Ex Parte Kovacs

Board of Patent Appeals and Interferences

Dec 12, 2011

11204881 (B.P.A.I. Dec. 12, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JAMES K. KOVACS
____________________

Appeal 2009-015367
Application 11/204,881
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and
CHARLES N. GREENHUT, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
45. App. Br. 4. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-
part and denominate the affirmed rejections as new grounds.
The claims are directed to wireless operation of a game device. Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. A gaming device operable under control of a processor, said
gaming device comprising:
a primary game operable under control of a processor,
said primary game operable upon a wager by a player;
a display device operable to display said primary
wagering game;
a housing;
a signal generator operable with said processor, said
signal generator operable to generate at least one gaming device
wireless signal;
a signal transmitter operable with said signal generator to
transmit said generated gaming device wireless signal to a
wireless remote control unit; and
a signal receiver operable with said processor, said signal
receiver operable to receive at least one remote control wireless
signal generated from the wireless remote control unit after an
initialization process between the processor and the wireless
remote control unit, wherein the initialization process includes
physically coupling the wireless remote control unit to the
housing, said signal receiver being operable to receive the at
least one remote control wireless signal after the wireless
remote control unit is physically uncoupled from the housing,
wherein said processor is operable to execute at least one
gaming device function which is based on said remote control
wireless signal received from said initialized wireless remote
control unit.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Franchi
DeMar
US 5,770,533
US 6,270,410 B1
Jun. 23, 1998
Aug. 7, 2001
Wells US 2003/0064805 A1 Apr. 3, 2003

REJECTIONS
Claims 1-28, 31-42, and 45 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Franchi and DeMar. Ans. 3.
Claims 29, 30, 43, and 44 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Franchi, DeMar and Wells. Ans. 13.

OPINION
The rejections of independent claims 12 and 35 and of claims 13-17, 33, and
36-44 depending therefrom are reversed.
The Examiner interprets Franchi’s slot machine 500 as the claimed
“gaming device” including a “housing” and Franchi’s remote system access
terminal 1600, 1700 (“RSAT”) as the claimed “wireless remote control.”
Ans. 3. While Franchi’s RSAT is primarily intended for use with table
games, Franchi mentions the RSAT could also be used with slots. Col. 19,
ll. 17-21. However, Franchi does not describe in detail how the RSAT
cooperates with slot machines.
Regarding claim 12, the Examiner states,
Regarding the limitation of the initialization process requires
the remote control unit to be inserted in the input slot of the
gaming machine, this is a design choice since linking the
remote control to the gaming machine by physically coupling it
to the gaming machine via a slot of the machine (or a cable) and
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linking it wirelessly to the gaming machine does not bring
unexpected result to the communication thereof.
Ans. 5. While minor differences between the prior art and a claimed device
may be a matter of design choice absent evidence to the contrary (See, e.g.,
In re Rice, 341 F.2d 309, 314 (CCPA 1965)) the provision of “an input slot
defined by said housing, wherein said input slot is configured to receive at
least part of a removable wireless remote control device” does not amount to
such a minor difference. See App. Br. 15-16. As noted above, Franchi does
not describe any specific means for accomplishing communication between
the RSAT and the slot machine. Nor does Franchi describe any physical
interaction between the two. While DeMar describes wired and wireless
remote communications as alternatives (figs. 1 and 2), no slot defined by the
machine housing is discussed. Thus, the Examiner’s proposed modification
to Franchi’s device is not minor, but the inclusion of an entire feature not
discussed anywhere in the references before us. Since the Examiner’s legal
conclusion of obviousness is not supported by facts the Examiner’s rejection
of claim 12, and dependent claims 13-17 and 33 cannot stand. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not,
because it may doubt that the invention is patentable, resort to speculation,
unfounded assumptions or hindsight reconstruction to supply deficiencies in
its factual basis.”). Since the Examiner takes essentially the same position
regarding the rejection of method claim 35 and Wells, as applied by the
Examiner, does not cure this deficiency, we must also reverse the rejection
of claim 35 and dependent claims 36-44. See Ans. 11.

