Ex Parte 7255344 et alDownload PDFPatent Trial and Appeal BoardApr 30, 201595001428 (P.T.A.B. Apr. 30, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/001,428 08/27/2010 7255344 056697/386354 9265 66137 7590 04/30/2015 TRASKBRITT, P.C. /Bally Gaming, Inc. P.O. BOX 2550 SALT LAKE CITY, UT 84110 EXAMINER REIP, DAVID OWEN ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 04/30/2015 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ TAIWAN FULGENT ENTERPRISE CO., LTD. Requester/Respondent v. SHFL ENTERTAINMENT, INC. Patent Owner/Appellant ____________________ Appeal 2014-009574 Reexamination Control 95/001,428 US Patent No. 7,255,344 B21 Technology Center 3900 ____________________ Before JOHN C. KERINS, DANIEL S. SONG, AND BRETT C. MARTIN, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL 1 Issued to Grauzer et al. on August 14, 2007 (hereinafter referred to as the '344 patent). Appeal 2014-009574 Reexamination Control 95/001,428 US Patent No. 7,255,344 B2 2 STATEMENT OF THE CASE Appellant/Patent Owner appeals under 35 U.S.C. §§ 134(b) and 315(a) from the Examiner's rejections of claims 1-19, 21, and 23-31. Claims 20 and 22 are not subject to this appeal and thus, remain rejected. Claims 1, 15, 21, and 23 are the independent claims and each was amended during reexamination prosecution. Claims 2-14, 16-19, 15, 17, and 21 are original claims that depend from amended claims 1 and 15, and claims 24-31 were added during reexamination. Oral arguments were heard in this appeal on March 18, 2015, a transcript of which will be included in the record in due course. We have jurisdiction under 35 U.S.C. §§ 134(c) and 315(b). We AFFIRM-IN-PART. THE INVENTION The Patent Owner's invention is directed to "an electromechanical machine for continuously shuffling playing cards." Claim 1, reproduced below, is illustrative of the claimed subject matter (with bracketing and underlining to show amendments made during the reexamination prosecution): 1. A method of operation of a card shuffling apparatus, comprising: providing a card receiver having a support surface for supporting a single stack of cards to be randomized; providing a card shuffling chamber comprising at least two adjacent card receiving compartments, each card receiving compartment capable of receiving multiple [cards,] cards such that each of the received multiple cards is in contact with an adjacent one of the received multiple cards; moving cards individually from the card receiver and randomly to [a compartment] card receiving compartments in the card shuffling chamber with a first card moving mechanism during Appeal 2014-009574 Reexamination Control 95/001,428 US Patent No. 7,255,344 B2 3 shuffling to form groups of cards in the card receiving compartments of the at least two adjacent card receiving compartments; moving groups of cards with a second card moving mechanism only from [a] randomly selected card receiving [compartment] compartments having at least a predefined minimum plurality number of cards in a group of cards contained therein only to a shuffled card receiver having a support surface for receiving randomly arranged cards and for distribution of cards to players by the dealer; and controlling operation of the continuous card shuffling apparatus with a microprocessor. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Howard Hoffman Plevyak US 4,515,367 US 4,770,421 US 4,832,342 May 7, 1985 Sep. 13, 1988 May 23, 1989 THE REJECTIONS ON APPEAL The Examiner made the following rejections: 1. Claims 1-19, 21, 23, and 25-29 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Plevyak and Hoffman. RAN 2. 2. Claims 24, 30, and 31 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Plevyak, Hoffman, and Howard. RAN 3. Appeal 2014-009574 Reexamination Control 95/001,428 US Patent No. 7,255,344 B2 4 ANALYSIS Claim Construction Because much of this case turns on the construction of certain terms in the claims, we will address claim construction first before proceeding to the rejections. The Patent Owner asserts that Plevyak is deficient "because Plevyak's random number selection and subsequent execution of an order of matching are not taught as being impacted by whether or not a matched position includes a plurality of cards . . . and is not otherwise taught to be impacted by whether more than one card is in a selected pocket" and thus does not meet the limitation in claim 1 (with similar limitations in claims 21 and 23) requiring "moving groups of cards . . . only from . . . compartments having at least a predefined minimum plurality number of cards in a group of cards contained therein." App. Br. 21. During oral argument,2 the Patent Owner explained that this moving of groups of cards only from compartments having at least a predefined minimum plurality number of 2 Judge Martin: Is it your position then that the claim language at issue requires this discrimination? Mr. Gunn [attorney for the Patent Owner]: It says moving groups of cards with the card moving mechanism only from randomly selected card receiving compartments, which were earlier introduced in the claim. We're talking about this thing has these compartments, these card receiving compartments, but then you are only moving them from ones that have a predetermined minimum number of cards in them. There is some discrimination going on. That is very apparent when this limitation is read in