Eric Meyerhofer

Patent Trials and Appeals Board

Jan 27, 2021

2020005660 (P.T.A.B. Jan. 27, 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.
12/161,788 04/06/2009 Eric Meyerhofer 4979
39564 7590 01/27/2021
FisherBroyles, LLP - MAIN CN
945 East Paces Ferry Road NE
Suite 2000
Atlanta, GA 30326
EXAMINER
POUNCIL, DARNELL A
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
01/27/2021 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):
docketing@fisherbroyles.com
patent@fisherbroyles.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ERIC MEYERHOFER

Appeal 2020-005660
Application 12/161,788
Technology Center 3600
____________

Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and
TAWEN CHANG, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
Examiner rejected the claims under 35 U.S.C. § 103 as obvious and
under 35 U.S.C. § 112 as lacking written description. Pursuant to 35 U.S.C.
§ 134(a), Appellant1 appeals from Examiner’s decision to reject the claims.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as JCM
American Corporation. Appeal Br. 3.
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STATEMENT OF THE CASE
Examiner rejected claims 62–70 in the Non-Final Office Action
(“Office Act.”; Dec. 12, 2019) as follows:
Claims 62–70 under pre-AIA 35 U.S.C. § 103(a) as obvious in view
of Meyerhofer (US 2004/0095604 A1, published May 20, 2004)
(“Meyerhofer”) and Proulx et al. (US 2003/0137532 A1, published July 24,
2003) (“Proulx”). Office Act. 4.
Claims 62–70 under pre-AIA 35 U.S.C. § 102(b) as anticipated by
Meyerhofer. Office Act. 4.
Claims 62–70 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA),
first paragraph, as failing to comply with the written description
requirement. Office Act. 3.
Claim 62, the only independent claim on appeal, is reproduced below
(bracketed annotations are added for reference to the limitations in the
claim):
62. A promotional coupon system, comprising:
[A] a central data processing unit;
[B] a game machine; and
[C] a Game installed Voucher Printer (GVP) within the
game machine, the GVP comprising:
[C1] a dedicated primary communication port for
receiving cash-out voucher data from the gaming machine;
[C2] an auxiliary port for receiving promotional
coupon data from the central data processing unit; and
[C3] a processor configured to:
[C3a] extract gaming machine identifying
information for the game machine from signals received on the
primary communication port; and
[C3b] communicate the extracted gaming
machine identifying information and a network address of the
GVP to the central data processing unit;
wherein:
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the central data processing unit is coupled to the GVP
and one or more additional GVPs on a dedicated network; and
the central data processing unit is configured to:
[A1] receive the unique network address of the
GVP from the GVP;
[A2] receive the gaming machine identifying
information from the GVP;
[A3] create a logical link between the GVP and the
game machine by associating the unique network address of the
GVP with the gaming machine identifying information; and
[A4] store an indication of the logical link in a
memory.

REJECTIONS BASED ON MEYERHOFER
Anticipation
Examiner rejected claims 62–70 under § 102(b) as anticipated by
Meyerhofer, but the Examiner cited Proulx in the rejection for its teaching of
limitations [A1]–[A4] of claim 62. Office Act. 4–6. The Examiner did not
explain how these limitations are described by Meyerhofer, alone, either
expressly or inherently. Consequently, we reverse the anticipation rejection.

