Ex Parte Lind et al

Board of Patent Appeals and Interferences

Jan 5, 2009

10862089 (B.P.A.I. Jan. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CLIFTON LIND and JEFFERSON C. LIND
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Appeal 2008-4790
Application 10/862,089
Technology Center 3700
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Decided: January 5, 2009
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Before DONALD E. ADAMS, DEMETRA J. MILLS, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 1, 2 and
4-28. Jurisdiction is under 35 U.S.C. § 6(b). We affirm-in-part the
Examiner’s final rejection.

Appeal 2008-4790
Application 10/862,089

STATEMENT OF THE CASE
The claimed invention is to a bingo gaming system “in which a player
may use a physical bingo card to participate in bingo games played through
an electronic player station. The invention encompasses methods for
conducting bingo games, gaming apparatus, and program products” (Spec.
3: 12-15). The claims involve issuing a physical bingo card which is
scanned at a player station to produce a scanned output of the card. Game
play requests are entered from the player station. After the game is
conducted, the game result is also displayed at the player station.
Claims 1, 2, and 4-28 are appealed and stand rejected by the Examiner
as follows:
Claims 1, 2, 4-21, and 24-27 under 35 U.S.C. § 102(e) as anticipated
by Itkis et al. (US Pub. No. 2003/0137143 A1, published Jul. 24, 2003)
(Ans. 3); and
Claims 22, 23, and 28 under 35 U.S.C. § 103(a) as obvious in view of
Itkis (Ans. 8).
Claims 1, 8, and 16, which are representative, read as follows:
1. A method including the steps of:
(a) issuing a physical bingo card, the physical bingo card
being associated with a card bingo structure;
(b) scanning the physical bingo card at a player station to
produce a scan output and applying pattern recognition to the
scan output in identifying the card bingo structure through the
player station;
(c) collecting a game play request entered from the player
station with at least one additional game play request to form a
first game group, the game play request being associated with
the card bingo structure and each additional game play request
in the first game group being associated with a respective
additional bingo structure;
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(d) conducting a bingo game between the card bingo
structure and each additional bingo structure to identify a bingo
game result for the card bingo structure; and
(e) displaying the bingo game result for the card bingo
structure at the player station.

8. An apparatus including:
(a) a physical bingo card issuing station for issuing a
physical bingo card, the physical bingo card being associated
with a card bingo structure;
(b) a player station having a scanner associated therewith,
the scanner for scanning the physical bingo card to identify the
card bingo structure, and the player station for producing a
game play request associated with the card bingo structure in
response to a player input at the player station and for
communicating a bingo game result to a player at the player
station; and
(c) a game server in communication with the player
station, the game server for collecting the game play request
produced by the player station with at least one additional game
play request associated with a respective bingo structure to
form a first game group, and for conducting a bingo game
between the card bingo structure and each additional bingo
structure to identify the bingo game result for the card bingo
structure.

16. A program product stored on a computer readable medium,
the program product including:
(a) scanner program code for controlling the operation of
a player station scanner to identify a card bingo structure
associated with a physical bingo card;
(b) player station program code for producing a game
play request associated with the card bingo structure in
response to a player input at the player station, and for
controlling communication of a bingo game result to a player at
the player station;
and
(c) game server program code for controlling collection
of the game play request produced by the player station
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program code with at least one additional game play request
associated with a respective additional bingo structure to form a
first game group, the game server program code also for
conducting a bingo game between the card bingo structure and
each additional bingo structure to identify the bingo game result
for the card bingo structure.

ISSUES ON APPEAL
Claim 1
Does Itkis describe a method of claim 1 comprising: “(c) collecting a
game play request entered from the player station” and “(e) displaying the
bingo game result for the card bingo structure at the player station”?
Claim 8
Does Itkis describe an apparatus comprising “(a) a physical bingo card
issuing station,” “(b) a player station having a scanner associated therewith,”
and “(c) a game server” as in claim 8?
Claim 16
Does Itkis describe a play station code “for producing a game play
request associated with the card bingo structure in response to a player input
at the player station, and for controlling communication of a bingo game
result to a player at the player station” as recited in claim 16?

