T 1553/09 () of 29.11.2011

Summary of Facts and Submissions

I. The appeal concerns the decision of the examining division refusing the European patent application No. 07 005 397 for lack of inventive step (main request and first and second auxiliary requests).

II. The following documents, among others, were cited during the examination proceedings:

D1: XP 2430870 ("Gigaset CL4 SIMpad"),

D4: EP 0 024 184 A2,

D5: US 6 270 410 B1.

III. At the oral proceedings before the board the appellant requested that the decision under appeal be set aside and that a patent be granted in the following version:

- Claims 1-15 as filed during the oral proceedings

- Description pages 1-3, 3a, 3b, 9, 13, 26-27, 33 as filed during oral proceedings, pages 10-12, 14-25, 28-32, 34 as originally filed

- Drawings 1-6 as originally filed.

The request for a referral to the Enlarged Board of Appeal, presented in writing, was withdrawn.

IV. The wording of claim 1 reads as follows:

"1. A hand-held wireless game player device (125) for playing a game of chance having an outcome, the outcome being determined at a master gaming controller (224) of

a gaming machine (2), the hand-held wireless game player device (125) configured as a remote extension on which, in use, the outcome is presented locally but determined by the master gaming controller (224), the wireless game player device (125) comprising:

a wireless communication interface (260) configured for communicating with the master gaming controller (224);

a display screen (126) for displaying a graphical representation of the game of chance;

a sound interface (140) for providing a sound related to the game of chance;

one or more input mechanisms (256) permitting, in use, the input of signals by a user of the wireless game player device (125); and

a microprocessor (254) configured to present the game of chance under control of the master gaming controller (224):

i) to present the game of chance on the

display screen (126); and

ii) to send information from input signals

for playing the game of chance that are generated

from the one or more input mechanisms (256) via

the wireless communication interface (260);

wherein an active communication link (252) for a game play session is established via the wireless communication interface (260) and while the game play session is authorized the hand-held wireless game player device (125) is configured for each game of chance played on the hand-held wireless game player device (125) to:

a) receive one or more input signals via the

one or more input mechanisms (256) to indicate a

wager amount for the game of chance and to

initiate the game of chance;

b) send, over the active communication link (252), a wireless communication (122) containing the wager amount and game initiation inputs received from the one or more input mechanisms;

c) receive at least the outcome for the game

of chance and credit information via the wireless

communication interface (260); and

d) present graphical representations (625)

of the outcome of the game of chance and the

received credit information on the display,

wherein the graphical representations comprise a

sequence of video frames and wherein the wireless

game player device (125) is operable to output

sound associated with the graphical

representations, the game outcome presented

without any need to make local use in the wireless

game player device of mathematical methods that

determine finally the game outcome; and

wherein the hand-held wireless game player device (125) is adapted to automatically effect termination of the wireless game play session over the communication link and to deactivate itself at least after a period of inactivity, thereby preventing further playing of the game of chance on the hand-held wireless game player device until verification and authentication of the user has been established."

V. The appellant argued essentially as follows:

The subject-matter of the independent claim was new and involved an inventive step. In particular, legitimate and reasonable combinations of D4 or D5 with D1 did not lead to the claimed solution but to different solutions.

The objective technical problem of the invention starting from D1 was to maintain the security of a mobile gaming device to mitigate the likelihood of fraudulent misuse of the mobile gaming device.

The device of D1 was not configured as a remote extension to an associated gaming machine that controlled the operations of a game of chance on the remote extension, but rather as a direct wireless interface into a communications network that was accessed through the base station transceiver. However, there was no suggestion that the device was to remain under the permanent control of a base station.

Furthermore, screen-savers were operable to permit the user to lock or obscure the graphical user interface. However, the application of a screen saver did not stop the underlying software applications on the computer from running. Moreover, logging-off required a positive action by the user and is thus different from an automatic action undertaken by the microprocessor to terminate an active session. These technologies would therefore not lead the skilled person to the claimed invention.

Reasons for the Decision

1. Admissibility

The appeal is admissible.

