2021001039 (P.T.A.B. Aug. 19, 2021)

Toccata Gaming International, LLC

Patent Trials and Appeals BoardAug 19, 2021

2021001039 (P.T.A.B. Aug. 19, 2021)

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. 15/299,179 10/20/2016 Todd R. Stimac 52951.004 3533 25005 7590 08/19/2021 Intellectual Property Dept. DeWitt LLP 2 East Mifflin Street Suite 600 Madison, WI 53703-2865 EXAMINER RADA, ALEX P ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 08/19/2021 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): IP-DOCKET@dewittllp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TODD R. STIMAC and GEORGE EGONUT ____________ Appeal 2021-001039 Application 15/299,179 Technology Center 3700 ____________ Before BIBHU R. MOHANTY, BRADLEY W. BAUMEISTER, and ROBERT J. SILVERMAN, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–8. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We AFFIRM. 1 “We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Toccata Gaming International, LLC. (Appeal Br. 2). Appeal 2021-001039 Application 15/299,179 2 CLAIMED SUBJECT MATTER The Appellant’s claimed invention relates to a game system that tracks and manages an inventory of prizes and/or tokens and restocks its inventory based on the value of prizes won by players (Spec. 1, lines 9–11). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A game system comprising: a platform onto which is deposited prizes or tokens that are vied for by a player of the game system; a player-activated arm or crane that a player activates to sweep or grab a prize or token off the platform and into proximity of an automated identification and data capture (AIDC) scanner; at least one dispenser unit dimensioned and configured to house a plurality of prizes or tokens and to dispense one or more of the prizes or tokens onto the platform; a plurality of prizes or tokens disposed in the dispenser unit; an automated identification and data capture (AIDC) device associated with each prize or token and encoding information reflecting a type and a value of the prize or token to which it is associated; at least one corresponding AIDC scanner dimensioned and configured to generate a digital signal corresponding to the information encoded on the AIDC device associated with the prize or token when the prize or token is swept or grabbed off the platform by the skill of the player and placed in proximity to the AIDC scanner by the player-activated arm or crane; and a computer processor operationally connected to the dispenser unit and the AIDC scanner, wherein the computer processor directs the dispenser unit to release one or more prizes or tokens in response to digital signals generated by the AIDC scanner and sent to the computer processor; and further wherein the computer processor is dimensioned and configured to store the digital signals generated by the AIDC scanner indicting the type and the value of the prizes or tokens released. Appeal 2021-001039 Application 15/299,179 3 THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Name Reference Date Shoemaker, Jr. US 5,553,865 Sept. 10, 1996 Wilson US 2003/0073479 Al Apr. 17, 2003 Soto US 6,905,391 B2 June 14, 2005 Steil US 2008/0234052 Al Sept. 25, 2008 Nagayama US 8,500,125 B2 Aug. 6, 2013 The following rejections are before us for review2: 1. Claims 1–4 are rejected under 35 U.S.C. § 103 as unpatentable over Shoemaker, Jr., Wilson, and Steil. 2. Claims 5–8 are rejected under 35 U.S.C. § 103 as unpatentable over Shoemaker, Jr., Wilson, Steil, and Nagayama. 2 The rejections of claims 1–4 under 35 U.S.C. § 103 as unpatentable over Shoemaker, Jr., Wilson, Steil, and Soto; and claims 5–8 under 35 U.S.C. § 103 as unpatentable over Shoemaker, Jr., Wilson, Steil, Soto, and Nagayama is not reached in this Decision as these claims are affirmed by the above listed rejections. As the rejections of claims 1–8 are affirmed by the prior-art rejections noted above, we decline to reach these additional rejections. See In re Gleave, 560 F.3d. 1331 (Fed. Cir. 2009) where rejections affirmed under 35 U.S.C. § 102(b) resulted in rejections under 35 U.S.C. § 103 not being reached; see also Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (indicating an agency (e.g., the ITC) can decide a single dispositive issue of numerous issues resolved by the presiding officer and that there is no need for the Commission to decide all issues decided by the presiding officer). Appeal 2021-001039 Application 15/299,179 4 FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence.3 ANALYSIS Rejection of claims 1–4 under 35 U.S.C. § 103 under Shoemaker, Jr., Wilson, and Steil The Appellant argues that the rejection of claim 1 under 35 U.S.C. § 103 as unpatentable over Shoemaker, Jr., Wilson, and Steil is improper (Appeal Br. 3–7; Reply Br. 1–5). In contrast, the Examiner has determined that the rejection of record is proper (Final Act. 2–5; Ans. 18–22). We agree with the Examiner. Here, Shoemaker, Jr. discloses a rotary push arcade game (10) with a turntable (24) in which an arm (28) is used to sweep tokens (26) to a player through a dispenser (22). Wilson discloses a similar pusher-entertainment machine (Abstract). Wilson discloses that the playing pieces may have different values and this may be achieved by marking the pieces with a RFID tag to be identified and given a different value to controlling the payout (para. 420). Steil discloses a gaming token that can be identified with an RFID tag to track both proper face value and ornamental structure of the “look of the token,” which may include color, texture, etc. (para. 49). 