IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`IGT,
`Petitioner,
`
`
`
`v.
`
`
`
`ARISTOCRAT TECHNOLOGIES AUSTRALIA PTY LTD.,
`Patent Owner.
`
`
`
`Case No. to be Assigned
`U.S. PATENT NO. 7,326,113
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT
`NO. 7,326,113 UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100, et seq.
`
`
`
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`
`I. 
`PRELIMINARY STATEMENT ..................................................................... 1 
`II.  MANDATORY NOTICES ............................................................................. 1 
`A. 
`Real Party-In-Interest ............................................................................ 1 
`B. 
`Related Matters ...................................................................................... 2 
`C. 
`Lead and Backup Counsel and Service Information ............................. 3 
`FEES ................................................................................................................ 3 
`III. 
`IV.  GROUNDS FOR STANDING ........................................................................ 4 
`V. 
`BACKGROUND ............................................................................................. 4 
`A. 
`The ’113 Patent and Its Claims ............................................................. 4 
`VI.  STATUTORY GROUNDS FOR THE CHALLENGES ................................ 7 
`VII.  LEVEL OF ORDINARY SKILL IN THE ART ............................................. 7 
`VIII.  CLAIM CONSTRUCTION ............................................................................ 8 
`A. 
`“Superimposed” ..................................................................................... 8 
`IX.  THERE IS A REASONABLE LIKELIHOOD THAT PETITIONER
`WILL PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM OF
`THE ’113 PATENT ......................................................................................... 9 
`A. 
`Prior Art ............................................................................................... 10 
`1. 
`Legato ........................................................................................ 10 
`2. 
`AU-A-43488/99 (Timperley) .................................................... 12 
`3. 
`AU19917318 A1 (Bennett) ....................................................... 15 
`Ground I: Claims 1-5 are Unpatentable Under 35 U.S.C. § 103
`as Obvious Over the Combination of Legato and Timperley ............. 16 
`1. 
`Claim 1 ...................................................................................... 16 
`
`B. 
`
`
`
`i
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`

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`2. 
`
`3. 
`
`4. 
`
`5. 
`
`Claim 2: The gaming machine of claim 1 in which said at
`least one special symbol is carried into position on one of
`the reels and remains in position to be superimposed over
`an underlying symbol of that reel when the reel is re-
`spun. .......................................................................................... 24 
`Claim 3: The gaming machine of claim 2 in which said at
`least one special symbol is at least partially transparent so
`that an underlying symbol is visible beneath it. ....................... 25 
`Claim 4: The gaming machine of claim 1 in which more
`than one special symbol appears at any one time and
`more than one special symbol remains in its position for
`a series of games. ...................................................................... 26 
`Claim 5: The gaming machine of claim 1 in which said at
`least one special symbol, when it occurs in a bought, base
`game is held for a predetermined number of succeeding
`bought, base games. .................................................................. 27 
`Ground 2: Legato & Timperley & Bennett Render Obvious
`Claims 6-11 ......................................................................................... 28 
`1. 
`Claim 6: The gaming machine of claim 1, in which a
`trigger condition, independent of the special symbols,
`commences a series of free games during which all
`special symbols that are spun up are held. ................................ 28 
`Claim 7: The gaming machine of claim 6 in which the
`held special symbols are superimposed over the
`underlying spinning reels when the reels are spun for
`succeeding games in the series of free games........................... 30 
`Claim 8: The gaming machine of claim 7 in which any
`special symbol spun up in any one game of the series of
`free games is held for a predetermined number of
`following games in the series of free games. ............................ 31 
`Claim 9: The gaming machine of claim 8 in which, if the
`trigger condition reoccurs in one of the games of the
`series of free games, a further series of free games is
`awarded. .................................................................................... 32 
`ii
`
`C. 
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`
`
`2. 
`
`3. 
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`4. 
`
`