2. Amendments / basis in the earlier application

2.1 In an obiter dictum the examining division expressed the view that the word “thereby” in the last feature of claim 1 was not directly and unambiguously derivable from the application as filed.

However, the board agrees with the appellant in that it follows directly and unambiguously from the original application documents - in particular the paragraph bridging pages 13 and 14; page 15, third paragraph; page 33, last paragraph - that the wireless game play device is in a condition preventing further playing until adequate verification and authentication of the user, when the game play session is terminated and the game player device is deactivated after a period of inactivity. Therefore, the use of the term "thereby" in the concerned feature of claim 1 is justified.

The board is thus satisfied that claim 1 is based on original claim 1 and the description as originally filed (page 5, third paragraph; page 8, second paragraph – page 9, first paragraph; page 13, first paragraph - page 14, second paragraph; page 15, third paragraph; page 33, last paragraph).

Dependent claims 2 to 15 are based on original claims 5-7, 14, 15, 19-23, 29-31 and the description as originally filed (page 19, second paragraph).

The description has been brought into conformity with the amended claims and supplemented with an indication of the relevant content of the state of the art without extending beyond the content of the application as filed.

Accordingly, the board is satisfied that the amendments comply with the requirements of Article 123(2) EPC.

2.2 The application is a divisional application of the application No. 02782084 with a description identical to that of the earlier application. The board is satisfied that the application meets the requirements of Article 76(1), second sentence, EPC 1973, as well.

3. Novelty

3.1 Document D5

3.1.1 Document D5 discloses (column 2, line 66 – column 3, line 33, column 5, lines 7-23) a slot machine 12 comprising reels 38-40 having symbols on them. The reels rotate in response to a player's actuation and are stopped at random positions by the microprocessor 114 of the machine 12. The microprocessor 114 determines if the combination of symbols appearing in a win line matches a predetermined winning combination. In that case a win signal is generated.

Document D5 also describes an embodiment (column 3, line 63 – column 4, line 34; Figure 1) comprising a portable hand-held remote control 14 with buttons 72-75, with which the slot machine can be controlled by use of the emission of a signalling light 84 received by a receptor 86 of the slot machine. In a second embodiment (column 4, lines 35-48; Figure 2) a similar remote control 90 is connected to the slot machine by a cable 92.

Another embodiment (column 4, lines 49-65; Figure 3) comprises a laptop 104 connected to the slot machine by means of wires 102 or via the internet through a modem or portable or remote phone connection, i.e. the connection may be wireless. Actuation of the keys on the keyboard 100 of the laptop 104 generates a signal which is transmitted to the slot machine in order to remotely actuate and control the slot machine.

3.1.2 None of the embodiments envisages the transmission of signals from the slot machine to the remote control or laptop. Even though the laptop 104 may comprise a display screen 106, the latter is not described to show the game of chance or its outcome. Rather, these are shown on the slot machine itself. Thus, the remote control or laptop cannot be regarded as a remote extension on which the outcome is presented locally.

3.1.3 Therefore, the subject-matter of claim 1 differs from document D5 at least in comprising the following features:

(1) the hand-held wireless game player device

(125) configured as a remote extension on

which, in use, the outcome is presented

locally but determined by the master gaming

controller (224),

(2) the wireless game player device (125)

comprising:

a microprocessor (254) configured:

i) to present the game of chance on the

display screen (126);

(3) wherein an active communication link (252)

for a game play session is established via

the wireless communication interface (260)

and while the game play session is

authorized the hand-held wireless game

player device (125) is configured for each

game of chance played on the hand-held

wireless game player device (125) to:

c) receive credit information via

the wireless communication interface (260);

and

d) present graphical representations

(625) of the outcome of the game of chance

And of the received credit information on

the display, wherein the graphical

representations comprise a sequence of video

frames and wherein the wireless game player

device (125) is operable to output sound

associated with the graphical

representations, the game outcome presented

without any need to make local use in the

wireless game player device of mathematical

methods that determine finally the game

outcome; and

(4) wherein the hand-held wireless game player

device (125) is adapted to automatically

effect termination of the wireless game play

session over the communication link and to

deactivate itself at least after a period of

inactivity, thereby preventing further

playing of the game of chance on the hand-

held wireless game player device until

verification and authentication of the user

has been established.

