DATE FILED: 09/20/2013
`DOCUMENT NO: 112.015
`On behalf of: Junior Party Zynga Inc.
`By:
`
`Brenton R. Babcock
`Frederick S. Berretta
`Eric M. Nelson
`Derek Bayles
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`(949) 760-0404
`Tel:
`Fax:
`(949) 760-9502
`E-mail: BoxZynga@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`Zynga Inc.
`Junior Party
`(Application 10/658,836
`Inventors: Rolf E. Carlson and Michael W. Saunders),
`
`v.
`
`IGT
`Senior Party
`(Patent 7,168,089
`Inventors: Binh T. Nguyen, Michael M Oberberger and
`Gregory Hopkins Parrott).
`________________________
`
`Patent Interference No. 105,747 (RES)
`(Technology Center 2400)
`________________________
`
`SECOND DECLARATION OF CHARLES R. BERG
`
`Zynga Ex. 2015
`Zynga v. IGT
`Interference 105,747 (RES)
`
`Board Assigned Page #1368
`
`IGT EXHIBIT 2007
`Zynga v. IGT, IPR2022-00199
`
`

`

`I, Charles R Berg, do hereby declare as follows:
`
`1.
`
`My experience and qualifications are summarized in my first declaration. (Ex.
`
`2001 at ¶¶ 1-9.) All of the information in those paragraphs is correct except that I am no
`
`longer a Lead Systems Engineer at Station Casinos.
`
`Instead, I currently own and operate a
`
`Business and Technology consulting business. My clients are primarily, but not exclusively,
`
`in the gaming industry. My services focus on software development and include team
`
`leadership, project management, software architecture and design, and coding.
`
`2.
`
`I have been asked by counsel for Zynga to review relevant materials and render
`
`my expert opinion in connection with technical matters related to the following Zynga
`
`motions:
`
`Zynga Motion 1 to substitute a new count;
`
`Zynga Motion 2 to be accorded the benefit of the relied-upon priority
`applications for the Zynga application-in-interference; and
`
`Zynga Motion 3 that the claims of IGT's patent-in-interference are invalid.
`
`3.
`
`In order to render my opinions in these matters, I have reviewed the following
`
`materials:
`
`’836
`("the Carlson
`Zynga's U.S. Patent Application 10/658,836
`application" or simply "the ’836 application") (Exs. 1002-1004), and its
`prosecution history (Exs. 2016-2031);
`
`The relied-upon priority applications for the Carlson ’836 application,
`including U.S. Patent 7,260,834 ("the Carlson ’834 patent" or simply "the
`’834 patent") (Ex. 2005) and U.S. Provisional Patent Application
`60/161,591 ("the Carlson ’591 provisional application" or simply "the
`’591 provisional application") (Ex. 2002);
`
`IGT's U.S. Patent 7,168,089 ("the Nguyen ’089 patent" or simply "the
`’089 patent") (Ex. 1001), and its prosecution history (Exs. 2032-2034);
`
`U.S. Patent 6,805,634 issued to Wells et al. ("the Wells ’634 patent") (Ex.
`1006), which was cited in the prosecution history of the Carlson ’836
`
`1
`
`Board Assigned Page #1369
`
`

