10357681 (B.P.A.I. Jan. 20, 2011)

Ex Parte Rowe

Board of Patent Appeals and InterferencesJan 20, 2011

10357681 (B.P.A.I. Jan. 20, 2011)

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. 10/357,681 02/04/2003 Bruce Douglas Rowe 071855-00001 6170 86030 7590 01/20/2011 Douglas A. Scholer 7005 Eschol Ct. Wilmington, NC 28409 EXAMINER BUMGARNER, MELBA N ART UNIT PAPER NUMBER 3717 MAIL DATE DELIVERY MODE 01/20/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte BRUCE DOUGLAS ROWE ____________________ Appeal 2009-009347 Application 10/357,681 Technology Center 3700 ____________________ Before: WILLIAM F. PATE III, JENNIFER D. BAHR, and KEN B. BARRETT, Administrative Patent Judges. PATE III, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-009347 Application 10/357,681 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 3- 8. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to a slot machine. Claim 3, reproduced below, is illustrative of the claimed subject matter: 3. A slot machine adapted to receive and identify coins and gaming chips of different distinguishing features that are additionally configured for use on gaming tables, comprising: an acceptor portion adapted to receive the coins and gaming chips of different distinguishing features; a sorter portion adapted to authenticate and identify the coins and gaming chips of different distinguishing features received by the acceptor portion; a counter portion adapted to count the coins and gaming chips of different distinguishing features sorted by the sorter portion; a storing portion adapted to store the coins and gaming chips of different distinguishing features counted by the counter portion; a gaming sequence initiator electrically connected to the counter portion for initiating a gaming sequence resulting in a gaming operation; and a payout sequence initiator responsive to the gaming operation for initiating a payout. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: LeStrange Storch US 5,470,079 US 5,548,110 Nov. 28, 1995 Aug. 20, 1996 Enders2 DE 19512878 Nov. 9, 1995 2 The Examiner and the Appellant refer to this reference by the name of the agent of record rather than by the first named inventor. The first named is Appeal 2009-009347 Application 10/357,681 3 REJECTIONS Claims 3-8 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over LeStrange, Enders and Storch. Ans. 3. FINDINGS OF FACT 1. The term “coin” refers to legal tender. Spec. 4:16-17. 2. The term “poker chips” refers to chips which are produced by the operator of the gaming facility or casino. Spec. 4:20-21. 3. The Specification further provides that: Authentication of the chips can be by a variety of different mechanisms. The chips can be identified by color, size, weight as well as other identifying marks, including holograms, microparticles and the like to provide for the authentication of chips. This is standard technology and well within the scope of those skilled in the art. Spec. 6:15-19. 4. LeStrange discloses a gaming machine 10 that can be configured to accept cash in coin or other forms and items of monetary value in forms other than cash. Col. 4, l. 64 - col. 5, l. 5. 5. Enders discloses a gaming machine that can accept both coins and chip money. Chip money has a size and shape similar to the accepted coins and contains a microchip storing a credit balance. Pg 4:5-8,15-17; 5:19- 23; figs. 1, 2. 6. Storch teaches that one benefit of the disclosed bar coded chips is that they enable casinos to provide slot machine acceptors for table game chips. Col. 128, ll. 10-23. Mike Brodkorb. To maintain clarity and consistency throughout the record, Appeal 2009-009347 Application 10/357,681 4 ANALYSIS The use of gaming chips in addition to coins in a gaming machine involves the simple substitution of the known technique of using gaming chips in a gaming machine, as demonstrated by Enders and Storch (See facts 5 and 6), for the other forms and items of monetary value used in LeStrange’s device (See Fact 4), in order to achieve the predictable result of encouraging more users, and therefore would have been obvious to one having ordinary skill in the art. Independent claims 3 and 6 are the only claims argued under separate headings. Appellant advances essentially the same arguments regarding both claims. Cf. Br. 5-7 and 7-8. Appellant argues that no single reference discloses a single gaming machine that can accept coins and gaming chips. Br. 4. Firstly, the test for obviousness is not whether the claimed invention is expressly suggested in any one or all of the references, but whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). Secondly, this argument is premised on Appellant’s contention that Enders’ “false coin” or “chip money” is really a smartcard and not a “gaming chip.” Br. 6-7. Appellant has not established that the term “gaming chip” should be read to exclude Enders’ chip money because Enders’ chip money contains a microchip with a stored credit balance. See Fact 5. Appellant’s usage of the term “chips” in the Specification does not require such an exclusion. See, e.g., Fact 2. The list of authentication examples provided in the Specification is open ended and does not preclude the use of a microchip. Fact 3. the reference is referred to as “Enders” herein. Appeal 2009-009347 Application 10/357,681 5 Furthermore, even were we to accept Appellant’s contention that Enders’ chip money is not reasonably read as a “gaming chip,” Storch teaches the use of “table game chips,” clearly of the type contemplated by Appellant, for use in a slot machine. Fact 6. We also cannot agree with Appellant’s final argument that Storch would have led one of ordinary skill in the art away from using cash. Br. 7. Storch may discuss the advantages of his system as compared to cash, but in light of the widespread use of cash, or “coin” as used by Appellant (see Fact 1), in gaming machines, one of ordinary skill in the art would have found it obvious to incorporate a chip accepting portion in addition to, rather than as a replacement of, a cash accepting portion. It at least would have been obvious to try to design a machine accepting multiple forms of payment—a technique demonstrated in both LeStrange and Enders. Facts 4 and 5. DECISION For the above reasons, the Examiner’s rejection of independent claims 3 and 6, and dependent claims 4, 5, 7 and 8, is sustained. 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). AFFIRMED nlk Douglas A. Scholer 7005 Eschol Ct. Wilmington NC 28409