Ex Parte Krenn et al

Board of Patent Appeals and Interferences

May 29, 2009

10644408 (B.P.A.I. May. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte PETER KRENN and ERNST BLAHA
__________

Appeal 2009-03871
Application 10/644,408
Technology Center 3700
__________

Decided:2 May 29, 2009
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and FRANCISCO C.
PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

1 Shuffle Master, Inc., is the real party in interest.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-0387
Application 10/644,408

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a device
for shuffling cards. The Examiner has rejected the claims as anticipated and
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Claims 1-15 and 25-38 stand finally rejected and are on appeal (App.
Br. 5). Claims 1, 25, and 35, the appealed independent claims, are
representative and read as follows:
1. A device for shuffling cards comprising: a pre-shuffler;
and a main shuffler, the pre-shuffler comprising: a plurality of
compartments for holding groups of playing cards to be
shuffled; and an output portion of the pre-shuffler, the output
portion delivering one group of cards at a time to an input
portion of the main shuffler, the pre-shuffler delivering groups
of cards to an input portion of the main shuffler in a different
order than an order inputted into the pre-shuffler, each group of
cards being input separately as an entire group, so the main
shuffler rearranges the order of cards input into the main
shuffler and outputting cards in a substantially random order.

25. A device for shuffling cards comprising:
a pre-shuffler and a main shuffler, the pre-shuffler
comprising:
a plurality of compartments for holding groups of playing
cards to be shuffled;
an output portion of the pre-shuffler, the output portion
delivering one group of multiple playing cards at a single time,
without shuffling cards in the one group, to an input portion of
the main shuffler,
the main shuffler being capable of rearranging the order
of the groups of multiple cards input into the main shuffler and
for outputting cards in a substantially random order.

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35. A device for shuffling cards comprising:
a platform of compartments, and
a main shuffler,
the platform of compartments comprising, a plurality of
compartments for holding groups of playing cards in each
compartment of the platform to be shuffled; and an output
portion of the platform of compartments, the output portion
delivering one group of cards at a time to an input portion of the
main shuffler, the main shuffler for rearranging the order of
cards input into the main shuffler from the platform of
compartments and for outputting cards in a substantially
random order, and the output portion selecting single groups of
cards within a single compartment to be randomly delivered to
the input portion of the main shuffler.

The Examiner cites the following documents as evidence of
unpatentability:
Fineman US 3,944,230 Mar. 16, 1976
Johnson US 6,676,127 B2 Jan. 13, 2001

The following rejections are before us for review:
Claims 1-3, 5, 6, 11, 15, 25-27, 29, 30, and 33-38 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Fineman (Ans. 4-5).
Claims 4, 7-10, 12-14, 28, 31, and 32 stand rejected under 35 U.S.C. §
103(a) as being obvious in view of Fineman and Johnson (Ans. 5-6).
ANTICIPATION -- FINEMAN
ISSUE
The Examiner finds that Fineman anticipates the asserted claims
because “Fineman teaches a device that has an inner case a platform with a
plurality of compartments (pre-shuffler) and an outer case (main shuffler)
for aligning and the outputting cards (see abstract and figures 1 and 2)”
(Ans. 5).
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Appellants contend, among other things, that the claims subject to this
ground of rejection require the device to have the distinct components of
both a pre-shuffler and a main shuffler that outputs the pre-shuffled cards in
a substantially random order (App. Br. 13). However, Appellants argue,
“there are no two distinct components of a pre-shuffler and a shuffler in
Fineman” (id.).
In view of the respective positions advanced by Appellants and the
Examiner, the issue with respect to this rejection is whether the Examiner
erred in finding that Fineman’s device includes a pre-shuffler as well as a
main shuffler capable of rearranging the pre-shuffled cards and outputting
them in a substantially random order.
FINDINGS OF FACT (“FF”)
1. Fineman discloses “a card shuffler which automatically divides the
pack into a plurality of substantially equal portions and recombines the
playing cards in an order different from that in which the deck was originally
arranged” (Fineman, col. 1, ll. 5-9).
2. Figure 1 of Fineman, reproduced below, “is a perspective view of the
card shuffler with an illustrative deck of cards inserted therein” (Fineman,
col. 2, ll. 17-18):
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Figure 1 shows “[c]ard shuffler 1 [which] comprises an outer
rectangular case 3 and a substantially rectangular inner case 5. Inner case 5
is slidably disposed in outer case 3” (Fineman, col. 2, ll. 32-35).
3. Figure 2 of Fineman, reproduced below, “is a cross-sectional side
elevation of the card shuffler” (Fineman, col. 2, ll. 19-20):

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Figure 2 shows:
Inner case 5 comprises side walls 7 and 9, front wall 11 and
back wall 13. Running from side wall 7 to side wall 9 are a
plurality of separators 15. Separators 15 divide the interior of
inner case 5 into a plurality of compartments 17. Each
compartment is defined by a front surface 16 and rear surface
18.

