Ex Parte Munoz

Board of Patent Appeals and Interferences

Jul 29, 2009

11008218 (B.P.A.I. Jul. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JESUS FRANCO MUNOZ
__________

Appeal 2009-002288
Application 11/008,218
Technology Center 3700
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Decided: July 29, 20091
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and ERIC GRIMES,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims 1-3 and 5-9,
all of the pending claims, which are directed to an amusement machine. The

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Examiner has rejected the claims as anticipated and obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
The Specification discloses “an amusement machine of the … slot
machine type” in which
mechanisms or systems, such as systems for collection,
payment, operational capacity and control, game development,
accounting and numerical information, play information and
monitoring, can be replaced with other systems or mechanisms
having different features, … simply by changing in the
microcontroller the necessary data corresponding to the change
carried out, without the CPU central program, which is what
controls the general operation of the machine as a whole, being
affected.
(Spec. 5.) The Specification discloses that “[t]o this end, all the secondary
plates corresponding to the different systems are interconnected to the CPU
main support plate through a bus and forming a loop with said main plate”
(id.).
Claim 12 is representative and reads as follows:
Claim 1: A multipurpose amusement machine, of the type granting
the user a playing time in exchange for the price of the game and possibly,
according to the game program, a cash prize, which, having the purpose of
allowing for the replacement of a mechanism without needing to modify the
CPU base program, is characterized in that it has a hardware provided with a
main plate (1) and a plurality of secondary plates (2), (3), (4), (5), (6), (7),
(8), (9), (10), interconnected to one another through a bus (11), forming a
loop with the main plate (1);

2 The numbers recited in claim 1 apparently refer to elements shown in the
Specification’s Figure 1 but we do not interpret the recited numbers as
limiting the claim.
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characterized in that the number of secondary or peripheral plates is
variable, according to the diversity of mechanisms to be controlled and the
location thereof in the machine.

The claims stand rejected as follows:
• Claims 1-3, 5, and 6 under 35 U.S.C. § 102(b) as anticipated by
Mathis3 (Answer 3);
• Claims 7 and 8 under 35 U.S.C. § 103(a) as obvious in view of
Mathis (Answer 6); and
• Claim 9 under 35 U.S.C. § 103(a) as obvious in view of Mathis and
Gordon4 (Answer 7).
ANTICIPATION
Issue
The Examiner has rejected claims 1-3, 5, and 6 under 35 U.S.C.
§ 102(b) as anticipated by Mathis. The claims have not been argued
separately and therefore claims 2, 3, 5, and 6 stand or fall with claim 1. 37
C.F.R. § 41.37(c)(1)(vii).
The Examiner finds that Mathis discloses a slot machine that
comprises “a primary/main microcomputer (52) that is connected to and
communicates with a variety of secondary microcomputers … via a serial
bidirectional communications link or bus” (Answer 3). The Examiner finds

