Kengo Takeda

Patent Trials and Appeals BoardJul 1, 2020

14371366 - (D) (P.T.A.B. Jul. 1, 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. 14/371,366 07/09/2014 Kengo Takeda 1932-0012US01 9678 103906 7590 07/01/2020 Potomac Law Group, PLLC (UEC Applications) 8229 Boone Boulevard Suite 430 Vienna, VA 22182 EXAMINER MYHR, JUSTIN L ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 07/01/2020 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): eofficeaction@appcoll.com kfagin@potomaclaw.com patents@potomaclaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte KENGO TAKEDA ____________________ Appeal 2018-008380 Application 14/371,366 Technology Center 3700 ____________________ Before ANNETTE R. REIMERS, BRANDON J. WARNER, and FREDERICK C. LANEY, Administrative Patent Judges. LANEY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision (dated February 22, 2018, hereinafter “Final Act.”) rejecting claims 1–7 under 35 U.S.C. § 103(a) as unpatentable over Van Baltz (US 2002/0111206 A1, pub. Aug. 15, 2002), Nelson (US 2013/0065667 A1, pub. Mar. 14, 2013), Wells (US 2011/0195775 A1, pub. Aug. 11, 2011), and Araque (US 2012/0109765 A1, pub. May 3, 2012). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Universal Entertainment Corporation and Aruze Gaming America, Inc., as the real parties in interest. Appeal Br. 2. Appeal 2018-008380 Application 14/371,366 2 CLAIMED SUBJECT MATTER The claims relate to a multi-currency system, capable of adding a multi-currency function, which can handle domestic currency bills, foreign currency bills, and barcode tickets, to an existing gaming system having a single currency system. Spec. ¶ 1. Claims 1, 2, and 7 are independent claims. Claim 1 is illustrative of the claimed subject matter and is reproduced below. 1. A multi-currency system comprising: an issuance system including a gaming machine in which a game controller performs game processing; an issuance server which communicates information to issue a barcode ticket for taking out a credit from the gaming machine via a first path connected with the game controller; and a reception system for receiving a bill to perform the game processing in the gaming machine, wherein, in the case of reception of a bill in the currency of a first country, 1) the reception system converts the amount of the bill in the currency of the first country to an amount in the currency of a second country and sends information as to the amount of the bill in the currency of the second country to a reception server via a second, non-transit path, which is different from the first path and which does not go through the game controller, and 2) the reception server sends the information as to the amount of the bill in the currency of the second country to the issuance server. Appeal Br. 16 (Claims App.). OPINION Appellant raises a single dispositive issue regarding the Examiner’s reliance on the combination of Van Baltz, Nelson, Wells, and Araque to establish the obviousness of claims 1–7. See Appeal Br. 9–15. Appellant contends the Examiner’s obviousness determination is an improper Appeal 2018-008380 Application 14/371,366 3 “hindsight-driven effort to reconstruct the claimed invention.” Id. at 13–15. For the following reasons, we are persuaded the Examiner’s rejection of claims 1–7 is deficient. The core of the problem raised by Appellant, and we agree, is that the Examiner combines different parts from different apparatuses disclosed by Van Baltz in a manner directly contrary to what Van Baltz teaches skilled artisans knew at the time. Id. In particular, the Examiner relies on a portion of Figure 1 of Van Baltz to disclose the recited issuance system that communicates information to issue a barcode ticket for taking out a credit from the gaming machine via a first path connected with the game controller, and relies on a portion of Figure 3 of Van Baltz to disclose the recited reception system, including configuring the reception system to send information regarding an amount of a currency received to the issuance server via a non-transit path that is separate from the communication path requiring the game controller. Final Act. 3–4, 6–7, 11–13. Notably, however, Van Baltz teaches that the configuration of the issuance and reception system Figure 3 discloses is “similar to FIG. 1” except “that the bill validator and ticket reader 316, ticket printer 318, and cashout signal 134 are connected directly to the game interface 312 rather than to the game controller 108.” Van Baltz ¶ 37. Exploiting “the fact that the game controller 108 does not have to be aware of the source of game credit,” Van Baltz teaches physically and logically divorcing the bill validator and game