Ex Parte Kelly

Patent Trials and Appeals Board

Jun 5, 2019

14600700 - (D) (P.T.A.B. Jun. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/600,700 01/20/2015
1009 7590 06/07/2019
KING & SCHICKLI, PLLC
800 CORPORATE DRIVE, SUITE 200
LEXINGTON, KY 40503
FIRST NAMED INVENTOR
Nigel Kelly
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.
348-310 9366
EXAMINER
GARNER, WERNER G
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
06/07/2019 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@iplawl.net
laura@iplawl.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NIGEL KELLY
Appeal2018-006129 1
Application 14/600,700
Technology Center 3700
Before PHILLIP J. KAUFFMAN, JEREMY M. PLENZLER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision to reject claims 17-24. We have jurisdiction under
§ 6(b ). We affirm and designate our affirmance new grounds of rejection
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 We reference herein the Specification filed January 20, 2015 ("Spec."),
Final Office Action mailed May 1 7, 2017 ("Final Act."), Appeal Brief filed
January 2, 2018 ("Appeal Br."), Examiner's Answer mailed March 26, 2018
("Ans."), and Reply Brief filed May 25, 2018 ("Reply Br.").
2 Appellant is the Applicant, Astra Games Ltd., which, according to the
Appeal Brief, is the real party in interest. Appeal Br. 3.
Appeal2018-006129
Application 14/600,700
SUBJECT MATTER ON APPEAL
The "invention relates to gaming machines or consoles of the type
generally referred to as slot machines, and in particular the invention
provides a new type of player recognition in such a machine." Spec. 1:3-5.
Claims 1 7 and 21 are the independent claims on appeal. Independent
claim 17 is illustrative of the claimed subject matter, and we reproduce it
below, emphasizing the limitation at issue.
17. A computer-implemented promotional reward apparatus
for integration in a stand-alone, non-networked gaming machine
having a banknote receiver for receiving a banknote, an
internally mounted banknote recognition circuit and a game
control processor circuit, and being programmed to enable a
player to play a game thereon when the banknote is inserted into
said banknote receiver, said promotional reward apparatus
compnsmg:
a scanner for obtaining data representative of the banknote
inserted into said banknote receiver;
a processor for:
receiving and comparing said data against
predefined criteria, [3J said predefined criteria being
determinative of whether the player is entitled to a
promotional reward on a basis of one or more
predetermined characteristics of the banknote, and
generating a positive or negative indicator
representative of whether or not said data matches said
predefined criteria; and
an output for generating promotional reward data only in
response to a positive indicator from said processor, said
3 As correctly indicated in the dictionary definition cited by the Examiner on
page 15 of the Examiner's Answer, "criteria" is the plural form of
"criterion." Although the claim recites "criteria," the Specification suggests
a criterion, namely a criterion based on the face value of the note.
Spec. 6:20--7:2. Should this application undergo further prosecution,
Appellant may wish to consider whether the singular form, "criterion,"
rather than the plural form, "criteria," should be used.
2
Appeal2018-006129
Application 14/600,700
promotional reward data being provided to said game control
processor circuit and configured to cause said gaming machine
to offer or provide said player the promotional reward within said
game.
Appeal Br., Claims App. ( emphasis added).
REJECTI0NS 4
The Examiner rejects the claims on appeal as follows:
claims 17 and 19 under 35 U.S.C. §§ I02(a)(l) and I02(a)(2) as
anticipated by Parham; 5
claim 18 under 35 U.S.C. § 103 as unpatentable over Parham and
Acres· 6
'
claim 20 under 35 U.S.C. § 103 as unpatentable over Parham and
Katz· 7
'
claims 21 and 23 under 35 U.S.C. § 103 as unpatentable over Parham
and Beaulieu; 8
claim 22 under 35 U.S.C. § 103 as unpatentable over Parham,
Beaulieu, and Acres; and
claim 24 under 35 U.S.C. § 103 as unpatentable over Parham,
Beaulieu, and Katz.
4 The Examiner has withdrawn the rejection of claims 17-24 under
35 U.S.C. § 112(b). Ans. 14. Also, due to the cancelation of claims 13-16,
the Examiner has withdrawn the rejections of claims 13-15 under§ 112,
claims 13 and 15 under § 102, and claims 14 and 16 under § 103. Id.
5 US 2012/0302308 Al, published Nov. 29, 2012.
6 US 2010/0323780 Al, published Dec. 23, 2010.
7 US 2008/0220840 Al, published Sept. 11, 2008.
8 US 2003/0236110 Al, published Dec. 25, 2003.
3
Appeal2018-006129
Application 14/600,700
ANALYSIS
Anticipation
Parham describes gaming machine 100 including scanning system 102
that acts as a bill acceptor. Parham ,r,r 14--16, Fig. IA. Scanning system 102
includes scanner 108 capable of gathering scan data for use in verifying the
authenticity and denomination of a banknote. Id. ,r 17; Fig. IB. In addition,
scanning system 102 includes number determiner 118 for determining serial
number 110 of the banknote from the scan data generated by scanner 108.
Id. ,I,I 18, 20.
