Ex Parte Walker et al

Patent Trial and Appeal Board

Dec 13, 2017

13925322 (P.T.A.B. Dec. 13, 2017)

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.
13/925,322 06/24/2013 Jay S. Walker 025124-0541/WK00120-002 2791
29159 7590 12/15/2017
Neal, Gerber & Eisenberg LLP (IGT)
2 N. LaSalle Street
Suite 1700
Chicago, IL 60602-3801
EXAMINER
PIERCE, WILLIAM M
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
12/15/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
amasia@ngelaw.com
patents@igt.com
ipusmail@ngelaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAY S. WALKER, RUSSELL P. SAMMON,
STEPHEN C. TULLEY, DANIEL E. TEDESCO, and
ROBERT C. TEDESCO
Appeal 2016-003132
Application 13/925,322
Technology Center 3700
Before JOHN C. KERINS, RICHARD H. MARSCHALL, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jay S. Walker et al. (“Appellants”) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1—20.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
1IGT is identified by Appellants as the real party in interest. Appeal Br. 2.
Appeal 2016-003132
Application 13/925,322
THE CLAIMED SUBJECT MATTER
Appellants’ invention is directed to a display for a roulette gaming
device that is “capable of providing customized betting layouts to players.”
Spec. 12. Claim 1, reproduced below with italics added, is illustrative of the
claimed subject matter.
1. A gaming system comprising:
a housing;
at least one display device supported by the housing;
a plurality of input devices supported by the housing, the
plurality of input devices including:
(i) an acceptor of a first physical item associated with
a first monetary value,
(ii) a validator configured to identify the first physical
item, and
(iii) a cashout device configured to receive an input to
cause an initiation of a payout associated with a
credit balance;
at least one processor; and
at least one memory device that stores a plurality of instructions
which, when executed by the at least one processor, cause the at
least one processor to operate with the at least one display device
and the plurality of input devices to:
(a) display a first roulette betting layout;
(b) receive an input from a player, said received input
identifying a desired bet option and being separate from and in
addition to any bets placed on any plays of any wagering games',
and
(c) add shortcut indicia representing the desired bet
option to the first roulette betting layout to form a second
different roulette betting layout.
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REJECTIONS
1) Claims 1—20 are rejected under 35 U.S.C. § 112, first paragraph as
failing to comply with the written description requirement.
2) Claims 1—20 are rejected under 35 U.S.C. § 112, second paragraph
as indefinite for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the invention.
3) Claims 1—20 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
4) Claims 1—14 and 16—20 are rejected under 35 U.S.C. § 102(e) as
anticipated by Ellis (US 2006/0178191 Al, published Aug. 10,
2006).
5) Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Ellis.
DISCUSSION
Rejection 1
In the final rejection of claims 1—20 under 35 U.S.C. § 112, first
paragraph, the Examiner quotes from a previous unidentified office action
and states that “[t]he claims now recite that wagers are ‘independent of any
bets placed on any plays of any wagering games’ which is not considered
disclosed.” Final Act. 2.2 The Examiner then asserts that there is nothing in
2 We note that independent claims 1, 6, 11, and 12 recite “separate from and
in addition to” rather than “independent of’ in the limitation at issue.
Appeal Br. 53—56 (Claims App.). Appellants respond to this rejection by
assuming the rejection applies to the claims set forth in the Claims
Appendix. Appeal Br. 18—19. We evaluate the rejection based on the
claims in the Claims Appendix.
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Application 13/925,322
the Specification to support the limitation “separate from and in addition to
any bets placed on any plays of any wagering games.” Id. at 3. We note
that this limitation appears in claims 1, 6, 11, and 12. Appeal Br. 53—56
(Claims App.); see also id. at 18. However, the limitation does not appear in
independent claim 13, or claims 14—20 that depend from claim 13. Id. at
57-58.
