Ex Parte Potts et al

Patent Trial and Appeal Board

Mar 21, 2013

10956644 (P.T.A.B. Mar. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CRAIG POTTS and RICHARD BEER
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Appeal 2010-010189
Application 10/956,644
Technology Center 3700
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Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
CARL M. DeFRANCO, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Craig Potts and Richard Beer (Appellants) appeal under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting claims 1-6, 8, 9, 11-15, 17-21,
23, 24, 26-30, 32-34, and 36-41. Claims 7, 10, 16, 22, 25, 31, and 35 have
been canceled. We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b).

THE INVENTION
Appellants’ invention relates to a system and method for performing a
ticket redemption transaction, such as cash, credit, or deposit, using a multi-
function gaming Automated Teller Machine (ATM). Spec. 1, para. [0001];
Spec. 3, para. [0007]; and fig. 2.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A method of performing a ticket redemption transaction
on a multi-function ATM, the method comprising:
providing an ATM capable of performing ticket
redemption transactions, cash withdrawal transactions, and
credit/debit transactions;
receiving a redemption ticket from a customer directly
presented to the ATM, wherein the redemption ticket includes
encoded data and is provided from a gaming station provided
by a first entity;
receiving a presentation of an identification card at the
ATM by the customer to uniquely identify the customer and
access a customer tracking account associated with the
customer, wherein the identification card includes either of a
player tracking card provided by the first entity or a third party
electronic funds card, and wherein the customer tracking
account stores tracking data related to historical gaming
activity, monetary transactions, and ticket redemption
transactions from a plurality of customer gaming sessions in a
customer tracking database provided by the first entity;
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electronically processing the encoded data to retrieve a
machine readable identifier stored on the redemption ticket;
validating the redemption ticket by electronically
verifying the machine readable identifier against a redemption
ticket database provided by the first entity, wherein the
redemption ticket database associates the machine readable
identifier with a predetermined monetary value, and
determining the predetermined monetary value associated with
the machine readable identifier on the redemption ticket;
receiving a selection of a ticket redemption type from the
customer, wherein selectable options of the ticket redemption
type within the ATM include each of directly dispensing cash,
electronically crediting to a third party account of the customer,
and electronically depositing to a third party account of the
customer;
communicating with an authorization center operated by
a second entity to enable transfer of an award equal to the
predetermined monetary value associated with the redemption
ticket to a third party account of the customer if the customer
has selected a ticket redemption type of an electronic credit or
an electronic deposit;
transferring to the customer directly from the ATM the
award equal to the predetermined monetary value associated
with the redemption ticket according to the selected ticket
redemption type, and wherein the transfer is performed when
authorization is received for an electronic credit or electronic
deposit ticket redemption type; and
storing gaming station activity and ticket redemption
transaction information specific to the customer and the
redemption ticket within the customer tracking account during
performance of the ticket redemption transaction, wherein the
customer tracking account is updated with historical gaming
activity associated with the redemption ticket and data related
to monetary transactions and the ticket redemption transaction
performed by the customer at the ATM.

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THE REJECTIONS
The following rejections are before us for review:
The Examiner rejected claims 1-3, 5, 6, 8, 9, 11-15, 17-20, 23, 24, and
26-29 under 35 U.S.C. § 103(a) as unpatentable over Gatto (US
2003/0078094 A1, publ. Apr. 24, 2003) and Barcelou (US 6,048,271, iss.
Apr. 11, 2000).
The Examiner rejected claims 4 and 21 under 35 U.S.C. § 103(a) as
unpatentable over Gatto, Barcelou, and Walker (US 6,064,987, iss. May 16,
2000).
The Examiner rejected claims 30, 32-34, and 36-381 under 35 U.S.C.
§ 103(a) as unpatentable over Gatto, Barcelou, and Kammler (US
2005/0054446 A1, publ. Mar. 10, 2005).
The Examiner rejected claims 39-41 under 35 U.S.C. § 103(a) as
unpatentable over Gatto, Barcelou, Kammler, and Walker.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

ANALYSIS
Claims 1-6, 8, 9, 11-15, 17-21, 23, 24, and 26-29
Independent claim 1 requires, inter alia, a step of “receiving a
presentation of an identification card at the ATM by the customer to
uniquely identify the customer and access a customer tracking account

