Ex Parte Griswold

Board of Patent Appeals and Interferences

Dec 23, 2010

10084820 (B.P.A.I. Dec. 23, 2010)

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.
10/084,820 02/27/2002 Chauncey W. Griswold 25814-404980 8636
27717 7590 12/27/2010
SEYFARTH SHAW LLP
131 S. DEARBORN ST., SUITE 2400
CHICAGO, IL 60603-5803
EXAMINER
COBURN, CORBETT B
ART UNIT PAPER NUMBER
3714
MAIL DATE DELIVERY MODE
12/27/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CHAUNCEY W. GRISWOLD
____________________

Appeal 2009-008354
Application 10/084,820
Technology Center 3700
____________________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and KEN B.
BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-008354
Application 10/084,820

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STATEMENT OF THE CASE
Chauncey W. Griswold (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 3, 4, 6-8, 19-22, 26, and
31-42. Claims 1, 2, 5, 9-18, 23-25, and 27-30 have been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.

THE INVENTION
Claim 31, reproduced below, is representative of the subject matter on
appeal.
31. The method of activating a gaming machine by an
individual player for subsequent play, which comprises:
displaying to said gaming machine, without physical
contact with said gaming machine, a card carried by the player;
said card comprising suitable electronics for data
transmission;
causing wireless transfer of first individualized data
concerning the player from the card to the gaming machine or
to a computer network that is associated with said gaming
machine;
evaluating said data against a stored database;
upon favorable evaluation of said data, said gaming
machine providing a personalized greeting to the player;
providing biometric sensing as separate, personal
identification to the gaming machine;
evaluating said biometric sensing;
activating said gaming machine for said subsequent play
upon favorable evaluation of said data and said sensing;
during or after said subsequent play, causing wireless
transfer of second, individualized data back to the card to be
stored.

Appeal 2009-008354
Application 10/084,820

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Raven US 5,429,361 Jul. 4, 1995
Walker US 6,110,041 Aug. 29, 2000
Werb US 6,150,921 Nov. 21, 2000
Orus US 2002/0047044 A1 Apr. 25, 2002

Press Release, Phillips Semiconductors, Leading-edge smart card
technology meets smartest watch technology (Aug. 29, 2000) (hereinafter
“Phillips Semiconductor”)
Wikipedia Article, Biometrics (date visited unknown)

The following Examiner’s rejections are before us for review:
1. Claims 3, 4, 6-8, 19, 20, 26, 31-37, and 40-42 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Walker, Raven, and Orus; and
2. Claims 21, 22, 38, and 39 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Walker, Raven, Orus, and Phillips
Semiconductors.

ANALYSIS
The rejection of claims 3, 4, 6-8, 19, 20, 26, 31-37, and 40-42 as being
unpatentable over Walker, Raven, and Orus
Claim 31
Appellant argues claims 4, 6-8, 19, 20, 26 and 31 as a group. App.
Br. 5. We select independent claim 31 as the representative claim,
and claims 4, 6-8, 19, 20, 26 stand or fall with claim 31. 37 C.F.R.
§ 41.37(c)(1)(vii).
Appeal 2009-008354
Application 10/084,820

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Claim 31 pertains to a method for activating a gaming machine
involving the use of both a non-contact card and biometric sensing. The
claim also recites the step: “upon favorable evaluation of said data
[concerning the player], said gaming machine providing a personalized
greeting to the player.” The Examiner relies on Walker for the disclosure of
the use of a contact-type player tracking card and the use of biometrics for a
gaming machine, Raven for the disclosure of a gaming machine providing a
personalized greeting based on smart card data, and Orus for the use of
contactless gaming cards. Ans. 3-7.
We are not persuaded of error by Appellant’s apparent argument
(App. Br. 5, 6; Reply Br. 2) that no single cited reference discloses the use of
both a non-contact card and biometric identification. “Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.” In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642
F.2d 413, 425 (CCPA 1981)). Similarly, we are not persuaded by the
argument that the prior art fails to disclose a personalized greeting based on
data from a wireless card rather than a non-contact card. Contra App. Br. 7.
We also are not persuaded by Appellant’s argument that Walker
teaches away from the use of both a card and biometrics. Contra App. Br.
67 (quoting Walker, col. 6, ll. 47-61). While Appellant may be correct in
asserting that Walker discloses the use of biometrics as an alternative to the
use of cards2 – so that the player need not carry a card – we find that Walker

