Ex Parte Gauselmann

Board of Patent Appeals and Interferences

Aug 24, 2012

11252429 (B.P.A.I. Aug. 24, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/252,429 10/17/2005 Michael Gauselmann ATR-A-139 8891
32566 7590 08/24/2012
PATENT LAW GROUP LLP
2635 NORTH FIRST STREET
SUITE 223
SAN JOSE, CA 95134
EXAMINER
DEODHAR, OMKAR A
ART UNIT PAPER NUMBER
3714
MAIL DATE DELIVERY MODE
08/24/2012 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 MICHAEL GAUSELMANN
____________________

Appeal 2010-012212
Application 11/252,429
Technology Center 3700
____________________

Before JEFFREY B. ROBERTSON, DANIEL S. SONG, and
JOSIAH C. COCKS Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/252,429

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 7-
11 and 16-29. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
The invention is related to gaming machines and, in particular, to a
technique for allowing a player to communicate with others while at a
gaming machine. (Spec. 1, ll. 6-7.)
Claims 9 and 24, reproduced below, are illustrative of the claimed
subject matter:
9. A method performed by at least one of a plurality of
gaming machines in a casino connected to a network
comprising:
displaying to a first player, playing a first gaming
machine located in a casino, communication options for
allowing the first player to select one of a plurality of
communication options for communicating personal
information to a second person in the casino via the network,
the communications options including communications with
another current second player playing a second gaming
machine, the second player being unknown to the first player,
the first gaming machine receiving a wager and granting an
award for particular outcomes of games;
receiving, by the first gaming machine, the first player's
personal information, the first player's personal information
including criteria for identifying at least the second player;
identifying the second player to the first player; and
transmitting, by the first gaming machine, at least a
portion of the personal information to the second player.

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24. A gaming machine within a casino for connection to
a network comprising:
a display for displaying a game of chance to a first player
of a first gaming machine within a casino, wherein the first
gaming machine is connected to a network, the first gaming
machine receiving a wager and granting an award for particular
outcomes of games;
a processing system for carrying out the following
method:
displaying to the first player, playing the first
gaming machine, communication options for allowing
the first player to communicate personal information to
an unknown second player via the network, wherein the
second player is at a second gaming machine in the
casino;
receiving by the first gaming machine a request by
the first player to be matched with the unknown second
player;
receiving by the first gaming machine personal
information from the first player for being matched with
personal information from the second player;
automatically matching the first player to the
second player based on criteria entered by the player; and
identifying to the first player an identity of a
gaming machine played by the second player who was
matched with the first player.
(Appeal Brief, Claims Appendix1 13-15.)

THE REJECTIONS
I. The Examiner rejected claims 7-11, 16-18, and 20-29 under
35 U.S.C. § 103(a) as unpatentable over Loose et al.
(US 2004/0162144 A1, published August 19, 2004) in view of
Sudai et al. (US 5,950,200, issued September 7, 1999).
(Examiner’s Answer, dated August 3, 2010, “Ans.” 3-5.)

1 Appeal Brief filed November 12, 2008, hereinafter “App. Br.” and Claims
App’x, respectively.
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II. The Examiner rejected claim 19 under 35 U.S.C. § 103(a) as
unpatentable over Loose in view of Sudai and in further view of
Daniele et al. (US 2007/0276731 A1, published November 29,
2007). (Ans. 6.)

III. The Examiner rejected claim 24 under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as
the invention. (Ans. 6-9.)2

ISSUE
Regarding the recited communication steps, the Examiner found that
Loose discloses providing communication between players using casino
gaming machines. (Ans. 3-4.) The Examiner found that Loose does not
expressly disclose the claimed matchmaking features. (Ans. 4.) The
Examiner found that Sudai teaches a system for enabling an online
matchmaking service that can be implemented on any networked system.
(Ans. 4-5.) The Examiner concluded that it would have been obvious to one
of ordinary skill in the art to provide the networked casino gaming device of
Loose with the matchmaking features of Sudai in order to increase available
user entertainment options. (Ans. 5.)
Appellant states that the advantages of the invention include matching
two players in a casino based on personal criteria, immediate meeting of
those two players based on that match, prolonged play on the participating
machines, and being able to implement the invention with a software
upgrade. (App. Br. 7-9.) Appellant argues that as a result of these
advantages, there is synergy in the claimed combination of a networked

2 Rejection III is a new ground of rejection set forth by the Examiner in the
Answer. Appellant does not reply to this new ground.
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gaming machine and a player-matching system that matches players based
on personal information the players enter into the machines. (App. Br. 8.)
Appellant argues that this synergy precludes a conclusion of obviousness.
(App. Br. 8.)
Appellant also contends that Loose does not disclose matching one
player to an unknown player based on personal information criteria, but
rather that Loose’s communications are “directly targeted” via direct e-mail
addressing, chat rooms, mass mailings, or other means. (App. Br. 9.)
Appellant also argues that there is no suggestion for applying Sudai’s dating
service software (designed for a home computer system and used over a long
term) to a gaming network in a casino because gaming networks were not
envisioned to be used to match previously unknown active players together
using personal criteria. (App. Br. 8.)
Therefore, the dispositive issue on appeal is:
(1) Whether the Examiner erred in concluding that Loose in view of
Sudai renders obvious the gaming machine recited in claim 9?