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The rejections of independent claims 1, 18, 22 and 45, and those claims
depending therefrom are affirmed and we denominate this affirmance as
new grounds pursuant to our authority under 37 C.F.R. § 41.50(b).
Regarding claim 1, the only issue raised by Appellant is the
appropriateness of the Examiner’s proposed combination of Franchi and
DeMar. App. Br. 11-14. Appellant correctly points out that the wireless and
wired configurations of DeMar (figs. 1 and 2) are disclosed only as
alternatives. Id. Regarding claims 18, 22 and 45, Appellant merely points out
the claim language and contends that the Examiner’s rejection should be
reversed for the reasons outlined regarding claims 1 and 12. App. Br. 17-19
While we are persuaded by Appellant’s argument concerning the Examiner’s
use of “design choice” reasoning concerning the slots of claims 12 and 35,
supra, this argument does not appear to be relevant to claims 18, 22, and 45.
Thus, the only issue raised by Appellant concerning claims 1, 18, 22 and 45
relates to the physical coupling and uncoupling of the remote and gaming
machine—a feature for which the Examiner cites Demar.
In rejecting claims 1, 18, 22 and 45 the Examiner relies on Franchi’s
slot machine 500 and RSAT 1600, 1700 as teaching the basic claimed device
as discussed above. Ans. 3. The Examiner found that an “initialization”
process is inherent in Franchi, or described by the process of inserting a
betting card 401 into an RSAT holder to exchange data and release the
RSAT. Ans. 4, 20. The Examiner further found that Franchi does not
explicitly teach the limitation pertaining to physical coupling of the game
device and remote during the initialization process. Ans. 4. The Examiner
relies on DeMar to cure this perceived deficiency. Ans. 4-5.
The Examiner interpreted claims 1, 18, 22 and 45 too narrowly.
“[T]he PTO applies to the verbiage of the proposed claims the broadest
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reasonable meaning of the words in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in applicant’s specification.” In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). “A patent applicant is free to recite
features of an apparatus either structurally or functionally.” In re Schreiber,
128 F.3d 1473, 1478 (Fed. Cir. 1997) (citing In re Swinehart, 439 F.2d 210,
212 (CCPA 1971) (“[T]here is nothing intrinsically wrong with [defining
something by what it does rather than what it is] in drafting patent claims.”).
“Yet, choosing to define an element functionally, i.e., by what it does,
carries with it a risk.” Id.
[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
Swinehart, 439 F.2d at 213. “[W]hen the PTO shows sound basis for
believing that the products of the applicant and the prior art are the same, the
applicant has the burden of showing that they are not.” In re Spada, 911 F.2d
705, 708 (Fed. Cir. 1990).
Claims 1 and 18 require a signal receiver and claims 22 and 45 require
a signal generator supported by the remote control unit housing. In these
claims, the signal receiver or generator are further defined only by how they
operate. Claims 1, 18, 22 and 45, being directed to apparatuses, never
require an initialization process to actually occur and, further, do not
positively recite any structure for physically coupling the remote control unit
to the housing. Thus, the physical coupling, a step in the initialization
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process, also need not actually occur to meet the claim limitations since
claims directed to an apparatus must distinguish over the prior art in term of
structure rather than function. See, e.g., In re Schreiber, 128 F.3d at 1477-
78. Claims 1, 18, 22 and 45 require only a signal receiver or generator
capable of wireless communication after an initialization process that
includes physical coupling. These claims do not require the physical
coupling to take any particular form or to influence the initialization process
in any way. Thus, the effect of the initialization process on the signal
generator or receiver could be the same regardless of whether the remote and
gaming device are physically coupled or not. Thus, the functional limitations
pertaining to the physical coupling of the devices do not impose any
structural limitations on the claimed signal receiver or generator or their
respective apparatus. Accordingly, we see no need to rely upon DeMar, as
the Examiner did, to support the conclusion that the subject matter of claims
1, 18, 22 and 45 would have been obvious to one having ordinary skill in the
art.
Regarding dependent claims 2-11, 19-21, 23-32, and 34, Appellant
does not contest the Examiner’s other factual findings or legal conclusions
concerning Franchi or Wells and we adopt them as our own. For these
reasons, we affirm the Examiner’s rejections of claims 1-11, 18-32, 34 and
45. However, since our claim construction differs from that of the Examiner,
we denominate this affirmance as “new grounds” under 37 C.F.R. § 41.50(b)
so that Appellant may be afforded a full and fair opportunity to respond.

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DECISION
The Examiner’s rejections of claims 12-17, 33, and 35-44 are
reversed.
The Examiner’s rejections of claims 1-11, 18-32, 34 and 45 are
affirmed but designated as “new grounds” under 37 C.F.R. § 41.50(b).
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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 proceeding will be remanded to
the Examiner. . . .
(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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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