Kengo Takeda

Patent Trials and Appeals Board

Jul 1, 2020

2018008380 (P.T.A.B. Jul. 1, 2020)

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.
14/371,366 07/09/2014 Kengo Takeda 1932-0012US01 9678
103906 7590 07/01/2020
Potomac Law Group, PLLC (UEC Applications)
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
EXAMINER
MYHR, JUSTIN L
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
07/01/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
eofficeaction@appcoll.com
kfagin@potomaclaw.com
patents@potomaclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte KENGO TAKEDA
____________________

Appeal 2018-008380
Application 14/371,366
Technology Center 3700
____________________

Before ANNETTE R. REIMERS, BRANDON J. WARNER, and
FREDERICK C. LANEY, Administrative Patent Judges.

LANEY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision (dated February 22, 2018, hereinafter “Final Act.”) rejecting claims
1–7 under 35 U.S.C. § 103(a) as unpatentable over Van Baltz (US
2002/0111206 A1, pub. Aug. 15, 2002), Nelson (US 2013/0065667 A1, pub.
Mar. 14, 2013), Wells (US 2011/0195775 A1, pub. Aug. 11, 2011), and
Araque (US 2012/0109765 A1, pub. May 3, 2012). We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Universal Entertainment Corporation
and Aruze Gaming America, Inc., as the real parties in interest. Appeal Br.
2.
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CLAIMED SUBJECT MATTER
The claims relate to a multi-currency system, capable of adding a
multi-currency function, which can handle domestic currency bills, foreign
currency bills, and barcode tickets, to an existing gaming system having a
single currency system. Spec. ¶ 1.
Claims 1, 2, and 7 are independent claims. Claim 1 is illustrative of
the claimed subject matter and is reproduced below.
1. A multi-currency system comprising:
an issuance system including a gaming machine in which
a game controller performs game processing;
an issuance server which communicates information to
issue a barcode ticket for taking out a credit from the gaming
machine via a first path connected with the game controller; and
a reception system for receiving a bill to perform the game
processing in the gaming machine,
wherein, in the case of reception of a bill in the currency
of a first country, 1) the reception system converts the amount of
the bill in the currency of the first country to an amount in the
currency of a second country and sends information as to the
amount of the bill in the currency of the second country to a
reception server via a second, non-transit path, which is different
from the first path and which does not go through the game
controller, and
2) the reception server sends the information as to the
amount of the bill in the currency of the second country to the
issuance server.
Appeal Br. 16 (Claims App.).
OPINION
Appellant raises a single dispositive issue regarding the Examiner’s
reliance on the combination of Van Baltz, Nelson, Wells, and Araque to
establish the obviousness of claims 1–7. See Appeal Br. 9–15. Appellant
contends the Examiner’s obviousness determination is an improper
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“hindsight-driven effort to reconstruct the claimed invention.” Id. at 13–15.
For the following reasons, we are persuaded the Examiner’s rejection of
claims 1–7 is deficient.
The core of the problem raised by Appellant, and we agree, is that the
Examiner combines different parts from different apparatuses disclosed by
Van Baltz in a manner directly contrary to what Van Baltz teaches skilled
artisans knew at the time. Id. In particular, the Examiner relies on a portion
of Figure 1 of Van Baltz to disclose the recited issuance system that
communicates information to issue a barcode ticket for taking out a credit
from the gaming machine via a first path connected with the game
controller, and relies on a portion of Figure 3 of Van Baltz to disclose the
recited reception system, including configuring the reception system to send
information regarding an amount of a currency received to the issuance
server via a non-transit path that is separate from the communication path
requiring the game controller. Final Act. 3–4, 6–7, 11–13. Notably,
however, Van Baltz teaches that the configuration of the issuance and
reception system Figure 3 discloses is “similar to FIG. 1” except “that the
bill validator and ticket reader 316, ticket printer 318, and cashout signal 134
are connected directly to the game interface 312 rather than to the game
controller 108.” Van Baltz ¶ 37.
Exploiting “the fact that the game controller 108 does not have to be
aware of the source of game credit,” Van Baltz teaches physically and
logically divorcing the bill validator and game cashout signal from the game
