Ex Parte 7201661 et al

Patent Trial and Appeal Board

Mar 19, 2015

90012239 (P.T.A.B. Mar. 19, 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.
90/012,239 04/05/2012 7201661 1285.09 7569
8685 7590 03/20/2015
DERGOSITS & NOAH LLP
Three Embarcadero Center
Suite 410
SAN FRANCISCO, CA 94111
EXAMINER
RIMELL, SAMUEL G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/20/2015 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 VEGAS AMUSEMENT, INC.
____________________

Appeal 2015-001522
Reexamination Control 90/012,239
Patent 7,201,661
1

Technology Center 3900
____________________

Before DANIEL S. SONG, JOSIAH C. COCKS, and
WILLIAM V. SAINDON, Administrative Patent Judges.

COCKS, Administrative Patent Judge.

DECISION ON APPEAL

1
The patent involved in this reexamination proceeding (“the ’661 patent”)
issued to Julian J. Kennedy on April 10, 2007.
Appeal 2015-001522
Reexamination Control 90/012,239
Patent 7,201,661

2
I. INTRODUCTION
This reexamination proceeding arose from a third-party request for ex
parte reexamination filed on April 4, 2012. Vegas Amusement, Inc.
(“Vegas Amusement”), the owner of the patent under reexamination, appeals
under 35 U.S.C. §§ 134(b) and 306 from a final rejection of claims 1–12.
2

We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We affirm.
A. Related Proceedings
Vegas Amusement submits the following in connection with
reexamination proceedings that are characterized as being “related” to this
appeal:
Application/Control Number 90/011,075 on U.S. Patent
No. 6,921,337, in which a Reexamination Certificate
confirming patentability of all presented claims was issued on
November 29, 2011;
Application/Control Number 90/012,240 on U.S. Patent
No. 6,921,337, in which a Reexamination Certificate cancelling
all presented claims was issued on June 25, 2013;

Application/Control Number 90/009,737 on U.S. Patent
No. 7,575,512, in which a Reexamination Certificate cancelling
all presented claims was issued on April 23, 2013;
[3]

2
See Vegas Amusement’s Appeal Brief filed June 27, 2014 (“App. Br.”) at
19, and Reply Brief filed October 15, 2014 (“Reply Br.”) at 3.
3
In the noted reexamination proceeding, an examiner finally rejected claims
1–16 of U.S. Patent No. 7,575,512. Those rejections were appealed to the
Board. The Board affirmed all of the rejections. See Ex parte Vegas
Amusement, Inc., Appeal 2012-001009 (PTAB Jan. 22, 2013).
Appeal 2015-001522
Reexamination Control 90/012,239
Patent 7,201,661

3
Application/Control Number 90/011,023 on U.S. Patent
No. 5,688,174, in which a Reexamination Certificate cancelling
all presented claims was issued on March 27, 2013.
[4]

App. Br. 4 (bulleting removed).
Vegas Amusement also makes reference to a lawsuit involving
the ’661 patent arising in the District of Nevada (Civil Action
No. 2:09-cv-01519). See id.
B. References Relied on by the Examiner
Koza et al. (“Koza”) US 4,652,998 Mar. 24, 1987
Hagiwara US 4,805,907 Feb. 21, 1989
Morris et al. (“Morris”) US 5,324,035 Jun. 28, 1994

C. Rejection on Appeal
The Examiner rejected claims 1–12 under 35 U.S.C. § 103(a) as
unpatentable over Morris, Koza, and Hagiwara.
5

D. The Invention
The invention of the ’661 patent is titled “Video Gaming Device and
Communication System.” The patent’s abstract generally describes the
disclosed invention as a “video gaming device” that “includes a game
computer which is connected to a central computer and a plurality of player

4
In the noted reexamination proceeding, an examiner finally rejected claims
1–6 of U.S. Patent No. 5,688,174. Those rejections were appealed to the
Board. The Board affirmed all of the rejections. See Ex parte Vegas
Amusement, Inc., Appeal 2012-001010 (BPAI Dec. 9, 2011), aff’d Fed. Cir.
R. 36, In Re Vegas Amusement, Inc., Case 2012-1279 (Fed. Cir. Dec. 11,
2012).
5
See “Final Office Action” mailed March 19, 2014 (“FOA”); see also
“Examiner’s Answer” mailed August 15, 2014 (“Ans.”).
Appeal 2015-001522
Reexamination Control 90/012,239
Patent 7,201,661

4
stations connected to the game computer.” Figure 1 (reproduced below) is
characterized as “a perspective view of a multiplayer interactive video
gaming device for use in a system constructed in accordance with the
present invention.” ’661 patent 3:28–30.

As shown in Figure 1 above, video gaming device 10 includes
cabinet A, which is divided into player portion 12 and display portion 14.
Id. at 4:29–32. The ’661 patent further describes the following:
Player portion 12 is constructed to simulate a casino
blackjack game table. Three player stations 16 are disposed on
the top counter surface of player portion 12. Each player
station 16 includes a keypad 18 and a currency acceptor 20.
Each keypad 18 includes a plurality of input keys 22 through
which players participate in the blackjack game.
Appeal 2015-001522
Reexamination Control 90/012,239
Patent 7,201,661

5
Id. at 4:43–48.
Claim 1 is independent and is reproduced below:
1. A multiplayer card gaming system comprising:
a) plurality of spatially separate player stations, each said
player station including:
at least one input device for allowing a player to
enter game play selections into said system;
at least one output device for communicating game
play outcome to the player; and
means for monitoring a plurality of events at said
player station;
b) one and only one game processor interfaced to said
plurality of player stations;
c) one and only one display monitor connected to said
one game processor for displaying game play of each player
station together; and
d) a remote computer interfaced to said one game
processor for monitoring events of multiple individual gaming
machines;
wherein, said one game processor is programmed first to
execute all steps of a multiplayer video card gaming program in
response to inputs received from an interface device in
operative communication with said player station input devices
and said currency acceptors, said interface device configured to
receive inputs from said player station input devices and
currency acceptors and to output interface signals
corresponding to particular said player station input devices and
said currency acceptors to said one game processor, determine
an outcome of said gaming program for each player station,
display said outcome on said one display monitor and
communicate said outcome to said player station output
devices; and second, to receive player station event information
from said event monitoring means in each said player station
and, in response thereto, to send messages to said remote
computer, each said message identifying a one of said player
stations as a corresponding one of a plurality of gaming
machines and an event at said one of said player stations; and,
Appeal 2015-001522
Reexamination Control 90/012,239
Patent 7,201,661

6
in response to receipt of a command from said remote computer
to shut down one of said player stations, sending a shut down
command to said one of said player stations; and
said remote computer is programmed to identify each of
said player stations as a corresponding one of a plurality of
separate gaming machines and in response to receipt of a
message from said one game processor indicating improper
operation of one of said gaming machines, sending a command
to said one game processor to shut down said one of said
gaming machines, said command including information
identifying which of said gaming machines is to be shut down.
App. Br. 33–34.
II. ISSUE
Has Vegas Amusement demonstrated error in the Examiner’s
determination that claims 1–12 of the ’661 patent would have been obvious
in light of the combined teachings of Morris, Koza, and Hagiwara?
III. ANALYSIS
Claim 1 is the only independent claim of the ’661 patent. Claims 2–
12 ultimately depend from, and are argued collectively with, claim 1. In
rejecting claim 1 based on the teachings of Morris, Koza, and Hagiwara, the
Examiner determined that the prior art accounts for all the features of the
claim.
A. The Prior Art
1. Morris
Morris is titled “Video Gaming System with Fixed Pool of Winning
Plays and Global Pool Access.” As set forth in the Abstract, Morris
describes its system as follows:
Appeal 2015-001522
Reexamination Control 90/012,239
Patent 7,201,661

7
A gaming system is provided including a central game
processor, a plurality of master processing units and a plurality
of slave terminals operable by players to play the game. The
central game processor communicates with the master
processing units and supplies the various games available in the
system. The master processing units store and administer the
games as they are played on the slave terminals connected to
each respective master processing unit.

Morris’s Figure 1 depicts an embodiment of its disclosed invention,
and is reproduced below:

As shown in Figure 1 above, gaming system 10 includes central game
processor 12, master processing units 14, and slave terminals 16. Morris,
4:24–39. With respect to the operation of the functions of those
components, Morris explains:
The purpose of the central game processor 12 is two-fold
(1) the central game processor 12 electronically generates each
Appeal 2015-001522
Reexamination Control 90/012,239
Patent 7,201,661

