Ex Parte Walker et al

Board of Patent Appeals and Interferences

Mar 1, 2010

10171495 (B.P.A.I. Mar. 1, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JAY S. WALKER, JAMES A. JORASCH,
SCOTT T. FRIESEN, GEOFFREY M. GELMAN,
NORMAN C. GILMAN, and STEVEN M. SANTISI
__________

Appeal 2009-004805
Application 10/171,495
Technology Center 3700
__________

Decided: March 1, 2010
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Before TONI R. SCHEINER, RICHARD M. LEBOVITZ and
JEFFREY N. FREDMAN, Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
28-72, 74, and 76-80, all the claims pending in the application. The claims
have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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STATEMENT OF THE CASE
The Specification discloses a method, a system, a gaming device, and
computer readable media designed to “allow casinos and other entertainment
providers to provide players with means to directly mitigate player losses
and minimize player frustration” (Spec. 3: 23-25) by offering consolation
prizes “based upon gambling losses . . . as opposed to awarding comps based
upon wager amounts” (id. at 2: 39-40). The consolation prizes are
associated with third parties, e.g., merchants, who are charged a fee for a
prize offered to and/or accepted by a player (id. at 15: 1-9), in the
expectation that “players who receive an introductory sample of a product or
service as a consolation prize may be inclined to continue their use of the
merchants’ product or service . . . [which] may result in a low cost of
customer acquisition for participating third-party merchants” (id. at 4: 5-8).
The method may be performed on a system that includes a controller
under the control of a casino, in communication with one or more gaming
devices, third party merchant terminals and/or redemption terminals (Spec.
6: 18-23). However, the Specification teaches that “in some embodiments,
none of the above described system is required” and the method “may be
practiced using a conventional player/customer list” (id. at 17: 19-27).
Claims 28-72, 74, and 76-80 are pending and on appeal, and stand
rejected as follows:
• Claims 28-72, 74, and 76-79 under 35 U.S.C. § 103(a) as
unpatentable over Cook (US Patent 5,766,075, June 16, 1998) and
Paige (US Patent 5,941,772, August 24, 1999).

• Claim 80 under 35 U.S.C. § 103(a) as unpatentable over Cook, Paige,
and Kelly (US Patent 6,015,344, January 18, 2000).

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Appellants don’t present separate arguments for the claims on appeal,
therefore, we select claim 28 as representative of the subject matter on
appeal (37 C.F.R. § 41.37(c)(1)(vii) (2006)):1
28. A method comprising:
receiving value from a player at a gaming device;
determining a loss amount for the player;
determining if the loss amount falls within a particular loss range
among a plurality of predefined loss ranges;
associating the particular loss range with a consolation prize tier, each
consolation prize tier including at least one prize;
selecting an offer, based upon the loss amount, from a plurality of
offers, each offer being associated with at least one third party, in which the
offer indicates at least one prize from the consolation prize tier;
presenting the player with the selected offer;
receiving acceptance of the selected offer from the player;
determining an amount of payment that is due from the third party
based on the selected offer;
charging the third party for the payment; and
transferring the acceptance of the selected offer to the third-party.

ISSUE
The issue raised by both of the obviousness rejections is whether
Appellants have established that the Examiner erred in concluding that a
method and system for offering consolation prizes based on the amount of a
player’s gambling losses, where a third party is charged a fee for the
opportunity to offer the consolation prizes to the player, would have been
obvious over the teachings of Cook and Paige.

1 We note that Appellants single out claims 74, 76, and 77 as reciting “a
respective system, computer readable media and gaming device configured
to perform the method described in claim 28” (App. Br. 25), but don’t
present separate arguments for their patentability (“A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim.”) 37 C.F.R. § 41.37(c)(1)(vii) (2006).
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FINDINGS OF FACT
FF1 Cook discloses a method in which a casino offers a patron, e.g.,
a slot machine player, a “bet guarantee . . . designed to compensate the
patron for his actual losses during at least some fixed time interval of play”
(Cook, col. 9, ll. 62-64). In other words, Cook discloses offering a player a
consolation prize based on gambling losses.
FF2 “Patron bet tracking is done using identity cards issued to the
patrons, . . . [and] encoded with patron information . . . Individual gaming
machines are fitted with card readers that read the identity card” (Cook, col.
2, ll. 8-12). “[I]nformation including the amount the patron won or lost,
[and] the amounts bet . . . is tracked” (id. at col. 2, ll. 16-18).
FF3 Paige discloses a “method directed to exploiting the activity of
slot machine wagering for commercial advertising purposes and/or for
dispensing of advertising, commercial or promotional merchandise” (Paige,
col. 2, ll. 17-20).
FF4 Essentially, a third party company seeking to advertise a
product or logo enters into an agreement with a slot machine advertising
agency; the advertising agency, in turn, enters into an agreement with a
casino to place the company’s advertising on the casino’s slot machines
(Paige, col. 4, l. 61 to col. 5, l. 9). “Besides offering fascias as an
advertising venue, the jackpot and/or payoff symbols themselves are
replaced with an advertiser’s product identity or logo” (Paige, col. 2, ll. 21-
23), and “[t]he casino earns advertising revenue from the paid
advertisements” (id. at. col. 5, ll. 1-2).
FF5 In addition, “a player who gambles a predetermined amount of
money in a given slot machine . . . earns a number of merchandise points
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and/or complimentary ‘comp’ coupons exchangeable for commercial or
promotional merchandise associated with the advertising logos . . . placed on
[the] machine” (Paige, col. 4, ll. 11-16).
FF6
Since casinos often offer discounts, complementary
coupons called “comps” and other incentives for casino
members; casino members’ accounts are tracked by the casino
by use of data collected from member cards having encoded,
machine readable gambling information data, which is collected
in computer files, and is accumulated from and based upon
actual user gambling play.