`
`5. 
`
`Claim 10: The gaming machine of claim 9 in which the
`free games of the further series of free games are added
`to any remaining games of a preceding series of free
`games......................................................................................... 32 
`Claim 11: The gaming machine of claim 10 in which any
`special symbol held during a game of said preceding
`series of free games is also held for at least certain games
`of the further series of free games. ........................................... 33 
`CONCLUSION .............................................................................................. 33 
`
`6. 
`
`iii
`
`X. 
`
`
`
`
`
`

`
`LIST OF EXHIBITS
`
`Exhibit
`1001
`1002
`1003
`
`1004
`
`1005
`1006
`
`1007
`1008
`1009
`
` Description
`U.S. Patent No. 7,326,113 to Bennett, et al. (“the ’113 Patent”)
`File History for U.S. Patent No. 7,326,113
`Legato, Frank, “World of Slots,” Casino Journal, Sept. 1998
`(Legato”)
`Definition of “superimpose” in Merriam-Webster’s Collegiate
`Dictionary, Tenth Edition (1993)
`Australian Patent No. AU-A-43488/99 to Timperley (“Timperley”)
`Australian Patent Application No. AU199917318 A1 to Bennett
`(“Bennett”)
`Declaration of Richard Michaelson
`Richard Michaelson Curriculum Vitae
`Fey, Marshall; Slot Machines: A Pictorial History of the First 100
`Years (5th ed. 1997)
`
`iv
`
`
`
`
`
`
`
`

`
`I.
`
`PRELIMINARY STATEMENT
`The claimed “gaming machine” of U.S. Patent No. 7,326,113 (“the ’113
`
`Patent”) purports to add an inventive feature that “holds” special symbols in place,
`
`while the reels of the game are re-spun. Claim 1, the sole independent claim, was
`
`granted on the basis that the prior art did not disclose this “holding” feature.
`
`But Legato, an article published in the Casino Journal trade publication well
`
`before the ’113 Patent priority date, and which was not before the Examiner during
`
`prosecution of the ’113 Patent, discloses three video slot machines that employ
`
`“scatter-pay” special symbols and/or “wild symbols” that are “held” in place for
`
`subsequent re-spins of the reels (Ex. 1003, Legato, Frank, “World of Slots,” Casino
`
`Journal, Sept. 1998)—the very concept the ’113 Patent claimed was novel. In
`
`light of Legato, the ’113 Patent claims nothing new or unique.
`
`To the extent that Legato does not disclose each limitation of the ’113 Patent
`
`claims, a person of ordinary skill in the art would have been motivated to combine
`
`Legato with additional references rendering independent Claim 1 and all of the
`
`dependent claims obvious. Petitioner respectfully requests institution.
`
`II. MANDATORY NOTICES
`A. Real Party-In-Interest
`The real party-in-interest is IGT or Petitioner.
`
`
`
`
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`

`
`B. Related Matters
`The ’113 Patent is currently the subject of litigation in the District of
`
`Nevada, captioned IGT v. Aristocrat Technologies, Inc. (Civil Action No.
`
`2:15-cv-00473). The Patent Owner, Aristocrat Technologies Australia Pty Ltd., is a
`
`party to that litigation, as is the Patent Owner’s U.S.-based corporate relative,
`
`Aristocrat Technologies, Inc. Aristocrat Technologies filed petitions for inter
`
`partes review of five IGT patents asserted in the same litigation—U.S. Patent Nos.
`
`6,375,570, 6,702,675, 7,303,469, 6,932,701, and D503,951. To date, the Board has
`
`instituted IPR on three of the five IGT patents. On April 28, 2016, the Board
`
`instituted IPR on the ’570 Patent. See Case IPR2016-00181 (Claims 1-13); Case
`
`IPR2016-00182 (Claims 14-25). The Board also instituted IPR on the ’469 Patent
`
`on the same day. See Case IPR2016-00252. And the Board instituted IPR on the
`
`’675 Patent on May 17, 2016. See Case IPR2016-00305 (Claims 1-17, 33, and
`
`34); Case IPR2016-00307 (Claims 18-32, 35-37). The Board has not yet issued its
`
`institution decisions on IGT’s ’701 Patent or ’951 Patent.
`
`Petitioner is contemporaneously filing, with this petition, a petition
`
`addressing claims of U.S. Patent No. 8,298,064, which is a continuation of the ’113
`
`Patent.
`
`
`
`2
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`