3 Mathis et al., US 5,380,008, Jan. 10, 1995
4 Gordon et al., US 2003/0064806, April 3, 2003. The Examiner’s statement
of the rejection (Answer 6) does not include Gordon, but the Examiner’s
rationale (Answer 7) clearly relies on both Mathis and Gordon. Appellant
addressed both Mathis and Gordon in responding to the rejection (Appeal
Br. 5-6). We understand the rejection to rely on both references.
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that the Mathis device “permits ‘a system peripheral to be redesigned to
meet a new requirement rather than a redesign of the entire primary
microcomputer’” (id.). The Examiner also finds that “Mathis also discloses
that additional reels can be added (more then [sic] three), wherein additional
reel drivers or microcomputers can be added to the system … [w]hich is
interpreted [to mean that] the number of secondary or peripheral plates are
variable (subject to change), according to the diversity of mechanisms to be
controlled” (Answer 3-4).
Appellant contends that the Examiner erred in finding that Mathis
discloses an amusement device in which “the number of secondary or
peripheral plates is variable, according to the diversity of mechanisms to be
controlled and the location thereof in the machine,” as required by claim 1
(Appeal Br. 3).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Mathis discloses an amusement
device in which “the number of secondary or peripheral plates is variable,
according to the diversity of mechanisms to be controlled and the location
thereof in the machine,” as required by claim 1?
Findings of Fact
1. Mathis discloses a slot machine (Mathis, col. 1, ll. 5-10).
2. Mathis discloses that the “gaming apparatus includes a number of
computers for controlling the various functions such as the acceptance of a
coin inserted into the apparatus, pay out of coins when a game is a winner,
the commencement and termination of rotation of the reels, and the
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determination as to whether a game played is a winning game or a losing
game” (id., Abstract).
3. Mathis discloses that
[i]n accordance with the preferred form of the present
invention, … apparatus 10 in order to reduce the complexity of
the interconnect harness required for the controls of the various
functions and to reduce the failure rate and improve the security
of the apparatus, utilizes a number of microcomputers rather
than a single computer. Thus, the apparatus includes a primary
microcomputer 52 which connects to and communicates with a
variety of other microcomputers. For example, as illustrated the
microcomputer 52 communicates with a door interface
microcomputer 54, a hopper driver microcomputer 56, a series
o[f] reel driver microcomputers 58a, 58b, 58c, each
corresponding to a respective reel 22, 24, 26, and preferably to
a number of other microcomputers (not illustrated) which
control the various game indicator and alarm lights, the bill
validater and game monitoring and accounting devices.
(Id. at col. 8, l. 67 – col. 9, l. 15.)
4. Mathis discloses that “if the gaming apparatus includes more than
three reels, a situation that is included within the scope of the present
invention, additional reel drivers are required, there being one for each
additional reel” (id. at col. 9, ll. 15-19).
5. Mathis discloses that the microcomputer 52 comprises a CPU with
read only program memory (ROM), random access memory (RAM), and a
“serial bidirectional communications link to the other microcomputers” (id.
at col. 9, ll. 20-30).
6. Mathis discloses that the “the primary microcomputer 52 also
communicates with the reel drivers 58a, 58b, 58c, and any additional reel
drivers corresponding to reels greater than the three reels 22, 24, 26
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illustrated. … Each reel driver microcomputer 58a, 58b, 58c comprises a
single chip microprocessor.” (Id. at col. 10, ll. 15-22.)
7. Mathis discloses that the “preferred implementation of the
invention reduces harness complexity” and “permits a system peripheral to
be redesigned to meet a new requirement rather than a redesign of the entire
primary microprocessor as is conventional” (id. at col. 11, 15-20).
8. The Specification discloses that Appellant’s amusement machine
allows mechanisms or systems to “be replaced with other systems or
mechanisms having different features … simply by changing in the
microcontroller the necessary data corresponding to the change carried out,
without the CPU central program, which is what controls the general
operation of the machine as a whole, being affected” (Spec. 5).
9. The Specification discloses that the “replacement of any of the
mechanisms entails only the modification of the data contained in the
microcontroller of the plate controlling said mechanism, without said
modification affecting the data contained in the CPU main plate, or the rest
of the secondary plates” (id. at 6).
Principles of Law
“[T]he PTO applies to the verbiage of the proposed claims the
broadest 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 the applicant’s
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
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“[W]hile it is true that claims are to be interpreted in light of the
specification . . . , it does not follow that limitations from the specification
may be read into the claims.” Sjolund v. Musland, 847 F.2d 1573, 1581
(Fed. Cir. 1988).
“Where . . . a patentee defines a structurally complete invention in the
claim body and uses the preamble only to state a purpose or intended use for
the invention, the preamble is not a claim limitation.” Rowe v. Dror, 112