Claims 1—5
Appellants contend in connection with claims 1—5 that paragraphs 68,
78, and 82 of the Specification, which Appellants concede do not provide
“word-for-word support” for the claim limitation, nonetheless “‘convey[ed]
with reasonable clarity’ that Appellant was in possession of these claim
elements at the time of filing.” Appeal Br. 18—20. Appellants argue that:
One of ordinary skill in the art would understand that this
disclosure at least implies—if not expressly requires—that the
input(s) made to create shortcut indicia (e.g., pressing the
“Touch here to add bet” button, choosing numbers for the new
bet option, etc.) do not themselves give rise to any placed bets
and are therefore “separate from and in addition to any bets
placed on any plays of any wagering games” as recited in Claim
1. Put differently, || 68, 78, and 82 describe a process of
creating a shortcut indicia for a betting layout that includes
receiving an input(s) that does not itself give rise to any placed
bets and is therefore separate from and in addition to any bets
placed on any plays of any wagering games.
Id. at 21.
The Examiner responds that “the portions of the specification relied
upon that, ‘add shortcut indicia representing a new bet’ and to ‘enable the
player to make a wager . . . using the new short cut indicia’” does not
provide support for the claim limitation. Ans. 5. The Examiner notes that
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neither “separate” nor “any (other) wagering games” is disclosed in
Appellants’ Specification, the “limitation as so broad that it would cover any
wager know[n],” and the Specification fails to “support the breadth of this”
limitation. Id.
In order to comply with the written description requirement, the
Specification “must describe the invention sufficiently to convey to a person
of skill in the art that the patentee had possession of the claimed invention at
the time of the application, i.e., that the patentee invented what is claimed.”
LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345
(Fed. Cir. 2005). The Federal Circuit has explained that:
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan
that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal
support in the specification for the claim language.
In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983) (citations omitted).
In this case, the Examiner has the better position. Appellants admit
there is no explicit support in the Specification for the claim limitation but
argue that support is implicitly present based on various passages from the
Specification. Paragraph 68 provides that a “player may then add shortcut
indicia for a betting option,” paragraph 78 similarly describes how a “player
may press the ‘create new bet and add it to my betting layout,’” and
paragraph 82 describes how a player may make a wager using the new
shortcut indicia. Spec. Tflf 68, 78, 82. Appellants, however, do not directly
respond to the Examiner’s rejection with a persuasive explanation of how
one of ordinary skill in the art reading these parts of the Specification would
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Application 13/925,322
understand that Appellants had possession of a gaming system that
“receive[s] input. . . being separate from and in addition to any bets placed
on any plays of any wagering games.” We, thus, sustain the rejection of
claims 1—5 under 35 U.S.C. § 112, first paragraph.
Claims 6—10
Appellants contend that these claims are supported by paragraphs 79
and 80 of the Specification. Appeal Br. 22—24.3 Similar to claim 1,
Appellants concede that these provisions of the Specification do not provide
explicit support for the claim limitation but argue the Specification provides
implicit support. Id. at 24. Paragraph 79 provides that “the player may
further reposition the shortcut indicia of a betting option” and Paragraph 80
provides that “[ajfter the player completes the repositioning, the display 48
may return to the play mode of Figure 4.” Spec. H 79-80. Appellants,
however, do not directly respond to the Examiner’s rejection with a
persuasive explanation of how one of ordinary skill in the art reading these
parts of the Specification would understand that Appellants had possession
of a gaming system that “receive[s] input. . . being separate from and in
addition to any bets placed on any plays of any wagering games.” We, thus,
sustain the rejection of claims 6—10 under 35 U.S.C. § 112, first paragraph.
Claim 11
Appellants contend that claim 11 is supported by paragraphs 68, 78,
and 82 of the Specification. Appeal Br. 25—27. Similar to claim 1,
3 Claim 6 recites in part “said received input being associated with at least
one bet option displayed on the first roulette betting layout. ” We note that
the italicized portion of the claim lacks antecedent basis.
