11063426 - (D) (B.P.A.I. Oct. 29, 2010)

Ex Parte Gullotta

Board of Patent Appeals and InterferencesOct 29, 2010

11063426 - (D) (B.P.A.I. Oct. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte RICHARD GULLOTTA ____________ Appeal 2009-009134 Application 11/063,426 Technology Center 3700 ____________ Before STEVEN D.A. McCARTHY, MICHAEL W. O’NEILL and FRED A. SILVERBERG, Administrative Patent Judges. McCARTHY, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-009134 Application 11/063,426 2 The Appellant’s claims being twice-rejected, the Appellant appeals 1 under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-13. 2 More specifically, the Examiner rejects claims 1-13 under 35 U.S.C. 3 § 103(a) as being unpatentable over Chee (US 6,164,647, issued Dec. 26, 4 2000), Rosar (US 1,670,692, issued May 22, 1928) and Nadibaidze (US 5 6,406,022 B1, issued Jun. 18, 2002). We have jurisdiction over the appeal 6 under 35 U.S.C. § 6(b). 7 We REVERSE. 8 Claims 1, 7 and 11 are independent claims. Claim 1 is illustrative of 9 the claims on appeal: 10 1. A method of playing a roulette game 11 comprising: 12 segmenting a single roulette wheel into six 13 sections wherein each section includes six, unique 14 adjacent numbers, excluding zero and/or double 15 zero which belong to none of the six sections; 16 means for permanently and uniquely 17 identifying each of the multiple sections; 18 accepting one or more wagers including 19 wagers on each of said multiple sections; and 20 conducting the roulette game. 21 22 Claims 7 and 11 each recite a method of conducting a game 23 comprising the step of segmenting a single roulette wheel into six sections 24 wherein each section is formed of six unique, adjacent numbers, excluding 25 zero and double zero which belong to none of the six sections. 26 Chee describes a roulette assembly having a lower wheel 20 with 27 numbers and a upper wheel 30 with colors, where each wheel is divided into 28 sections. (Chee, abstract, ll. 1-7; col. 4, ll. 48-55; and col. 5, ll. 3-5). The 29 result from spinning the wheels is a randomly selected unique number and 30 Appeal 2009-009134 Application 11/063,426 3 color combination. (Chee, abstract, ll. 7-9 and col. 6, ll. 51-56). Rosar 1 describes a single wheel that sections numbers in quadrants corresponding to 2 a deck of playing cards. (Rosar 1, l. 95 – 2, l. 106 and fig. 1). Nadibaidze 3 describes a gambling game using dice throws. (Nadibaidze, col. 1, ll. 6-8). 4 The game uses a flat image of a stationary roulette wheel where the image 5 includes six segments 10-15 representing the first die’s face. (Nadibaidze, 6 col. 3, ll. 20-22 and 29-37; figs. 1 and 2) 7 The Examiner concludes one of ordinary skill in the art at the time of 8 the invention would have substituted Rosar’s single wheel for Chee’s 9 multiple wheels. (Ans. 3-4). The Examiner reasons the result of segmenting 10 the wheel is predictable. (Ans. 4). In other words, the Examiner appears to 11 conclude that the roulette wheel used in the claimed methods would have 12 been obvious and that the methods themselves would have been obvious 13 from the structure of the wheel. 14 One problem with this approach is that the Examiner has not provided 15 reasoning with some rational underpinning sufficient to support the 16 Examiner’s conclusion that the roulette wheel used in the claimed method 17 would have been obvious. The Appellant correctly points out that Chee’s 18 inventive concept is “to create a structure having an upper and lower wheel 19 capable of randomly generating unique number and color combinations.” 20 (App. Br. 13). The Appellant correctly contends “[s]uch a substitution 21 renders the inventive concept of Chee meaningless and further requires 22 substantial reconstruction of the upper and lower wheel of Chee into a single 23 wheel therefore the combination is improper.” (Id.) 24 A proposed modification which changes the principle of operation of 25 a device disclosed in a primary reference, or which requires substantial 26 Appeal 2009-009134 Application 11/063,426 4 reconstruction of the device, might support a conclusion of obviousness if 1 the Examiner identifies a persuasive reason why one of ordinary skill in the 2 art might have undertaken the modification. The Examiner identifies no 3 such persuasive reason here. At best, the Examiner appears to take the 4 position that the level of skill in the art was sufficient to replace Chee’s 5 upper and lower wheels with a single, segmented wheel and that the result of 6 making this replacement would have been predictable. Given the degree of 7 modification which would have been required, the proposed modification 8 would not have been a “mere substitution of one element for another known 9 in the field.” See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). 10 Rather, the Examiner’s reasoning appears to demonstrate little more than 11 “that each of [the elements of the claimed subject matter] was, 12 independently, known in the prior art,” Id. at 418, an approach rejected by 13 the Supreme Court as well as our reviewing court. 14 Since the Examiner has not established that the roulette wheel used in 15 the claimed methods would have been obvious, the Examiner cannot 16 establish the obviousness of the methods claimed in claims 1, 7 and 11 by 17 concluding that the methods themselves would have been obvious from the 18 structure of the wheel. We do not sustain the rejections of claims 1, 7 and 19 11 under § 103(a) as being unpatentable over Chee, Rosar and Nadibaidze. 20 Consequently, we do not sustain the rejection of dependent claims 2-6, 8-10 21 and 12-13 under § 103(a) as being unpatentable over Chee, Rosar and 22 Nadibaidze. 23 Appeal 2009-009134 Application 11/063,426 5 DECISION 1 We REVERSE the Examiner’s decision rejecting claims 1-13. 2 3 REVERSED 4 5 6 7 Klh 8 9 10 11 GREENBERG TRAURIG (LV) 12 3773 HOWARD HUGHES PARKWAY 13 SUITE 400 NORTH 14 LAS VEGAS, NV 89169 15