Ex Parte Burak et al

Board of Patent Appeals and Interferences

Jul 29, 2011

10400239 (B.P.A.I. Jul. 29, 2011)

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.
10/400,239 03/27/2003 Gilbert J. Q. Burak 247079-000151USPT 4776
70243 7590 07/29/2011
NIXON PEABODY LLP
300 S. Riverside Plaza
16th Floor
CHICAGO, IL 60606
EXAMINER
COBURN, CORBETT B
ART UNIT PAPER NUMBER
3714
MAIL DATE DELIVERY MODE
07/29/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GILBERT J. Q. BURAK, PETER DORN,
JACOB C. GREENBERG and FRANCISCO J. PAZ
____________

Appeal 2009-011264
Application 10/400,239
Technology Center 3700
____________

Before JOHN C. KERINS, KEN B. BARRETT and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE 1
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s 2
decision finally rejecting claims 1-7, 19, 20, 34, 35, 41, 42, 44 and 48 under 3
35 U.S.C. § 103(a) as being unpatentable over Davids (US 4,517,558, issued 4
May 14, 1985) and the Appellants’ Specification at page 23, lines 13-18 or 5
paragraph [0115] of the Appellants’ Patent Application Publication No. US 6
2004/0192430 A1, publ. Sep. 30, 2004, which the Examiner refers to as 7
“admitted prior art.” (Ans. 3). We have jurisdiction over the appeal under 8
35 U.S.C. § 6(b). The Appellants’ representative presented oral argument 9
for this appeal on July 13, 2011. 10
We sustain the rejections against claims 1-7, 19 and 20. We do not 11
sustain the rejections of claims 34, 35, 41, 42, 44 and 48. 12
Claims 1, 19, 34 and 42 are independent claims. Claims 1 and 19 are 13
apparatus claims and claims 34 and 42 are method claims. Claim 1 is 14
illustrative of the apparatus claims on appeal and claim 34 is illustrative of 15
the method claims on appeal. 16
1. A gaming machine for conducting a wagering 17
game, comprising: 18
a controller for selecting a game outcome from a 19
plurality of possible outcomes; 20
a multi-layer video display for displaying the game 21
outcome, the multi-layer video display including a 22
first display layer and a second display layer, said 23
second display layer being generally parallel to 24
and physically separated from said first display 25
layer, said first display layer portraying at least one 26
foreground display element, said second display 27
layer portraying a background image, said 28
foreground display element and said background 29
image moving relative to each other such that at 30
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least one of said foreground display element and 1
said background image appears to scroll across a 2
player's field of vision. 3
4
34. A method of conducting a wagering game on a 5
gaming machine, comprising: 6
selecting a game outcome from a plurality of 7
possible outcomes; and 8
displaying the game outcome with imagery 9
generated by a 3D multi-layer video display 10
including a first display layer and a second display 11
layer, said second display layer being generally 12
parallel to and physically separated from said first 13
display layer, said first display layer portraying at 14
least one foreground display element, said second 15
display layer portraying a background image, said 16
foreground display element and said background 17
image moving relative to each other such that at 18
least one of said foreground display element and 19
said background image appears to scroll across a 20
player’s field of vision. 21
22
ISSUES 23
The Appellants have argued claims 1-7, 19-20, 34, 36, 41, 42, 44 and 24
48 as a group. (App. Br. 6). This appeal turns on the following issues. 25
First, do the combined teachings of Davids and the 26
admitted prior art render obvious the multi-layer video display 27
as properly construed in claims 1 and 19? (See generally App. 28
Br. 6-15; Reply Br. 1-5). 29
Second, do the combined teachings of Davids and the 30
admitted prior art render obvious the step of displaying as 31
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properly construed in claims 34 and 42? (See generally App. 1
Br. 6-15; Reply Br. 1-5). 2
3
FINDINGS OF FACT 4
The record supports the following findings of fact (“FF”) by a 5
preponderance of the evidence. 6
1. We adopt and incorporate by reference the Examiner’s findings 7