cashout signal from the game controller. Id. ¶ 36. Van Baltz describes the configuration of Figure 3 as allowing “the game interface 312 may exercise control over the bill validator and ticket reader 316, and ticket printer 318” and, “[f]urthermore, the game Appeal 2018-008380 Application 14/371,366 4 interface, not the game controller, responds to a game cashout signal 134.” Id. ¶ 38 (emphasis added). Van Baltz states, “[t]he ability to correctly print tickets is ensured by transferring control of the game cashout signal from the game controller to the game machine interface.” Id. ¶ 64 (emphasis added). In response to Appellant’s contention that Van Baltz teaches against the proposed combination of components from Figures 1 and 3, the Examiner disagrees because “as shown by Fig. 1[,] using the previous communication method is shown to work for the intended devices and therefore maintaining a previous communication method for one of the devices would still work for the system as a whole.” Final Act. 15. In addition, the Examiner states that Nelson shows “that it is an obvious feature to not remove all previous embodiments (i.e. original structure) when upgrading to a new feature since by only including some of the new features a gaming operator is able to selectively choose which device is upgraded and avoids the additional cost/time of upgrading the entire system.” Id. at 14. Furthermore, the Examiner states that “[i]t is a well-understood concept that a device or system need not [] be fully upgraded at one time since if a part of the device or system is still working in an acceptable fashion it is often cheaper to leave it.” Id. The Examiner maintains and repeats these positions in the Answer. See Ans. 3–4. The Examiner erred by dismissing Van Baltz’s teachings against including the game controller within a path of communication for taking out a credit from the gaming machine when utilizing a reception system that sends information regarding the amount of currency to the issuance server via a second non-transit path, which does not go through the game Appeal 2018-008380 Application 14/371,366 5 controller. It appears the Examiner has allowed hindsight to corrupt the obviousness determination. The Examiner’s reasoning is deficient in its conclusion that a skilled artisan would have had a motivation to combine the reception system disclosed in Figure 3 and its use of a second non-transit path, which does not go through the game controller, with the portion of the issuance system disclosed in Figure 1 that relies on the gaming controller as the path of communication for handling the cash out signal. First, we agree with Appellant that Van Baltz teaches against making this combination. See Van Baltz ¶¶ 3, 36–38, 64. And the Examiner’s suggestion that this evidence can be dismissed because the apparatus shown in Figure 1 works is not persuasive. This position fails to provide a rational basis to explain why a skilled artisan would have known to act directly contrary to the teachings of Van Baltz to keep the communication paths of the issuance and reception systems of Figure 3 separate and independent of the communication paths through the gaming controller. In addition, the Examiner’s reliance on Nelson to show the general proposition that a skilled artisan knew “to not remove all previous embodiments (i.e. original structure) when upgrading to a new feature since by only including some of the new features a gaming operator is able to selectively choose which device is upgraded and avoids the additional cost/time of upgrading the entire system” (Final Act. 14; see also Ans. 3) only establishes that a skilled artisan would have understood Figures 1 and 3 of Van Baltz would have allowed for the components to be combined in the manner claimed. However, that understanding seems to say no more than a skilled artisan presented with Figures 1 and 3 of Van Baltz would have understood that they could be combined in the manner claimed. The Federal Appeal 2018-008380 Application 14/371,366 6 Circuit has held “that [this] is not enough: it does not imply motivation to pick out those two references and combine them to arrive at the claimed invention.” Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993–94 (Fed. Cir. 2017). Therefore, because the above deficiency exists in the reasoning relied upon by the Examiner to reject claims 1–7, either directly for the independent claims or indirectly for the dependent claims, we do not sustain the Examiner’s obviousness rejection. CONCLUSION The Examiner’s rejection of claims 1–7 is reversed. DECISION SUMMARY Claims Rejected 35 U.S.C. § References Affirmed Reversed 1–7 103(a) Van Baltz, Nelson, Wells, Araque 1–7 REVERSED