PRINCIPLES OF LAW
Because the hallmark of anticipation is prior invention, the
prior art reference – in order to anticipate under 35 U.S.C.
§ 102 – must not only disclose all elements of the claim within
the four corners of the document, but must also disclose those
elements “arranged as in the claim.” Connell v. Sears, Roebuck
& Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983).
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).
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[W]here a patentee defines a structurally complete invention in
the claim body and uses the preamble only to state a purpose or
intended use for the invention, the preamble is not a claim
limitation. See Bell Communications, 55 F.3d at 620; Kropa v.
Robie, 38 C.C.P.A. 858, 187 F.2d 150, 152, 88 USPQ 478, 481
(1951).
The determination of whether preamble recitations are
structural limitations or mere statements of purpose or use “can
be resolved only on review of the entirety of the patent to gain
an understanding of what the inventors actually invented and
intended to encompass by the claim.” Corning Glass Works,
868 F.2d [1251] at 1257 [(Fed. Cir. 1989)]. The inquiry
involves examination of the entire patent record to determine
what invention the patentee intended to define and protect.
Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997).
“There is an extensive body of precedent on the question of whether a
statement in a claim of purpose or intended use constitutes a limitation for
purposes of patentability. . . . Such statements often, although not
necessarily, appear in the claim’s preamble . . . .” In re Stencel, 828 F.2d
751, 754 (Fed. Cir. 1987).

Claim 1
Findings of Fact
1. Itkis teaches a self-service kiosk 1, operated by a user, which dispenses
bingo cards printed by a printer responsive to a computer (Itkis, at ¶¶ 1, 26,
28).
2. Using a touchscreen, a user purchases the bingo cards from the self-
service kiosk (Itkis, at ¶ 26 (col. 2)). Upon purchase, the kiosk dispenses
computer-printed bingo cards (id. at ¶ 26).
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3. The printed bingo cards include a barcode 48 which “may be a
concatenated and/or hashed number consisting of a bingo pack number 15,
series number 47 and bingo game number 16” (Itkis, at ¶ 29).
4. The kiosk comprises a personal computer (PC) 4 and a barcode reader 37
to scan a refund receipt 64 (Itkis, at ¶¶ 27 and 37 (col. 2)). The barcode
reader is a scanner.
5. The kiosk can be networked to a bingo caller terminal 23 that comprises a
personal computer PC 24, a barcode reader 35, and a bingo ball blower 31 to
call bingo numbers (Itkis, at ¶¶ 14, 27; Fig. 2).
6. The bingo terminal 23 comprising PC 24 can coordinate kiosk activities,
including broadcasting called bingo numbers to participating kiosks (Itkis, at
¶ 36).
7. The PC 24 acts as a server (Itkis, at ¶ 37 (col. 2)) and maintains a
database of all sold cards and can verify a winning card (id. at ¶ 35). Fig. 2
shows a verified card being displayed at a touchscreen monitor 29 of the
bingo caller terminal 23 (Itkis, at ¶ 27; see Fig. 2).
Claim 1
8. Claim 1 is directed to a method comprising the following steps:
9. (a) issuing a physical bingo;
10. (b) “scanning” the bingo card at a player station;
11. (c) “collecting” a game request entered from the player station with
the “request being associated with the card bingo structure”;
12. (d) conducting a bingo game; and
13. (e) “displaying” the bingo game result at the player station.
14. The steps of “(b) scanning,” “(c) collecting,” and “(e) displaying” occur
at the play station of claim 1.
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15. We interpret the claimed step (c) of “collecting a game play request
entered from the player station” to read on the purchase of a computer-
printed bingo cards from the kiosk 1 of the Itkis system (FF1, 2).
16. Thus, in the parlance of claim 1, Itkis kiosk 1 serves as a “player
station.”
17. We further interpret step (e) of claim 1 reciting “displaying the bingo
game result for the card bingo structure” to correspond to the verification
and display of a verified bingo card on the touchscreen monitor 29 of the
terminal 23 as taught by Itkis (FF7).
18. The (e) “displaying” and winning verification described in Itkis occurs
at the terminal 23 (FF7), not the kiosk “player station” 1 as required by
claim 1 (see FF13).
19. In sum, both steps (c) and (e) as described in Itkis do not occur at a
“player station” as required by claim 1 (see FF14).
Analysis
Anticipation requires that every element of the claimed invention
must be found in a single prior art reference, arranged as in the claim. Net
MoneyIN, 545 F.3d at 1369. Claim 1 is directed to a method comprising (c)
“collecting” a game request entered at a play station and (e) “displaying” a
bingo game result also at the play station (FF11, 13, 14). Itkis describes a
method in which the game request is entered at a play station (“kiosk 1)
(FF15) (i.e., step (c) of claim 1). However, the (e) displaying step occurs at
a bingo caller terminal 23, which is a separate location from the player
station (FF7, 17, 18). In sum, steps (c) and (e) as described in Itkis do not
occur at a “player station” as required by claim 1 (FF19). Therefore, Itkis
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does not describe every element of the claimed invention as arranged in the
claim and does not anticipate it. We reverse the rejection of claim 1.