in the Examiner’s Answer at page 3, lines 13-18, “David teaches . . . 8
(Abstract).” 9
2. The Examiner’s Answer refers to “paragraph [0115] of the 10
Applicant’s [S]pecification” (Ans. 3), which is representative of the 11
Specification at page 23, lines 13-18, stating: 12
Multi-layer displays suitable for use in the present 13
invention are commercially available from at least 14
Deep Video Imaging™. Manufacturers of video 15
controllers suitable for use with multi-layer 16
displays available from Deep Video Imaging™ 17
include Appian Graphics, ATI Technologies, Inc, 18
Matrox, nVidia, and Peritek Corporation for the 19
Microsoft® Windows®, Apple® Macintosh®, 20
Linux, BeOS, OS/2, and Solaris™ operating 21
system platforms. (Italics added). 22
3. We find the term “the present invention” in the Specification at 23
page 23, line 13, includes the invention as recited in the preceding lines 1-12 24
of the same page 23, stating: 25
Another type of true 3D display is a multi-layer 26
display 1300 shown in FIG. 13 in an exploded 27
view. The multi-layer display 1300 includes a first 28
display layer 1302 and a second display layer 1304 29
each of which are sufficiently transparent to permit 30
the second display layer 1304 to be visible through 31
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the first display layer 1302. In an embodiment, the 1
first and second display layers 1302, 1304 are of 2
the color, active matrix, liquid crystal type. The 3
desert scene depicted in the gaming machines 4
shown in FIGS. 4-7 includes foreground elements 5
1306a,b,c displayed on the first display layer 1302 6
and background imagery 1308 displayed on the 7
second display layer 1304. Note that the 8
secondary displays shown and described in 9
connection with FIGS. 4-7 may be multi-layer 10
displays such as the multi-layer display 1300 11
shown in FIG. 13 with an optional touchscreen 12
overlaying the first display layer 1302. 13
4. We find the paragraphs in the Specification at page 23, lines 1-14
18, to be an admission by the Appellants that commercially available multi-15
layer displays described at page 23, lines 13-18 of the Specification are 16
capable of providing at least one foreground display element, said second 17
display layer portraying a background image, said foreground display 18
element and said background image moving relative to each other such that 19
at least one of said foreground display element and said background image 20
appears to scroll across a player's field of vision. 21
22
ANALYSIS 23
Apparatus Claims 1 and 19 24
Claim 1 recites “a multi-layer video display for displaying the game 25
outcome.” Claim 19 recites “a 3D multi-layer video display for displaying 26
the game outcome.” Thereafter both claims recite 27
the multi-layer video display including a first 28
display layer and a second display layer, said 29
second display layer being generally parallel to 30
and physically separated from said first display 31
layer, said first display layer portraying at least one 32
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foreground display element, said second display 1
layer portraying a background image, said 2
foreground display element and said background 3
image moving relative to each other such that at 4
least one of said foreground display element and 5
said background image appears to scroll across a 6
player's field of vision. (Italics added). 7
The italicized part of the apparatus claims is directed to an intended use of 8
the multi-layer video display. During the Oral Hearing the Appellants also 9
identified the italicized portion to be a use of the structures of the claim.1 “It 10
is well settled that the recitation of a new intended use for an old product 11
does not make a claim to that old product patentable.” In re Schreiber, 128 12
F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted). 13
The Appellants contend the combined teachings of Davids and the 14
admitted prior art lack the feature of moving different foreground and 15
background images to give the appearance of scrolling across a player’s field 16
of vision. (App. Br. 7; Reply Br. 1-2). However, the commercially 17
available multi-layer displays described at page 23, lines 13-18 of the 18

1 Excerpt from Transcript of the Oral Hearing, July 13, 2011, at page 5, line
14 – page 6, line 1:
JUDGE BARRETT: Our concern is -- you mentioned you apparently
-- your client has come up with a new use, but we're talking about an
apparatus claim here. So, how does that -- how does that last phrase in
Claim 1 impart any structural distinction over the prior art? How is it
structurally distinct, not its use?
MR. TANG: I don't think that -- I think that there is -- I think that's --
that's probably true, that it doesn't include a new -- a new structure. I think
that for -- with regard to the structural claim, we are relying on the fact that
there's a new use or a new combination of uses with -- with a multi-layer
display, but there is no description of that use on the record, and it's not --
we believe the examiner has failed in his burden to show that that is even in
the range of uses of that -- of the known structure, perhaps.
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Specification are capable of providing at least one foreground display 1
element, said second display layer portraying a background image, said 2
foreground display element and said background image moving relative to 3
each other such that at least one of said foreground display element and said 4
background image appears to scroll across a player's field of vision. (FF 4; 5
see also FF 2, 3). 6
The Appellants also contend the Examiner fails to satisfy any of the 7
rationales of obviousness under KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 8
(2007). (App. Br. 9-15). However, the Examiner concludes that one of 9
ordinary skill in the art would have modified Davids’ gaming machine 10
display to be a commercially available True 3-D display in order to have a 11
more realistic display. (Ans. 3). Additionally the Examiner reasons Davids 12
suggests the desirability of a 3-D display. (Ans. 4-5; see also Davids, col. 1, 13
ll. 25-40). In order to establish a prima facie case of obviousness the 14
examiner must articulate some “reasoning with some rational underpinning 15
to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 16
988 (Fed. Cir. 2006). This reasoning must show that “there was an apparent 17
reason to combine the known elements in the fashion claimed.” KSR, 550 18
U.S. at 418. In this case, the Examiner provides persuasive reasoning with 19
some rational underpinning to support the legal conclusion of obviousness 20
for apparatus claims 1 and 19. 21
Method Claims 34 and 42 22
Claim 34 recites “displaying the game outcome with imagery 23
generated by a 3D multi-layer video display.” Claim 42 recites “displaying 24
the game outcome with imagery generated by a true 3D multi-layer video 25
display.” Thereafter both claims recite 26
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including a first display layer and a second display 1
layer, said second display layer being generally 2
parallel to and physically separated from said first 3
display layer, said first display layer portraying at 4
least one foreground display element, said second 5
display layer portraying a background image, said 6
foreground display element and said background 7
image moving relative to each other such that at 8
least one of said foreground display element and 9
said background image appears to scroll across a 10
player’s field of vision. (Italics added). 11
The Examiner must provide evidence by a preponderance of the evidence of 12
the italicized part of the method step. 13
The Appellants correctly contend that the Examiner does not provide 14
evidence for this method step. (App. Br. 7; Reply Br. 1-2, and 3). Although 15
the admitted prior art may be capable of performing the intended use of the 16
display as recited in apparatus claims 1 and 19, performance of the 17
displaying steps in method claims 34 and 42 is not found by a preponderance 18
of the evidence. 19
Alternatively, regarding the lack of evidence concerning the 20
displaying step, the Examiner reasons that “a computer display may display 21
any image that the designer chooses. And if a commercial 3-D display is 22
suitable for implementing a game in which one image scrolls relative to 23
another, how these images appear on the screen is also a matter of design 24
choice.” (Ans. 6). The Appellants correctly contend that the Examiner’s 25
design choice reasoning does not adequately support the legal conclusion of 26
obviousness. (See App. Br. 8, Reply Br. 3). Thus the Examiner does not 27
provide persuasive reasoning with some rational underpinning to support the 28
legal conclusion of obviousness for method claims 34 and 42. 29
30
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CONCLUSIONS 1
First, the combined teachings of Davids and the admitted prior art 2
render obvious the multi-layer video display as properly construed in claims 3
1 and 19. We sustain the rejection of claims 1-7, 19 and 20 under § 103(a) 4
as being unpatentable over Davids and the admitted prior art. 5
Second, the combined teachings of Davids and the admitted prior art 6
do not render obvious the step of displaying as properly construed in claims 7
34 and 42. We do not sustain the rejection of claims 34, 35, 41, 42, 44 and 8
48 under § 103(a) as being unpatentable over Davids and the admitted prior 9
art. 10
11
DECISION 12
We AFFIRM the Examiner’s decision rejecting claims 1-7, 19 and 20. 13
We REVERSE the Examiner’s decision rejecting claims 34, 35, 41, 14
42, 44 and 48. 15
No time period for taking any subsequent action in connection with 16
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 17
§ 1.136(a)(1)(iv). 18
19
AFFIRMED-IN-PART 20
21
22
mls 23