Ex Parte Heilala et al

Patent Trial and Appeal Board

Oct 29, 2013

11004159 (P.T.A.B. Oct. 29, 2013)

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.
11/004,159 12/03/2004 Hannu Heilala 540-021.003 1739
4955 7590 10/29/2013
WARE, FRESSOLA, MAGUIRE & BARBER LLP
BRADFORD GREEN, BUILDING 5
755 MAIN STREET, P O BOX 224
MONROE, CT 06468
EXAMINER
MCCLELLAN, JAMES S
ART UNIT PAPER NUMBER
3718
MAIL DATE DELIVERY MODE
10/29/2013 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 HANNU HEILALA and MARKKU KORESAAR
____________

Appeal 2011-013484
Application 11/004,159
Technology Center 3700
____________

Before ANNETTE R. REIMERS, REMY J. VANOPHEM, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-013484
Application 11/004,159

2

STATEMENT OF THE CASE
Hannu Heilala and Markku Koresaar (“Appellants”) appeal under 35
U.S.C. § 134 from the Examiner’s decision rejecting claims 1-4, 8-12,
16-18, and 22. We have jurisdiction under 35 U.S.C. § 6(b).
Claimed Subject Matter
Claims 1 and 16 are the independent claims on appeal. Claim 1 is
illustrative of the claimed subject matter and is reproduced below.
1. A method for using preprinted coupons in a game,
comprising:
- reading a coupon identifier from a coupon that also
contains a preprinted gaming row the contents of which have
been preprinted on the coupon before said reading of the
coupon identifier,
- on the basis of the coupon identifier, informing a
gaming system about playing of the gaming row,
- deriving the contents of the gaming row from the
coupon identifier read from the coupon by using at least a part
of the coupon identifier as an address input to a random
permutator that maps address inputs to a list of possible gaming
rows, and
- producing an updated database of played gaming rows
by writing said derived contents of the gaming row to a
database.
App. Br. 13, Claims App’x. Claim 16 is directed to a system for using
preprinted coupons in a game, comprising an electronic terminal and a
gaming computer “wherein the gaming computer is adapted to derive the
contents of the gaming row from the coupon identifier.” Id. at 17.
Appeal 2011-013484
Application 11/004,159

3
References
The Examiner relies upon the following prior art references:
Roberts ’5531 US 4,677,553 Jun. 30, 1987
Cohen US 5,231,568 Jul. 27, 1993
Roberts ’510 US 5,772,510 Jun. 30, 1998
Rejections
Appellants seek review of the following rejections:
I. Claims 1-4, 10-12, 16-18, and 22 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Roberts ’553 and Roberts ’510;
and
II. Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Roberts ’553, Roberts ’510, and Cohen.
SUMMARY OF DECISION
We REVERSE.

1 The Examiner noted that the Final Office Action “mistakenly referenced
U.S. Patent No. 4,677,553 to Roberts as U.S. Patent No. 4,677,533 to
Roberts ’533 in the rejection.” Ans. 4. The Examiner indicated that “[f]or
consistency, this Answer will still refer to U.S. Patent No. 4,677,553 as
Roberts ’533.” Id. U.S. Patent No. 4,677,533 lists “Julian A. McDermott”
and “Kevin McDermott” as inventors and is directed to a lighting fixture.
See U.S. Patent No. 4,677,533 (iss. June 30, 1987). Appellants’ Appeal and
Reply Briefs make clear that Appellants understood the Examiner’s
reference to U.S. Patent No. 4,677,533 and Roberts ’533” was intended to
refer to U.S. Patent No. 4,677,553. See App. Br. 8-11; Reply Br. 2-5.
Accordingly, because there is no confusion as to which reference was
applied in the rejection, we refer to U.S. Patent No. 4,677,553 as Roberts
’553.
Appeal 2011-013484
Application 11/004,159

4
OPINION
Rejection I – Obviousness over Roberts ’553 and Roberts ’510
The Examiner concluded that the combination of Roberts ’553 and
Roberts ’510 would have rendered obvious the subject matter of claims 1-4,
10-12, 16-18, and 22 to one of ordinary skill in the art at the time of
invention. Ans. 4-9. The Examiner found that Roberts ’553 discloses the
elements of the claims, including “deriving the contents of the gaming
outcome from the coupon identifier read from the coupon by using at least a
part of the coupon identifier as an address input to a gaming outcome,” id. at
5 (relying on the “paragraph bridging columns 8 and 9”), but “is silent
regarding the use of a gaming outcome being a gaming row (e.g., a list of
symbols) and the use of a random permutator,” id. at 6. The Examiner found
that Roberts ’510 teaches a method of using preprinted coupons in a game
“wherein the gaming outcome [is] a gaming row (e.g., see lottery numbers in
Fig. 2B) and the use of a random permutator (e.g., see column 4, lines
43-46).” Id. The Examiner concluded that it would have been obvious to
one of ordinary skill in the art to modify Roberts ’533 with gaming rows as a
gaming outcome and with a random permutator as taught by Roberts ’510.
Id. at 6-7.
Appellants raise several arguments in response to this rejection,
including that “no contents of any gaming row are derived by using the
serial number as an address input” in Roberts ’553. Reply Br. 4.
We agree. Roberts ’553 is directed to a system of using a lottery
ticket in a game, but discloses that “the central computer system 79 will
randomly generate the game outcomes and randomly associate respective
ones of a plurality of ticket serial numbers with the outcomes.” Roberts
Appeal 2011-013484
Application 11/004,159

5
’553, col. 7, ll. 65-68. The outcomes and associated serial numbers are then
stored in the game data storage device. Id. at col. 7, l. 68 – col. 8, l. 2.
Roberts ’553 discloses that if a blank ticket is presented, “the negative exit
will be followed from block 82 and in step 84, the terminal controller will
establish connection with the central computer system to obtain a ticket
serial number and chance outcome to be printed on the blank ticket.” Id. at
col. 8, ll. 25-29. The ticket serial number and chance outcome are then
printed on the ticket. Id. at col. 8, ll. 36-41; see also id., fig. 6 (step 86).
The Examiner specifically relied upon the validation steps of Roberts
’553, citing to the paragraph spanning columns 8 and 9. See Ans. 5. This
paragraph indicates that as a step pertaining to validating a ticket, the central
system consults the record entry in the data storage device associated with
the serial number. See Roberts ’553, col. 8, ll. 66-68. As discussed above,
however, the ticket serial number and the chance outcome have already been
generated. Thus, this portion of Roberts ’553 fails to disclose deriving the
contents of the gaming outcome (or gaming row) from the coupon identifier
as claimed.2
Accordingly, we do not sustain Rejection I.
Rejection II – Obviousness over Roberts ’553, Roberts ’510, and Cohen
The Examiner concluded that the combination of Roberts ’553,
Roberts ’510, and Cohen would have rendered obvious the subject matter of
claims 8 and 9 to one of ordinary skill in the art at the time of invention.
Ans. 9. This rejection relies upon the same erroneous finding regarding

2 The Examiner’s response to Appellants’ argument asserts that Roberts ’553
anticipates claims 1-4, 10-12, 16-18, and 22. Ans. 10. In light of our
discussion above, were we to interpret Rejection I as relying upon
anticipation, we would similarly not sustain the rejection.
Appeal 2011-013484
Application 11/004,159

6
Roberts ’553 that we discussed in the context of Rejection I. Accordingly,
for the reasons explained in the context of Rejection I, we do not sustain
Rejection II.
DECISION
We REVERSE the Examiner’s decision rejecting claims 1-4, 8-12,
16-18, and 22.

REVERSED

mls