`

`application and the Nguyen ’089 patent;
`
`U.S. Patent 5,643,086 issued to Alcorn et al. ("the Alcorn ’086 patent")
`(Ex. 1007), which was cited in the prosecution history of the Carlson ’836
`application and the Nguyen ’089 patent;
`
`U.S. Patent 4,636,951 issued to Harlick ("the Harlick ’951 patent") (Ex.
`2014), which was cited in the prosecution history of the Carlson ’836
`application;
`
`IGT's Motion 1 (no interference-in-fact) (Paper 25);
`
`The Board's decision on IGT's Motion 1 (Paper 50); and
`
`All other exhibits referred to in this declaration.
`
`I. SUBSTITUTION OF A NEW COUNT
`
`4.
`
`I understand that Zynga is filing a motion to substitute a new count in this
`
`interference. Count 1 of this interference has been defined as the "subject matter of Claim 1
`
`or Claim 28 or Claim 52 or Claim 65 of Claim 84 or Claim 103 or Claim 123 of Patent
`
`7,168,089." (Paper 1 at 4.) In other words, Count 1 of the interference includes the subject
`
`matter of all of the independent claims of the Nguyen ’089 patent. I understand that the new
`
`count being proposed by Zynga still includes the subject matter of all of the independent
`
`claims of the Nguyen ’089 patent, if they are found to be patentable. However, the new
`
`count being proposed by Zynga also includes the subject matter of all of the independent
`
`claims of the Carlson ’836 application. If the independent claims of the Nguyen ’089 patent
`
`are found to be unpatentable (see infra at ¶¶ 169-255, regarding Zynga Motion 3), then I
`
`understand that they are to be excluded from the proposal for the new count. The following
`
`table defines the existing count and the Proposed Substitute Count:
`
`2
`
`Board Assigned Page #1370
`
`

`

`IGT Claims
`(U.S. Pat. 7,168,089)
`
`Zynga Claims
`(U.S. Pat. App. 10/658,836)
`
`Existing Count 1
`
`1, 28, 52, 65, 84, 103, 123
`
`None
`
`Proposed Substitute
`Count
`(If Zynga's Motion 3 is Not
`Granted)
`Proposed Substitute
`Count
`(If Zynga's Motion 3 is
`Granted)
`
`1, 28, 52, 65, 84, 103, 123
`
`29, 56, 93, 112, 131, 151, 165, 166
`
`None
`
`29, 56, 93, 112, 131, 151, 165, 166
`
`5.
`
`I understand that the purpose of a count is to serve as a description of the
`
`interfering subject matter, and to define the scope of the proof which either party must
`
`present in order to establish its priority of invention in an interference. I further understand
`
`that a motion to substitute a broader count involves a discussion of the moving party's best
`
`proof to establish priority of invention, a showing that the best proof lies outside the scope of
`
`the existing count, and a showing that the substitute count is not unduly broad as compared to
`
`the best proof of priority. I understand that a substitute count must be shown to be patentable
`
`over the prior art. Finally, I understand that a substitute count must "interfere in fact" with at
`
`least one of the opposing party's claims, meaning that the substitute count anticipates or
`
`renders obvious at least one of the opposing party's involved claims, and vice versa.
`
`A.
`
`Zynga's Best Proof of Priority Relates to Its Remote Gameplay Embodiment
`
`6.
`
`Zynga's best proof for establishing priority of invention in this interference is
`
`related to the remote gameplay embodiment that is illustrated in, for example, Figure 4 of the
`
`Carlson ’591 provisional application. The remote gameplay embodiment is also illustrated
`
`3
`
`Board Assigned Page #1371
`
`

`

`and described substantively identically in the Carlson ’834 patent and in the Carlson ’836
`
`application. A copy of this figure is reproduced below.
`
`7.
`
`Figure 4 illustrates a remote computer 150, a gaming machine 120, a gaming
`
`server 110, and a certificate authority server 300. Each of these devices is communicatively
`
`coupled to the others via networks 130 and 140. The system shown in Figure 4 can be used
`
`to enable a player using the remote computer 150 to connect to, and play, a specific gaming
`
`machine (e.g., 120-124) that is located in a casino. (See, e.g., Ex. 2002 at page 22, lines 4-
`
`20.)
`
`8.
`
`In the remote gameplay embodiment, the remote computer 150 makes a request to
`
`the gaming server 110 to "connect to and play a specific gaming machine 120-124 that is
`
`located in a casino." (Ex. 2002 at page 22, lines 4-7.)
`
`If the gaming server 110 authorizes
`
`the request, the remote computer 150 connects to the gaming machine 120 for a gameplay
`
`4
`
`Board Assigned Page #1372
`
`

