Ex Parte 7255344 et al

Patent Trial and Appeal Board

Apr 30, 2015

95001428 (P.T.A.B. Apr. 30, 2015)

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).
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US Patent No. 7,255,344 B2

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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
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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.
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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.

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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).
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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
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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
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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