Ex Parte Nguyen et al

Patent Trials and Appeals BoardMar 19, 2019

15092399 - (D) (P.T.A.B. Mar. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 15/092,399 04/06/2016 29159 7590 03/21/2019 Neal, Gerber & Eisenberg LLP (IGT) 2 N. LaSalle Street Suite 1700 Chicago, IL 60602-3801 FIRST NAMED INVENTOR Binh T. Nguyen 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 027438-2143 P000958-017 1028 EXAMINER D'AGOSTINO, PAUL ANTHONY ART UNIT PAPER NUMBER 3716 NOTIFICATION DATE DELIVERY MODE 03/21/2019 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): amasia@ngelaw.com patents@igt.com ipusmail@ngelaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte BINH T. NGUYEN and CRAIG A. PAULSEN Appeal2018-006720 Application 15/092,399 Technology Center 3700 Before EDWARD A. BROWN, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks review under 35 U.S.C. Â§ 134 from the Examiner's decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 IGT ("Appellant") is the Applicant and is identified as the real party in interest. 37 C.F.R. Â§ 1.46; Appeal Br. 2. Appeal2018-006720 Application 15/092,399 CLAIMED SUBJECT MATTER Appellant's disclosure "relates to game playing methods for gaming machines such as video slot machines and video poker machines. More particularly, the present invention relates to methods and apparatus for providing player tracking services and related gaming services on a gaming machine." Spec. ,r 5. Claims 1 and 11 are independent. Claim 1 is illustrative, and reads: 1. A gaming system comprising: a housing; a plurality of input devices supported by the housing, said plurality of input devices including an acceptor, and a cashout device; at least one display device supported by the housing; at least one processor; and at least one memory device which stores a plurality of instructions, which when executed by the at least one processor, cause the at least one processor to: responsive to a physical item being received via the acceptor, modify a credit balance based, at least in part, on a monetary value associated with the received physical item, after a player tracking unit associated with the gaming system identifies a player and responsive to data associated with an amount of credits being wirelessly communicated to the player tracking unit via a wireless interface of the player tracking unit, modify the credit balance based, at least in part, on the amount of credits associated with the data wirelessly communicated to the player tracking unit, wherein said data is wirelessly communicated to the player tracking unit responsive to at least one player input to transfer the amount of credits being received by a mobile device, 2 Appeal2018-006720 Application 15/092,399 responsive to a wager being placed in association with a play of a game: deduct the placed wager from the credit balance, randomly determine a game outcome, cause the at least one display device to display the randomly determined game outcome, determine any award associated with the randomly determined game outcome, and cause the at least one display device to display any determined award associated with the randomly determined game outcome, wherein the credit balance is increasable based on any determined award associated with the randomly determined game outcome, and responsive to a cashout input being received via the cashout device, cause an initiation of any payout associated with the credit balance. Appeal Br. 27-28 (Claims App.). THE REJECTION Claims 1-20 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Hedrick (US 2003/0027631 Al, published Feb. 6, 2003), Lark (US 2002/0142825 Al, published Oct. 3, 2002), and Hemblad (US 2004/0054592 Al, published Mar. 18, 2004). ANALYSIS Appellant argues claims 1-20 as a group in contesting the rejection. See Appeal Br. 10-25. Accordingly, we decide the appeal of this rejection based on claim 1, with claims 2-20 standing or falling with claim 1. See 3 Appeal2018-006720 Application 15/092,399 37 C.F.R. Â§ 4I.37(c)(l)(iv) (permitting the Board to select a single claim to decide the appeal as to a ground of rejection of a group of claims argued together). As for claim 1, the Examiner finds Hedrick discloses a gaming system comprising, in part, at least one processor, at least one memory device, and a player tracking unit (player tracking unit 200) that receives player input wirelessly from a mobile device. Final Act. 3-5. The Examiner finds Hedrick does not explicitly disclose "that the portable device communications necessarily include manual input associated with transfer of credit information to affect the credit balance." Id. at 5; see also id. at 6 ("Hedrick discloses the claimed invention except for manual input to make wireless transfers."). Accordingly, the Examiner finds Hedrick does not disclose that the memory device, when executed by the processor, causes the processor to wirelessly communicate data to the player tracking unit responsive to at least one player input to transfer an amount of credits being received by a mobile device, as claimed. The Examiner finds Lark discloses using mobile devices as cashless instruments. Id. at 