Claim 8
Findings of Fact
20. Claim 8 is directed to an apparatus comprising:
21. (a) a physical bingo card issuing station,
22. (b) “a player station having a scanner associated therewith,” and
23. (c) “a game server.”
24. The scanner is “for scanning the physical bingo card to identify the card
bingo structure.”
25. The player station is “for producing a game play request associated with
the card bingo structure in response to a player input at the player station and
for communicating a bingo game result to a player at the player station.”
26. The Specification describes the claimed uses of the scanner and play
station to be embodied by program code:
A program product embodying the principles of the
invention includes scanner program code, player station
program code, and game server program code. The scanner
program code controls the operation of the player station
scanner to identify the card bingo structure associated with the
physical bingo card. The player station program code produces
the game play request in response to the player input at the
player station and controls the communication of the bingo
game result to the player at the player station.
(Spec. 5: 6-14.) See also Spec. 13: 12-15 which refers to a “computer
program code” for performing player station functions (“EPS 103”) and
which is referenced in the Appeal Brief on page 3 in its summary of the play
station as recited in claim 8.
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27. We interpret the phrase “for scanning” (FF24), “for producing” (FF25),
and “for communicating” (FF25) as intended uses of the claimed scanner
and player station and not to further limit the scanner and station structures.
28. Itkis describes a physical bingo card issuing station (FF2) as in (a) of
claim 8 (see FF21).
29. Itkis also describes a kiosk with a barcode reader (FF4) which meets the
limitation of claim 8 of (b) “a player station having a scanner associated
therewith” (see FF22).
30. Itkis’s system comprises a server as part of terminal 23 (FF6, 7) that
satisfies the limitation of claim 8 of (c) “a game server” (see FF 23).
Analysis
Claim 8 is directed to an apparatus comprising a physical bingo card
issuing station, a play station with a scanner, and a game server (FF20-23).
Itkis describes a bingo system with all three elements (FF28-30).
The claim also states what each of the play station and scanner is
“for” (FF24-25) and thus specifies a use of these claimed elements. The
determination of whether a recitation is a structural limitation or a mere
statement of purpose or use “‘can be resolved only on review of the entirety
of the patent to gain an understanding of what the inventors actually
invented and intended to encompass by the claim.’” Rowe v. Dror, 112 F.3d
at 478. In this case, the Specification refers to a “program code” which is
responsible for performing each of the uses recited in claim 8 for the play
station and scanner (FF26; Spec. 5: 6-14; 13: 12-15). Thus, the claimed “for
scanning,” “for producing,” and “for communicating” (FF24-25) limitations
are described in the Specification as produced by program code and are not
characterized as structural limitations of the play station and scanner,
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themselves. For this reason, we treat these as “intended use” limitations that
do not modify the play station or scanner structures. Consequently, since
Itkis teaches a bingo system meeting the structure required by claim 8, we
agree with the Examiner’s determination that claim 8 is anticipated by Itkis.
Appellants have not identified any structural components of the claimed play
station, scanner, and game server which distinguish this claimed subject
matter from Itkis’s bingo system. We therefore affirm the anticipation
rejection of claim 8.

