Andre Soussa et al.

Patent Trials and Appeals Board

Oct 28, 2019

12945607 - (D) (P.T.A.B. Oct. 28, 2019)

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.
12/945,607 11/12/2010 Andre Soussa 400083.401 8138
500 7590 10/28/2019
SEED INTELLECTUAL PROPERTY LAW GROUP LLP
701 FIFTH AVE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
SHAPIRO, JEFFREY ALAN
ART UNIT PAPER NUMBER
3655
NOTIFICATION DATE DELIVERY MODE
10/28/2019 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):
USPTOeAction@SeedIP.com
pairlinkdktg@seedip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte ANDRE SOUSSA and GEOFFREY ENGEL

Appeal 2019-000816
Application 12/945,607
Technology Center 3600

Before DANIEL S. SONG, CHARLES N. GREENHUT, and
JAMES P. CALVE, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 11, and 19–23. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Global Payment
Technologies Australia Pty Ltd. Appeal Br. 2.
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Application 12/945,607

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CLAIMED SUBJECT MATTER
The claims are directed to a system and method for interacting with a
terminal using a validator. Abstract. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A validator for operation with an electronic
gaming machine, the electronic gaming machine being
configured to provide a game of chance that is played in
exchange for gaming credits, the validator including:
a central processing unit;
a memory module communicably coupled to the central
processing unit, the memory module configured to maintain
software instructions that are executable via the central
processing unit;
a primary communications port communicably coupled
to the central processing unit, wherein the primary
communications port is configured to enable communications
between the validator to the electronic gaming machine to allow
interaction between the validator and the electronic gaming
machine;
an input portal communicably coupled to the central
processing unit, wherein the input portal is configured to
receive multiple forms of token via a common aperture,
wherein one of the forms of token is a currency note and
another of the forms of token is a predetermined form of
reusable read-only non-currency token having no writable
regions;
a token recycling device configured to hold a plurality of
the reusable read-only non-currency tokens of the
predetermined form;
a transportation mechanism communicably coupled to
the central processing unit, wherein the transportation
mechanism is configured to transport a reusable read-only non-
currency token of the predetermined form received via the input
portal to the token recycling device, and further configured to
transport a reusable read-only non-currency token of the
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predetermined form from the token recycling device to the
input portal; and
a token reader intermediate the input portal and the token
recycling device, the token reader being configured to read an
identifier from reusable read-only non-currency tokens of the
predetermined form passed from the input portal to the token
recycling device and configured to read an identifier from
reusable read-only non-currency tokens of the predetermined
form passed from the token recycling device to the input portal;
wherein, in response to a player of the electronic gaming
machine providing a request to cash out a specified value of
gaming credits, the validator is configured to:
(i) transport a reusable read-only non-currency
token of the predetermined form from the token recycling
device to the input portal for delivery to the player
without writing data to the reusable read-only non-
currency token;
(ii) read the identifier from that reusable read-only
non-currency token without writing data to the reusable
read-only non-currency token; and
(iii) associate the read identifier with a value
corresponding to the specified value of gaming credits
without writing data to the reusable read-only non-
currency token; and
(iv) store the value corresponding to the specified
value of gaming credits in a central network that
maintains data indicative of association of a plurality of
reusable read-only non-currency tokens of the
predetermined form with respective values;
such that a further device is subsequently able to receive
and read that reusable read-only non-currency token and, based
on the identifier, access the central network to determine the
specified value of gaming credits associated with that token.
App. Br. 40–41 (Claims App’x).
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Saltsov et al. US 6,371,473 B1 Apr. 16, 2002
Csulits et al. US 2005/0040225 A1 Feb. 24, 2005
Finkenzeller et al. US 2005/0150740 A1 July 14, 2005
Hedrick et al. US 2005/0282627 A1 Dec. 22, 2005
Durst et al. US 7,089,420 B1 Aug. 8, 2006
Iddings et al. US 2008/0108404 A1 May 8, 2008
REJECTION
The Examiner rejects claims 1–4, 11, and 19–23 under 35 U.S.C.
§ 103(a) as being unpatentable over Hedrick2 in view of Saltsov, Csulits,
Finkenzeller, Iddings, and Durst. Non-Final Act. 3
OPINION
The Examiner rejects independent claim 1, finding that Hedrick
discloses a validator for a gaming system as substantially claimed (Non-
Final Act. 5–6, 13), but fails to explicitly disclose a validator:
communicably coupled to a central processing unit and configured to receive
multiple forms of tokens via a common aperture (Non-Final Act. 6); a device
to sense both currency and substitute currency (Non-Final Act. 6–7); read-
only substitute currency having an identifier and a device to read the
identifier (Non-Final Act. 7–8); and wherein the identifier is associated to a
value of gaming amounts of a player via a remote central server (Non-Final
Act. 8–9).