(Fineman, col. 2, ll. 36-42.)
4. Figure 6 of Fineman, reproduced below, “is a side cross-sectional
view of the card shuffler illustrating a particular moment during its
operation” (Fineman, col. 2, ll. 26-28):

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Figure 6 shows “[c]ard shuffler 1 . . . lifted from the surface of the
table [51] and held at approximately a 45° angle . . . [w]hile . . . the inner
case 5 is slowly slid out of outer case 3” (Fineman, col. 5, ll. 1-4).
As also seen in Figure 6, “[n]ear the bottom of outer case 3 a plurality
of runners 41 extend from side wall 37 to side wall 39” (id. at col. 3, ll. 46-
48).
5. Fineman describes the function of its shuffler in the context of Figure
6 as follows:
As inner case 5 moves out of outer case 3, back surface 18 of
each of the compartments 17 forces the playing cards in
compartment 17 forward, eventually causing the forwardmost
card in compartment 17 over the forward edge of face 43. At
substantially the same instant the first card (the card closest to
front surface 16 of the respective compartments 17) from each
of the compartments 17 will be ejected. Similarly, the
remaining cards will be ejected from each of the compartments
17, one card at a time from each compartment 17 at
substantially the same instant. The cards will fall onto the table
surface 51.

(Fineman, col. 5, ll. 6-18.)
6. Regarding Figure 6, Fineman further states that “the first card from
each compartment 17 is shown as they landed on table surface 51. Also
shown is the second card from each compartment in the process of being
ejected from card shuffler 1. The remaining unshuffled playing cards are
shown in their respective compartments 17” (Fineman, col. 5, ll. 19-24).
PRINCIPLES OF LAW
“[T]he examiner bears the initial burden . . . of presenting a prima
facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992).
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It is well settled that, “[t]o anticipate a claim, a prior art reference
must disclose every limitation of the claimed invention, either explicitly or
inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
It is also well settled that “‘[t]here is nothing intrinsically wrong with
[defining something by what it does rather than what it is] in drafting patent
claims.’” Id. at 1478 (quoting In re Swinehart, 439 F.2d 210, 212 (CCPA
1971)).
However, “‘[f]unctional’ terminology may render a claim quite broad
. . .[;] a claim employing such language covers any and all embodiments
which perform the recited function.” Swinehart, 439 F.2d at 213; see also
Schreiber, 128 F.3d at 1478-79 (holding that a prior art apparatus meeting
all claimed structural limitations was anticipatory because it was inherently
capable of performing the claimed function).
ANALYSIS
We agree with Appellants that the Examiner has not made a prima
facie case that Fineman anticipates the rejected claims.
Claim 1 recites, for shuffling cards, a device comprised of a pre-
shuffler and a main shuffler. The pre-shuffler has a plurality of
compartments for holding groups of playing cards, and an output portion.
The output portion of the pre-shuffler delivers one group of cards at a time
to an input portion of the main shuffler, the groups of cards being delivered
to the main shuffler in a different order than the order inputted into the pre-
shuffler, with each group of cards being input separately as an entire group.
Claim 1 recites that the main shuffler “rearranges the order of cards
input into the main shuffler and output[s the] cards in a substantially random
order.”
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Independent claim 25 recites a device similar to claim 1, including a
pre-shuffler, and a main shuffler that is “capable of rearranging the order of
the groups of multiple cards input into the main shuffler and for outputting
cards in a substantially random order.”
Independent claim 35 also recites a card shuffling device, with a
“platform of compartments” instead of a pre-shuffler. Like claims 1 and 25,
however, claim 35’s device also has a “main shuffler for rearranging the
order of cards input into the main shuffler from the platform of
compartments and for outputting cards in a substantially random order.”
The Examiner finds that Fineman’s device is encompassed by the
claims because the claimed pre-shuffler reads on Fineman’s inner case (5),
with its plurality of compartments, and the claimed main shuffler reads on
the outer case (3), which aligns and outputs the playing cards (see Ans. 5).
We do not agree.
As noted, each of the independent claims requires the main shuffler to
be capable of rearranging the order of cards put into it, such that the cards
are outputted from the main shuffler in a substantially random order. We
note that the outer case 3 of Fineman’s shuffler contains runners 41 that
allow only the forwardmost card of each group of cards in the inner case to
pass through to the table (see FF 3-6).
However, the outer case does not rearrange the cards in a substantially
random order, as required by the claims. Rather, the first card fed into the
outer case will always be the first card output to the table. Also, each
“batch” of cards output to the table always consists of the top card from each
of the groups in the compartments in the inner case (see Fineman, col. 5, ll.
19-24 (“[T]he first card from each compartment 17 is shown as they landed
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on table surface 51.”); see also FF 5, 6). We therefore do not agree with the
Examiner that the outer case of Fineman’s device is capable of outputting
cards in a substantially random order, as required by independent claims 1,
25, and 35.
The Examiner argues that Appellants “seem[] to be arguing subject
matter that is not properly being claimed” (Ans. 6). Specifically, the
Examiner urges, Appellants “seem[] to be arguing the function of his
invention. Examiner notes that applicant has presented apparatus claims
only. The method by which cards are inserted into applicant’s device is
given no weight at this juncture” (id.).
We are not persuaded by this argument. It may be true that
Appellants’ arguments are directed to functional limitations. However, for
an apparatus to meet a functional limitation, the apparatus must be capable
of performing the claimed function. See In re Swinehart, 439 F.2d at 213;
see also Schreiber, 128 F.3d at 1478-79. In the instant case, for the reasons
discussed above, we do not see, and the Examiner has not explained, how
Fineman’s device meets the limitations directed to the main shuffler.
In sum, we agree with Appellants that the Examiner erred in finding
that Fineman’s device includes a pre-shuffler as well as a main shuffler
capable of rearranging the pre-shuffled cards and outputting them in a
substantially random order. Because Fineman’s device does not meet all of
the limitations of claims 1, 25, and 35, we reverse the Examiner’s rejection
of those claims, and their dependent claims 2, 3, 5, 6, 11, 15, 25-27, 29, 30,
and 33-38, as anticipated by Fineman.

