Ex Parte Gelber et al

Patent Trials and Appeals Board

Oct 22, 2013

11664773 - (D) (P.T.A.B. Oct. 22, 2013)

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.
11/664,773 04/05/2007 Philip B. Gelber 247079-000313USPX 3030
70243 7590 10/22/2013
NIXON PEABODY LLP
300 S. Riverside Plaza
16th Floor
CHICAGO, IL 60606
EXAMINER
MCCULLOCH JR, WILLIAM H
ART UNIT PAPER NUMBER
3714
MAIL DATE DELIVERY MODE
10/22/2013 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 PHILIP B. GELBER, THOMAS M. KOPERA,
MICHAEL W. MASTROPIETRO, RICHARD T. SCHWARTZ, and
MATTHEW J. WARD
____________

Appeal 2011-011552
Application 11/664,773
Technology Center 3700
____________

Before STEFAN STAICOVICI, GAY ANN SPAHN, and
JOHN W. MORRISON, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-011552
Application 11/664,773
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STATEMENT OF THE CASE
Philip B. Gelber et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting under 35 U.S.C. § 103(a): claims 1-3 and
5-20 as unpatentable over Kelly (US 6,015,344, issued Jan. 18, 2000).
Claims 46-48 have been withdrawn and claims 4 and 21-45 have been
canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).

INVENTION
Appellants’ invention relates to “gaming terminals for playing a
wagering game.” Spec. 1, para. [0001].
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A gaming terminal for playing a wagering game,
comprising:
a wager-input device;
a display configured to display the wagering game, the
wagering game including a randomly-selected outcome selected
from a plurality of outcomes in response to a wager input
received via the wager-input device, wherein the plurality of
outcomes includes at least one outcome that awards standard
credits and bonus tokens corresponding to a first mathematical
model utilized by the gaming terminal;
a credit output device configured to selectively output a
value of the standard credits and the bonus tokens in response
to achieving the at least one outcome, wherein the bonus tokens
are exchangeable for a special event on a second gaming
terminal; and
a credit input device configured to receive bonus tokens
accumulated on another gaming terminal utilizing another
mathematical model different from the first mathematical
model utilized by the gaming terminal, wherein the gaming
terminal is configured to normalize a number or a value of
bonus tokens received from the another gaming terminal to
thereby equalize the received number or value of bonus tokens
with the first mathematical model utilized by the gaming
terminal.
Appeal 2011-011552
Application 11/664,773
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SUMMARY OF DECISION
We REVERSE.

ANALYSIS
Each of apparatus claims 1 and 20 requires a gaming terminal that
normalizes1 bonus tokens according to a mathematical model, wherein the
bonus tokens were awarded on another gaming terminal according to a
different mathematical model. App. Br., Clms. App’x. Likewise, method
claim 11 requires “the first gaming terminal selectively outputting . . . a
number of the bonus tokens according to a first mathematical model;
transmitting the bonus tokens to the second gaming terminal; and
normalizing the bonus tokens.” Id.
The Examiner found that “the prize credits of Kelly may correspond
to the claimed ‘standard credits’ and the specific prize tickets (or specific
prizes, depending on [the] context) may correspond to the claimed ‘bonus
tokens.’” Ans. 10. The Examiner further found that Kelly’s network of
linked gaming terminals allow a player access to his or her credit account
from any linked gaming unit such that a player is allowed to win a bonus
token on one machine and redeem it on another. Ans. 6; see also Kelly, col.
22, l. 62 through col. 23, l. 23 and figs. 2-4. Pointing to column 14, line 58
through column 15, line 1, the Examiner also found that “Kelly clearly
indicates that each gaming machine uses a mathematical model to award
standard credits and bonus outcomes” and that “the mathematical model

1 Appellants’ Specification states that “[b]ecause different gaming
terminals have different mathematical payout models,” the mathematical
models of the different gaming terminals are normalized “so that bonus
tokens earned on one gaming terminal . . . may be recognized in another
gaming terminal[].” Spec. 11, para. [0045].
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Application 11/664,773
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may be adjusted to whatever values the proprietor wishes.” Ans. 7. Thus,
the Examiner concluded that because (1) Kelly’s gaming system allows “the
player to use token/awards/credits awarded at one gaming machine in a
second gaming machine” and (2) the mathematical model of the gaming
machine may be adjusted, the gaming machine of Kelly uses a mathematical
model that is “inherently capable of ‘normalizing[2]’ the bonus tokens from
one gaming device to another.” Id. (emphasis added).
Appellants argue that Kelly fails to disclose a gaming terminal that is
configured to normalize bonus tokens received from another gaming
terminal. App. Br. 17-18. According to Appellants, the Examiner’s
inherency position is conclusory (see App. Br. 15) and the Examiner has
failed “to prove that the numerous limitations . . . not expressly disclosed in
Kelly are inherently present in Kelly.” App. Br. 20. We agree.
“In relying upon the theory of inherency, the examiner must provide a
basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d
1461, 1464 (BPAI 1990). In this case, the question raised is whether the
gaming terminal of Kelly is necessarily capable of normalizing bonus tokens
received from another gaming terminal. As noted above, the Examiner
found that Kelly’s specific prize tickets correspond to the claimed “bonus
tokens.” See Ans. 10. While the Examiner correctly points out that the
gaming terminal of Kelly can normalize prize credits received from another
gaming terminal, this in no way demonstrates that Kelly’s gaming terminal

2 According to the Examiner, “[t]he term ‘normalize’ is interpreted to
mean the application of a conversion factor to coalesce the values of
different machines to a standard amount (i.e., to ‘equalize’ them).” Ans. 7.
Appeal 2011-011552
Application 11/664,773
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is also capable of normalizing specific prize tickets received from another
gaming terminal, as the Examiner contends. Kelly discloses that a specific
prize ticket is “a ticket . . . that can be exchanged for the specific prize only
and cannot be exchanged for other types of prizes or accumulated to
purchase several types of prizes.” Kelly, col. 10, ll. 64-67 (emphasis added).
Kelly further discloses that although the prize selection unit can be a gaming
unit, nonetheless it “can be used solely for prize selection” (see Kelly, col.
13, ll. 7-9) and “it need not offer any games for players to play” (see Kelly,
col. 17, ll. 44-45). Furthermore, in contrast to Appellants’ bonus tokens,
which can be accumulated, as shown above, Kelly specifically states that
specific prizes cannot be accumulated for other types of prizes. Compare
Kelly, col. 10, ll. 66-67 and Spec. 10, para. [0042] (“The bonus tokens may
be accumulated by the player.”). Thus, although we appreciate the
Examiner’s position that in Kelly an operator can modify the condition
required for a player to win a specific prize, nonetheless, once the player has
won a specific prize at a gaming machine, only that prize can be redeemed,
regardless if it is redeemed at the same gaming machine or another machine
in the network. Therefore, since the same prize is redeemed regardless of
which gaming machine in Kelly’s network is used, normalization of the
specific prize ticket (i.e., bonus tokens) does not necessarily occur, as the
Examiner proposes.
In conclusion, although Kelly discloses (1) a network of linked
gaming terminals that allows a player to win a bonus token on one machine
and redeem it on another and (2) adjusting the mathematical model of the
gaming machines of the network, the adjustment does not necessarily
normalize bonus tokens (i.e., specific prize tickets) won on one machine and
redeemed on another. Therefore, the Examiner’s finding that Kelly’s
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Application 11/664,773
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gaming machine inherently normalizes bonus tokens received from another
gaming terminal is mere speculation and conjecture based on an unfounded
assumption that adjusting the mathematical model of the gaming machines
of Kelly’s network would necessarily normalize bonus tokens won on one
machine and redeemed on another.
Since speculation and conjecture cannot form the basis for concluding
obviousness, the rejection of independent claims 1, 11, and 20 and their
respective dependent claims 2, 3, 5-10, and 12-19 under 35 U.S.C. § 103(a)
as unpatentable over Kelly cannot be sustained. See In re Fine, 837 F.2d
1071, 1076 (Fed. Cir. 1988).

SUMMARY
The Examiner’s decision to reject claims 1-3 and 5-20 is reversed.

REVERSED

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