Ex Parte Acres

Patent Trial and Appeal Board

Jan 12, 2015

12268614 (P.T.A.B. Jan. 12, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN F. ACRES
____________________

Appeal 2012-011949
Application 12/268,614
Technology Center 3700
____________________

Before LYNNE H. BROWNE, MICHAEL L. WOODS, and
LEE L. STEPINA, Administrative Patent Judges.

WOODS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

John F. Acres (“Appellant”) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 30, 33–41, 44–51, and 53–70. Br. 5. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to “configuring gaming devices via
[a] network.” Spec. 1, ll. 11–12. Claims 30, 41, 51, and 66 are independent
and claim 41 is reproduced below.

41. A method of configuring gaming devices
interconnected by a computer network comprising:
creating a player-tracking record for at least one player of
the gaming devices;
associating a plurality of gaming-device configuration
data packets with the record;
associating each of the gaming-device configuration data
packets with a header that corresponds to at least one of the
gaming devices;
storing the record in a storage device that is accessible by
the network;
recognizing the at least one player at one of the gaming
devices;
reading each header in the record;
ignoring gaming-device configuration data packets that
are associated with a header that does not correspond to the one
gaming device;
identifying data contained in at least one gaming-device
configuration data packet that is associated with a header that
corresponds to the one gaming device; and
using the identified data to configure the one gaming
device.

THE REJECTION
The Examiner has rejected:
(i) claims 33 and 34 under 35 U.S.C. § 112, second paragraph, as
being indefinite;
(ii) claims 30, 33–37, 41, 44–47, 51, 53, 54, and 59–69 under 35
U.S.C. § 103(a) as being unpatentable over Walker (US 6,293,866 B1,
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issued Sept. 25, 2001) in view of Beaulieu (US 7,169,052 B2, issued Jan. 30,
2007); and
(iii) claims 38–40, 48–50, 55–58, and 70 under 35 U.S.C. § 103(a)
as being unpatentable over Walker, Beaulieu, and Luciano (US 6,811,486
B1, issued Nov. 2, 2004). Final Act. 2–11 (dated Oct. 14, 2011); see also
Ans. 3.1
ANALYSIS
Rejection (i) of Claims 33 and 34 as Indefinite
Appellant presents no arguments of error regarding this rejection, but
rather proposes to amend claims 33 and 34 after prosecution has closed. See
Br. 6. As such, Appellant has waived any argument of error regarding the
rejection of claims 33 and 34 and we summarily sustain this rejection. See
In re Berger, 279 F.3d 975 (Fed. Cir. 2002) (holding that Board did not err
in sustaining a rejection under 35 U.S.C. § 112, second paragraph, when the
appellant failed to contest the rejection on appeal).
Rejection (ii) of Claims 30, 33–37, 41, 44–47, 51, 53, 54,
and 59–69 as Unpatentable over Walker and Beaulieu
In rejecting independent claims 30, 41, and 51 the Examiner finds that
Walker discloses, inter alia,

1 We note that the Final Office Action includes a typographical error, which
indicates that claims 30, 33–37, 41, 44–47, 51, 54, 54, and 59–69 were
rejected “under 35 U.S.C. 103(a) as being anticipated by . . . Walker [in
view of] Beaulieu.” Final Act. 2 (first emphasis added). Despite this
typographical error, Appellant correctly understood the rejection to be based
on the claims being unpatentable under 35 U.S.C. § 103(a). See, e.g., Br.
14.

