Ex parte Weinberger

Board of Patent Appeals and Interferences

Apr 30, 1998

08575963 (B.P.A.I. Apr. 30, 1998)

Application for patent filed December 20, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte WILLIAM D. WEINBERGER

_____________
Appeal No. 97-4173
Application 08/575,9631
______________
ON BRIEF
_______________
Before CALVERT, STAAB and CRAWFORD, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
Appeal No. 97-4173
Application 08/575,963
Our understanding of this reference is derived from a2
translation prepared for the PTO, a copy of which is enclosed.
References herein to pages and lines of the reference are to
pages and lines of the translation.
2
DECISION ON APPEAL
This is an appeal from the final rejection of claims
1, 3 and 5, all the claims remaining in the application.
The subject matter in issue concerns an apparatus
for receiving and crushing used beverage cans. In order to
encourage use of the machine, each time a “valid” (e.g.,
empty, nonmagnetic) can is deposited, a game similar to a slot
machine is activated, and the machine prints out a coupon for
purchasing a product, the value of the coupon depending on the
outcome of the game. The claims on appeal are reproduced in
appellant’s brief, except that, as pointed out by the exam-
iner, claim 3 is dependent on claim 1, not on cancelled claim
2.
The references applied in the final rejection are:
Wilhelm 5,346,048 Sept. 13,
1994
Japanese Kokai 04-370,896 Dec. 24, 19922
(Fukuda)
Appeal No. 97-4173
Application 08/575,963
3
Claims 1, 3 and 5 stand finally rejected as unpat-
entable over Fukuda in view of Wilhelm, under 35 U.S.C. § 103.
The basis of the rejection is stated on page 4 of
the examiner’s answer as follows:
[Fukuda] shows a can collecting apparatus
with a gaming apparatus 13, 19 and a de-
flector plate at 4 of Fig. 3 which is part
of the
can identifying means 9, the deflector
plate moves to a first position to send the
valid cans to the spaced can crusher 10 or
to a second position to return invalid cans
to discharge chute 15. [Fukuda] does not
show dispensing coupons. Wilhelm '048
shows a similar can redemption apparatus
with a gaming apparatus 12 which delivers
winnings as prizes, stamps or coupons, see
col. 3, lines 35-42. It would have been
obvious to one of ordinary skill in the art
in view of the showing and teaching of
Wilhelm '048 to provide the device of
[Fukuda] with a coupon dispenser to deliver
the winnings.
The examiner further holds that the provision of drain
openings, as called for by dependent claim 3, would have been
obvious. Appellant does not argue to the contrary.
Appellant does not contend that it would not have
been obvious to employ the gaming apparatus 12 of Wilhelm as
Appeal No. 97-4173
Application 08/575,963
We note that in appellant’s disclosed apparatus, the3
“reels” are electronic representations of reels on a monitor,
which are “spun” electronically (specification, pages 12 to
14).
4
the “play machine” 19 of Fukuda. However, with regard to
claim 1, appellant argues that (brief page 6)
neither the Japanese publication or Wilhelm
teaches the concept of different coupon
values for being a coupon value located
within each segment of each reel. After
spinning of the reels, the reels come to[3]
rest aligning a segment from each reel to
produce a series of aligned segments.
These aligned segments represent a total
coupon value. No such structure is
believed to be shown or taught
by the Japanese publication or Wilhelm. It
is therefore believed that independent
Claim 1 defines novel subject matter over
applied references of record.
The examiner, on the other hand, takes the position that
(answer, page 5):
The appellant argues that the references
do not show a plurality of reels with dif-
ferent coupon values which when aligned
represent a total coupon value. It is the
examiner’s position that this is exactly
how gaming machines with spinning reels
such as those shown in [Fukuda] and Wilhelm
'048 work. Conventional operation in these
type gaming machines is that when the
Appeal No. 97-4173
Application 08/575,963
5
symbols in the pay-off line do not match
there is no payout, when the pay-off line
has certain symbols, such as: three
cherries, the payout is a small amount and
when the pay-off line has other symbols,
such as: JACKPOT, the payout amount is
quite large. If there was not a variable
payout, they would not be called gaming
machines. “[I]n considering the disclosure
of a reference, it is proper to take into
account not only specific teachings of the
reference but also the inferences which one
skilled in the art would reasonably be
expected to draw therefrom.” In re Preda,
401 F.2d 825, 159 USPQ 342, 344 (CCPA
1968). One of ordinary skill in the art
would be expected to infer the normal
operation of gaming machines when presented
with the gaming machines disclosed in
[Fukuda] and Wilhelm '048. It would follow
then, that various combinations of symbols
on the reels of the gaming machines of
[Fukuda] or Wilhelm '048 would result in
prizes of different values and therefore
corresponding coupons of different values.

The penultimate paragraph of claim 1 recites, inter
alia:
each said reel being divided into a
plurality of separate segments, a coupon
value located within each said segment with
Appeal No. 97-4173
Application 08/575,963
6
there being a plurality of different coupon
values, after spinning of said reels said
reels to come to rest aligning a segment
from each said reel producing aligned
segments . . ., said aligned segments
represent a total coupon value to the user
of said can collection apparatus.
The gaming machine of Wilhelm appears to operate like a
conventional slot machine, except that the rollers (reels) 12a
may be provided with “symbols, numbers and/or drawings formed
as advertising media” (col. 3, lines 32 to 34), and the
winnings (pay off) may be supplied as a coupon (col. 3, line
42). To add to the examiner’s description of the operation of
a conventional slot machine, supra, such machines also
normally pay off one amount when two of a particular symbol
(e.g., two cherries) are aligned, and pay off a greater amount
when three of that symbol (e.g., three cherries) are aligned.
Thus, where the pay off is in the form of a coupon, as
disclosed by Wilhelm, we consider that it would have been
obvious to pay off a coupon of a greater amount when three of
the same symbol are aligned than when two of that symbol are
aligned. This is all that the above quoted
Appeal No. 97-4173
Application 08/575,963
7
language of claim 1 requires, since each such symbol would
constitute a coupon value located within a segment, the
different symbols would be a plurality of different coupon
values, and the number of aligned segments (of the same
symbol) would “represent a total coupon value,” as recited.
Accordingly, the combination of Fukuda and Wilhelm
meets all the limitations of claim 1, and the rejection of
that claim will be sustained. Since appellant states that
claim 3 stands or falls with claim 1 (brief, page 5), its
rejection will likewise be sustained.
As for claim 5, appellant further argues that
neither Fukuda nor Wilhelm suggests adding the accumulated
value of similar coupons on the aligned segments of the reels.
We agree. Claim 5 requires adding the coupon values displayed
on the left reel to any similar coupon values located (in
alignment) on the other two reels, with the total coupon value
being the sum of those values. The examiner does not assert,
and we are not aware, that in the normal operation of a slot
machine the pay off is determined by adding up the values of
the aligned symbols. There is therefore no suggestion from
Appeal No. 97-4173
Application 08/575,963
8
the combination of Fukuda and Wilhelm of the subject matter
recited, and the rejection of claim 5 will not be sustained.
Conclusion
The examiner’s decision to reject claims 1 and 3 is
affirmed, and to reject claim 5 is reversed.
No time period for taking any subsequent action in
con- nection with this appeal may be extended under 37 CFR §
1.136(a).
AFFIRMED-IN-PART
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
LAWRENCE J. STAAB ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Appeal No. 97-4173
Application 08/575,963
9
Administrative Patent Judge )
Appeal No. 97-4173
Application 08/575,963
10
Jack C. Munro
28720 Roadside Drive
Suite 225
Agoura Hills, CA 91301