DISCUSSION
Initially, we note that Appellant has not responded to the Examiner’s
rejection (Ans. 6-9) of claim 24 under 35 U.S.C. § 112, second paragraph
(Rejection III). As such, Appellant has waived any arguments rebutting this
rejection. Therefore, we summarily sustain Rejection III. See 37 C.F.R.
§41.37(c)(1)(vii) (“Any arguments or authorities not included in the brief or
a reply brief filed pursuant to § 41.41 will be refused consideration by the
Board, unless good cause is shown.”).
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Because we have summarily sustained the rejection of claim 24, it
would be imprudent to speculate as to the scope of the “means” element in
claim 24 in order to reach a decision on the obviousness of the claimed
subject matter under 35 U.S.C. § 103(a). See In re Steele, 305 F.2d 859, 862
(CCPA 1962) (holding that the examiner and the Board were wrong in
relying on what at best were speculative assumptions as to the meaning of
the claims and basing a rejection under 35 U.S.C. § 103 thereon). Thus, we
vacate the Examiner’s rejection of claim 24 under 35 U.S.C. § 103(a) as
unpatentable over Loose in view of Sudai. See Ex parte Catlin, 90 USPQ2d
1603, 1608 (BPAI 2009) (precedential). It should be understood, however,
that our decision to vacate the obviousness rejection of claim 24 is based
solely on the indefiniteness of the claimed subject matter and is not based on
the merits of the underlying rejection.3
We also observe that Appellant’s arguments against each of the
remaining independent claims subject to Rejection I (claims 9 and 25) raise
the same or similar issues. (App. Br. 7-11.) As such, our analysis of
Rejection I will focus on representative claim 9, which contains claim
limitations representative of the arguments made by Appellant pursuant to
37 C.F.R. § 41.37(c)(1)(vii).

3 Indeed, our decision to vacate the rejection of claim 24 should not be
interpreted as opinion that the Examiner’s prior art combination would not
be likewise applicable to claim 24.
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Issue One
We are not persuaded that the Examiner erred in concluding that
claim 9 would have been obvious to one of ordinary skill in the art at the
time of the invention.
Loose discloses multiple communication options available to a
gaming machine user over any type of network. (Paras. [0058], [0059],
[0074], [0076], [0090]; Figs. 11, 17.) Loose also recognizes that “there is a
continuing need for gaming terminal manufacturers to provide new
techniques for enhancing the level of social interaction involved in the play
of electronic gaming terminals.” (Para. [0005].) Matchmaking is a known
technique for enhancing social interaction as evidenced by Sudai, which
generally teaches a method for providing matchmaking communications
based on shared interests. (Col. 3, l. 56 – Col. 5, l. 16.) Sudai also discloses
that its method can be practiced over a wide variety of networks. (Col. 3, ll.
34-38; Col. 4, ll. 6-10.)
One of ordinary skill in the art would have expected that expanding
communication over a casino network to include Sudai’s known method of
matchmaking would have increased social interaction and increased
entertainment options to the user. Thus, Appellant’s invention simply
combines the pre-existing elements of 1) networked gaming
communications at a casino, and 2) networked matchmaking
communications, to thereby yield predictable results. See KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”).
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While Appellant argues that the synergy provided by the invention
precludes a conclusion of obviousness, we note that “[s]ynergism is one
factor to be considered in the ultimate determination of obviousness.” In re
Huellmantel, 324 F.2d 998, 1003 (CCPA 1963). Further, synergism must be
unexpected in order to provide evidence of nonobviousness. Id.
Here, in view of the express disclosure in Loose that increased social
interaction is desired in a casino setting, and the known entertainment value
of matchmaking systems as disclosed by Sudai, Appellant has not shown
that the synergy provided by its invention would have been unexpected to
one of ordinary skill in the art.
We further note that Appellant’s arguments that Loose does not
disclose matchmaking and that Sudai does not specifically suggest that its
system can be used in a casino amount to attacks on the references
individually and fail to consider what the prior art as a whole would have
taught to one of ordinary skill in the art. See In re Merck & Co., Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986).
Accordingly, we agree with the Examiner that it would have been
obvious to one of ordinary skill in the art at the time the invention was made
to provide the networked casino gaming device of Loose with the
matchmaking features as taught by Sudai in order to increase the
entertainment options available to the user. (Ans. 5.)
Additionally, because Appellant relies on the arguments presented for
independent claim 9 as the basis for patentability for claims dependent
therefrom (see e.g., App. Br. 6-7), we sustain Rejection II directed to
dependent claim 19 for the same reasons.

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CONCLUSION
The Examiner did not err in concluding that Loose in view of Sudai
renders obvious the gaming machine recited in claim 9.

DECISION
We summarily affirm the Examiner’s rejection of claim 24 under
35 U.S.C. § 112, second paragraph, as indefinite for failing to particularly
point out and distinctly claim the subject matter which applicant regards as
the invention.
We affirm the Examiner’s rejection of claims 7-11, 16-18, 20-23, and
25-29 under 35 U.S.C. § 103(a) as unpatentable over Loose in view of
Sudai.
We affirm the Examiner’s rejection of claim 19 under
35 U.S.C. § 103(a) as unpatentable over Loose in view of Sudai and in
further view of Daniele.
We vacate the Examiner’s rejection of claim 24 under
35 U.S.C. § 103(a) as unpatentable over Loose in view of Sudai.

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).

AFFIRMED

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