Obviousness
Examiner found that Meyerhofer describes a coupon promotion
system with the same three components recited in claim 62, namely, [A] a
central data processing unit, [B] a game machine; and [C] gaming
promotional printer. Office Act. 4. Examiner found that the printer in
Meyerhofer also comprises two ports ([C1], [C2]) and a processor ([C3]) as
required by claim 62. Id. at 5. Examiner also found that the processor ([C3])
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of the printer extracted gaming machine identifying information2 as required
by the claim ([C3a]) and communicated it to the [A] central data processing
unit ([C3b]). Id.
Examiner stated that Meyerhofer does not “explicitly disclose” that
the [A] central data processing unit performs steps [A1]–[A4] of claim 62.
Office Act. 5. However, the Examiner found that Proulx describes these
steps. Id. at 5–6. The Examiner stated it would have been obvious to modify
Meyerhofer to perform the steps in Proulx “in order to be able to send
information across the network to the appropriate device.” Id. at 6.
Appellant argues that neither Meyerhofer nor Proulx teaches or
suggests “[C3a] extract[ing] gaming machine identifying information for the
game machine from signals received on the primary communication port.”
Appeal Br. 4. As a result of this deficiency, Appellant also argues that
neither publication teaches or suggests steps [A2]–[A4] of claim 62.
We agree with Appellant that Examiner erred in finding that
Meyerhofer and Proulx make obvious limitation [C3a] of claim 62 and the
use of this information by the [A] central data processing unit to [A2]
receive the gaming machine identifying information from the GVP, [A3]
create a logical link between the GVP and the game machine, and [A4] store
an indication of the logical link in a memory.
Examiner cited paragraphs 29 and 101–103 of Meyerhof as disclosing
[C3] a processor configured to “[C3a] extract gaming machine identifying

2 The Specification does not provide a specific definition of “gaming
machine identifying information,” but it indicates that is can be an “address”
or identifier that signals the GVP into which gaming machine it is installed.
Spec. ¶¶ 47, 48, 120.

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information for the game machine from signals received on the primary
communication port” and to communicate it to the central data processing
unit ([C3b]). We address these disclosures below.
Meyerhofer describes a “gaming promotional printer” which is used
“within a cashless enabled gaming machine.” Meyerhofer, Abstract. The
printer corresponds to the claimed “[C] Game installed Voucher Printer
(GVP),” and it is “within” a [B] gaming machine as required by the claim.
The gaming promotional printer in paragraph 29 of Meyerhofer is described
as having “a unique address or identifier so that a population of gaming
promotional printers on the network can be addressed in whole or
individually for promotional purposes.” There is no description in paragraph
29 that the gaming promotional printer “extract[s] gaming machine
identifying information for the game machine” as required by [C3a] of the
claim.
Meyerhofer describes how the gaming promotional printer receives
signals “from either the master promotional controller or the game controller
. . . to generate and issue promotional coupons or tickets printed on paper
media.” Meyerhofer ¶ 36. Meyerhofer also provides additional details on
how coupons are selected for printing and printed. Id. at ¶¶ 85–97. The
gaming promotional printer may also “transmit the saved coupon statistical
data to the master promotional controller for analysis and other types of
processing.” Id. at ¶ 98.
The gaming promotional printer has a processor as does the claimed
GVP [C3]. Meyerhofer ¶ 100. The printer processor is coupled to external
devices. Id. at ¶¶ 101, 102. The printer processor is “coupled to a network
device 714 via a network device controller 712 and the bus.” Id. at ¶ 103.
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Meyerhofer discloses that the processor “uses the network device to
communicate with other processing systems, such as a master promotional
controller or a gaming machine controller.” Id. There is no mention in these
paragraphs cited by Examiner that the printer processor, in communicating
with the gaming machine controller, extracts identifying information from
the gaming machine (or controller) as required by [C3a] of the claim.
With respect to the communication between the gaming machine
controller and the gaming promotional printer, Meyerhofer teaches:
In another aspect of the invention, the gaming promotional
printer is further coupled to a gaming machine controller and
the trigger data is received by the gaming promotional printer
from a gaming machine controller. The trigger data may include
a player identifier, an amount of money in play on a gaming
machine, a duration of a current session of play of a gaming
machine, a cash-in of a player or a cash-out of a player.
Meyerhofer ¶ 10.
There is no discussion in Meyerhofer that the communication between
the printer and machine includes [C3a] extracting the gaming machine
identifying information for the game machine by the printer and then [C3b]
communicating it to a central data processing unit. Examiner did not explain,
based on Meyerhofer, why such steps would have been obvious to one of
ordinary skill in the art.
The Examiner also relied upon Proulx, citing paragraphs 5, 7, 76, and
80 of it as disclosing functions [A1]–[A4] of claim 62. Office Act. 6.
Proulx does not describe anything about gaming machines and
printers.
Proulx describes communication between devices using addresses and
IP links. Proulx ¶¶ 5, 7. Proulx also describes storing the links in logical link
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database. Id. at ¶¶ 76, 80. However, this disclosure cited by Examiner does
not describe extracting an address or other identifying information from one
device by a second device, and the second device communicating that
information to third device (processing unit) where it is stored in a database.
Examiner did not explain why it would have been necessary or obvious for
the printer to extract and communicate the gaming machine identifier to a
central data processor in order for the gaming machine to communicate with
a central data processor, rather than for the gaming machine to send the
information to the data processor, itself, which appears to be the process
described by Proulx.
For the foregoing reasons, the rejection of claim 62 based on
Meyerhofer and Proulx is reversed. Dependent claims 63–70 incorporate all
the features of claim 62 and are reversed for the same reasons.