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a method of configuring a plurality of gaming devices
interconnected by a communications network comprising:
creating a player-tracking record for at least one of the gaming
devices . . . [;] storing [a] gaming-device configuration data
packet . . . [;] including data with [the] gaming-device
configuration data packet that associates [the] packet with at
least one of the gaming devices . . . [;] tracking play of at least
one player on the networked gaming devices; storing at least
some of the tracked play . . . [;] accessing the player-tracking
record responsive to identification of the player at one of the
gaming devices . . . [; and] determining whether one of the
gaming-device configuration data packets includes data that
associates . . . the player’s with the at-least one gaming device.
Final Act. 2–3 (citing Walker col. 8, ll. 60–67; col. 9, ll. 45–55; and Figs. 5,
6, 9, 10A, and 10B).
The Examiner further relies on Beaulieu for disclosing, “storing a
plurality of gaming-device configuration data packets in the record . . . [and]
ignoring gaming-device configuration data packets that are associated with a
header that does not correspond to the one gaming device (the method taught
by Beaulieu et al will do this inherently.”) Id. at 4 (citing Beaulieu col. 5,
ll. 15–20; col. 9, ll. 15–30 and 40–50; col. 10, ll. 15–20; and col. 11, ll. 15–
25). The Examiner determines that
At the time of invention, it would have been obvious to a
person of ordinary skill in the art to combine a method of
operating a plurality of gaming devices, as disclosed by Walker
et al, together with the ability to store the configurations of
multiple games in one record, as taught by Beaulieu et al, since
this would have increased the flexibility of the system’s ability
to configure multiple different kinds of machines.
Id.
In rejecting independent claim 66, the Examiner similarly finds that
“the combination of Walker et al and Beaulieu et al discloses [a] method of
configuring gaming devices interconnected by a computer network of the
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type having a player-tracking feature in which at least some players of the
gaming devices are identified and their play tracked,” as recited in the claim.
Final Act. 8; see also id. at 9 (citing the rejection of claim 41 explained,
supra).

Claims 30, 33–37, and 60
In contesting the rejection to independent claim 30, including its
dependent claims 33–37 and 60, Appellant presents several arguments,
which we address separately, below.
Appellant first argues, “[a]ssociating a game preference with a player,
as disclosed in Walker, is different than associating a gaming-device
configuration packet with a player and with a gaming device, as recited in
Appellant’s independent claim 30.” Br. 16.
We are not persuaded by Appellant’s argument for at least two
reasons. First, Appellant’s argument does not indicate error in the
Examiner’s finding that “Walker teaches a data structure that will set up any
of the slot machines in the network also taught by Walker so as to comply
with the player’s preferences. All of these [sic] slot machines are, thereby,
‘associated with’ the data structure.” Ans. 4 (citing Walker col. 10, ll. 10–15
and Fig. 5). Second, and as the Examiner also finds, “Appellant has not
claimed that the data packet must be able to configure one gaming device
only, to the exception of a plurality of other gaming devices.” Id. (emphasis
added). Therefore, Appellant’s argument is not commensurate with the
scope of claim 30, and for this additional reason, does not demonstrate error
in the Examiner’s rejection of the claim. See In re Self, 671 F.2d 1344, 1348
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(CCPA 1982) (limitations not appearing in the claims cannot be relied upon
for patentability).
Second, Appellant also argues that Walker “does not reference
anything about associating configuration data with the gaming device itself,
as claimed in Appellant’s independent claim 30.” Br. 17.
As with the first argument, we are not persuaded by Appellant’s
second argument. In particular, Appellant’s argument does not indicate
error in the Examiner’s finding that “Walker teaches configuring a gaming
device to a player’s preferences where the player has created such a
preference[] and saved them in a data structure.” Ans. 5 (citing Walker, Fig.
10B). We also agree with the Examiner’s finding that Appellant’s argument
is not commensurate with the scope of claim 30 as “Appellant has not
claimed that the data packet must be able to configure only one gaming
device, to the exception of a plurality of other gaming devices.” See id.; see
also In re Self, 671 F.2d at 1348.
Third, and with respect to Beaulieu, Appellant argues that “the player
configuration data of Beaulieu is associated with a player and is generically
associated with all of the gaming devices, not a specific gaming device [and
that] none of the player configuration data of Beaulieu is gaming-device
specific, as recited in Appellant’s independent claim 30.” Br. 17.
As with the first two arguments, we are not persuaded by Appellant’s
third argument, either, as “Appellant has not claimed ‘gaming-device
specific’ data packets.” Ans. 5. As the Examiner correctly notes,
“Appellant’s claimed limitation in Claim 30 is for ‘including data with each
gaming-device configuration data packet that associates each packet with at
least one of the gaming devices.’” Id. at 6; see also In re Self, 671 F.2d at
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1348. Furthermore, Appellant’s argument does not point out error in
Examiner’s finding that “Beaulieu teaches storing multiple different player
preferences, each for one of multiple different kinds of games.” Id. (citing
Beaulieu col. 9, ll. 40–60).
We have considered Appellant’s remaining arguments and are not
persuaded of Examiner error. We adopt the findings of fact made by the
Examiner in the final rejection and Examiner’s Answer as our own, and we
agree with the conclusions reached by the Examiner for the reasons given in
the Examiner’s Answer. See Ans. 4–10; see also Final Act. 2–12.
For the foregoing reasons, we are not apprised of error in the
Examiner’s rejection of claims 30, 33–37, and 60 under 35 U.S.C. § 103(a)
as being unpatentable over Walker and Beaulieu.