The subject-matter of claim 1 is therefore new over document D5.

3.2 Document D4

3.2.1 Document D4 discloses (page 9, last paragraph – page 13, first paragraph; Figure 2) an amusement machine 21 containing four rotatable discs carrying symbols around their peripheries. When the discs are stationary one of the symbols on each disc is visible through a respective window in the front of the machine. The machine 21 is connected to an inductive loop which runs around the area occupied by the players when they are using the machine.

Each player has a hand-held terminal unit 22 comprising buttons A and B, a numerical display 23, a socket P, and a pick-up loop 26. Credit units are entered into the terminal unit 22 – on payment of a corresponding deposit - using the socket P and are stored in a counter 25 and shown on the display 23.

At the start of a game cycle the machine 21 transmits via the inductive loop a signal which is received by the terminal units 22 via the respective pick-up loops 26. If the player presses then the button A, he participates in the game and his credit is decremented by a fixed amount.

At the end of the game the discs stop in random positions and the machine 21 produces signals to indicate whether they have stopped in certain predetermined winning positions. If they did and the player participated in the game the counter 25 is incremented by an amount depending on the size of the win.

3.2.2 The display 23 is numerical and merely able to indicate the number of credit units owned by the player (D4, page 10, last paragraph). As such it is not capable of representing the game of chance itself, which is characterized by the spinning and subsequently stopped discs, or its outcome.

Furthermore, it is indicated explicitly in D4 that the terminal units 22 are passive devices in that they do not transmit control signals to the machine 21 (page 15, second paragraph). Rather, they are merely able to receive signals from the inductive loop connected to the amusement machine 21.

3.2.3 Therefore, at least the following features of claim 1 are not disclosed in document D4:

— the wireless game player device (125)

comprising:

a display screen for displaying a graphical

representation of the game of chance;

a microprocessor (254) configured:

ii) to send information from input

signals for playing the game of chance that

are generated from the one or more input

mechanisms (256) via the wireless

communication interface (260);

— features (1) to (4) listed above under

point 3.1.3.

The subject-matter of claim 1 is therefore new over document D4.

3.3 Document D1

3.3.1 Document D1 discloses a hand-held, wireless communication device comprising a colour display and a virtual keyboard (first paragraph). The device is connectable to a base station and is capable of wireless reception and transmission of data, of running third party software and of internet browsing (second and third paragraph).

3.3.2 The third party software could well be gaming software as was admitted by the appellant. The device is thus suitable for playing computer games. However, the board agrees with the appellant that any third party software would run locally on the communication device, which therefore cannot be regarded to be "configured as a remote extension" in the sense of claim 1. Furthermore, no such game is actually described in the document and thus no configuration to present the game itself or its outcome.

3.3.3 The subject-matter of claim 1 differs therefore from document D1 at least in comprising the features (1) to (4) listed above under point 3.1.3.

The subject-matter of claim 1 is therefore new over document D1.

3.4 The remaining prior art documents on file are not closer to the subject-matter of claim 1 than the documents referred to above. Claims 2 to 15 are dependent on claim 1 providing further limitations.

Accordingly, the subject-matter of claims 1 to 15 is new (Article 52(1) EPC and Article 54(1) EPC 1973).

4. Inventive step

4.1 Closest state of the art

The closest state of the art for assessing inventive step is normally a document of the state of the art disclosing subject-matter conceived for the same purpose as the claimed invention and having the most relevant technical features in common (see "Case Law of the Boards of Appeal of the European Patent Office", 6th edition 2010, I.D.3.1).

In the decision under appeal document D1 was used as a starting point in the assessment of inventive step. However, that document relates to a wireless communication and information device. Documents D4 and D5, on the other hand, relate to gaming machines and are thus regarded to be conceived for the same purpose as the invention. The embodiment of Figure 3 of document D5 in which the laptop is connected to the slot machine by means of a portable phone connection is structurally the closest to the subject-matter of the claimed invention. This embodiment of document D5 is therefore regarded to represent the closest state of the art.