1 Although claims 35, 39 and 40 were included in the heading of this
rejection, they were not discussed in the body of the rejection. We consider
this to be a typographical error on the part of the Examiner. See Ans. 8 and
10.
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associated with the customer.” Similarly, independent claim 15 requires,
inter alia, “a multi-function ATM adapted to . . . receive a presentation of an
identification card at the ATM by the customer to uniquely identify the
customer and access a customer tracking account operated by the first entity
within the customer tracking database.” App. Br., Claims App’x. Further,
claims 1 and 15 specify that “the customer tracking account stores tracking
data related to historical gaming activity, monetary transactions, and ticket
redemption transactions from a plurality of customer gaming sessions.” Id.
The Examiner found that paragraphs [0017] and [0037] of Gatto
specifically disclose using a smart card that identifies a customer and
accesses a customer tracking database. Ans. 3. The Examiner further noted
that Gatto “does not explain in detail the use of the smart card.” Ans. 5.
However, the Examiner then found that Barcelou discloses that a smart card
is capable of storing unique identification of a player with access to a
player’s game tracking account. Id. Thus, the Examiner concluded that, “a
person of ordinary skill in the art would have found it obvious that Gatto et
al’s smart card in view of Barcelou is capable of holding unique information
of a player and acts [as] a player tracking card to track player activities.” Id.
According to the Examiner, presentation of an identification card during
ticket redemption in Gatto is required “in order to access and transfer
electronic funds.” Id. at 12.
Appellants contend that, “Gatto does not and cannot teach or suggest
the use of an electronic card to identify a customer and access a casino-
operated customer tracking database during a ticket redemption.” App. Br.
13. According to Appellants, the account associated with the card described
in paragraph [0017] in Gatto “is some external financial account,” which
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cannot be associated with the “unique account” that stores the player’s
cash/credit balance. Reply Br. 6-7, 13. Furthermore, Appellants argue that
Gatto teaches away from using a smart card to access a customer tracking
database because the cards require “sophisticated devices to encode the
cards” and “significant investment” for widespread deployment. App. Br.
19-20 (citing Gatto, paras. [0005] and [0006]). Rather, according to
Appellants, Gatto substitutes barcoded printed tickets for smart cards and
relies on a ticket database for redemption. App. Br. 20 and 21 (citing to
Gatto, para. [0033]). Thus, Appellants conclude that because of Gatto’s
express disavowal of smart cards and Barcelou’s exclusive way of storing
information on smart cards, “[t]he smart card of Barcelou is not capable of
being combined with the ticket redemption features of Gatto,” as the
Examiner proposes. Reply Br. 12.
In response, the Examiner takes the position that, “Appellant's claim
language does not suggest the customer tracking database is accessed by
providing identification to the ATM with an identification card.” Ans. 14.
Pointing to paragraph [0017] of Gatto, the Examiner further opines that
Gatto did not discard the use of smart cards, because a smart card can be
used in conjunction with a printed ticket. Thus, according to the Examiner,
“[t]he information being store[d on the smart card] can be identification to a
database for the player’s account as Gatto discloses in [0041], wherein the
database is provided by a first entity (i.e. casino).” Id. at 17.
We are not persuaded by the Examiner’s position for the following
reasons. At the outset, we note that the use of the conjunction “and” in
independent claims 1 and 15 requires that the claimed identification card
both uniquely identify the customer and also access the customer tracking
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account. Although we appreciate the Examiner’s position that Gatto has not
discarded the use of smart cards, nonetheless, we agree with Appellants that
because the player in Gatto’s method and system uses an electronic card
(smart card) to either deposit money into or receive money from ATM 500,
the use of smart cards in Gatto in conjunction with the printed ticket is
limited to “crediting an external financial account identified by a smart
card.” Reply Br. 12; see also Gatto, paras. [0017], [0041], and [0045].
Furthermore, Gatto specifically discloses that coded ticket 100 bearing
human readable code 106 and machine readable code 108 is used to access
the player’s unique account. Id., para. [0044]. Thus, although Gatto uses an
electronic card to either deposit or transfer the player’s cash and/or credit
balance, and thus identify the player, the electronic card of Gatto does not
access the player’s tracking account, as “customer tracking account” is
defined in claims 1 and 15. Rather, coded ticket 100 accesses the player’s
“customer tracking account.” Therefore, in a first instance, we agree with
Appellants that Gatto fails to disclose, in combination with receiving a
redemption ticket, receiving presentation of an electronic card that identifies
a customer and accesses a customer tracking database during the ticket
redemption, as called for by independent claim 1, and an ATM adapted to
receive a presentation of such “an identification card at the ATM by the
customer to uniquely identify the customer and access a customer tracking
account operated by the first entity within the customer tracking database,”
as called for in claim 15.
Second, although we appreciate that smart cards are capable of storing
unique identification of a player with access to a player’s game tracking
account, as the Examiner opines, nonetheless, the Examiner has not provided
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an adequate reasoning with rational underpinnings to combine the teachings
of Gatto and Barcelou. Rejections on obviousness grounds must be
supported by “some articulated reasoning with some rational underpinning”
to combine the known elements in the manner required in the claim at issue.
KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Here, the
Examiner has failed to provide any articulated reasoning with rational
underpinnings as to why a person of ordinary skill in the art would have
provided the smart card of Gatto, when used to redeem funds from ATM
500, with information to access a player’s “customer tracking account,”
when coded ticket 100 has already accessed the account in order to
determine the amount of funds to be dispensed/transferred. See Gatto, paras.
[0044] and [0045]. As such, absent hindsight, we fail to see why one having
ordinary skill in the art would have been led by the teachings of Barcelou to
modify the method and system of Gatto in the manner claimed.
In conclusion, for the foregoing reasons, we do not sustain the
rejection of independent claims 1 and 15, and their respective dependent
claims 2, 3, 5, 6, 8, 9, 11-14, 17-20, 23, 24, and 26-29, under 35 U.S.C. §
103(a) as unpatentable over Gatto and Barcelou.
The addition of Walker does not remedy the deficiencies of Gatto and
Barcelou as described supra. Accordingly, the rejection of claims 4 and 21
over the combined teachings of Gatto, Barcelou, and Walker likewise cannot
be sustained.

