Ex Parte Okuniewicz

Patent Trial and Appeal Board

Nov 4, 2014

11033610 (P.T.A.B. Nov. 4, 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.
11/033,610 01/11/2005 Douglas M. Okuniewicz A9658-72768B 5867
32009 7590 11/04/2014
BRADLEY ARANT BOULT CUMMINGS LLP
200 CLINTON AVE. WEST
SUITE 900
HUNTSVILLE, AL 35801
EXAMINER
DUFFY, DAVID W
ART UNIT PAPER NUMBER
3716
MAIL DATE DELIVERY MODE
11/04/2014 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 2012-0088371
Application 11/033,610
Technology Center 3700
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims 1–5,
34–40, 44–48, 59–66, 68–72, 83–85, and 90.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 Appellant identifies Douglas M. Okuniewicz and AIM Management, Inc. as the
real parties in interest. Appeal Br. unnumbered page 2.
2 Our decision references Appellant’s Specification (“Spec.,” filed Jan. 11, 2005),
Appeal Brief (“Appeal Br.,” filed Feb. 7, 2012), and Reply Brief (“Reply Br.,”
filed May 21, 2012), as well as the Examiner’s Answer (“Answer,” mailed Mar.
19, 2012).
Appeal 2012-008837
Application 11/033,610

According to the Specification, Appellant’s “invention relates generally to
electronic gaming devices . . . [, and] [m]ore specifically, . . . to a printing and
dispensing system for electronic gaming devices.” Spec. ¶ 1. Claims 1, 45, 59,
and 90 are the only independent claims. We reproduce claims 1 and 90, below, as
representative of the claims on appeal.
1. A gambling game, comprising:
a gaming device with an outcome processor that
determines gambling game outcomes; and
a bonus system that generates a payout supplemental to
the gambling game outcome, where the bonus system is
responsive to events in the gaming device that are
monitored through an interface that isolates external
equipment communications, external data
communications and external software communications
from internal components, software and data of the
gaming device.
90. A gaming device comprising:
means for receiving a wager;
means for generating an outcome of the wager;
means for providing a first gaming award in response to
the outcome of the wager in a form selected from the
group consisting of coins, currency, credits, or
redeemable tickets; and
means for delivering a second gaming award through a
connected output device which is operably independent
of the means for generating an outcome to the wager.

Appeal 2012-008837
Application 11/033,610

REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
claims 1–5, 34–40, and 44–48 under 35 U.S.C. § 103(a) as obvious based on
Tracy (US 5,280,909, iss. Jan. 25, 1994), and Barrie (US 4,837,728, iss. June 6,
1989);
claims 59, 60, 65, 66, and 68–72 under 35 U.S.C. § 103(a) as obvious based
on Pease (US 5,759,102, iss. June 2, 1998) and Barrie;
claims 61–64 under 35 U.S.C. § 103(a) as obvious based on Pease, Barrie,
and Charron (US 5,542,669, iss. Aug. 6, 1996);
claims 83–85 under 35 U.S.C. § 103(a) as obvious based on Pease, Barrie,
and Tracy; and
claim 90 under 35 U.S.C. § 103(a) as obvious based on Tracy and Kelly (US
5,816,918, iss. Oct. 6, 1998).

ANALYSIS
We first review the rejections of claims 1–5, 34–40, 44–48, 59–66, 68–72,
and 83–85. Based on our analysis of claim 1, we reverse the rejections of these
claims.
With respect to independent claim 1, Appellant argues that contrary to the
Examiner’s finding, Barrie does not teach the following claim limitation set forth
in claim 1(emphasis added):
a bonus system that generates a payout supplemental to
the gambling game outcome, where the bonus system is
responsive to events in the gaming device that are
monitored through an interface that isolates external
equipment communications, external data
communications and external software communications
from internal components, software and data of the
gaming device.
Appeal 2012-008837
Application 11/033,610

