Ex Parte Soltys

Board of Patent Appeals and Interferences

Mar 12, 2012

11480273 (B.P.A.I. Mar. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RICHARD SOLTYS
____________________

Appeal 2010-003152
Application 11/480,273
Technology Center 3700
____________________

Before: STEVEN D.A. McCARTHY, PHILLIP J. KAUFFMAN, and
GAY ANN SPAHN, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant seeks review of the Examiner’s rejection of claims 1-17 and
19-41 under 35 U.S.C. § 102(b) as anticipated by Grauzer (US 6,651,982
B2; iss. Nov. 25, 2003).1 We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.

THE INVENTION
Claims 1, 19, and 32 are the independent claims on appeal.
Independent claim 1, reproduced below, is representative of the claimed
subject matter:
1. A playing card handling system, comprising:
a playing card input receiver sized and positioned to
receive a number of playing cards to be handled by the playing
card handling system;
a playing card output receiver sized and positionable to
receive a number of playing cards handled by the playing card
handling system, the playing card output receiver comprising a
playing card support surface, a ceiling at least partially disposed
relatively over the playing card support surface, and at least one
member physically extending from the ceiling to the playing
card support surface for movement therewith;
at least one playing card transport path between the
playing card input receiver and the playing card output receiver,
along which at least some of the playing cards pass from the
playing card input receiver to the playing card output receiver;
at least one intermediary playing card receiver positioned
in the at least one playing card transport path between the
playing card input receiver and the playing card output receiver,
wherein the at least one intermediary playing card receiver
receives at least one of the number of playing cards received at
the playing card input receiver via a first portion of the at least
one transport path, and wherein at least one of the number of
playing cards received at the playing card output receiver is

1 The rejection of claim 18 was withdrawn. Ans. 2; Reply Br. 2.
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transported from the at least one intermediary playing card
receiver to the playing card output receiver via a second portion
of the at least one transport path; and
an elevator mechanism physically coupled to the playing
card output receiver, to selectively move the playing card
output receiver between a lowered position and a raised
position, where in the lowered position the ceiling limits access
from an exterior of the playing card handling system to the
playing cards carried by the card support surface of the playing
card output receiver and in the raised position the ceiling is at
least partially disposed relatively over the playing card support
surface and does not limit access from the exterior of the
playing card handling system to at least some of the playing
cards carried by the playing card output receiver.

OPINION
Independent claim 1
Appellant argues claims 1-4, 6, and 14-16 as a group, and we select
claim 1 as representative. App. Br. 15-20; see 37 C.F.R. § 41.37(c)(1)(vii)
(2011). Appellant separately argues claims 5, 7, and 17. App. Br. 21-26.
Intermediary Playing Card Receiver
Independent claim 1 calls for at least one intermediary playing card
receiver. Claim 1 prescribes the intermediary playing card receiver position
(in the playing card transport path between the playing card input receiver
and the playing card output receiver) and function (receiving cards from the
playing card input receiver via a first portion of the transport path and
transporting to the playing card output receiver via a second portion of the
transport path).
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The Examiner found that Grauzer’s roller 6702 corresponds to the
intermediary playing card receiver of claim 1 because it is positioned and
functions as called for in claim 1.3 Ans. 9-11. Appellant does not challenge
the Examiner’s finding that Grauzer’s roller 670 is positioned and functions
as called for in claim 1. Rather, Appellant argues that, in light of the
description in the Specification that the intermediary playing card receiver
may be a carousel 210, 212 or equivalent, a person of ordinary skill in the art
would not interpret Grauzer’s roller4 as corresponding to an intermediary
playing card receiver. App. Br. 17-18 (citing Spec. 10:10-21); Reply Br. 4-
5.
We agree with the Examiner (Ans. 10-11) that a carousel is but one
example (Spec. 10:15-20) of an embodiment of an intermediary playing card
receiver, and because the language of claim 1 is broader than this example, it
is not imported as a limitation into claim 1. See SuperGuide Corp. v.
DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though
understanding the claim language may be aided by the explanations