2 Walker’s statement that a slot machine “could also include” a biometrics
device could reasonably be read to disclose the use of biometrics in
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Application 10/084,820

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does not discourage the use of both together. Cf. In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004) (“the prior art’s mere disclosure of more than
one alternative does not constitute a teaching away from any of these
alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed.”) Further, Walker teaches that
slot machines may utilize two forms of identification, specifically a player
identification number or name and a secure password, in order to recognize a
player. Walker, col. 6, ll. 56-59. This is consistent with the Examiner’s
reasoning that it would have been obvious in the context of financial
transfers, including casino gaming, to require two forms of identification
such as a card and biometrics. See Ans. 11. Accordingly, we do not agree
with Appellant’s assertions that the Examiner’s conclusion of obviousness
regarding claim 31 is based on speculation, improper hindsight and “tortured
reasoning.” Contra App. Br. 10; Reply Br. 2.
We sustain the rejection of claim 31 and of claims 4, 6-8, 19, 20, 26,
which fall therewith, as unpatentable over Walker, Raven, and Orus.

Claims 3, 32-37, and 40-42
Independent claim 32 recites the step of “said individual player
manually actuating said gaming machine to accept non-contact electronic
data transmission from a card carried by the player.” Dependent claim 3
depends from claim 31 (which is discussed above) and recites “the player
also physically actuates the gaming machine as a separate, added step to
activate the machine.”

conjunction with, rather than as a substitution for, cards. Walker, col. 6, ll.
59-61.
Appeal 2009-008354
Application 10/084,820

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The Examiner’s conclusion of obviousness was initially based on the
finding that Walker discloses that the player manually or physically actuates
the gaming machine as a separate step. Ans. 4 (citing Walker, col. 6, ll. 39-
61); id. at 12 (citing Walker, col. 6, ll. 39-49). In the Response section of
the Answer, the Examiner maintains that it is simply common sense to have
a physical activation step in conjunction with the use of a contactless card
because “a handful of people [with contactless cards] walking around the
casino would bring the system to its knees.” Ans. 12-13.
We have reviewed the cited portion of Walker and have considered
the Examiner’s “common sense” position, but we determine that the
Examiner’s conclusion of obviousness is not supported by adequate
articulated reasoning with rational underpinning. We disagree with the
Examiner that the system would collapse by merely having people with
contactless cards walking within range of a slot machine. For example, the
slot machine could be designed to be activated only when the contactless
card is within a relatively limited distance from a specific location on the
slot machine. As such, we cannot sustain the rejection of independent claim
32, dependent claim 3, and dependent claims 33-37 and 40-42, which
depend from either claim 3 or claim 32.

The rejection of claims 21, 22, 38, and 39 as being unpatentable over
Walker, Raven, Orus, and Phillips Semiconductors
For claims 21 and 22, Appellant relies on their dependency from
claim 31 for patentability. App. Br. 9. As we affirm the rejection of claim
31, we also affirm the rejection of claims 21 and 22.
Claims 38 and 39 depend from claim 32. The Examiner does not rely
on Phillips Semiconductors in any manner that cures the deficiency of the
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underlying rejection of claim 32 based on Walker, Raven, and Orus. See
Ans. 8-9. As such, we also reverse the rejection of claims 38 and 39.

DECISION
The decision of the Examiner to reject claims 3 and 32-42 is reversed.
The decision of the Examiner to reject claims 4, 6-8, 19, 20-22, 26, 31 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

JRG

SEYFARTH SHAW LLP
131 S. DEARBORN ST., SUITE 2400
CHICAGO,IL 60603-5803