Claims 41, 44–47, 62, and 63
In contesting the rejection to independent claim 41, including its
dependent claims 44–47, 62, and 63, Appellant presents the same arguments
relied upon, supra, in connection with claim 30. See Br. 18. For the reasons
discussed, supra, Appellant’s arguments are not persuasive.
Appellant further asserts that the Examiner’s finding that Beaulieu
inherently disclosed “ignoring gaming-device configuration data packets that
are associated with a header that does not correspond to the one gaming
device” is in error. See Br. 18–19.
In response to this assertion, the Examiner explains that, inherent in
Beaulieu’s system “would be that once the player established preferences for
more than one type of game . . . then to the extent that the player then played
and configured any of those particular games (e.g. keno), the system would
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then not use (i.e would, as Appellant has claimed, ‘ignore’) the data structure
used to configure a different game (e.g. poker) to the player’s preferences.”
Ans. 6–7 (citing Beaulieu col. 9, ll. 40–60).
We agree with the Examiner’s finding. We also agree with the
Examiner that “[t]here is no other way for the invention disclosed by
Beaulieu to work, once the player has created preferences for more than one
type of game.” Id. at 7. Furthermore and as also correctly explained by the
Examiner, Appellant’s argument is not commensurate with the scope of
claim 41, as “Appellant has only claimed the ability to ignore such a
packet.” See id.; see also In re Self, 671 F.2d at 1348.
In further contesting the rejection of claim 41, Appellant also argues,
“Beaulieu teaches away from the Office’s conclusion that Beaulieu
inherently discloses Appellant’s claimed element ‘ignoring gaming-device
configuration data packets that are associated with a header that does not
correspond to the one gaming device.’” Br. 20 (citing Beaulieu col. 8, ll.
57–64) (emphasis added).
In response to the teaching away argument, the Examiner explains
that “Appellant is incorrect [and that t]he embodiment referenced by the
Examiner in Beaulieu is the main embodiment, the one in which multiple
classes of games (e.g. video poker, video keno) are configured as part of one
identifier.” Ans. 7 (citing Beaulieu col. 8, ll. 45–55).
A reference will teach away when it suggests that the developments
flowing from its disclosures are unlikely to produce the objective of the
Appellant’s invention. A statement that a particular combination is not a
preferred embodiment does not teach away absent clear discouragement of
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that combination. See Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371,
1380 (Fed. Cir. 2005).
In the present case, we are not persuaded by Appellant’s argument
that “Beaulieu teaches away [from the] claimed element ‘ignoring gaming-
device configuration data packets,” as Appellant has not directed us to
anything in either Beaulieu or Walker that clearly discourages combining the
references. Br. 20 (emphasis added); see also Syntex, 407 F.3d at 1380.
For the foregoing reasons, including the reasons discussed, supra,
relating to claim 30, we are not apprised of error in the Examiner’s rejection
of claims 41, 44–47, 62, and 63 under 35 U.S.C. § 103(a) as being
unpatentable over Walker and Beaulieu.