`

`session, which results in the transfer of gaming information between these devices.
`
`(Ex.
`
`2002 at page 24, lines 9-15.) The gaming information can include, for example, data
`
`transmitted from the remote computer 150 that is necessary to allow the user to "interact with
`
`the gaming machine 120," as well as a "digital representation [from the gaming machine 120]
`
`of the game being played." (Ex. 2002 at page 24, lines 9-15.) The remote gameplay
`
`embodiment is discussed extensively in this declaration. (Infra at ¶¶ 105-168.)
`
`B.
`
`The Proof of the Remote Gameplay Embodiment Lies outside the Scope of
`Existing Count 1
`
`9.
`
`As mentioned above, Count 1 of this interference is currently defined as including
`
`the subject matter of the independent claims of the Nguyen ’089 patent. (Paper 1 at 4.) As
`
`discussed further herein, each of the independent claims of the Nguyen ’089 patent relates to
`
`the transfer of "gaming software." Claim 103 is generally representative of the independent
`
`claims of the Nguyen ’089 patent in this respect. Claim 103 reads as follows (emphasis
`
`added):
`
`to
`
`103. A software authorization agent for facilitating the transfer
`of gaming software between a plurality of gaming devices, the software
`authorization agent comprising:
`the authorization agent
`a network
`interface allowing
`communicate with each of the plurality of gaming devices; and
`a processor configured or designed to
`(i) receive gaming software transfer requests via the
`network interface from a first gaming device for the transfer of
`gaming software from the first gaming device to a second
`gaming device
`(ii) approve or reject the gaming software transaction
`request; and
`(iii) send an authorization message to the first gaming
`device wherein the authorization message includes information
`indicating whether the first gaming device is authorized to
`transfer the gaming software to a second gaming device;
`wherein, the gaming software is for at least one of a) a game of
`chance played on a gaming machine, b) a bonus game of chance played on
`a gaming machine, c) a device driver for a for a device installed on a
`
`5
`
`Board Assigned Page #1373
`
`

`

`gaming d) a player tracking service on a gaming machine and e) an
`operating system installed on a gaming machine.
`
`Thus, Claim 103 of the Nguyen 09 patent describes a "software authorization agent for
`
`facilitating the transfer of gaming software between a plurality of gaming devices." Claim
`
`103 states that the "software authorization agent" receives "gaming software transfer
`
`requests," which it approves or rejects. The "software authorization agent" then sends a
`
`message to a gaming device indicating whether the device is "authorized to transfer the
`
`gaming software" to another gaming device. The remaining independent claims of the
`
`Nguyen ’089 patent similarly involve the transfer of "gaming software" between gaming
`
`devices.
`
`10.
`
`As just discussed, the independent claims of the Nguyen ’089 patent that currently
`
`make up Count 1 of this interference all involve the transfer of "gaming software" between
`
`first and second gaming devices. As discussed further herein, Carlson's proof relating to the
`
`remote gameplay embodiment, including the disclosure of the Carlson ’836 application and
`
`its priority applications, is very similar to Claim 103 of the Nguyen ’089 patent (as well as
`
`Nguyen's other claims) except that the remote gameplay embodiment does not disclose the
`
`transfer of "gaming software" specifically. Instead, Carlson's remote gameplay embodiment
`
`involves the transfer of "gaming information," more generally (gaming information is
`
`inclusive of "gaming software"), between first and second gaming devices.
`
`11.
`
`As discussed further herein, a person having ordinary skill in the art would
`
`understand "gaming information" to include "any information associated with game play or a
`
`gaming device." (Infra at ¶¶ 93-99.)
`
`In contrast, a person having ordinary skill in the art
`
`would understand "gaming software" to have the narrower definition of "one or more
`
`software components which may be executed on a gaming device or machine." (Infra at ¶
`
`6
`
`Board Assigned Page #1374
`
`

