Ex Parte Imura et al

Board of Patent Appeals and Interferences

May 13, 2010

10697041 (B.P.A.I. May. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HIDEAKI IMURA and SHINGO OMOMO
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Appeal 2009-004960
Application 10/697,041
Technology Center 3700
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Decided: May 14, 2010
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Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and
CAROLYN D. THOMAS Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s rejection of claims 1-12. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse. We also enter a new ground of rejection against claim
8 under the provisions of 37 C.F.R. § 41.50(b).

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STATEMENT OF THE CASE
INVENTION
The invention on appeal relates generally to a gaming machine
including a liquid crystal display. (Spec. 1).

ILLUSTRATIVE CLAIM

1. A gaming machine comprising:
a variable display device configured to variably display a plurality of
symbol rows each having a symbol placement face formed in a curved
surface on which a plurality of symbols are placed;
an image display device being provided in front of and opposed to the
variable display device and configured to display the symbols through a flat
symbol transmission face and to display an image concerning a game;
a symbol illumination device configured to illuminate the symbols;
and
an image display assistance device being provided lateral to an area
between the variable display device and the image display device to cover an
area sandwiched between the symbol placement face and the symbol
transmission face, and configured to assist image display of the image
display device.

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PRIOR ART
The Examiner relies upon the following references as evidence:
Ozaki US 2001/0031658 A1 Oct. 18, 2001
Mizukai JP 2001 161950

THE REJECTIONS
1. The Examiner rejected claims 1-3, and 5-12 under 35 U.S.C.
§ 103(a) as unpatentable by Mizukai.
2. The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Mizukai and Ozaki.

ISSUE
Based upon our review of the administrative record, we have
determined that the following issue is dispositive in this appeal:
Under 35 U.S.C. § 103, did the Examiner err in finding that Mizukai
would have taught or suggested “an image display assistance device being
provided lateral to an area between the variable display device and the image
display device?” (Claim 1)

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PRINCIPLES OF LAW
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 417.
Invention or discovery is the requirement which constitutes the
foundation of the right to obtain a patent . . . unless more ingenuity
and skill were required in making or applying the said improvement
than are possessed by an ordinary mechanic acquainted with the
business, there is an absence of that degree of skill and ingenuity
which constitute the essential elements of every invention.

Dunbar v. Myers, 94 U.S. 187, 197 (1876) (citing Hotchkiss v. Greenwood,
52 U.S. 248, 267 (1850)) (Hotchkiss v. Greenwood was cited with approval
by the Supreme Court in KSR, 550 U.S. at 406, 415, 427).

FINDINGS OF FACT
1. Mizukai discloses a reflector (57) that indirectly illuminates the
background of the drum (37). The diffused light is irradiated towards the
backside and illuminates the large field on the background of the display.
(Para. [0021]; Fig. 8)

ANALYSIS
We decide the question of whether the Examiner erred in determining
that Mizukai would have taught or suggested “an image display assistance
device being provided lateral to an area between the variable display device
and the image display device,” as recited in claim 1.
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The Examiner contends that it would have been obvious to modify
Mizukai with laterally placed reflecting plates to assist in illuminating the
area between the symbol face and the image display device. (Ans. 4).
We disagree. We do not find that the Examiner’s stated position is
supported in the record before us. As noted above, Mizukai discloses a
reflector that illuminates the area behind the drum. (FF 1). Thus, we find the
Examiner’s position that it would have been obvious to place the reflector
plate in the area between the symbols, (Ans. 4) to be conclusory. Moreover,
we find the Examiner’s interpretation of the “lateral to an area” limitation
(see Ans. 6) to be overly broad in the context of the claim considered as a
whole: i.e., “lateral to an area between the variable display device and the
image display device.” We further note that independent claims 8 and 10
recite commensurate limitations.
Based on the record before us, we find that the Examiner erred in
rejecting independent claims 1, 8, and 10. Accordingly, we reverse the
Examiner’s § 103 rejection of independent claims 1, 8, and 10. Because we
have reversed the Examiner’s rejection of each independent claim on appeal,
we also reverse the Examiner’s rejections of the dependent claims.

CONCLUSION
Based on the findings of facts and analysis above:
We find that under §103 the Examiner erred in determining that
Mizukai would have taught or suggested “an image display assistance device
being provided lateral to an area between the variable display device and the
image display device.” (Claim 1; see commensurate limitations claims 8 and
10).
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NEW GROUNDS OF REJECTION
Using our authority under 37 C.F.R. § 41.50(b), we reject exemplary
independent claim 8 under 35 U.S.C. § 102(b). Our rejection relies on
different reasoning than that set forth by the Examiner. Due to our new
reasoning, we designate our Decision as a new ground of rejection.

35 U.S.C. § 102
We find that Mizukai discloses or describes a gaming machine
comprising:
a variable display device (pattern adjustable display M) configured to
variably display a plurality of symbol rows on which a plurality of symbols
are placed. (Para. 0012, Fig. 3, item M).
an image display device (visual display 14) being provided in front of
the variable display device and configured to display an image concerning a
game (Para. 0012, Fig. 2, Fig. 8) and;
a side illumination device (base 35) being provided lateral to an area
between the variable display device M and the image display device 14 and
configured to illuminate the symbols from a side of the symbols. (Para.
[0020], ll. 1-4, Fig. 4).
Therefore, we find that Mizukai discloses or describes all of the
limitations of independent claim 8 under § 102(b).
The Board of Patent Appeals and Interferences is a review body,
rather than a place of initial examination. We have made a rejection above
under 37 C.F.R. § 41.50(b) based on the applied prior art reference.
However, we have not reviewed the remaining claims to the extent
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necessary to determine whether these claims are unpatentable over the
applied prior art reference and other patents cited in the record. We leave it
to the instant Examiner to determine the appropriateness of any further
rejections based on this reference. See MPEP § 1213.02.

DECISION
We reverse the Examiner’s rejection of claims 1-12 under 35 U.S.C.
§ 103(a).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review." 37 C.F.R
§ 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

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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).

ORDER

REVERSED
37 C.F.R. § 41.50(b)

pgc

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