Ex Parte Kuhn et al

Patent Trial and Appeal Board

Jan 28, 2013

11591144 (P.T.A.B. Jan. 28, 2013)

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.
11/591,144 10/31/2006 Michael J. Kuhn DD1-067 7879
83993 7590 01/29/2013
DigiDeal Corporation
5123 East Third Street
Spokane, WA 99212
EXAMINER
DUFFY, DAVID W
ART UNIT PAPER NUMBER
3716
MAIL DATE DELIVERY MODE
01/29/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MICHAEL J. KUHN, and RANDY D. SINES
____________________

Appeal 2011-000024
Application 11/591,144
Technology Center 3700
____________________

Before: MICHAEL C. ASTORINO, PATRICK R. SCANLON and
BARRY L. GROSSMAN, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/591,144

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
67-75, 81, and 84-86. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The Claimed Subject Matter
Claims 67, 81, and 85 are the independent claims. Claim 67 is
illustrative of the claimed subject matter:
67. A casino table for play by multiple players
who attend and participate in a casino game at a
live game location about the casino table,
comprising:
said casino table having plural playing
positions to accommodate plural players;
a plurality of player displays at the playing
positions, said player displays showing a plurality
of changeable display images for said players;
at least one common display upon which
playing information is displayed for viewing by
the plurality of players;
wherein the casino table displays at least
some of the playing information on the common
display as playing instructions text;
wherein the casino table changes the playing
instructions text during the casino game to impart
the playing information;
wherein the casino table displays the playing
instructions text in substantially a same part of the
common display while the playing instructions text
changes;
wherein the casino table changes the playing
instructions text between playing information for a
dealer player and playing information for one or
more non-dealer players;
wherein when the casino table displays the
playing information for the dealer player the
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casino table orients the playing instructions text
toward a dealer playing position for readability by
the dealer player; and
wherein when the casino table displays the
playing information for the one or more non-dealer
players the casino table orients the playing
information text toward one or more non-dealer
playing positions for readability by the one or
more non-dealer players.

References
The Examiner relied upon the following prior art references:
Tarantino US 5,669,817 Sept. 23, 1997
Busch US 3,929,338 Dec. 30, 1975
Dickinson US 5,951,397 Sept. 14, 1999
Rejections
Appellant seeks review of the following rejections (App. Br. 6)1:
1. Claims 67-75 rejected under 35 U.S.C. § 103(a) as unpatentable
over Tarantino;
2. Claims 85 and 86 rejected under 35 U.S.C. § 103(a) as
unpatentable over Tarantino in view of Busch;
3. Claim 81 rejected under 35 U.S.C. § 103(a) as unpatentable over
Tarantino in view of Dickinson; and
4. Claim 84 rejected under 35 U.S.C. § 103(a) as unpatentable over
Tarantino in view of Dickinson and Busch.

1 Citations to “App. Br. ___” are to the indicated page of the Appeal Brief
filed on May 24, 2010.
Appeal 2011-000024
Application 11/591,144

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ANALYSIS
Claims 67-75 Rejected Under 35 U.S.C. § 103(a)
As Unpatentable Over Tarantino
The Examiner found that Tarantino disclosed the claimed elements
but did not explicitly disclose the “common display” displaying instruction
text orientated to the dealer or player positions. Ans. 4.2 Thus, the
Examiner found that the prior art and the claimed invention differed only in
the content and orientation of the content on a common display. Ans. 10.
The Examiner construed the displayed content and its orientation as “printed
matter” that did not alter the functionality of the system or provide a new or
unobvious relationship with the substrate. Ans. 4, 10.3 As such, the
Examiner concluded that the specific content and orientation of the content
were obvious matters of design choice. Id.
Relevant to our decision in this case, Appellants argue that Tarantino
fails to disclose or suggest a “common display” that orients the displayed
information toward the intended reader. App. Br. 16.. Appellants also argue

2 Citations to “Ans. ___” are to the indicated page of the Examiner’s Answer
mailed on July 8, 2010.
3 In the Answer at page 10, the Examiner cited MPEP § 2106.01 for support
for his position that “nonfunctional descriptive material is given little to no
patentable weight absent a new and unobvious functional relationship
between the printed matter and the substrate.” This section of the MPEP
deals with subject matter eligibility determinations during examination of
process claims in which a law of nature, a natural phenomenon, or a
naturally occurring relation or correlation is a limiting element or step. This
is not the case with claim 67. It appears that the Examiner may have
intended to cite MPEP § 2106, which states that a mere arrangement of
printed matter is not statutory. But see, MPEP § 2111.05 relating to the
patentable weight for “printed matter” when the printed matter and the
associated product have a “functional relationship.” See also, MPEP
§ 2112.01(III).
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that the Examiner’s focus on the content and orientation of the content on a
common display as an “obvious design choice” is a “mere conclusory
statement” unsupported by the evidence. App. Br. 24. According to
Appellants, the “focus of claim 67” is not the content of the video output,
but the fact that the claimed casino table can orient a visual output toward an
intended recipient. Reply Br. 9.4
The “Printed Matter” In Claim 67
The “printed matter” found by the Examiner in claim 67 is (1) the
content and (2) the orientation of the content displayed in the “common
display”. Ans. 4, 10. The Examiner did not cite specifically to the claim
language the Examiner considered to be “printed matter.” It is clear,
however, from the language of claim 67 that the “content printed matter”
includes information on the common display which provides playing
information for viewing by all players, including a dealer-player and non-
dealer players. The “orientation printed matter” includes the casino table
changing the orientation of the instructions toward the intended recipient:
e.g., player or dealer.5 We address here only the “orientation printed
matter.”

