Ex Parte PececnikDownload PDFPatent Trial and Appeal BoardApr 30, 201512752790 (P.T.A.B. Apr. 30, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/752,790 04/01/2010 Joze Pececnik 333.013US1 3230 97462 7590 05/01/2015 Mark A. Litman & Associates, P.A. 7001 Cahill Road, Ste. 15A Edina, MN 55439 EXAMINER MOSSER, ROBERT E ART UNIT PAPER NUMBER 3714 MAIL DATE DELIVERY MODE 05/01/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOZE PECECNIK ____________ Appeal 2013-002469 Application 12/752,790 Technology Center 3700 ____________ Before JENNIFER D. BAHR, LYNNE H. BROWNE, and ANNETTE R. REIMERS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Joze Pececnik (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject (1) claims 33, 37, 40, and 42 under 35 U.S.C. § 112, second paragraph, as indefinite; (2) claims 28–31 and 33–40 under 35 U.S.C. § 103(a) as unpatentable over Lindo (US 6,575,834 B1; iss. June 10, 2003), Eman (US 5,588,650; iss. Dec. 31, 1996), and Levy (US 4,337,945; iss. July 6, 1982); and (3) claims 32, 41, and 42 under 35 U.S.C. § 103(a) as unpatentable over Lindo, Eman, Levy, and Bonito (US 5,931,471; iss. Aug. 3, 1999). Claims 1–27 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2013-002469 Application 12/752,790 2 CLAIMED SUBJECT MATTER The claimed subject matter relates to “an automatic electro- mechanical and video table game that can [be] remotely played by receipt of a live video feed of table game play with table game results.” Spec. para. 4; Figs. 1, 5. Claims 28, 39, and 41 are independent. Claim 28 is illustrative of the claimed subject matter and recites: 28. An electro-mechanical automatic gaming machine system comprising: a video camera; an electro-mechanical automatic gaming machine adapted to: mechanically generate an analog result of game play in an unattended manner without any player control and electronically convert the analog result into a digital result; and transmit a live video feed of the game play recorded by the video camera to a plurality of remote clients operated by a plurality of players to allow the plurality of remote clients to place wagers on a future result of the game play. Appeal Br. 16, Claims App. (emphasis added).1 1 The reproduction of claim 28 in the Claims Appendix contains an error. Claim 28 in the Claims Appendix incorrectly recites “mechanically generate an analog result of game play in an automatic manner,” instead of “unattended manner.” See Response After Final Act., Amendments to the Claims, 1 (filed Jan. 13, 2011); see also the most recent claims amendment filed (i.e., Response to Non–Final Act., Amendments to the Claims, 1 (filed Sept. 27, 2011)). For purposes of our review, we consider “unattended manner” and “automatic manner” to be synonymous. See Final Act. 4–5 (mailed Dec. 22, 2011); Appeal Br. 12–13. Appeal 2013-002469 Application 12/752,790 3 ANALYSIS Indefiniteness Claims 33, 37, 40, and 42 Each of independent claims 28, 39, and 41 calls for mechanically generating/producing an analog result “without any player control.” See Appeal Br. 16–20, Claims App. Each of dependent claims 33, 37, and 42 calls for the gaming device to be “interactively played” by a remote client. See id. at 17–18, 20, Claims App.2 Claim 40 calls for the gaming device to be “played interactively” by a remote client. See id. at 19, Claims App. The Examiner determines that [i]t is unclear how a game can be “without any player control” [as recited in independent claims 28, 39, and 41] and at the same time be “interactively played” [as recited in dependent claims 33, 37, 40, and 42]. Alternatively stated, when the player has no influence over the game outcome then the player cannot by a plain and ordinary meaning of such be interactively playing a game. Final Act. 2. We agree with Appellant that the phrases “without any player control” and “interactively played” “do not refer to the same actions and therefore are not in conflict.” Reply Br. 4; Appeal Br. 11. We further agree with Appellant that one of ordinary skill in the art would understand that (1) the 2 The reproduction of claim 42 in the Claims Appendix contains an error. Claim 42 in the Claims Appendix incorrectly depends from claim 39, instead of claim 41, as most recently amended. See Response to Non–Final Act., Remarks, 1; id. at Amendments to the Claims, 4. Appeal 2013-002469 Application 12/752,790 4 phrase “interactively played” refers to “wagering, cashing out, accounting functions, entering the game events, and other conventional player interactions with the gaming device”; and (2) the limitation mechanically generating/producing an analog result “without any player control” “does not in any way imply or require that the player does not perform any tasks with respect to any other game element, including indicating a wager.” See Reply Br. 4–5; see also Appeal Br. 11; Final Act. 2; Spec. paras. 