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Appellants concede that these provisions of the Specification do not provide
explicit support for the claim limitation but argue the Specification provides
implicit support. Id. at 26. Paragraph 68 provides that a “player may then
add shortcut indicia for a betting option,” paragraph 78 similarly describes
how a “player may press the ‘create new bet and add it to my betting
layout,’” and paragraph 82 describes how a player may make a wager using
the new shortcut indicia. Spec. 68, 78, 82. Appellants, however, do not
directly respond to the Examiner’s rejection with a persuasive explanation of
how one of ordinary skill in the art reading these parts of the Specification
would understand that Appellants had possession of a gaming system that
“receive[s] input. . . being separate from and in addition to any bets placed
on any plays of any wagering games.” We, thus, sustain the rejection of
claim 11 under 35 U.S.C. § 112, first paragraph.
Claim 12
Appellants contend that claim 12 is supported by paragraphs 69, IS,
and 82 of the Specification. Appeal Br. 28—30. Similar to claim 1,
Appellants concede that these provisions of the Specification do not provide
explicit support for the claim limitation but argue the Specification provides
implicit support. Id. at 29. Paragraph 69 of the Specification provides that a
“player presses the ‘multiples of button and then presses the number for
which the function is to be calculated,” paragraph 78 describes how a
“player may press the ‘create new bet and add it to my betting layout,”’ and
paragraph 82 describes how a player may make a wager using the new
shortcut indicia. Spec. 69, 78, 82. Appellants, however, do not directly
respond to the Examiner’s rejection with a persuasive explanation of how
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Application 13/925,322
one of ordinary skill in the art reading these parts of the Specification would
understand that Appellants had possession of a gaming system that
“receive[s] input. . . being separate from and in addition to any bets placed
on any plays of any wagering games.” We, thus, sustain the rejection of
claim 12 under 35 U.S.C. § 112, first paragraph.
Claims 13—20
Appellants argue that the rejection of independent claim 13 and claims
14—20 which depend from claim 13 should be reversed because claim 13
does not contain the claim limitation “being separate from and in addition to
any bets placed on any plays of any wagering games.” Appeal Br. 18. The
Examiner responds that the rejection as applied to claims 1—12 “applies to
claim 13 that with respect to a third play to be ‘independent of any placed
bets in any prior plays.’” Ans. 6. The Examiner, however, does not provide
persuasive reasoning why the rejection of claims 1—12 applies to the
language in claim 13. Id. We, thus, do not sustain the written description
rejection of claims 13—20 under 35 U.S.C. § 112, first paragraph.
Rejection 2
The Examiner determines that claims 1—20 are indefinite under 35
U.S.C. § 112, second paragraph. Final Act. 3. The Examiner identifies two
distinct bases for this rejection. First, the Examiner asserts that various
claim limitations are directed to an apparatus but include method of use
limitations and are therefore unclear. Id. at 3^4. Although not stated in the
Final Action, the rejection is directed to claim limitations such as paragraph
(b) of claim 1. See Ans. 8; Appeal Br. 35. Second, the Examiner asserts that
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Application 13/925,322
the “processor” recited in the claims should be “interpreted under ... 35
U.S.C. § 112, sixth paragraph, because it uses a generic placeholder of a
processor coupled with functional language without reciting sufficient
structure to achieve the function.” Id. (emphasis added). The Examiner
then states that “the specification shows that it fails to disclose any software
that could be considered the corresponding structure necessary [for] . . . [the
processor limitation] to be clear” and determines that the claims are
indefinite. Id. at 5.
With respect to whether the claim is indefinite for claiming both an
apparatus and method of using the apparatus, Appellants note that “a system
claim is indefinite if the claim includes language “‘directed to user actions,
not system capabilities,’ such that there is ‘confusion as to when direct
infringement occurs.’” Appeal Br. 33 (citing In re Katz Interactive Call
Processing Patent, 639 F.3d 1303, 1318 (Fed. Cir. 2011). Appellants argue
that the claims do not require player action to be infringed but recite that the
system must be capable of receiving input from a player. Id. at 35.
