Ex Parte Giobbi

Board of Patent Appeals and Interferences

Mar 26, 2012

10630141 (B.P.A.I. Mar. 26, 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.
10/630,141 07/30/2003 John J. Giobbi 247079-000107USD2 9474
70243 7590 03/26/2012
NIXON PEABODY LLP
300 S. Riverside Plaza
16th Floor
CHICAGO, IL 60606
EXAMINER
YOO, JASSON H
ART UNIT PAPER NUMBER
3718
MAIL DATE DELIVERY MODE
03/26/2012 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 JOHN J. GIOBBI
____________________

Appeal 2010-003711
Application 10/630,141
Technology Center 3700
____________________

Before: STEFAN STAICOVICI, PHILLIP J. KAUFFMAN, and
MICHAEL L. HOELTER, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003711
Application 10/630,141
2
STATEMENT OF CASE
Appellant seeks review of the Examiner’s rejection of claims 101-104
and 106-125 under 35 U.S.C. § 103(a) as being unpatentable over Hedrick
(US 6,908,387 B2; iss. Jun. 21, 2005), Rantze (US 6,536,658 B1; iss. Mar.
25, 2003) and Sizer (US 5,923,252; iss. Jul. 13, 1999). Appellant’s
representative presented oral argument on Mar. 20, 2012. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

THE INVENTION
Appellant’s claimed invention “relates generally to gaming machines
and, more particularly, to a portable data unit for communicating with a
gaming machine over a wireless transmission link for such purposes as
cashless gaming, player tracking, game customization, and data transfer.”
Spec. 1:5-8. Independent claim 101, reproduced below, is illustrative of the
claimed subject matter:
101. A method of operating a gaming terminal, comprising:
establishing a wireless transmission link with a portable
data unit carried by an individual, the portable data unit storing
information associated with the individual;
transmitting the information associated with the
individual to the gaming terminal;
in response to the transmitting changing the operation of
the gaming terminal to a first mode associated with the
individual or a second mode associated with the individual
depending upon at least one of (i) a distance between the
portable data unit and the gaming terminal and (ii) a period of
time for which the portable data unit is detected as being in the
presence of the gaming terminal, the first mode being different
from the second mode.

Appeal 2010-003711
Application 10/630,141
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OPINION
Appellant argues that even if a person of ordinary skill in the art
would have combined the references as proposed, the proposed combination
does not modify operation of the gaming terminal to a mode associated with
the individual (or passerby) as called for in independent claims 101, 102,
112, and 120. App. Br. 13-14.
Independent claim 101 is directed to a method of operating a gaming
terminal that includes transmitting information associated with an individual
to the gaming terminal and changing the operation of the gaming terminal
from a first mode associated with the individual to a second mode1
associated with the individual depending on at least one of (1) distance or
(ii) time.2 Consequently, claim 101 calls for the first and second different
modes of operation of the gaming terminal to be associated with the
individual. Similarly, independent claims 102 and 120 call for the first and
second different modes of operation to be associated with a passerby, and
independent claim 112 calls for a first mode of operation specific to a first
passerby and a second mode of operation specific to a second passerby.
Thus, in each of independent claims 101, 102, 112, and 120 the modes of
operation are associated with a specific individual or passerby detected.3

1 Wherein the first and second modes are different from each other.
2 Distance between the portable data unit carried by the individual and the
gaming terminal and a period of time for which the portable data unit is
detected in the presence of the gaming terminal.
3 The gaming terminal (gaming machine 10) is adapted and configured to
operate differently (modes) in response to information associated with an
individual (personal identifier) or passerby (information, other than personal
identification associated with the individual, such as player preferences
(language, sound options, etc.)). Spec. 15:19-16:13.
Appeal 2010-003711
Application 10/630,141
4
The Examiner found that Hendrick discloses a first mode (attract
mode) as called for in independent claim 101. Ans. 6 (citing Hendrick, col.
12, ll. 23-304). This portion of the reference discloses that when the gaming
terminal merely detects a person in front of the machine, an illumination or
sound may be projected to attract a player’s attention.5 Hendrick, col. 12, ll.
23-30. However, this mode is not associated with a specific player detected.
In other words, Hendrick’s attract mode is the same for any player detected
and is not associated with the individual as called for in claim 101. Neither
Rantze nor Sizer are relied upon to correct this deficiency. See Ans. 3-7.
The rejection of independent claims 102, 112, and 120 is similarly flawed
because the mode of operation of the gaming terminal of the proposed
combination is the same for any player (passerby) detected, and is not
associated with a specific player (passerby). See Ans. 3-5, 8-14.
As such, we cannot sustain the rejection of claims 101, 102, 112, and
120 or their dependent claims 103, 104, 106-111, 113-119, and 121-125.

DECISION
We reverse the Examiner’s decision to reject claims 101-104 and 106-
125.

4 The Examiner cites lines 23-20; however, based on the contents of
Hendrick, this appears to be a typographical error intending to refer to lines
23-30.
5 The person may be detected by a proximity sensor on the player tracking
unit in device housing 200 of the gaming machine (e.g. an infrared device),
or by a Bluetooth device that is activated (presumably referring to wireless
interface 264 of the gaming machine that communicates with the portable
wireless device worn or carried by a player (e.g. portable wireless interface
602)). Hendrick, col. 10, ll. 46-56; col. 12, ll. 23-30; col. 19, ll. 51-52; figs
2C, 5.
Appeal 2010-003711
Application 10/630,141
5

REVERSED

MP