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OBVIOUSNESS
ISSUE
Claims 4, 7-10, 12-14, 28, 31, and 32 stand rejected under 35 U.S.C. §
103(a) as being obvious in view of Fineman and Johnson (Ans. 5-6).
Regarding claims 4 and 28, the Examiner concedes that “Fineman
fails to teach horizontal movement of his cards with respect to the input
portion of the main shuffler” (Ans. 5). To meet that limitation, the
Examiner cites Johnson as teaching “lateral movement of his cards during
delivery (see col. 2, lines 7-14)” (id.). Based on these teachings, the
Examiner concludes that “[i]t would have been obvious to one of ordinary
skill in the art to modify Fineman to include lateral (side to side or
horizontal) movement to add variety to the card handling process” (id.).
Regarding claims 7-10, 12-14, 31, and 32, the Examiner concedes that
“Fineman fails to teach a rack that rotates,” and cites Johnson’s teaching of
“a carousel mechanism, with multiple compartments, which rotates in the
card handling process” to meet that limitation (id.). The Examiner
concludes that “[i]t would have been obvious to modify Fineman to include
a rotating mechanism to add variety to his device” (id. at 6).
Appellants contend:
There is not any reasonable nexus for asserting it would
be obvious to physically attach and align the shuffler of
Fineman (which must deliver cards onto a flat, extended surface
to work) with the shuffler of Johnson. In addition, the two
distinct shufflers cannot be combined in any obvious method
that would enable each to provide its own required functions.
Fineman drops multiple cards along an extended flat surface,
which is not existent as an entry feature of the shuffler of
Johnson. It is physically impossible to combine the two
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shufflers of Fineman and Johnson without some drastic and
undefined alteration of the structure of both shufflers.

(App. Br. 17 (emphasis removed).)
In view of the respective positions advanced by Appellants and the
Examiner, the issue with respect to this rejection is whether the Examiner
has made a prima facie case that the cited references would have prompted a
person of ordinary skill in the art to incorporate a horizontal card movement
as recited in claim 4, or a rotating mechanism as required by claim 7, into
Fineman’s card shuffling device.
FINDINGS OF FACT
7. Claim 4 recites:
4. The device of claim [1wherein the pre-shuffler comprises an
input card holder segmented into the compartments, the card holder
being moveable with respect to the input portion of the main shuffler
for delivering one group of cards at a time to the input portion of the
main shuffler; and]
wherein the input card holder is moved substantially
horizontally by a motor drive to position a group of cards with respect
to the input portion of the main shuffler.

(App. Br. 19 (incorporating the language of claim 3).)

8. Claim 7 recites:
7. The device of claim [1 wherein the pre-shuffler comprises an
input card holder segmented into the compartments, wherein a group
of cards in the pre-shuffler is positioned with respect to the input
portion of the main shuffler for allowing the group of cards to be
deposited into the input portion of the main shuffler,
[t]he device . . . further comprising a platform supporting the
input card holder, the platform having an opening, the holder being
movable relative to the platform to allow a group of cards to be
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moved over the opening so as to fall through the opening and be
delivered to the input portion of the main shuffler . . . ;]
wherein the input card holder comprises a rack having teeth, the
pre-shuffler further comprising a pinion that engages the rack and is
rotated to move the card holder relative to the input portion of the
main shuffler.

(App. Br. 19-20 (incorporating the language of claims 5 and 6).)
9. Johnson discloses:
A card handling device having either a vertical stack of
compartments or a carousel of compartments is used to receive
individual cards from a card supply. The compartments may be
moved relative to the card supply, preferably in two different
directions, such as up and down or clockwise and
counterclockwise. The card handling may include shuffling,
sorting, validation, and other playing card processes.

(Johnson, abstract.)
10. Figure 2 of Johnson is reproduced below:

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Figure 2 shows “collating apparatus 10 for providing sorted and/or
shuffled decks of playing cards from a stack of cards 11 [which] includes
holding means 12 for holding the cards in a vertical column 13 above card
feeder 14 which feeds the lowermost card of the stack past the sensor 15”
(Johnson, col. 3, ll. 29-33).
11. To sort or shuffle the inputted cards, the “sensor is coupled to a
microprocessor 16 to record either the presence of a card and/or the identity
of a card by its suit and value” (id. at col. 3, ll. 33-35). Microprocessor 16,
in turn, is coupled to drive motors 35 and 36 of feed means 14, as well as a
“drive means (not shown) for transverse movement of each carriage 18, card
transport drives 37 associated with carriages 18, magazine drives 22 and
drive 33 associated with unloading conveyors 31 for selective coordinated
operation to collate packs of shuffled or sorted cards” (id. at col. 3, ll. 42-
47).
12. Fineman discloses that “[p]rior art card shufflers have suffered from
numerous faults, of which the principal fault is extreme complexity. Such
complexity generally results in a device disproportionally expensive and
overly sensitive to mechanical failures” (Fineman, col. 1, ll. 12-16).
13. Fineman discloses that one object of its invention is “to obtain a
mechanical card shuffler without unnecessary mechanical complexity. . . .
It is another object of this invention to obtain a mechanical card
shuffler that divides an unshuffled deck into substantially equal parts
without moving elements (id. at col. 1, ll. 41-49).
14. Fineman discloses that “[i]t is yet another object of the present
invention to attain the foregoing objects in a simple, inexpensive and easily
constructed device” (id. at col. 1, ll. 50-52).
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PRINCIPLES OF LAW
In proceedings before the Patent and Trademark Office, the Examiner
bears the burden of establishing a prima facie case of obviousness based
upon the prior art. In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992).
In KSR Int' l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme
Court rejected a “rigid approach” to the obviousness question, and instead
emphasized that “[t]hroughout this Court’s engagement with the question of
obviousness, our cases have set forth an expansive and flexible approach . . .
.” Id. at 415. The Court also rejected the use of “rigid and mandatory
formulas” as being “incompatible with our precedents.” Id. at 419; see also
id. at 421 (“Rigid preventative rules that deny factfinders recourse to
common sense, however, are neither necessary under our case law nor
consistent with it.”).
The Court thus reasoned that the analysis under 35 U.S.C. § 103 “need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” Id. at 418; see
also id. at 421 (“A person of ordinary skill is . . . a person of ordinary
creativity, not an automaton.”).
While it emphasized a flexible approach, the Court nonetheless
reaffirmed that “a patent composed of several elements is not proved
obvious merely by demonstrating that each of its elements was,
independently, known in the prior art.” Id. at 418.
Rather, as the Court stated:
[I]t can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention
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does . . . because inventions in most, if not all, instances rely
upon building blocks long since uncovered, and claimed
discoveries almost of necessity will be combinations of what, in
some sense, is already known.

