Ex Parte Finch et al

Board of Patent Appeals and Interferences

Mar 31, 2009

10999096 (B.P.A.I. Mar. 31, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte NED HENRY FINCH
and
NANCY DETERS SLAYTON,
Appellants
____________________

Appeal 2008-5413
Application 10/999,0961
Technology Center 3700
____________________

Decided2: March 31, 2009
_____________________

Before CAROL A. SPIEGEL, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

SPIEGEL, Administrative Patent Judge.

DECISION ON APPEAL

1 Application 10/999,096 ("the 096 application"), Gaming chip and method
of manufacturing, filed 29 November 2004, claims benefit under 35 U.S.C.
§ 119 of provisional application 60/616,555, filed 6 October 2004. The real
party in interest is THE UNITED STATES PLAYING CARD COMPANY
(Appeal Brief, filed 12 March 2007 ("Br."), at 1).
2 The two month period for filing an appeal or commencing a civil action, as
recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on
this page of the decision. The time period does not run from the Mail Date
(paper delivery) or Notification Date (electronic date).
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Application 10/999,096

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I. Statement of the Case
Appellants appeal under 35 U.S.C. § 134 from an Examiner's final
rejection of claims 1-4, 6-10, and 19-22. Claims 11-15, 17, and 18, the only
other pending claims, have been withdrawn from consideration. (Br. 2;
Ans.3 2)
The subject matter on appeal is directed to gaming chip, e.g., a poker
chip, comprising an inner metal coin completely enclosed in a plastic casing,
wherein the metal coin has at least one aperture therethrough. Claim 1 is
illustrative and reads (Br. 13, emphasis added):
1. A gaming chip, comprising (a) an inner
metal coin provided with at least one aperture
therethrough, and (b) a plastic casing including a
first plastic casing portion extending around a
perimeter of the inner metal coin and a second
plastic casing portion extending through the
aperture and over opposite faces of the inner metal
coin, wherein the plastic casing completely
encases the inner metal coin.
The Examiner has rejected claims 1-4, 6-10, and 19-22 as
unpatentable under 35 U.S.C. § 103(a) over Graves4 in view of Jones5 (Ans.
3).
According to the Examiner, Graves discloses the gaming chip of
claims 1 and 19, the only independent claims on appeal, but for an inner coin
which is metal (Ans. 3). The Examiner relied on Jones as teaching placing a

3 Examiner's Answer mailed 17 July 2007 ("Ans.").
4 U.S. Patent 3,953,932, Casino Chip and Method of Making, issued 4 May
1976, to John W. Graves ("Graves").
5 U.S. Patent 3,968,582, Gaming Token and Process for Fabricating Same,
issued 13 July 1976, to Bernard B. Jones ("Jones").
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metal coin in a game chip (Ans. 3). The Examiner concluded that it would
have been obvious to use a metal inner coin in the chip of Graves to make
the chip stronger and less breakable and/or to give the chip a weightier feel
(Ans. 3).
The dispositive issue is whether Appellants have shown the Examiner
erred in finding Graves teaches an inner coin completely enclosed in a
plastic casing as required by all of the claims on appeal.
II. Findings of Fact ("FF")
A. The 096 Application
[1] Figure 2 of the 096 application is a cross-sectional view of a gaming
chip 10 comprising an inner metal coin 12 having an aperture 22
completely encased in a plastic casing 14. In particular, plastic
casing 14 comprises a first portion 16 which extends around the
perimeter 15 of the inner metal coin 12 and a second portion 18
which extends through aperture 22 and over opposite sides 26 and 28
of the inner metal coin 12. The first portion 16 of the plastic casing
14 may extend 30 over an area 24 of the perimeter 15 of the inner
metal coin 12. (Specification of the 096 application 3:23-4:6; 5:1-8)
Figure 2 is reproduced below.

{Figure 2 is a cross-sectional view of an embodiment of the claimed chip.}

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B. Graves
[2] Graves discloses casino chips constructed from a central (inner)
portion of a first thermoplastic material around with an outer portion
of a second thermoplastic material "is molded in such a manner that
portions of the central portion are at least partially visible through or
along the upper and lower walls and edges of the chip" (Graves 2:9-
16).
[3] As shown in Figures 2 and 6, intermediate portion 26 has a generally
flat disk-like member 29 with a central aperture 30 and with outer
walls 31, which preferably contain a plurality of indentations 32.
Intermediate portion 26 also includes a plurality of upwardly and
downwardly extending projections. The outer portion 27 is formed
integral with or fused to the intermediate portion 26 such that, when
the chip is molded, the edge wall 33 of the outer portion 27 is
substantially coextensive with the outer walls 31 of the intermediate
portion 26 so that the edge of the chip is a composite band which
displays segments of both portions. (Graves 3:13-44). Figures 2 and
6 are reproduced below.

