Ex Parte Darby

Board of Patent Appeals and Interferences

May 11, 2011

10339096 (B.P.A.I. May. 11, 2011)

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
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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
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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.
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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
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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
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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)
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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

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