2 The Examiner incorrectly identifies Hedrick as “Hendrick” throughout the
Office Action. We use the correct name of “Hedrick” in this Decision.
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The Examiner relies on Saltsov, Csulits, Finkenzeller, Iddings, and
Durst to remedy these deficiencies (Non-Final Act. 6–10). Specifically, the
Examiner summarizes the rejection as follows:
Saltsov teaches a common validator of banknotes and cards.
Csulits teaches locating identification sensors of currency and
currency substitutes on the same media pathway, thus enabling
processing of multiple forms of currency and substitute
currency used in commerce. Since He[]drick’s gaming device
is used in commerce and endeavors to optimize profits, it would
have been obvious to have incorporated the common sensors
for both currency and substitute currency on a universal
pathway for transporting and sorting all types of currency and
substitute currency. Finkenzeller further teaches an rfid
embedded in a banknote as well as a sensor for determining
information such as serial number and denomination, for
example, stored in memory on the rfid device. Such rfid
devices are used and usable in both currency and substitute
currency for increasing the security of these forms of currency
and substitute currency used in commerce. Iddings teaches the
scheme of using reusable tokens/currency substitutes having an
rfid device with a read only memory that stores an identification
number and a denomination of the particular individual token as
well as a reader for eliciting said data and thus sending that data
to a central server for accounting of a player’s account. Durst
provides further teaching of performing the accounting on the
central server for the purpose of security and the purpose of
reserving higher level tasks for the central server resulting in a
better workload distribution between the local gaming machine
and the central server.
Non-Final Act. 14–15; see also Ans. 3–5.
The Examiner concludes that
it would have been obvious to one of ordinary skill in the art to
have provided a data management scheme of substitute
currency having rfid devices in which the currency
identifier/chip number and denomination data are extracted
from the read only memory of the rfid device and sent to a
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central server for storage and determination of the gaming
amounts of each player, as taught by Iddings in He[]drick’s
gaming devices, for the purpose of tracking of players
winnings.
Non-Final Act. 8–9.
According to the Examiner, such modification of using a central
server would have been recognized by one of ordinary skill to “better
distribute the processing tasks so as to not overtax the local control
processors of each gaming machine.” Non-Final Act. 9. The Examiner
rejects the other independent claims 11, 19, and 23 on the same basis as
claim 1. Non-Final Act. 13.
The Appellant argues the rejected claims together. The Appellant
argues correctly that “the prior art fails to teach credit validation using
reusable read-only non-currency tokens having no writable regions used
to perform a cashing in or cashing out process as defined in the claimed
invention.” App. Br. 27–28. The Appellant also argues correctly that in
Hedrick, “no association of a read identifier with a [gaming credit] value is
performed, nor needed at all” (App. Br. 30) because “the value of gaming
credits is actually written to the card” (App. Br. 31). As to the suggested
modifications to the device of Hedrick, using reusable read-only non-
currency tokens having no writable regions in the system of Hedrick “would
render the system of Hedrick inoperable []as it requires writing to the data
cards[].” App. Br. 29 (citing Hedrick ¶¶ 111, 121, 123, 126, 133). The
Appellant further argues that the rejection relying on such modification is
improper because of
the substantial change in thought process (and therefore
motivation) that is required to completely reverse the operation
of Hedrick (which teaches actively writing player credit data to
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a data card during cashing out) to subsequently remove any data
storage from the data cards. This essentially changes the
principle of operation of the system of Hedrick as the gaming
device could not be used in isolation but would be required to
be networked with a server.