36, 38, 52, 61. Moreover, the Examiner states that “[f]or the purposes of claim interpretation ‘interactively played’, has been understood [to] define the interactive utilization of the gaming system (i.e.[,] allowing the player to select a wager and receive the result of such).” Final Act. 2; see also Spec. paras. 36, 38, 52, 61. If the scope of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not indefinite. Energizer Holdings Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1369 (Fed. Cir. 2006). For the above reasons, the phrase “interactively played” in claims 33, 37, and 42 and “played interactively” in claim 40 do not render the scope of claims 33, 37, 40, and 42 unclear. Accordingly, we do not sustain the Examiner’s rejection of claims 33, 37, 40, and 42 as indefinite. Obviousness over Lindo, Eman, and Levy Claims 28–31 and 33–40 Independent claim 28 calls for “an electro-mechanical automatic gaming machine adapted to: mechanically generate an analog result of game play in an automatic manner without any player control.” Appeal Br. 16, Appeal 2013-002469 Application 12/752,790 5 Claims App. The Examiner finds that Lindo teaches the electro-mechanical automatic gaming machine system of claim 28 except “Lindo does not teach automating the manual activities of the croupier to operate the roulette reel in an unattended manner.” Final Act. 4. The Examiner finds that “Eman teaches the operation of a roulette game in an unattended manner through the use of an electromechanical gaming machine that generates analog game results and converts the analog results to a digital result.” Id. (citing Eman, Abstract; Col. 2, ll. 6–27; Figs. 3, 4, Element 30). The Examiner concludes that [i]t would have been obvious to one of ordinary skill in the art at the time of invention to have automated the manual operation of the roulette wheel of Lindo with the automated roulette wheel and associated elements of Eman because such would have represented the automating of a known manual activity (MPEP 2144.04.III) and provided for the benefit of reducing operator cost by eliminating the need to pay personnel (croupier) to operate the gaming device croupier. Id. at 4–5. The Examiner further finds that the combined teachings of Lindo and Eman “[do] not teach explicitly baring all player control.” Id. at 5. The Examiner finds that “Levy teaches the use of an automated roulette wheel wherein the player and operator interaction with the wheel is removed to prevent user or operator influence over the outcome of the game.” Id. (citing Levy, Abstract; Col. 1, ll. 26–39; Fig. 1); see also id. at 9. The Examiner further concludes that it would have been obvious “to have incorporated [the] automated roulette wheel of Levy in the combination of Lindo & Eman in order to prevent user or operator influence over the outcome of the game as taught by Levy.” Id. Appeal 2013-002469 Application 12/752,790 6 Appellant contends that [not] one of the three references or the combination of references provides evidence of a fully automatic analog result generating gaming event. . . . Each of the three references requires a player/dealer to actively participate in the generation of the analog result. The player casts the dice or the dealer spins the wheel and drops the ball. Those steps are not part of “. . .an automatic manner. . .” of generating an analog game result. None of the three references evidences an automatic gaming system. Appeal Br. 12. In response, the Examiner states that the rejection of record incorporates the reference of Eman for teaching the feature of “. . . mechanically generate an analog result of game play in an automatic manner without player control and electronically convert the analogue result into a digital result . . .” It is further noted that . . . Eman teaches than the automated gaming device as cited in the rejection of record and directed specifically to filling “. . . a need for a roulette game which can be operated automatically, to reduce the expense of hiring and training skilled operators” specifically presented in column 1 at Lines 51-53 and expanded on at column 1 at line 66 through column 2 at line 