11057801 (P.T.A.B. Dec. 15, 2014)

Ex Parte Okuniewicz

Patent Trial and Appeal BoardDec 15, 2014

11057801 (P.T.A.B. Dec. 15, 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. 11/057,801 02/14/2005 Douglas M. Okuniewicz A9658-72768I 6820 32009 7590 12/15/2014 BRADLEY ARANT BOULT CUMMINGS LLP 200 CLINTON AVE. WEST SUITE 900 HUNTSVILLE, AL 35801 EXAMINER THOMAS, ERIC M ART UNIT PAPER NUMBER 3714 MAIL DATE DELIVERY MODE 12/15/2014 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 DOUGLAS M. OKUNIEWICZ ____________________ Appeal 2012-007206 Application 11/057,801 Technology Center 3700 ____________________ Before: MICHAEL L. HOELTER, JILL D. HILL, and BRANDON J. WARNER, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Douglas M. Okuniewicz (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1 and 3–35. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2012-007206 Application 11/057,801 2 CLAIMED SUBJECT MATTER Independent claims 1, 24, and 25 are pending. Claim 1, reproduced below, illustrates the claimed subject matter with the key disputed limitation highlighted. 1. A data storage device for a player of a gambling game, comprising: a player provided, player actuable portable electronic memory device operative to track and save data representative of the player’s gambling and non-gambling activity in a casino property and non-gambling activity off the casino property; device programming that analyzes the player data that are stored on the memory device, where the player data are generated upon engagement by the player of an electronic gaming device and at least one of the devices of the group consisting of: a point of sale device, an Internet capable device, a telephonic device, and a wireless device; and an output device operative to generate an electronic gaming device output in response to the analysis of the player’s combined activities. REJECTIONS Claims 1, 3–11, and 22–35 stand rejected under 35 U.S.C. § 103(a) as unpatentable over U.S. Patent Pub. No. 2002/0196342 A1 to Walker. Ans. 5. Claims 12–21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Walker and U.S. Patent Pub. No. 2002/0103027 A1 to Rowe. Ans. 8.1 1 The Examiner has withdrawn the rejection under 35 U.S.C. § 112, first paragraph. Ans. 4. Appeal 2012-007206 Application 11/057,801 3 OPINION Appellant argues claims 1, 3–23, and 25–35 as a group. Appeal Br. 10–11. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 3–23 and 25–35 stand or fall with claim 1. Claim 1 – Analyzing Gambling and Non-Gambling Activity Claim 1 recites: (1) the portable memory device operative to track and save data representing a players (a) gambling and non-gambling activity at the casino, and (b) non-gambling activity off the casino property; and (2) programming on the device that analyzes the player data. Claims App’x. Appellant argues that Walker teaches saving, printing, and delivering “indications of outcomes” that are triggered simply by their occurrence (e.g., when a player wins), rather than in response to a player’s device analyzing player data tracked inside and outside of a casino. Appeal Br. 8. The Examiner responds that Walker’s gaming device maintains an infrared link to a player’s PDA while gambling, with each outcome being transmitted to the PDA for storage, which is “equivalent to conducting an analysis of player gambling activity,” and that Walker teaches documenting “the purchase of a meal by the player at a restaurant associated with the casino, (par. 0036), . . . [which is] equivalent to conducting an analysis of non-gambling player activity.” Ans. 10. The Examiner fails to find, however, that Walker teaches or suggests tracking and saving data representing the player’s non-gambling activity “off the casino property” as claimed. Prima facie obviousness has therefore not been established and we do not sustain the rejection of claim 1 as unpatentable over Walker. Appeal 2012-007206 Application 11/057,801 4 Claim 24 Independent claim 24 does not recite tracking and saving data representing the player’s non-gambling activity off the casino property. Rather, claim 24 recites “means for storing player data on the memory device.” The Examiner finds that Walker teaches such a means. Ans. 5 and 11–12. Appellant argues that “Walker’s PDA simply does not track data representative of a player’s gambling activity,” because “Walker’s PDA merely receives photos of winning combinations and . . . the player from a separate system” that tracks data. Appeal Br. 10. While we do not find Appellant’s argument persuasive, we do not sustain the rejection of claim 24 as unpatentable over Walker because the Examiner fails to construe the “means for storing” limitation, prohibiting us from determining whether his finding that Walker teaches such a means is supported by a preponderance of the evidence. In addition, it is unclear what element(s) of Walker the Examiner considers to meet the “means for storing” limitation. DECISION We REVERSE the rejection of claims 1, 3–11, and 22–35 under 35 U.S.C. § 103(a) as unpatentable over Walker. We REVERSE the rejection of claims 12–21 under 35 U.S.C. § 103(a) as unpatentable over Walker and Rowe. REVERSED pgc