Ex Parte Romano

Board of Patent Appeals and Interferences

Dec 6, 2011

10436040 (B.P.A.I. Dec. 6, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES P. ROMANO
___________

Appeal 2010-000753
Application 10/436,040
Technology Center 3700
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-000753
Application 10/436,040

2
STATEMENT OF THE CASE
James P. Romano (Appellant) seeks our review under 35 U.S.C. § 134
(2002) of the rejection of claims 1-6 and 9-14. We have jurisdiction under
35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM. 1

THE INVENTION
This invention “relates to the electronic generation of one or more
numbers in a chance-related manner.” Spec. par., [01].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A handheld device for generating one or more
numbers, said device comprising:
a) an electronic circuit including an electrically
powered oscillator having a base frequency, a
counter driven by said oscillator, and a
microcontroller having a memory wherein is stored
at least one set of parametric game data including
at least identification of a predetermined set of
numbers which may be generated;
b) means on said device manually operable by a
user thereof for causing said counter to begin a
program count function, continuously and
repeatedly counting through said predetermined set

1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed Nov. 10, 2008) and the Examiner’s Answer (“Ans.,” mailed May 12,
2009).

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Application 10/436,040

3
of numbers, and for interrupting said program
count function at a time of the user’s choosing; and
c) a detuning means operable to vary said base
frequency, wherein said detuning means is
responsive to a biometric parameter of a user
holding said handheld device;
d) indicating means on said device for informing
the user of the number in said counter at the
moment of interrupting said program count
function.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Huang
Blume
Kreisner
Tamori
US 4,060,242
US 4,153,933
US 4,665,502
US 2003/0072475 A1
Nov. 29, 1977
May 8, 1979
May 12, 1987
Apr. 17, 2003

The following rejections are before us for review:
1. Claims 1-6 and 9 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Kreisner and Tamori.
2. Claims 10 and 11 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Kreisner, Tamori and Huang.
3. Claims 12-14 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Kreisner, Tamori, and Blume.
Appeal 2010-000753
Application 10/436,040

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ISSUE
The issue is whether claims 1-6 and 9 are unpatentable under 35
U.S.C. § 103(a) over Kreisner and Tamori. Specifically, the issue is whether
one of ordinary skill in the art would have been led by Kreisner and Tamori
to a detuning means that is responsive to a biometric parameter. The
rejection of claims 10 and 11 under 35 U.S.C. §103(a) over Kreisner,
Tamori and Huang and the rejection of claims 12-14 under 35 U.S.C.
§103(a) as being unpatentable over Kreisner, Tamori, and Blume also turn
on this issue.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. The Appellant state that the corresponding structure of the claimed
detuning means is “shown in Figure 1A as reference numeral 44.”
Br. 8.
2. The Specification states:
[S]ensor 44 may be in the nature of a “bio-
feedback” touchpad which is contacted by the
user’s hand, thumb or finger(s) when the device is
held in the hand and operated. The reactance of
the user’s hand provides an electrical input to the
circuit, slowing the oscillator frequency
proportionately to the value of the signal
(reactance).
Spec. para., [27].
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3. Tamori describes using a sheet antenna (1b) to introduce a
reactance component to a circuit through contact of a finger with
the sheet antenna and using this to vary an oscillation frequency of
a transmitter. Tamori [0040]-[0041].
4. The Examiner states: “The advantage of [the combination of
Kreisner and Tamori] would be to provide security for the central
random number generation by using biometric authentication of
users of the lottery number generator and to provide non-
duplicatable physical parameters for securely generating random
frequencies, and therefor random numbers.” Ans. 6. See also Ans.
5 and 11-12.
5. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.

ANALYSIS
The rejection of claims 1-6 and 9 under 35 U.S.C. §103(a) as being
unpatentable over Kreisner and Tamori

The Appellant argues claims 1-6 and 9 as a group. Br. 10-11. We
select claim 1 as the representative claim for this group, and the remaining
claims 2-6 and 9 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii)
(2010).
The Appellant makes two arguments to traverse the rejection of claim
1 under 35 U.S.C. § 103(a): 1) that neither Kreisner nor Tamori describe a
random counter detuning means that is responsive to a biometric parameter
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of a user (Br. 10-11) and 2) that the Examiner has failed to articulate an
acceptable rationale to combine Kreisner and Tamori (Br. 11).
First, the Appellant argues that neither Kreisner nor Tamori describe a
random counter detuning means that is responsive to a biometric parameter
of a user. Br. 10-11. We note that both the Appellant and the Examiner
agree that this limitation is written in means-plus-function format and that 35
U.S.C. § 112, sixth paragraph, applies. See Br. 7-8 and Ans. 9. Therefore,
the appropriate issue is whether one of ordinary skill in the art would have
been led by the teachings of Kreisner and Tamori to the corresponding
structure disclosed in the Specification or an equivalent. 35 U.S.C. § 112,
sixth paragraph. According to the Appellant, the corresponding structure is
sensor 44, which slows the frequency of an oscillator in proportion to the
reactance of a user’s hand. FF 1-2. The Examiner relies upon the sheet
antenna 1b of Tamori (see FF 3) to teach this device. See Ans. 9, see also
Ans. 5. The Appellant’s argument does not address whether the sheet
antenna 1b teaches this corresponding structure or an equivalent, but instead
focuses on Tamori’s biometric sensor, which was not relied upon by the
Examiner. See Br. 10-11. Therefore, we find Appellant’s argument
unpersuasive.
Second, the Appellant argues that the Examiner has “failed to identify
or apply any of the acceptable rationales from KSR” and, therefore, has
failed to establish a prima facie showing of obviousness. Br. 11.
We are not persuaded by the Appellant’s argument. The Examiner
has articulated a reason with rational underpinnings (see KSR Int'l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006)) to support the combination and to establish a prima
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facie showing of obviousness. See FF 4. The Appellant does not address
the Examiner’s reasoning in their arguments (see Br. 11) or provide any
evidence of secondary considerations (FF 5) to overcome the Examiner’s
prima facie showing. Therefore, we find this argument unpersuasive.
We affirm the rejection of claims 1-6 and 9 under 35 U.S.C. § 103(a)
as being unpatentable over Kreisner and Tamori.

The rejection of claims 10 and 11 under 35 U.S.C. §103(a) as being
unpatentable over Kreisner, Tamori and Huang and the rejection of claims
12-14 under 35 U.S.C. §103(a) as being unpatentable over Kreisner,
Tamori, and Blume

We also shall affirm the standing 35 U.S.C. § 103(a) rejections of
dependent claims 10-14 as being unpatentable over the prior art since the
Appellant has not challenged such with any reasonable specificity, thereby
allowing claims 10-14 to stand or fall with parent claim 1 (see In re Nielson,
816 F.2d 1567, 1572 (Fed. Cir. 1987)).

DECISION
The decision of the Examiner to reject claims 1-6 and 9-14 is
affirmed.
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)(1)(iv) (2010).
AFFIRMED

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