`
`C. Lead and Backup Counsel and Service Information
`Lead Counsel
`Backup Counsel
`
`Holby M. Abern (Reg. No. 47,372)
`habern@ngelaw.com
`
`Postal and Hand-Delivery Address:
`Neal, Gerber & Eisenberg LLP
`Two North LaSalle St., Suite 2200
`Chicago, IL 60602
`T: (312) 269-8428; F: (312) 980-0864
`
`Adam H. Masia (Reg. No. 35,602)
`amasia@ngelaw.com
`
`Postal and Hand-Delivery Address:
`Neal, Gerber & Eisenberg LLP
`Two North LaSalle St., Suite 2200
`Chicago, IL 60602
`T: (312) 269-8048; F: (312) 980-0862
`
`Service information for lead and backup counsel is provided in the
`
`designation of lead and backup counsel above. Please address all correspondence
`
`to both lead and backup counsel. Counsel for Petitioner consents to service of all
`
`documents via electronic mail.
`
`III. FEES
`The undersigned authorizes the Office to charge $23,000 ($9,000 request fee
`
`and $14,000 post-institution fee) to Deposit Account No. 502261 for the fees set
`
`forth in 37 C.F.R. § 42.15(a) for this Petition for Inter Partes Review. The
`
`undersigned further authorizes payment for any additional fees that might be due in
`
`connection with this petition to be charged to the above-referenced deposit
`
`account.
`
`
`
`3
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`

`
`IV. GROUNDS FOR STANDING
`Petitioner certifies that the ’113 Patent is available for inter partes review
`
`and that Petitioner is not barred or estopped from requesting inter partes review
`
`challenging the patent claims.
`
`V. BACKGROUND
`A. The ’113 Patent and Its Claims
`The ’113 Patent issued from U.S. Patent Application No. 10/182,318 (“the
`
`’318 Application”). The ’318 Application claims priority to PCT Application No.
`
`PCT/AU01/00323, which was filed on March 23, 2001. The ’113 also claims
`
`priority to Australian Application No. PQ 6637, filed on March 31, 2000. Thus,
`
`documents published before March 23, 2000 are prior art under 35 U.S.C.
`
`§ 102(b). All of the printed publications relied upon in this petition published
`
`before March 23, 2000 and thus pre-date the earliest filing date for the ’113 Patent.
`
`Slot machine games discussed in the ’113 Patent include video simulations
`
`of spinning reel-type games. (Ex. 1001, ’113 Patent Col. 1:51-53 (“The invention
`
`is intended particularly for spinning reel-type games and, more specifically, video
`
`simulations of such games.”).) The ’113 Patent relates to a gaming machine that
`
`purportedly improves spinning reel games with the addition of “special symbols”
`
`that are held in place, while the reels are re-spun. (Id., Col. 2:10-12 (“The held
`
`special symbols may be superimposed over the underlying spinning reels when the
`
`reels are spun for succeeding games in the series of free games.”).) According to
`4
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`

