Ex Parte AndersonDownload PDFPatent Trial and Appeal BoardJan 12, 201511588679 (P.T.A.B. Jan. 12, 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. 11/588,679 10/27/2006 Kent Steven Anderson 03-0302-US 3750 7590 01/12/2015 Michael A. Mochinski Attorney at Law 11670 Fountains Drive Maple Grove, MN 55369 EXAMINER LIM, SENG HENG ART UNIT PAPER NUMBER 3717 MAIL DATE DELIVERY MODE 01/12/2015 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 ____________________ Ex parte KENT STEVEN ANDERSON ____________________ Appeal 2012-012043 Application 11/588,679 Technology Center 3700 ____________________ Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and ROBERT L. KINDER, Administrative Patent Judges. KINDER, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of claims 1–56. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appeal 2012-012043 Application 11/588,679 2 STATEMENT OF THE CASE Appellant’s Invention Appellant’s invention relates to a “memento dispensing device for dispensing mementos in the form of tokens, medallions, souvenirs, and other articles or objects having commemorative value through the simulated operation of a gaming device commonly referred to and known in the art as a slot machine.” Spec. Abstract. Claims 1, 41, and 53 are the independent claims on appeal. We select claim 1 as illustrative of the claimed subject matter: 1. A memento dispensing device comprising: a plurality of reel wheels, each of said reel wheels having a plurality of symbols pictorially displayed thereon and a plurality of reel wheel stop positions positionally coinciding with said symbols; means for rotatably driving each of said reel wheels in a controlled operable manner; process controller means for coordinating activation and deactivation of said rotatably driving means to commence and consummate a reel spin cycle for each of said reel wheels; an input interface device communicatively coupled to and substantially suited to prompt said process controller means to activate said rotatably driving means; a resident memory module integrated within said process controller means for storing an application program having an instruction set for calculably deriving case outcomes each assignably associated with said reel wheel stop position and said symbol coinciding therewith; a currency acceptor communicatively coupled to said process controller means for validating the form and denomination of currency and storing into a random access memory module a validated amount of currency recognizable as credit reserve to initialize said process controller means to make active said input interface device; and Appeal 2012-012043 Application 11/588,679 3 a hopper assembly having means for storing mementos and means for dispensing at least one memento momentarily after recognition of a completed reel spin cycle for all of said reel wheels irrespective of said case outcome and display of said symbol associated therewith. Examiner’s Rejections The following rejections are before us for review. The Examiner rejected claims 1–11, 16–20, 34–37, and 53–56 under 35 U.S.C. § 103(a) over DeMar (US 2003/0022710 A1, pub. Jan. 30, 2003) and Kelly (US 2002/0077169 A1, pub. June 20, 2002). The Examiner rejected claim 12 under 35 U.S.C. § 103(a) over DeMar, Kelly, and Walker (US 2006/0148551 A1, pub. July 6, 2006). The Examiner rejected claims 13–15 under 35 U.S.C. § 103(a) over DeMar, Kelly, and Slattery (US 2003/0153381 A1, pub. Aug. 14, 2003). The Examiner rejected claim 21 under 35 U.S.C. § 103(a) over DeMar, Kelly, and Breckner (US 6,890,259 B2, iss. May 10, 2005). The Examiner rejected claims 22 and 38–40 under 35 U.S.C. § 103(a) over DeMar, Kelly, and Breckner, and as applied to claim 21 and in further view of Paulsen (US 7,442,125 B2, iss. Oct. 28, 2008, filed May 9, 2003). The Examiner rejected claims 23–31 under 35 U.S.C. § 103(a) over DeMar, Kelly, and Pacey (US 2006/0116194 A1, pub. June 1, 2006). The Examiner rejected claims 32–33 under 35 U.S.C. § 103(a) as being unpatentable over DeMar, Kelly and Pacey as applied to claim 29 and further in view of Miguel (US 5,593,349, iss. Jan. 14, 1997). The Examiner rejected claims 41–52 under 35 U.S.C. § 103(a) as being unpatentable over DeMar and Kelly as applied in the above claims and further in view of Slattery and Pacey. Appeal 2012-012043 Application 11/588,679 4 ANALYSIS For ease of reference to the Appellant’s arguments, we address the rejections in the groups designated by Appellant. Group 