Ex Parte GauselmannDownload PDFBoard of Patent Appeals and InterferencesApr 14, 201110354557 (B.P.A.I. Apr. 14, 2011) Copy Citation 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. 10/354,557 01/29/2003 Michael Gauselmann ATR-A-102-1P 3028 32566 7590 04/14/2011 PATENT LAW GROUP LLP 2635 NORTH FIRST STREET SUITE 223 SAN JOSE, CA 95134 EXAMINER WILLIAMS, ROSS A ART UNIT PAPER NUMBER 3714 MAIL DATE DELIVERY MODE 04/14/2011 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 MICHAEL GAUSELMANN ____________________ Appeal 2009-012245 Application 10/354,557 Technology Center 3700 ____________________ Before: JENNIFER D. BAHR, JOHN C. KERINS, and KEN B. BARRETT, Administrative Patent Judges. BARRETT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-012245 Application 10/354,557 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1, 3-19, and 26-39. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to a gaming machine having a separate touch screen for player input. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A gaming device comprising: at least one processor, the at least one processor comprising at least one processor programmed to carry out a game on at least one video display screen, the at least one video display screen for displaying the game; and a touch screen, separate from the at least one video display screen, for displaying player input icons for controlling the game and for generating signals upon a player touching displayed icons to control the game, a top surface of the touch screen being on an angle with respect to the at least one video display screen. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Carpenter Brooks Berry Glavich Hetherington Kaminkow Kaminkow US 5,602,997 US 6,069,623 US 6,094,196 US 6,309,300 B1 US 6,396,515 B1 US 6,731,313 B1 US 6,932,706 B1 Feb. 11, 1997 May 30, 2000 Jul. 25, 2000 Oct. 30, 2001 May 28, 2002 May 4, 2004 Aug. 23, 2005 Stephan US 2002/0107075 A1 Aug. 8, 2002 Appeal 2009-012245 Application 10/354,557 3 REJECTIONS Claims 1, 3, 10, 13, 15-19, 26, 27, 32, 33, and 36-39 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Stephan and Glavich. 1 Ans. 3-5. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Stephan, Glavich and Kaminkow („313). Ans. 6. Claims 5-7, 9, and 28-30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Stephan, Glavich, and Carpenter. Ans. 6. Claims 8 and 31 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Stephan, Glavich, and Hetherington. Ans. 9. Claims 11 and 34 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Stephan, Glavich and Berry. Ans. 10. Claims 12 and 35 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Stephan, Glavich, and Brooks. Ans. 11. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Stephan, Glavich, and Kaminkow („706). Ans. 12. FINDINGS OF FACT We find that the following enumerated findings are supported by at least a preponderance of the evidence: 1. Stephan discloses the basic gaming device and associated method described by claims 1 and 26, respectively, but lacks a “touch screen.” Ans. 3-4. 1 The Examiner‟s statement of the rejection includes claim 2, but the heading does not include claim 18. Ans. 3. However, claim 2 was cancelled. App. Br. 2. Claims 18, 32, and 33 are included with this ground of rejection. Ans. 5; Final Rej. 5-6. Appeal 2009-012245 Application 10/354,557 4 2. Stephan discloses buttons 71-762, “separate from the video display,” are used to start, operate and end the game. P. 2, para. [0029]. 3. Stephan expressly suggests substituting other input devices such as a “keyboard, a trackball, and other computer user pointing and input devices” in place of the input buttons 71-76. P. 2, para. [0029]. 4. Glavich demonstrates that touchscreens were known in the art of gaming devices as substitutes for “a keyboard, or plurality of buttons, … trackball, or other pointing device ….” Col. 3, ll. 5-19. ANALYSIS Since substituting a touchscreen for Stephan‟s buttons amounts to no more than the simple substitution of known elements in order to yield predictable results, we agree with the Examiner‟s conclusion that the subject matter of independent claims 1 and 26 would have been obvious to one of ordinary skill in the art. Appellant contends that “Stephan could not have envisioned Applicant‟s invention when making the above-quoted statement and, therefore, could not have suggested it.” App. Br. 6-7. An attack on Stephan alone does not establish error in the Examiner‟s position since the rejection is predicated upon a combination of prior art, i.e., Stephan and Glavich. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellant‟s argument (App. Br. 7) that separate touchscreens were unknown in gaming is inconsistent with the teachings of Glavich. As Appellant points out, Glavich discloses a touchscreen 116 used in game 2 Stephan‟s reference to “buttons 71-71” as opposed to “buttons 71-76” in this paragraph is believed to be a typographical error. Appeal 2009-012245 Application 10/354,557 5 play. App. Br. 4. However, Glavich also discloses that the handle 128 used to initiate play of the game may also be a touchscreen. See Glavich, col. 2, l. 66 – col. 3, l. 1 and fig. 1. Initiating play is “controlling the game.” Thus, Glavich does disclose a separate touchscreen for controlling the game. Appellant‟s arguments regarding the expense of touchscreens and their suitability for horizontal orientation are also unpersuasive. App. Br. 7. Merely identifying a disadvantage of using a touchscreen as compared to buttons does not establish that, despite all of their advantages, one of ordinary skill in the art would have been discouraged from making the substitution proposed by the Examiner. See Ans. 4. Our reviewing court has recognized that a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate any or all reasons to combine teachings. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). The relevant inquiry is whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellant‟s argument regarding the Examiner‟s proposed substitution of Stephan‟s bottom display 41 is based upon a mischaracterization of the Examiner‟s position. See Reply Br. 2 (citing Ans. 17). The Examiner has consistently relied upon Stephan‟s suggestion of replacing buttons 71-76 with other devices. See Ans. 4-5, 15. The Examiner cites Glavich to teach using a touchscreen “in conjunction” with at least one of Stephan‟s displays. Appeal 2009-012245 Application 10/354,557 6 Ans. 17 (emphasis added). The Examiner‟s statement that “the combination of Stephan in view of Glavich was not intended to show a touch screen positioned on a horizontal shelf to physically replace the buttons 71-76 of the game machine” was made to address Appellant‟s argument regarding the suitability of touchscreens for horizontal applications. The Examiner correctly recognized that “[c]ombining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). We sustain the rejection of independent claims 1 and 26 as unpatentable over Stephan and Glavich. Appellant does not present separate arguments regarding the remaining claims, which depend from either claim 1 or 26. App. Br. 7-8. As such, we also sustain the rejection of dependent claims 3-19 and 27-39 DECISION For the above reasons, the Examiner‟s rejections of claims 1, 3-19, and 26-39 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED nlk Copy with citationCopy as parenthetical citation