`
`the specification, the special symbols are “superimposed” over the underlying
`
`spinning reel. (Id.)
`
`During prosecution of the ’113 Patent, the Examiner rejected the pending
`
`claims based on an Aristocrat prior art patent (Timperley (AU-A-43488/99)):
`
`Timperley teaches a gaming machine having a display and control means
`arranged to control the images displayed on the display. The images
`displayed are based on game outcome of an associated random spinning reel
`game, wherein on the occurrence of a winning event in said game the player
`is awarded a prize (Page 3:17-22).
`
`
`
`Timperley further teaches the occurrence of a special symbol which may
`appear superimposed in a transparent manner over a symbol location during
`game play (Page 3:23-4:6), however is silent regarding game symbols being
`automatically held in position for a subsequent game.
`
`(Ex. 1002, File History for U.S. Patent No. 7,326,113, at 74 (6/29/2005 Non-Final
`
`Rejection).)
`
`
`
`Eventually the Examiner allowed the ’318 Application claims, and stated as
`
`the reasons for allowance:
`
`The following is a statement of reasons for the indication of allowable
`subject matter: The claimed retaining of a symbol following an occurrence
`of a predetermined trigger condition, wherein said trigger condition is
`associated with the at least one special symbol and commencing a series of
`free games in combination with the preceding claim limitation is not
`reasonably provided for by the art of record when considered independently
`or in combination.
`
`(Id. at 76.)
`
`
`
`5
`
`

`
`Claim 1 of the ’113 Patent states:
`
`1. A gaming machine comprising a display means and a game control means
`arranged to control images displayed on the display means, the game control
`means being arranged to play a spinning reel game having a plurality of
`reels, each reel having a series of symbols, wherein, during the play of the
`game the reels are spun to cause the symbols to be randomly displayed on
`the display means and, if a predefined winning event occurs, the machine
`awards a prize, the gaming machine being characterized in that the game
`includes one or more special symbols which randomly appear on the display
`means, each special symbol when it appears, overlying one of the symbols
`on the reel game, said special symbol, when it appears, having the capacity
`to alter the results of the game, said at least one special symbol being held in
`a superimposed representation in that position for at least one further game
`while at least the reel carrying the, or each, special symbol is re-spun for
`said at least one further game, wherein said at least one special symbol is
`held following the occurrence of a predetermined trigger condition, said
`trigger condition being associated with said at least one special symbol and
`said trigger condition commencing a series of free games during which all
`special symbols that are spun up are held.
`
`(Ex. 1001, Col. 5:11-33.)
`
`The symbols of the ’113 Patent include a “special symbol” that may
`
`randomly appear on the display means “overlying” a symbol on the reel. Claim 1
`
`specifies that the “special symbols” are “held in a superimposed representation”
`
`when the reel is re-spun.
`
`Claims 2-11 are dependent claims that further limit Claim 1, the only
`
`independent claim.
`
`For example, dependent Claim 2 depends on Claim 1 and requires that the
`
`special symbol is superimposed over an underlying symbol of the reel.
`
`
`
`6
`
`

`
`Dependent Claim 3 depends on Claim 2 and specifies that the special
`
`symbol is partially transparent so that an underlying symbol is visible beneath it.
`
`Dependent Claim 4 (more than one special symbol remaining in position),
`
`Claim 5 (special symbols occurring during “bought” base games held for further
`
`“bought” base games), and Claim 6 (trigger condition commences series of free
`
`games) depend on Claim 1.
`
`Dependent Claims 7-11 all depend directly or indirectly on Claim 6 and
`
`require that, during the free games, the special symbol is superimposed over the
`
`underlying spinning reels for additional free games as well as further limitations.
`
`VI. STATUTORY GROUNDS FOR THE CHALLENGES
`This Petition asserts the following challenges:
`
`Ground 1
`
`Ground 2
`
`Obviousness of Claims 1-5 under 35 U.S.C. § 103 based on
`Legato & Timperley
`Obviousness of Claims 6-11 under 35 U.S.C. § 103 based on
`Legato & Timperley & Bennett
`
`VII. LEVEL OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art (“POSA”) of the ’113 Patent at the time
`
`of the alleged invention would have had at least three to five years of experience
`
`with designing and developing games for gaming machines, in particular gaming
`
`machines with video displays. (Ex. 1007, Declaration of Richard Michaelson,
`
`¶ 45.)
`
`
`
`7
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`

`
`VIII. CLAIM CONSTRUCTION
`In inter partes review, claim terms in an unexpired patent are construed
`
`according to their broadest reasonable interpretation in light of the specification of
`
`the patent in which they appear. 37 C.F.R. § 42.100(b); Office Trial Practice
`
`Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); In re Cuozzo Speed Techs.,
`
`LLC, 793 F.3d 1268, 1275-79 (Fed. Cir. 2015).1 Under that standard, claim terms
`
`are given their ordinary and customary meaning, as would be understood by one of
`
`ordinary skill in the art in the context of the entire disclosure. In re Translogic
`
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The claims should always be
`
`read in light of the specification and the teachings of the underlying patent.
`
`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). Thus
`
`the claims “cannot be divorced from the specification and the record evidence.”
`
`Id. (internal quotes omitted).
`
`A.
`“Superimposed”
`The term “superimposed” appears in Claim 1, and thus every one of the
`
`dependent claims of the ’113 Patent. The specification does not expressly define
`
`the term, but rather uses it consistently with its plain and ordinary meaning. (Ex.
`
`1001, Cols. 1:53-55; 2:10-12 (“special symbol . . . to be superimposed over;”
`
`1 On January 15, 2016, the United States Supreme Court granted certiorari in
`Cuozzo Speed Technologies to consider the appropriate claim-construction standard
`to be applied in IPR. The Court held oral argument on April 25, 2016. A decision
`is expected by the end of June 2016.
`
`
`
`8
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`

`
`“special symbols may be superimposed over the underlying spinning reels.”).)
`
`Thus, the specification uses the term “superimposed” to mean that a symbol
`
`appears “over” another symbol or reel that is underlying the symbol. The
`
`dictionary defines “superimpose” as “to place or lay over or above something.”
`
`(Ex. 1004, Merriam-Webster’s Collegiate Dictionary at 1182 (10th ed. 1993).) A
`
`person of ordinary skill in the art would understand that “special symbols” could
`
`be displayed “superimposed” over the non-special or regular symbols in different
`
`ways: overlying to cover, overlying so that the underlying image is visible, and
`
`appearing to hover over the reel as the reel spins. (Ex. 1007, ¶¶ 47-49.) The
`
`broadest reasonable construction of “superimpose” should include laying over (i.e.,
`
`flush with) the reel, not just laying above. (Id., ¶ 49.)
`
`IX. THERE IS A REASONABLE LIKELIHOOD THAT PETITIONER
`WILL PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM OF
`THE ’113 PATENT
`The subject matter of Claims 1-11 of the ’113 Patent is disclosed and taught
`
`in the prior art as set forth in detail below. As explained in sections IX.B and IX.C,
`
`the references and combinations utilized in Grounds I and II render obvious each
`
`of Claims 1-11 pursuant to 35 U.S.C. § 103 and provide a reasonable likelihood
`
`that Petitioner will prevail on at least one claim. 35 U.S.C. § 314(a).
`
`
`
`9
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`

`
`A.
`Prior Art
`Paragraphs 24-44 of the Declaration of Richard Michaelson describe the
`
`state of the art of gaming machines and relevant features as of the 1999-2000
`
`timeframe. As his declaration and the relevant prior art make clear, the purported
`
`invention of the ’113 Patent was known and disclosed in the art before the priority
`
`date for the patent. For this petition, Petitioner relies on three main prior art
`
`publications: Legato, Timperley, and Bennett. A description of each is set forth
`
`below.
`
`1.
`Legato
`Legato is an article published in the Casino Journal trade publication in
`
`September 1998. (Ex. 1003.) The Casino Journal publication is widely
`
`disseminated throughout the gaming industry, including throughout the United
`
`States. (Ex. 1007, ¶ 50.) Casino Journal is published by BNP Media based in
`
`Troy, Michigan.
`
`Legato discusses and discloses three slot machines in “video versions” that
`
`employ a “hold-and-spin” feature: “Tequila Sunrise,” “Sweet Hearts II,” and
`
`“Chicken.” The article describes these games as follows:
`
`‘Tequila Sunrise’ is a five-line, 25-coin video version of a game released
`previously as a three-reel, three-coin game in both video and stepper-reel
`versions. According to Causley, the game is one of two featuring a ‘hold-
`and-spin’ feature for the scatter-pay symbol. If three cactus scatter-pay
`symbols land on adjacent reels, those symbols are held in place for three free
`spins. If a fourth or fifth scatter-symbol appears during one of the free spins,
`
`
`
`10
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`