App. Br. 38.
We generally agree with the Appellant for the reasons argued by the
Appellant. It is evident from Hedrick that providing a writeable data card is
fundamental to the manner in which Hedrick operates. See, e.g., Hedrick
¶¶ 23–25, 28–29, 35, 44, 99–100, 105–110, 117, 164–166, Figs. 2B, 4, 11–
13. The rejection is premised on modifying the disclosed data card of
Hedrick to be non-writeable by eliminating just the writable memory of the
data card, which requires dismantling and reconstructing Hedrick such that
its gaming device operates in an entirely different manner than the manner
disclosed.
In particular, the Examiner points out the data card of Hedrick is a
non-currency token, which includes Erasable Electrically Programmable
Read-Only Memory (EEPROM) and read only memory (ROM). Ans. 6–7
(citing Hedrick ¶ 165). The Examiner asserts that “it would have been
obvious as a matter of design choice to have omitted [in] Hedrick’s [data
card 14,] RAM and EEPROM so as to include only ROM (read only
memory).” Ans. 13; see also Ans. 25 (“it would have been obvious to have
eliminated the EEPROM and RAM leaving the ROM memory since its
function would operate as before, to enable reading only of data stored
permanently on said ROM memory.”). According to the Examiner,
“omission of an element and its function is obvious if the function of the
element is not desired.” Ans. 7. The Examiner also explains that Iddings
and Durst “provide further teaching that supports incorporating only a ROM
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into a token and eliciting data stored on said ROM by a central server.” Ans.
13.
However, the Appellant is correct that “[t]he fundamental concept of
Hedrick is to be able to circulate and dispense data cards by writing a current
amount of credit to its EEPROM memory.” Reply Br. 2. In that regard, as
to the various types of memory provided in the data card, Hedrick discloses
not only EEPROM for reading and writing of variable credit unit data, which
is contrary to the claimed invention, it also discloses that the ROM relied
upon by the Examiner actually stores programs or code for erasing and
writing data to the data card. Hedrick ¶¶ 165, 166. The ROM of Hedrick
does not pertain to identification of the data card. The Examiner’s reliance
on selective portions of Hedrick, and in particular, only the ROM of the data
card is problematic because in evaluating the prior art, the entirety of the
reference must be considered. In re Wesslau, 353 F.2d 238, 241 (CCPA
1965) (“It is impermissible within the framework of section 103 to pick and
choose from any one reference only so much of it as will support a given
position, to the exclusion of other parts necessary to the full appreciation of
what such reference fairly suggests to one of ordinary skill in the art.”).
In addition to eliminating the writable memories RAM and EEPROM
in the data card of Hedrick, the Appellant is correct that the rejection, as
presented, “would require first reconfiguring the validator of Hedrick to be
network connected and then completely reconfiguring the system to be
capable of using reusable read-only non-currency token having no writable
regions.” App. Br. 36. However, combinations of references that
fundamentally change the manner of operation of the device, often will not
support a conclusion of obviousness. See In re Ratti, 270 F.2d 810, 813
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(CCPA 1959) (“This suggested combination of references would require a
substantial reconstruction and redesign of the elements shown [in the prior
art] as well as a change in the basic principles under which [the prior art]
construction was designed to operate.”); see also In re Gordon, 733 F.2d
900, 902 (Fed. Cir. 1984). As such, we agree with the Appellant that “[t]his
would not only frustrate the purpose of Hedrick but also likely render the
entire invention of Hedrick (involving writeable player cards) obsolete.”
App. Br. 36.
The Examiner’s reliance on the teachings of Iddings and Durst for
“incorporating only a ROM into a token and eliciting data stored on said
ROM by a central server” is also not persuasive. Ans. 13. While the
authentication method and system of Durst uses a central server, it does so to
verify authenticity of objects embedded with special fibers or dyes to
prevent and detect counterfeiting. Durst, Abstract, col. 1, ll. 6–16, col. 27, ll.
