Ex Parte Smolucha

Patent Trial and Appeal Board

Nov 4, 2014

11124411 (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.
11/124,411 05/06/2005 Walter E. Smolucha 247079-002039USPT 7973
70243 7590 11/05/2014
NIXON PEABODY LLP
300 S. Riverside Plaza, 16th Floor
CHICAGO, IL 60606
EXAMINER
MYHR, JUSTIN L
ART UNIT PAPER NUMBER
3714
MAIL DATE DELIVERY MODE
11/05/2014 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 WALTER E. SMOLUCHA
________________

Appeal 2012-005841
Application 11/124,411
Technology Center 3700
________________

Before JOHN C. KERINS, MICHAEL L. HOELTER, and LISA M. GUIJT,
Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Walter E. Smolucha (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1, 2, and 4–24. Claim 3 has
been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A system for playing a game on a gaming machine using
non-monetary chattel, comprising:
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a bank for storing, depositing, and withdrawing a
plurality of types of non-monetary chattel based upon play
outcome on the gaming machine;
a mechanism for relaying data regarding the non-
monetary chattel between the bank and the gaming machine;
and
a converter for converting a plurality of types of non-
monetary chattel in the bank to a standardized single point
system, wherein the converter receives conversion input from
vendors providing the plurality of types of non-monetary
chattel;
wherein non-monetary chattel is transferred from a player
to the gaming establishment upon loss of non-monetary chattel
by the player.

THE REJECTIONS ON APPEAL
Claims 1, 2, 4–21, and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lucero (US 5,811,772; iss. Sept. 22, 1988), Adams (US
2003/0083943 A1; pub. May 1, 2003), and Hansen (US 2003/0055780 A1;
pub. Mar. 20, 2003).
Claims 22 and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lucero, Adams, Hansen, and Griswold (US 6,629,591 B1;
iss. Oct. 7, 2003).