F.3d 473, 478 (Fed. Cir. 1997).
Analysis
Claim 1 is directed to an amusement machine that comprises “a main
plate” and a variable number of “secondary plates,” connected to one
another through a bus, and “forming a loop with the main plate.”
Mathis discloses an amusement machine that comprises a main plate
(i.e., primary microcomputer 52) and a plurality of secondary plates (i.e.,
door interface microcomputer 54, hopper driver microcomputer 56, and reel
driver microcomputers 58a, 58b, 58c) interconnected through a bus (i.e., a
“serial bidirectional communications link”). Mathis also discloses that the
number of secondary plates (reel driver microcomputers) can be varied, e.g.,
to vary the number of reels.
Appellant does not dispute that Mathis discloses a main plate and a
plurality of secondary plates interconnected to one another through a bus
such that a loop is formed with the main plate. Appellant argues, however,
that Mathis does not disclose that “the number of secondary or peripheral
plates is variable” as recited in claim 1 (Appeal Br. 3). Appellant argues that
the invention of claim 1 “provides the possibility of varying the number of
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secondary or peripheral plates once the amusement machine is built” and
that Mathis “teaches providing different numbers of reels during the design
phase of the machine” (Appeal Br. 4). Appellant further argues that the
“present invention is particularly useful for amusement machines already
built and working, and in particular when it is necessary to change a
peripheral plate and for whatever reason the plate must be bought from a
new provider” because, “[i]n such a case, the system and the CPU do not
need to be reconfigured at all, despite the fact that the new plate has different
properties” (Reply Br. 1).
Appellant’s arguments are not persuasive. In accord with In re
Morris, claim 1 is given its broadest reasonable interpretation in view of the
Specification. The Specification does not define the term “variable” as
requiring that the peripheral components (secondary plates) can be changed,
after the claimed machine is completed, without affecting the CPU central
program (main plate). Giving the term “variable” its broadest reasonable
interpretation, one of skill in the art would interpret the term to require only
that the claimed machine is not limited to a set number of secondary plates.
Mathis’ machine can have three or more, and therefore a variable number,
of reel drivers (secondary plates).
To the extent that Appellant is arguing that Mathis does not anticipate
because “variable” requires variability “without needing to modify the CPU
base program” as recited in the preamble of the claim, in accord with Rowe
v. Dror, a statement of a purpose or intended use for an invention in the
preamble is not a claim limitation when the body of the claim recites a
structurally complete invention. Claim 1 recites a structurally complete
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invention in the body of the claim. The recitation in the preamble that the
amusement machine has “the purpose of allowing for the replacement of a
mechanism without needing to modify the CPU base program” is a
statement of the purposes of the structure recited in the claim’s body. It is
not itself a claim limitation.
Conclusions of Law
The evidence of record supports the Examiner’s conclusion that
Mathis discloses an amusement device in which “the number of secondary
or peripheral plates is variable, according to the diversity of mechanisms to
be controlled and the location thereof in the machine,” as required by claim
1.
OBVIOUSNESS I
Issue
The Examiner has rejected claims 7 and 8 under 35 U.S.C. § 103(a) as
being obvious in view of Mathis. The claims have not been argued
separately and therefore stand or fall together. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner finds that Mathis discloses the amusement machine of
independent claim 1, as discussed above, and that Mathis would have made
obvious the additional limitations of claims 7 and 8 (Answer 6). We agree
with the Examiner’s reasoning and conclusion.
Appellant does not dispute that Mathis would have suggested the
limitations added to claim 1 by claims 7 and 8, but contends that Mathis
does not disclose or suggest the invention of claim 1 (Appeal Br. 5). This
argument is not persuasive for the reasons discussed above.
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OBVIOUSNESS II
Issue
The Examiner has rejected claim 95 under 35 U.S.C. § 103(a) as being
obvious in view of Mathis and Gordon.
The Examiner finds that Mathis discloses a gaming device
architecture that “permits ‘a system peripheral to be redesigned to meet a
new requirement rather than a redesign of the entire primary
microcomputer,’” which “implies that when a new mechanism is
implemented into the system that the main controller is not redesigned or
change[d]” (Answer 7). The Examiner finds that Gordon discloses “a
similar[ly] structured system/device,” and discloses that the “serial
architecture allows reconfiguration of individual components into new game
configurations,” thus clearly indicating the modification of “data on a
respective individual peripheral controller/plate (meaning only on the
individual controller itself)” (id.). The Examiner concludes that it “would
have been obvious to one of ordinary skill in the art … to modify the gaming
device of Mathis with the reconfiguring concept of Gordon for purposes of
providing a more improved gaming system” (id.).
Appellant contends that the Examiner erred in finding Gordon to
suggest that reconfiguration is accomplished without modification of the

