Ex Parte Frerking

Patent Trials and Appeals Board

Sep 26, 2018

14833934 - (D) (P.T.A.B. Sep. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/833,934 08/24/2015
153295 7590 09/28/2018
Aristocrat Technologies, Inc. c/o Armstrong et al.
c/o Armstrong Teasdale LLP
7700 Forsyth Blvd
Suite 1800
St. Louis, MO 63105-1847
Gary Frerking
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.
20177 /P03713 1629
EXAMINER
VON BUHR, MARIAN
ART UNIT PAPER NUMBER
2125
NOTIFICATION DATE DELIVERY MODE
09/28/2018 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):
patents@aristocrat.com
uspatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY FRERKING 1
Appeal2018-003327
Application 14/833,934
Technology Center 2100
Before JAMES R. HUGHES, JAMES W. DEJMEK, and
JOHN D. HAMANN, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's non-final rejection of claims 1---6, 8-16, 18-23, and 26-30.
Claims 7, 17, 24, and 25 have been canceled. Non-Final Act. 1-2; Appeal
Br. 1. 2 We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
1 According to Appellant, the real party in interest is Aristocrat Technologies
Australia Pty Limited. Appeal Br. 1.
2 We refer to Appellant's Specification ("Spec.") filed Aug. 24, 2015
(claiming benefit of US 61/452,892 filed Mar. 15, 2011); Appeal Brief
("Appeal Br.") filed Aug. 7, 2017; and Reply Brief ("Reply Br.") filed
Feb. 7, 2018. We also refer to the Examiner's Non-Final Office Action
Appeal2018-003327
Application 14/833,934
Appellant's Invention
The invention at issue on appeal generally concerns environment
controllers, environment control systems, and environment control methods
(see Spec. ,r 2) for controlling an environment of a gaming venue. The
environment control system includes a controllable device for performing
heating, cooling, and/or ventilation functions of a venue, with multiple input
devices, disposed throughout the venue, and each input device associated
with a gaming device. The environment control system also includes a
feedback prompter that transmits a message for display on a display of one
or more input devices. The message includes multiple survey options and a
request for the input device user to provide qualitative environment feedback
by selecting (inputting) one of the survey options utilizing the input device.
Spec. ,r,r 6-30; Abstract.
Illustrative Claim
Independent claim 1, reproduced below with key disputed limitations
emphasized, further illustrates the invention:
1. An environment control system for a venue, the
environment control system comprising:
a controllable device configured to perform at least one of
heating, cooling, and ventilation of the venue;
a plurality of input devices disposed throughout the venue,
each input device associated with a gaming device in the venue
and operable by a user to input qualitative environment
feedback, each input device comprising a display;
a feedback prompter configured to transmit a message for
display on at least one display, the message including a plurality
(Non-Final Rejection) ("Non-Final Act.") mailed Dec. 29, 2016; and
Answer ("Ans.") mailed Dec. 7, 2017.
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Application 14/833,934
of survey options and a request to the user to provide the
qualitative environment feedback by selecting one of the
plurality of survey options;
a venue management system configured to receive the
qualitative environment feedback and add location information
to the qualitative environment feedback based on the input
device from which the qualitative environment feedback is
received; and
an environment controller configured to control the at least
one controllable device by adjusting a control parameter of the at
least one controllable device based on the qualitative
environment feedback and location information and control the
feedback prompter to transmit the message in response to at least
one prompt condition.
Rejections on Appeal
1. The Examiner rejects claims 1---6, 8, 12-16, 18, 20-23, 27, and
28 under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Madonna
et al. (US 2015/0088288 Al, published Mar. 26, 2015 (filed Dec. 5, 2014,
claiming benefit of US 11/520,328, filed on Sept. 13, 2006)) ("Madonna").
Non-Final Act. 2--4.
2. The Examiner rejects claims 9-11, 19, and 26 under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Madonna and Canterbury et
al. (US 2008/0054561 Al, published Mar. 6, 2008) ("Canterbury"). Non-
Final Act. 4--5.
3. The Examiner rejects claims 29 and 30 under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Madonna and Martens (US
2006/0040793 Al, published Feb. 23, 2006). Non-Final Act. 5---6.
ISSUE
Based upon our review of the record, Appellant's contentions, and the
Examiner's findings and conclusions, the issue before is as follows:
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Application 14/833,934
Did the Examiner err in finding that Madonna would have taught or
suggested "a plurality of input devices ... each input device associated with
a gaming device in the venue and operable by a user to input qualitative
environment feedback, each input device comprising a display" and "a
feedback prompter configured to transmit a message for display on at least
one display, the message including a plurality of survey options and a
request to the user to provide the qualitative environment feedback by
selecting one of the plurality of survey options," within the meaning of
Appellant's independent claim 1 and the commensurate limitations of
independent claims 12, 20, and 27?
ANALYSIS
The Examiner rejects independent claim 1 as obvious over Madonna.
See Non-Final Act. 2--4; Ans. 6-7. The Examiner relies on "Official Notice"
to teach that "it is well-known in the art that gaming type controllers fit
within the scope of 'programmable multimedia controllers,' as defined by
Madonna" (Non-Final Act. 3); and "feedback being qualitative and
including a plurality of survey options" (Ans. 6). See Non-Final Act. 2--4;
Ans. 6-7.
Appellant contends, inter alia, that Madonna does not teach or suggest
the recited input devices and feedback prompter:
Madonna describes a single remote control unit