(Paige, col. 4, ll. 56-60.)
FF7 “The slot machine advertising agency gains an agreement from
the casino to track activity on the advertising machines via data collection
relative to the use of casino [member] cards . . . This data is of interest to the
company” seeking to advertise its product (Paige, col. 5, ll. 15-19). The data
is also used “to help create appropriate promotional tie-ins” (id. at col. 5, ll.
30-32).
PRINCIPLES OF LAW
“The obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles and the explicit
content of issued patents.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419
(2007).
“In many fields it may be that there is little discussion of obvious
techniques or combinations, and it often may be the case that market demand
. . . will drive design trends.” Id. at 419. “[T]he analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
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claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 418. “Rigid
preventative rules that deny factfinders recourse to common sense . . . are
neither necessary under our case law nor consistent with it.” Id. at 421.
ANALYSIS
Claims 28-72, 74, and 76-79
We find no error in the Examiner’s conclusion that the claimed
invention would have been obvious over the teachings of Cook and Paige,
given Cook’s description of offering a bet guarantee, i.e., a consolation
prize, to a player based on the player’s gambling losses (FF1), and Paige’s
teaching that information pertaining to casino members gathered by the
casino via its member cards is of interest to a company which advertises its
products or logo through the casino, and which offers its commercial or
promotional merchandise to individual players based on earned points (FF5,
FF6, FF7).
Appellants contend that Cook’s offer of a bet guarantee doesn’t
involve a third party at all, while Paige’s casino “only receives non-player
revenue via paid advertising . . . from a third party advertiser” (App. Br.
21). Appellants contend that “[t]he third party advertiser of Paige may
provide prizes that may be redeemed via promotional points . . . but the third
party advertiser is never charged by the casino for such a giveaway” (id.).
Thus, Appellants contend, neither Cook nor Paige “show[s] any embodiment
in which a third party (i.e., not the party receiving value from the player and
performing the steps of claim 28) would be charged for an amount of
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payment based on an acceptance2 of an offer that indicates a prize” (App. Br.
21).
These arguments are not persuasive. It’s true that Paige discloses a
casino charging a third party for paid advertisements (i.e., for placing a third
party’s logo on the casino’s slot machines), but doesn’t explicitly disclose
the casino charging the third party a fee for the opportunity to offer
promotional merchandise to the casino’s patrons. However, Paige teaches
that the data obtained through the casino’s incentive programs is of interest,
and therefore of value, to the third-party company offering promotional
material to the casino’s patrons. Paige also teaches that such data is used by
the third-party advertiser to help create promotional tie-ins (FF7). Thus, the
third-party who enters into an agreement with an advertising agency, who in
turn enters into an agreement with the casino, is provided with the
opportunity to offer promotional merchandise to patrons. The person of
ordinary skill in the art “is also a person of ordinary creativity, not an
automaton” (KSR, 550 U.S. at 421), and it would have been obvious for one
of ordinary skill, i.e., a casino operator, to have directly charged the third-
party company a fee - essentially a finder’s fee - for the opportunity to offer
promotional merchandise to players identified through the casino’s member

2 Strictly speaking, claim 28 doesn’t require charging the third party based
on acceptance of an offer. Rather the claim encompasses charging the third
party “based on the selected offer,” which is, in turn, “based upon the loss
amount.” This is consistent with the Specification, which indicates that a
third party merchant may be charged a fee for a consolation prize merely
offered to a player, or a fee for a consolation prize offered to and accepted
by a player (Spec. 15: 1-9).
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incentive programs, in addition to charging the third-party company for
fascia advertising.
Claim 80
The Examiner rejected claim 80, which depends indirectly from claim
28, as unpatentable over Cook, Paige, and Kelly (Ans. 6-7). Appellants
contend that “[t]he deficiencies of Cook and Paige with respect to claim 28
are described in detail above . . . [and] Kelly does not cure these
deficiencies” (App. Br. 25).
Appellants’ argument with respect to claim 80 is not persuasive for
the same reasons discussed above.
CONCLUSIONS OF LAW
Appellants have not established that the Examiner erred in concluding
that a method and system for offering consolation prizes based on the
amount of a player’s gambling losses, where a third party is charged a fee
for the opportunity to offer the consolation prizes to the player, would have
been obvious over the teachings of Cook and Paige.

SUMMARY
• The rejection of claims 28-72, 74, and 76-79 under 35 U.S.C. §
103(a) as unpatentable over Cook and Paige is affirmed.

• The rejection of claim 80 under 35 U.S.C. § 103(a) as unpatentable
over Cook, Paige, and Kelly is affirmed.

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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)(1)(iv)(2006).

AFFIRMED

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