Ex Parte Krintzman

Board of Patent Appeals and Interferences

Jan 21, 2004

09127183 (B.P.A.I. Jan. 21, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JEFFREY S. KRINTZMAN
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Appeal No. 2003-2051
Application No. 09/127,183
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ON BRIEF
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Before ABRAMS, FRANKFORT, and McQUADE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 3-8, 10-
15 and 23-25, which are all of the claims pending in this application.
We REVERSE AND REMAND TO THE EXAMINER.
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BACKGROUND
The appellant's invention relates to an enhanced payout feature for gaming
machines. An understanding of the invention can be derived from a reading of
exemplary claim 23, which has been reproduced below.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Smith III et al. (Smith) 4,504,062 Mar.12, 1985
UK Patent Application (McArthur) 2 211 975 A Jul. 12, 1989
Claims 3-8 and 23 stand rejected under 35 U.S.C. § 102(b) as being anticipated
by McArthur.
Claims 10-15, 24 and 25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over McArthur in view of Smith.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the Answer
(Paper No. 28) for the examiner's complete reasoning in support of the rejections, and
to the Brief (Paper No. 27) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
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respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
The appellant characterizes his invention as a gaming machine improvement
that automates the technique of providing an enhanced payout to players for a limited
period of time. According to the appellant, the promise of these enhanced awards
operates as an incentive to gaming patrons to continue and to speed up play during the
enhanced payout interval. See specification, pages 1-5.
Claim 23 sets forth the invention in the following manner:
In a gaming machine that makes a payout to a player in response to
completion of a play cycle of the machine resulting in a payout event, the
improvement comprising:
means for generating an enhanced payout signal at the end of an activity
interval during which a frequency of play cycles of the machine is greater than a
pre-selected minimum;
means for causing the machine to provide an enhanced payout to the
player in concurrent response to said enhanced payout signal and completion of
the play cycle of the machine resulting in said payout event; and
indicating means for indicating the existence of an enhanced payout
interval to the player in response to said enhanced payout signal.
Independent claims 24 and 25 recite further embodiments of the invention which
include constituent parts employed to prevent commencement of an enhanced payout
interval based on machine idle time.
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1The guidance provided by our reviewing court with regard to the matter of anticipation is as follows:
Anticipation is established only when a single prior art reference discloses, either expressly or under the
principles of inherency, each and every element of the claimed invention. See, e.g., In re Paulsen, 30
F.3d 1475, 1480-1481, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994) and In re Spada, 911 F.2d 705, 708, 15
USPQ2d 1655, 1657 (Fed. Cir. 1990). Additionally, anticipation by a prior art reference does not require
either the inventive concept of the claimed subject matter or recognition of inherent properties that may be
possessed by the reference. See Verdegaal Brothers Inc. v. Union Oil Co. of California, 814 F.2d 628,
633, 2 USPQ2d 1051, 1054 (Fed. Cir. 1987). Nor does it require that the reference teach what the
applicant is claiming, but only that the claim on appeal “read on” something disclosed in the reference, i.e.,
all limitations of the claim are found in the reference. See Kalman v. Kimberly-Clark Corp., 713 F.2d 760,
772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
The Section 102 Rejection of Claims 3-8 and 23
Claims 3-8 and 23 stand rejected under 35 U.S.C. §102(b) as being anticipated1
by McArthur. On page 4 of the Answer, the examiner has explained why, in his view,
claim 23 is anticipated by McArthur. However, claim 23 contains means-plus-function
limitations which must be evaluated in the context of the sixth paragraph of 35 U.S.C.
§112 and, in order to meet a means-plus-function limitation, the prior art must perform
the identical function recited in the means limitation and perform that function using the
structure disclosed in the appellant’s specification or an equivalent structure. See
Valmont Indus. Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 1042, 25 USPQ2d 1451, 1454
(Fed. Cir 1993). The examiner’s rejection does not provide such an analysis.
In this regard, independent claim 23 recites (1) “means for generating an
enhanced payout signal at the end of an activity interval . . . ,” (2) “means for causing
the machine to provide an enhanced payout to the player . . . ,” and (3) “indicating
means for indicating the existence of an enhanced payout to the player . . . .” In the
description of the preferred embodiments of the invention which is set forth in the
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specification, begining at page 14, the appellant has set forth structure that
accomplishes these means-plus-function limitations. However, as has been pointed out
by the appellant, the examiner has not made findings and determinations in accordance
with the guidance provided by our reviewing court and as directed by Sections 2181-
2184 of the Manual of Patent Examining Procedure. In this regard, the examiner has
not established in posing the rejection that each means-plus-function limitation in each
of the rejected claims is met by the prior art, that is, that the system disclosed in the
McArthur patent performs the identical functions recited in the means-plus-function
limitations recited in claim 23 (Answer, pages 4 and 5). This fundamental shortcoming
causes the rejection not to be sustainable.
However, even if one were to consider, arguendo, that the three functions in the
claim are performed by the McArthur system, the rejection still would be fatally
defective, for the examiner has not determined whether these functions are performed
by structure that is the same as, or equivalent to, the structure disclosed by the
appellant in the specification. In this regard, we point out that such determinations are
not present in the statement of the rejection on pages 4 and 5 of the Answer, nor have
they been provided in the response to the appellant’s arguments on this subject on
pages 7-12 of the Brief. As to the question of whether the means is the same, the
examiner has not compared the structure disclosed by McArthur with that presented by
the appellant in the specification, and has not found that they are the same. Moreover,