5 ( citing Lark ,r 160). The Examiner concludes it would have been obvious to one of ordinary skill in the art to modify Hedrick's gaming system to use the known technique of a mobile device (smart phone) as a cashless system, as taught by Lark, as a digital assistant interface to a gaming machine to improve the gaming machine in a similar way. Id. at 6. Additionally, the Examiner finds Hemblad discloses using manual input for making wireless transfers. Id. at 2. The Examiner concludes that it also would have been obvious to one of ordinary skill in the art to modify 4 Appeal2018-006720 Application 15/092,399 Hedrick' s gaming system to use manual input for wireless transfers, as taught by Hemblad, for security reasons. Id. at 6. Appellant contends Hemblad is non-analogous prior art. Appeal Br. 16. The test for determining whether a prior art reference is analogous art is: "(1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved." In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992). "A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor's endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem." Id. Appellant argues that the field of endeavor of the claimed invention is wagering gaming systems, whereas Herbert is in the food services field of endeavor. Id. at 17. Additionally, Appellant contends that its Specification addresses the ongoing need to utilize a player tracking unit to expand on services offered to a player beyond simply identifying the player. Id. at 18 (citing Spec. ,r,r 12, 13, and 80). According to Appellant, Hemblad addresses problems concerning available labor pool in the restaurant industry. Id. at 17-20; see also Reply Br. 2-5. We agree with the Examiner that Hemblad is reasonably pertinent to the problem that the claimed invention seeks to solve, and thus, Hemblad would have commended itself to an inventor's attention. As noted by the Examiner, the Specification discloses that both food services and security are relevant, identifying problems addressed. Ans. 4--5 ( citing Spec. ,r,r 81, 132, 134, 145, 146, 166, 167; Fig. 3C). Hemblad's disclosure also relates to 5 Appeal2018-006720 Application 15/092,399 food services and to security problems associated therewith. Id. at 5---6 ( citing Hemblad, Title, ,r,r 1, 29 ( addressing "tracking and security purposes for restaurants and the like"), 45 ("[ a ]11 wireless transmissions containing sensitive data, such as payment information and special codes, will be encrypted")). We thus are not persuaded by Appellant that Hemblad is non- analogous art or that the Examiner erred in relying on Hemblad. Appellant contends Lark is improperly combined with Hedrick to form the basis of the rejection. Appeal Br. 21. Particularly, Appellant contends the rejection is based on improper hindsight reconstruction, because Lark discloses not having to reveal the identity of a player, whereas the identity of a player is relevant in Hedrick's gaming system. Id. at 21-23 (citing Lark ,r,r 11, 27, 65, 130); see also Reply Br. 5. These arguments are unpersuasive. First, they do not address the Examiner's rejection, which relies on Lark as disclosing a cashless system, not for maintaining player anonymity. See Final Act. 5. Second, the rejection is based on sound technical reasoning and evidence disclosed in the cited references, rather than improper hindsight reconstruction. Appellant also contends Hedrick only discloses a wireless device that provides automatic transfers, and there is no input by a player as required by the claims; Lark is silent regarding establishing a credit balance and inputs by a player; and Hemblad lacks a gaming system and mobile devices for credit balances with a gaming system. Appeal Br. 23-24; see also Reply Br. 5---6. These arguments are unpersuasive because they focus on the applied references individually, rather than addressing the stated rejection based on a combination of teachings. "Non-obviousness cannot be established by 6 Appeal2018-006720 Application 15/092,399 attacking references individually where the rejection is based upon the teachings of a combination of references. . . . [The reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, the Examiner relies on: Hedrick as disclosing a gaming system and mobile devices; Lark as disclosing a cashless system; and Hemblad as disclosing manual input for making wireless transfers. See Final Act. 4--5; Ans. 8. Appellant's contentions do not address persuasively the Examiner's proposed combination of the reference teachings. We also note Hedrick discloses input by a player at a mobile device (Hedrick ,r 22) and Lark discloses transferring of credits (Lark ,r 160). These additional teachings further support the Examiner's rejection. Thus, Appellant does not apprise us of error. Accordingly, we sustain the rejection of claim 1 as unpatentable over Hedrick, Lark, and Hemblad. Claims 2-20 fall with claim 1. DECISION We affirm the rejection of claims 1-20. No time period for taking any subsequent action in connection with this appeal may be extended according to 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 7