5 Claim 9 reads: “A multipurpose amusement machine according to claim
1, characterized in that when one of the mechanisms installed in the device
is replaced with a new mechanism, any modification of data needed for the
new mechanism takes place in a corresponding one of the peripheral plates
rather than in the CPU.”
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CPU because the reconfiguration “could just as well include both the
peripheral controller/plate and the CPU” (Appeal Br. 6).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that the cited references would have
suggested an amusement machine in which the replacement of a mechanism
with a new mechanism is accomplished without modification of data on the
CPU?
Additional Findings of Fact
10. Gordon discloses “a universal serial interconnection strategy
which allows individual internal gaming machine components to be
connected to a controller” (Gordon ¶ 0022).
11. Gordon discloses that “each of the … internal components
contains its own microprocessor or controller” (id. at ¶ 0040).
12. Gordon discloses that its
serial-linked architecture allows reconfiguration of individual
machine components into new game configurations with very
little effort. In addition to being individually controlled and
serial linked, each internal machine component has a pre-
programmed, globally unique identification number (GUIN)
built in. The central processor may thus detect, identify,
enumerate, authenticate and configure each of the individual
components. The overall game may thus be automatically
configured according to the particular mix of internal
components.
(Id.)
13. Gordon discloses that its serial-linked architecture is an
improvement over the interconnection design used by Mathis (id. at ¶¶ 7-8).
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Principles of Law
“[W]hen the question is whether a patent claiming the combination of
elements of prior art is obvious,” the answer depends on “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007).
The obviousness analysis “can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” Id. at
418.
Analysis
Claim 9 depends from claim 1, discussed above, and further requires
the amusement machine to be configured so that when one of the
mechanisms installed in the device is replaced with a new mechanism, any
modification of data needed for the new mechanism takes place in one of the
peripheral plates rather than in the CPU.
Mathis is discussed above. Gordon discloses a serial interconnection
system in which each gaming machine component has its own controller and
bears a globally unique identification number (GUIN) which allows the
central processor to detect, identify, and configure each of the components.
It would have been obvious to one of skill in the art to modify the Mathis
amusement device to include Gordon’s serial interconnection system so that
addition of a new component would only require the controller to detect,
identify, and configure the replacement component. Such a combination
would have been obvious because Gordon discloses that its serial
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interconnection system is an improvement on the connection system used by
Mathis.
Appellant contends that the Examiner erred in finding Gordon to
suggest that reconfiguration is accomplished without modification of the
CPU because the suggested reconfiguration “could just as well include both
the peripheral controller/plate and the CPU” (Appeal Br. 6).
This argument is not persuasive. Gordon teaches that the central
processor (CPU) detects, identifies, and configures each of the individual
components. We agree with the Examiner’s finding that Gordon is
reasonably interpreted to teach that the central processor, in configuring the
individual components, modifies the data in the components rather than in
the central processor. Appellant has pointed to no evidence that supports a
contrary conclusion.
Conclusions of Law
The evidence of record supports the Examiner’s conclusion that the
cited references would have suggested to one of ordinary skill in the art the
claimed amusement machine device in which the replacement of a
mechanism with a new mechanism is accomplished without modification of
data on the CPU.
SUMMARY
We affirm the rejection of claims 1-3, 5, and 6 under 35 U.S.C.
§ 102(b) based on Mathis, the rejection of claims 7 and 8 under 35 U.S.C.
§ 103(a) based on Mathis, and the rejection of claim 9 under 35 U.S.C.
§ 103(a) based on Mathis and Gordon.
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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