Parham's gaming machine also includes processor 301 coupled to
memory 302. Id. ,r 34, Fig. 3. Processor 301 executes instructions including
random award logic 120. Id. ,r 21.
During game play, random award logic 120 generates a qualification
number of the same length as serial number 110. Id. ,r 24. If serial
number 110 read from a banknote inserted into scanning system 102
matches the qualification number, and if any predetermined user
qualification event occurs, the user wins an award such as a certain amount
of credits for the game. Id. ,r,r 25, 27.
In view of these disclosures, the Examiner finds Parham anticipates
independent claim 17. Final Act. 14--15. In particular, the Examiner finds
Parham's randomly-generated qualification numbers disclose the recited
"predefined criteria." Id. at 14 ( citing Parham ,r 25).
In contrast, Appellant argues "this random number generation of
numbers as disclosed by Parham cannot possibly qualify as the claimed
comparison to predefined criteria, precisely because of the nature of
Parham's numbers being randomly generated after detection of a number
4
Appeal2018-006129
Application 14/600,700
from the monetary instrument." Appeal Br. 10 ( citing Parham ,r,r 21-25,
Fig. 2). According to Appellant: "The meanings of predefined criteria and
random number generation are mutually exclusive. Parham's random
generation of numbers is precisely the opposite of the claimed 'predefined
criteria."' Id.
Consequently, the issue on appeal is one of claim construction.
Namely, whether Parham's randomly-generated qualification numbers
disclose the recited "predefined criteria" turns on the meaning of
"predefined criteria."
The Examiner interprets the phrase "predefined criteria" as broad
enough to encompass a rule by which it is determined whether a promotional
award should be granted. Ans. 15-16. Thus, for example, the Examiner
finds that a rule by which two numbers, such as a randomly generated
qualification number and a serial number of a banknote, are compared may
be "predefined criteria" within the scope of that phrase as used in the claim.
Id. at 16. This interpretation, however, is inconsistent with the claim
language.
Independent claim 1 7 recites "receiving and comparing said
data against predefined criteria." Appeal Br., Claims App. The claim
further recites "generating a positive or negative indicator
representative of whether or not said data matches said predefined
criteria." Id. The language of the claim implies that the "predefined
criteria" is matched or compared to data representative of the
banknote. Therefore, the criteria cannot be the comparison or
matching itself.
5
Appeal2018-006129
Application 14/600,700
Appellant argues the phrase "predefined criteria" means a "predefined
mark or trait that may match scanned data obtained from [a] banknote."
Reply Br. 2 (internal quotation marks omitted). Appellant argues that
"predefined," within the context of independent claim 17, is limited to
criteria determined before the banknote is scanned. Appeal Br. 10-11;
Reply Br. 3--4. We agree with Appellant that the phrase "predefined
criteria" encompasses a "predefined mark or trait that may match scanned
data obtained from [a] banknote." Reply Br. 2. Nevertheless, Appellant's
interpretation of "predefined" is too narrow and has no basis in the claim
language or the Specification. As stated earlier, independent claim 1 7
recites "receiving and comparing said data against predefined criteria."
Appeal Br., Claims App. The wording of this step implies that the criteria
must be defined before the data is received and compared by the processor.
It does not imply that the criteria need be defined before the banknote is
scanned by the scanner. Likewise, nothing in the Specification implies that
the criteria against which the data is compared must be defined before the
banknote is scanned. The Specification merely teaches comparing data
representative of the banknote with criteria such as winning serial numbers
defined as of the comparison. See, e.g., Spec., 5:13-18, 6:20-7:2, 8:1-3.
The broadest reasonable interpretation of "predefined criteria" is that
the criteria is defined independently of the data representative of the
banknote. Independent claim 1 7 says no more than the "predefined criteria"
must be defined before the data representative of the banknote is received
and compared by the processor. The Specification is no more specific.
Comparing the data representative of the banknote against some criterion
implies that the criterion is known as of the time the comparison is
6
Appeal2018-006129
Application 14/600,700
performed. Thus, to say that the "predefined criteria" is defined before the
comparison takes place does not meaningfully limit the claim. Instead, what
is significant is that the data representative of the banknote is compared to
criteria independent of the data. Interpreting the language in this fashion
gives meaning to the phrase "predefined criteria" within the context of
independent claim 17 as a whole.
Furthermore, interpreting "predefined criteria" as criteria defined
independently of the data representative of the banknote is consistent with
the Specification. For example, the Specification describes an embodiment
that compares a serial number of a banknote against winning serial numbers
by means of a "win/lose lottery-type algorithm." Spec. 8: 1-3. "Lottery-type
algorithm" implies comparison against a standard independent of the serial
number of the banknote.
When construing "predefined criteria" as criteria defined
independently of the data representative of the banknote, we agree with the
Examiner that Parham's randomly-generated qualification numbers disclose
this claim limitation. Parham describes awarding a prize to a winner based
on a comparison between a serial number read from a banknote and a
qualification number randomly generated by random award logic 120.
Parham ,r,r 24--25. Parham's randomly-generated qualification number is
defined independently of data representative of the banknote, such as a
denomination or serial number.