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our review of the McArthur disclosure reveals the statement that “the technology
required to implement any of the various methods and apparatus described . . . will
be well known to those skilled in the art” (page 10), which indicates that sufficient
description of the structure as to enable such a comparison to be made is not provided
in the patent.
The same applies to the matter of equivalency. While there is no litmus test for
an “equivalent” that can be applied with absolute certainty and predictability, there are
several indicia that are sufficient to support a conclusion of equivalency or non-
equivalency. These include:
(1) Whether the prior art elements perform the function specified in the
claim in substantially the same way, and produce substantially the same
results as the corresponding structure disclosed in the specification.
Odetics Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1267, 51 USPQ2d
1225, 1229-30 (Fed. Cir. 1999).
(2) Whether a person of ordinary skill in the art would have recognized the
interchangeability of the elements shown in the prior art for the
corresponding elements disclosed in the specification. Al-Site Corp. v.
VSI International Inc., 174 F.3d 1308, 1316, 50 USPQ2d 1161, 1165
(Fed. Cir. 1999).
(3) Whether the prior art elements are the structural equivalents of the
corresponding elements disclosed in the specification. In re Bond, 910
F.2d 831, 833, 15 USPQ2d 1566, 1568 (Fed. Cir. 1990).
(4) Whether there are insubstantial differences between the prior art
elements and the corresponding elements disclosed in the specification.
IMS Technology, Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1436, 54
USPQ2d 1129, 1138-39 (Fed. Cir. 2000).
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2The test for obviousness is what the combined teachings of the prior art would have suggested to
one of ordinary skill in the art. See, for example, In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). In establishing a prima facie case of obviousness, it is incumbent upon the examiner to
provide a reason why one of ordinary skill in the art would have been led to modify a prior art reference or
to combine reference teachings to arrive at the claimed invention. Ex parte Clapp, 227 USPQ 972, 973
(Bd. Pat. App. & Int. 1985). To this end, the requisite motivation must stem from some teaching,
suggestion, or inference in the prior art as a whole or from the knowledge generally available to one of
ordinary skill in the art and not from the appellant’s disclosure. Uniroyal, Inc. V. Rudkin-wiley Corp., 837
F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
There is nothing in the record which would support answering any of the above
questions in the affirmative, and thus there is no support for concluding that the prior art
structure is the equivalent under 35 U.S.C. § 112, sixth paragraph, of the structure
disclosed by the appellant in the specification.
For the reasons expressed above, the rejection of independent claim 23 as
being anticipated by McArthur cannot be sustained. Nor, it follows, can we sustain the
like rejection of claims 3-8, which depend from claim 23.
The Section 103 Rejection Of Claims 10-15, 24 and 25
Independent claim 24, dependent claims 10-15, and independent claim 25 stand
rejected as being obvious2 in view of the combined teachings of McArthur and Smith.
Claim 24 recites, inter alia, (1) “means for generating a reset pulse, delayed by an
enhanced payout interval, in response to said enhanced payout signal,” (2) “resetting
means for resetting said activity counter in response to said idle time signal and in
response to said reset pulse,” and (3) “indicating means for indicating the existence of
said enhanced payout interval to the player in response to said enhanced payout
signal.” As was the case with Claim 23, the examiner has failed to treat these
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limitations in the manner required under the sixth paragraph of 35 U.S.C. §112. This
being the case, the rejection cannot be sustained for the same reasons as were applied
against the rejection of claim 23. It follows that the like rejection of claims 10-15, which
depend from claim 24, cannot be sustained.
This conclusion is not altered by consideration of Smith, which was applied for
teaching that games having idle time counters that reset the game to a starting mode
after the expiration of a preset time were known in the art at the time of the appellant’s
invention. In passing, we wish further to point out that the examiner has not directed us
to evidence in the applied references or elsewhere which supports the conclusion that it
would have been obvious to one of ordinary skill in the art to add an idle time counter to
the McArthur system “to provide a more efficient reset method,” as has been asserted
on page 6 of the Answer.
Claim 25 recites means for preventing an enhanced payout interval in response
to an idle time signal. As was the case with claims 23 and 24, the examiner has not
met the burden necessary to reject claims containing means-plus-function limitations,
and therefore the rejection of claim 25 also cannot be sustained.
Remand To The Examiner
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3Copy enclosed.
Acres et al. U.S. Patent No. 6,162,122,3 which has come to our attention, is
directed to a method and apparatus for operating networked gaming devices. This
patent discloses a system for automating gaming device configurations to make them
more attractive to players by reconfiguring them under certain circumstances to provide
an additional incentive to players to use the devices (column 2, lines 7-26). The
reconfiguration activates a bonus payout schedule as a result of tracking such factors
as the number of coins deposited by a player, the time the player has spent at the
machine, and the number of coins won and games played (column 3, lines 1-46).
Thus, it would appear that the objectives of the Acres system are similar to those of the
appellant’s invention. Structure for accomplishing these objectives is described in the
patent.
This application is remanded to the examiner for evaluation of the patentability of
the appellant’s claims in view of the teachings of Acres. In considering this matter, the
attention of the examiner is directed to the discussions relating to rejecting claims
containing means-plus-function limitations which appear in the Manual of Patent
Examining Procedure.
CONCLUSION
Neither rejection is sustained.
The decision of the examiner is reversed.
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The application is remanded to the examiner for action in accordance with the
comments set forth above.
REVERSED AND REMANDED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
NEA:pgc
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JEFFREY KRINTZMAN
RADICAL GAMING CONCEPTS L.L.C.
1955 VISTA LARGA COURT
RENO, NV 89523