`

`178.) Because "gaming software" is "associated with game play" in that it includes computer
`
`instructions for carrying out game play, a person having ordinary skill in the art would
`
`understand "gaming software" as a specific type of "gaming information." In other words, a
`
`person having ordinary skill in the art would understand "gaming software" as a species of
`
`the "gaming information" genus. This position is further supported by the fact that the
`
`specification of the Nguyen ’089 patent explicitly and repeatedly states that "gaming
`
`software" is included within the scope of the meaning of the term "gaming information." For
`
`example, the Nguyen ’089 patent repeatedly refers to "gaming software and other gaming
`
`information." (Ex. 1001 at 27:4-5; 27:31-32) (emphasis added).
`
`12.
`
`Because "gaming information" (as in Carlson's remote gameplay embodiment) is
`
`broader than, albeit inclusive of, "gaming software," the proof of Carlson's remote gameplay
`
`embodiment does not fall within the scope of Claim 103 of the Nguyen ’089 patent. Further,
`
`because Claim 103 is representative of the breadth of the claims that currently make up
`
`Count 1 of this interference in terms of involving the transfer of "gaming software," the proof
`
`of the remote gameplay embodiment likewise does not fall within the scope of the current
`
`Count 1. This is illustrated in the following diagram.
`
`7
`
`Board Assigned Page #1375
`
`

`

`C.
`
`The Proposed Substitute Count is Not Unduly Broad as Compared to the Best
`Proof of Priority
`
`13.
`
`As just discussed, the proof of Carlson's remote gameplay embodiment lies
`
`outside the scope of the existing Count 1 because it involves the transfer of "gaming
`
`information" rather than the more narrow "gaming software" that is discussed in the claims of
`
`the Nguyen ’089 patent that make up Count 1. Similarly, the claims of the Carlson ’836
`
`application, which are included in the Proposed Substitute Count, are different from the
`
`existing count in that they discuss the transfer of "gaming information" rather than the more
`
`narrow "gaming software." Thus, the Proposed Substitute Count is broader than the existing
`
`Count 1 in the same way that the remote gameplay embodiment is broader than the existing
`
`count. Therefore, the Proposed Substitute Count is not unduly broad as compared to Zynga's
`
`best proof of priority.
`
`D.
`
`The Proposed Substitute Count Is Patentable over the Prior Art
`
`14.
`
`I have reviewed the prosecution history of the Carlson ’836 application (Exs.
`
`2016-2031.)
`
`I see that, in a paper dated October 26, 2009, the claims of the Carlson ’836
`
`application were found by the United States Patent and Trademark Office to be patentable
`
`over the prior art. (Ex. 2031 at 5.)
`
`15.
`
`Notwithstanding the examiner's decision to allow the claims of the Carlson ’836
`
`application, I have reviewed the prior art cited by the examiner during prosecution to ensure
`
`that I agree that the claims are patentably distinct from the prior art of record.
`
`16.
`
`In an office action dated August 14, 2006, the examiner first rejected the claims of
`
`the Carlson ’836 application as being obvious in view of the combination of U.S. Patent
`
`6,805,634 issued to Wells et al. (the Wells ’634 patent) (Ex. 1006) and U.S. Patent 5,643,086
`
`issued to Alcorn et al. (the Alcorn ’086 patent) (Ex. 1007.) (Ex. 2016 at 4.) I note that the
`
`8
`
`Board Assigned Page #1376
`
`