light of the specification. The Hoffman device is not discriminating at all. Oral Hr'g Tr. 44, l. 22–45, l. 9. Appeal 2014-009574 Reexamination Control 95/001,428 US Patent No. 7,255,344 B2 5 cards relates to the description in the Specification requiring discrimination of the compartments to assess whether the compartment contains cards or not. See e.g., Spec., col. 18, ll. 10-37 (describing how the microprocessor keeps a tally of cards in each compartment and only when a compartment reaches a predetermined minimum number of cards does it perform an unload of that compartment). After reviewing the Specification in its totality, we are persuaded that the "only" limitation in the claims, in view of the broadest reasonable interpretation in light of the Specification, requires some kind of discrimination of the number of cards in the slot. The parties appear to agree that, in normal (i.e., not during startup or run-out) operation, Hoffman generally teaches the unloading happening with a predefined minimum plurality, but that is only the case because, once the device gets going, the slots will always have at least two cards. The parties also agree that Hoffman does not discriminate as discussed in the '344 patent and that there are situations where Hoffman would not necessarily load a plurality of cards.3 In the '344 patent, however, as discussed supra, the device unloads only when it has affirmatively determined that the cards in the compartment satisfy the predetermined minimum. Accordingly, we conclude that the use of "only" in the claims requires some kind of discrimination of the number 3 Mr. Douglas [attorney for the Requester]: And so if following the hypothetical, six cards are placed in, and if following that hypothetical[,] each slot was populated with one card, I do agree that that is a situation that plausibly could occur. Oral Hr'g Tr. 29, l. 24–30, l. 3 (referring to unloading less than a plurality of cards). Appeal 2014-009574 Reexamination Control 95/001,428 US Patent No. 7,255,344 B2 6 of cards in the compartment and not just happenstance that the device usually unloads a plurality of cards. Claims 1-14, and 21-29 Independent claims 1, 21, and 23 each include language relating to the aforementioned "only" limitation that requires the discrimination absent from any of Hoffman, Howard, or Plevyak. Accordingly, we reverse the Examiner's rejection of each of these independent claims for the reasons stated above. The rejections of dependent claims 2-14 and 24-27 are also reversed for the same reasons. Claim 15, which will be discussed infra, does not contain this limitation, but claim 28, dependent thereon, adds similar "only" language, and so we reverse the rejection of claim 28 as well as that of claim 29, which depends from claim 28. Claim 15 Regarding claim 15, from which claims 16-19 depend, the Patent Owner argues first that neither Plevyak nor Hoffman teaches movement of cards "'by pushing' and 'together as a group.'" App. Br. 25. The Patent Owner takes issue with the Examiner's usage of the definition of push as meaning "to urge forward." App. Br. 26. While we agree that this definition generally refers to motivating someone to do something rather than physical movement of an item, we nonetheless agree with the Examiner that Hoffman teaches the claimed pushing, even using the Patent Owner's preferred definition of "[t]o apply pressure against." App. Br. 27. Hoffman uses conveyor bands 46A-F around rollers 44A-F, which move the cards from the pocket. While it is debatable whether this amounts to pushing along the entire length, at least when the cards are being transferred off of conveyors Appeal 2014-009574 Reexamination Control 95/001,428 US Patent No. 7,255,344 B2 7 46, the conveyor is exerting a pushing force against the stack to move it off the conveyor for further action. Accordingly, we are not persuaded of error as to the Examiner's rejection of claims 15-19. Claim 30, which depends from claim 15 and from which claim 31 depends, further recites the pusher as being a "reciprocating card pusher." The Patent Owner argues that Howard is deficient because its reciprocating pusher only pushes cards from a single compartment. App. Br. 32. The Examiner however, does not utilize Howard for the multiple compartment aspect and only asserts that one of skill in the art would have known that a reciprocating pusher would have been an obvious alternative means of moving cards as explained by the Requester. RAN 9; Resp. Br. 8-9. We agree with the Requester, despite the Patent Owner's argument to the contrary, that "[i]ncorporating Howard's reciprocating card pusher into such a modified device would also be well within the skill and creativity of [one of ordinary skill in the art]." Id. DECISION For the above reasons, we REVERSE the Examiner's decision to reject claims 1-14 and 21-29. We AFFIRM the Examiner’s decision to reject claims 15-19, 30, and 31. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice Appeal 2014-009574 Reexamination Control 95/001,428 US Patent No. 7,255,344 B2 8 on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. AFFIRMED-IN-PART peb PATENT OWNER: TRASKBRITT, P.C. /BALLY GAMING, INC. P.O. Box 2550 Salt Lake City, UT 84110 THIRD PARTY REQUESTER: ALSTON & BIRD LLP Bank Of America Plaza 101 South Tryon Street Charlotte, NC 28280-4000 Copy with citationCopy as parenthetical citation