Ex Parte Bennett et al

Board of Patent Appeals and Interferences

Sep 2, 2010

10204074 (B.P.A.I. Sep. 2, 2010)

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.
10/204,074 10/10/2002 Luke Nicholas Bennett 58157-011000 5878
7590 09/03/2010
Christopher N George
McAndrews Held & Malloy
500 W Madison Street
Suite 3400
Chicago, IL 60661
EXAMINER
VO, PETER DUNG BA
ART UNIT PAPER NUMBER
3714
MAIL DATE DELIVERY MODE
09/03/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LUKE NICHOLAS BENNETT, NATALIE BRYANT, and
PETER STATHIS
____________

Appeal 2009-008967
Application 10/204,074
Technology Center 3700
____________

Before JOHN C. KERINS, STEVEN D.A. McCARTHY, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-008967
Application 10/204,074

STATEMENT OF THE CASE
Luke Nicholas Bennett et al. (Appellants) appeal under 35 U.S.C.
§ 134 (2002) from the Examiner’s decision finally rejecting claims 1, 3, 5-9,
12, and 13 under 35 U.S.C. § 103(a) as unpatentable over Walker (US
6,168,522 B1, issued Jan. 2, 2001) and Wood (US 5,511,781, issued Apr.
30, 1996)2 and claims 10 and 11 as unpatentable over Walker, Wood, and
Foodman (US 6,547,131 B1, issued Apr. 15, 2003). Appellants’
representative presented oral argument on August 10, 2010. We have
jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
Appellants’ invention relates to a gaming machine including a credit
meter having a first meter display indicating credit available for wagering
and a second display showing credit set aside that is not available for
wagering and which is available to the player only at the end of a playing
session. Spec. 1, ll. 11-24.
Claim 1 is representative of the claimed invention and reads as
follows:
1. A gaming machine comprising:

a game controller that controls play of a game in a playing
session comprising a plurality of game plays in response to a player
wagering at least one credit in each game play, the game being one in
which one or more random events occur and, if a predefined winning
event results, the game controller awards a prize in credits, the game
controller being operable by the player to terminate a playing session

2 In the body of the rejection, the Examiner refers to the teachings of
Jorasch (US 6,379,248 B1, issued Apr. 30, 2002).
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Application 10/204,074

and return unwagered credits to the player;

a display for displaying images of the game, the display being
controlled by the game controller;
a first credit meter that, under the control of the game
controller, keeps an account of the number of unwagered credits
which are available to be wagered by the player during the playing
session, the current number of the unwagered credits being displayed
on a first credit meter display;

a bank credit meter that, under the control of the game
controller, keeps an account of a number of banked credits which are
never available to the player for wagering in any game play of the
playing session and which are returned to the player on the
termination of the playing session, the current number of the banked
credits being displayed on a bank meter display, the bank meter
display being separate from the first meter display; and

a credit transferor for either automatically or at the selection of
the player transferring credits to the bank meter,
wherein banked credit on the bank meter must be collected by
the player at the termination of the playing session before the gaming
machine can accept more credit.

SUMMARY OF DECISION
We AFFIRM.

OPINION
Claims 1, 3, 5-9, 12, and 13
Appellants do not present any separate arguments for the patentability
of claims 3, 5-9, 12, and 13 apart from independent claim 1. Br. 9 and 15.
Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii), dependent claims 3,
5-9, 12, and 13 stand or fall with claim 1.
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Appellants contend that Walker fails to disclose: (1) a banked amount
of credits that are never available to the player for wagering; (2) a separate
meter displaying the current number of banked credits; and (3) collecting
banked credits by the player at the termination of the playing session before
the gaming machine can accept more credit. Br. 11-12.
With respect to Appellants’ first contention, it is our finding that
Walker discloses a gaming device including a balance management rule that
permits a player to play only with “house money.” For example, the player
uses an initial balance of $20 to accumulate a balance of $50. The player
then considers only the difference of $30 to be an “available amount” for
wagering during subsequent plays, whereas the initial balance of $20 can
neither be played nor dispensed. Walker, col. 7, l. 63 through col. 8, l. 18.
In other words, since the initial balance is not dispensed, the purpose of
Walker’s balance management rule is to ensure that the initial balance is not
waged by the player during subsequent games. As such, we agree with the
Examiner that Walker discloses an embodiment in which the player
establishes a rule where a banked amount of credits are never available to
the player for wagering. Ans. 4.
Regarding Appellants’ second argument, the Examiner takes the
position that:
[W]hile Walker does not specifically disclose
displaying the banked account balance on a
separate credit meter (36), the invention disclosed
by Walker is capable of doing so as it has access to
banked account information and the ability to
display credit information on a secondary credit
meter (Fig. 2, display meter 36).
Ans. 5.
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Appellants counter that display 36 of Walker is not a separate credit meter.
Br. 13. Although we appreciate that the Examiner’s writing is not perfectly
clear, nonetheless, it is our understanding that the Examiner is not taking the
position that display 36 of Walker constitutes a separate credit meter, but
rather that it merely displays a separate credit, namely, the credits that are
not available to a player for wagering. Moreover, the Examiner uses the
teachings of Jorasch to show that “it is well known in the art to provide
multiple meters for displaying various credit balances.” Ans. 5. Hence, the
modified device of Walker, as proposed by the Examiner, includes a first
meter 32 for tracking the “house money” and a second meter for tracking
(keep an account) the initial balance that is neither wagered nor dispensed
during subsequent games. We further find Appellants’ argument that
“Jorasch does not disclose a credit meter maintaining a balance that is
unavailable during a gaming session” (see Br. 14) unpersuasive because
nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).
Lastly, with respect to Appellants’ third argument, the Examiner
concedes that “Walker does not specifically disclose [that the] banked credit
on the bank meter must be collected by the player at the termination of the
playing session before the gaming machine can accept more credit.” Ans. 6.
However, the Examiner reaches to the teachings of Wood to show a gaming
machine that includes a lockout mechanism for preventing the machine from
receiving coins (credit) at inopportune times. Id. The Examiner concludes
that it would have been obvious for a person of ordinary skill in the art to
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configure the gaming machine of Walker to not accept credits (coins) from
the player prior to collecting the banked credits at the end of a game session
because Wood specifically teaches locking up a gaming machine during
inopportune times. Id. Appellants respond that if the gaming machine of
Walker as modified by Wood were “locked up,” “then it would not allow a
player to cash out any of the credit meters.” Br. 14. However, as noted
by the Examiner, Wood specifically teaches that only the coin accepting
mechanism 8 is locked and not the entire gaming machine, as Appellants
suggest. Ans. 15. See also Wood, col. 9, ll. 7-12.
Furthermore, in view of Walker’s balance management rule which
ensures that only “house money” is wagered and the initial balance is neither
wagered nor dispensed during subsequent games, we agree with the
Examiner that it would have been obvious for a person of ordinary skill in
the art to provide the lockout mechanism of Wood to the gaming machine of
Walker to prevent coins (credit) from being accepted at inopportune times,
such as for example when the player wants to play with more than the
“house money.” Moreover, we agree with the Examiner that the limitation
of collecting the banked credit at the end of the playing session prior to the
gaming machine accepting more credit, as called for in claim 1, appears to
be functional language because it describes the intended use of the banked
credit as opposed to a structural element of the claimed machine. Ans. 15.
“[A]pparatus claims cover what a device is, not what a device does.”
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990).
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In conclusion, for the foregoing reasons, the rejection of claim 1 under
35 U.S.C. § 103(a) as unpatentable over Walker and Wood, and claims 3, 5-
9, 12, and 13 standing or falling with claim 1, is sustained.
Claims 10 and 11
Appellants argue that Foodman does not disclose “a discernible
warning” to dispense the banked credits that are not available for wagering,
a banked credit meter, and “use of banked credits in a gaming device.” Br.
15-16. We find Appellants’ argument unpersuasive because Appellants
appear to attack the teachings of Walker, Wood, and Foodman individually,
rather than the combination of Walker, Wood, and Foodman.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co, 800 F.2d 1091, 1097 (Fed. Cir. 1986).
As such the rejection of claim 10 under 35 U.S.C. § 103(a) as
unpatentable over Walker, Wood, and Foodman is sustained. With respect
to claim 11, Appellants do not present any arguments that are separate from
claim 10. Accordingly, the rejection of claim 11 is likewise sustained. See
37 C.F.R. § 41.37(c)(1)(vii).

SUMMARY
The decision of the Examiner to reject claims 1, 3, and 5-13 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

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AFFIRMED

JRG

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