2 Though the Examiner found that either one of Grauzer’s rollers 669 and
670 corresponds to the intermediary playing card receiver, we rely only on
roller 670. See Ans. 10. Further, our affirmance of the rejection of this
claim is not based on the Examiner’s alternative findings that card mixing
area 150 or elevator platform 156 correspond to the intermediary playing
card receiver. See Ans. 3, 10.
3 The Examiner found that the embodiments of Grauzer’s shuffling
apparatus 102, 500, and 600 (Figures 2, 6, and 7, respectively) are
essentially the same, with minor enumerated differences. Office Action
dated Dec. 16, 2008, at 2-3. Appellant notes, but does not challenge, this
finding. App. Br. 14. For consistency, to the greatest extent possible, our
decision attempts to refer to the elements of Grauzer’s shuffling apparatus
600.
4 We consider Appellant’s argument that Grauzer’s rollers 666 and 669 do
not correspond to the claimed intermediary playing card receiver as
applicable to Grauzer’s roller 670. See App. Br. 17; Ans. 10.
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contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim. . . . [A] particular embodiment
appearing in the written description may not be read into a claim when the
claim language is broader than the embodiment.”). Thus, Appellant’s
argument is unpersuasive because it is not commensurate in scope with
claim 1.
Appellant asserts that the Examiner’s claim construction is overbroad
in that it would cover perhaps every component of Grauzer’s shuffler as
facilitating shuffling. Reply Br. 4. This argument is unpersuasive because
the Specification, like Grauzer, refers to the intermediary playing card
receiver 122 as facilitating shuffling for the apparatus as a whole (handling
system 110). Spec. 10:17-20.
Appellant also argues that there is no rational basis for construing
some of Grauzer’s rollers as corresponding to the transport path and other
rollers as corresponding to the intermediary playing card receiver. App. Br.
18. The Examiner’s rejection is not erroneous simply because similar
elements of the prior art (rollers) have been interpreted as corresponding to
different elements of claim 1. The proper inquiry is whether Grauzer’s roller
670 corresponds to an intermediary playing card receiver as called for in
claim 1. We interpret the claim and then look to the prior art.
The Specification does not define the claim term “intermediary
playing card receiver.” A common definition of “receiver” is something that
receives and holds an object.5 An ordinary meaning of “hold” is the action

5 “Receive: (Chiefly in technical uses.) Something which receives and
holds a substance or object; a receptacle, a repository.” n., def. 4a, OXFORD
ENGLISH DICTIONARY (1989) available at www.OED.com.
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of grasping by some physical means.6 Therefore, a receiver receives and
grasps something by some physical means. We discern nothing in the
Specification inconsistent with this ordinary meaning. Thus, we interpret
claim 1 as requiring the intermediary playing card receiver to receive and
grasp playing cards by some physical means.
Grauzer discloses a method and apparatus for shuffling and sorting
playing cards that includes offset rollers for moving individual cards. Col. 1,
ll. 12-17; col. 5, ll. 41-42. In Grauzer’s method, cards enter a first portion of
a transport path (area 682) at a pick-off roller (pair of rollers 668, 669) and
proceed through other rollers (pair of rollers 670) to a final set of off-set
rollers (690).7 Col. 10, ll. 15-24; col. 18, ll. 57-58; figs. 2, 7. Therefore,
Grauzer’s roller 670 receives and grasps the playing card by some physical
means (the surface of the roller).
Appellant failed to demonstrate error in the Examiner’s finding that
Grauzer discloses an intermediary playing card receiver (roller 670).
Ceiling
Independent claim 1 calls for “at least one member physically
extending from the ceiling to the playing card support surface for movement
therewith.” The Specification describes that the playing card output receiver
206 comprises a ceiling 221 and at least one member (side member 213)
physically coupling the ceiling to the playing card support surface (floor
215) for movement therewith. Spec. 3:18-21; 14:3-9; fig. 2C.

