Ex Parte Rothschild

Patent Trial and Appeal Board

Nov 29, 2012

10375855 (P.T.A.B. Nov. 29, 2012)

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.
10/375,855 02/26/2003 Wayne H. Rothschild 247079-000169USPT 6909
70243 7590 11/29/2012
NIXON PEABODY LLP
300 S. Riverside Plaza
16th Floor
CHICAGO, IL 60606
EXAMINER
LEIVA, FRANK M
ART UNIT PAPER NUMBER
3717
MAIL DATE DELIVERY MODE
11/29/2012 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 WAYNE H. ROTHSCHILD
____________________

Appeal 2010-010782
Application 10/375,855
Technology Center 3700
____________________

Before: LINDA E. HORNER, SCOTT E. KAMHOLZ, and
MITCHELL G. WEATHERLY, Administrative Patent Judges.

KAMHOLZ, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from the decision of the
Examiner to reject claims 1-32. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE CLAIMED SUBJECT MATTER
The claimed subject matter is directed to methods and systems for
configuring gaming machines. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A method of configuring gaming machines,
comprising:
collecting, in at least one database, data
from the gaming machines and from a plurality of
prior players of the gaming machines, the data
being associated with a plurality of variables, the
plurality of variables including a dependent
variable and a plurality of independent variables,
the dependent variable being indicative of past
performance of the gaming machines, the plurality
of independent variables being indicative of the
plurality of prior players;
analyzing the data with an electronic trend
analyzer that uses inferential statistics to determine
a degree of correlation between the plurality of
independent variables and the dependent variable,
thereby determining which of the plurality of
independent variables are more closely linked to
the dependent variable;
in response to said analyzing, identifying a
previously unknown correlation between the
dependent variable and one or more of the
independent variables; and
configuring at least one of the gaming
machines based on the newly identified correlation
for a current player of the at least one of the
gaming machines.
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Steeg
Walker
US 6,493,637 B1
US 7,033,276 B2
Dec. 10, 2002
Apr. 25, 2006
Puskorius US 2004/0019516 A1 Jan. 29, 2004

REJECTIONS
Appellant seeks our review of the following rejections:
Claims 1-10, 12, 16-25, 27, 31, and 32 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Walker and Steeg. Ans. 3.
Claims 11, 13-15, 26, and 28-30 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Walker, Steeg, and Puskorius. Ans. 6-7.

ANALYSIS
Appellant argues all claims subject to the first ground of rejection as
“one group that will stand or fall together.” App. Br. 6. We select claim 1
as representative and decide the appeal as to the first ground of rejection on
the basis of claim 1 alone; see 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Appellant also relies on the arguments presented for patentability of
representative claim 1 as the basis for addressing the second ground of
rejection. App. Br. 15. As such, the outcome of our review of the second
ground of rejection turns on our analysis of the first ground of rejection as to
claim 1.
The Examiner found that Walker discloses all limitations of claim 1
except the recited “analyzer that uses inferential statistics” and “in response
to said analyzing, identifying a previously unknown correlation between the
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dependent variable and one or more of the independent variables” but that
Steeg discloses these limitations. Ans. 3-4. The Examiner reasoned that
combining Walker and Steeg would “achieve the predictable result of
obtaining a larger base of correlations for player preferences and fine tuning
marketing and machine preferences for the enhancement of the player’s
experience” and concluded that it would have been obvious to combine the
references in the manner claimed. Ans. 4.
Appellant does not challenge the Examiner’s findings concerning
Walker’s and Steeg’s teachings; rather, Appellant argues that the
combination is improper because “a) such a combination would change the
fundamental operation of Walker; b) there is no suggestion to combine the
two references; and c) there are no other MPEP rationales for justifying such
a combination.” App Br. 6. We address each argument in turn.
a) The “combination would change the fundamental operation of
Walker”
Appellant argues that Walker cannot be modified as the Examiner
proposes because Walker’s system is designed to adjust machine parameters
based on “fixed relationships,” and use of Steeg’s inferential statistics to
make the adjustments would change the fundamental operation of Walker’s
system. App. Br. 6-10 (quotation from p. 7). In response, the Examiner
observes that Appellant’s system and Walker’s system collect the “same
data” in their databases (Ans. 10) and that Walker in fact does disclose the
identification of unknown relationships by drawing inferences from the data
(Ans. 13). While Appellant does not contest the Examiner’s finding that
Appellant and Walker use the same type of data (Reply Br. 2), Appellant
does dispute the Examiner’s finding that Walker discloses the identification
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of unknown relationships using inferential techniques and characterizes the
Examiner’s position in this regard as “circular[].” Reply Br. 3-5 (quoting
from paragraph bridging pp. 4-5).
Appellant’s argument does not apprise us of error in the rejection.
The Examiner found, and we agree, that Walker’s fundamental operation
would not be changed by modifying it to use Steeg’s inferential statistics,
because the resulting combination would, just like Walker, use information
derived from a database to guide the configuration of the gaming machine.
Ans. 3-4, 10, 13. The relevant difference between Walker alone versus
Walker as modified by Steeg is simply the manner in which the information
is derived from the database. The Examiner contends, and we agree, that
Steeg describes “well-known inferential correlation techniques” that are
applicable to a wide range of settings. Ans. 3. Appellant argues that Steeg’s
omission of “gaming arts” from the long list of fields Steeg addresses is
“indicative of the lack of motivation to combine the concepts of Steeg with
Walker.” App. Br. 9. We disagree with Appellant; Steeg describes the
“problem of finding all significant correlations… in a database” as
“ubiquitous in the computational sciences and in medical, industrial, and
financial applications” (col. 34, ll. 29-32, emphasis added). We discern no
error in the Examiner’s finding that Steeg’s solution to a “ubiquitous”
problem is applicable to Walker’s system.
Appellant instead considers Walker in a vacuum and asserts that
because Walker handles data in one way, it is incapable of handling data in
another way and that its “fundamental nature” (Reply Br. 5) would be
altered by the modification. Appellant’s argument ignores the combination
of Walker and Steeg and fails to consider what a person having ordinary
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skill in the art, aware of both references, would have considered obvious
from the combination. Appellant has identified nothing in Walker that is
incompatible with the addition of data analysis based upon inferential
statistics or that would prevent the combination. The Examiner’s conclusion
that the subject matter of claim 1 would have been obvious over Walker and
Steeg was supported by articulated reasoning with rational underpinning.
Appellant’s argument does not identify error in it.
b) “[N]o suggestion to combine”
Appellant argues that (1) there is “no teaching, suggestion, or
motivation in either Walker or Steeg to combine the references”; (2) there is
“no motivation in Walker to use inferential statistics to find a new
relationship to change the configuration of the machines”; (3) “Steeg does
not disclose the use of statistical methods in the wagering game field as
discussed above”; and (4) “there is no evidence that there would be a
reasonable expectation of success if Walker applied an unknown method to
the data structures set up for an already known configuration algorithm.”
App. Br. 15.
Appellant’s arguments do not apprise us of error because they are
non-responsive to the rejection as articulated by the Examiner. As to
arguments (1) and (2), the Examiner did not apply the “teaching, suggestion,
or motivation” test; rather, the Examiner applied the Adams test of simple
substitution of one known element for another to yield no more than a
predictable result (Ans. 4); see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007) (citing U.S. v. Adams, 383 U.S. 39, 40 (1966) for this
proposition). Argument (3) challenges the Steeg reference individually
rather than the combination of Walker and Steeg. Argument (4) is
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inapposite because the claim does not require “applying an unknown method
to the data structures.”
c) “[N]o other MPEP rationales”
Appellant argues that the Examiner’s rejection fails to meet all criteria
for each of several obviousness rationales discussed in MPEP 2143. App.
Br. 11-15. To the extent these arguments comment on rationales not relied
on by the Examiner, we do not reach these arguments, as we find the
Examiner’s articulated rational to be adequate. To the extent these
arguments comment on the Examiner’s articulated rationale, we have
addressed these arguments in sections (a) and (b) above. They do not
apprise us of error for reasons similar to those given above.

DECISION
For the above reasons, the Examiner’s decision to reject claims 1-32 is
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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