Ex Parte 6,110,041 et al

Patent Trial and Appeal Board

Jul 24, 2014

90012333 (P.T.A.B. Jul. 24, 2014)

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.
90/012,333 05/31/2012 6,110,041 11000361-WDIG-RX333 1075
27571 7590 07/25/2014
Ascenda Law Group, PC
84 W. Santa Clara St.
Suite 550
San Jose, CA 95113
EXAMINER
SAGER, MARK ALAN
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/25/2014 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 WALKER DIGITAL, LLC
_____________

Appeal 2014-003791
Reexamination Control No. 90/012,333
Patent 6,110,041
Technology Center 3900
______________

Before MARC S. HOFF, DAVID M. KOHUT, and ERIC B. CHEN,
Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2014-003791
Reexamination Control No. 90/012,333
Patent 6,110,041

This is an appeal under 35 U.S.C. § 134(b) from the Examiner’s
rejection of claims 38, 40, and 42-60
1
of Patent 6,110,041 (hereinafter “’041
Patent”). Final Office Action mailed February 7, 2013 (hereinafter “Final
Rej.”). An oral hearing was conducted with the Patent Owner on June 25,
2014.
We have jurisdiction under 35 U.S.C. § 306.
We AFFIRM.

STATEMENT OF THE CASE
This ex parte reexamination proceeding was initiated by a
“REQUEST FOR EX PARTE REEXAMINATION” filed on May 31, 2012,
by Third-Party Requester, Callie A. Pendergrass.
The ’041 Patent describes a system and method for configuring a
gaming device.
Claim 38 is illustrative of the invention and reads as follows:
38. A system comprising:
at least one gaming device; and
a server coupled to the gaming device;
wherein the server is operable to store at least one
player preference associated with a player identifier, and
wherein the server is operable to configure the
gaming device to implement the player preference on the
gaming device in response to receiving the player
identifier.

Requester proposes rejections of the claims over the following prior
art references:

1
Claims 1-37, 39, and 41 are not subject to reexamination.
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Reexamination Control No. 90/012,333
Patent 6,110,041

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Graves US 4,593,904 June 10, 1986
Bergeron US 4,764,666 Aug. 16, 1988
Katz US 5,218,631 June 8, 1993
Dickinson US 5,265,874 Nov. 30, 1993
Miguel US 5,593,349 Jan. 14, 1997
Acres US 5,741,183 April 21, 1998
Tsumura EP 0 556 840 A2 Feb. 18, 1993
The Shadow of Yserbius (Sierra On-Line, Inc. 1993). (hereinafter
“Yserbius”).
Rawn Shah & James Romine, Playing MUDs on the Internet (Tim Ryan ed.,
John Wiley & Sons, Inc. 1995). (hereinafter “Shah”).

Appellant/Patent Owner appeals the Examiner’s adoption of the
following rejection:
Claims 42 and 43 are rejected under 35 U.S.C. § 102(e) as anticipated
by Miguel. Final Rej. 20.
Claims 38, 40, 42-45, 49-55, and 57-60 are rejected under 35 U.S.C. §
102(b) as anticipated by Bergeron. Final Rej. 21-24.
Claims 38, 40, 42-45, 55, and 58-60 are rejected under 35 U.S.C. §
102(e) as anticipated by Tsumura. Final Rej. 24-26.
Claims 38, 40, and 42-60 are rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Miguel and Acres. Final Rej. 26-34.
Claims 38 and 40 are rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Miguel and Dickinson. Final Rej. 34-36.
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Patent 6,110,041

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Claims 38, 40, 42-45, 49-55, and 57-60 are rejected under 35 U.S.C. §
103(a) as obvious over the combination of Acres and Bergeron. Final Rej.
37-45.
Claims 38, 40, 42, and 43 are rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Yserbius and Shah. Final Rej. 45-46.
Claims 46-48 are rejected under 35 U.S.C. § 103(a) as obvious over
the combination of Tsumura and Yserbius. Final Rej. 47-48.
Claims 49, 50, and 53 are rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Tsumura and Graves. Final Rej. 48-50.
Claims 49-54 are rejected under 35 U.S.C. § 103(a) as obvious over
the combination of Tsumura and Katz. Final Rej. 51-54.
Claim 57 is rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Tsumura and Miguel. Final Rej. 54-56.