manipulatable by a user to transmit instructions to control a
plurality of disparate devices, such as lighting devices and a
television. Madonna does not describe or suggest that separate
remote control units would each be associated with a separate
gaming device ....
Madonna neither describes nor suggests a feedback
prompter configured to transmit a message for display on at least
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Application 14/833,934
one display, the message including a plurality of survey options
and a request to the user to provide the qualitative environment
feedback by selecting one of the plurality of survey options, as
recited in Claim 1.
Appeal Br. 5; see Reply Br. 1-2. Appellant also contends the Examiner's
reliance on Official Notice is improper because the noticed claim recitations
are substantial. See Appeal Br. 7-8.
Here, the at-issue limitations require multiple remote control (input)
devices that are operable to provide (input) particular feedback----qualitative
environment feedback-to a controller ( control system). The limitations
also require a feedback prompter that transmits a message to one or more
input devices (for display on the input device), where the message includes
particular data-a survey having multiple options and a request (to the user)
to select one of the survey options to provide the qualitative environment
feedback. See claim 1.
The Examiner's reliance on Official Notice, in this instance, is
improper. Official Notice should be used only to fill insubstantial gaps with
well-known facts. See MPEP § 2144.03 ("Official notice ... should only be
taken ... where the facts asserted to be well-known, or to be common
knowledge in the art are capable of instant and unquestionable
demonstration as being well-known." "[T]he facts so noticed [must be] of
notorious character and serve only to 'fill in the gaps' which might exist in
the evidentiary showing made by the examiner to support a particular ground
of rejection."). The facts noticed, i.e., the gaps the Examiner attempts to
fill-sending a message for display on a remote control or input device
including a survey with multiple selectable options and a remote control
capable of selecting among such survey options to provide qualitative
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Application 14/833,934
environment feedback-are not insubstantial and "capable of instant and
unquestionable demonstration as being well-known" (MPEP § 2144.03).
Although, as Examiner suggests (supra), sending a message to a
remote control may be well known; sending a message including particular
content ( a survey with selectable options and a request to select one of the
options), however, is not notoriously well-known. To bolster the
Examiner's Official Notice, the Examiner cites several references (US
Patent 8,731,723 (Boll), US Publication 2007/013 8307 (Khoo), and US
Patent 5,170,935 (Federspiel)) that purportedly describe such messages
and/or feedback. See Non-Final 4; Ans. 2-3, 6-7. The cited references,
however, are not part of the record. The Examiner cannot have it both
ways-the facts are either instantly discemable as well-known, or they are
not. The Examiner's citation to extraneous references points to the
substantial nature of the noticed facts and weighs against such facts being
notoriously well-known.
It is well-settled that the Examiner must provide an obviousness
rejection supported by substantial evidence-generally citing to prior art not
of record, which Examiner does here (see Non-Final Act. 2--4; Ans. 6-7), is
not sufficient. See 37 CPR 1.104(c)(2); In re Zurko, 258 F.3d 1379, 1386
(Fed. Cir. 2001) ("[T]he Board [or the Examiner] must point to some
concrete evidence in the record in support of these findings" to satisfy the
substantial evidence test). Bald assertions of common knowledge are not a
substitute for the evidence necessary to support a conclusion of obviousness.
See In re Lee, 277 F.3d 1338, 1345 (Fed. Cir. 2002). "[T]he Board [or the
Examiner] cannot accept general conclusions about what is "basic
knowledge" ... as a replacement for documentary evidence for core factual
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Application 14/833,934
findings in a determination ofpatentability." KIS HIMPP v. Hear-Wear
Techs., LLC, 751 F.3d 1362, 1366 (Fed. Cir. 2014). The Examiner has not
shown by a preponderance of evidence that the cited prior art of record (i.e.,
Madonna) teaches or suggests the disputed limitations. Further, to the extent
the Examiner relies on prior art not of record (i.e., Boll, Khoo, and/or
Federspiel), the Examiner has not provided sufficient evidence or technical
reasoning as to how an ordinarily skilled artisan would modify the elements
of Madonna to arrive at the disputed limitations.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding Madonna (in view of Official Notice) teaches
the recited input devices and feedback prompter of Appellant's claim 1.
Independent claims 12, 20, and 27 include limitations of commensurate
scope. Dependent 2---6, 8, 13-16, 18, 21-23, and 28 depend on claims 1, 12,
and 20, respectively, and stand with their respective independent claims.
Accordingly, we do not sustain the Examiner's obviousness rejection of
claims 1---6, 8, 12-16, 18, 20-23, 27, and 28.
With respect to the obviousness rejections of dependent claims 9-11,
19, 26, 29, and 30, the Examiner has not established on this record that the
additionally cited Canterbury or Martens references overcome or cure the
aforementioned deficiency of Madonna (in view of Official Notice).
Dependent claims 9-11, 19, 26, 29, and 30 depend on claims 1, 12, and 20,
respectively. Accordingly, we do not sustain the Examiner's obviousness
rejections of claims 9-11, 19, 26, 29, and 30 for the same reasons as claim 1
(supra).
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CONCLUSIONS
Appellant has shown the Examiner erred in rejecting claims 1---6, 8-
16, 18-23, and 26-30 under 35 U.S.C. § 103(a).
DECISION
We reverse the Examiner's rejections of claims 1---6, 8-16, 18-23, and
26-30.
REVERSED
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