Okuniewicz, Douglas M.

Patent Trials and Appeals Board

Apr 9, 2020

14667083 - (D) (P.T.A.B. Apr. 9, 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.
14/667,083 03/24/2015 Douglas M. Okuniewicz 0A9658-301011 3289
32009 7590 04/09/2020
BRADLEY ARANT BOULT CUMMINGS LLP
200 CLINTON AVE. WEST
SUITE 900
HUNTSVILLE, AL 35801
EXAMINER
SUHOL, DMITRY
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
04/09/2020 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):
HSVIPDOCKETING@bradley.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DOUGLAS M. OKUNIEWICZ

Appeal 2019-005486
Application 14/667,083
Technology Center 3700
____________

Before MICHAEL J. FITZPATRICK, FRANCES L. IPPOLITO, and
MICHAEL L. WOODS, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1–8. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to the “applicant” under 37 C.F.R. § 1.42. Appellant
identifies the sole named inventor and the assignee, AIM Management, Inc.,
as the real parties in interest. Appeal Br. 2.
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STATEMENT OF THE CASE
The Specification
The Specification “relates generally to electronic gaming devices.”
Spec. ¶1.
The Claims
Claims 1–8 are rejected. Final Act. 1. No other claims are pending.
Id. Claims 1 and 3 are independent. Appeal Br. 10–12. Claim 1 is
illustrative and reproduced below.
1. A gaming device, comprising:
a gambling game outcome determination circuit
operative to generate an event signal comprising an outcome to
a gambling game;
a peripheral device operative to output an indication of
the gambling game outcome to a player of the gambling game;
a signal transmission device operative to transmit the
event signal;
an activity monitor and peripheral device command
generator where the activity monitor and peripheral device
command generator receives the event signal from the signal
transmission device; and
where the activity monitor and peripheral device
command generator, in information transmission connection
with the gambling game outcome determination circuit, isolates
an external communication from the gambling game outcome
determination circuit whereby the external communication
cannot communicate to the outcome determination circuit and
cannot influence the outcome determination circuit's ability to
generate an outcome.
Appeal Br. 10.
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The Examiner’s Rejections
The Examiner’s rejections before us are:
1. claims 3–8 pursuant to 35 U.S.C. § 112 ¶1 for lacking adequate
written description (Final Act. 3);
2. claims 1–8 pursuant to 35 U.S.C. § 112 ¶2 as indefinite (id. at
4);
3. claims 1 and 2 pursuant to 35 U.S.C. § 102(b) as anticipated by
Barrie2 (id. at 6);
4. claims 3–8 pursuant to 35 U.S.C. § 103(a) over Tracy3 and
Kelly4 (id. at 5); and
5. claim 1 for nonstatutory (obviousness-type) double patenting
over claims 1, 14, and 18 of US 8,986,105 B2, issued March 24, 2015 (id. at
13).

DISCUSSION
Rejection 1—Written Description
Appellant does not appeal this rejection. Final Act. 4. Accordingly,
we summarily affirm it.
Rejection 2—Indefiniteness
Section 112 states, in part:
The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention.
35 U.S.C. § 112 ¶2.