`
`the symbol is also held in plays [sic] for a four- or five-symbol payoff, along
`with any other jackpot accumulated during the bonus spins. Moreover, as
`with other games, scatter wins are multiplied by the total number of coins
`bet—which can result in huge jackpots, notes Causley.
`
`The other game incorporating the hold-and-spin feature is ‘Sweet Hearts II,’
`a nine-line, 90-coin game incorporating wild symbols in the primary game
`and a Valentine scatter-pay symbol—a pulsating heart with Cupid’s arrow
`through it. Only two of these symbols are required for a jackpot, after which
`they are held for three free spins. Other scatter symbols that appear during
`the free spins trigger another three free spins, with those symbols also held
`in place.
`*
`*
`*
`
`
`
`
`
`According to Causley, one of the strongest games to be introduced to the
`U.S. Market at the World Gaming Congress is called ‘Chicken.’
`
`‘This has become our flagship second-screen animation game,’ he says,
`‘because it has two separate bonus features—a hold-and-spin ‘chicken’ wild
`symbol and a second screen when you line up five.’
`
`As with the other hold-and-spin games, the scatter-pay symbols stay in place
`for the three free spins. But five of them, either on a normal spin or through
`accumulated free spins, trigger the second screen.
`
`
`(Ex. 1003.)
`
`“Tequila Sunrise,” “Sweet Hearts II,” and “Chicken” as disclosed in Legato
`
`necessarily include a “display means” (the video screens that display the games)
`
`and a “game control means” (the processor and other computer components that
`
`run the games) to play spinning reel games with multiple reels. (Ex. 1007, ¶ 56.)
`
`All three games were Aristocrat games, but neither the games themselves—nor any
`
`written description of the games—were disclosed to the Patent Office during
`
`prosecution.
`
`
`
`11
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`

`
`As described by Legato, “Tequila Sunrise” enters the “hold-and-spin”
`
`feature if “three cactus scatter-pay symbols” land on adjacent reels, awarding three
`
`free spins. (Id. at 52.) The cactus scatter-pay symbols are then held in place, while
`
`the reels spin again with the potential that more scatter-symbols may appear during
`
`these bonus spins. (Id.) Similarly, “Sweet Hearts II” uses “wild symbols” and a
`
`“Valentine scatter-pay symbol,” and “two of these symbols are required for a
`
`jackpot in which the symbols are held for three free spins.” (Id.) If more scatter
`
`symbols appear during the free spins, the gaming machine will trigger another
`
`three spins with the symbols continuing to be held in place. (Id.) In “Chicken,”
`
`the “chicken” symbols are “wild symbol[s]” and are held in place for “three free
`
`spins,” and if five such symbols are accumulated, the player is awarded play of a
`
`second screen game. (Id. at 53.)
`
`In sum, Legato discloses the use of “special symbols” that award free games
`
`or bonus spins and that are wild symbols, in which the special symbols are then
`
`held in place while the reels of the game are re-spun.
`
`2.
`AU-A-43488/99 (Timperley)
`The Australian patent AU-A-43488/99 entitled Gaming Console with
`
`Transparent Sprites (“Timperley”) was published on March 2, 2000. The
`
`application relates to gaming machines, including the video simulation of slot
`
`machines, using a set of reels. (Ex. 1005, Col. 7:15-18 (“The present invention is
`
`
`
`12
`
`

