Jeremy Hornik et al.Download PDFPatent Trials and Appeals BoardMay 28, 202011379176 - (D) (P.T.A.B. May. 28, 2020) Copy Citation 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. 11/379,176 04/18/2006 Jeremy Hornik 247079-002160USPT 9381 70243 7590 05/28/2020 NIXON PEABODY LLP 70 West Madison, Suite 3500 CHICAGO, IL 60602 EXAMINER HENRY, THOMAS HAYNES ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 05/28/2020 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docketingchicago@nixonpeabody.com ipairlink@nixonpeabody.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JEREMY HORNIK, ALFRED THOMAS, and WILLIAM WADLEIGH ____________ Appeal 2018-006369 Application 11/379,176 Technology Center 3700 ____________ Before WILLIAM V. SAINDON, MICHAEL L. HOELTER, and BRENT M. DOUGAL, Administrative Patent Judges. SAINDON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s decision in the Final Office Action dated October 20, 2016 to reject claims 1–7 and 14–25. Appeal Br. 1. Claims 8–13 are canceled.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Bally Gaming, Inc. as the real party in interest. Appeal Br. 3. 2 See Amendment (received July 13, 2016) in response to the Non-Final Office Action (dated January 14, 2016). Appeal 2018-006369 Application 11/379,176 2 BACKGROUND The claims are generally directed to computer-implemented wager gaming machines. The gaming machines operate under a licensing model that determines the fee structure for which the operator pays for use of the wager games. Of the rejected claims, 1, 14, and 20 are independent. Claims 1, 14, and 20 are reproduced below with emphasis added: 1. A computer-implemented method comprising: transmitting, from a content server to a client gaming machine and using one or more processors of the content server, a list including available wager gaming content and a plurality of available licensing models including at least two different licensing models selected from the group consisting of a subscription model in which a customer pays a flat fee for an unlimited number of games, a tiered model, a periodic model, a popularity model, and one or more other licensing models; receiving, at the content server, a selection from the list indicating a selected wager gaming content and a selected licensing model; transmitting, from the content server to the client gaming machine, wager gaming content and licensing content corresponding to the selection, detecting, via an input device of the client gaming machine, a physical item associated with monetary value that establishes a credit balance on the client gaming machine; initiating, in response to an input indicative of a wager drawn on the credit balance, a wagering game including the selected wager gaming content, and conducting the wagering game on the client gaming machine according to the selected licensing model. Appeal 2018-006369 Application 11/379,176 3 14. A system comprising: a gaming machine including an input device configured to detect physical items associated with monetary value that establish credit balances, the gaming machine executing, via one or more first processors, programmed instructions that cause the gaming machine to receive wager gaming content subject to a license requiring payment of a license fee based on indicated use of the wagering game content while subject to the license, initiate wagering games responsive to wagers drawn on respective credit balances, conduct the wagering games based on the wager gaming content according to the license, and transmit information indicating how the gaming machine used the wager gaming content while subject to the license; and a download manager receiving the information indicating how the wager gaming content was used while subject to the license, and determining, via one or more second processors, the license fee based on the indicated use of the wager gaming content. 20. A gaming system operating with a gaming machine configured to conduct a wagering game using wager gaming content subject to a license, the gaming machine including an input device configured to detect a physical item associated with a monetary value establishing a credit balance on the gaming machine, the gaming system comprising: a download manager including one or more processors, the download manager being connected for communication to the gaming machine, the download manager executing, via at the one or more processors, stored instructions which cause the download manager to: transmit, to the gaming machine, the wager gaming content; determine whether the gaming machine has permission to use the wager gaming content subject to the license; Appeal 2018-006369 Application 11/379,176 4 enable use of the wager gaming content on the gaming machine, wherein the gaming machine, in response to an input indicative of a wager drawn on the credit balance, initiates a wagering game using the wager gaming content; receive, from the gaming machine, information about prior usage of the wager gaming content on the gaming machine while subject to the license; determine, based on the information, a licensing fee based on the prior usage. REFERENCES The Examiner relies on the following references: Name Reference Date Smith US 5,581,270 Dec. 3, 1996 Saffari US 6,264,561 B1 July 24, 2001 Chatani US 6,810,528 B1 Oct. 26, 2004 Nguyen US 2002/0116615 A1 Aug. 22, 2002 REJECTIONS 1. Claims 1–7 and 20–25 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Saffari, Chatani, and Nguyen. 