Ex Parte Rowe

Board of Patent Appeals and Interferences

Jun 30, 2008

09631855 (B.P.A.I. Jun. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte RICHARD ROWE
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Appeal 2007-1910
Application 09/631,855
Technology Center 3600
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Decided: June 30, 2008
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Before HUBERT C. LORIN, JENNIFER D. BAHR, and
ANTON W. FETTING, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Richard Rowe (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claims 1-22, 25, and 26.1 Claims 23 and 24 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

1 Our decision will make reference to the Appellant’s Appeal Brief (“Appeal
Br.,” filed Oct. 10, 2006), the Examiner's Answer (“Answer,” mailed Dec. 1,
2006) and to the Reply Brief (“Reply Br.,” filed Feb. 1, 2007).
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SUMMARY OF DECISION
We REVERSE.

THE INVENTION
The Appellant’s claimed invention is to a gaming method and system
for sorting and reconciling vouchers accepted by a gaming machine.
(Specification 4:2-3).
Claims 1 and 9, reproduced below, are representative of the subject
matter on appeal.
1. A method, implemented on a gaming system
including at least one gaming machine, of utilizing
a voucher in the gaming system comprising the
steps of:
issuing at least one cash voucher having a
particular cash value associated therewith;
accepting by said at least one gaming
machine said at least one cash voucher;
crediting said particular cash value to a
player of said at least one gaming machine;
generating a record regarding said at least
one accepted cash voucher,
storing said at least one cash voucher in said
at least one gaming machine;
retrieving one or more cash vouchers from
said at least one gaming machine; and
comparing information from said one or
more retrieved cash vouchers to information
regarding said at least one accepted cash voucher
contained in said record.

9. In a gaming system including at least one
gaming machine arranged to accept both bill
monies and cash vouchers and store accepted bill
monies and cash vouchers with one another, a soft
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Application 09/631,855

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count system for reconciling cash vouchers
accepted by said at least one gaming machine with
cash vouchers retrieved by said at least one gaming
machine comprising:
at least one data storage element for storing
data regarding accepted cash vouchers,
including a value of said accepted cash vouchers;
a sorting mechanism arranged to sort bill
monies and cash vouchers retrieved from said at
least one gaming machine, and
a scanner for reading information associated
with said cash vouchers.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Luciano
LeStrange
US 6,500,067 B1
US 5,470,079
Dec. 31, 2002
Nov. 28, 1995

The following rejection is before us for review:
1. Claims 1-22, 25, and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Luciano and LeStrange.

ISSUES
The issue is whether the Appellant has shown that the Examiner erred
in rejecting claims 1-22, 25, and 26 as unpatentable over Luciano and
LeStrange. The central issue in this appeal is whether the cited references
describe a machine that stores, retrieves, and reconciles cash vouchers.
Storing vouchers is particularly relevant to independent process claims 1 and
25 and machine claims 9 and 17. Claims 17 and 25 further include a storage
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container. Independent process claim 14 does not explicitly require a storing
step. However, all the independent claims 1, 9, 14, 17, and 25 include a
retrieving limitation.

FINDINGS OF FACT
We find that the following enumerated findings 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).
Claim construction
1. Various claims call for “storing” vouchers. All the claims call for
“retrieving” vouchers.
2. The Specification does not provide a specific definition for
“storing” and “retrieving.”
3. The ordinary and customary meaning of “store” is “to put aside, or
accumulate, for use when needed.” (See Webster’s New World
Dictionary 1322 (3rd Ed. 1988)(Entry 1. for “store.”)).
4. The ordinary and customary meaning of “retrieve” is “to get back;
recover” (See Webster’s New World Dictionary 1147 (3rd Ed.
1988)(Entry 1. for “retrieve”)).
The scope and content of the prior art
5. Luciano is directed to gaming machines that read vouchers.
6. LeStrange is directed to gaming machines comprising an
accounting system.
Any differences between the claimed subject matter and the prior art
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7. The difference between the claimed subject matter and the cited
prior art is that the claimed subject matter includes limitations to
storing and retrieving vouchers which, given their ordinary and
customary meaning, the prior art does not describe.
The level of skill in the art
8. Neither the Examiner nor the Appellant has addressed the level of
ordinary skill in the pertinent art of gaming machines using
vouchers. We will therefore consider the cited prior art as
representative of the level of ordinary skill in the art. See Okajima
v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he
absence of specific findings on the level of skill in the art does not
give rise to reversible error ‘where the prior art itself reflects an
appropriate level and a need for testimony is not shown’”) (quoting
Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158,
163 (Fed. Cir. 1985).
Secondary considerations
9. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
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1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, and (3) the level of skill in the art. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966). See also KSR, 127 S.Ct. at 1734 (“While the
sequence of these questions might be reordered in any particular case, the
[Graham] factors continue to define the inquiry that controls.”) The Court
in Graham further noted that evidence of secondary considerations “might
be utilized to give light to the circumstances surrounding the origin of the
subject matter sought to be patented.” 383 U.S. at 17-18.

ANALYSIS
The Appellant, in the Appeal Brief, argued that the Examiner failed to
show the storing and retrieving limitations of the claims. (App. Br. 8-12.)
The Examiner responded by arguing that the storing limitation was disclosed
in Luciano in the Abstract; Fig. 6; Fig. 9 (“Hold Voucher”); Fig. 10; and,
Fig. 5 (“Voucher/Currency Reader”) and the retrieving limitation was
disclosed in (a) Luciano because Luciano stores vouchers (Answer 13:
“since Luciano stores, it is obvious that Luciano retrieves”) and (b)
LeStrange, col. 2, line 39 – col. 3, line 5. (Answer 13 and 15-16.)
We have carefully reviewed the cited references and the figures and
passages the Examiner has referred to. We are unable to find any mention or
suggestion of storing and/or retrieving vouchers as those terms are used in
the claims, given their ordinary and customary meaning as they would be
interpreted by one of ordinary skill in the art. (See FF 3 and 4.)
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The Luciano disclosures referred to by the Examiner as showing
storing of vouchers describe reading the vouchers. They are held
momentarily so they can be read but they are not stored, and they are not
stored for later retrieval as required by the claims. Because we do not find
that Luciano describes storing the vouchers, the Examiner’s argument that
Luciano must then inherently disclose retrieving the vouchers necessarily
falls. As to LeStrange, the passage referred to by the Examiner as describing
retrieving vouchers discusses the prior art and an apparent requirement in the
industry to “retrieve” coupons from a currency box of gaming machines
equipped with coupon readers for later auditing. The retrieving that
LeStrange speaks to is more accurately a manual step of collecting coupons
discarded from the gaming machine that had earlier read them. The claimed
subject matter, by contrast, calls for the gaming machine to retrieve stored
vouchers (claims 1, 14, 17, and 25) accepted by that gaming machine for
later processing (claim 9: “sorting”) by that machine. LeStrange does not
describe retrieving the vouchers in the context of the claimed invention.
The decision of the Examiner is reversed.

CONCLUSIONS OF LAW
We conclude the Appellant has shown that the Examiner erred in
rejecting claims 1-22, 25, and 26 as unpatentable over Luciano and
LeStrange.
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DECISION
The decision of the Examiner to reject claims 1-22, 25, and 26 is
reversed.
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) (2007).

REVERSED

hh

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