{Figure 6 is a perspective view of an intermediate portion 26 of Graves'
chip; and, Figure 2 is a cross-section of a finished chip showing both the
intermediate and outer portions.}

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[4] According to Graves, the outer portion may be formed of a
transparent plastic, while the intermediate portion may be formed of a
more opaque plastic (Graves 3:31-35).
[5] As seen in Figure 2, "the intermediate portion 26 is enclosed within
the body or outer portion 27 except for those portions of the wall 31
which is coextensive with the edge wall 33 of the outer portion . . . ."
(Graves 4:6-11).
[6] However, it is not necessary that wall 31 of the intermediate portion
26 be coextensive with the edge wall 33 of the outer portion 27, only
that wall 31 be visually displayed through the edge 23 of the chip
(Graves 3:35-39).
III. Discussion
A. Legal principles
A claimed invention is not patentable if its subject matter would have
been obvious to a person of ordinary skill in the art. 35 U.S.C. § 103(a); KSR
Int'l Co. v. Teleflex, Inc., 127 S.Ct. 1727, 1734 (2007); Graham v. John
Deere Co. of Kansas City, 383 U.S. 1, 3 (1966). Facts relevant to a
determination of obviousness include (1) the scope and content of the prior
art, (2) any differences between the claimed invention and the prior art, (3)
the level of ordinary skill in the art and (4) relevant objective evidence of
obviousness. KSR, 127 S.Ct. at 1734; Graham, 383 U.S. at 17-18. All claim
limitations must be considered. In re Royka, 490 F.2d 981, 985 (CCPA
1974).
“When there is a design need or market pressure to solve a problem
and there are a finite number of identified, predictable solutions, a person of
ordinary skill has good reason to pursue the known options within his or her
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technical grasp. If this leads to the anticipated success, it is likely the product
not of innovation but of ordinary skill and common sense. In that instance
the fact that a combination was obvious to try might show that is was
obvious under § 103.” KSR, 127 S. Ct. at 1742.
"[R]ejections based 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 Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
A dependent claim is nonobvious if the independent claim from which
it depends is nonobvious. In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988).
B. Appellants' argument
Appellant argues that there is no teaching in Graves or Jones to
provide a gaming chip with a plastic casing that completely encases an inner
metal coin having an aperture (Br. 6). Appellant further argues that Graves
does not enable complete encasing of the intermediate portion by the outer
portion because the complex design of the intermediate portion, with
protrusions 35, would interfere with the molding process described by
Graves (Br. 6).
C. The Examiner's position
The Examiner maintains that Graves teaches (a) that the outer wall 31
of the inner coin is circular, (b) that the plastic used to form the chip can be a
transparent plastic, and (c) that the edge wall 33 of the outer casing and the
outer wall 31 of the inner coin need not be coextensive, so long as the edge
wall 33 is visible "through the edge of the chip" (Ans. 4). According to the
Examiner, these teachings clearly indicate that the inner coin is completely
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encased in transparent plastic in order to be visible through the edge of the
chip (Ans. 4).
D. Analysis
The Examiner has not explained why the asserted teachings of Graves
lead to the conclusion that the inner coin is completely encased in
transparent plastic. It may be that the edge wall 33 of the outer portion (top
and/or bottom layer of the finished chip) is ridged and the wall 31 of the
intermediate portion (middle layer of the finished chip) is smooth or vice
versa or some other non-coextensive relationship exists between walls 31
and 33, e.g., to allow a visually impaired person to differentiate between
chip denominations by touch. In short, the Examiner has not explained what
teachings in the prior art or the knowledge of an ordinarily skilled artisan
would have motivated or suggested completely encasing the intermediate
portion of Graves within the outer portion of Graves.
Neither has the Examiner explained why it would have been obvious
to try to do so. The Examiner has not identified a problem that encasing the
intermediate portion of a chip completely within an outer plastic casing
would have been meant to solve. Moreover, the Examiner has not
challenged Appellants' argument that Graves does not provide an enabling
disclosure for completely encasing the intermediate portion of a chip
completely within an outer plastic casing.
Given this lack of articulated reasoning by the Examiner, we are
constrained to reverse the rejection of claims 1-4, 6-10, and 19-22 under
§ 103(a).

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E. Conclusion
Appellants have shown the Examiner erred in finding that Graves
teaches an inner coin completely enclosed in a plastic casing as required by
all of the claims on appeal.
IV. Order
Based upon the foregoing, and for the reasons given, it is
ORDERED that the decision of the Examiner rejecting claims 1-4, 6-
10, and 19-22 as unpatentable under 35 U.S.C. § 103(a) over Graves in view
of Jones is REVERSED.
REVERSED

rvb

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