Ex Parte WardDownload PDFPatent Trial and Appeal BoardMay 4, 201613055893 (P.T.A.B. May. 4, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/055,893 01125/2011 Matthew J. Ward 70243 7590 05/06/2016 NIXON PEABODY LLP 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 247079-000762USPX 8943 EXAMINER 70 West Madison, Suite 3500 LEE, WEI CHICAGO, IL 60602 ART UNIT PAPER NUMBER 3714 NOTIFICATION DATE DELIVERY MODE 05/06/2016 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): docketingchicago@nixonpeabody.com ipairlink@nixonpeabody.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ExparteMATTHEW J. WARD Appeal2014-003703 Application 13/055,893 1 Technology Center 3700 Before BART A. GERSTENBLITH, BRUCE T. WIEDER, and KENNETH G. SCHOPPER, Administrative Patent Judges. SCHOPPER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the rejection of claims 1-3, 5-7, 10-12, 14--29. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. BACKGROUND According to Appellant, "[t]he present invention relates generally to gaming systems, and methods for playing wagering games, and more 1 According to Appellant, the real party in interest is WMS Gaming, Inc. Appeal Br. 1. Appeal2014-003703 Application 13/055,893 particularly, to gaming systems having time period based progressive awards." Spec. i-f 1. CLAIMS Claims 1-3, 5-7, 10-12, and 14--29 are on appeal. Claim 1 is illustrative of the appealed claims and recites: 1. A method of awarding a progressive comprising: displaying a progressive award on one or more display devices; activating, via one or more processors, the progressive award for a fixed first time period during which respective portions of eligible wagers from a plurality of players are contributed to the progressive award; during the first time period, receiving each eligible wager in response to an input, via an input device on a gaming terminal, from a corresponding player of the plurality of players and adding via one or more processors the portion of each eligible wager received to the progressive award; for each eligible wager received during the first time period, allocating, via at least one of the one or more processors, a first number of entries into a selection of a winner of the progressive award; for each eligible wager received during the first time period, displaying a randomly selected outcome of a primary wagering game on the gaming terminal; after the first time period, selecting, via at least one of the one or more processors, a winning entry exclusively from all entries received during the first time period; and awarding, via the at least one or the one or more processors, the progressive award to a player associated with the selected winning entry, the progressive award being awarded solely after the first time period such that the progressive award cannot be awarded during the first time period. Appeal Br., Claims App. 2 Appeal2014-003703 Application 13/055,893 REJECTION2 The Examiner rejects claims 1-3, 5-7, 10-12, 14--22, and 26-293 under 35 U.S.C. § 103(a) as unpatentable over Kelly '7094 in view of Kelly '320. 5 2 The Final Office Action includes a rejection of claims 1-3, 12-17, 20-22, and 26-29 under 35 U.S.C. § 102(b) as anticipated by Kelly '709. Final Act. 2-7 (mailed Nov. 28, 2012). The Examiner's Answer states that "[e]very ground of rejection set forth in the Office action dated 11/28/2012 from which the appeal is taken is being maintained by the examiner except for the grounds of rejection (if any) listed under the subheading 'WITHDRAWN REJECTIONS."' Ans. 2. The Examiner does not include a subheading titled "WITHDRAWN REJECTIONS" and does not expressly withdraw the anticipation rejection in the Answer. See generally Ans. The Examiner, however, includes a new ground of rejection of each of these claims under§ 103(a) as set forth and discussed in this Decision. See, e.g., Ans. 4. In that new ground, the Examiner acknowledges that Kelly '709 does not disclose one of the elements of claims 1-3, 12-17, 20-22, and 26- 29. Ans. 5. Accordingly, to the extent the Examiner's rejection under § 102(b) was maintained, we reverse that rejection. 3 The Examiner lists claims 8, 9, and 13 as rejected. See Ans. 2. However, those claims have been cancelled. See Response after Final Action, filed Jan. 28, 2013. We also note that Appellant lists claims 23-25 as previously cancelled and does not present arguments with respect to them. See Appeal Br. 2; Reply Br. 2. However, we further note that Appellant includes claims 23-25 in the claims appendix. It is not clear on the record before us if or when those claims were cancelled. To the extent they have not been cancelled, we summarily sustain the rejection of those claims, as unpatentable under 35 U.S.C. § 103(a) over Kelly '709 (see Final Act. 10- 11 (mailed Nov. 28, 2012)), because it does not appear that the Examiner expressly withdrew the rejection, and we do not address them further. 4 Kelly et al., US 2007/0259709 Al, pub. Nov. 8, 2007. 5 Kelly et al., US 2007/0060320 Al, pub. Mar. 15, 2007. 3 Appeal2014-003703 Application 13/055,893 DISCUSSION Appellant raises arguments with respect to the claims as a single group. See Appeal Br. 6. We select claim 1 as representative of all appealed claims. With respect to claim 1, the Examiner finds that Kelly '709 discloses a method of awarding a progressive award including displaying a progressive award on a display; activating a progressive award for a fixed first time period; allocating portions of wagers to the progressive award; adding to the progressive award for each wager; allocating entries for the award for each wager; and selecting and awarding a winner after the first time period. Ans. 4--5 (citing Kelly '709 Figs. 1, 14, 23, 24; i-fi-135, 509). The Examiner indicates that Kelly '709 does not disclose displaying a randomly selected outcome of a primary wagering gaming for each eligible wager received in addition to receiving entries for a progressive award as claimed. Id. at 5. For this limitation, the Examiner relies on Kelly '320 and concludes that it would have been obvious to allow a single wager to be involved in two different wager opportunities to enhance player interest. Id. at 5---6 (citing Kelly '320 6-9, 12-16; i-fi-f 13, 58, 90; Fig. 2A-2). Finally, the Examiner also finds that Kelly '709 teaches that a single wager may allow a player to receive a primary game outcome and entries into a raffle. Id. at 13-14 (citing Kelly '709 i-f 166). We agree with and adopt the Examiner's findings regarding the scope and content of the prior art with respect to claim 1. See Ans. 4---6, 11-14. As discussed below, we are not persuaded of error by Appellant's arguments. 