47–63. It is not apparent how using a central server to authenticate an object
speaks to the obviousness of using a central server to associate a value to an
identifier. Iddings is more relevant in that as the Examiner finds, “Iddings
teaches a substitute currency having an rfid device, having a read only
memory (ROM)” that has an identifying chip number and an associated
value that is “read from the rfid device and fed to a central server.” Ans. 8;
see also Ans. 11 (“Iddings teaches the identification of each chip and each
chip’s value based on the denomination assigned to that chip.”). However,
the Appellant is correct that “Hedrick updates credit data locally on the data
card while Iddings does not update credit data associated with a gaming chip
at all (it only associates an identifier with an existing denomination).” Reply
Br. 6. In other words, in Iddings, the value associated with the number on
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the gaming chip is fixed, and is not indicative of the user’s gaming credit
data, which changes. See Iddings ¶ 84, Fig. 5. Accordingly, as noted by the
Appellant, “there is still a piece of the Examiner’s puzzle missing.” Reply
Br. 6.
The Examiner’s apparent reasoning that such modification would
have been desirable in order to track a player’s winnings is undermined by
the fact that Hedrick is replete with disclosure teaching the use of the data
card and the gaming device memory to track the player’s winnings. See,
e.g., Hedrick ¶¶ 105, 107, 109, 110. In addition, the Examiner’s assertion
that a person of ordinary skill would have recognized that using a central
server would “better distribute[] the processing tasks so as to not overtax the
local control processors” is speculative and questionable at best considering
the suggested use of a central server would require the system/processor of
the gaming device of Hedrick to be provided with, and control, hardware
and perform tasks/protocols associated with communicating with a central
server. Non-Final Act. 9. Moreover, in our view, the Examiner’s reasoning
is insufficient in providing rational underpinnings as to why a person of
ordinary skill would modify Hedrick and its data card to the extent necessary
required by the rejection. KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 418
(2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections
on obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”)).
The Examiner also explains that the suggested changes to Hedrick
would not frustrate the main purpose of Hedrick, and “would merely cause
the data to be located centrally on a remote database rather than locally, on
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the card and at the gaming machine itself, thus merely reversing the data
communication configuration.” Ans. 20–21. However, an appropriate
rejection requires sufficient evidentiary support and reasoning with rational
underpinnings to establish that the claimed invention would have been
obvious to one of ordinary skill. In our assessment, the Examiner’s
obviousness rejection is not sufficiently supported by the evidence and with
adequately developed reasoning. At best, the Examiner has shown that
various components of the claimed invention was independently known in
the prior art, but such showing is insufficient because “[a] patent composed
of several elements is not proved obvious merely by demonstrating that each
of its elements was, independently, known in the prior art.” KSR, 550 U.S.
at 418. Instead, the rejection appears to be based on impermissible hindsight
in which components of the prior art are extracted to reconstruct the
invention as claimed. KSR, 550 U.S. at 421 (“[F]actfinder should be aware .
. . of the distortion caused by hindsight bias and must be cautious of
arguments reliant upon ex post reasoning.”).
Therefore, in view of the above considerations, we reverse the
rejection. The remaining arguments of the Appellant, including those
regarding teaching away, impact on complexity and cost, as well as other
arguments directed to the secondary references, are moot. See, e.g., App.
Br. 27, 32, 35; Ans. 18–19.
CONCLUSION
The Examiner’s rejection is reversed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–4, 11, 19–
23
103 Hedrick, Saltsov,
Csulits,
Finkenzeller,
Iddings, Durst
1–4, 11, 19–
23
Overall
Outcome
1–4, 11, 19–
23

REVERSED