`
`applicable to video gaming consoles of the traditional poker machine style (also
`
`known as slot machines or fruit machines) in which the display means comprises a
`
`video simulation of a set of rotatable reels, each carrying a plurality of symbols.”).)
`
`Timperley discloses that images or symbols on gaming machines can be
`
`superimposed on top of one another, including the use of transparent images so that
`
`the underlying image is visible:
`
`The present invention consists in a gaming console having display means,
`and game control means arranged to control images displayed on the display
`means, the game control means being arranged to play a game wherein a
`plurality of symbols are randomly selected and displayed on the display
`means and, if a winning combination results, the console pays a prize, the
`game being characterized in that the displayed images include a first
`image component which displays basic game features and a second
`image component which displays image features which appear
`superimposed on the first image component, the second image
`component being transparent, whereby the first image component is
`visible through the second image component under the control of the
`control means.
`
`
`(Id., Col. 3:17-27.) (emphasis added.) In addition to the concepts that images or
`
`symbols can be superimposed and transparent, Timperley also discloses that the
`
`underlying symbol can be completely covered by the symbol on top, or
`
`alternatively visible. (Id., Cols. 4:3-6; 6:13-16.) Timperley states: “The second
`
`image may be variably transparent, and may be varied in transparency from ‘solid’
`
`where the underlying first image is totally obliterated, to a faint ghost like image
`
`where the underlying image is clearly visible through the second image.” (Id., Col.
`
`4:3-6.) Figure 3, in Timperley, shows an embodiment of the invention in which the
`13
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`