4 Appeal2014-003703 Application 13/055,893 Appellant first argues that the proposed combination of references does not disclose displaying an outcome of a primary wagering game and allocating entries into a progressive award awarded after a fixed time period for each eligible wager. Appeal Br. 6. In support, Appellant asserts that both references only describe receiving one result from a wager and that "the combination of the Kelly references would be [to] offer a primary wagering game for an eligible wager as per Kelly 320 and then allow a player to use eGameCash to purchase entries in a raffle in the form of a non-base game as per Kelly 709." Reply Br. 7. We are not persuaded of error by this argument. We agree with the Examiner that Kelly '709 shows the particular type of progressive game claimed, i.e., a game in which the winner is chosen only after the first time period has expired. See Kelly '709 i-f 509. We also agree that Kelly '320 teaches a gaming machine with a primary game and certain progressive games. See Kelly '320 i-fi-186, 90; Figs. 2A-2, 2B. We also find that Kelly '320 at least suggests that a wager for a base game also contributes to a progressive game, e.g., Kelly '320 describes progressive games funded by wagered dollars. Id. i-f 90. Next, Appellant argues that Kelly '709 does not teach or suggest a portion of each wager going to both a progressive award and a primary wagering game. Reply Br. 7-8. In support, Appellant asserts that the progressive award relied upon, as described in paragraph 509, does not disclose contributing a wager to a progressive award and a primary wagering game. Id. at 7. Further, to the extent the Examiner refers to Kelly '709's disclosure of "Cherries on a video reel" in paragraph 166, Appellant asserts that this disclosure has been misconstrued by the Examiner. Id. at 8. Specifically, Appellant asserts that this portion of Kelly '709 describes 5 Appeal2014-003703 Application 13/055,893 progressive awards related solely to the primary game and only awards entries in the raffle ifthe outcome is a winning outcome. Id. We are not persuaded that these arguments show error in the rejection. We agree with the Examiner that Kelly '709 paragraph 166 teaches a single wager resulting in an outcome of primary game and entries into a raffle. See Ans. 13-14. It appears that Appellant acknowledges as much and only argues that the entries are provided for a winning wager and not an eligible wager. See Reply Br. 8. However, claim 1 does not require that any wager result in entries into a progressive award. Rather, the claim requires entries into a progressive award "for each eligible wager," which may be reasonably interpreted to include a winning wager related to the primary wagering game as disclosed in paragraph 166. Thus, we agree that this disclosure provides further evidence in support of the rejection based on the combination of Kelly '709 and Kelly '320. Overall, we find that a preponderance of the evidence supports the Examiner's conclusion that it was known to allocate a wager between a primary game and a progressive game and it would have been obvious to substitute one type of progressive game in Kelly '320 or in Kelly '709, paragraph 166, for the raffle progressive described in Kelly '709, paragraph 509, for the reasons provided by the Examiner. Finally, Appellant generally argues that combining the references as proposed by the Examiner requires impermissible hindsight. Reply Br. 9- 13. To the extent Appellant supports this argument by asserting that there is no evidence to support the motivation provided for the proposed combination, we disagree. See id. at 9. We find that the Examiner's conclusion that it would have been obvious to combine the references as proposed in order to provide different wagering opportunities and enhance 6 Appeal2014-003703 Application 13/055,893 player interest is supported on the record before us. We also note that, as discussed above, the rejection essentially proposes a simple substitution of one type of progressive for another, and we find that the Examiner's rationale is sufficient to support the conclusion of obviousness with respect to this substitution. To the extent Appellant also indicates in its hindsight argument that Kelly '709 teaches away from the proposed combination, we are not persuaded. See id. at 10. The fact that Kelly '709 only discloses a wager going toward a raffle says little, if anything, about whether a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by Appellant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). We are similarly not persuaded that the rejection is in error because the proposed combination "would require additional considerations." See Reply Br. 10. We find that any such considerations would have been routine to one of ordinary skill in the art. Further, "[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference .... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425 (CCPA 1981). The remainder of Appellant's hindsight argument is premised on the fact that both Kelly '709 and Kelly '320 are lengthy references that provide numerous examples and "thus it would be impossible for one of ordinary skill to arrive at the exact combination of the claims at issue." Reply Br. 11. We are not persuaded. First, we note that Appellant has not shown that the 7 Appeal2014-003703 Application 13/055,893 rejection relies on any knowledge that was not within the references or generally known in the art. See In re McLaughlin, 443 F.2d 1392, 1395 (CCP A 1971 ). Second, Appellant has not identified any controlling authority that suggests that the length or breadth of a reference or references tends to show that a specific combination of teachings from those references is based on impermissible hindsight. Based on the foregoing, we find that the Examiner established a prima facie showing of obviousness with respect to claim 1 without error. Accordingly, we sustain the rejection of claim 1. We also sustain the rejection of claims 2, 3, 5-7, 10-12, 14--22, and 26-29 for the same reasons. CONCLUSION For the reasons set forth above, we affirm the rejections of claims 1-3, 5-7, 10-12, and 14--29 under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation