Toccata Gaming International, LLC

Patent Trials and Appeals Board

Aug 19, 2021

2021001039 (P.T.A.B. Aug. 19, 2021)

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.
15/299,179 10/20/2016 Todd R. Stimac 52951.004 3533
25005 7590 08/19/2021
Intellectual Property Dept.
DeWitt LLP
2 East Mifflin Street
Suite 600
Madison, WI 53703-2865
EXAMINER
RADA, ALEX P
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
08/19/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
IP-DOCKET@dewittllp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TODD R. STIMAC and GEORGE EGONUT
____________

Appeal 2021-001039
Application 15/299,179
Technology Center 3700
____________

Before BIBHU R. MOHANTY, BRADLEY W. BAUMEISTER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8. We have jurisdiction under
35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

1 “We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Toccata Gaming
International, LLC. (Appeal Br. 2).
Appeal 2021-001039
Application 15/299,179

2

CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to a game system that
tracks and manages an inventory of prizes and/or tokens and restocks its
inventory based on the value of prizes won by players (Spec. 1, lines 9–11).
Claim 1, reproduced below, is representative of the subject matter on appeal.

1. A game system comprising:
a platform onto which is deposited prizes or tokens that are vied
for by a player of the game system;
a player-activated arm or crane that a player activates to sweep
or grab a prize or token off the platform and into proximity of an
automated identification and data capture (AIDC) scanner;
at least one dispenser unit dimensioned and configured to house
a plurality of prizes or tokens and to dispense one or more of the
prizes or tokens onto the platform;
a plurality of prizes or tokens disposed in the dispenser unit;
an automated identification and data capture (AIDC) device
associated with each prize or token and encoding information
reflecting a type and a value of the prize or token to which it is
associated;
at least one corresponding AIDC scanner dimensioned and
configured to generate a digital signal corresponding to the
information encoded on the AIDC device associated with the
prize or token when the prize or token is swept or grabbed off the
platform by the skill of the player and placed in proximity to the
AIDC scanner by the player-activated arm or crane; and
a computer processor operationally connected to the dispenser
unit and the AIDC scanner, wherein the computer processor directs
the dispenser unit to release one or more prizes or tokens in response
to digital signals generated by the AIDC scanner and sent to the
computer processor; and further wherein the computer processor is
dimensioned and configured to store the digital signals generated by
the AIDC scanner indicting the type and the value of the prizes or
tokens released.

Appeal 2021-001039
Application 15/299,179

3

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Name Reference Date
Shoemaker, Jr. US 5,553,865 Sept. 10, 1996
Wilson US 2003/0073479 Al Apr. 17, 2003
Soto US 6,905,391 B2 June 14, 2005
Steil US 2008/0234052 Al Sept. 25, 2008
Nagayama US 8,500,125 B2 Aug. 6, 2013

The following rejections are before us for review2:
1. Claims 1–4 are rejected under 35 U.S.C. § 103 as unpatentable
over Shoemaker, Jr., Wilson, and Steil.
2. Claims 5–8 are rejected under 35 U.S.C. § 103 as unpatentable
over Shoemaker, Jr., Wilson, Steil, and Nagayama.

2 The rejections of claims 1–4 under 35 U.S.C. § 103 as unpatentable over
Shoemaker, Jr., Wilson, Steil, and Soto; and claims 5–8 under 35 U.S.C.
§ 103 as unpatentable over Shoemaker, Jr., Wilson, Steil, Soto, and
Nagayama is not reached in this Decision as these claims are affirmed by the
above listed rejections. As the rejections of claims 1–8 are affirmed by the
prior-art rejections noted above, we decline to reach these additional
rejections. See In re Gleave, 560 F.3d. 1331 (Fed. Cir. 2009) where
rejections affirmed under 35 U.S.C. § 102(b) resulted in rejections under 35
U.S.C. § 103 not being reached; see also Beloit Corp. v. Valmet Oy, 742
F.2d 1421, 1423 (Fed. Cir. 1984) (indicating an agency (e.g., the ITC) can
decide a single dispositive issue of numerous issues resolved by the
presiding officer and that there is no need for the Commission to decide all
issues decided by the presiding officer).

Appeal 2021-001039
Application 15/299,179

4

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.3

ANALYSIS
Rejection of claims 1–4 under 35 U.S.C. § 103
under Shoemaker, Jr., Wilson, and Steil
The Appellant argues that the rejection of claim 1 under 35 U.S.C.
§ 103 as unpatentable over Shoemaker, Jr., Wilson, and Steil is improper
(Appeal Br. 3–7; Reply Br. 1–5).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 2–5; Ans. 18–22).
We agree with the Examiner. Here, Shoemaker, Jr. discloses a rotary
push arcade game (10) with a turntable (24) in which an arm (28) is used to
sweep tokens (26) to a player through a dispenser (22). Wilson discloses a
similar pusher-entertainment machine (Abstract). Wilson discloses that the
playing pieces may have different values and this may be achieved by
marking the pieces with a RFID tag to be identified and given a different
value to controlling the payout (para. 420). Steil discloses a gaming token
that can be identified with an RFID tag to track both proper face value and
ornamental structure of the “look of the token,” which may include color,
texture, etc. (para. 49).

3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2021-001039
Application 15/299,179

5

The Appellant argues that Shoemaker, Jr. does not teach a device that
logs the “type and value” of the prize or token won, or the claim limitation
drawn to “direct[ing] the dispenser unit to release one or more prizes or
tokens in response to digital signals generated by the AIDC scanner”
(Appeal Br. 3). However, the rejection of record relies on the prior art
references of Wilson and Steil, and the modification of the references
together in the combination, to meet these cited claim limitations.
Appellant’s arguments attack references individually, when the rejections
are over a combination of references. See In re Keller, 642 F.2d 413, 426
(CCPA 1981) (“one cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references”).
Initially, we note that the claimed language of dispensing is for
“prizes or tokens” so the claim language only requires a token to be used.
While it could be construed that the logging the value of a token would
inherently identify its “type” as a token, the rejection does include a citation
to Steil at paragraph 49, which discloses logging of both the “type” of a
token look and “value” of a token. The Appellant also argues that Wilson
only discloses the location of the tokens, not the “type” and “value” (Appeal
Br. 4). However, the rejection of record also cites to Wilson at paragraph
420, which discloses that a playing piece may be marked with an RFID tag
to be given different value from other pieces (Final Act. 4). Wilson also
discloses that the game may control the payout rate by a controller (paras.
417, 418).
Here, the modification of the rotary arcade game of Shoemaker, Jr. to
include an RFID tag to track and to dispense tokens according to a payout
Appeal 2021-001039
Application 15/299,179

6

schedule, as suggested by Wilson, and to also include tracking the value and
type of token, as suggested by Steil, would have been an obvious,
predictable combination of familiar elements for the benefits of tracking the
type and value of the tokens dispensed for accounting and controlling the
payout to increase profitability of the arcade game.
Accordingly, we sustain the rejection of claim 1 and its dependent
claims 2–4, which were not separately argued, under 35 U.S.C. § 103 as
unpatentable over Shoemaker, Jr., Wilson, and Steil.

Rejection of claims 5–8 under 35 U.S.C. § 103 under
Shoemaker, Jr., Wilson, Steil, and Nagayama
The Appellant argues that the rejection of claim 5 under 35 U.S.C.
§ 103 as unpatentable over Shoemaker, Jr., Wilson, Steil, and Nagayama is
improper because the references do not describe logging the type or value of
the prizes, but this is suggested by the references of Shoemaker, Jr., Wilson,
and Steil, as discussed above (Appeal Br. 7).
The Appellant further argues that the cited prior art fails to disclose a
plurality of AIDC scanners corresponding to the number of dispenser units
and that the combination is not obvious and not a mere duplication of parts
(Appeal Br. 7–8).
We agree with the Examiner. A statement that merely points out what
a claim recites will not be considered an argument for separate patentablity
of the claim. 37 C.F.R. § 41.37(co)(1)(iv). In KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398 (2007) the Court stated that when considering obviousness that
“the analysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
Appeal 2021-001039
Application 15/299,179

7

inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR at 418. Here, Nagayama at Figure 5 discloses a dispenser
unit with a plurality of dispensers. One of ordinary skill in the art would
have readily inferred that by adding a dispenser for each scanning section
rather than having a lone single dispenser, that coins could be dispensed with
greater reliability as more redundant dispensers would be present in the
system.
For these reasons, we sustain the obviousness rejection of claim 5, and
of dependent claims 6–8, which were not argued separately. See Appeal
Br. 8.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4 103 Shoemaker, Jr.,
Wilson, Steil
1–4
5–8 103 Shoemaker, Jr.,
Wilson, Steil,
Nagayama
5–8
Overall
Outcome
1–8
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED