Ex Parte 6,293,866 B1 et alDownload PDFPatent Trial and Appeal BoardAug 29, 201495002013 (P.T.A.B. Aug. 29, 2014) Copy Citation 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 Appeal 2014-006026 Reexamination Control 95/002,013 Patent US 6,293,866 2 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. Appeal 2014-006026 Reexamination Control 95/002,013 Patent US 6,293,866 3 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. Appeal 2014-006026 Reexamination Control 95/002,013 Patent US 6,293,866 4 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; Appeal 2014-006026 Reexamination Control 95/002,013 Patent US 6,293,866 5 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 Appeal 2014-006026 Reexamination Control 95/002,013 Patent US 6,293,866 6 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. Appeal 2014-006026 Reexamination Control 95/002,013 Patent US 6,293,866 7 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. Appeal 2014-006026 Reexamination Control 95/002,013 Patent US 6,293,866 8 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.” Appeal 2014-006026 Reexamination Control 95/002,013 Patent US 6,293,866 9 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. Appeal 2014-006026 Reexamination Control 95/002,013 Patent US 6,293,866 10 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 Appeal 2014-006026 Reexamination Control 95/002,013 Patent US 6,293,866 11 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 Appeal 2014-006026 Reexamination Control 95/002,013 Patent US 6,293,866 12 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. Appeal 2014-006026 Reexamination Control 95/002,013 Patent US 6,293,866 13 “[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. Appeal 2014-006026 Reexamination Control 95/002,013 Patent US 6,293,866 14 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. Appeal 2014-006026 Reexamination Control 95/002,013 Patent US 6,293,866 15 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 Copy with citationCopy as parenthetical citation