Ex Parte Adiraju et al

Patent Trial and Appeal Board

Sep 28, 2016

12918179 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/918,179 08/18/2010 Srinivyasa M. Adiraju
65375 7590 09/30/2016
BALLY (DELIZIO LAW)
C/O DELIZIO LAW, PLLC
15201 MASON ROAD
SUITE 1000-312
CYPRESS, TX 77433
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.
100.051US2 6540
EXAMINER
LEE, WEI
ART UNIT PAPER NUMBER
3714
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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):
USPTO@DELIZIOLA W.COM
USPT02@DELIZIOLA W.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SRINIVYASA M. ADIRAJU, VIJA Y K. AGARWAL,
DALE R. BUCHHOLZ, MARY M. BURKE,
TIMOTHY F. DINOVO, MAGESH GANGADHARAN,
JACEK A. GRABIEC, JAMES S. HALPRIN, MARK C. PACE,
JACQUELINE F. PARRA, DAVID M. PRYOR, and
MATTHEW J. WARD
Appeal2014-003689
Application 12/918,179
Technology Center 3700
Before EDWARD A. BROWN, WILLIAM A. CAPP, and
AMANDA F. WIEKER, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Srinivyasa M. Adiraju et al. (Appellants) 1 appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 7-11 and 26-40,
which are the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter NEW GROUNDS OF REJECTION.
1 WMS Gaming, Inc. is identified as the real party in interest. Appeal Br. 1.
Appeal2014-003689
Application 12/918,179
CLAIMED SUBJECT MATTER
Appellants' disclosure "relate[ s] generally to wagering game systems,
and more particularly to devices and processes that control wagering
transactions for multi-provider game content." Spec. ,-r 3.
Claims 7, 26, 31, and 36 are independent claims. Claim 7, reproduced
below, illustrates the claimed subject matter:
7. One or more non-transitory machine-readable storage
media having instructions stored thereon, which when executed
by a set of one or more processors causes the set of one or more
processors to perform operations comprising:
detecting a request to process a plurality of wagering
games from multiple wagering game manufacturers on a
wagering game machine during a single wagering game session,
wherein the multiple wagering games are a same type of
wagering game that requires a wager for each game play;
communicating wagering transactions for the plurality of
wagering games to a wagering game player account stored on an
account server, wherein the wagering transactions overlap in
time of their placement during the single wagering game session;
and
synchronizing a session funds balance on the wagering
game machine with an account balance for the wagering game
player account in response to communication of the wagering
transactions for the plurality of wagering games to the wagering
game player account, wherein the session funds balance is
determined by outcomes of the plurality of wagering games from
multiple wagering game manufacturers.
Appeal Br. 22 (Claims App.).
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Application 12/918,179
REJECTIONS
I. Claims 7, 9, 26, 27, 31, 32, 36, and 37 are rejected under 35
U.S.C. § 103(a) as unpatentable over Cannon (US 2004/0106446 Al, pub.
June 3, 2004) and OnlineCasinosVegas.2
II. Claims 8, 10, 28, 29, 33, 34, 38, and 39 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Cannon, OnlineCasinosVegas, and
Griswold (US 2006/0040741 Al, pub. Feb. 23, 2006).
III. Claims 11, 30, 35, and 40 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Cannon, OnlineCasinosVegas, and Luciano
(US 2002/0094871 Al, pub. July 18, 2002).
ANALYSIS
Rejection I
Claims 7 and 9
The Examiner finds Cannon discloses all limitations of claim 7 except
"detecting a request to process a plurality of wagering games from multiple
wagering game manufacturers on a wagering game machine during a single
wagering game session." Final Act. 2-3. The Examiner explains Cannon
discloses "detecting a request to process a plurality of wagering games on a
wagering game machine during a single wagering game session" (id. at 2
(citing Cannon i-fi-141, 51)), but does not teach explicitly that the plurality of
wagering games are from multiple wagering game manufacturers (id. at 3;
Ans. 9). The Examiner finds OnlineCasinos Vegas teaches this limitation
2 http://www.onlinecasinosvegas.com, 1 page, Jan. 6, 2008, retrieved from
Internet Archive Wayback Machine
http ://web .arc hi ve.org/web/2008010606093 3 /http://www. onlinecasinosvegas
.com/ on Mar. 8, 2013.