2. Claims 14–19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Smith and Nguyen. DISCUSSION Appellant argues each independent claim separately, and we address them in turn. No dependent claim is argued separately, and we treat them as a group with their independent claim. 37 C.F.R. § 41.37(c)(1)(iv) (2017). Appeal 2018-006369 Application 11/379,176 5 Claims 1–7 Independent claim 1 requires transmission of information from a content server to a client gaming machine. The key limitation at issue on appeal requires transmission of a list that includes “available wager gaming content” as well as “a plurality of available licensing models including at least two different licensing models” (emphasis added). The Examiner rejects claims 1–7 in view of Saffari, Chatani, and Nguyen. Final Act. 2–4. Relevant to the limitation at issue, the Examiner asserts that Saffari provides a list having a plurality of licensing models, but the models are all the same. Id. at 2–3. The Examiner then finds that Nguyen describes a licensing model that is different from Saffari’s model. Id. at 3. The Examiner concludes that combining the teachings of the two references having different models leads to a list containing different licensing models. Id. at 3–4; see also Ans. 2. Appellant argues that the prior art merely teaches two licensing models, not a list of different licensing models to choose from. Appeal Br. 9; see also id. at 8–11 (setting forth the entire argument for claim 1). In other words, Appellant argues that, even if Saffari and Nguyen’s licensing models are different, the prior art suggests merely using one or the other, not a list having different models to choose from, i.e., a list that provides an option to use one model or another. See also Reply Br. 2–3 (arguing the prior art “simply provides two examples of systems with a single licensing model” rather than “a list of different licensing models”). We agree with Appellant. The Examiner has not shown that the prior art on appeal discloses a list of licensing models, where at least two models are different. We understand the Examiner’s point that the prior art teaches Appeal 2018-006369 Application 11/379,176 6 two models, and if one combined the two models of the prior art, one would have a list with two choices. But we do not see where this prior art teaches providing that choice—that only appears in the rejection as a result of the Examiner’s proposed addition of Nguyen’s prior art model into Saffari without removing Saffari’s existing model. Disclosure of two models independently does not disclose or suggest providing the two models together at the same time. The Examiner does not make a finding that the prior art teaches or suggests a list having at least two different licensing models. Thus, we must conclude that the only reason the Examiner seeks to add Nguyen’s model to Saffari’s machine (as opposed to replace it), is to re-create the claims in hindsight. Accordingly, we do not sustain the Examiner’s rejection of claim 1, or of claims 2–7, which depend therefrom and thus contain the same issue. Claims 14–19 Independent claim 14 does not include the limitation we addressed in our analysis of claim 1. Claim 14 is directed to a gaming machine programmed to receive wager gaming content subject to a license requiring payment of a licensing fee. The fee is “based on indicated use of the wagering game content,” and determined based on “information indicating how the gaming machine used the wager gaming content.” The Examiner rejects the claims under Smith and Nguyen. Final Act. 7–9. The Examiner finds that Smith teaches “information indicating a usage of gaming content subject to a license.” Id. at 7 (citing Smith, col. 2, ll. 33– 36). In the cited portion of Smith, we find that a user plays a game for a period of time until her allotted time has expired, after which she may Appeal 2018-006369 Application 11/379,176 7 purchase additional time. Smith, col. 2, ll. 30–36. The Examiner cites Nguyen for the premise of providing wagering games in particular (Smith appears directed to video games in general) and also for Nguyen’s billing scheme, which is based on “indicated use” rather than Smith’s time-based fee. Final Act. 7 (citing Nguyen ¶ 104). In the cited portion of Nguyen, we find a “pay-as-you go” licensing scheme for a wagering game, where the owner pays for each game on a per-use basis, rather than an up-front basis. Nguyen ¶ 104. The Examiner explains that the proposed combination would have been obvious for the purpose of allowing “players to play a more diverse set of games” and to provide “a more operator friendly billing scheme.” Id.3 “Prior Usage” Limitation Appellant first argues that Nguyen’s scheme applies a fixed fee for each usage, then collects aggregate fees accrued over a billing period. Appeal Br. 12. In support, Appellant asserts that Nguyen does not describe the fee is “for use of a given game [that] is variable based on how the game is used or any other aspect of prior usage.” Id. (emphasis added); see also id. (“There is no suggestion . . . that the fees for each use of a wagering game are variable based on prior use.”); Reply Br. 3–4 (similar). Appellant’s first argument fails for the simple reason that it argues features (“prior use”) not in the claim. In addition, Appellant argues for a 3 The Examiner makes further findings regarding Smith and Nguyen not challenged here, which we adopt as our own. See Final Act. 7–8; see also Ex parte Frye, 94 USPQ2d 1072, 1074–76 (BPAI 2010) (precedential) (setting forth the standard for review by the Board; limiting review to issues actually raised). Appeal 2018-006369 Application 11/379,176 8 narrow, specific interpretation of that unclaimed term (“variable based on prior use”). See, e.g., Appeal Br. 12–13 (citing Spec. ¶ 1164); Reply Br. 3– 4. Although we acknowledge that the Specification does disclose an unnamed billing scheme (Spec. ¶ 116) that appears to be what the Appellant wishes the claims to recite, the claims have no language that tends to constrain them to that specific scheme. Instead, the generic, broad language of claim 14 is satisfied by the Examiner’s proposed combination of Smith and Nguyen. Specifically, a license fee “based on indicated use of the wagering game content” is met by the prior art’s teaching of a “pay-as-you go” scheme. That is because, in such a scheme, pay is based on actual prior use. When the machine transmits how many times the game was played, it transmits “information indicating how the gaming machine used the wager gaming content.”5, 6 The scheme reads on the plain meaning of the claim, and we see nothing in the Specification that otherwise limits the claims as recited. Rationale for Combination 4 Appellant cites to paragraph 128, which appears to be an error. In the copy of the Specification provided to us, there is no paragraph 128, and the language reproduced in the Brief instead appears at paragraph 116. 5 For example: How did the machine use the content? It used game 1 x times, game 2 y times, and game 3 z times. 6 Our reading of claim 14 is further supported by dependent claims 16 and 17, which state that the “licensing fee” and “information indicating how the gaming machine used the wager gaming content” in claim 14 can be “a number of times the wagering games were conducted.” Appeal 2018-006369 Application 11/379,176 9 Appellant’s second argument is against the rationale for the combination. Appeal Br. 13–14. In review, the Examiner’s proposed modification to Smith’s game-rental system is to include more types of games (wagering-type games) and to switch from a pay-per-time model to a pay-per-use model. See Final Act. 7–8. The Examiner is correct that including wagering-type games would “allow . . . a more diverse set of games,” and Appellant does not appear to challenge this particular portion of the rationale. We find no fault in the rejection here. Likewise, we do not find fault in the Examiner’s proposed switch from one known fee model to another. Accord KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result”). Appellant does not offer a specific technical challenge to the feasibility or predictability of the Examiner’s proposed substitution of one known element for another, but rather argues that “there is actually little (if any) difference between Smith’s ‘pay-per-view’ model and Nguyen’s ‘pay-as-you-go’ model.” Appeal Br. 13. Appellant appears to acknowledge the simplicity of the proposed combination, but argues that the Examiner has not stated why one of ordinary skill would specifically put Nguyen’s model in for Smith’s, on the theory that they are basically equivalent. But under controlling case law, such as KSR, the Examiner’s rejection is sufficient to show obviousness of the claim on this record. Nothing of record indicates a technical hurdle in implementing any given scheme, and both Smith’s and Nguyen’s fee schemes are established to be known. This is an example of Appeal 2018-006369 Application 11/379,176 10 where the proposed combination is a simple substitution of one known element for another. Accordingly, we sustain the Examiner’s conclusion of obviousness for claim 14, and of claims 15–19 that depend therefrom and are not argued separately. 