`

`same two references were cited in an obviousness rejection of the claims of the Nguyen ’089
`
`patent on February 8, 2006. (Ex. 2032 at 3.)
`
`17.
`
`The Wells ’634 patent teaches a system and method for remotely transferring
`
`programming information from a central computer 116 or a local server 114 to a gaming
`
`terminal 112 over a network. (Ex. 1006 at 6:14-67.) The programming information is
`
`software that can be used to "reprogram gaming terminals, e.g. to accommodate new games,
`
`regulatory changes, correct bugs or other programming errors, install new features and the
`
`like." (Ex. 1006 at 3:30-36.)
`
`18.
`
`The Alcorn ’086 patent teaches a read-only memory (ROM) for use in an
`
`electronic casino gaming system. The ROM, which is installed in the electronic casino
`
`gaming system, stores data that is used in an authentication procedure to determine whether
`
`the casino gaming system is permitted to execute gaming software.
`
`(Ex. 1007 at Abstract.)
`
`Specifically, the ROM authenticates that the gaming software that is being loaded into the
`
`memory of the gaming machine is the same as what the software manufacturer intended to be
`
`loaded, as well as the same as the software that was approved by the relevant regulating
`
`body. (Ex. 1007 at 1:8-5:54.)
`
`19.
`
`In my opinion, the Wells ’634 patent and the Alcorn ’086 patent do not
`
`individually or collectively teach an "authorization agent" that sends a message to a "first
`
`gaming device" that includes information authorizing the "first gaming device" to transfer
`
`"gaming information" to a "second gaming device." For example, in the Wells ’634 patent,
`
`programming information is transferred between the central computer 116 and the gaming
`
`terminal 112 without first requiring the receipt of an authorization message from an
`
`authorization agent. (Ex. 1006 at 6:14-67.) To the extent that authorization is performed
`
`9
`
`Board Assigned Page #1377
`
`

`

`before transferring data, this is handled by the central computer 116 and the gaming terminal
`
`112 themselves, not by an authorization agent. (Ex. 1006 at 8:12-67.) With respect to the
`
`Alcorn ’086 patent, the ROM performs authentication of game data after the game data has
`
`been transferred to the gaming system, not authorization of the game data transfer before the
`
`transfer occurs. (Ex. 1007 at 3:13-15.) The Alcorn system does not require an authorization
`
`message from an authorization agent prior to transferring the game data.
`
`20.
`
`Each of the independent claims of the Carlson ’836 application refers to an
`
`"authorization agent" that sends a message to a "first gaming device" that includes
`
`information authorizing the "first gaming device" to transfer "gaming information" to a
`
`"second gaming device," or similar language. Because this feature is not taught by the Wells
`
`’634 patent nor the Alcorn ’086 patent, nor the combination of the same, the independent
`
`claims of the Carlson ’836 application are patentable over the Wells and Alcorn prior art.
`
`Further, each of the independent claims of the Nguyen ’089 patent recites a similar, but
`
`narrower, feature involving gaming software. Therefore, the claims of the Nguyen ’089
`
`patent are likewise patentable over the combination of the Wells ’634 patent and the Alcorn
`
`’086 patent.
`
`21.
`
`I note that the claim rejections in both the Carlson ’836 application and the
`
`Nguyen ’089 patent that were based on the combination of the Wells ’634 patent and the
`
`Alcorn ’086 patent were successfully overcome. (Ex. 2021 at 5; Ex. 2034 at 3.) In a paper
`
`dated October 31, 2007, the examiner for the Carlson ’836 application did, however, raise a
`
`subsequent rejection which was based on the combination of U.S. Patent 4,636,951 issued to
`
`Harlick (the Harlick ’951 patent) and the Wells ’634 patent. (Ex. 2025 at 4-5.)
`
`10
`
`Board Assigned Page #1378
`
`

`

`22.
`
`The Harlick ’951 patent teaches a system in which several poker machines are
`
`connected together and to a central controller via a communications network. (Ex. 2014 at
`
`2:29-32.) The system allows player credits on each poker machine to be adjusted remotely
`
`by the central controller. (Ex. 2014 at 2:57-61.) According to the Harlick ’951 patent, the
`
`central computer initiates all requests on the communication network, and the individual
`
`poker machines "speak only when they are spoken to." (Ex. 2014 at 3:49-51.) The Harlick
`
`’951 patent does not disclose authorization or authentication of communications between the
`
`central controller and the poker machines.
`
`23.
`
`The central computer disclosed in the Harlick ’951 patent was cited as an
`
`"authorization agent" that receives a request from a "first gaming device" to transfer "gaming
`
`information" to a "second gaming device." (Ex. 2025 at 5.) In addition, the central computer
`
`in the Harlick ’951 patent was cited as an "authorization agent" that sends a message to a
`
`"first gaming device," wherein the message includes information authorizing the "first
`
`gaming device" to transfer "gaming information" to a "second gaming device." (Ex. 2025 at
`
`5.) However, as just discussed, in the Harlick system, the central computer "initiates all
`
`responses." (Ex. 2014 at 3:49.) Therefore, the central computer in the Harlick system is not
`
`an "authorization agent" that receives a request from a "first gaming device" to transfer
`
`"gaming information" to a "second gaming device." Further, the Harlick ’951 patent does
`
`not disclose that the poker machines communicate with one another. Instead, all
`
`communication is routed through the central computer. (Ex. 2014 at 3:49-51.) Accordingly,
`
`the central computer disclosed in the Harlick ’951 patent is not an "authorization agent" that
`
`sends a message to a "first gaming device" that includes information authorizing the "first
`
`gaming device" to transfer "gaming information" to a "second gaming device."
`
`11
`
`Board Assigned Page #1379
`
`

`

`24.
`
`As discussed above, neither the Harlick ’951 patent nor the Wells ’634 patent, nor
`
`the combination of the same, teaches an "authorization agent" that sends a message to a "first
`
`gaming device" that includes information authorizing the "first gaming device" to transfer
`
`"gaming information" to a "second gaming device." Because the independent claims of the
`
`Carlson ’836 application and the Nguyen ’089 patent recite this, or a similar, feature, the
`
`independent claims of the Carlson ’836 application and the Nguyen ’089 patent are
`
`patentable over the Harlick and Wells prior art.
`
`25.
`
`I am not aware of any material prior art that would render the claims of the
`
`Carlson ’836 application unpatentable. Further, I am not aware of any prior art, other than
`
`the Carlson ’834 patent, that would render the claims of the Nguyen ’089 patent
`
`unpatentable. My views on the unpatentability of the claims of the Nguyen ’089 patent in
`
`view of the Carlson ’834 patent are discussed below. (Infra at ¶¶ 169-255.)
`
`E.
`
`The Claims of the Carlson ’836 Application that are Included in the Proposed
`Substitute Count Interfere in Fact with the Claims of the Nguyen ’089 Patent
`
`26.
`
`I understand that a substitute count in an interference should "interfere in fact"
`
`with at least one of the opposing party's involved claims. I understand that an "interference
`
`in fact" exists if the independent claims of the Carlson ’836 application, which are included
`
`in the Proposed Substitute Count and which describe the remote gameplay embodiment,
`
`anticipate or render obvious at least one of the claims of the Nguyen ’089 patent, and vice
`
`versa.
`
`In other words, I understand that an "interference in fact" exists if there is no
`
`patentable distinction between the independent claims of the Carlson ’836 application and the
`
`claims of the Nguyen ’089 patent. I understand that "anticipation" is found if the Proposed
`
`Substitute Count includes each and every feature of at least one of the claims of the Nguyen
`
`’089 patent, or vice versa. Further, I understand that "obviousness" is found if at least one of
`
`12
`
`Board Assigned Page #1380
`
`

