Ex Parte Pececnik

Patent Trial and Appeal Board

Apr 30, 2015

12752790 (P.T.A.B. Apr. 30, 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.
12/752,790 04/01/2010 Joze Pececnik 333.013US1 3230
97462 7590 05/01/2015
Mark A. Litman & Associates, P.A.
7001 Cahill Road, Ste. 15A
Edina, MN 55439
EXAMINER
MOSSER, ROBERT E
ART UNIT PAPER NUMBER
3714
MAIL DATE DELIVERY MODE
05/01/2015 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 JOZE PECECNIK
____________

Appeal 2013-002469
Application 12/752,790
Technology Center 3700
____________

Before JENNIFER D. BAHR, LYNNE H. BROWNE, and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Joze Pececnik (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner’s decision to reject (1) claims 33, 37, 40, and 42 under 35 U.S.C.
§ 112, second paragraph, as indefinite; (2) claims 28–31 and 33–40 under 35
U.S.C. § 103(a) as unpatentable over Lindo (US 6,575,834 B1; iss. June 10,
2003), Eman (US 5,588,650; iss. Dec. 31, 1996), and Levy (US 4,337,945;
iss. July 6, 1982); and (3) claims 32, 41, and 42 under 35 U.S.C. § 103(a) as
unpatentable over Lindo, Eman, Levy, and Bonito (US 5,931,471; iss. Aug.
3, 1999). Claims 1–27 have been canceled. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
Appeal 2013-002469
Application 12/752,790

2
CLAIMED SUBJECT MATTER
The claimed subject matter relates to “an automatic electro-
mechanical and video table game that can [be] remotely played by receipt of
a live video feed of table game play with table game results.” Spec. para. 4;
Figs. 1, 5. Claims 28, 39, and 41 are independent.
Claim 28 is illustrative of the claimed subject matter and recites:
28. An electro-mechanical automatic gaming machine
system comprising:
a video camera;
an electro-mechanical automatic gaming machine
adapted to:
mechanically generate an analog result of game
play in an unattended manner without any player control
and electronically convert the analog result into a digital
result; and
transmit a live video feed of the game play
recorded by the video camera to a plurality of remote
clients operated by a plurality of players to allow the
plurality of remote clients to place wagers on a future
result of the game play.

Appeal Br. 16, Claims App. (emphasis added).1

1 The reproduction of claim 28 in the Claims Appendix contains an error.
Claim 28 in the Claims Appendix incorrectly recites “mechanically generate
an analog result of game play in an automatic manner,” instead of
“unattended manner.” See Response After Final Act., Amendments to the
Claims, 1 (filed Jan. 13, 2011); see also the most recent claims amendment
filed (i.e., Response to Non–Final Act., Amendments to the Claims, 1 (filed
Sept. 27, 2011)). For purposes of our review, we consider “unattended
manner” and “automatic manner” to be synonymous. See Final Act. 4–5
(mailed Dec. 22, 2011); Appeal Br. 12–13.
Appeal 2013-002469
Application 12/752,790

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ANALYSIS

Indefiniteness
Claims 33, 37, 40, and 42

Each of independent claims 28, 39, and 41 calls for mechanically
generating/producing an analog result “without any player control.” See
Appeal Br. 16–20, Claims App. Each of dependent claims 33, 37, and 42
calls for the gaming device to be “interactively played” by a remote client.
See id. at 17–18, 20, Claims App.2 Claim 40 calls for the gaming device to
be “played interactively” by a remote client. See id. at 19, Claims App.
The Examiner determines that
[i]t is unclear how a game can be “without any
player control” [as recited in independent claims
28, 39, and 41] and at the same time be
“interactively played” [as recited in dependent
claims 33, 37, 40, and 42]. Alternatively stated,
when the player has no influence over the game
outcome then the player cannot by a plain and
ordinary meaning of such be interactively playing
a game.

Final Act. 2.

We agree with Appellant that the phrases “without any player control”
and “interactively played” “do not refer to the same actions and therefore are
not in conflict.” Reply Br. 4; Appeal Br. 11. We further agree with
Appellant that one of ordinary skill in the art would understand that (1) the

2 The reproduction of claim 42 in the Claims Appendix contains an error.
Claim 42 in the Claims Appendix incorrectly depends from claim 39, instead
of claim 41, as most recently amended. See Response to Non–Final Act.,
Remarks, 1; id. at Amendments to the Claims, 4.
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4
phrase “interactively played” refers to “wagering, cashing out, accounting
functions, entering the game events, and other conventional player
interactions with the gaming device”; and (2) the limitation mechanically
generating/producing an analog result “without any player control” “does
not in any way imply or require that the player does not perform any tasks
with respect to any other game element, including indicating a wager.” See
Reply Br. 4–5; see also Appeal Br. 11; Final Act. 2; Spec. paras. 36, 38, 52,
61.
Moreover, the Examiner states that “[f]or the purposes of claim
interpretation ‘interactively played’, has been understood [to] define the
interactive utilization of the gaming system (i.e.[,] allowing the player to
select a wager and receive the result of such).” Final Act. 2; see also Spec.
paras. 36, 38, 52, 61. If the scope of a claim would be reasonably
ascertainable by those skilled in the art, then the claim is not indefinite.
Energizer Holdings Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1369 (Fed.
Cir. 2006).
For the above reasons, the phrase “interactively played” in claims 33,
37, and 42 and “played interactively” in claim 40 do not render the scope of
claims 33, 37, 40, and 42 unclear.
Accordingly, we do not sustain the Examiner’s rejection of claims 33,
37, 40, and 42 as indefinite.
Obviousness over Lindo, Eman, and Levy
Claims 28–31 and 33–40
Independent claim 28 calls for “an electro-mechanical automatic
gaming machine adapted to: mechanically generate an analog result of game
play in an automatic manner without any player control.” Appeal Br. 16,
Appeal 2013-002469
Application 12/752,790

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Claims App. The Examiner finds that Lindo teaches the electro-mechanical
automatic gaming machine system of claim 28 except “Lindo does not teach
automating the manual activities of the croupier to operate the roulette reel
in an unattended manner.” Final Act. 4. The Examiner finds that “Eman
teaches the operation of a roulette game in an unattended manner through
the use of an electromechanical gaming machine that generates analog game
results and converts the analog results to a digital result.” Id. (citing Eman,
Abstract; Col. 2, ll. 6–27; Figs. 3, 4, Element 30). The Examiner concludes
that
[i]t would have been obvious to one of ordinary
skill in the art at the time of invention to have
automated the manual operation of the roulette
wheel of Lindo with the automated roulette wheel
and associated elements of Eman because such
would have represented the automating of a known
manual activity (MPEP 2144.04.III) and provided
for the benefit of reducing operator cost by
eliminating the need to pay personnel (croupier) to
operate the gaming device croupier.

Id. at 4–5. The Examiner further finds that the combined teachings of Lindo
and Eman “[do] not teach explicitly baring all player control.” Id. at 5. The
Examiner finds that “Levy teaches the use of an automated roulette wheel
wherein the player and operator interaction with the wheel is removed to
prevent user or operator influence over the outcome of the game.” Id. (citing
Levy, Abstract; Col. 1, ll. 26–39; Fig. 1); see also id. at 9. The Examiner
further concludes that it would have been obvious “to have incorporated
[the] automated roulette wheel of Levy in the combination of Lindo & Eman
in order to prevent user or operator influence over the outcome of the game
as taught by Levy.” Id.
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Appellant contends that
[not] one of the three references or the
combination of references provides evidence of a
fully automatic analog result generating gaming
event. . . .
Each of the three references requires a
player/dealer to actively participate in the
generation of the analog result. The player casts
the dice or the dealer spins the wheel and drops the
ball. Those steps are not part of “. . .an automatic
manner. . .” of generating an analog game result.
None of the three references evidences an
automatic gaming system.

Appeal Br. 12.

In response, the Examiner states that
the rejection of record incorporates the reference
of Eman for teaching the feature of “. . .
mechanically generate an analog result of game
play in an automatic manner without player
control and electronically convert the analogue
result into a digital result . . .” It is further noted
that . . . Eman teaches than the automated gaming
device as cited in the rejection of record and
directed specifically to filling “. . . a need for a
roulette game which can be operated
automatically, to reduce the expense of hiring
and training skilled operators” specifically
presented in column 1 at Lines 51-53 and
expanded on at column 1 at line 66 through
column 2 at line 53.

Ans. 4; see also id. at 5.

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We disagree with the Examiner’s position for the following reasons.
Eman discloses that
there is a need for a roulette game which can be
operated automatically, to reduce the expense of
hiring and training skilled operators.
In addition, if players were permitted more
interaction, they would be more interested in the
game, and would therefore play more often and for
longer periods. Thus, there is a need for a roulette
game that permits the players to actively
participate in the game by, for instance,
controlling the launching of the ball onto the
spinning roulette wheel.

Eman, col. 1, ll. 50–58 (emphasis added). Eman further discloses that
“[b]all launch control means, interconnected to the processor, allows the
player to control the time of release of the ball by the ball launching
mechanism into the roulette wheel and control the ball’s relative velocity at
its release into the roulette wheel.” Id. at col. 2, ll. 34–38 (emphasis added);
see also Response to Non–Final Act., Remarks, 2. Although Eman discloses
that the roulette game can be operated automatically (see Ans. 4), Eman also
permits active player participation (i.e., player control). Thus, we do not
agree with the Examiner that “Eman clearly teaches the feature of
‘. . . mechanically generate an analog result of game play in an automatic
manner without player control.’” See Ans. 5 (emphasis omitted); see also id.
at 4. Regarding the Levy reference, as pointed out by Appellant, “Levy has
a dealer control the spinning of the wheel.” See Appeal Br. 12 (emphasis
omitted).3 As such, Levy fails to disclose an automatic manner of

3 Levy discloses that “[n]ormally, the guide tubes rest on the track until the
dealer activates the system, which randomly selects a plunger and the
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generating an analog game result. Moreover, the portions of Levy cited by
the Examiner (i.e., Abstract; Col. 1, ll. 26–39) fail to disclose “removal of
player control in game play,” as the Examiner proposes. See Final Act. 9;
see also id. at 5.4
Similar to independent claim 28, independent claim 39 calls for a
roulette table game system adapted to, in an unattended manner: “produce an
analog result of play of the roulette-style game without any player control.”
Appeal Br. 18–19, Claims App. The Examiner relies on the same
unsupported findings discussed above in reference to claim 28. See Final
Act. 6–8. Consequently, based on the foregoing reasons, the Examiner does
not establish a prima facie case that the combined teachings of Lindo, Eman,
and Levy render obvious the electro-mechanical automatic gaming machine
system or the roulette table game system of respective independent claims
28 and 39.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 28 and 39 and their respective dependent claims 29–31,
33–38, and 40 as unpatentable over Lindo, Eman, and Levy.

propelling force and the ball is displaced onto the track, at which point the
jack is automatically activated and the guide tubes are vertically displaced
from the track to allow the ball to travel around the track uninterrupted. As
soon as the ball leaves the chosen guide tube, the dealer spins the wheel
head in the opposite direction to the ball travel.” Levy, col. 1, l. 66 – col. 2,
l. 6 (emphasis added); see also Appeal Br. 12–13.
4 Levy’s Abstract merely discusses the gaming apparatus. Column 1, lines
26–39, of Levy merely discusses dealer control.
Appeal 2013-002469
Application 12/752,790

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Obviousness over Lindo, Eman, Levy, and Bonito
Claims 32, 41, and 42
Similar to independent claim 39, independent claim 41 calls for a dice
game table adapted to, in an unattended manner: “produce an analog result
of play of the dice-style game at the dice table without any player control.”
Appeal Br. 19–20, Claims App. Claim 32 depends from claim 28. See id. at
17, Claims App. Claim 42 depends from claim 41. See id. at 20, Claims
App. The Examiner relies on the same unsupported findings discussed
above in reference to claims 28 and 39. See Final Act. 8. The Examiner
does not rely on Bonito to remedy the deficiencies of Lindo, Eman, and
Levy. Accordingly, for similar reasons as discussed above, we do not
sustain the Examiner’s rejection of claims 32, 41, and 42 as unpatentable
over Lindo, Eman, Levy, and Bonito.

DECISION
We REVERSE the decision of the Examiner to reject claims 28–42.

REVERSED

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