The Examiner’s first basis for the rejection is not persuasive. The
Federal Circuit has held that:
While these claims make reference to user selection, they do
not explicitly claim the user’s act of selection, but rather, claim
the system’s capability to receive and respond to user selection.
The limitations at issue here (“receiving] from the user a
selection” and “generating] a database query as a function of
the user selected database fields”) focus on the capabilities of
the system.
Mastermine Software Inc. v. Microsoft Corp., 874 F.3d 1307, 1316 (Fed.
Cir. 2017). Fikewise here, the claims do not explicitly claim the user’s acts
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but claim the capability of the system to receive and respond to the user’s
input and then “add shortcut indicia” based on the input.
With respect to whether the claimed “processor” should be interpreted
as a means plus function claim, Appellants contend that failing to use the
word “means” creates a rebuttable presumption that 35 U.S.C. § 112, sixth
paragraph, does not apply. Appeal Br. 36. (citing Williamson v. Citrix
Online, LLC, 792 F. 3d 1339, 1351 (Fed. Cir. 2015) (enbanc)). Appellants
argue that the Examiner can overcome the presumption by demonstrating
“that the claim term fails to recite sufficiently definite structure or else
recites function without reciting sufficient structure for performing that
function.” Id. at 36—37. Appellants argue that the Examiner does not
overcome the rebuttable presumption because claim 1 recites “specific
structure that perform the functionality recited in elements (a), (b), and
(c).” Id. at 37. Appellants note that claim 1 recites a processor as well as a
plurality of input devices, at least one memory device, and a display device
as the structures that perform the functions directed by the processor. Id. In
response, the Examiner does not address why the structures that Appellants
identity in claim 1 are not sufficient to achieve the functions of the
processor. Ans. 10-11. Consequently, we agree with Appellants that the
Examiner has not provided persuasive reasoning to overcome the
presumption that 35 U.S.C. § 112, sixth paragraph, does not apply to the
“processor” limitations.
For the foregoing reasons, we do not sustain the rejection of claims 1—
20 under 35 U.S.C. § 112, second paragraph.
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Rejection 3
The Examiner rejects claims 1—20 under 35 U.S.C. § 101 as directed
to non-statutory subject matter because “the claims are viewed as being
directed to both a[n] apparatus and a process by which a game is to be
played.” Final Act. 8. We determined above in connection with Rejection 2
that the claims are not directed to both an apparatus and method of use. We,
thus, do not sustain this rejection for the same reasons stated in connection
with Rejection 2.
Rejection 4
Claims 1—12
The Examiner finds that Ellis discloses all the limitations of claims
1—12. Final Act. 9. With respect to claim 1, Appellants direct our attention
to paragraph 94 of Ellis where it is disclosed that Ellis’ repeat bet button 15
“repeats the bet placed in the immediately previous play of the roulette
game.” Appeal Br. 43. Appellants argue that Ellis does not anticipate claim
1 because “it is impossible for the received bet of Ellis to be separate
from and in addition to any bets placed on any plays of any wagering
games, as recited in Claim 1.” Id. at 43 44. Appellants, thus, argue that the
bet option of Ellis cannot “be separate from and in addition to any bets
placed on any plays of any wagering game” because Ellis discloses that the
repeat bet button merely repeats a bet previously placed by the player.4 This
argument, however, appears to be based on an implicit claim construction
that is inconsistent with Appellants’ claim construction proffered in
4 Appellant make substantially the same argument for independent claims 6,
11, and 12. Id. at 45—48.
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connection with the 35 U.S.C. § 112, first paragraph rejection. In that
construction, Appellants submit that the “input(s)... do not themselves give
rise to any placed bets and are therefore ‘separate from and in addition to
any bets placed on any plays of any wagering games’ as recited by Claim 1.”
