Ex Parte Mercado et al

Board of Patent Appeals and Interferences

Mar 24, 2011

11419322 (B.P.A.I. Mar. 24, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte VICTOR MERCADO, CRAIG J. SYLLA, and
STEPHEN A. CANTERBURY
____________

Appeal 2009-012357
Application 11/419,322
Technology Center 3700
____________

Before: JENNIFER D. BAHR, LINDA E. HORNER, and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Victor Mercado et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1-20, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We
REVERSE and enter a NEW GROUND OF REJECTION pursuant to our
authority under 37 C.F.R. § 41.50(b).
THE INVENTION
Appellants’ claimed invention relates to “removable mass storage
devices in computerized wagering game machines.” Spec. 1:10-12.
Claim 1, reproduced below, is representative of the subject matter on appeal.
1. A computerized wagering game system, comprising:
a gaming module comprising a processor and gaming
code which is operable when executed on the processor to
present a wagering game on which monetary value can be
wagered; and
a nonvolatile storage device interface operable to mount
and unmount one or more hot pluggable mass storage devices
based on the position of a switch internal to a cabinet of the
wagering game system such that the mass storage device can
only be mounted when the switch is actuated and is unmounted
when the switch is deactuated, the switch comprising at least
one of a door switch and a security key switch.
THE REJECTIONS
Appellants seek review of the following rejections:
1. Rejection of claims 1, 2, 4, 8, 9, 11, 15, 17, and 19 under 35 U.S.C.
§ 103(a) as being unpatentable over Yoseloff (US 6,311,976 B1;
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issued November 6, 2001) and Pemberton (US 5,758,101; issued May
26, 1998).
2. Rejection of claims 3, 5, 10, 12, and 18 under 35 U.S.C. § 103(a) as
unpatentable over Yoseloff, Pemberton, and Magro (US 6,556,9521
B1; issued April 29, 2003).
3. Rejection of claims 6, 7, 13, 14, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Yoseloff, Pemberton, and Mambakkam
(US 2002/0073340 A1; published June 13, 2002).
CONTENTIONS AND ISSUE
The Examiner’s conclusion of obviousness for each of the three
rejections relies in part on the finding that Yoseloff and Pemberton each
disclose a switch as called for in independent claims 1, 8, and 15. Ans. 3-6,
9. Appellants argue that the rejection of independent claims 1, 8, and 15 is
in error because neither reference discloses a switch comprised of a door
switch or a security key switch. Br. 11. The issue before us is whether
Yoseloff or Pemberton discloses a switch as called for in each of the
independent claims on appeal.
ANALYSIS
Independent claim 1 is directed to a computerized wagering game
system that includes a nonvolatile storage device interface having a switch
“comprising at least one of a door switch and a security key switch.”
Similarly, independent claim 8 is directed to a machine-readable medium

1 Incorrectly listed as 6,556,982 in the Examiner’s Answer. Ans. 2.
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with instructions stored thereon operable to cause a computerized wagering
game system to mount and unmount one or more hot pluggable mass storage
devices based on the position of a switch, where the switch comprises “at
least one of a door switch and a security key switch,” and independent claim
15 is directed to a method of managing removable mass storage devices in a
computerized wagering game machine that includes the step of unmounting
a mass storage device based on the position of a switch, where the switch
comprises “at least one of a door switch and a security key switch.”
Consequently, claim 1 calls for a nonvolatile storage device interface
operable to mount and unmount a mass storage device based on the position
of a door switch or a security key switch; claim 8 calls for a machine-
readable medium with instructions operable to perform mounting and
unmounting based on the position of such a switch; and claim 15 calls for a
method that includes unmounting a mass storage device based on the
position of such a switch.
We cannot agree with the Examiner’s finding that Yoseloff discloses a
switch “comprising at least one of a door switch and a security key switch.”
Ans. 3 (citing Yoseloff, col. 14, ll. 37-67). The portion of Yoseloff cited by
the Examiner discloses that Yoseloff’s video gaming system may be
implemented on a conventional personal computer that is capable of using
an interface to access a variety of computer readable media (e.g., a hard disk
drive). Yoseloff, col. 14, ll. 37-67. This portion of Yoseloff, and the
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remainder of the reference, do not explicitly disclose a door switch, a
security key switch, or any form of switch.2 Yoseloff, passim.
We also cannot agree with the Examiner’s finding that Pemberton
discloses a switch as called for in independent claims 1, 8, and 15. Ans. 3
(citing Pemberton, col. 8, ll. 52-57); see also Ans. 9 (finding Pemberton’s
switch is capable of performing the function of a door switch or a security
key switch). Independent claims 1, 8, and 15, call for a system, machine-
readable medium, and method in which mounting and unmounting of a mass
storage device is based on the position of a door switch or a security key
switch. As such, these claims structurally call for such a switch. Pemberton
does not explicitly describe switch 49 as a door switch, a security key
switch, or any other form of switch used in conjunction with a door or a
security key. Pemberton, passim. Rather, Pemberton discloses that switch
49 is a double-pole/double-throw switch capable of an A and B position.
Pemberton, col. 6, l. 66; col. 7, ll. 9-10, 17-18.
Given our finding that neither Yoseloff nor Pemberton discloses a
switch comprising at least one of a door switch or a security key switch as
called for in independent claims 1, 8, and 15, we also cannot conclude that
the combination of the two references would have led to such a switch.

2 The Examiner found that Yoseloff’s device inherently mounts and
unmounts hot-pluggable storage device; however, the Examiner did not find
that Yoseloff’s device inherently uses the position of a switch comprising at
least a door switch or a security key switch to do so. Advisory Action dated
October 16, 2008, page 2.
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Hence, we cannot sustain the rejection of independent claims 1, 8, or 15, or
their respective dependent claims 2-7, 9-14, and 16-20.
NEW GROUND OF REJECTION
We enter a new ground of rejection of claims 1-20 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
Independent claims 1, 8, and 15, each recite a switch “comprising at
least one of a door switch and a security key switch.” Appellants’ disclosure
does not mention a “security key switch” and is silent as to what constitutes
a “security key switch.” Spec. passim. As such, Appellants’ Specification
does not convey with reasonable clarity to those skilled in the art that, as of
the filing date sought, Appellants were in possession of the invention as now
claimed. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir.
1991), cited with approval in Ariad Pharms., Inc. v. Eli Lily & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en banc). Claims 2-7, 9-14, and 16-20 likewise
fail to comply with the written description requirement as they incorporate
by reference the limitations of their respective independent claims.
CONCLUSION
Neither Yoseloff nor Pemberton discloses a switch as called for in
each of the independent claims on appeal.
Claims 1-20 fail to comply with the written description requirement
under 35 U.S.C. § 112, first paragraph.
DECISION
The decision of the Examiner to reject claims 1-20 is REVERSED.
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This decision contains a new ground 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. . . .

REVERSED, 37 C.F.R. § 41.50(b)

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