Ex Parte Anderson

Patent Trials and Appeals Board

Jan 12, 2015

11588679 - (D) (P.T.A.B. Jan. 12, 2015)

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.
11/588,679 10/27/2006 Kent Steven Anderson 03-0302-US 3750
7590 01/12/2015
Michael A. Mochinski
Attorney at Law
11670 Fountains Drive
Maple Grove, MN 55369
EXAMINER
LIM, SENG HENG
ART UNIT PAPER NUMBER
3717
MAIL DATE DELIVERY MODE
01/12/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KENT STEVEN ANDERSON
____________________

Appeal 2012-012043
Application 11/588,679
Technology Center 3700
____________________

Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
ROBERT L. KINDER, Administrative Patent Judges.

KINDER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1–56. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

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STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention relates to a “memento dispensing device for
dispensing mementos in the form of tokens, medallions, souvenirs, and other
articles or objects having commemorative value through the simulated
operation of a gaming device commonly referred to and known in the art as
a slot machine.” Spec. Abstract.
Claims 1, 41, and 53 are the independent claims on appeal. We select
claim 1 as illustrative of the claimed subject matter:
1. A memento dispensing device comprising:
a plurality of reel wheels, each of said reel wheels having
a plurality of symbols pictorially displayed thereon and a
plurality of reel wheel stop positions positionally coinciding
with said symbols;
means for rotatably driving each of said reel wheels in a
controlled operable manner;
process controller means for coordinating activation and
deactivation of said rotatably driving means to commence and
consummate a reel spin cycle for each of said reel wheels;
an input interface device communicatively coupled to
and substantially suited to prompt said process controller means
to activate said rotatably driving means;
a resident memory module integrated within said process
controller means for storing an application program having an
instruction set for calculably deriving case outcomes each
assignably associated with said reel wheel stop position and
said symbol coinciding therewith;
a currency acceptor communicatively coupled to said
process controller means for validating the form and
denomination of currency and storing into a random access
memory module a validated amount of currency recognizable as
credit reserve to initialize said process controller means to make
active said input interface device; and
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a hopper assembly having means for storing mementos
and means for dispensing at least one memento momentarily
after recognition of a completed reel spin cycle for all of said
reel wheels irrespective of said case outcome and display of
said symbol associated therewith.