37 C.F.R. § 41.37(c)(1)(iv). Claims 20–25 The Examiner rejected claims 20–25 over Saffari, Chatani, and Nguyen. Final Act. 4–7. Relevant to the issue at hand, the Examiner found that Nguyen’s “pay-as-you go” scheme is a fee based on prior use. That is, a fee is based on use. “Prior Usage” Limitation The first issue Appellant presents is whether the prior art discloses the claimed “prior usage.” Appeal Br. 14–15. Unlike claim 14 addressed above, independent claim 20 does have a “prior usage” element. However, Appellant argues that “prior usage” requires that “the fee . . . of a given game is variable based on how the game is used” (emphasis added). Thus, like claim 14, Appellant is arguing limitations (variable fee) not found in the claim. Merely reciting that the license fee is based on “prior usage” is insufficient to limit the claim to some sort of variable fee schedule. Nothing in the claim suggests that the fee must be variable, let alone variable in a given way. Instead, the claim requires receipt of information about prior usage and then determining a fee based on the prior usage. Nguyen describes a fee schedule where usage is billed at a fixed cost for time a game is used, rather than paid up front. Nguyen ¶ 104. In this way, Nguyen describes “a usage fee may be paid” periodically based on “each time a game is played.” Id. Different games may have different costs. Id. Appeal 2018-006369 Application 11/379,176 11 Appellant appears to be arguing that Nguyen’s “fee” is really a “bill,” which is allegedly different from the “fee” that is claimed. See Reply Br. 4. This is not persuasive. Even under the unclaimed fee structure in paragraph 116 of the Specification that Appellant holds out as being a “variable” fee that changes responsive to prior usage—that fee is still akin to a bill. For example, if 3333 games were played under that fee structure, and then the fee calculated, the “licensing fees” would be ($0.05 x 1000) + ($0.10 x 1000) + ($0.20 x 1333) = $50 + $100 + $226.60 = $376.60. See Spec. ¶ 104. If a single game were played, then the licensing fees would be $0.05. The license fee is not variable based on the number of uses; it can be found deterministically using the set fee schedule. What is variable is the cost, which varies in a predetermined way according to a schedule. Accord, e.g., id. (“the first 1000 games . . . may cost $0.05 per game, . . . the second 1000 games . . . cost $0.10 per game”) (emphasis added). But the claims are not directed to these features described in the Specification. The claims merely require determining “a licensing fee based on the prior usage.” In either Nguyen or the Specification, the licensing fee paid is a dollar amount calculated according to a set fee schedule after one or more games are played. Although Nguyen does not have a variable cost per game based on a progressive fee schedule, the claim does not require such. Rationale for Combination The second issue Appellant presents is whether the Examiner sufficiently articulated a reason to combine the teachings of Nguyen with Saffari and Chatani. Appeal Br. 15–16. The Examiner relied on Nguyen for its disclosure of “payments . . . based on prior use.” Final Act. 5. The Examiner’s combination is premised on a finding that including this Appeal 2018-006369 Application 11/379,176 12 payment scheme allows “a more operator friendly billing scheme.” Id. This finding must be evaluated in the context of Nguyen’s disclosure that its “pay-as-you go” scheme is more “operator friendly” than a pay up front scheme because “pay-as-you go” allows costs to be aligned with actual use, so an operator need not pay for games up front that prove unpopular. Nguyen ¶ 104 (stating that an “advantage of the game license request method [in Nguyen] is that a gaming machine owner may be able to operate . . . many different types of games but only pay for each game on a per use basis,” and further contrasting “pay-as-you go” with “up front”—“when a particular game is unpopular, the costs to the gaming machine operator are minimized”). Saffari’s billing scheme is to pay up front for the ability to enable play of a game. Final Act. 4; see, e.g., Saffari, col. 7, l. 66–67 (“the selected games will be accessible and enabled for use”); id. at col. 7, ll. 1–28 (explaining how games on a chip are enabled or disabled based on the licensing). Thus, Nguyen specifically teaches to replace a scheme like Saffari’s in order to obtain a stated benefit. In this light, we sustain the Examiner’s finding because the proposed combination is premised on rational underpinnings.7 Accordingly, we sustain the Examiner’s rejection of claim 20, and of claims 21–25, which depend therefrom. 7 The Examiner makes further findings regarding Saffari, Chatani, and Nguyen that are not challenged and which we adopt as our own. See Final Act. 4–7; see also Frye, 94 USPQ2d at 1074–76. Appeal 2018-006369 Application 11/379,176 13 CONCLUSION We do not sustain the Examiner’s rejection of claims 1–7. We sustain the Examiner’s rejection of claims 14–25. Claims 8–13 were previously canceled. DECISION SUMMARY As to claims 1–7 and 14–25 on appeal: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–7, 20–25 103 Saffari, Chatani, Nguyen 20–25 1–7 14–19 103 Smith, Nguyen 14–19 Overall Outcome 14–25 1–7 AFFIRMED IN PART Copy with citationCopy as parenthetical citation