`

`the claims of the Nguyen ’089 patent would have been considered obvious in view of the
`
`Proposed Substitute Count, or vice versa.
`
`27.
`
`I understand that claim limitations that describe nonfunctional descriptive
`
`material cannot be used to provide a patentable distinction between the independent claims of
`
`the Carlson ’836 application and the independent claims of the Nguyen ’089 patent. In the
`
`context of computer-related inventions, I understand that nonfunctional descriptive material
`
`is identified by determining whether the material in question has a new and non-obvious
`
`functional relationship with the computer system. If the claimed computer system or method
`
`differs from the prior art computer system or method only in the content of such material in
`
`question such that the content of the material does not functionally affect the computer
`
`system or method, then the material is said to be nonfunctional descriptive material. I
`
`understand that nonfunctional descriptive material that is recited in a claim is not entitled to
`
`patentable weight.
`
`28.
`
`I understand that the determination of obviousness is made from the perspective
`
`of a person having ordinary skill in the art who is presumed to be aware of all prior art. I
`
`further understand that the determination of obviousness in this instance involves
`
`consideration of the scope and content of the independent claims of the Carlson ’836
`
`application and the independent claims of the Nguyen ’089 patent, the differences between
`
`Carlson's claims and Nguyen's claims, and the level of ordinary skill in the art.
`
`29.
`
`In my opinion, a person having ordinary skill in the art would have the following
`
`education and experience: an undergraduate degree in a science or technology field, such as
`
`electrical engineering, math, or computer science (or at least five years of professional
`
`13
`
`Board Assigned Page #1381
`
`

`

`software development experience in place of such an undergraduate degree); and three or
`
`more years of software development experience in the gaming industry specifically.
`
`1.
`
`Claim 131 of the Carlson ’836 Application Interferes in Fact with Claim 103
`of the Nguyen ’089 Patent
`
`30.
`
`A person having ordinary skill in the art would find that Claim 131 of the Carlson
`
`’836 application and Claim 103 of the Nguyen ’089 patent interfere in fact. As illustrated in
`
`the following chart, Claim 103 of the Nguyen ’089 patent and Claim 131 of the Carlson ’836
`
`application share many similarities. Both claims are reproduced in the chart and differences
`
`are highlighted with bold text.
`
`Claim 103 of the Nguyen ’089 Patent
`A software authorization agent
`for
`facilitating the transfer of gaming software
`between a plurality of gaming devices, the
`software authorization agent comprising:
`a
`network
`interface
`allowing
`the
`authorization agent to communicate with
`each of the plurality of gaming devices; and
`a processor configured or designed to
`receive gaming
`software
`transfer
`(i)
`requests via the network interface from a
`first gaming device for the transfer of
`gaming software from the first gaming
`device to a second gaming device
`(ii) approve or reject the gaming software
`transaction request; and
`(iii) send an authorization message to the
`first gaming device wherein the authorization
`message
`includes
`information
`indicating
`whether the first gaming device is authorized
`to transfer the gaming software to a second
`gaming device;
`
`Claim 131 of the Carlson ’836 Application
`An authorization agent for facilitating the
`transfer of gaming information between a
`plurality
`of
`gaming
`devices,
`the
`authorization agent comprising:
`the
`a
`network
`interface
`allowing
`authorization agent to communicate with
`each of the plurality of gaming devices; and
`a processor configured or designed to
`(i) receive gaming information transfer
`requests via the network interface from a
`first gaming device for the transfer of
`gaming [information]1
`from
`
`the first
`gaming device to a second gaming device
`(ii) approve or reject the gaming transaction
`request
`(iii) send a message to the first gaming
`device wherein
`the message
`includes
`information authorizing the first gaming
`device to transfer the gaming information to
`the second gaming device wherein the first
`gaming device and the second gaming
`device are separate from the authorization
`agent, whereby the first gaming device
`transfers the gaming information to the
`
`
`
`1 The missing word "information" here is clearly a typographical error.
`
`14
`
`Board Assigned Page #1382
`
`