3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2021-001039 Application 15/299,179 5 The Appellant argues that Shoemaker, Jr. does not teach a device that logs the “type and value” of the prize or token won, or the claim limitation drawn to “direct[ing] the dispenser unit to release one or more prizes or tokens in response to digital signals generated by the AIDC scanner” (Appeal Br. 3). However, the rejection of record relies on the prior art references of Wilson and Steil, and the modification of the references together in the combination, to meet these cited claim limitations. Appellant’s arguments attack references individually, when the rejections are over a combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references”). Initially, we note that the claimed language of dispensing is for “prizes or tokens” so the claim language only requires a token to be used. While it could be construed that the logging the value of a token would inherently identify its “type” as a token, the rejection does include a citation to Steil at paragraph 49, which discloses logging of both the “type” of a token look and “value” of a token. The Appellant also argues that Wilson only discloses the location of the tokens, not the “type” and “value” (Appeal Br. 4). However, the rejection of record also cites to Wilson at paragraph 420, which discloses that a playing piece may be marked with an RFID tag to be given different value from other pieces (Final Act. 4). Wilson also discloses that the game may control the payout rate by a controller (paras. 417, 418). Here, the modification of the rotary arcade game of Shoemaker, Jr. to include an RFID tag to track and to dispense tokens according to a payout Appeal 2021-001039 Application 15/299,179 6 schedule, as suggested by Wilson, and to also include tracking the value and type of token, as suggested by Steil, would have been an obvious, predictable combination of familiar elements for the benefits of tracking the type and value of the tokens dispensed for accounting and controlling the payout to increase profitability of the arcade game. Accordingly, we sustain the rejection of claim 1 and its dependent claims 2–4, which were not separately argued, under 35 U.S.C. § 103 as unpatentable over Shoemaker, Jr., Wilson, and Steil. Rejection of claims 5–8 under 35 U.S.C. § 103 under Shoemaker, Jr., Wilson, Steil, and Nagayama The Appellant argues that the rejection of claim 5 under 35 U.S.C. § 103 as unpatentable over Shoemaker, Jr., Wilson, Steil, and Nagayama is improper because the references do not describe logging the type or value of the prizes, but this is suggested by the references of Shoemaker, Jr., Wilson, and Steil, as discussed above (Appeal Br. 7). The Appellant further argues that the cited prior art fails to disclose a plurality of AIDC scanners corresponding to the number of dispenser units and that the combination is not obvious and not a mere duplication of parts (Appeal Br. 7–8). We agree with the Examiner. A statement that merely points out what a claim recites will not be considered an argument for separate patentablity of the claim. 37 C.F.R. § 41.37(co)(1)(iv). In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) the Court stated that when considering obviousness that “the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the Appeal 2021-001039 Application 15/299,179 7 inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 418. Here, Nagayama at Figure 5 discloses a dispenser unit with a plurality of dispensers. One of ordinary skill in the art would have readily inferred that by adding a dispenser for each scanning section rather than having a lone single dispenser, that coins could be dispensed with greater reliability as more redundant dispensers would be present in the system. For these reasons, we sustain the obviousness rejection of claim 5, and of dependent claims 6–8, which were not argued separately. See Appeal Br. 8. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4 103 Shoemaker, Jr., Wilson, Steil 1–4 5–8 103 Shoemaker, Jr., Wilson, Steil, Nagayama 5–8 Overall Outcome 1–8 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED