Ex Parte Dabrowski

Patent Trial and Appeal Board

Feb 20, 2014

11386341 (P.T.A.B. Feb. 20, 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.
11/386,341 03/22/2006 Stanley P. Dabrowski 247.6-US-01 3496
22462 7590 02/20/2014
GATES & COOPER LLP (General)
HOWARD HUGHES CENTER
6701 CENTER DRIVE WEST, SUITE 1050
LOS ANGELES, CA 90045
EXAMINER
RENWICK, REGINALD A
ART UNIT PAPER NUMBER
3714
MAIL DATE DELIVERY MODE
02/20/2014 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 STANLEY P. DABROWSKI
____________________

Appeal 2012-001896
Application 11/386,341
Technology Center 3700
____________________

Before JAMES P. CALVE, JILL D. HILL, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1-3, 5, 7-10, 12, 15, 16, 22-24, 26, 28-31, 33, 36,
37, 42-44, 46, 48-51, 54, 55, 60, 61, 63-66, 69-71, and 76-89.1 Claims 4, 6,
11, 13, 14, 17-21, 25, 27, 32, 34, 35, 38-41, 45, 47, 52, 53, 56-59, 62, 67,
and 72-75 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION.

CLAIMED SUBJECT MATTER
Claims 1, 22, 42, 60, 61, 63, 77, 78, and 79 are independent. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method of providing a payout to a player, comprising
the steps of:
accepting a cash-out command in a gaming station
having a first fingerprint sensor, the cashout command
associated with a payout value;
sensing a fingerprint of the player with the first
fingerprint sensor;
generating first fingerprint data from the fingerprint
sensed by the first fingerprint sensor;
accepting a payout command in a payout station, the
payout station comprising a payout device selected from the
group comprising an automated teller machine (ATM) and a
check cashing machine, the payout device communicatively
coupled to a financial institution used to complete financial
transactions with customers of the financial institution;

1 The Examiner indicates claim 68 as rejected in the status of claims. See
Ans. 3. However, as Appellant notes, there is no stated basis for a rejection
of claim 68 included in the Answer. App. Br. 2.
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after accepting the payout command in the payout
station, transmitting the first fingerprint data from the gaming
station to only the payout station;
sensing the fingerprint of the player with a second
fingerprint sensor;
generating second fingerprint data from the fingerprint
sensed by the second fingerprint sensor; and
paying out at least a portion of the payout value with the
payout device based at least in part upon a comparison between
the first fingerprint data and the second fingerprint data.

REJECTIONS
1. Claims 1, 5, 7, 10, 12, 15, 16, 22, 26, 28, 36, 37, 42, 46, 482, 51, 54,
55, 63, 66, 69-71, 76-79, 82, 83, and 86-89 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kowalick (US 7,107,245 B1; iss. Sep.
12, 2006), Mattice (US 2006/0046842 A1; pub. Mar. 2, 2006), Pare (US
5,764,789; iss. Jun. 9, 1998), and Dickinson (US 5,265,874; iss. Nov. 30,
1993);
2. Claims 2, 3, 23, 24, 43, 44, 64, 65, 80, and 81 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Kowalick, Mattice, Pare,
Dickinson, and Bradford (US 6,612,928 B1; iss. Sep. 2, 2003); and
3. Claims 8, 9, 29-31, 33, 49, 50, 60, 61, 84, and 85 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Kowalick, Mattice, Pare,
Dickinson, and Giobbi (US 7,147,558 B2; iss. Dec. 12, 2006).

2 Claim 48 depends from claim 43, which is rejected under the combination
of Kowalick, Mattice, Pare, Dickinson, and Bradford.
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OPINION
New Ground – Indefiniteness – Claims 1-3, 5, 7-10, 12, 15, 16, 22, 23, 24,
26, 28-31, 33, 36, 37, 42-44, 46, 48-51, 54, 55, and 79-89
Claims 1, 22, 42, and 79 each recite a payout station including a
“payout device selected from the group comprising an automated teller
machine (ATM) and a check cashing machine.” The transitional phrase
“comprising” is “open,” making it impossible to determine the metes and
bounds of the claims. The open group includes an ATM, a check cashing
machine, or some other unspecified type of payout device. Thus, Appellant
has failed to comply with the requirement to provide claims particularly
pointing out and distinctly claiming the subject matter that the inventors
regard as their invention.
Appellant appears to interpret the claims as requiring at least an ATM
or a check cashing machine in the manner of a Markush claim (i.e., being
selected from the group consisting of rather than comprising). See App. Br.
28. To the extent this could be construed as a plausible construction of the
claims, an alternate plausible construction is that the claims include neither
an ATM nor a check cashing machine and, instead, require only some other
unspecified type of payout device, because the use of “comprising” rather
than “consisting of” renders this limitation open-ended and of indeterminate
scope as discussed supra. Thus, at least two plausible constructions exist for
the claims in this hybrid Markush format, rendering the claims indefinite on
this basis as well. See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI
2008) (precedential) (“if a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed invention by holding
the claim . . . indefinite”).
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Claims 2, 3, 5, 7-10, 12, 15, 16, 23, 24, 26, 28-31, 33, 36, 37, 43, 44,
46, 48-51, 54, 55, and 80-89 depend from claim 1, 22, 42, or 79 and do not
further correct the ambiguity in claims 1, 22, 42, or 79. Accordingly, and
pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW
GROUND OF REJECTION against claims 1-3, 5, 7-10, 12, 15, 16, 22, 23,
24, 26, 28-31, 33, 36, 37, 42-44, 46, 48-51, 54, 55, and 79-89 under 35
U.S.C. § 112, second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which Appellant regards as
the invention.
Obviousness – Kowalick/Mattice/Pare/Dickinson
Claims 1, 22, and 42
Claims 1, 22, and 42 each recite that first fingerprint data is
transmitted from the gaming station to only the payout station after the
payout command is received in the payout station. Appellant contends that
the Examiner has not addressed, and the cited references do not teach, this
limitation. App. Br. 29-30; Reply Br. 14.
Indeed, in rejecting claims 1, 22, and 42, the Examiner relies on
Dickinson for the teaching directed to transmitting the first fingerprint data
from the gaming station to only the payout station, but fails to point to
anything in the references teaching the “after” limitation. Ans. 6-7, 11. As
Appellant notes, Dickinson teaches transmitting player identification
information when the player actuates the cash-out switch, at which time the
validation terminal receives the cash amount and the player identification
information. App. Br. 30 (citing Dickinson, col. 4, ll. 13-24.). The
Examiner does not point to any other cited reference teaching the “after”
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limitation and, therefore, has not established that this feature is taught or
suggested by the cited references.
For these reasons, we do not sustain the Examiner’s rejection of
claims 1, 22, and 42, or claims 5, 7, 10, 12, 15, 16, 26, 28, 36, 37, 46, 48, 51,
54, 55, and 87, which ultimately depend from claim 1, 22, or 42.
Claims 63, 77, and 78
Appellant argues claims 63, 66, 69-71, and 76-78 as a group and
presents additional arguments for claim 63. See App. Br. 21-30, 32-33 and
Reply Br. 4-9, 11-12. We select claim 63 as representative. Claims 77 and
78 stand or fall with claim 63. Although Appellant included the majority of
the arguments directed to claims 63, 77, and 78 in the group of arguments
directed to claims 1, 22, and 42, Appellant’s arguments directed to the
“after” limitation and to Pare (ATM) do not appear to relate to claims 63, 77,
and 78, as these claims do not include the “after” limitation or require an
ATM. App. Br. 21-30; Reply Br. 4-9.
Appellant argues that Kowalick teaches away from Mattice because
Mattice includes tokens and Kowalick teaches away from the use of tokens.
App. Br. 21-24; Reply Br. 8. The Examiner proposes modifying Kowalick
to include a cash-out command based on the disclosure of Mattice, and does
not propose including tokens in Kowalick. Ans. 15-16. Even if Kowalick
teaches away from use of tokens, we are not convinced that Kowalick
teaches away from the Examiner’s proposed modification to use a cash-out
command as disclosed in Mattice.
As Appellant acknowledges, both Kowalick and Mattice are directed
to the use of biometric data in the gaming context. App. Br. 17-18.
Considering the teachings of Kowalick and Mattice as a whole, we are not
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persuaded that one skilled in the art would be discouraged from using a
cash-out button as disclosed in Mattice simply because the reference also
discloses the use of tokens.
Appellant further argues that the references do not teach that
fingerprint data is transmitted only from the gaming station to the payout
station, and that Dickinson teaches away from only transmitting to the
payout station. App. Br. 24-28. The Examiner relies on Dickinson as
teaching transmitting only from the gaming station to the payout station,
citing Dickinson’s disclosure that the system 10 includes a validation
terminal 12 and one or more game terminals. Ans. 29 (citing Dickinson, fig.
1 and col. 3, ll. 6-12).
Appellant contends that Dickinson does not disclose a system with
only one game terminal and argues that Figure 1 of Dickinson “shows that
information is transmitted from game terminal to game terminal, and
ultimately to the validation terminal, but not only from the game terminal to
the validation terminal.” App. Br. 25, 28. However, as noted above,
Dickinson explicitly states that the system includes a validation terminal and
one or more game stations. Dickinson, col. 3, ll. 6-8. Thus, as the Examiner
explained, Dickinson discloses an arrangement with one game station and a
validation terminal. For these reasons, we are not apprised of Examiner
error or that Dickinson teaches away from such an arrangement.
Appellant argues that Dickinson also teaches away from Mattice by
using a communications link instead of tokens. App. Br. 26. However, for
reasons similar to those discussed above regarding the teaching away
argument directed to the combination of Kowalick and Mattice, we are not
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persuaded that Dickinson teaches away from the Examiner’s proposed
modifications.
For these reasons, we sustain the Examiner’s rejection of claims 63,
66, 69-71, and 76-78.
Claim 79
Claim 79 recites “a payout device selected from the group comprising
an automated teller machine (ATM) and a check cashing machine,” which
we found indefinite for the reasons set forth above. Because we found that
claims 79, 82, 83, 86, 88, and 89 are indefinite, a determination of the scope
of these claims would require us to resort to considerable speculation as to
the meaning of the terms employed and assumptions as to the scope of the
claims. Therefore, any determination on the merits of the Examiner’s
rejection of claims 79, 82, 83, 86, 88, and 89 is imprudent. See In re Steele,
305 F.2d 859, 862 (CCPA 1962) (holding that the Board erred in affirming a
rejection of indefinite claims under 35 U.S.C. § 103(a), because the rejection
was based on speculative assumptions as to the meaning of the claims). As
such, we are constrained to reverse the Examiner’s rejection of claims 79,
82, 83, 86, 88, and 89 pro forma.

Obviousness – Kowalick/Mattice/Pare/Dickenson/Bradford
Claims 2, 3, 23, 24, 43, and 44
Because claims 2, 3, 23, 24, 43, and 44 depend from claim 1, 22, or
42, and the stated bases for the rejections of claims 2, 3, 23, 24, 43, and 44
do not cure the deficiencies in the rejection of claims 1, 22, and 42, we do
not sustain the rejections of claims 2, 3, 23, 24, 43, and 44.

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Claims 64 and 65
Appellant argues claims 2, 3, 23, 24, 43, 44, 64, 65, 80, and 81 as a
group. See App. Br. 35-37 and Reply Br. 13-15. Appellant’s arguments
focus on the language of claim 2, which is similar to the language found in
claim 64. We select claim 64 as representative for the arguments raised
regarding claims 64 and 65. Claim 65 stands or falls with claim 64.
Claim 64 recites that the first fingerprint data and the second
fingerprint data are stored only until the payout value is credited and is
deleted thereafter. The Examiner cites Bradford as teaching the ability to
delete fingerprint data with the assistance of a casino attendant. Ans. 31.
The Examiner explains that it would have been obvious to automate this
activity (i.e., delete automatically upon leaving casino) in order to “giv[e]
the player an added sense of security from the immediacy of the deletion of
the data.” Id.
Appellant initially argues that Bradford teaches away from the
claimed deleting because fingerprint data in Bradford is stored until the
player goes to the attendant for assistance. App. Br. 36; Reply Br. 13.
However, Appellant points to nothing that criticizes, discredits, or
discourages investigation into the claimed invention. See In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004) (A reference does not teach away by
merely disclosing an alternative invention without criticizing, discrediting,
or otherwise discouraging investigation into the claimed invention.). Thus,
Appellant’s teaching away argument is not persuasive.
Appellant’s inherency argument (see App. Br. 36-37 and Reply Br.
13) is also not persuasive because the Examiner does not rely on inherency
(see Ans. 31). With regard to the Examiner’s explanation that it would have
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been obvious to automate the fingerprint deletion in order to give players an
added sense of security, noted above, Appellant contends that the difference
between automatically deleting player data and requiring a casino attendant
to delete player data is not slight and is not simply one of automation,
without further explanation. Reply Br. 15. Bradford explains that in order
to delete the data, the player simply presents the APID to the customer
service counter when they are ready to leave and the casino personnel feed
the APID into a computer and select a delete option to remove the data from
the system. Bradford, col. 33, ll. 32-41. We see no reason why this
operation could not be easily automated. Although Appellant contends that
Bradford teaches that the data is retained unless the user specifically requests
otherwise (Reply Br. 15), this does not explain why the proposed
modification “is not slight and is not simply one of automation.” Thus, we
are not apprised of Examiner error and we sustain the rejection of claims 64
and 65.
Claims 80 and 81
Claims 80 and 81 depend from claim 79. Because we found that
claims 80 and 81 are indefinite we are constrained to reverse the Examiner’s
rejection of these claims pro forma.

Obviousness – Kowalick/Mattice/Pare/Dickinson/Giobbi
Claims 8, 9, 29-31, 33, 49, and 50
Because claims 8, 9, 29-31, 33, 49, and 50 depend from claim 1, 22,
or 42, and the stated bases for the rejections of claims 8, 9, 29-31, 33, 49,
and 50 do not cure the deficiencies in the rejection of claims 1, 22, and 42,
we do not sustain the rejections of claims 8, 9, 29-31, 33, 49, and 50.
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Claims 60 and 61
Appellant argues claims 60 and 61 as a group. See App. Br. 37-39
and Reply Br. 15-17. We select claim 60 as representative for the arguments
raised regarding claims 60 and 61. Claim 61 stands or falls with claim 60.
Appellant initially argues that Kowalick teaches away from Mattice
and that Giobbi also teaches away from Kowalick due to Kowalick’s
disclosure regarding game play without the use of tokens. App. Br. 38-39.
This argument is not persuasive for the reasons set forth above discussing
the teaching away argument relative to the combination of Kowalick and
Mattice in the rejection of claim 63 (similar reasoning applies to the teaching
away argument presented regarding Giobbi and Kowalick). We additionally
note that Giobbi is only relied on by the Examiner for “teach[ing] a
command that allows a user to see account information at an Automated
Teller Machine,” which is not even a limitation in claim 60. See Ans. 32.
We, like Appellant (see Reply Br. 15), do not understand the relevance of
Giobbi based on the Examiner’s stated rejection and, therefore, do not see
how Giobbi can be the basis for any error in the Examiner’s rejection.
Appellant further argues that Dickinson does not teach transmitting to
only one payout station (App. Br. 38), which argument we found to be
unpersuasive for the reasons explained above regarding the rejection of
claim 63. Appellant additionally argues that Kowalick’s registration device
is not an ATM, and actually teaches away from using an ATM. Reply Br.
16. We do not find Appellant’s teaching away argument persuasive because
Appellant does not point to anything that discourages investigation into the
claimed invention. Appellant’s argument directed to Kowalick not teaching
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an ATM is also unpersuasive, as the Examiner relies on Pare for this feature.
See Ans. 6, 25.
For these reasons, we are not apprised of Examiner error and we
sustain the Examiner’s rejection of claims 60 and 61.

Claims 84 and 85
Claims 84 and 85 depend from claim 79. Because we found that
claims 84 and 85 are indefinite we are constrained to reverse the Examiner’s
rejection of these claims pro forma.

DECISION
We AFFIRM the Examiner’s decision to reject claims 60, 61, 63-66,
69-71, and 76-78.
We REVERSE the Examiner’s decision to reject claims 1-3, 5, 7-10,
12, 15, 16, 22-24, 26, 28-31, 33, 36, 37, 42-44, 46, 48-51, 54, 55, and 79-89.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW
GROUND OF REJECTION for claims 1-3, 5, 7-10, 12, 15, 16, 22, 23, 24,
26, 28-31, 33, 36, 37, 42-44, 46, 48-51, 54, 55, and 79-89 under 35 U.S.C.
§ 112, second paragraph.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

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-IN-PART; 37 C.F.R. § 41.50(b)

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