Ex Parte Kaminkow

Board of Patent Appeals and Interferences

Jun 10, 2004

09625884 (B.P.A.I. Jun. 10, 2004)

1 Claim 26 has been amended subsequent to final rejection.
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOSEPH E. KAMINKOW
and MARK R. CASS
__________
Appeal No. 2004-1254
Application 09/625,884
___________
ON BRIEF
___________
Before FRANKFORT, MCQUADE, and BAHR, Administrative Patent
Judges.
Per Curiam.
DECISION ON APPEAL
Joseph E. Kaminkow et al. appeals from the final rejection
of claims 1 through 5, 7 through 20 and 22 through 27, all of the
claims currently pending in the application.1
THE INVENTION
The invention relates to “[a] gaming device which simulates
movement of the gaming device screen” (Abstract). Representative
claim 1 reads as follows:
1. A gaming device comprising:
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Application No. 09/625,884
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a video screen having a plurality of images and a plurality
of positions for the plurality of images;
at least one triggering event; and
means for repeatedly repositioning the plurality of images
as a unit in a coordinated manner to at least two of the
positions to simulate movement of the entire video screen upon
the occurrence of a triggering event.
THE PRIOR ART
The references relied on by the examiner to support the
final rejection are:
Ugawa 5,836,819 Nov. 17, 1998
Bridgeman et al. 5,984,779 Nov. 16, 1999
(Bridgeman)
Fey, Marshall; Slot Machines, A Pictorial History of the First
100 Years, Fifth Edition; page 79 (Liberty Belle Books 1997)
THE REJECTIONS
Claims 1 through 5, 7 through 20, 22 and 23 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Fey in view
of Ugawa.
Claims 24 through 27 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Fey in view of Ugawa and Bridgeman.
Attention is directed to the main and reply briefs (Paper
Nos. 21 and 23) and to the final rejection and answer (Paper Nos.
13 and 22) for the respective positions of the appellants and the
examiner regarding the merits of these rejections.
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DISCUSSION
Fey, the examiner’s primary reference, discloses a picture
of a so-called “Rock-A-Way” gaming device accompanied by the
following caption:
This 5-pocket nickel version, similar to the Reno, used
a wheel depicting two girls on a teeter-totter that
rocked back and forth before releasing the coin into
the playing field. Edmund Fey patented it as a game of
skill in 1926 [page 79].
As indicated above, independent claim 1 recites a gaming
device comprising, inter alia, a video screen having a plurality
of images and a plurality of positions for the plurality of
images, and means for repeatedly repositioning the plurality of
images as a unit in a coordinated manner to at least two of the
positions to simulate movement of the entire video screen upon
the occurrence of a triggering event. Independent claims 7, 11,
13, 17 and 22 contain similar limitations. The examiner concedes
(see page 2 in the final rejection) that Fey lacks response to
these recitations. According to the examiner, “Fey’s Rock-A-Way
discloses a mechanical version of the claimed invention. Each
and every salient feature of Appellant’s claimed invention
(except for the use of a video screen) was present and well known
in the 1926 Rock-A-Way” (answer, page 6). The examiner further
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Application No. 09/625,884
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submits that “the circular display in the Rock-A-Way device
[i.e., the wheel depicting two girls on a teeter-totter]
corresponds to the video screen” (answer, page 7).
Ugawa discloses “an image display type game machine
includ[ing] an image display apparatus that can provide an image
display of a play field, a flipped ball moving around the play
field, and a variable display device that can cause the visual
representation of the display to change” (column 6, lines 8
through 13).
Equating Ugawa’s image display apparatus to a video screen,
the examiner submits that
[i]t would have been obvious to one of ordinary skill
in the art at the time of the invention to have used a
video screen [as in Ugawa] instead of a mechanical
display [as in Fey] in order to have fewer moving
parts, thus making the [Fey] gaming machine easier to
maintain [final rejection, page 3].
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure
of the primary reference; nor is it that the claimed invention
must be expressly suggested in any one or all of the references.
Rather the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art. In
re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
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Arguably, with the modernization of slot machines, it may
have been obvious to one of ordinary skill in the art to update
Fey’s Rock-A-Way machine by using a video screen as taught by
Ugawa instead of a mechanical system. Even as so modified,
however, the Fey machine still would not respond to the above
noted limitations in independent claims 1, 7, 11, 13, 17 and 22
relating to the repositioning of the plurality of images as a
unit in a coordinated manner to simulate movement of the entire
video screen. The collective disclosures of Fey and Ugawa simply
do not teach, and would not have suggested, this feature. The
examiner’s attempt to overcome this deficiency by analogizing
Fey’s circular wheel to a video screen is not well taken as the
wheel would constitute but a portion of the display shown on the
video screen of the ROCK-A-WAY machine as modified in view of
Ugawa. Hence, rocking movement of the wheel on the video screen
would not simulate movement of the entire video screen.
Thus, the combined teachings of Fey and Ugawa do not justify
the examiner’s conclusion that the differences between the
subject matter recited in independent claims 1, 7, 11, 13, 17 and
22 and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to a
person having ordinary skill in the art. Therefore, we shall not
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sustain the standing 35 U.S.C. § 103(a) rejection of claims 1, 7,
11, 13, 17 and 22, and dependent claims 2 through 5, 8 through
10, 12, 14 through 16, 18 through 20 and 23, as being
unpatentable over Fey in view of Ugawa.
As the examiner’s application of Bridgeman does not cure the
flaws in the Fey-Ugawa combination relative to the subject matter
recited in parent claims 13 and 17, we also shall not sustain the
standing 35 U.S.C. § 103(a) rejection of dependent claims 24
through 27 as being unpatentable over Fey in view of Ugawa and
Bridgeman.
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SUMMARY
The decision of the examiner to reject claims 1 through 5, 7
through 20 and 22 through 27 is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
) APPEALS AND
JOHN P. MCQUADE )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JPM/kis
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