For the foregoing reasons, we sustain the rejection of independent
claim 17. Our decision sustaining the rejection is based on an interpretation
of independent claim 17 that differs from the Examiner's. To provide
7
Appeal2018-006129
Application 14/600,700
Appellant an opportunity to amend the claims or otherwise respond, we
designate the sustained rejection of claim 17 as a new ground of rejection.
Appellant does not present arguments for claim 19 apart from the
arguments for independent claim 17. Appeal Br. 9-11. For the same
reasons as independent claim 17, we sustain the rejection of claim 19 and
designate the sustained rejection as a new ground of rejection.
Obviousness
Independent claim 21
Like independent claim 17, independent claim 21 recites "receiving
and comparing said data against predefined criteria." Appeal Br.,
Claims App. Appellant argues neither Parham nor Beaulieu discloses this
limitation. Appeal Br. 13-14. Appellant's argument is not persuasive
because, as discussed earlier in connection with the rejection of independent
claim 17, Parham discloses the quoted limitation when properly interpreted.
In view of the foregoing, Appellant does not apprise us of error in the
Examiner's rejection of independent claim 21, and we sustain the rejection.
As our interpretation of the disputed limitation differs from the Examiner's,
we designate the sustained rejection as a new ground of rejection.
Claims 18 and 22
Claim 18 recites the "computer-implemented promotional reward
apparatus according to claim 1 7, wherein said predetermined characteristics
of said banknote comprise or include a face value thereof." Appeal Br.,
Claims App. Claim 22 depends from independent claim 21 and adds a
limitation similar to that recited in claim 18. Id.
8
Appeal2018-006129
Application 14/600,700
The Examiner finds Parham describes scanning a bank note and using
the scanned information to verify its denomination. Final Act. 16-17;
Ans. 19. According to the Examiner, Parham's embodiments relate to the
serial number of a dollar bill, but Parham recognizes that modifications may
be made. Final Act. 17 (citing Parham ,r 13). The Examiner nonetheless
acknowledges that Parham fails to explicitly disclose the predetermined
characteristics of the banknote comprising a face value thereof, as recited in
these claims, and relies on Acres for such a teaching. Id. at 16, 24 ( citing
Acres ,r 49). The Examiner then determines it would have been obvious to
modify Parham to replace the serial number with Acres' s denomination to
give the player some incentive to keep playing. Id.
Appellant argues that one of ordinary skill in the art would not have
had a reason to combine the teachings of Parham and Acres because Parham
already incentivizes players by awarding prizes when the serial number of a
bank note matches a randomly-chosen qualification number.
Appeal Br. 12-13, 14. This argument is not persuasive.
Acres describes electronic gaming devices for playing wagering
games such as slots and video poker. Acres ,r 43; Figs 2A-2C. Acres
teaches that linked jackpots may be awarded to players playing networked
electronic gaming devices in order to excite player interest. Nevertheless,
the award of relatively large, linked prizes must be infrequent for business
reasons. Id. ,r,r 3, 49. For this reason, prizes in addition to linked prizes may
be offered. For example, Acres teaches awarding a $5.00 bonus award of
non-cashable credit when a player inserts a $20.00 bill, and does not win a
prize greater than $5.00, to excite player interest. Id. ,r 49. Acres teaches
9
Appeal2018-006129
Application 14/600,700
that awards such as this may be offered in addition to larger, linked prizes on
networked gaming devices. Id. ,r 50.
The Examiner proposes substitution of a prize based on the
denomination of the bill, such as that described by Acres, for Parham's prize
based on the serial number. Thus, what the Examiner proposes is not a
machine offering prizes based on both the denomination and serial number
of an inserted banknote, cumulatively, but a machine that offers a secondary
prize based only on the denomination. Accordingly, Appellant does not
apprise us of error in the Examiner's reason for combining the teachings of
Parham and Acres.
In view of the foregoing, we sustain the rejections of claims 18 and
22. Our decision to sustain the rejections of these claims is based on our
interpretation of the independent claims from which they depend, so we
designate the sustained rejections as new grounds of rejection.
Claims 20, 23, and 24
Appellant does not present arguments for claims 20, 23, and 24 apart
from the arguments for the independent claims. Appeal Br. 14--15.
Accordingly, for the same reasons as the independent claims, we sustain the
rejections of these claims, and similarly designate the sustained rejections as
new grounds of rejection.
DECISION
The Examiner's decision to reject claims 17-24 is affirmed. Pursuant
to our authority under 37 C.F.R. § 4I.50(b), we designate our affirmance
new grounds of rejection.
10
Appeal2018-006129
Application 14/600,700
Section 4I.50(b) provides that, "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review."
Regarding a new ground of rejection, section 41.50(b) also provides that an
appellant must exercise, WITHIN TWO MONTHS FROM THE DATE OF
THE DECISION, one of the following options:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new [ e ]vidence
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[; or]
(2) Request rehearing. Request that the proceeding
be reheard under §41.52 by the Board upon the same
record.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED; 37 C.F.R. § 4I.50(b)
11