2 US 4,837,728, issued June 6, 1989 (“Barrie”).
3 US 5,280,909, issued Jan. 25, 1994 (“Tracy”).
4 US 5,816,918, issued Oct. 6, 1998 (“Kelly”).
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For a claim under examination, “a claim is indefinite when it contains
words or phrases whose meaning is unclear,” i.e., “ambiguous, vague,
incoherent, opaque, or otherwise unclear in describing and defining the
claimed invention.” In re Packard, 751 F.3d 1307, 1310–13 (Fed. Cir.
2014); see also MPEP § 2173.02(I) (Rev. 07.2015, Nov. 2015) (advising
examiners that a rejection for indefiniteness is appropriate “after applying
the broadest reasonable interpretation to the claim, if the metes and bounds
of the claimed invention are not clear”). Moreover, “if a claim is amenable
to two or more plausible claim constructions, the USPTO is justified in
requiring the applicant to more precisely define the metes and bounds of the
claimed invention by holding the claim unpatentable under 35 U.S.C. § 112,
second paragraph, as indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207,
2008 WL 5105055, at *5 (BPAI 2008) (precedential).
The Examiner rejected claims 1–8 as indefinite based on various
limitations. Final Act. 4–6. Appellant presents arguments for some, but not
all, of such limitations, as noted below.
Limitations Argued
The Examiner determined that the following limitation, recited by
independent claims 1 and 3, is indefinite:
where the activity monitor and peripheral device
command generator, in information transmission connection
with the gambling game outcome determination circuit, isolates
an external communication from the gambling game outcome
determination circuit whereby the external communication
cannot communicate to the outcome determination circuit and
cannot influence the outcome determination circuit's ability to
generate an outcome.
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Final Act. 4–5 (emphasis added). In particular, the Examiner determined
that the terms “isolates” and “an external communication” are unclear. Id. at
5.
With respect to “isolates,” the Examiner cited dictionary definitions of
and found that neither definition (i.e., “to set apart” or “insulate”) could
provide clarity in the context of the claims. Id.
Appellant argues that the term “isolates” is definite, yet Appellant
does not provide a proposed construction or otherwise explain what it
means. Appeal Br. 4–5. Rather, Appellant merely implies it has something
to do with “unidirectional information transfer,” arguing:
However, the disclosures of this application and those of the
related patents are replete with examples of isolating external
communications from gaming device internals. For example, in
the present application, Figure 1, element 204 illustrates an
example of unidirectional information transfer specifically
employed to isolate external communications from the gaming
device internals and providing a clear example of isolating
communications from gaming device internals as claimed.
However, the plain meaning of the term “isolate” is clearly met
whether or not employing optical isolators. Optical isolators are
not critical to the present invention (see Paragraph 0020), what
is critical is isolating external communications from the gaming
device internals. Paragraph 0020 states in part, “. . . the event
detector device 204a–o associated with that event will signify the
occurrence of that event yet prevent any potential modification
of the event status due to the one-way nature of the event detector
devices.”
Id.
This argument does not apprise us of error in the Examiner’s
determination that “isolates” is indefinite. First, paragraph 20 does not use
the verb “isolates” (or “isolate”). Rather, it refers to “isolators,” a noun,
stating: “The event detector devices may be of various types of detectors,
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including optical isolators or the like, so long as the primary function of
unobtrusively determining event occurrences is fulfilled.” Spec. ¶20. This
disclosure, that optical isolators may be used as event detector devices, does
not sufficiently inform what is meant in the claims by “isolates.”
The Examiner also rejected claims 1 and 3 as indefinite because the
“the term ‘external’ is a relative term and the claim provides no point of
reference to determine to what the communication is relative.” Id.
Appellant argues:
Appellant relies on the plain meaning of the term “external” in
reference to any communication that is not generated by the
gaming device. In the Appellant’s view, because the preambles
for independent Claims 1 and 3 are directed toward “a gaming
device,” the term “external” applies to communications that are
not generated by that gaming device.
Appeal Br. 5.
This argument does not apprise us of error in the Examiner’s
determination that “an external communication” is indefinite. Claims 1 and
3 recite “an external communication from the gambling game outcome
determination circuit.” Appeal Br. 10–11. In both claims, the gambling
game outcome determination circuit is a positively recited component of the
gaming device. Thus, Appellant’s proposed construction is not supported,
and indeed foreclosed, by other language recited in the claims.
For the foregoing reasons, we sustain the rejection of claims 1 and 3,
as well as that of dependent claims 2 and 4–8, as indefinite.
Limitations Not Argued
Although we fully sustain the rejection of claims 1–8 as indefinite as
discussed above, we also sustain the rejection of a subset of those claims for
independent reasons as discussed below.
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The Examiner determined that claim 1’s recitation of “the outcome
determination circuit” in the third to last line lacks sufficient antecedent
basis. Final Act. 5. The Examiner determined that claim 2’s recitation of
“the interface” lacks sufficient antecedent basis. Final Act. 5. The
Examiner determined that the recitation, in both claim 2 and claim 8, of
“where the interface comprises a software construct” is unclear. Id. at 5–6.
The Examiner determined that claim 3’s recitation of “the outcome
determination circuit” in the third to last line lacks sufficient antecedent
basis. Id. at 6. The Examiner determined that claim 7’s recitation of “the
vending device” in the first line lacks sufficient antecedent basis. Id. The
Examiner determined that claim 7’s recitation of “at least one of . . . a
complimentary” is unclear because “complimentary” is an adjective without
a noun. Id. The Examiner determined that claim 8’s recitation of “the
interface” lacks sufficient antecedent basis. Id. The Examiner rejected these
claims as indefinite for these additional reasons.
Appellant does not argue against any of these determinations. See
Appeal Br. 4–5 (arguing against indefiniteness only with respect to
“isolates” and “external communication”).
Because Appellant does not apprise us of error in these
determinations, we sustain the rejection of claims 1–3, 7, and 8 as indefinite
for these additional reasons.
Rejections 2 and 3—Prior Art
The indefinite scope of the claims precludes meaningful review of the
prior art rejections. Consequently, we pro forma reverse those rejections.
See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962).

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Rejection 5—Double Patenting
Appellant does not appeal this rejection. Final Act. 4. Accordingly,
we summarily affirm it.

SUMMARY
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
3–8 112 ¶1 written
description
3–8
1–8 112 ¶2 indefiniteness 1–8
1, 2 102(b) Barrie 1, 2
3–8 103(a) Tracy, Kelly 3–8
1 N/A double patenting 1
Overall
Outcome
1–8

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