Ex Parte Walker et alDownload PDFBoard of Patent Appeals and InterferencesMar 1, 201010171495 (B.P.A.I. Mar. 1, 2010) Copy Citation 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 __________ 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. Appeal 2009-004805 Application 10/171,495 2 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). Appeal 2009-004805 Application 10/171,495 3 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). Appeal 2009-004805 Application 10/171,495 4 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 Appeal 2009-004805 Application 10/171,495 5 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 Appeal 2009-004805 Application 10/171,495 6 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 Appeal 2009-004805 Application 10/171,495 7 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). Appeal 2009-004805 Application 10/171,495 8 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. Appeal 2009-004805 Application 10/171,495 9 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 dm K&L GATES LLP P.O. BOX 1135 CHICAGO, IL 60690 Copy with citationCopy as parenthetical citation