8
fixed pool of game plays provided on the gaming system 10,
and (2) serves as an interface to each master processing unit 14.
The central game processor 12 thus acts as a repository for, and
coordinates the production of, graphic data and game play
information.
* * *
[S]everal players are capable of participating and
simultaneously playing the games provided by the gaming
system 10. Each player participates by purchasing plays
through a respective slave terminal 16. Each master processing
unit 14 maintains a fixed pool of game plays supplied from the
central game processor 12 to be transmitted to the slave
terminals 16.
Id. at 4:67–5:5; 5:42–48.
Morris also explains:
As will be appreciated, the combination of components
provided in the gaming system 10 comprises an integrated
computer system capable of operating an electronic
lottery/gambling system or other similar games. Each
component of the gaming system 10 provides a specific
function necessary to operation of the gaming system 10 as a
whole. However, these functions can be further distributed or
combined among other computer architectures.
Id. at 4:50–59.
2. Koza
Koza is titled “Video Gaming System with Pool Prize Structures.”
Kota’s Figure 1 illustrates an embodiment of the invention, and is
reproduced below:
Appeal 2015-001522
Reexamination Control 90/012,239
Patent 7,201,661

9

As shown in Figure 1 above, central controller 24 communicates via
communication medium 22 with multiple remote player-operated lottery
terminals 20. Koza 2:16–65. “[C]entral controller 24 maintains supervision
over the entire network of remote terminals 20 handling, for example,
accounting validation, security, and seeding of pools among other tasks.” Id.
at 2:65–3:1. In providing a validation operation, central controller 24 may
operate to send a shutdown message to remote terminal 20. Id. at 12:45–48.
3. Hagiwara
Hagiwara is titled “Slot Machine.” Hagiwara describes its invention
as relating “to a slot machine which comprises one main machine, and a
plurality of subordinate machines connected to the main machine.”
Hagiwara, Abstract. Hagiwara’s Figure 1 illustrates an embodiment
according to the invention, and is reproduced below:
Appeal 2015-001522
Reexamination Control 90/012,239
Patent 7,201,661

10

Hagiwara’s Figure 1 depicts main machine 1, including central
processing unit 11 (not shown) and “CRT” display device 6. Hagiwara
1:62–2:12. Subordinate machines 2a–2c are connected via cables 4a–4c to
main machine 1. Id. Although in the embodiment of Figure 1 each
subordinate machine 2a–2c is shown having its own “CRT” monitor 7a–7c
for displaying the same content of display device 6 (id. at 2:3–5), Hagiwara
explains that the individual monitors are “optional” (id. at 3:40–42).
B. Discussion
Vegas Amusement disagrees with the Examiner that the above-noted
prior art accounts for all the features of the claims of the ’661 patent, and, in
particular, claim 1. In that respect, Vegas Amusement contends that the
following features of claim 1 are lacking from the prior art: (1) “one and
only one game processor . . . programmed . . . to execute all steps of a
Appeal 2015-001522
Reexamination Control 90/012,239
Patent 7,201,661

11
multiplayer video card gaming program”; (2) “one and only one display
monitor connected to said one game processor”; and (3) “an interface
device.”
1. “one and only one game processor . . . programmed . . . to execute
all steps of a multiplayer video card gaming program.”

According to Vegas Amusement, Morris discloses the use of multiple
game processors in the form of central game processor 12, master processing
units 14, and slave terminals 16 to carry out processing functions associated
with video gaming operations. App. Br. 25–26. In that respect, Vegas
Amusement argues that the operation of those various components in the
context of facilitating game functionality means Morris, itself, does not
satisfy the requirement of “one and only one game processor” that executes
a multiplayer video card gaming program. Vegas Amusement also contends
that it would not have been obvious in light of the prior art of record to
implement a single processor component to provide the processing functions
of Morris’s invention. Id. at 26–27; Reply Br. 6–10.
The Examiner does not disagree with Vegas Amusement as to a lack
of disclosure in Morris as to “one and only one game processor” performing
all game processing functions. The Examiner, however, has a different view
with respect to the obviousness of such a feature in light of the teachings of
the prior art. To that end, after noting that Morris discloses multiple
processing components, the Examiner explains:
However, Morris et al further states at col. 4, lines 54-58:
“Each component of the gaming system 10 provides a specific
function necessary to operation of the gaming system 10 as a
whole. However, these functions may be further distributed or
Appeal 2015-001522
Reexamination Control 90/012,239
Patent 7,201,661

12
combined among other computer architectures” (emphasis
added). Hagiwara in FIG 1 teaches such an architecture where
one and only one master site computer 1 can integrate all the
necessary functionality to achieve the control of multiple player
stations 2a, 2b, 2c. It would have been obvious to one of
ordinary skill in the art to modify Morris et al to integrate all of
its gaming control functionality down to one single master
processor, with such integration taught by Morris et al at col. 4,
lines 54-58 and such architecture taught by Hagiwara in FIG
1[].
FOA 3; see Ans. 4.
Thus, the Examiner determined that, given Morris’s disclosure that
the functions of its gaming system 10 may be “distributed or combined
among other computer architectures,” and taken with Hagiwara’s teachings
of gaming system employing a single processor that controls gaming
functionality, the “one and only one game processor” aspect of claim 1 was
satisfied. That determination is, in our view, reasonable in light of the
record before us.
We are cognizant of Vegas Amusement’s argument that, at the
relevant time, implementing a single processor in Morris’s system would
have required “re-engineering and re-design” of that system “with
significant additional costs,” and would have resulted in “game play that is
prohibitively slow, causing significant delays that players would not
tolerate.” App. Br. 26–27. Vegas Amusement, however, does not point to
underlying evidentiary support for that argument, such as the declaration
testimony of an expert. Instead, Vegas Amusement is content to rely solely
on the speculative assertions of its counsel. Argument of counsel, however,
cannot take the place of evidence lacking in the record. Estee Lauder Inc. v.
L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).
Appeal 2015-001522
Reexamination Control 90/012,239
Patent 7,201,661

13
Moreover, even if Vegas Amusement’s arguments are true, that some
re-engineering or re-design or Morris’s system may be necessary does not
compel a determination of nonobviousness. The inquiry into obviousness
also does not require that the prior art be optimized or improved. Rather, the
appropriate inquiry is whether it would have been obvious to a person of
ordinary skill in the art at the time of the ’661 invention, having all of the
prior art teachings before him, to produce the structure defined by the
claims. See Orthopedic Equipment Co., Inc. v. U.S., 702 F.2d 1005, 1013
(Fed. Cir. 1983). Furthermore, the inferences and creative steps that such
person would employ may be taken into account en route to a determination
of obviousness. See id. at 418; see also Perfect Web Technologies, Inc. v.
InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (“hold[ing] that while
an analysis of obviousness always depends on evidence that supports the
required Graham factual findings, it also may include recourse to logic,
judgment, and common sense available to the person of ordinary skill that do
not necessarily require explication in any reference or expert opinion”).
We have considered fully Vegas Amusement’s arguments concerning
the “one and only one game processor” features of the claims, but conclude
that they are unavailing. The record before us suitably demonstrates that, at
the time of the invention of the ’661 patent, a person of ordinary skill in the
art would have appreciated readily that various computer architecture
schemes were known in constructing a multiplayer card gaming system. In
view of the teachings of the prior art, and also as a matter of common sense,
a skilled artisan would have inferred that there are a limited number of
options for processing game play, i.e., one processor or multiple processors.
Appeal 2015-001522
Reexamination Control 90/012,239
Patent 7,201,661

14
The implementation of one known approach, e.g., that involving a single
processor, would have been within a skilled artisan’s technical grasp, and
carried out, not as a matter of innovation, but rather as a matter of routine.
See KSR, 550 U.S. at 421 (“When there is a design need or market pressure
to solve a problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue the known
options within his or her technical grasp. If this leads to the anticipated
success, it is likely the product not of innovation but of ordinary skill and
common sense.”) In that regard, we are satisfied that, at the time of the
invention of the ’661 patent, implementing “one and only one game
processor” to execute game functionality of a multiplayer card gaming
system, such as that of Morris, would have been obvious.
2. “one and only one display monitor connected to said one game
processor”

Vegas Amusement also contends that the prior art is deficient in
accounting for the “one and only one display monitor” of claim 1. In that
respect, Vegas Amusement generally characterizes Morris as disclosing
multiple display monitors as a part of its system, including a monitor
associated with each slave terminal 16. App. Br. 28. Vegas Amusement,
thus, argues that Morris fails to disclose the “one and only one display
monitor” feature of the claims. Id.
Vegas Amusement’s arguments are misplaced. The rejection at hand
is one arising under obviousness based on the combined teachings of Morris,
Koza, and Hagiwara. That Morris, itself, may disclose a system that
Appeal 2015-001522
Reexamination Control 90/012,239
Patent 7,201,661

