Ex Parte Okuniewicz

Patent Trial and Appeal Board

Mar 28, 2017

11033920 (P.T.A.B. Mar. 28, 2017)

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.
11/033,920 01/11/2005 Douglas M. Okuniewicz A9658-72754 5863
32009 7590 03/28/2017
RR ADT FY AR ANT ROT TT T OT TMMTNOS T T P
EXAMINER
200 CLINTON AVE. WEST HU, KANG
SUITE 900
HUNTSVILLE, AL 35801 ART UNIT PAPER NUMBER
3717
MAIL DATE DELIVERY MODE
03/28/2017 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
Ex parte DOUGLAS M. OKUNIEWICZ
Appeal 2015-001899
Application 11/033,920
Technology Center 3700
Before PHILIP J. HOFFMANN, JAMES A. WORTH, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’
rejections of claims 60—62. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The Appellant identifies the real parties in interest as “Douglas M.
Okuniewicz and AIM Management, Inc.” (Appeal Br. 2.)
Appeal 2015-001899
Application 11/033,920
STATEMENT OF THE CASE
The Appellant’s invention “relates to electronic gaming devices.”
(Spec. 11.)
Illustrative Claim
60. An electronic gaming system, comprising:
an electronic gaming device operative to receive a wager;
a player input device operative to communicate player
instructions to the gaming device;
a payment output device operative to deliver a payment;
a visual output device operative to deliver viewable
content;
an audio output device operative to deliver audible
content;
an outcome determination device operative to at least
partially randomly determine a wager outcome based on the
player input and the wager received;
an internal electronic processing device operative to
command an output device to disclose the wager outcome; and
a secure interface operative to monitor the internal
electronic processing device, inputs, outputs and outcomes
where the secure interface device is further operative to
interrupt an output command to disclose the wager outcome and
deliver a cashless instrument delineative of the outcome.
Rejections
I. The Examiner rejects claim 60 under 35 U.S.C. § 112, second
paragraph. (See Non-Final Action 2—3.)
II. The Examiner rejects claims 60 and 62 under 35 U.S.C.
§ 103(a) as unpatentable over Rowe2 in view of Koza.3 (See Non-Final
Action 3.)
2 US 2003/0171145 Al, filed Apr. 2, 2003, published Sept. 11, 2003.
3 US 4,652,998 filed January 4, 1984, published March 24, 1987.
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Application 11/033,920
III. The Examiner rejects claim 61 under 35 U.S.C. § 103(a) as
unpatentable over Koza in view of Rowe. (See Non-Final Action 6.)
ANALYSIS
Independent claims 60, 61, and 62 are the claims on appeal and each
recites “[a]n electronic gaming system.” (Appeal Br., Claims App.)
Rejection I
Independent claim 60 recites “a secure interface operative to monitor
[an] internal electronic processing device, inputs, outputs and outcomes
where the secure interface device is further operative to interrupt an output
command to disclose [a] wager outcome and deliver a cashless instrument
delineative of the outcome.” (Appeal Br., Claims App., emphases added.)
The Examiner determines that claim 60 does not particularly point out and
distinctly claim the subject matter that the Appellant regards as his
invention. (See Non-Final Action 3.) The Examiner’s concerns arise from
there being “insufficient antecedent basis” for “the secure interface device.”
(Id.)
The Appellant argues that, here, the lack of antecedent basis does not
render the claim indefinite. (See Appeal Br. 9.) According to the Appellant,
“there is no reasonable interpretation for ‘a secure interface operative to
monitor the internal electronic device’ that is inconsistent with ‘a secure
interface device’ when the limitation is read in light of how a person of
ordinary skill in the art would read the claim.” (Id.) Also, according to the
Appellant, “[n]o one skilled in the art would reasonably interpret the first
instance to be anything other than a device.” (Reply Br. 5.)
We are not persuaded by the Appellant’s position because the
Examiner explains that “a secure interface and a secure interface device are
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Application 11/033,920
not necessarily the same thing.” (Answer 9.) For example, according to the
Examiner, a “secure interface could encompass the software used to monitor
the internal processor” (id.) as opposed to, for example, a device distinct
from the internal processor.
Thus, we sustain the Examiner’s rejection of independent claim 60
under 35 U.S.C. § 112, second paragraph.
Rejections II and III
The Examiner’s obviousness rejections of independent claims 60, 61,
and 62 rely upon Rowe as a prior art reference. (See Non-Final Action 3, 6.)
According to the Examiner, “[t]he term secure interface does not appear in
any of the references the Applicant has attempted to claim priority to, only
in the current application” and thus priority “has been limited to the current
application date.” (Id. at 5.) Although the Appellant cites “US 6,840,860,
US 6,146,276 and US 5,908,354 for support for the term ‘secure interface,”’
the Examiner finds “no such support for the limitation.” (Answer 9.)
The Appellant argues that “[sjupport for the term ‘secure interface’
can be found throughout” the references to which priority is claimed; and,
therefore, “Rowe does not predate the filing date of the present application.”
(Appeal Br. 8.) As noted by the Examiner, the Appellant cites to specific
statements in the earlier parent cases regarding a device with a secure
interface. (See id., at 6—8.)
We are persuaded by the Appellant’s position because the paragraphs
cited from parent application provide support for a secure interface device.
For example, the Appellant directs our attention to a statement in a parent
case regarding the inability of the device to “modify the probabilities of
game occurrences.” (Id. at 7, emphasis omitted.) As such, the Examiner
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Application 11/033,920
does not adequately establish that Rowe qualifies as a prior art reference that
can be used to support an obviousness rejection.
Thus, we do not sustain the Examiner’s rejections of independent
claim 60, 61, and 62 under 35 U.S.C. § 103(a).
DECISION
We AFFIRM the Examiner’s rejection of claim 60 under 35 U.S.C.
§112, second paragraph.
We REVERSE the Examiner’s rejections of claims 60—62 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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