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`transparent second image of a ghost is seen superimposed over a still visible “K”
`
`symbol underneath it. This superimposition of a symbol is the same in the ’113
`
`Patent, as reflected below, with the Timperley ghost symbol shown at left and
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`Figure 5(b) of the ’113 Patent—showing the word “Bonus” superimposed over a
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`“J”—at right:
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`Timperley was before the Examiner during the prosecution of the ’113
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`Patent. Not surprisingly, the Examiner rejected the application claims based on
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`Timperley, while finding that it did not disclose the limitation that symbols are held
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`in position for a subsequent game:
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`Timperley teaches a gaming machine having a display and control means
`arranged to control the images displayed on the display. The images
`displayed are based on game outcome of an associated random spinning reel
`game, wherein on the occurrence of a winning event in said game the player
`is awarded a prize (Page 3:17-22).
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`Timperley further teaches the occurrence of a special symbol which may
`appear superimposed in a transparent manner over a symbol location during
`game play (Page 3:23-4:6), however is silent regarding game symbols being
`automatically held in position for a subsequent game.
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`(Ex. 1002 at 74, 6/29/2005 Non-Final Rejection.) The Examiner’s rejection was
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`appropriate, and as discussed previously, the Examiner did not have Legato, which
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`discloses the symbols being held automatically in position for subsequent games.
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`3.
`AU19917318 A1 (Bennett)
`The Australian patent application AU199917318 A1 entitled Slot machine
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`game with randomly-designated special symbols (“Bennett”) was published on
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`September 9, 1999.
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`Bennett claims a gaming machine like that disclosed in the ’113 Patent,
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`including the use of “special symbols” and “triggering event[s].” (Ex. 1006,
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`Bennett Australian Patent Application, Col. 2:9-19.) Bennett also makes clear that
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`it applies to “video gaming machines . . . in which the display means comprises a
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`video simulation of a set of rotatable reels, each carrying a plurality of symbols.”
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`(Id., Col. 3:24-27.)
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`Based on the “predetermined triggering event, a game feature is invoked
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`wherein a sprite randomly designates one or more of the symbols displayed on the
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`display means to be treated as special symbols for that particular game and a prize
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`is awarded for any winning combinations formed with one or more of the special
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`symbols.” (Id., Col. 9:6-10.)
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`Bennett also discloses that the “triggering event” can result from (a) “the
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`random display of one or more particular symbols in a particular arrangement on
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`the display means” or (b) “a separate random prompt unrelated to the symbols
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`displayed on the display means.” (Id., Col. 2:24-27.)
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`B. Ground I: Claims 1-5 are Unpatentable Under 35 U.S.C. § 103 as
`Obvious Over the Combination of Legato and Timperley
`1.
`Claim 1
`[1a] “A gaming machine comprising a display means and a game
`control means arranged to control images displayed on the
`display means, the game control means being arranged to play a
`spinning reel game having a plurality of reels, each reel having a
`series of symbols, wherein, during the play of the game the reels
`are spun to cause the symbols to be randomly displayed on the
`display means and, if a predefined winning event occurs, the
`machine awards a prize,”
`These limitations describe any generic video slot machine. (See Ex. 1007,
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`¶ 56.) To the extent the preamble is limiting, Legato discloses three video gaming
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`machines:
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`(a) “‘Tequila Sunrise’ is a five-line, 25-coin video version of a game released
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`previously as a three-reel, three-coin game in both video and stepper-reel
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`versions.” (Ex. 1003 at 52.)
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`(b) “‘Sweet Hearts II,’ a nine-line, 90-coin game incorporating wild symbols
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`in the primary game and a Valentine scatter-pay symbol—a pulsating heart with a
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`Cupid’s arrow through it.” (Id.)
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`(c) “Chicken,” which describes a gaming machine where special symbol
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`scatter-pay “chicken wild symbols” are held in place, and if five such symbols are
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`accumulated, the player is awarded play of a second screen game. (Id.)
`16
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`A POSA would understand that these video gaming machines necessarily
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`use generic “control means” to display images or symbols on a “display means.”
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`(Ex. 1007, ¶ 56.) The gaming machines include spinning reel games with multiple
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`reels. (Id.) Such video gaming machines were prevalent at the time of the alleged
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`invention, and it was well understood by skilled artisans that slot machine games,
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`such as those disclosed in Legato, utilized a random display of symbols which may
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`or may not result in a winning event. (Id.) The reels in “Tequila Sunrise” display
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`different symbols where, depending on the final symbols displayed, the game can
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`award a “four or five symbol payoff,” “other jackpot[s] accumulated during the
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`bonus spins,” and “scatter wins” resulting in “huge jackpots.” (Ex. 1003 at 52.)
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`Likewise, “Sweet Hearts II” incorporates wild symbols in the primary game and
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`Valentine scatter-pay symbols which, depending on the symbols displayed, can
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`result in various jackpots. (Id.) In “Chicken,” the hold-and-spin chicken wild
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`symbols may result in game play on a second screen. (Id.)
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`[1b] “the gaming machine being characterized in that the game
`includes one or more special symbols which randomly appear on
`the display means, each special symbol when it appears, overlying
`one of the symbols on the reel game, said special symbol, when it
`appears, having the capacity to alter the results of the game,”
`Legato discloses three different slot machines (video versions) that employ
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`“scatter-pay” special symbols and/or “wild” special symbols which, if displayed on
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`the reel at the conclusion of a spin, are held in place for subsequent free games.
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`(Ex. 1003.) The special symbols in at least the “Chicken” game described in
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`Legato “hav[e] the capacity to alter the results of the game.” In “Chicken,” the
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`“hold-and-spin ‘chicken’” symbol is described as a “wild” symbol, which
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`necessarily has the capacity to alter the results of the game. It is well understood in
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`the art that “wild” symbols act as “substitute” symbols that substitute for all other
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`symbols on the reel. (Ex. 1007, ¶ 38.) Thus