Ex Parte 6,293,866 B1 et al

Patent Trial and Appeal Board

Aug 29, 2014

95002013 (P.T.A.B. Aug. 29, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/002,013 06/12/2012 6,293,866 B1 11000361-WDIG-RI013 8727
27571 7590 09/02/2014
Ascenda Law Group, PC
84 W. Santa Clara St.
Suite 550
San Jose, CA 95113
EXAMINER
SAGER, MARK ALAN
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/02/2014 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
____________
SONY COMPUTER ENTERTAINMENT AMERICA LLC
Requester and Respondent

v.

WALKER DIGITAL, LLC
Patent Owner and Appellant
____________________

Appeal 2014-006026
Reexamination Control 95/002,013
Patent US 6,293,866
Technology Center 3900

____________

Before MARC S. HOFF, ANDREW J.DILLON, and
JENNIFER L. MCKEOWN, Administrative Patent Judges.

DILLON, Administrative Patent Judge

DECISION ON APPEAL

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STATEMENT OF THE CASE
Patent Owner Walker Digital, LLC (“Owner”) appeals under 35
U.S.C. § 134(b) (2002) from the final decision of the Examiner adverse to
the patentability of claims 11-31.1 Third Party Requester Sony Computer
Entertainment America LLC responds to Owner’s appeal.2 We have
jurisdiction under 35 U.S.C. § 315 (2002). An oral hearing was conducted
with the Requester and Patent Owner on July 30, 2014.3
We affirm.

Invention
The ‘866 patent describes a slot machine networked to a central server
which receives preference data corresponding to a player from the central
server and configures the game to match the received preference data. The
player inserts his player tracking card into the slot machine, which transmits
player identification data to the central server. The central server transmits
player preference data and casino preference data for that player to the slot
machine for configuration. While the player plays the slot machine, the slot
machine transmits data about the player's performance to the central server.
The central server determines appropriate casino preference values based

1 See Owner’s Appeal Brief, filed July 31, 2013 (hereinafter “App. Br.),
Examiner’s Answer, mailed November 6, 2013, incorporating by reference
the Examiner’s Right of Appeal Notice, mailed May 31, 2013 (hereinafter
“RAN”). The Owner also filed a Rebuttal Brief. See Owner’s Rebuttal Brief,
filed December 6, 2013 (hereinafter “Rebuttal Brief”).
2 See Third Party Requester’s Respondent Brief, filed August 30, 2013
(hereinafter “Req. Resp. Br.”)
3 See Transcript of Oral Hearing dated July 30, 2014.
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upon the player's performance and transmits those values to the slot machine
for configuration.

Claims
Claims 11-31 are subject to reexamination and have been rejected.
Claims 11 and 12 are original patent claims. Claims 13-31 are proposed new
claims. Claim 11 is independent.

Claim 11 is illustrative.
11. A gaming system comprising:

a gaming device including:

an interface operative to receive preference data representing a
preferred operation of the gaming device relative to a specific player,
and

a processor operative to configure the gaming device to operate
according to the preference data; and

a server coupled to the gaming device including:

a data storage device operative to store a collection of data
representing various operations of the gaming device; and

a processor operative to selectively transmit a portion of the collection
of data to the gaming device as preference data in response to
receiving player identification data.

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Prior Art

Bergeron US 4,764,666 Aug. 16, 1988
Tsumura EP 0 556 840 A2 Feb. 18, 1993
Goldberg US 5,823,879 Oct. 20, 1998
Acres US 5,741,183 Apr. 21, 1998
Graves US 4,593,904 June 10, 1986
Miguel US 5,593,349 Jan. 14, 1997
Katz US 5,218,631 June 8, 1993
Shadow of Yserbius, Published by Sierra On-Line, 1993 (hereinafter
“Shadow of Yserbius”)

Owner’s Contentions

Owner contends that the Examiner erred in entering the following
grounds of rejection against claims 11-31 (App. Br. 6-28):
A. The rejection of claims 11, 14-16, 26, 29 and 30 under 35 U.S.C. §
102(e) as being anticipated by Bergeron;
B. The rejection of claims 11, 12, 14-17, and 31 under 35 U.S.C. §
102(e) as being anticipated by Tsumura;
C. The rejection of claim 12 under 35 U.S.C. § 103(a) as being
unpatentable over Tsumura and Goldberg;
D. The rejection of claims 13 and 25 under 35 U.S.C. § 103(a) as
being unpatentable over Bergeron and Acres;
E. The rejection of claim 27 under 35 U.S.C. § 103(a) as being
unpatentable over Tsumura and Shadow of Yserbius;
F. The rejection of claims 18, 19, and 23 under 35 U.S.C. § 103(a) as
being unpatentable over Tsumura and Graves;
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G. The rejection of claim 28 under 35 U.S.C. § 103(a) as being
unpatentable over Tsumura and Miguel;
H. The rejection of claims 18, 23, and 24 under 35 U.S.C. § 103(a) as
being unpatentable over Tsumura and Katz; and
I. The rejection of claims 20-22 under 35 U.S.C. § 103(a) as being
unpatentable over Tsumura and Graves.