15
employs multiple monitors does not end the inquiry as to whether the use of
a single monitor in lieu of multiple monitors would have been obvious.
In urging that the requirement of “one and only display monitor” does
not distinguish the claims of the ’661 patent over the teachings of the prior
art, the Examiner made reference to Morris’s recognition that various
functions of its gaming system may be distributed or combined among other
computer architectures. FOA 3–4; Ans. 7. The Examiner also relied on
teachings of Hagiwara. Ans. 7–8. In that regard, Hagiwara, like Morris,
discloses that its multiple player stations 2a–2c have individual monitors 7a–
7c that display the same content as display device 6 of main machine 1.
Hagiwara 2:3–5. Hagiwara, however, also expresses that the individual
monitors of the player stations are “optional,” and, thus, may be omitted,
such that the system uses only device 6 as a display monitor. See id. at
3:40–42. In view of the teachings of Morris and Hagiwara, the Examiner
concluded that it would have been obvious to one of ordinary skill in the art
to employ a single monitor in a multiplayer card gaming system. Ans. 7–8.
The Examiner’s conclusion of obviousness in that respect is credible,
and reasonably takes into account the content of the prior art. Vegas
Amusement’s general assertions that Morris does not disclose a single
monitor does not consider what the combined teachings of Morris and
Hagiwara would have suggested to a skilled artisan in the context of an
obviousness evaluation. See In re Young, 927 F.2d 588, 591 (Fed. Cir.
1991) (“The test for obviousness is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”) In
that respect, we conclude that the combined teachings of Morris and
Appeal 2015-001522
Reexamination Control 90/012,239
Patent 7,201,661

16
Hagiwara readily convey that a multi-player gaming system may employ a
single monitor to display game content. We are not persuaded by Vegas
Amusement’s arguments to the contrary.
3. “an interface device”
Claim 1 requires an “interface device” that is in operative
communication with, and configured to receive inputs from, player station
input devices and currency acceptors. The Examiner determined that
Morris’s “Ethernet Adapter/LAN Interface 80” is a component that receives
signals from player input devices (e.g., “pushbuttons or the like,”
Morris 5:52–55) and currency acceptors 124, 126 at slave terminals 16 of
Morris’s system. FOA 5. The Examiner, thus, concluded that the “interface
device” limitation of claim 1 does not distinguish the claim over the
teachings of the prior art.
Vegas Amusement generally discounts Morris’s teachings, urging that
any interface components disclosed in Morris are “completely different”
than the “single interface device” required by claim 1 (App. Br. 30), and that
Morris’s interface components do not constitute:
a central interface device configured to collect the multiple
communications pathways from the player stations, convert the
messages from the player station input device and currency
collectors into a scan code which the operating system on the
game computer will recognize, and funnel the messages to and
from a single game processor.
Reply Br. 6.
Vegas Amusement’s arguments are unpersuasive. Vegas Amusement
does not articulate suitably why Morris’s teachings concerning an interface
component are “completely different” from the requirements of claim 1.
Appeal 2015-001522
Reexamination Control 90/012,239
Patent 7,201,661

17
Morris describes “LAN interface 80” as a component associated with master
processing units 14, and which facilitates communication with slave
terminals 16. Morris 8:46–53. The interface is understood readily as
receiving communications from the various input devices at the slave
terminals. Although Morris may disclose more than one such interface
component, claim 1 of the ’661 patent does not preclude the presence of
multiple such components. Indeed, the claim does not require a “single”
interface component, nor one characterized as “central,” as argued.
Furthermore, to the extent the claims do require that the interface device
communicate with a “single game processor,” the rejection advanced by the
Examiner is one of obviousness based on the teachings of Morris, Koza, and
Hagiwara, which, as noted above, are understood reasonably as conveying
that a gaming system may employ only one processor.
IV. CONCLUSION
We have considered Vegas Amusement’s arguments, but, on the
record before us, we are not persuaded that the Examiner was incorrect in
concluding that claims 1–12 of the ’661 patent would have been obvious in
light of the combined teachings of Morris, Koza, and Hagiwara.
V. ORDER
The rejection of claims 1–12 under 35 U.S.C. § 103(a) as unpatentable
over Morris, Koza, and Hagiwara is affirmed.

Appeal 2015-001522
Reexamination Control 90/012,239
Patent 7,201,661

18
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

PATENT OWNER:

Dergosits & Noah, LLP
Three Embarcadero Center
Suite 410
San Francisco, CA 94111

THIRD PARTY REQUESTER:

Winston & Strawn, LLP
Patent Department
1700 K Street, NW
Washington, DC 20006