Claims 30, 32-34, and 36-41
Independent claim 30 requires, inter alia, that “the point-to-monetary
conversion ratio is calculated . . . according to characteristics presently
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associated with the customer stored within the customer tracking database.”
App. Br., Claims App’x. Emphasis added.
The Examiner found that “the feature of tracking a player’s gaming
activity and offering the player ‘comp’ points, wherein the comp points are
converted to monetary value or credits based on point-to-monetary
conversion ratio is well known in the art as evidence[d] by Kammler et al
[0006].” Ans. 9.
Appellants argue that in contrast to the claimed invention, in which
the points redemption transaction “is customizable to the specific customer,”
in Kammler, “points may be accumulated and ‘converted’” without being
tied “to any customer profile or tracking database.” App. Br. 22; see also
Reply Br. 13. Pointing to paragraph [0030] of Appellants’ Specification,
Appellants argue that in the claimed invention “an appropriate commission
may be determined based on the specific player redeeming the ticket.” Id.
In response, the Examiner takes the position that “[t]he claim
language ‘according to characteristics presently associated with the customer
stored within the customer tracking database’ does not equate to the points
redemption transaction being customizable to the specific customer.” Ans.
18-19. Thus, according to the Examiner, “[c]haracteristics is a very broad
term and can be interpreted to be the ‘amount of points’ associated with the
customer stored within the customer tracking database.”2 Id. at 19.
Appellants’ argument is not commensurate with the scope of the
capability called for in claim 30, which does not require that the point-to-

2 An ordinary and customary meaning of the term “characteristic” is
“revealing, distinguishing, or typical of an individual character.” MERRIAM
WEBSTER’S COLLEGIATE DICTIONARY (10th Ed. 1997).
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monetary conversion be customizable or tailored to a customer. As stated by
our reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir.
1998), “the name of the game is the claim.” It is well established that
limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Here, because
each customer has accumulated a unique number of points, we agree with
the Examiner that the term “characteristics” is broad enough to encompass
the “number of points” accumulated by the customer.
Furthermore, we are not persuaded by Appellants’ position that
“combination of the Gatto, Barcelou and Kammler teachings also would not
provide an operational point redemption system according to Claim 30.”
App. Br. 23. Appellants argue that “these references would not enable one
of ordinary skill in the art to create the claimed customer tracking features in
conjunction with the redemption ticket” and that “[t]he basic tracking
activities disclosed within the Kammler reference further cannot be
combined with Gatto and Gatto to produce the claimed points redemption
system.” Id. However, Appellants have not pointed to any evidence or
provided any persuasive reasoning why the point system of Kammler cannot
be combined with the redemption system of Gatto and Barcelou. Moreover,
Appellants’ argument that Kammler fails to teach, “how tracked points
might be dispensed to a customer directly as cash or as an electronic third
party account transfer” (see App. Br. 21 and 22-23) attacks Kammler
individually when the rejection as articulated by the Examiner is based on a
combination of Gatto, Barcelou, and Kammler. See In re Keller, 642 F.2d
413, 425 (CCPA 1981).
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Modifying the ATM of Gatto and Barcelou to provide redemption of
money according to accumulated points, as taught by Kammler, is the mere
application of a known technique to a piece of prior art ready for the
improvement. KSR, 550 U.S. at 417. An improvement that is nothing more
than the predictable use of prior art elements according to their established
functions is likely to be obvious. Id. Therefore, the modification appears to
be the product not of innovation but of ordinary skill and common sense.
In conclusion, for the foregoing reasons, we sustain the rejection of
independent claim 30 and dependent claims 32-34 and 36-38, which have
not been separately argued, under 35 U.S.C. § 103(a) as unpatentable over
Gatto, Barcelou, and Kammler.
With respect to the rejection of claims 39-41, Appellants’ sole
argument is that Gatto fails to disclose an Automated Clearing House (ACH)
transfer. App. Br. 18-19. We are not persuaded because Appellants’
argument attacks Gatto individually when the rejection as articulated by the
Examiner is based on a combination of Gatto, Barcelou, Kammler, and
Walker. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Here, the Examiner used the teachings of Walker to show that the use of
ACH protocol to transfer funds is well known. Ans. 10. As such, we
likewise sustain the rejection of claims 39-41 over the combined teachings
of Gatto, Barcelou, Kammler, and Walker.

SUMMARY
The Examiner’s decision is reversed as to claims 1-6, 8, 9, 11-15, 17-
21, 23, 24, and 26-29 and affirmed as to claims 30, 32-34, and 36-41.
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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).

AFFIRMED-IN-PART

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