Ex Parte Gauselmann

Board of Patent Appeals and Interferences

Apr 14, 2011

10354557 (B.P.A.I. Apr. 14, 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.
10/354,557 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

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Application 10/354,557
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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.
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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.

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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.
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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

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