WRITTEN DESCRIPTION REJECTION
Examiner found that the Specification is “silent” with respect to the
limitation [A4] “store an indication of the logical link [between the GVP and
the game machine] in a memory” and therefore rejected the claim as lacking
written descriptive support. Office Act. 3.
Appellant responds that paragraphs 115–117 of the Specification
“discuss storing the logical link in memory.” Appeal Br. 5. Appellant further
explains that paragraph 115 describes creating the logical link and storing it
in memory. Id. Appellant states that “[o]ne skilled in the art would
understand that storing a logical link in memory involves storing an
indication of the logical link in memory, as a logical link itself is incapable
of being stored in memory and is instead stored in memory as an indication
of the logical link.” Id.
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This argument does not persuade us that the Examiner erred in
rejecting the claims for lack of written description.
To satisfy the written description requirement of 35 U.S.C. § 112, the
inventor must “convey with reasonable clarity to those skilled in the art that,
as of the filing date sought, he or she was in possession of the invention.”
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991)
(emphasis omitted). “One shows that one is ‘in possession’ of the invention
by describing the invention, with all its claimed limitations . . .” Lockwood
v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (citation omitted)
(emphasis omitted). The written description “need not recite the claimed
invention in haec verba but [it] must do more than merely disclose that
which would render the claimed invention obvious.” ICU Med., Inc. v.
Alaris Med. Sys., Inc., 558 F.3d 1368, 1377 (Fed. Cir. 2009) (emphasis
added). Thus, as long as “a person of ordinary skill in the art would have
understood the inventor to have been in possession of the claimed invention
at the time of filing, even if every nuance of the claims is not explicitly
described in the specification, then the adequate written description
requirement is met.” In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996).
Appellant states the one skilled in the art would understand “that
storing a logical link in memory involves storing an indication of the logical
link in memory,” but provides no objective evidence of the skilled worker’s
understanding, such as a declaration or statement by a person said to have
such knowledge. Appeal Br. 5. An argument made by counsel in a brief does
not substitute for evidence lacking in the record. Estee Lauder, Inc. v.
L’Oréal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).
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Appellant states that “a logical link itself is incapable of being stored
in memory,” (id.) but the Specification repeatedly describes “storing the link
in its memory.” Spec. ¶¶ 115–117. Proulx also refers to storing a logical link
in a database, and not an “indication” of a link. Proulx ¶ 80 (“Logical link
database 705 stores logical configuration links.). Appellant did not explain
what “an indication” of a logical link means and how storing an indication of
a link is different from storing the link in memory as described in the
Specification. Appellant has therefore not established that the Specification
describes “stor[ing] an indication of the logical link in a memory” as
required by § 112.
Accordingly, the written description rejection of claims 62–70 is
affirmed.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
62–70 102 Meyerhofer 62–70
62–70 103 Meyerhofer,
Proulx
62–70
62–70 112 Written description 62–70
Overall
Outcome
62–70

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Application 12/161,788

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TIME PERIOD
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