ANALYSIS
Rejections under §102
Owner argues that the Examiner erred in finding Claim 11 anticipated
by either Bergeron or Tsumura, by virtue of the failure of either of these
references to disclose player preference data and a processor operative to
configure a gaming device to operate in accordance with that preference
data. App. Br. 6-12 and 13-16.
Specifically, Owner argues that the storage of a player’s “lucky
numbers” is not analogous to and does not anticipate the player preferences
of claim 11 because the player preferences do not configure the gaming
device. App. Br. 11-12. Further, Owner argues that the “suspend/resume”
feature of Tsumura is similarly deficient in that it fails to anticipate player
preference data that represents a preferred operation of the gaming device.
App. Br. 13-14.
Requester urges that it is improper to rely upon a specific embodiment
in the ‘866 Specification to determine the broadest reasonable interpretation
of “player preference data” where the claim language is clearly broader that
the single embodiment. Requester argues that the presence or absence of the
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so-called “lucky numbers” changes the configuration of Bergeron’s
terminals by causing them to operate in one of two modes. Req. Resp. Br. 5-
7.
With regard to Tsumura, Requester argues that the suspend/resume
feature comprises a player-preferred game starting point, and is player
preference data. Req. Resp. Br. 7-8.
Consequently, our analysis of this issue will necessarily focus on the
appropriate interpretation of this disputed claim terminology.
Claim Interpretation
In this proceeding, the claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art. In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The
Office must apply the broadest reasonable meaning to the claim language,
taking into account any definitions presented in the specification. Id. (citing
In re Bass, 314 F.3d 575, 577 (Fed. Cir. 2002)).
There is a “heavy presumption” that a claim term carries its ordinary
and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
1359, 1366 (Fed. Cir. 2002).
“Player Preferences”
Owner urges that “Player Preferences” should comprise “information
about the preferred game (game type), the preferred configuration of the slot
machine (language, sound options, speed of reel spins, number of coins
played per handle pull), and preferred distribution of awards (payout
structure, payout options, form of complementariness, currency).” ‘866
Patent at col. 5, ll. 1-8. App. Br. 10.
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Further, Owner argues that “Player Preferences” must therefore
constitute elements that either: designate a game type; fundamentally alter
aspects of the machine/user interface and/or the interactive player
experience; or, change the form, type, and/or structure of the compensatory
output. Id.
However, our reviewing court has repeatedly warned against
confining the claims to specific embodiments described in the specification.
Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc). We
are not persuaded that unclaimed details in the detailed description of the
embodiments serve to limit the scope of the claim term in the manner
alleged by Owner.
In this case, Owner has pointed to various instances in the detailed
description of the illustrative embodiments of the ‘866 patent that relate to
“Player Preferences.” However, we find Owner neglects to refer to that
portion of the ‘866 patent which recites “In practice, fewer or more different
types of player preferences can be stored in database 216.” ‘866 Patent at
col. 5, ll. 16-18.
Given the non-limiting nature of this language, we find Owner has not
provided sufficient evidence or argument for a persuasive showing that one
of ordinary skill in the art would have a narrow interpretation of “Player
Preferences,” as urged by Owner. Owner could have limited the examples
set forth in the Specification, and limited the claims to require that “Player
Preferences” be interpreted in a manner that did not encompass the “lucky
number data” of Bergeron or the “pause and resume” teaching of Tsumura.
Owner did neither.
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We therefore agree with the Examiner and Requester that “Player
Preferences” is to be interpreted in accordance with its plain meaning and
that the plain meaning of that term fails to exclude the “lucky number data”
of Bergeron or the “pause and resume” teaching of Tsumura.
Additional Arguments Regarding Bergeron
In addition to the arguments set forth above with respect the nature of
“player preferences,” Owner argues that Bergeron does not disclose a
gaming device “configured to operate according to player preference data as
required by claim 11.” App. Br. 10.
Specifically, Owner argues that the “lucky numbers” of Bergeron do
not, in any way configure the gaming device upon which the game is played.
That is “nothing about the configuration of the "gaming device" (i.e. the
agent terminal in Bergeron) changes depending on which numbers are
played and/ or depending on the medium (mark sense or smart cart) from
which those numbers are derived.” App. Br. 12.
Requester argues that the game terminal of Bergeron operates in one
of two modes, based upon “the absence or presence of player preferred lucky
numbers.” Req. Resp. Br. 4.
Given our finding above that “player preferences” includes the
submission of “lucky numbers,” as taught by Bergeron, we find that the
presence or absence of these “lucky numbers” necessarily configures the
“gaming device to operate according to the preference data” as set forth in
claim 11. Our conclusion is based upon a finding that the gaming device is
configured to indicate a win or loss, based, at least in part, upon the “lucky
numbers.”
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Additional Arguments Regarding Tsumura
With respect to the Examiner’s rejection based upon Tsumura, Owner
argues a failure to disclose: “player preferences,” which we address above;
an interface, operative to receive preference data relative to a specific player;
and, the configuration of a gaming device to operate according to user
preference data. App. Br. 13.
Additionally, Owner also argues that the Examiner’s application of
Tsumura to Owner’s claim 11 is inconsistent with the preferred teachings of
Tsumura. Id.
Regarding the interface operative to receive preference data “relative
to a specific player,” the Examiner points out that the phrase “relative to a
specific player” does not require the player preference to be unique to a
particular player. RAN. 12-13.
We concur with the Examiner. The point at which a particular player
chooses to pause/resume a game falls within our broad, but reasonable
definition of “player preferences” and we find that point need not be unique
to a particular player.
With regard to the configuration of a gaming device in accordance
with user preference data, Owner argues Tsumura fails to disclose such
configuration, based upon the proposed narrow interpretation of “player
preferences.” App. Br. 17.
Requester argues that configuring a gaming terminal to start a game at
a “player preferred starting point after receiving a player identifier”
constitutes the configuration of a gaming terminal in accordance with
“player preferences.” Req. Resp. Br. 9-10.
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We are persuaded by Requester’s arguments. We find that suspending
and resuming a game at a selected point within the game constitutes a
“player preference” under our broad but reasonable definition and causing
the game to suspend or resume at that point is a configuration of the gaming
terminal.
Finally, with respect to Owner’s argument that an interpretation of
suspend/resume operations of Tsumura as “preference data” is inconsistent
with the teachings of Tsumura, we are not persuaded. We find nothing in
that interpretation which is inconsistent with Tsumura’s teaching of the
downloading of game programs to gaming terminals.
With respect to the rejections under § 102(e), Owner only submits
arguments with respect to the rejection of claim 11. We therefore find that
the Examiner did not err in rejecting claims 11, 14-16, 26, 29 and 30 under
35 U.S.C. § 102(e) as being anticipated by Bergeron, and did not err in
rejecting claims 11, 12, 14-17, and 31 under 35 U.S.C. § 102(e) as being
anticipated by Tsumura.
Rejections under §103
Owner argues that the Examiner erred in the rejection of claim 12
under 35 U.S.C. § 103(a) as being unpatentable over Tsumura and Goldberg.
The basis for Owner’s assertion is the Examiner’s statement that one of
ordinary skill in the art would have known that the system of Tsumura could
be adapted to many different types of games. Owner urges that the Examiner
has engaged in unfounded assumption. App, Br. 18-19.
Requester points out that Tsumura expressly teaches that different
types of games may be played on the gaming terminal, including: shooting
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games; road race games; and role playing games. Tsumura, Col. 3, lines 9-
12.
The Examiner’s position that other types of games, such as the casino
games listed by Goldberg, could be utilized by the Tsumura system, does not
seem to be an unfounded assumption. This is especially true as we find the
complexity and number of variables in Tsumura’s shooting games, road race
games and role playing games are substantially greater than the complexity
and number of variables in a game of blackjack, for example, where a
limited number of cards are utilized and a maximum mathematical variable
of twenty-one is required to be calculated.
We therefore find that the Examiner did not err in rejecting claim 12
under 35 U.S.C. § 103(a) as being unpatentable over Tsumura and Goldberg.
Owner fails to argue separately the Examiner’s rejection of claims 13
and 25 under 35 U.S.C. § 103(a) as being unpatentable over Bergeron and
Acres. Consequently, we find the Examiner did not err in that rejection.
Owner argues that the Examiner erred in rejecting claim 27 under 35
U.S.C. § 103(a) as being unpatentable over Tsumura and Shadow of
Yserbius, based upon the arguments above with respect to the arguments
posed in favor of the patentability of claim 11, and further for the failure of