See Appeal Br. unnumbered pages 7–9. With respect to the interpretation of this
limitation, the Examiner states, “[the] examiner uses the reasonable definition of
electrically isolated circuits as meeting the limitation of isolated communications.
Electrical isolation only requires that two circuits are not electrically coupled to
one another” (Answer 13). The Examiner concedes that Tracy does not teach an
interface that provides electrical isolation, but finds that Barrie teaches an optical
isolator that electrically isolates a progressive controller and a gaming controller.
Answer 5.
As pointed out by Appellant, however, claim 1’s interface does not address
electrical isolation. See Appeal Br. unnumbered pages 7–9. Rather, the claim
language requires that the interface must “isolate[] external equipment
communications, external data communications and external software
communications from internal components, software and data of the gaming
device” (claim 1). As further pointed out by Appellant, the Examiner does not
establish that Barrie teaches an interface that provides such isolation. See id.
Instead, Barrie indicates that the optical isolator prevents interference that would
otherwise interfere with communication between the gaming controller and the
progressive controller. Appeal Br. unnumbered page 8, citing Barrie, col. 6, ll. 9–
12 (“The optoisolator is provided to prevent interference, transients, power surges,
etc. from interfering with communications between the gaming controllers and the
progressive controller.”) (emphasis omitted). For these reasons, the Examiner has
not established that Barrie teaches claim 1’s requirement of “an interface that
isolates external equipment communications, external data communications and
external software communications from internal components, software and data of
the gaming device.” We therefore reverse the rejection of claim 1.
Appeal 2012-008837
Application 11/033,610

Appellant argues independent claims 45 and 59, which require similar
limitations as claim 1, are allowable for the same or similar reasons as claim 1.
See Appeal Br. 9–10. The Examiner relies on Barrie to teach limitations of claims
45 and 59 which are similar to those discussed above for claim 1. Answer 7–9.
Thus, we reverse the rejections of independent claims 45 and 59 for reasons similar
to those discussed above for claim 1.
We also reverse the rejections of claims 2–5, 34–40, 44, 46–48, 60–66, 68–
72, and 83–85 that depend from the independent claims.
With respect to independent claim 90, Appellant argues that contrary to the
Examiner’s finding, the combination of references does not teach the claim
limitation “means for delivering a second gaming award through a connected
output device which is operably independent of the means for generating an
outcome to the wager.” See Appeal Br. unnumbered pages 11–12. The Examiner
finds that Tracy’s reels teach the claimed “means for generating an outcome to a
wager,” and that Tracy’s gaming personnel that provide manual payout for
winning a progressive jackpot teach the claimed “means for delivering a second
gaming award.” Answer 12. The Examiner concedes that in Tracy the “means for
delivering a second gaming award” does not occur “through a connected output
device” as required by claim 90. Id. The Examiner does not find that in Tracy the
“means for delivering a second gaming award” is independent of the “means for
generating an outcome to the wager.” The Examiner relies on Kelly’s ticket
dispensers 20 and 22 to teach the claimed “means for delivering a second gaming
award through a connected output device which is operably independent of the
means for generating an outcome to the wager” (claim 90). Id. at 12, 15.
Appellant argues that both of Kelly’s ticket dispensers are controlled by the
same processor 12. Appeal Br. unnumbered page 11, citing Kelly col 10, ll. 50–52
Appeal 2012-008837
Application 11/033,610

(“The specific prize ticket dispenser 22 is controlled by game processor 12
similarly to dispenser 20 described above.”). However, the Examiner cites column
11, lines 17–23, of Kelly to teach the claimed “means for delivering a second
gaming award through a connected output device which is operably independent of
the means for generating an outcome to the wager.” Answer 15. This portion of
Kelly states:
In yet other embodiments, the dispenser 22 is provided
separately from game unit 10 and is linked through
communication device 24 to receive prize information
through electrical connections. In this way, a small
number of centralized prize dispensers 22 can service a
larger number of game units 10 all linked to the central
dispensers.
Kelly col. 11, ll. 17–22. Thus, contrary to Appellant’s arguments (see Reply Br.
9–11), Kelly teaches that a dispenser 22 (i.e., the claimed “means for delivering a
second gaming award”) may operate independent of a game unit 10 that is
connected to a dispenser 20 (i.e., the claimed “means for generating an outcome to
the wager” that is connected to a “means for providing a first gaming award in
response to the outcome of the wager”), inasmuch as the dispenser 22 may operate
in response to a different game unit 10. For these reasons, Appellant’s arguments
are not persuasive, and we therefore sustain the rejection of claim 90.

DECISION
The Examiner’s rejections of claims 1–5, 34–40, 44–48, 59–66, 68–72, and
83–85 are REVERSED.
The Examiner’s rejection of claim 90 is AFFIRMED.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
Appeal 2012-008837
Application 11/033,610

AFFIRMED-IN-PART

llw