ISSUES
Did the Examiner err in finding that Miguel discloses/teaches or
suggests, upon receiving a player identifier, configuring a gaming device
based upon a “player preference,” as required by independent claims 38, 42,
and 43?
Did the Examiner err in finding that the combination of Acres and
Miguel teaches or suggests:
(a) “wherein the gaming device is configured to implement
specified game play parameters so as to maintain interest of a
player when interacting with the gaming device,” as recited in
claim 55;
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(b) “wherein the gaming device is further operable to display a
preferences menu to a player, the preferences menu including a
plurality of player preference choices selectable by the player,”
as recited in claim 56; or
(c) “wherein the gaming device is operative to query a player
regarding whether to use the at least one player preference
when providing a game to the player,” as recited in claim 57?

ANALYSIS
Claims 42 and 43 – Anticipation Rejection over Miguel
Independent claims 42 and 43 require a gaming device to be
configured based upon a “player preference” associated with a player
identifier. The Examiner adopted the Requester’s proposed rejection of the
claims as anticipated by Miguel, finding that Miguel’s player preferences
include a game type and the game’s options that are associated with a
team/league. Ans. 5. Patent Owner argues that the Examiner’s finding is
not a player preference, but rather player “parameters for a group of players
engaged in a competition.” PO App. Br. 8. Patent Owner contends that this
is so because the ‘041 Patent requires a player preference to be “tied to a
player’s interactive experience with a gaming device.” PO App. Br. 8; PO
Reply Br. 3. Instead, Patent Owner contends that Miguel’s player
parameters are simply rules used to play the game and are applied to all
players in a league. PO App. Br. 8; PO Reply Br. 3. We disagree with
Patent Owner.
We agree with the Examiner (Ans. 2 and 4) that Patent Owner did not
specifically define the term “player preference.” Instead, Patent Owner cites
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to a portion of the ‘041 Patent that gives examples of a player preference.
PO App. Br. 7; PO Reply Br. 3. For instance, the ‘041 Patent states,
“[p]laying preferences generally relate[] to the values of those parameters
that players have selected in establishing their preferred slot machine
configuration” (emphasis added). ‘041 Patent, col. 5, ll. 6-8. Additionally,
the ‘041 Patent goes on to explain that playing preferences can include the
game type. ‘041 Patent, col. 5, ll. 8-10. Thus, we agree with the Examiner
(Ans. 2-4) that the term “player preference” need not be related to the
player’s experience but instead can be anything that a player selects to set up
a gaming device, including game type.
Additionally, Patent Owner argues that Miguel’s players are assigned
a league and, therefore, players do not choose the game type themselves.
PO App. Br. 9. However, we agree with the Examiner (Ans. 6) that Miguel
discloses that the player registers for a particular league. In doing so, we
agree with the Examiner (Ans. 6-7) that the player is selecting which game
type the player wants to play by registering for a particular league and
obtaining a unique player ID.
As such, we agree with the Examiner that Miguel discloses a gaming
device that is configured according to user preferences based upon a player
identifier, as required by claims 42 and 43.
For the reasons stated supra, we sustain the Examiner’s 35 U.S.C. §
102(e) rejection of claims 42 and 43.

Appeal 2014-003791
Reexamination Control No. 90/012,333
Patent 6,110,041

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Claims 38, 40, and 42-60 – Obvious over the combination of Miguel and
Acres
Regarding claims 38, 40, 42-54, and 58-60, Patent Owner makes the
same arguments as with respect to claims 42 and 43. PO App. Br. 10-12.
Therefore, we sustain the Examiner’s rejection of claims 38, 40, and 42-60
for the same reasons as claims 42 and 43.
Regarding claim 55, Patent Owner argues that the combination of
references fails to teach “a gaming device configured to implement specified
game play parameters so as to maintain interest of a player when interacting
with the gaming device as recited in claim 55.” PO App. Br. 12. Patent
Owner contends that Miguel’s sensors only detect the position of a player
and do not implement parameters to maintain a player’s interest. PO App.
Br. 13. As indicated above, we find that Miguel discloses player parameters
in the selection of a league, game type, and rules. Additionally, we agree
with the Examiner (Ans. 11) that maintaining the interest of the player is
purely a result of implementing player parameters and that there is no
structural difference between the combination of Miguel and Acres and the
system of claim 55. Thus, we sustain the Examiner’s rejection of claim 55.
Regarding claim 56, Patent Owner argues that the combination of
references fails to teach a gaming device that is “operable to display a
preferences menu to a player, the preferences menu including a plurality of
player preference choices selectable by the player,” as recited in claim 56.
PO App. Br. 13. Patent Owner specifically argues that Miguel’s system
allows for the menu selection of rules, which are not player preferences. PO
App. Br. 13. However, as indicated above, we find that Miguel’s game type
is a player preference. Additionally, the Examiner finds that Miguel teaches
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a menu that allows a user to select game type and a league. Final Rej. 33.
Thus, we sustain the Examiner’s rejection of claim 56.
Regarding claim 57, Patent Owner argues that the combination of
references fails to teach a gaming device that is “operable to query a player
regarding whether to use the at least one player preference when providing a
game to the player as recited in claim 57.” PO App. Br. 13. We disagree
with Patent Owner. The Examiner finds that Miguel teaches a system that
presents an option to a user to select a “regular” game or a league game.
Ans. 13. Thus, Miguel is querying a user to determine whether to use a
player preference and we sustain the Examiner’s rejection of claim 57.

Claims 38, 40, and 42-60 - Other proposed rejections
Our conclusions above address the patentability of all of the claims on
appeal and, thus, render it unnecessary to reach the propriety of the
Examiner’s decision to adopt the proposed rejections of the same claims on
a different basis. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009).
As such, we need not reach the other proposed and adopted rejections listed
above.

CONCLUSIONS
The Examiner did not err in finding that Miguel discloses or teaches
or suggests, upon receiving a player identifier, configuring a gaming device
based upon player preferences, as required by independent claims 38, 42,
and 43.
The Examiner did not err in finding that the combination of Acres and
Miguel teaches or suggests:
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(a) “wherein the gaming device is configured to implement
specified game play parameters so as to maintain interest of a
player when interacting with the gaming device,” as recited in
claim 55;
(b) “wherein the gaming device is further operable to display a
preferences menu to a player, the preferences menu including a
plurality of player preference choices selectable by the player,”
as recited in claim 56; or
(c) “wherein the gaming device is operative to query a player
regarding whether to use the at least one player preference
when providing a game to the player,” as recited in claim 57.
SUMMARY
We affirm the Examiner’s decision to adopt the rejection of claims 42
and 43 as anticipated by Miguel and claims 38, 40, and 42-60 as obvious
over the combination of Miguel and Acres.

AFFIRMED

alw

Appeal 2014-003791
Reexamination Control No. 90/012,333
Patent 6,110,041

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PATENT OWNER:
WALKER DIGITAL LLC
FAHMI, SELLERS, EMBERT & DAVITZ
84 W. Santa Clara St.
Suite 550
San Jose, CA 95113-1812

THIRD PARTY REQUESTER:
Callie A. Pendergrass
c/o Erise IP, P.A.
6201 College Blvd.
Suite 300
Overland Park, KS 66211