Claims 51, 53, 54, 64, and 65
In contesting the rejection to claim 51, including its dependent claims
53, 54, 64, and 65, Appellant presents the same arguments relied upon,
supra, in connection with claims 30 and 41. See Br. 23–24. For the reasons
discussed, supra, Appellant’s arguments are not persuasive.
Appellant also argues that the Examiner “failed to address that
Appellant’s independent claim 51 recites that a first gaming-device
configuration data packet is created and is a function of at least one of player
preferences and casino preferences.” Id. at 22. Appellant further argues that
the Examiner also “failed to address that Appellant’s independent claim 51
creates a second gaming-device configuration data packet that is a function
of the outcomes of games played by the player.” Id. at 23.
In response to this Argument, the Examiner explains that “Appellant
is incorrect [and that] Walker clearly teaches a data structure that stores
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casino preferences regarding a player [and further] clearly teaches such a
data structure that stores data that is a function of the outcomes of games
played by the player.” Ans. 8–9 (citing Walker col. 4, ll. 50–55 and Figs. 4
and 6).
Upon reviewing the record, we are not persuaded by Appellant’s
argument and disagree with the assertion that the Examiner failed to address
the limitations of claim 51.
For the foregoing reasons, including the reasons discussed, supra,
relating to claims 30 and 41, we are not apprised of error in the Examiner’s
rejection of claims 51, 53, 54, 64, and 65 under 35 U.S.C. § 103(a) as being
unpatentable over Walker and Beaulieu.

Claims 66–69
In contesting the rejection to claims 66–69, Appellant relies on the
arguments presented, supra. Br. 24–25. For the reasons discussed, supra,
we are not apprised of error in the Examiner’s rejection of claims 66–69
under 35 U.S.C. § 103(a) as being unpatentable over Walker and Beaulieu.

Claim 59
In contesting the rejection to claim 59, Appellant relies on the
arguments presented, supra. Br. 25–26. For the reasons discussed, supra,
we are not apprised of error in the Examiner’s rejection of claim 59 under 35
U.S.C. § 103(a) as being unpatentable over Walker and Beaulieu.
Claim 61
Appellant presents no arguments of error regarding the rejection of
claim 61. See Br. 14–26. As such, Appellant has waived any argument of
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error regarding the rejection of claim 61, and we summarily sustain this
rejection. See In re Berger, 279 F.3d at 975.

Rejection (iii) of Claims 38–40, 48–50, 55–58, and 70
as Unpatentable over Walker, Beaulieu, and Luciano
In contesting the rejection to claims 38–40, 48–50, 55–58, and 70,
Appellant relies on the arguments presented, supra. Br. 26–27. For the
reasons discussed, supra, we are not apprised of error in the Examiner’s
rejection of claims 38–40, 48–50, 55–58, and 70 under 35 U.S.C. § 103(a) as
being unpatentable over Walker, Beaulieu, and Luciano.

SUMMARY
The Examiner’s decision to reject claims 33 and 34 under 35 U.S.C.
§ 112, second paragraph, as being indefinite is affirmed.
The Examiner’s decision to reject claims 30, 33–37, 41, 44–47, 51,
53, 54, and 59–69 under 35 U.S.C. § 103(a) as being unpatentable over
Walker and Beaulieu is also affirmed.
The Examiner’s decision to reject claims 38–40, 48–50, 55–58, and
70 under 35 U.S.C. § 103(a) as being unpatentable over Walker, Beaulieu,
and Luciano is also affirmed.
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).

AFFIRMED

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