
Application 09/791,463

5
"bonus qualifying event" (Ans. 2, 5; see FF 2). The Examiner construes the
term "base game bonus prize" as "a prize associated with the occurrence of a
bonus qualifying event in the base game" (Ans. 4). The Examiner finds that
upon the occurrence of the bonus qualifying event in Jaffe, the game awards
the user a "stake" or "initial bonus amount" (Ans. 5; see FF 3). The Examiner
correlates the "stake" described in Jaffe to the term "base game bonus prize"
in finding that Jaffe discloses the above step (Ans. 3, citing to Jaffe col. 21, ll.
18-19; Ans. 5-6). The Examiner also finds that Jaffe discloses that once a
start-bonus option is triggered and the user is assigned a "stake," the user is
asked whether they wish to play a bonus game, or to exit and maintain
(accept) that stake (Ans. 6, see FF 4). The Examiner finds that in Jaffe, if the
player decides to play a bonus game, the player risks the initial bonus prize
amount for a larger bonus (Ans. 6, see also FF 4).
Appellants contend that Jaffe does not disclose or suggest that the
"stake" has anything to do with the basic game play, or the bonus qualifying
conditions occurring in the basic game, but rather, that Jaffe refers specifically
to the "bonus game" stake value, and not to any prize or amount won from
play of the basic game (App. Br. 5-7). Hence, Appellants contend that the
"stake" is different from the "base game bonus prize." We do not find
Appellants' contentions persuasive.
Claim 191 recites that "the bonus qualifying event awarding a base
game bonus prize." The Examiner correctly finds that Jaffe describes a
"bonus qualifying event" for the basic game, qualifying the player to play a
bonus game, and that the player is credited a stake upon initially entering the
bonus game (FF 1-3). We agree with the Examiner that the "stake" can be
considered a "prize." Hence, in Jaffe, a player also enters the bonus game and
Appeal 2010-001299
Application 09/791,463

6
is credited (or "awarded") the "prize" upon the occurrence of a bonus
qualifying event in the basic game.
Appellants do not refer us to a definition of the term "base game bonus
prize" in the Specification, or to any other description therein, that limits this
term so as to distinguish it from the "stake" disclosed in Jaffe. See In re Bigio,
381 F.3d 1320, 1325 (Fed. Cir. 2004). Appellants present the following
definition of this term in their Appeal Brief (App. Br. 10):
base game bonus prize = bonus prize associated with play
of the base game involving a bonus qualifying event that
awards a base game bonus prize; may be (i) accepted by
the player (with termination of game play) or may be (ii)
forfeited and put at risk if player wishes to play a
subsequent bonus game.
Regarding the above definition, the Examiner determines that the
specification does not support the requirement that the base game bonus prize
be associated with "play" of the base game, as the term "bonus" is used in the
specification to refer to the additional prize a user receives after the
occurrence of a bonus qualifying event in the base game (Ans. 4-5). We agree
with the Examiner that Appellants have not identified where this specific
definition is provided in the Specification.
Appellants also contend that Jaffe does not disclose that the player is
given the option to accept the stake, or to play the bonus game and forfeit
acceptance of the base game bonus prize (App. Br. 6). Appellants contend
that therefore Jaffe does not disclose or suggest "allowing the player to select
between [(i)] accepting the base game bonus prize or [(ii)] playing the first
bonus game and forfeiting acceptance of the base game bonus prize," as
recited in claim 35 (App. Br. 7). We also do not find these contentions
persuasive. Jaffe discloses that a player can exit the bonus game, allowing the
Appeal 2010-001299
Application 09/791,463

7
player to collect the "present stake value" and end the bonus game (FF 4).
Alternatively, the player can play a bonus game, thereby risking the present
stake value for a larger bonus (FF 4). Hence, we find no error in the
Examiner's finding that Jaffe also discloses the recited "allowing" step.
Appellants also contend that Jaffe does not teach the limitation reciting
"if the base game outcome comprises the bonus qualifying event, determining
the base game bonus prize to be awarded to the player," because Jaffe
allegedly does not describe or suggest a bonus prize associated with basic
game play (App. Br. 8). For reasons discussed supra, we agree with the
Examiner's position that Jaffe discloses a "base game bonus prize" (i.e.,
"stake") and, hence, do not find this contention persuasive.
Lastly, Appellants contend that the Examiner takes the erroneous
position that the "EXIT" and "ATTEMPT" options described in Jaffe
correspond to activities related to basic game play (App. Br. 8-9). However,
as discussed supra, the Examiner finds that a player can exit the bonus game
in Jaffe, or play a bonus game. Accordingly, the Examiner finds that these
options correspond to bonus game play, not basic game play. Appellants also
contend that the fact that Jaffe discloses forfeiture of the bonus game award
by a player, should they opt to play the bonus game, is irrelevant to the
claimed invention, where the player is "allowed to select between accepting
the base game bonus prize or playing the first bonus game and forfeiting
acceptance of the base game bonus prize." For reasons discussed supra, we
agree with the Examiner's position that Jaffe discloses these claim limitations
and, hence, do not find these contentions persuasive.
Thus, we sustain the Examiner's obviousness rejection of claim 191, as
well as dependent claims 192-203, which Appellants do not separately argue.
Appeal 2010-001299
Application 09/791,463

8
Independent claims 204, 211, 219, 226, and 227 fall with claim 191 (App. Br.
3). Appellants also do not separately argue the various dependent claims
depending from each of these respective independent claims, and thus, we
also sustain the Examiner's rejection of these dependent claims as well.

CONCLUSION
The Examiner did not err in finding that Jaffe discloses each and every
limitation as recited in claim 191.

DECISION
The Examiner's rejection of claims 191-227 as anticipated by Jaffe is
AFFIRMED.

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

Klh