6 “Hold: [t]he action or an act of keeping in hand, or grasping by some
physical means; grasp.” n., def. 2a, OXFORD ENGLISH DICTIONARY (1989)
available at www.OED.com.
7 Grauzer discloses that Figure 7 may be compared to Figure 2 with certain
distinctions not applicable here. Col. 18; ll. 35-44.
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The Examiner found that Grauzer discloses at least one member (arm
extension 514) physically extending from the ceiling (flip-up cover 502) to
the playing card support surface (elevator platform 512) for movement
therewith. Ans. 3.
Appellant argues that Grauzer’s elevator platform 512, flip-up cover
502, and arm extension 514 cannot be construed as corresponding to the
claimed playing card output receiver for several reasons. App. Br. 18-20.
First, Appellant argues that when Grauzer’s playing card support surface
(elevator platform 512) is below the “cover-contact level,”8 it moves
independently of the ceiling (flip-up cover 502), while the playing card
support surface and ceiling of claim 1 move together. App. Br. 20. This
argument concedes that when Grauzer’s elevator platform 512 is above the
“cover-contact level,” the playing card support surface (elevator platform
512) and ceiling (flip-up cover 502) move together.9 Thus, Appellant’s
argument is premised on a claim construction that claim 1 calls for the
member to physically extend from the ceiling to the playing card support
surface for movement therewith at all times. Claim 1 contains no such

8 The “cover-contact level” is the point at which arm extension 514 of
elevator platform 512 contacts flip-up cover 502. See Grauzer, fig. 6
(depicting the elevator platform 512 in the uppermost position).
9 As elevator platform 512 rises, roller 515 of arm extension 514 of elevator
platform 512 contacts and lifts the internal edge 513 of the flip-up cover
502. Grauzer, col. 17, ll. 53-59; fig. 6; see also col. 18, ll. 35-61 (regarding
similar operation of the corresponding portion of shuffling apparatus 600).
Thus, when Grauzer’s elevator platform 512 is above the “cover-contact
level,” the member (arm extension 514) physically extends from the ceiling
(flip-up cover 502) to the playing card support surface (elevator platform
512) so that the ceiling (flip-up cover 502) moves with the playing card
support surface (elevator platform 512).
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limitation. Further, we cannot find, nor has Appellant identified, a portion
of the Specification necessitating such a claim interpretation.
Second, Appellant asserts that Grauzer’s arm extension 514 “merely
contacts or presses against the underside of the ‘flip-up cover’” when
elevator platform 512 is at or above the “cover contact level” and does not
contact the flip-up cover during shuffling. App. Br. 20. However, such
assertion is unpersuasive because claim 1 does not call for the member to
physically extend from the ceiling during shuffling.
Third, Appellant argues that the member of claim 1 extends to the
playing card support surface, while Grauzer’s arm extension 514 is “to a side
of the unlabeled top surface (playing card support surface) of the elevator
platform.” App. Br. 20 (citing Grauzer, fig. 6). To the contrary, Grauzer’s
member (arm extension 514) physically extends from the playing card
support surface (elevator platform 512), as called for in claim 1. Grauzer,
col. 17, ll. 54-59; fig. 6 (“an arm extension 514 of the elevator [512]”).
Appellant failed to demonstrate error in the Examiner’s finding that
Grauzer discloses a ceiling as called for in claim 1.
As such, we sustain the rejection of claims 1-4, 6, and 14-16.
Claim 5
Claim 5 depends from claim 1 and recites, “means for providing
playing cards to the playing card output receiver in an order, wherein the
order is at least one of a sorted order of a random order.”
The Examiner found that the Specification describes that rollers are a
“means for providing,” as called for in claim 1, and that Grauzer’s rollers
146 perform the identical function in substantially the same way by
providing cards in “an order” to the output receiver (elevator platform 156).
Ans. 3, 8, 14-15 (citing Spec. 46, l. 15). Appellant contends that Grauzer’s
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nip rollers insert cards into the stack of cards carried by the elevator platform
in the same order which the playing cards were inserted into the card
accepting area, and thus Grauzer does not perform the identical function
specified in claim 5 in substantially the same way. App. Br. 21.
The rejection is deficient on its face in that it finds that Grauzer’s
device provides playing cards to the playing card output receiver in “an
order” rather than in a sorted or a random order as called for in claim 5.10
Further, Grauzer’s off-set rollers 146 feed playing cards one-at-a-time into
the mixing area 150. Col. 11, ll. 17-19. In mixing area 150, elevator
platform 156 moves the stack of cards present in the mixing area up and
down as a group to be addressed by separation element 154. Col. 11, ll. 19-
22. Separation element 154 grips and supports an upper portion of the cards
while the elevator platform 156 drops to provide an opening for insertion of
a card into the stack. Col. 11, ll. 22-25. Thus, off-set rollers 146 do not
provide playing cards in a sorted or a random order to elevator platform 156;
rather, the combination of off-set rollers 146, separation element 154, and
elevator platform 154 places the playing cards in a sorted or random order.
As such, we cannot sustain the rejection of claim 5.
Claim 7
Claim 7 depends indirectly from independent claim 1, and recites “a
locking mechanism to selectively lock and unlock the playing card output
receiver in the lowered position in response to a state of the playing card
handling system.”
The Examiner found that Grauzer’s section 606 of flip-up cover 602
locks and unlocks elevator platform 512 in the lowered position as called for