Id. at 418-419 (emphasis added); see also id. at 418 (requiring a
determination of “whether there was an apparent reason to combine the
known elements in the fashion claimed by the patent at issue”) (emphasis
added).
Accordingly, as our reviewing court has stated, “obviousness requires
a suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup Intern.
Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d
981, 985 (CCPA 1974)).
ANALYSIS
We agree with Appellants that the Examiner has not made a prima
facie case that the cited references would have prompted a person of
ordinary skill in the art to incorporate a horizontal card movement as recited
in claim 4, or a rotating mechanism as required by claim 7, into Fineman’s
card shuffling device.
With respect to claim 4, the Examiner reasons that a person of
ordinary skill would have been prompted to add Johnson’s horizontal feeder
14 (see FF 10) to Fineman’s device “to add variety to the card handling
process” (Ans. 5). Regarding claim 7, the Examiner similarly concludes that
an ordinary artisan would have considered it obvious to include Johnson’s
rotating carousel as part of Fineman’s card shuffler, “to add variety to his
device” (id.).

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The evidence of record does not support the Examiner’s position.
Fineman explicitly states that its objective is to provide a way to shuffle
cards using a device “without unnecessary mechanical complexity” and
“without moving elements” (Fineman, col. 1, ll. 41-49 (FF 13; see also FF
12, 14)).
In contrast, by including Johnson’s horizontal feeder as part of
Fineman’s device, one would be adding two mechanical drive motors 35 and
36, as well as a transport drive 37, and a series of multiple rollers (see FF
10). Including Johnson’s rotating carousel would further add not only the
carousel itself, but also magazine drive 22, as well as the associated
unloading drive 33 and conveyors 31 (see FF 10, 11).
Given Fineman’s disclosure that its intent in preparing its shuffling
device was to produce a simple device without complex moving parts, we do
not agree with the Examiner that a person of ordinary skill in the art would
have been prompted to include Johnson’s relatively complex motor-driven
card-feeder 14, and sorter 25, as parts of Fineman’s device. Moreover, the
Examiner points to no evidence of record suggesting that an ordinary artisan
would have inferred that it would desirable, or even suitable, to add variety
or complexity to Fineman’s card handling device.
We therefore reverse the Examiner’s rejection of claims 4 and 7 as
being obvious in view of Fineman and Johnson. Claim 28 recites essentially
the same limitations as claim 4 with respect to a motor-driven horizontal
feeder, and claim 31 recites essentially the same limitations as claim 7. We
therefore also reverse the Examiner’s rejection of claims 28 and 31 as being
obvious over these references.
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Claims 12 and 13 essentially recite that the device has rotating rollers
in the main shuffler input portion. Claim 14 recites that the main shuffler
has a plurality of moveable card receptacles that are aligned using a
controllable drive. While it may be true that Johnson discloses these
elements, for the reasons discussed above, we do not agree with the
Examiner that a person of ordinary skill in would have been prompted to add
these complicating mechanical components to Fineman’s simplified
shuffling device. We therefore reverse the Examiner’s rejection of claims
12-14 as being obvious over Fineman and Johnson.
Claims 8-10 depend directly from claim 1, and claim 32 depends
directly from claim 25. While the Examiner included claims 8-10 and 32 in
the obviousness rejection, the Examiner failed to explain why the limitations
of those claims are obvious in view of the cited references.
Moreover, as noted above, we are not persuaded that Fineman
anticipates claims 1 and 25. Because the Examiner has not explained how
Johnson remedies the deficiencies of Fineman with respect to claims 1 and
25, we are compelled to conclude that the Examiner has not made a prima
facie case of obviousness with respect to their dependent claims 8-10 and 32.
We therefore reverse the Examiner’s obviousness rejection of claims 8-10
and 32.
SUMMARY
We reverse the Examiner’s rejection of claims 1-3, 5, 6, 11, 15, 25-27,
29, 30, and 33-38 under 35 U.S.C. § 102(e) as being anticipated by Fineman.
We reverse the Examiner’s rejection of claims 4, 7-10, 12-14, 28, 31,
and 32 under 35 U.S.C. § 103(a) as being obvious in view of Fineman and
Johnson.
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REVERSED
dm

MARK A. LITMAN & ASSOCIATES, P.A
YORK BUSINESS CENTER, SUITE 205
3209 WEST 76TH STREET
EDINA, MN 55435
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