53. Ans. 4; see also id. at 5. Appeal 2013-002469 Application 12/752,790 7 We disagree with the Examiner’s position for the following reasons. Eman discloses that there is a need for a roulette game which can be operated automatically, to reduce the expense of hiring and training skilled operators. In addition, if players were permitted more interaction, they would be more interested in the game, and would therefore play more often and for longer periods. Thus, there is a need for a roulette game that permits the players to actively participate in the game by, for instance, controlling the launching of the ball onto the spinning roulette wheel. Eman, col. 1, ll. 50–58 (emphasis added). Eman further discloses that “[b]all launch control means, interconnected to the processor, allows the player to control the time of release of the ball by the ball launching mechanism into the roulette wheel and control the ball’s relative velocity at its release into the roulette wheel.” Id. at col. 2, ll. 34–38 (emphasis added); see also Response to Non–Final Act., Remarks, 2. Although Eman discloses that the roulette game can be operated automatically (see Ans. 4), Eman also permits active player participation (i.e., player control). Thus, we do not agree with the Examiner that “Eman clearly teaches the feature of ‘. . . mechanically generate an analog result of game play in an automatic manner without player control.’” See Ans. 5 (emphasis omitted); see also id. at 4. Regarding the Levy reference, as pointed out by Appellant, “Levy has a dealer control the spinning of the wheel.” See Appeal Br. 12 (emphasis omitted).3 As such, Levy fails to disclose an automatic manner of 3 Levy discloses that “[n]ormally, the guide tubes rest on the track until the dealer activates the system, which randomly selects a plunger and the Appeal 2013-002469 Application 12/752,790 8 generating an analog game result. Moreover, the portions of Levy cited by the Examiner (i.e., Abstract; Col. 1, ll. 26–39) fail to disclose “removal of player control in game play,” as the Examiner proposes. See Final Act. 9; see also id. at 5.4 Similar to independent claim 28, independent claim 39 calls for a roulette table game system adapted to, in an unattended manner: “produce an analog result of play of the roulette-style game without any player control.” Appeal Br. 18–19, Claims App. The Examiner relies on the same unsupported findings discussed above in reference to claim 28. See Final Act. 6–8. Consequently, based on the foregoing reasons, the Examiner does not establish a prima facie case that the combined teachings of Lindo, Eman, and Levy render obvious the electro-mechanical automatic gaming machine system or the roulette table game system of respective independent claims 28 and 39. Accordingly, we do not sustain the Examiner’s rejection of independent claims 28 and 39 and their respective dependent claims 29–31, 33–38, and 40 as unpatentable over Lindo, Eman, and Levy. propelling force and the ball is displaced onto the track, at which point the jack is automatically activated and the guide tubes are vertically displaced from the track to allow the ball to travel around the track uninterrupted. As soon as the ball leaves the chosen guide tube, the dealer spins the wheel head in the opposite direction to the ball travel.” Levy, col. 1, l. 66 – col. 2, l. 6 (emphasis added); see also Appeal Br. 12–13. 4 Levy’s Abstract merely discusses the gaming apparatus. Column 1, lines 26–39, of Levy merely discusses dealer control. Appeal 2013-002469 Application 12/752,790 9 Obviousness over Lindo, Eman, Levy, and Bonito Claims 32, 41, and 42 Similar to independent claim 39, independent claim 41 calls for a dice game table adapted to, in an unattended manner: “produce an analog result of play of the dice-style game at the dice table without any player control.” Appeal Br. 19–20, Claims App. Claim 32 depends from claim 28. See id. at 17, Claims App. Claim 42 depends from claim 41. See id. at 20, Claims App. The Examiner relies on the same unsupported findings discussed above in reference to claims 28 and 39. See Final Act. 8. The Examiner does not rely on Bonito to remedy the deficiencies of Lindo, Eman, and Levy. Accordingly, for similar reasons as discussed above, we do not sustain the Examiner’s rejection of claims 32, 41, and 42 as unpatentable over Lindo, Eman, Levy, and Bonito. DECISION We REVERSE the decision of the Examiner to reject claims 28–42. REVERSED hh Copy with citationCopy as parenthetical citation