Examiner’s Rejections
The following rejections are before us for review.
The Examiner rejected claims 1–11, 16–20, 34–37, and 53–56 under
35 U.S.C. § 103(a) over DeMar (US 2003/0022710 A1, pub. Jan. 30, 2003)
and Kelly (US 2002/0077169 A1, pub. June 20, 2002).
The Examiner rejected claim 12 under 35 U.S.C. § 103(a) over
DeMar, Kelly, and Walker (US 2006/0148551 A1, pub. July 6, 2006).
The Examiner rejected claims 13–15 under 35 U.S.C. § 103(a) over
DeMar, Kelly, and Slattery (US 2003/0153381 A1, pub. Aug. 14, 2003).
The Examiner rejected claim 21 under 35 U.S.C. § 103(a) over
DeMar, Kelly, and Breckner (US 6,890,259 B2, iss. May 10, 2005).
The Examiner rejected claims 22 and 38–40 under 35 U.S.C. § 103(a)
over DeMar, Kelly, and Breckner, and as applied to claim 21 and in further
view of Paulsen (US 7,442,125 B2, iss. Oct. 28, 2008, filed May 9, 2003).
The Examiner rejected claims 23–31 under 35 U.S.C. § 103(a) over
DeMar, Kelly, and Pacey (US 2006/0116194 A1, pub. June 1, 2006).
The Examiner rejected claims 32–33 under 35 U.S.C. § 103(a) as
being unpatentable over DeMar, Kelly and Pacey as applied to claim 29 and
further in view of Miguel (US 5,593,349, iss. Jan. 14, 1997).
The Examiner rejected claims 41–52 under 35 U.S.C. § 103(a) as
being unpatentable over DeMar and Kelly as applied in the above claims and
further in view of Slattery and Pacey.
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ANALYSIS
For ease of reference to the Appellant’s arguments, we address the
rejections in the groups designated by Appellant.
Group 1: Independent Claims 1 and 53; Dependent Claims 2–7, 10,
11, 16–20, 34–37, and 54
Appellant argues the combination of prior art fails to teach or suggest
the limitation of claim 1 requiring “means for dispensing at least one
memento momentarily after recognition of a completed reel spin cycle for all
of said reel wheels irrespective of said case outcome and display of said
symbol associated therewith.” Claim 1; see also App. Br. 32–40. Appellant
contends the claimed “invention draws its non-obvious distinction over
DeMar and Kelly by means of software control that effectuates dispensing of
a memento after each and every reel wheel spin cycle regardless of the case
outcome.” App. Br. 37. In contrast to the claimed invention, Appellant
contends DeMar requires “placing a wager for a probable chance to win a
jackpot or a souvenir as often associated with gaming or gambling machines
such as the slot machine in DeMar.” Id. Similarly, Appellant contends
Kelly requires satisfaction of “a predetermined set of conditions to arrive at
an opportunity to win or be awarded prize credits redeemable for a prize or
prizes.” Id. 38.
The Examiner relies on the combination of DeMar and Kelly as
teaching each element of claim 1, including the disputed limitation. The
Examiner finds DeMar teaches each structural element of claim 1 as
depicted in Figure 2. Next, the Examiner finds DeMar discloses “the
gaming machine may provide souvenirs upon the occurrence of other events
set by the operator, such as the number of games played on a certain
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machine or the number of players that have visited and played a game at the
establishment.” Ans. 6 (citing DeMar ¶ 27 (“This invention may provide
souvenirs upon the occurrence of other events set by the operator, such as
the number of games played on a certain machine or the number of players
that have visited and played a game at the establishment, just to name two
situations.”). Although DeMar suggests that a souvenir may be awarded
based on the number of games played, which inferentially could be one
game, the Examiner relies on Kelly for teaching dispensing a souvenir after
every cycle or game. Specifically, the Examiner finds “Kelly discloses each
of the players may be awarded a prize irrespective of an outcome of the
games.” Ans. 6 (citing Kelly ¶ 120). The Examiner concludes “. . . a person
of ordinary skill in the art would have found it obvious to modify DeMar in
view of Kelly to provide a souvenir or memento whether the player receives
a winning or losing outcome and would have been motivated to do so to
provide a memorable item/souvenir of the experience.” Id. We agree with
the Examiner.
DeMar, alone, suggests to one of skill in the art that a souvenir may be
provided after each game. DeMar ¶ 27. With this foundation, Kelly
explicitly teaches providing an incentive in the form of a prize that may be
awarded “irrespective of an outcome of the games.” Kelly ¶ 120. We find
Appellant’s arguments focused on whether or not the claimed system and the prior
art are gambling machines (awarding prizes versus dispensing souvenirs)
unpersuasive. Our analysis and conclusion are based on what Appellant has
claimed and what the prior art teaches or suggests, not on general characterization
of the invention and prior art. The combination of DeMar and Kelly teaches and
suggests to one of ordinary skill in the art a “means for dispensing at least one
memento momentarily after recognition of a completed reel spin cycle for all of
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said reel wheels irrespective of said case outcome and display of said symbol
associated therewith.” Claim 1.