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Application 12/918,179
(Final Act. 3 (citing OnlineCasinosVegas, p. 1, 11. 2--4)); see also Ans. 9.
The Examiner concludes it would have been obvious to modify Cannon to
include this teaching of OnlineCasinos Vegas "to conserve time for the
player" and "enhance player gaming experience." Final Act. 3--4; Ans. 9-
10.
Appellants contend OnlineCasinos Vegas does not qualify as prior art
with respect to the present application. Appeal Br. 7. Appellants point out
the Manual of Patent Examining Procedure (MPEP) § 2128 states that
"[a]bsent evidence of the date that the disclosure was publicly posted, if the
publication itself does not include a publication date (or retrieval date), it
cannot be relied upon as prior art." 3 Id. (emphasis added). Appellants
assert OnlineCasinosVegas has a date of January 6, 2008 added as a banner
add by an online data aggregator. Id. at 8. Consequently, Appellants assert,
the banner ad is not part of OnlineCasinos Vegas, which "itself does not
include a publication date." Id. Appellants also assert OnlineCasinosVegas
has a retrieval date of March 8, 2013, which is later than Appellants'
application priority date of March 4, 2008. Id. Accordingly, Appellants
contend OnlineCasinosVegas does not qualify as prior art under 35 U.S.C.
§ 102.
In response, the Examiner states that the web address at which
OnlineCasinos Vegas was retrieved, shown at the bottom of the page,
indicates the web page date is "20080106," that is, January 6, 2008. Ans. 8.
The Examiner also states that the banner at the top of the page shows the
January 6, 2008 date of the web page below the banner. Id. at 8-9.
3 Appellants appear to reference MPEP § 2128(II)(A).
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Application 12/918,179
Appellants respond by again asserting that January 6, 2008 is not a
publication date for OnlineCasinos Vegas. Reply Br. 3. According to
Appellants, "even if the banner ad were published on January 6, 2008, that is
not relevant to OnlineCasinosVegas (i.e., there is no indication that
OnlineCasinosVegas was published on the same day as the banner ad)." Id.
Appellants also contend there is no indication the 14-digit numerical
sequence "20080106060933" at the bottom of the page contains the
publication date of OnlineCasinosVegas. Reply Br. 3--4.
Appellants' contentions are not persuasive of Examiner error. MPEP
§ 2128(II)(B) also states that "[p]rior art disclosures on the Internet or on an
on-line database are considered to be publicly available as of the date the
item was publicly posted." Electronic documents are archived on the
Wayback Machine and are dated as of the archived date of the website. 4
Appellants do not indicate any reason to believe the archive date provided
for OnlineCasinos Vegas by the Wayback Machine was generated other than
in the normal course of operation of this site.
In addition, "[t]he general rule is that administrative agencies like the
PTO are not bound by the rules of evidence that govern judicial
proceedings." In re Epstein, 32 F.3d 1559, 1565 (Fed. Cir. 1994). As such,
in ex parte proceedings before the Board, the USPTO is not bound by
hearsay evidentiary rules for authenticating prior art documents.
Accordingly, we are unpersuaded that the Examiner's reliance on
4 See, e.g., Wynn W. Coggins, Prior art in the Field of Business Method
Patents - When is an Electronic Document a printed Publication for Prior
Art Purposes? AIPLA (Fall 2002) (US PTO) (http://
www. uspto. gov /patents/resources/methods/ aiplafall02paper.j sp ).
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Application 12/918,179
OnlineCasinos Vegas is improper. Therefore, we determine that the
indicated prior date is sufficient evidence to make a prima facie case and
tum the burden of production to Appellants.
Appellants also contest the Examiner's finding that
OnlineCasinos Vegas discloses the missing limitation of claim 7. Appeal
Br. 8. OnlineCasinosVegas states, in relevant part, "at Online Casinos
Vegas you will find a number of cool on line casino games from the Vegas
strip, including your favourite [sic] slots and video poker games from the
likes of IGT and LED, games you may well have played while you were in
Las Vegas!" Appellants contend OnlineCasinosVegas must teach the entire
limitation of "detecting a request to process a plurality of wagering games
from multiple wagering game manufacturers on a wagering game machine
during a single wagering game session" in order for the combination of
Cannon and OnlineCasinos Vegas to teach or suggest all claim limitations.