1: Independent Claims 1 and 53; Dependent Claims 2–7, 10, 11, 16–20, 34–37, and 54 Appellant argues the combination of prior art fails to teach or suggest the limitation of claim 1 requiring “means for dispensing at least one memento momentarily after recognition of a completed reel spin cycle for all of said reel wheels irrespective of said case outcome and display of said symbol associated therewith.” Claim 1; see also App. Br. 32–40. Appellant contends the claimed “invention draws its non-obvious distinction over DeMar and Kelly by means of software control that effectuates dispensing of a memento after each and every reel wheel spin cycle regardless of the case outcome.” App. Br. 37. In contrast to the claimed invention, Appellant contends DeMar requires “placing a wager for a probable chance to win a jackpot or a souvenir as often associated with gaming or gambling machines such as the slot machine in DeMar.” Id. Similarly, Appellant contends Kelly requires satisfaction of “a predetermined set of conditions to arrive at an opportunity to win or be awarded prize credits redeemable for a prize or prizes.” Id. 38. The Examiner relies on the combination of DeMar and Kelly as teaching each element of claim 1, including the disputed limitation. The Examiner finds DeMar teaches each structural element of claim 1 as depicted in Figure 2. Next, the Examiner finds DeMar discloses “the gaming machine may provide souvenirs upon the occurrence of other events set by the operator, such as the number of games played on a certain Appeal 2012-012043 Application 11/588,679 5 machine or the number of players that have visited and played a game at the establishment.” Ans. 6 (citing DeMar ¶ 27 (“This invention may provide souvenirs upon the occurrence of other events set by the operator, such as the number of games played on a certain machine or the number of players that have visited and played a game at the establishment, just to name two situations.”). Although DeMar suggests that a souvenir may be awarded based on the number of games played, which inferentially could be one game, the Examiner relies on Kelly for teaching dispensing a souvenir after every cycle or game. Specifically, the Examiner finds “Kelly discloses each of the players may be awarded a prize irrespective of an outcome of the games.” Ans. 6 (citing Kelly ¶ 120). The Examiner concludes “. . . a person of ordinary skill in the art would have found it obvious to modify DeMar in view of Kelly to provide a souvenir or memento whether the player receives a winning or losing outcome and would have been motivated to do so to provide a memorable item/souvenir of the experience.” Id. We agree with the Examiner. DeMar, alone, suggests to one of skill in the art that a souvenir may be provided after each game. DeMar ¶ 27. With this foundation, Kelly explicitly teaches providing an incentive in the form of a prize that may be awarded “irrespective of an outcome of the games.” Kelly ¶ 120. We find Appellant’s arguments focused on whether or not the claimed system and the prior art are gambling machines (awarding prizes versus dispensing souvenirs) unpersuasive. Our analysis and conclusion are based on what Appellant has claimed and what the prior art teaches or suggests, not on general characterization of the invention and prior art. The combination of DeMar and Kelly teaches and suggests to one of ordinary skill in the art a “means for dispensing at least one memento momentarily after recognition of a completed reel spin cycle for all of Appeal 2012-012043 Application 11/588,679 6 said reel wheels irrespective of said case outcome and display of said symbol associated therewith.” Claim 1. Appellant argues independent claims 53, and dependent claims 2–7, 10, 11, 16–20, 34–37, and 54 should stand or fall with claim 1 (App. Br. 40). Thus, for the reasons set forth for claim 1, we find the Examiner has not erred in rejecting these claims. We, therefore, sustain the Examiner’s rejection of claims 1–7, 10, 11, 16–20, 34–37, 53 and 54 under 35 U.S.C. § 103(a). Group 2: Claims 8 and 55; Group 3: Claims 9 and 56; Group 11: Claim 44 and Group 12: Claim 45 Each of claims 8, 9, 44, 45, 55, and 56 require “wherein each of said case outcomes is operably associated with a pre-defined set of matching symbols representable of a perceived winning combination for display.” In essence, Appellant claims a winning, or matching, symbol display for every case outcome. Claims 8, 44, and 55 further require, “each of said case outcomes sequentially occurring in numeric order starting with a first case outcome and ending with a last case outcome and restarting with said first case outcome upon completing said last case outcome.” This limitation requires each perceived winning case outcome occur, or be displayed, in a preset number order, and then after the last winning display, the sequence restarts to the first winning case outcome. Similarly, claims 9, 45, and 56 further require “each of said case outcomes being randomly selected from within a range extending from a first case outcome and ending with a last case outcome.” Thus, among the pre-defined set of matching symbols representable of a perceived winning combination, a random selection occurs within this predefined set of matching symbols. Appellant argues Appeal 2012-012043 Application 11/588,679 7 that the Examiner misunderstood the claim scope for each of these claims and thus erred in rejecting each claim as obvious. We agree with Appellant. We find that the Examiner’s interpretation of the involved claim terms is not consistent with the claim language. Ans. 22–23. The Examiner finds as “known in slot machines, the order of the reels spinning and stopping (i.e., case outcome) can happen sequentially from the first reel to the last reel from left to right or be randomly selected and when the last reel finishes outputting its case outcome, the game can repeat the process of outputting.” Ans. 21. The Examiner’s reasoning diverts from the claim requirement first defining a case outcome as “operably associated with a pre-defined set of matching symbols representable of a perceived winning combination for display.” See, e.g., claim 8. Thus, Appellant’s claim language requires the reels, as an example, to all be matching as a perceived winning combination. Only then does the additional claim language require that the selection of these perceived winning combinations occur either sequentially (claims 8, 44, and 55) or randomly (claims 9, 45, and 56). Because the Examiner’s claim interpretation is not based on what Appellant was actually claiming, and the Examiner’s rejection lacks adequate support, we cannot sustain the Examiner’s rejection of claims 8, 9, 44, 45, 55 and 56. Group 4: Claim 12; Group 5: Claims 13–15; Group 6: Claim 21; Group 7: Claims 22, 38–40; Group 8: Claims 23–31; Group 9: Claims 32–33; and Group 10: Claims 41–43, 46–52 We have considered Appellant’s arguments for each of these remaining claim groups and find them to be unpersuasive. We have reviewed the Examiner’s rejections for each of these claim groups in light of Appellant’s arguments that the Examiner erred. We disagree with Appeal 2012-012043 Application 11/588,679 8 Appellant’s conclusions as to these rejections. We adopt as our own the findings and the reasons set forth by the Examiner in the Answer to Appellant’s Brief for these claim groups. We further highlight and address specific findings and arguments for emphasis as follows. Appellant’s contentions for Groups 4–10 largely incorporate arguments related to dispensing a memento “irrespective of said case outcome and display,” which we have addressed supra in the analysis of claim 1. Appellant also quotes claim language of certain claims without providing any basis or reasoning of Examiner error. See, e.g., App. Br. 48 (“comprise further limitations . . .”); 53 (“comprises a variety of means for playing back video footage”); 58 (“further inclusion of subject matter as forth in claims . . .”). We will not consider such statements as properly raised arguments. See 37 CFR § 41.37(c)(1)(vii) (2011) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”); see also Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an appellant fails to present arguments on a particular issue – or, more broadly, on a particular rejection – the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection.”). Because Appellant has offered no persuasive argument as to Examiner error for the rejections of claims 12–15, 21–33, 38–43, and 46–52, we sustain the Examiner’s respective rejections under 35 U.S.C. § 103(a). Appeal 2012-012043 Application 11/588,679 9 DECISION We reverse the Examiner’s rejection of claims 8, 9, 44, 45, 55 and 56 under 35 U.S.C. § 103(a). We affirm the Examiner’s rejection of claims 1–7, 10–43, and 46–54 under 35 U.S.C. § 103(a) as unpatentable. AFFIRMED-IN-PART Klh Copy with citationCopy as parenthetical citation