Claim 16
Findings of Fact
31. Claim 16 is directed to a program product comprising:
32. (a) scanner program code “for controlling the operation of a player
station scanner to identify a card bingo structure associated with a physical
bingo card.”
33. (b) player station code “for producing a game play request associated
with the card bingo structure in response to a player input at the player
station” and “for controlling communication of a bingo game result to a
player at the player station”; and
34. (c) game server program code for controlling collection of the game
play request and conducting a bingo game.
35. As with claim 1, we interpret kiosk 1 of Itkis to serve as the player
station (FF16).
36. The (b) player station code is required to produce a game play request
associated with a card bingo structure (see FF33), a function which is
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performed by Itkis kiosk 1 in dispensing computer printed bingo cards in
response to a user request made by a touchscreen (FF1, 2).
37. The player station code is also required by the claim to have a structure
“for controlling communication of a bingo game result to a player at the
player station” (see FF33).
38. The Itkis kiosk does not communicate the bingo result to the player as in
claim 1 (see FF37). Rather, this is performed at the bingo call terminal 23
which displays a winning verified card at its touchscreen monitor 29.
Analysis
Claim 16 is directed to a program product comprising scanner
program code, player station code, and game server code (FF31-34). The
player station code is required to produce a game play request associated
with a card bingo structure, a function which is performed by Itkis kiosk 1 in
dispensing computer printed bingo cards in response to a user request made
by a touchscreen (FF36). The player station code is also required by the
claim to have a structure “for controlling communication of a bingo game
result to a player at the player station” (FF37). The Itkis kiosk does not
communicate the bingo result to the player as in claim 1 (FF38). Rather, this
step is performed at the bingo call terminal 23 which displays a winning
verified card at its touchscreen monitor 29. Since Itkis fails to teach all the
elements of claim 16 as arranged in the claim, we reverse its rejection.

CONCLUSIONS OF LAW
Itkis does not describe a method in which a play station is “(c)
collecting a game play request entered from the player station” and “(e)
displaying the bingo game result for the card bingo structure at the player
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station” as in claim 1. We reverse the anticipation rejection claim 1 and
dependent claims 2, 4-7 and 21.
Itkis describes an apparatus comprising (a) a physical bingo card
issuing station, (b) “a player station having a scanner associated therewith,”
and (c) “a game server” as in claim 8. We affirm the rejection of claim 8 as
anticipated by Itkis. Claims 9-15, 24, 25, and 26 fall with claim 8 because
separate reasons for their patentability were not provided. 37 C.F.R.
§ 41.37(c)(1)(vii).
Itkis does not describe a play station code “for producing a game play
request associated with the card bingo structure in response to a player input
at the player station, and for controlling communication of a bingo game
result to a player at the player station” as recited in claim 16. We reverse the
anticipation rejection of claim 16 and dependent claims 17-20 and 27.

Claims 22, 23, and 28
Claims 22, 23, and 28 under 35 U.S.C. § 103(a) as obvious in view of
Itkis (Ans. 8).
Claims 22 and 23 depend on claim 1 and therefore incorporate all its
limitations. Claim 28 depends on claim 16 and therefore incorporates all its
limitations. We reversed the anticipation rejections of claims 1 and 16. The
Examiner has not provided any additional rationale as to why the subject
matter of claims 1 and 16 would have been obvious in view of Itkis. As the
limitations of independent claims 1 and 16 have not been met, we conclude
that the Examiner has not provided sufficient evidence that claims 22, 23,
and 28, which incorporate all the limitations of the independent claims,
would have been obvious in view of Itkis.
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CONCLUSION OF LAW
The rejection of claims 22, 23, and 28 as obvious in view of Itkis is
reversed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

cdc

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