ANALYSIS
Claims 1, 2, 4–21, and 24 — Unpatentable over Lucero, Adams, and Hansen
Regarding independent claim 1, the Examiner finds Lucero teaches
the invention as claimed, including “a converter for converting the plurality
of types of non-monetary chattel in the bank to an exchange medium.” Ans.
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5 (citing Lucero 3:25–53; 10:63–65; and 13:16–24). The Examiner
acknowledges that “Lucero does not teach converting non-monetary chattel
to a single point system used in a gaming establishment, wherein converting
includes receiving conversion data from one or more vendors providing the
plurality of types of non-monetary chattel.” Id. The Examiner further finds
that “Adams teaches a system wherein the gaming machine uses non-
monetary chattel in the form of a single point system” (Id. at 5–6, citing
Adams ¶¶ 26, 27) and “Hansen teaches a system in which non-monetary
value is converted by a [sic] exchange provider providing the plurality of
types of non-monetary chattel during transfer when transferring from [one]
account, or customer, to another account, or customer, into a same or
different value.” Id. at 6 (citing Hansen Fig. 3; ¶¶ 5, 6, 15, and 17).
The Examiner reasons that “Lucero is modifiable to instead of
displaying a total of the non-monetary values . . . separately to instead
combine it together with other non-monetary values into one point system
which can easily be converted over to wagering units therefore lessening the
player’s confusion about their total possible value of their non-monetary
accounts.” Ans. 6. The Examiner explains that “it is always advantageous
to simplify a system used by the average player and therefore reducing the
number of currencies down to a single point system would help the average
player therefore lessen their confusion about their total possible value of
their non-monetary accounts by having only one point system being used.”
Id. at 18. The Examiner concludes that “[i]t would [] have been obvious to
one of ordinary skill in the art to modify a gaming machine to use the well
known single point system of Adams and the conversion of method of
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Hansen which allows a player to use additional non-monetary chattel in the
gaming machine.” Id. at 18–19.
Appellant contends that “the cited portions of the references fail to
teach or suggest the claimed language” and “one of ordinary skill in the art
would not modify or combine the references in the manner suggested [by the
Examiner].” Appeal Br. 12. With respect to the claim limitation of
converting non-monetary chattel to a single point system, which the
Examiner acknowledges is not taught in Lucero, Appellant argues that
neither Adams nor Hansen rectifies this deficiency. Appeal Br. 12.
Appellant submits, inter alia, that the Examiner “interprets Adams as
teaching a system wherein the gaming machines uses [sic] non-monetary
chattel in the form of a single point system[,]” however, “the cited portions
of Adams refer to examples that use promotional points instead of money, or
in addition to money.” Id. at 13 (referring to Adams ¶¶ 26, 27). Appellant
argues that “[t]he simple disclosure of a system that may use promotional
points does not teach or suggest the recited claim language.” Id. at 14.
Appellant contends that “converting to a single point system is absent from
the cited art and is only present in Appellant’s specification” (Id. at 16) and
“[t]herefore the combination of Lucero, Adams, and Hansen fails to teach or
suggest each and every element of claims 1 and 24” (Id. at 17). Moreover,
Appellant argues that “one of ordinary skill in the art would not modify and
combine the references in the manner suggested [by the Examiner].” Id. at
15. In particular, Appellant contends, inter alia, that “the proffered
rational[e] of reducing player confusion by modifying Lucero with the
teachings of Adams is invalid as the cited portions of Adams are silent as to
player confusion or combining non-monetary values.” Id. at 16.
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We are persuaded by Appellant’s argument. The Specification
explains that “the system includes a conversion mechanism for converting
frequent flyer miles and other forms of non-monetary chattel into gaming
establishment points” and that “[t]he conversion mechanism standardizes
values of frequent flyer miles from multiple airlines, as well as other forms
of non-monetary chattel, into a single point system.” Spec. 6:3–6. As noted
by Appellant, Adams teaches a promotional point system, which consists of
promotional points tendered to players, for example, through gaming or non-
gaming activities, and useful for game play or award redemption (see Adams
¶¶ 26–28). In essence, we are persuaded by Appellant’s argument that the
Examiner erred in finding that the Adams’ gaming machine uses non-
monetary chattel in the form of a single point system, as claimed, because
Adams fails to describe the point system comprising converted non-
monetary chattel. Rather, Adams describes a point system whereby points
are awarded to players to promote the business of the casino and its
sponsors. In this regard, the point system of Adams appears to be not unlike
the bonus points awarded by the casino discussed in Lucero as one of several
subaccounts. Lucero, 13:26–29.
In addition, the Examiner does not provide a rational underpinning for
reasoning that players would be confused about the total possible value of
their non-monetary accounts, which balances are maintained in Lucero’s
subaccounts or that combining such values with promotional points would
lessen such confusion. The Examiner’s explanation that “it is always
advantageous to simplify a system used by the average player” (Ans. 18) is a
conclusory statement that is insufficient to support the legal conclusion of
obviousness.
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For the reasons stated above, we do not sustain the Examiner’s
rejection of claim 1 and claims 2, and 4–11 depending from claim 1.
Regarding independent claims 12, 19, 21, and 24, those claims also include
the limitation requiring a converter for or converting non-monetary chattel to
a single point system, and the Examiner relies upon the relevant findings and
rationale as applied to claim 1 above. Therefore, for the reasons stated
above, we do not sustain the Examiner’s rejection of independent claims 12,
19, 21, and 24, and claims 13–18, 20, and 21 depending therefrom.
Claims 22 and 23 — Unpatentable over Lucero, Adams, Hansen, and
Griswold
Appellant submits that dependent claims 22 and 23 depend from claim
1 and are therefore allowable for at least the same reasons as discussed
supra. Appeal Br. 18. Appellant further submits that “Griswold fails to cure
the deficiencies noted above with respect to claim 21 as it fails to disclose at
least converting non-monetary chattel to a single point system.” Id. We
agree with Appellant. Accordingly, we do not sustain the Examiner’s
rejection of claims 22 and 23.

DECISION
The Examiner’s decision to reject claims 1, 2, 4–21, and 24 under
35 U.S.C. § 103(a) as unpatentable over Lucero, Adams, and Hansen is
reversed.

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The Examiner’s decision to reject claims 22 and 23 under 35 U.S.C.
§ 103(a) as unpatentable over Lucero, Adams, Hansen, and Griswold is
reversed.

REVERSED

pgc