4.2 Objective technical problem

The subject-matter of claim 1 differs from the closest state of the art at least in comprising the features (1) to (4) (see point 3.1.3 above).

The invention starts from the predicament that game players cannot continue playing while performing an activity which requires them to leave the casino floor area, e.g. getting a meal. The object of the invention is thus to extend the opportunities for playing games of chance beyond traditional casino floor locations in a secure fashion (see page 2, last paragraph - page 3, third paragraph). This is effected by features (1) to (4) in that they

- allow the provision of graphical output at the remote hand-held device (features (1) to (3)), and

- prevent non-authorized persons to use the hand-held device as the device can be played in an area which is not surveyed (feature (4)).

The objective technical problem is therefore to achieve the above object.

4.3 Obviousness

4.3.1 Document D5 aims at allowing players of slot machines to play several machines at the same time and also to sit back comfortably on a chair at a location of three or four feet away from the slot machines like when watching television (column 1, line 66 – column 2, line 5). This is achieved by providing a remote control 14 comprising buttons for controlling the slot machine 12 or a laptop 104 whose keyboard 100 allows the control of the machine.

The player follows the game by observing the gaming machine itself (see column 3, paragraphs 2 and 4; column 5, paragraph 3; column 6, paragraph 3; column 7, paragraphs 3 and 6; column 8, paragraph 2):

- the symbols of simulated or mechanical reels 38-40 are observed at a "win line" of a video or display screen 32 on the slot machine 12; the active state of the win line is signalled to the player by lighting of a lamp or light;

- the pay schedules 116-118, which determine the number of coins dispensed for a particular winning combination of symbols, are shown in a top portion of the slot machine 12; selection of a particular pay schedule can be a function of the contents of an event counter (a relevant event is e.g. the insertion of a coin), which causes the ringing of a bell signal when incremented;

- a visual alarm is signalled at indicator lights 56, 58 on top of the housing of the slot machine 12 when the jackpot has been achieved.

When using the slot machine disclosed in document D5, the player is thus intended to be located relatively closely to the slot machine in order to observe the slot machine as indicated above even when the remote control or laptop is used to control the machine. If the skilled person wanted to solve the posed problem – i.e. to extend the opportunities for playing games of chance beyond traditional casino floor locations in a secure fashion – by providing that the laptop can be moved beyond the casino floor, he would therefore also have to provide for all the above observations to be performed remotely. In view of the major constructional changes to the slot machine necessary for implementing these features, he would not consider such a solution.

4.3.2 In the decision under appeal it is argued that deactivation of a session and prevention of further use was well-known from the situation with a screen-saver on the computer. The person skilled in data processing was familiar with security questions, namely under which circumstances to log off a user.

The board agrees with the appellant in that screen-savers are generally operable to permit the screen to be obscured, but do not automatically terminate any active program or session. Logging-off, on the other hand, generally requires an act by the user and does not happen automatically. By contrast, feature (4) implies that the game play session is automatically terminated after a period of inactivity. Generally known screen-saver or logging-off technology is therefore not regarded to lead the skilled person to implement feature (4) in the device of D5. The question whether he would actually have been aware of these technologies can therefore be left unanswered.

4.4 None of the other prior art documents on file contains a teaching that would lead the skilled person in an obvious way to the subject-matter of claim 1, either. Nor is the subject-matter of claims 2 to 15 considered obvious as these claims are dependent on claim 1.

Accordingly, the subject-matter of claims 1 to 15 involves an inventive step (Article 52(1) EPC and Article 56 EPC 1973).

5. Other requirements of the EPC and conclusion

The description has been brought into conformity with the amended claims in order for them to comply with the requirements of Article 84 EPC 1973. These requirements of the EPC are therefore also satisfied.

In view of the above the appellant's sole request is allowable.

ORDER

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance with the order to grant a patent with the following documents:

Description: pages 1, 2, 3, 3a, 3b, 9, 13, 26, 27, 33

as filed during oral proceedings

pages 10-12, 14-25, 28-32, 34 as

originally filed

Claims: 1-15 as filed during oral proceedings

Drawings: sheets 1/6-6/6 as originally filed.