Ex Parte DarbyDownload PDFBoard of Patent Appeals and InterferencesMay 11, 201110339096 (B.P.A.I. May. 11, 2011) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte ROLAND LEE DARBY ____________________ Appeal 2009-009617 Application 10/339,096 Technology Center 3700 ____________________ Before STEVEN D.A. McCARTHY, KEN B. BARRETT, and FRED A. SILVERBERG, Administrative Patent Judges. SILVERBERG, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-009617 Application 10/339,096 2 STATEMENT OF THE CASE Roland Lee Darby (Appellant) seeks our review under 35 U.S.C. § 134 of the final rejection of claims 27-31. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. THE INVENTION Appellant’s claimed invention is directed to an electronic card game that enables multiple simultaneous games to be played in which the paylines are implemented in a matrix (Spec. 1:4-7). Claim 27, reproduced below, is representative of the subject matter on appeal. 27. A method of playing an electronic card game on a gaming machine, said electronic card game having a plurality of paylines, said method comprising: initiating said electronic card game after deposit of value into said gaming machine; facilitating selection by a player of one or more paylines from among a plurality of paylines; dealing a two dimensional array of playing cards from one or more decks of cards, said two dimensional array of playing cards being displayed face-up to the player, said two dimensional array of playing cards having exactly five rows of playing cards, each of said five rows of playing cards having exactly five playing cards; facilitating selection by the player of any number of playing cards to be held in said array so that the player may select to be held more than one playing card and up to five playing cards in each of said rows; replacing said playing cards that were not selected to be held with an equivalent number of replacement playing cards randomly selected from a remainder of said playing cards in said one or more decks of cards; and Appeal 2009-009617 Application 10/339,096 3 determining a value payout based on whether one or more of said paylines selected by said player from said plurality of paylines contains a winning combination, wherein said each of said plurality of paylines represents a pattern of exactly five playing cards within said two dimensional array of playing cards, each of said paylines representing one of the following patterns: a C- shaped pattern, a U-shaped pattern, a W-shaped pattern, a M-shaped pattern, or a zig-zag pattern. THE REJECTION The following rejection by the Examiner is before us for review: Claims 27-31 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Holmes (US 6,220,959 B1, issued Apr. 24, 2001) in view of Fuchs (US 5,630,753, issued May 20, 1997) and Miller (US 6,322,445 B1, issued Nov. 27, 2001). ISSUES The issues before us are: (1) whether the Examiner erred in concluding that the combined teachings of Holmes and Fuchs would have led a person having ordinary skill in the art to the step of facilitating the selection of more than one playing card to be held in each of the rows, as called for in claims 27-31, the additional step of holding up to five playing cards in each of the rows, as called for in claim 27 and the additional step of holding three or more playing cards in one of the rows, as called for in claim 31 (App. Br. 9-12)1; and (2) whether the Examiner erred in concluding that the combined teachings of Holmes and Fuchs would have led a person 1 All references to the Appeal Brief (App. Br.) are to Appellant’s Corrected Appeal Brief filed August 22, 2007. Appeal 2009-009617 Application 10/339,096 4 having ordinary skill in the art to the step of allowing more cards to be held in one line than another, as called for in independent claim 30 (App. Br. 12). ANALYSIS Claims 27-29 and 31 Independent claims 27-29 and 31 call for, inter alia, the step of facilitating the selection of more than one playing card to be held in each of the rows, wherein claim 27 additionally calls for the step of facilitating the selection of up to five playing cards in each of the rows and claim 31 additionally calls for the selection of three or more playing cards in one of the rows. Appellant contends that it would not be possible to play the game as described by Holmes if it were modified by the teachings of Fuchs as proffered by the Examiner (App. Br. 9-12). The Examiner found that (1) “Holmes teaches the arrangement of cards on a display screen – a 5X5 array of cards,” and (2) “Fuchs teaches holding any number of cards in a draw poker hand” (Ans. 8). We find that Appellant is not contesting the Examiner’s findings regarding the teachings of Holmes and Fuchs, which we find to be reasonable and sound and adopt as our own. We find that Appellant is contesting the Examiner’s conclusion of obviousness regarding the combined teachings of Holmes and Fuchs. We find that the Examiner’s conclusion of obviousness regarding the combined teachings of Holmes and Fuchs (Ans. 4) is not based on modifying the game play of Holmes by the teachings of Fuchs, as Appellant would like us to find; rather, the Examiner’s conclusion of obviousness is Appeal 2009-009617 Application 10/339,096 5 based on substituting the game play of Fuchs for the game play of Holmes. Thus, we find that Appellant has not addressed the Examiner’s position and, accordingly, has not demonstrated error in the Examiner’s position. We agree with the Examiner’s conclusion of obviousness (Ans. 4) that it would have been obvious to a person having ordinary skill in the art to modify the teachings of Holmes by substituting in Holmes for his game play the game play of holding any number of cards in a draw poker hand as taught by Fuchs, wherein the combination would yield the predictable result of affording a player greater opportunity to improve a poker hand. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (In KSR, the Supreme Court held that “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”) We affirm the rejection of independent claims 27-29 and 31. Claim 30 Independent Claim 30 calls for, inter alia, the step of facilitating selection by the player of one or more playing cards to be held in each of said rows, comprising selection by the player of a first number of playing cards in a first of said rows and a second number of playing cards in a second of said rows, said first number of cards being different than said second number of cards. Appellant contends that the combined teachings of Holmes and Fuchs do not describe the claim 30 limitations noted supra. The Examiner’s conclusion of obviousness regarding claim 30 is based upon, inter alia, the conclusion that it would have been obvious to modify the teachings of Holmes to allow more cards to be held in one line Appeal 2009-009617 Application 10/339,096 6 than another in view of the teachings of Fuchs (Ans. 4). Thus, the Examiner’s conclusion of obviousness is based upon a finding that Fuchs describes allowing more cards to be held in one line than another. However, Fuchs is silent as to allowing more cards to be held in one line than another. As such, it becomes incumbent upon the Examiner to provide an adequate basis in fact and/or technical reasoning that would support the aforementioned finding in Fuchs. The Examiner in proffering the finding has not directed us to a particular portion in Fuchs with reference to the relevant column or page number(s) and line(s) which would support the Examiner’s finding.2 Further, we do not find any support for the Examiner’s finding. Thus, we conclude that the Examiner’s conclusion of obviousness is based upon an unsupported fact finding. KSR, 550 U.S. at 418 (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”) In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The legal conclusion of obviousness must be supported by facts. Where the legal conclusion is not supported by facts it cannot stand.”) We reverse the rejection of independent claim 30. CONCLUSIONS The Examiner has not erred in concluding that the combined teachings of Holmes and Fuchs would have led a person having ordinary skill in the art to the step of facilitating the selection of more than one playing card to be held in each of the rows, as called for in claims 27-31, the additional step of 2 MPEP § 706.02(j) (8th ed., Rev. 8, Jul. 2010) Appeal 2009-009617 Application 10/339,096 7 holding up to five playing cards in each of the rows, as called for in claim 27 and the additional step of holding three or more playing cards in one of the rows, as called for in claim 31. The Examiner has erred in concluding that the combined teachings of Holmes and Fuchs would have led a person having ordinary skill in the art to the step of allowing more cards to be held in one line than another, as called for in independent claim 30. DECISION The decision of the Examiner to reject claims 27-29 and 31 is affirmed. The decision of the Examiner to reject claim 30 is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART mls Copy with citationCopy as parenthetical citation