Reply Br. 5. According to Appellants, "OnlineCasinosVegas must teach or
suggest not only the multiple wagering games from multiple wagering game
manufacturers, but also that the multiple wagering games are played during
a single wagering game session." Id. at 6 (emphasis added).
Appellants' contentions are not persuasive. OnlineCasinos Vegas
discloses providing "slots and video poker games" "from the likes of IGT
and LED" in an online casino. As such, OnlineCasinosVegas teaches
providing players the opportunity to play a plurality of wagering games from
multiple wagering game manufacturers in an online casino setting. The
Examiner combines these teachings with Cannon's teaching that a plurality
of selected games may be initiated for play at the same time and the game
outcomes can be displayed on a single display screen, which can be
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Application 12/918,179
considered as "during a single wagering game session," as claimed. See,
e.g., Cannon ,-r 41. The Examiner's combination modifies Cannon's
teaching of playing a plurality of wagering games at the same time during a
single wagering game session in view of OnlineCasinos Vegas' s teaching of
providing a plurality of wagering games from multiple wagering game
manufacturers. See Ans. 9. The Examiner's combination thus includes the
claim limitation of "wagering games from multiple wagering game
manufacturers on a wagering game machine during a single wagering game
session." Appellants do not provide any persuasive reason why
OnlineCasinos Vegas must also teach or suggest playing multiple wagering
games from multiple wagering game manufacturers during a single wagering
game session. See, e.g., Reply Br. 6.
Further, the Examiner articulated an adequate reason with rational
underpinnings to combine the teachings of OnlineCasinos Vegas with
Cannon. Final Act. 3--4. Appellants' contentions do not apprise us of any
error in the Examiner's rationale.
Regarding the claimed "synchronizing" limitation, the Examiner finds
Canon discloses:
synchronizing (to represent or arrange (events) to indicate
coincidence or coexistence) a session funds balance on the
wagering game machine with an account balance for the
wagering game player account (i.e. credit card account) in
response to communication of the wagering transactions for the
plurality of wagering games to the wagering game player account
(i.e. transferring founds [sic]/credits for the plurality of games
from the credit card account to a session found [sic] balance (i.e.
credit meter))/by transferring credits from the credit card
account to a session found [sic] balance, the credit card account
and the session found balance are arranged to indicate
coexistence/synchronized) (i-fi-f 5, 6, 39, 41 and 70).
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Final Act. 3 (citing Cannon iii! 5, 6, 39, 41, 70); see also Ans. 10-11.
Appellants contend Cannon does not disclose or suggest the claim
limitation of "synchronizing a session funds balance on the wagering game
machine ... in response to communication of the wagering transactions for
the plurality of wagering games to the player account." Appeal Br. 9.
Appellants assert that "[t]his 'synchronizing comprises communicating the
wagering transactions for the plurality of wagering games to the account
server after every wagering game outcome . ... "' Id. at 9-10 (emphasis
added). Appellants also assert that "the credit meter is synchronized after
each wagering game outcome to ensure consistency in the credit meter
between wagering games, some of which may be from multiple wagering
game manufacturers." Id. at 10 (emphasis added). Appellants contend that
"nowhere does Examiner discuss communication of wager transactions with
an account server after every wagering game outcome." Reply Br. 8
(emphasis added).
Appellants' contentions are unpersuasive to establish nonobviousness.
First, claim 7 does not recite "communicating the wagering transactions for
the plurality of wagering games to the account server after every wagering
game outcome." Appeal Br. 9-10 (emphasis added). See In re Self, 671
F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the claims
cannot be relied upon for patentability).
Second, claim 8, which depends from claim 7, recites that
the operation for communicating the wagering transactions for
the plurality of wagering games to the wagering game player
account stored on the account server includes an operation for
communicating the wagering transactions for the plurality of
wagering games to the account server after every wagering game
outcome during the wagering game session.
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Application 12/918,179
Appeal Br. 22-23 (emphasis added). 5 According to the doctrine of claim
differentiation, "'the presence of a dependent claim that adds a particular
limitation raises a presumption that the limitation in question is not found in
the independent claim.'" Bancorp Servs. L.L. C. v. Sun Life Assurance Co. of
Can. (U.S.), 687 F.3d 1266, 1275 (Fed. Cir. 2012) (citation omitted).
