Ex Parte Loose et al

Patent Trial and Appeal Board

Aug 23, 2016

12077681 (P.T.A.B. Aug. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/077,681 03/20/2008 Timothy C. Loose 70243 7590 08/25/2016 NIXON PEABODY LLP 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. 247079-000160USC1 7247 EXAMINER 70 West Madison, Suite 3500 HU, KANG CHICAGO, IL 60602 ART UNIT PAPER NUMBER 3717 NOTIFICATION DATE DELIVERY MODE 08/25/2016 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): docketingchicago@nixonpeabody.com ipairlink@nixonpeabody.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TIMOTHY C. LOOSE, ERIC M. PRYZBY, WAYNE H. ROTHSCHILD, and LARRY J. PACEY Appeal2014-007529 Application 12/077,681 Technology Center 3700 Before JILL D. HILL, LISA M. GUIJT, and ERIC C. JESCHKE, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Timothy C. Loose et al. ("Appellants") 1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject claims 22-50. Claims 1-21 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART. 1 Appellants identify the real party in interest as WMS Gaming Inc. Appeal Br. 3. Appeal2014-007529 Application 12/077,681 CLAIMED SUBJECT MATTER Claims 22, 30, and 38 are independent. Independent claim 22, reproduced below, is illustrative of the subject matter on appeal. 22. A method of operating a gaming system in a gaming establishment, the gaming system including an external audio controller, a plurality of gaming machines, and a plurality of remote speakers, the plurality of gaming machines including respective gaming cabinets and internal cabinet speakers housed therein, the plurality of remote speakers being remote from the plurality of gaming machines, the external audio controller being external to the plurality of gaming machines, the external audio controller being communicatively coupled to both the plurality of remote speakers and the internal cabinet speakers such that the plurality of remote speakers and the internal cabinet speakers are capable of outputting audio under control of the external audio controller, the method comprising: in response to a certain triggering game event in a wagering game played via one of the plurality of gaming machines, receiving at the external audio controller a triggering signal associated with the triggering game event; using the external audio controller to select audio data associated with the triggering signal; and selectively controlling the plurality of remote speakers and the internal speakers to output audio based on the audio data and concurrently focused on less than all of the plurality of gaming machines. REJECTIONS I. Claims 48-50 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 2 Appeal2014-007529 Application 12/077,681 IL Claims 22-25, 27, 28, 30-33, 35, 36, 38--41,2 and 46-50 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Marnell (US 5,259,613; iss. Nov. 9, 1993) and Mothwurf (US 2001/0036857 Al; pub. Nov. 1, 2001). III. Claims 26, 34, and 42--44 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Marnell, Mothwurf, and Standard (US 6,848,219 B2; iss. Feb. 1, 2005). IV. Claims 29, 37, and 45 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Marnell, Mothwurf, and Olsen (US 2001/0004607 Al; pub. June 21, 2001). ANALYSIS Rejection I Appellants do not present any arguments regarding the written description rejection. See Appeal Br. 8-16; Reply Br. 2--4. Therefore, we summarily sustain the rejection of claims 48-50 under 35 U.S.C. § 112, first paragraph. Rejection II Regarding independent claims 22, 30, and 38, the Examiner finds, inter alia, that Marnell discloses the claimed gaming system and method of operating a gaming system in a gaming establishment, except for a plurality of remote speakers. Final Act. 4--5. In particular, the Examiner finds that conventional audio source 165 of Marnell corresponds to the claimed external audio controller. Id. at 4 (citing Marnell, Fig. 4). The Examiner 2 The statement of the rejection does not include claim 38; however this claim is discussed in the body of the rejection. Final Act. 3--4. Accordingly, the omission of claim 3 8 from the statement of the rejection is a typographical error. 3 Appeal2014-007529 Application 12/077,681 further finds that the live operator receiving video of a reaction to a jackpot, as disclosed in Marnell, corresponds to the claimed steps of receiving at the external audio controller a triggering signal associated with the triggering event and selecting audio data associated with the triggering event. Id. (citing Marnell, col. 9, 11. 