Appellant argues independent claims 53, and dependent claims 2–7,
10, 11, 16–20, 34–37, and 54 should stand or fall with claim 1 (App. Br. 40).
Thus, for the reasons set forth for claim 1, we find the Examiner has not
erred in rejecting these claims. We, therefore, sustain the Examiner’s
rejection of claims 1–7, 10, 11, 16–20, 34–37, 53 and 54 under 35 U.S.C.
§ 103(a).
Group 2: Claims 8 and 55; Group 3: Claims 9 and 56; Group 11:
Claim 44 and Group 12: Claim 45
Each of claims 8, 9, 44, 45, 55, and 56 require “wherein each of said
case outcomes is operably associated with a pre-defined set of matching
symbols representable of a perceived winning combination for display.” In
essence, Appellant claims a winning, or matching, symbol display for every
case outcome. Claims 8, 44, and 55 further require, “each of said case
outcomes sequentially occurring in numeric order starting with a first case
outcome and ending with a last case outcome and restarting with said first
case outcome upon completing said last case outcome.” This limitation
requires each perceived winning case outcome occur, or be displayed, in a
preset number order, and then after the last winning display, the sequence
restarts to the first winning case outcome. Similarly, claims 9, 45, and 56
further require “each of said case outcomes being randomly selected from
within a range extending from a first case outcome and ending with a last
case outcome.” Thus, among the pre-defined set of matching symbols
representable of a perceived winning combination, a random selection
occurs within this predefined set of matching symbols. Appellant argues
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that the Examiner misunderstood the claim scope for each of these claims
and thus erred in rejecting each claim as obvious. We agree with Appellant.
We find that the Examiner’s interpretation of the involved claim terms
is not consistent with the claim language. Ans. 22–23. The Examiner finds
as “known in slot machines, the order of the reels spinning and stopping
(i.e., case outcome) can happen sequentially from the first reel to the last reel
from left to right or be randomly selected and when the last reel finishes
outputting its case outcome, the game can repeat the process of outputting.”
Ans. 21. The Examiner’s reasoning diverts from the claim requirement first
defining a case outcome as “operably associated with a pre-defined set of
matching symbols representable of a perceived winning combination for
display.” See, e.g., claim 8. Thus, Appellant’s claim language requires the
reels, as an example, to all be matching as a perceived winning combination.
Only then does the additional claim language require that the selection of
these perceived winning combinations occur either sequentially (claims 8,
44, and 55) or randomly (claims 9, 45, and 56). Because the Examiner’s
claim interpretation is not based on what Appellant was actually claiming,
and the Examiner’s rejection lacks adequate support, we cannot sustain the
Examiner’s rejection of claims 8, 9, 44, 45, 55 and 56.
Group 4: Claim 12; Group 5: Claims 13–15; Group 6: Claim 21;
Group 7: Claims 22, 38–40; Group 8: Claims 23–31; Group 9:
Claims 32–33; and Group 10: Claims 41–43, 46–52
We have considered Appellant’s arguments for each of these
remaining claim groups and find them to be unpersuasive. We have
reviewed the Examiner’s rejections for each of these claim groups in light of
Appellant’s arguments that the Examiner erred. We disagree with
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Appellant’s conclusions as to these rejections. We adopt as our own the
findings and the reasons set forth by the Examiner in the Answer to
Appellant’s Brief for these claim groups. We further highlight and address
specific findings and arguments for emphasis as follows.
Appellant’s contentions for Groups 4–10 largely incorporate
arguments related to dispensing a memento “irrespective of said case
outcome and display,” which we have addressed supra in the analysis of
claim 1. Appellant also quotes claim language of certain claims without
providing any basis or reasoning of Examiner error. See, e.g., App. Br. 48
(“comprise further limitations . . .”); 53 (“comprises a variety of means for
playing back video footage”); 58 (“further inclusion of subject matter as
forth in claims . . .”). We will not consider such statements as properly
raised arguments. See 37 CFR § 41.37(c)(1)(vii) (2011) (“A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.”); see also Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an appellant fails to
present arguments on a particular issue – or, more broadly, on a particular
rejection – the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection.”).
Because Appellant has offered no persuasive argument as to Examiner
error for the rejections of claims 12–15, 21–33, 38–43, and 46–52, we
sustain the Examiner’s respective rejections under 35 U.S.C. § 103(a).
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DECISION
We reverse the Examiner’s rejection of claims 8, 9, 44, 45, 55 and 56
under 35 U.S.C. § 103(a).
We affirm the Examiner’s rejection of claims 1–7, 10–43, and 46–54
under 35 U.S.C. § 103(a) as unpatentable.

AFFIRMED-IN-PART

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