controller. Id. ¶ 36. Van Baltz describes the configuration of Figure 3 as
allowing “the game interface 312 may exercise control over the bill validator
and ticket reader 316, and ticket printer 318” and, “[f]urthermore, the game
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interface, not the game controller, responds to a game cashout signal 134.”
Id. ¶ 38 (emphasis added). Van Baltz states, “[t]he ability to correctly print
tickets is ensured by transferring control of the game cashout signal from
the game controller to the game machine interface.” Id. ¶ 64 (emphasis
added).
In response to Appellant’s contention that Van Baltz teaches against
the proposed combination of components from Figures 1 and 3, the
Examiner disagrees because “as shown by Fig. 1[,] using the previous
communication method is shown to work for the intended devices and
therefore maintaining a previous communication method for one of the
devices would still work for the system as a whole.” Final Act. 15. In
addition, the Examiner states that Nelson shows “that it is an obvious feature
to not remove all previous embodiments (i.e. original structure) when
upgrading to a new feature since by only including some of the new features
a gaming operator is able to selectively choose which device is upgraded and
avoids the additional cost/time of upgrading the entire system.” Id. at 14.
Furthermore, the Examiner states that “[i]t is a well-understood concept that
a device or system need not [] be fully upgraded at one time since if a part of
the device or system is still working in an acceptable fashion it is often
cheaper to leave it.” Id. The Examiner maintains and repeats these positions
in the Answer. See Ans. 3–4.
The Examiner erred by dismissing Van Baltz’s teachings against
including the game controller within a path of communication for taking out
a credit from the gaming machine when utilizing a reception system that
sends information regarding the amount of currency to the issuance server
via a second non-transit path, which does not go through the game
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controller. It appears the Examiner has allowed hindsight to corrupt the
obviousness determination. The Examiner’s reasoning is deficient in its
conclusion that a skilled artisan would have had a motivation to combine the
reception system disclosed in Figure 3 and its use of a second non-transit
path, which does not go through the game controller, with the portion of the
issuance system disclosed in Figure 1 that relies on the gaming controller as
the path of communication for handling the cash out signal. First, we agree
with Appellant that Van Baltz teaches against making this combination. See
Van Baltz ¶¶ 3, 36–38, 64. And the Examiner’s suggestion that this
evidence can be dismissed because the apparatus shown in Figure 1 works is
not persuasive. This position fails to provide a rational basis to explain why
a skilled artisan would have known to act directly contrary to the teachings
of Van Baltz to keep the communication paths of the issuance and reception
systems of Figure 3 separate and independent of the communication paths
through the gaming controller.
In addition, the Examiner’s reliance on Nelson to show the general
proposition that a skilled artisan knew “to not remove all previous
embodiments (i.e. original structure) when upgrading to a new feature since
by only including some of the new features a gaming operator is able to
selectively choose which device is upgraded and avoids the additional
cost/time of upgrading the entire system” (Final Act. 14; see also Ans. 3)
only establishes that a skilled artisan would have understood Figures 1 and 3
of Van Baltz would have allowed for the components to be combined in the
manner claimed. However, that understanding seems to say no more than a
skilled artisan presented with Figures 1 and 3 of Van Baltz would have
understood that they could be combined in the manner claimed. The Federal
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Circuit has held “that [this] is not enough: it does not imply motivation to
pick out those two references and combine them to arrive at the claimed
invention.” Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993–94
(Fed. Cir. 2017).
Therefore, because the above deficiency exists in the reasoning relied
upon by the Examiner to reject claims 1–7, either directly for the
independent claims or indirectly for the dependent claims, we do not sustain
the Examiner’s obviousness rejection.
CONCLUSION
The Examiner’s rejection of claims 1–7 is reversed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1–7 103(a) Van Baltz,
Nelson, Wells,
Araque
1–7

REVERSED