10 The context of claim 5 is that the cards are provided in a sorted or a
random order as compared to the initial order.
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in claim 7, because section 606 restricts access to area 682 so that the
unshuffled cards may not be too readily accessed.11 Ans. 16. Appellant
argues, and we agree, that the Examiner’s rejection is in error because claim
7 does not call for restricting access to the unshuffled cards. App. Br. 24.
Claim 7 calls for selectively locking and unlocking the playing card output
receiver in the lowered position, and the Examiner made no finding that
Grauzer discloses such limitation.
As such, we cannot sustain the rejection of claim 7 and its dependent
claims 8-13.
Claim 17
Claim 17 further provides that the playing card output receiver of
claim 1 is in the form of a rectangular box open on one side. The
Specification describes that the playing card output receiver 206 may take
the form of a rectangular box having at least one side member 213 coupling
the ceiling 221 to the floor 215 for movement therewith. Spec. 14:4-9; fig.
2B.
Appellant concedes that in the “cover-contact position,” Grauzer’s
device is configured as two horizontal surfaces (elevator platform 512 and
section 504 of flip-up cover 502) and a vertical member (arm extension
514). Reply Br. 6; see also Grauzer, col. 17, ll. 59-63 (arm extension 514
buffers the playing cards as they are lifted). Such configuration is a
rectangular box that is open on three sides. Consequently, we agree with the
Examiner that Grauzer discloses a rectangular box open on one side. See
Ans. 19. As such, we sustain the rejection of claim 17.

11 The Examiner initially found that microprocessor 160 locks the elevator in
the lowered position, and then replaced this with a finding that section 606
performs the locking function of claim 7. Ans. 3, 16.
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Independent claim 19
Claim 19 is directed to a playing card handling system that includes a
playing card output receiver comprising a playing card support surface, and
an “ordering means for providing the playing cards received in the playing
card input receiver to the playing card output receiver in an order different
from an order of the playing cards in the playing card input receiver.”
The Examiner found that Grauzer discloses a playing card output
receiver (section 504 of flip-up cover 502) comprising a playing card
support surface (elevator platform 512). Ans. 5-6. The Examiner also found
that Grauzer’s elevator (elevator platform 512) is an equivalent device to the
ordering means of claim 19. Ans. 19. Appellant argues, and we agree, that
Grauzer’s elevator platform 512 cannot correspond to both the playing card
support surface of the playing card output receiver and the ordering means
because claim 19 calls for the ordering means to provide the playing cards to
the playing card output receiver, and elevator platform 512 cannot provide
the cards to itself. Reply Br. 6-7. As such, we cannot sustain the rejection
of claim 19 and its dependent claims 20-31.

Independent claim 32
Claim 32 is directed to a method of operating a playing card handling
system having a playing card output receiver comprising a playing card
support surface, and includes the step of “providing at least some of the
playing cards received at the playing card input receiver to the playing card
output receiver in an order when the playing card output receiver is in the
lowered position different from an order of the playing cards in the playing
card input receiver.”
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The Examiner found that Grauzer’s apparatus provides the cards in a
different order to the playing card support surface of the playing card output
receiver (elevator platform 512). Ans. 3, 6, 20. Appellant argues, and we
agree, that Grauzer’s playing card handling system does not provide playing
cards to the elevator platform 512 in an order different from the order of the
playing cards in the playing card input receiver because Grauzer’s nip rollers
insert cards into the stack of cards carried by the elevator platform in the
same order which the playing cards were inserted into the card accepting
area. App. Br. 28-29; Grauzer, col. 11, ll. 17-19. As such, we cannot
sustain the rejection of claim 32 and its dependent claims 33-40.

DECISION
We affirm the Examiner’s decision to reject claims 1-4, 6, and 14-17,
and we reverse the Examiner’s decision to reject claims 5, 7-13, and 19-40.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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