Applying claim differentiation, the recitation in claim 8 of "after every
wagering game outcome during the wagering game session" raises a
presumption this limitation is not required in claim 7. Consequently, we
construe claim 7 not to include the noted limitation of claim 8.
Appellants also contend the passages in Cannon cited by the Examiner
do not teach "synchronizing a sessions fund balance." Appeal Br. 10-11.
We agree with Appellants only insofar as "[i]nitiating a wagering game by
swiping a credit card" does not, by itself, disclose all limitations of the
claimed synchronizing operation. Reply Br. 8. But Cannon also discloses:
Winnings may be paid in a variety of ways selectable by
the player, including payouts from gaming machine 70 in the
form of credits and/or currency, currency credited to an account
provided by the player (e.g., a credit card, debit card, smart card
account or other personal account), or by casino operator, etc ..
Cannon i-f 70 (italics emphasis added). As discussed above, the player
winnings can be from playing a plurality of wagering games at the same
time. See Cannon i-f 41. These winnings correspond to the outcomes of the
plurality of wagering games. The winnings can be correlated with the
"sessions funds balance" determined by these outcomes. One skilled in the
art would have found it desirable to update the player account information in
5 We note claim 9, which also depends from claim 7, recites a similar
limitation. Appeal Br. 23.
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Application 12/918,179
order to maintain a current account balance. These teachings in Cannon
teach or suggest "synchronizing a session funds balance on the wagering
game machine with an account balance for the wagering game player
account in response to communication of the wagering transactions for the
plurality of wagering games to the wagering game player account," as
claimed.
For the above reasons, we sustain the rejection of claim 7 and
dependent claim 9, which is not separately argued, as unpatentable over
Cannon and OnlineCasinosVegas. However, because our reasoning differs
somewhat from the Examiner's, we designate our affirmance as a new
ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b).
Claims 26, 27, 31, 32, 36, and 37
Appellants rely on the same arguments made for claim 7 for
patentability of claims 26, 31, and 36. Appeal Br. 12-15. Accordingly, we
also sustain the rejection of claims 26; 31; and 36; and dependent claims 27;
32, and 37, as unpatentable over Cannon and OnlineCasinosVegas. We
designate our affirmance as a new ground of rejection.
Rejections II and III
Appellants effectively rely on the dependency of claims 8, 10, 11, 28-
30, 33-35, and 38--40 from claims 7, 26, 31, or 36 for patentability. Appeal
Br. 15-19. Accordingly, we sustain the rejection of claims 8, 10, 28, 29, 33,
34, 38, and 39 as unpatentable over Cannon, OnlineCasinosVegas, and
Griswold, and the rejection of claims 11, 30, 35, and 40 as unpatentable over
Cannon, OnlineCasinos Vegas, and Luciano. We designate our affirmances
as new grounds of rejection.
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Application 12/918,179
DECISION
We affirm the rejection of claims 7, 9, 26, 27, 31, 32, 36, and 37 over
Cannon and OnlineCasinos Vegas and designate our affirmance as a new
ground of rejection pursuant to 37 C.F.R. § 41.50(b).
We affirm the rejection of claims 8, 10, 28, 29, 33, 34, 38, and 39 over
Cannon, OnlineCasinosVegas, and Griswold and designate our affirmance
as a new ground of rejection.
We affirm the rejection of claims 11, 30, 35, and 40 over Cannon,
OnlineCasinos Vegas, and Luciano and designate our affirmance as a new
ground of rejection.
FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41. 50(b) also provides:
When the Board enters such a non-final decision, the
appellant[ s], within two months from the date of the decision, must
exercise one of the following two options with respect to the new
ground of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the prosecution will be remanded to the examiner. The
new ground of rejection is binding upon the examiner unless an
amendment or new Evidence not previously of Record is made which,
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Application 12/918,179
in the opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant[ s] may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record. The request for
rehearing must address any new ground of rejection and state with
particularity the points believed to have been misapprehended or
overlooked in entering the new ground of rejection and also state all
other grounds upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in MPEP § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended according to 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED; 37 C.F.R. & 41.50(b)
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