52---61, 66---67). The Examiner further finds that Mothwurf teaches a plurality of remote speakers, and concludes that it would have been obvious to modify Marnell to include remote speakers of Mothwurf "in order to use the speakers within the gaming machine and the casino simultaneously to communicate an event, such as a jackpot, to a gaming establishment to create an environment of player excitement." Id. at 5 (citing Mothwurf i-f 107). Appellants contend, inter alia, that Marnell fails to disclose the claimed external controller. See Appeal Br. 13-14; see also Reply Br. 3--4. Appellants argue that the claims require the triggering signal to be received at the external audio controller and that "[Marnell's] operator is not the same thing as the claimed external audio controller," because, for example, the operator is not "communicatively coupled to both the plurality of remote speakers and the internal cabinet speakers," as claimed. Appeal Br. 14; Reply Br. 3--4; see also Appeal Br. 17, 19, and 21, Claims App. The Examiner responds that "Marnell discloses the use of a conventional audio controller 165 such as an audio tape deck ... which acts as the external audio controller since it is not internal to a game machine." Ans. 4 (citing Marnell, col. 7, 11. 25-27). The Examiner further responds that "Marnell's concept of a live operator reads on the claim limitation since the jackpot signal is shown to the live operator first and the announcement of a jackpot 4 Appeal2014-007529 Application 12/077,681 is sent [by the operator] to other players in response" through conventional audio controller 165. Id. (citing Marnell, col. 9, 11. 57----62). We agree with Appellants. Each of the independent claims 22, 30, and 38 recites "the external audio controller being communicatively coupled to both the plurality of remote speakers and the internal cabinet speakers such that the plurality of remote speakers and the internal cabinet speakers are capable of outputting audio under the control of the external audio controller." Appeal Br. 17, 19, and 21, Claims App. Further, the Specification describes the external audio controller as electronically coupled to the plurality of remote speakers and is prograrnmable to selectively control audio output from the plurality of remote speakers to create a desired audio ambience only within a specific pmi.ion of the gaming establishment by operating the plurality of remote speakers in cm~junction with the internal cabinet speakers. Spec. ,-r 9. As set forth above, the Examiner has identified conventional audio source 165 of Marnell as the external audio controller and finds that the live operator reads on the steps performed at or by the external audio controller. See Final Act. 4; Ans. 4. Conventional audio source 165 of l\;farnell is "an audio tape deck, audio cassette player~ compact disk player or laser disk player." IV1an1ell, col. 7, 11. 25-28. The devices associated with conventional audio source 165 are not programrnable to selectivelv control ~ ~ the audio output from the speakers, and a live operator also cannot meet the requirements of an external audio controller, e.g., conununicatively coupled to the speakers or programmable. Thus, regardless of whether the Examiner is relying on l\lfan1ell's conventional audio source 165 or the combination of conventional audio source 165 and an operator, the Examiner's finding that 5 Appeal2014-007529 Application 12/077,681 l\t1amell teaches the claimed extenml audio controller is not suppo1ied by a preponderance of the evidence. The Examiner's reliance on lMothvvurf does not cure this deficiency. Accordingly, we do not sustain the Examiner's rejection of independent claims 22, 30, and 38, and claims 23-25, 27, 28, 31-33, 35, 36, 39--41, and 46-50, which depend therefrom. Rejections III and IV The Examiner's reliance on Standard and Olsen does not cure the deficiencies in the Examiner's finding with respect Marnell, as discussed supra, as applied to independent claims 22, 30, and 38, from which claims 26, 29, 34, 37, and 42--45 depend. Therefore, we do not sustain the Examiner's rejection of claims 26, 29, 34, 37, and 42--45 for the reasons discussed supra. DECISION We AFFIRM the Examiner's rejection of claims 48-50 under 35 U.S.C. § 112, first paragraph, as lacking written description. We REVERSE the Examiner's rejection of 22-25, 27, 28, 30-33, 35, 36, 38--41, and 46-50 under 35 U.S.C. § 103(a) as unpatentable over Marnell and Mothwurf We REVERSE the Examiner's rejection of 26, 34, and 42--44 under 35 U.S.C. § 103(a) as unpatentable over Marnell, Mothwurf, and Standard. We REVERSE the Examiner's rejection of 29, 37, and 45 under 35 U.S.C. § 103(a) as unpatentable over Marnell, Mothwurf, and Olsen. 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)(l )(iv). 6 Appeal2014-007529 Application 12/077,681 AFFIRMED-IN-PART 7