Ex Parte Slomiany et alDownload PDFPatent Trial and Appeal BoardOct 30, 201411333831 (P.T.A.B. Oct. 30, 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. 11/333,831 01/17/2006 Scott D. Slomiany 78077-401390 4095 27717 7590 10/31/2014 SEYFARTH SHAW LLP 131 S. DEARBORN ST., SUITE 2400 CHICAGO, IL 60603-5803 EXAMINER JONES, MARCUS D ART UNIT PAPER NUMBER 3717 MAIL DATE DELIVERY MODE 10/31/2014 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 SCOTT D. SLOMIANY, DUNCAN F. BROWN, and LAWRENCE E. DEMAR ____________ Appeal 2012-009632 Application 11/333,831 Technology Center 3700 ____________ Before STEFAN STAICOVICI, THOMAS F. SMEGAL, and BRANDON J. WARNER, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Scott D. Slomiany et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s final decision rejecting claims 1–41. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). 1 According to Appellants, the real party in interest is Case Venture Management, LLC. Br. 1. Appeal 2012-009632 Application 11/333,831 2 INVENTION Appellants’ invention relates to a gaming system and a method of playing a first game at a first gaming machine and a bonus game at a second gaming machine. Spec. 1, ll. 7–11. Claims 1–4 and 17 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A gaming system comprising: a base game machine having a base game of chance, and a bonus game machine having a bonus game of chance associated with said base game, wherein a player of the base game must physically leave the base game machine to play the bonus game, wherein at least one event occurring during play of the base game provides a qualification to play the bonus game, wherein play of the bonus game begins only upon the bonus game machine receiving such a qualification. REJECTIONS The following rejections are before us for review: I. The Examiner rejected claims 1–4, 6, 17–19, 22, 23, 32–34, 40, and 41 under 35 U.S.C. § 102(b) as anticipated by Vancura (US 6,033,307, issued Mar. 7, 2000). II. The Examiner rejected claims 5, 7, 9, and 31 under 35 U.S.C. § 103(a) as unpatentable over Vancura. III. The Examiner rejected claims 8, 10–16, 20, 24–30, and 36–38 under 35 U.S.C. § 103(a) as unpatentable over Vancura and Pierce (US 6,139,013, issued Oct. 31, 2000). IV. The Examiner rejected claims 21, 35, and 39 under 35 U.S.C. § 103(a) as unpatentable Vancura and Sharpless (US 2003/0100361 A1, published May 29, 2003). Appeal 2012-009632 Application 11/333,831 3 NEW GROUND OF REJECTION We enter a new ground of rejection for claims 1–41 pursuant to our authority under 37 C.F.R. § 51.50(b). Claims 1–41 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the invention. In this case, Appellants have not identified, nor could we find, description in the Specification that clearly sets forth any specific definition of the phrase to “physically leave,” as called for by independent claims 1–4 and 17.2 Appellants’ Specification does not provide clear guidance or a standard from which a person ordinarily skilled in the art would be able to determine what reasonably constitutes to “physically leave” a game machine or a wagering game. It is not clear whether the game machine or wagering game is located on the floor or on a table and/or user is sitting on a stool or standing. Thus, to “physically leave” a gaming machine or wagering game—within the broadest reasonable interpretation of that claim term—can range from merely looking away to walking miles away from the gaming machine or wagering game. An infinite number of combinations of gaming machine or wagering game and user positions could be envisioned such that it is not clear what constitutes to “physically leave” a gaming machine or wagering game. At most, Appellants’ Specification describes “physically leav[ing]” in general terms, including relocating (see Spec. 18, 2 Each of independent claims 1, 2, 4, and 17 requires that a player “physically leave the base game machine,” whereas independent claim 3 requires that the player “physically leave the wagering game.” See Br. 7, 8, and 10. Appeal 2012-009632 Application 11/333,831 4 l. 20) or traversing (see Spec. 19, l. 6). As such, even if a claim term’s definition can be reduced to words, the claim is still indefinite if a person of ordinary skill in the art cannot translate the definition into meaningfully precise claim scope. Haliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008). While applicants are allowed to claim their inventions broadly, they must do so in a way that distinctly identifies the boundaries of their claims. Id. at 1253. In this case, we cannot determine what is required to “physically leave” within the context of the claimed invention because we cannot ascertain what is the actual movement that is required by a player to “physically leave” a game machine or a wagering machine, as recited. Therefore, the phrase to “physically leave” lacks sufficient precision to permit one endeavoring to practice the invention to adequately determine the metes and bounds thereof. In light of the above, we conclude that independent claims 1–4 and 17, and their respective dependent claims 5–16 and 18–41 are indefinite for failing to particularly point out and distinctly claim the invention. ANALYSIS In view of our determination that claims 1–41 are indefinite, it follows that the prior art rejections of claims 1–41 must fall because they are necessarily based on speculative assumptions as to the meaning of the claims. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962). It should be understood, however, that our decision in this regard is pro forma and based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejections. Appeal 2012-009632 Application 11/333,831 5 SUMMARY We reverse pro forma the Examiner’s decision to reject claims 1–41. We enter a new ground of rejection of claims 1–41 under 35 U.S.C. § 112, second paragraph, as indefinite. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . 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). REVERSED; 37 C.F.R. § 41.50(b) mls Copy with citationCopy as parenthetical citation