Appeal Br. 21. Appellants now appear to argue that the “separate from and
in addition to any bets” limitation is connected to the bet option, not the
received input, and assert the claim language requires the bet option not be
the same as a “bet previously placed by the player” rather than the input
does not “give rise to any placed bets.” Based on Appellants’ differing
construction of the claim language, we determine that this limitation is
unclear. See Ex parte Miyazaki, 89 USPQ 2d 1207, 1217 (BPAI2008) (“[I]f
a claim is amenable to two or more plausible claim constructions, the
USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim
unpatentable under 35 U.S.C. § 112, second paragraph as indefinite.”).
Therefore, pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a
new ground of rejection against claims 1, 6, 11, and 12 as indefinite under
35 U.S.C. § 112, second paragraph. We also enter a new ground of rejection
against claims 2—5 and 7—10 due to their dependency on claims 1 and 6.
Further, we do not sustain the rejection of claims 1—12 under 35
U.S.C. § 102(e) as anticipated by Ellis because this rejection is 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 must be understood,
however, that our decision regarding these rejections is based solely on the
indefiniteness of the claims and does not reflect in any manner on the
adequacy of the prior art evidence relied upon in the Examiner’s rejections.
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Claims 13, 14 and 16—20
Claim 13 recites, in part, “(iii) for a third play of the roulette game,
the third play of the roulette game being subsequent to the second play of the
routlette game, independent of any placed bets in any prior plays of the
roulette game.'1'’ Appeals Br. 58 (Claims App.). The Examiner finds that
Ellis anticipates claim 13 and refers specifically to Ellis’s repeat bet button
15. Final Act. 9. As claim 13 recites several plays of the roulette game, we
understand the Examiner to find that repeat bet button 15 is used in
connection with plays after the first play. Appellants contend that Ellis does
not disclose this limitation because repeat bet button 15 “depends
exclusively on the wager placed in the immediate preceding play.”
Appeal Br. 50; see also Ellis 194. In light of paragraph 94 of Ellis, the
Examiner does not adequately explain how Ellis’ repeat bet button 15 is
“independent of any placed bets in any prior plays.” Ans. 18. We, thus, do
not sustain the rejection of claim 13 as well as claims 14 and 16—20 which
depend from claim 13.
Rejection 5
Claim 15 depends from claim 13. Appeal Br. 59 (Claims App.). The
Examiner rejects claim 15 as unpatentable over Ellis “in view of methods
old and well known to game machines.” Final Act. 12. Appellants contend
that the Examiner’s reference to methods old and well known to game
machines does not cure the deficiencies in the rejection of claim 13. Appeal
Br. 51. We agree with Appellants. The Examiner has not directed us to any
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disclosure that would cure the deficiencies as noted above in the rejection of
claim 13. We, thus, do not sustain the rejection of claim 15.
DECISION
The Examiner’s decision rejecting claims 1—12 under 35 U.S.C.
§112, first paragraph is affirmed.
The Examiner’s decision rejected claims 13—20 under 35 U.S.C.
§112, first paragraph is reversed.
The Examiner’s decision rejecting claims 1—20 under 35 U.S.C.
§112, second paragraph is reversed.
The Examiner’s decision rejecting claims 1—20 under 35 U.S.C. § 101
is reversed.
The Examiner’s decision rejecting claims 1—20 under 35 U.S.C.
§ 102(e) is reversed.
We enter a new ground of rejection against claims 1—12 under 35
U.S.C. § 112, second paragraph.
FINALITY OF DECISION
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:
When the Board enters such a non-final decision, [Appellants], within
two months from the date of the decision, must exercise one of the
following two options with respect to the new ground[s] of rejection
to avoid termination of the appeal as to the rejected claims:
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(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 prosecution will be remanded to
the examiner. The new ground[s] of rejection [are]
binding upon the Examiner unless an amendment
or new Evidence not previously of Record is made
which, in the opinion of the examiner, overcomes
the new ground[s] of rejection designated in this
decision. Should the examiner reject the claims,
[Appellants] may again appeal to the Board
pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same
Record. The request for rehearing must address
any new ground of rejection and state with
particularity the points believed to have been
misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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)(l)(iv).
AFFIRMED-fN-PART; 37 C.F.R, $ 41.50(b)
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