`

`second gaming device in response to the
`message,
`wherein the gaming information is for a
`game of chance played on a gaming machine.
`
`wherein, the gaming software is for at least
`one of a) a game of chance played on a
`gaming machine, b) a bonus game of
`chance played on a gaming machine, c) a
`device driver for a for a device installed on
`a gaming d) a player tracking service on a
`gaming machine and e) an operating
`system installed on a gaming machine.
`
`31.
`
`There are four differences between Claim 103 of the Nguyen ’089 patent and
`
`Claim 131 of the Carlson ’836 application. However, as discussed below, none of these
`
`differences renders these two claims patentably distinct.
`
`32.
`
`The primary difference between Claim 103 of the Nguyen ’089 patent and Claim
`
`131 of the Carlson ’836 application is that Nguyen's Claim 103 discusses the transfer of
`
`"gaming software" between first and second gaming devices, whereas Carlson's Claim 131
`
`discusses the transfer of "gaming information."
`
`I also note that, because it involves the
`
`transfer of "gaming software," Nguyen's Claim 103 also uses other terms which are
`
`somewhat different than the corresponding terms in Carlson's Claim 131. For example,
`
`Nguyen's Claim 103 refers to a "software authorization agent" instead of an "authorization
`
`agent." In addition, it refers to "gaming software transfer requests" instead of "gaming
`
`information transfer requests." However, these minor distinctions in terminology merely
`
`reflect the fact that Nguyen's Claim 103 relates more narrowly to the transfer of "gaming
`
`software" rather than "gaming information," as in Carlson's Claim 131. These differences in
`
`terminology, as well as other similar differences in terminology found in other claims, do not
`
`constitute further distinctions between Nguyen's claims and Carlson's claims.
`
`Instead, they
`
`15
`
`Board Assigned Page #1383
`
`

`

`are incidental to, and part of, the "gaming software" limitations that are found throughout
`
`Nguyen's independent claims.
`
`33.
`
`In Nguyen's Claim 103, the difference of "gaming software" versus "gaming
`
`information" is a distinction only in the content of the information that is requested to be
`
`transferred to the second gaming device. For example, in both claims (Nguyen's Claim 103
`
`and Carlson's Claim 131), the first gaming device sends a request to an authorization agent to
`
`receive authorization for transferring data to a second gaming device. In both claims, the
`
`authorization agent responds to the first gaming device with a message that authorizes the
`
`transfer of data to the second gaming device.
`
`34.
`
`The specific nature of the data, whether it be "gaming software" or some other
`
`type of "gaming information," does not functionally affect the computer systems described in
`
`Claim 103 of the Nguyen ’089 patent and Claim 131 of the Carlson ’836 application.
`
`Perhaps this can be seen most clearly by noting that the "gaming software" in Claim 103 is
`
`not acted upon by the first gaming device, the software authorization agent, or the second
`
`gaming device other than being transferred from the first gaming device to the second
`
`gaming device. Further, the content of the "gaming software" does not functionally affect
`
`this transfer of data. Accordingly, in my opinion, a person having ordinary skill in the art
`
`would consider the "gaming software" as nonfunctional descriptive material that is not
`
`entitled to patentable weight.
`
`35. Moreover, even if the "gaming software" is entitled to patentable weight, it still
`
`does not patentably distinguish Claim 103 of the Nguyen ’089 patent from Claim 131 of the
`
`Carlson ’836 application because the prior art Wells ’634 patent renders this feature obvious.
`
`16
`
`Board Assigned Page #1384
`
`

`

`36.
`
`The Wells ’634 patent teaches a system and method for remotely transferring
`
`programming information from a central computer 116 or a local server 114 to a gaming
`
`terminal 112 over a network. (Ex. 1006 at 6:14-67.) The programming information is
`
`software that can be used to "reprogram gaming terminals, e.g. to accommodate new games,
`
`regulatory changes, correct bugs or other programming errors, install new features and the
`
`like." (Ex. 1006 at 3:30-36.)
`
`37.
`
`The Wells ’634 patent teaches that it is desirable to provide a secure method for
`
`downloading the software. (Ex. 1006 at 8:12-10:53.) The Wells ’634 patent teaches that it is
`
`desirable to remotely transfer gaming software between gaming devices because doing so is
`
`less labor-intensive and less costly than locally transferring the software. (See, e.g., Ex. 1006
`
`at 3:37-45.)
`
`In view of these teachings of the Wells ’634 patent, a person having ordinary
`
`skill in the art would have found it obvious to use the system described in Claim 131 of the
`
`Carlson ’836 application to transfer gaming software between gaming machines.