the cited references to show or suggest the display of a preferences menu
which includes a plurality of choices selectable by a specific player. App.
Br. 20-21.
Requester points out that the Shadow of Yserbius discloses that
customizing the screen color is accomplished utilizing a visual format, citing
page XI of Shadow of Yserbius. Consequently, Requester argues that
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Owner’s speculation that color choice might be accomplished by typing in a
color name is not well founded. Req. Resp. Br. 11.
We agree with Requester. The provision of a displayed menu which
permits user preferences to be selected is a logical method of implementing
the color choice feature of the Shadow of Yserbius, as those skilled in the art
would appreciate. The speculation by Owner that alternate methods might be
utilized does not persuade us that the Examiner erred in the rejection of
claim 27.
With regard to the rejection of claims 18, 19, and 23 under 35 U.S.C.
§ 103(a) as being unpatentable over Tsumura and Graves, Owner argues that
the Examiner erred by failing to provide a rational underpinning for the
proposition that adding the tracking of player performance, as taught by
Graves, to the system of Tsumura, would improve the Tsumura system.
App. Br. 24.
Further, Owner argues that Graves teaches a central station that tracks
player responses, while Tsumura teaches keeping player scores at a remote
terminal, and that the proposed combination would greatly increase the cost
of the resultant system. Id. at 24-25.
We find that Tsumura and Graves both disclose gaming systems. We
concur with the Examiner’s analysis regarding the nature of technical areas
of these patents, and we find the Examiner has provided a rational
underpinning for the proposed combination
Further, the alleged increased cost of the proposed combination is not
a valid basis for an allegation of error. Indeed, it is well settled that physical
combination of two references need not be possible at all.
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“[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.” In re
Sneed, 710 F.2d 1544, 1550 Fed. Cir. 1983 (citing Orthopedic Equip. Co. v.
United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983); In re Andersen, 391
F.2d 953, 958 (CCPA 1968)); see also In re Nievelt, 482 F.2d 965, 968
(CCPA 1973) (“Combining the teachings of references does not involve an
ability to combine their specific structures.”). “The test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference . . . . Rather, the test
is what the combined teachings of the references would have suggested to
those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA
1981) (citations omitted).
We therefore find that the Examiner did not err in rejecting claims 18,
19, and 23 under 35 U.S.C. § 103(a) as being unpatentable over Tsumura
and Graves.
Owner argues the Examiner erred in rejecting claim 28 under 35
U.S.C. § 103(a) as being unpatentable over Tsumura and Miguel. The basis
for Owner’s assertion is the failure of Miguel to show or suggest “querying a
user regarding whether to use (or even receive) user input.” App. Br. 26.
Requester urges that Miguel recites that a centralized league machine
transmits data to a plurality of electronic dart games and that each player
utilizes a card which stores player and league operation. Further, Requester
points out that the player may specify game options from four different types
of games. Request 8-9.
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Based upon the ability of the user to select games types utilizing the
terminal of Miguel, we find the Examiner did not err in rejecting claim 28
under 35 U.S.C. § 103(a) as being unpatentable over Tsumura and Miguel.
Finally, Owner fails to provide particular arguments with respect to
the rejections of claims 18 and 20-24, relying instead on the arguments
above with regard to claim 11.
For the reasons we set forth above we find the Examiner did not err in
the rejections of claims 18 and 20-24.
Accordingly, Owner has not shown reversible error in any of the
rejections that have been advanced by the Examiner. In reviewing the
record, we also do not discern that the Examiner was incorrect in applying
the prior art to the claims involved in this appeal.

Summary/Conclusion
We sustain the Examiner’s rejections of claims 11-31.

DECISION
The Examiner’s decision adverse to the patentability of claims 11-31
is affirmed.
Requests for extensions of time in this proceeding are governed by 37
C.F.R. §§ 1.956 and 41.79(e). In the event neither party files a request for
rehearing within the time provided in 37 C.F.R. § 41.79, and this decision
becomes final and appealable under 37 C.F.R. § 41.81, a party seeking
judicial review must timely serve notice on the Director of the United States
Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.
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AFFIRMED

Patent Owner:

ASCENDA LAW GROUP, PC
84 W. Santa Clara Street
Suite 550
San Jose, CA 95113

Third Party Requester:

ERISE IP, P.A.
6221 College Boulevard
Suite 300
Overland Park, KS 66211