4 Citations to “Reply Br. ___” are to the indicated page of the Reply Brief
filed on September 8, 2010.
5 Regarding the “orientation printed matter”, claim 67 states in relevant part
(emphasis added):
“. . . wherein when the casino table displays the playing
information for the dealer player the casino table orients the
playing instructions text toward a dealer playing position for
readability by the dealer player; and
wherein when the casino table displays the playing
information for the one or more non-dealer players the casino
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“Printed matter” involves the addition of printed material, such as
written instructions, to a known product. King Pharmaceuticals, Inc. v. Eon
Labs, Inc., 616 F. 3d 1267, 1279 (Fed. Cir. 2010). See also, MPEP
§ 2111.05 and cases cited therein.
Here, the “orientation printed matter” claim limitations (see footnote
5) do not involve adding printed information, text, or a diagram to a product.
They involve the claimed function of the casino table orienting the direction
of the text. Thus, a printed matter analysis has no relevance here. Tarantino
does not disclose or suggest orienting any information or text, as recognized
by the Examiner. Ans. 4. There is no evidence or adequate rationale to
support the Examiner’s conclusion that these claim limitations are “a matter
of obvious design choice” as found by the Examiner. Ans. 4. Accordingly,
there is no basis for sustaining the Examiner’s rejection that the casino table
performing the function of orienting the text toward the dealer player or non-
dealer player as called for in claim 67 would have been obvious in view of
Tarantino.
For the above reasons, the Examiner fails to establish a prima facie
case of obviousness of the subject matter of claim 67 and its dependent
claims.
Claims 85 and 86 Rejected Under 35 U.S.C. § 103(a)
As Unpatentable Over Tarantino In View Of Busch
Independent claim 85 contains the same “orients” language as claim
67 (“… wherein … the casino table orients the playing instructions” or

table orients the playing information text toward one or more
non-dealer playing positions for readability by the one or
more non-dealer players.”

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“orients the playing information”). The Examiner applied the same analysis
as in claim 67 and construed the displayed content and its orientation as
“printed matter.” Ans. 7. As such, the Examiner concluded that the specific
content and orientation of the content were obvious matters of design choice.
Id. Busch was cited for the disclosure of a flat panel display, as was called
for in claim 85. Ans. 7. The Examiner’s findings and associated reasoning
based on Busch does not cure the deficiencies of the rejection based on the
“orientation printed matter” claim limitations being obvious matters of
design choice. Accordingly, for the reasons stated above with respect to
claim 67, we cannot sustain the rejection of claims 85 and 86.
Claim 81 Rejected Under 35 U.S.C. § 103(a)
As Unpatentable Over Tarantino In View Of Dickinson
Independent claim 81 contains the same “orients” language as claim
67 (“… wherein … the casino table orients the playing instructions” or
“orients the playing information”). The Examiner applied the same analysis
as in claim 67 and construed the displayed content and its orientation as
“printed matter.” Ans. 9. As such, the Examiner concluded that the
specific content and orientation of the content were obvious matters of
design choice. Id. Dickinson was cited for the disclosure of a touch screen
display, as called for in claim 85. Ans. 8-9. The Examiner’s findings and
associated reasoning based on Dickinson do not cure the deficiencies of the
rejection based on the “orientation printed matter” claim limitations being
obvious matters of design choice. Accordingly, for the reasons stated above
with respect to claim 67, we cannot sustain the rejection of claim 81.

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Claim 84 Rejected Under 35 U.S.C. § 103(a)
As Unpatentable Over Tarantino In View Of Dickinson And Busch
Claim 84 depends from claim 81, discussed above. As such, claim 84
contains the same “orients” language as claim 81. As stated above, the
Examiner’s findings and associated reasoning based on Dickinson and
Busch do not cure the deficiencies of the rejection based on the “orientation
printed matter” claim limitations being obvious matters of design choice.
Accordingly, for the reasons stated above with respect to claims 67 and 81,
we cannot sustain the rejection of claim 84.
DECISION
WE REVERSE the decision of the Examiner to reject claims 67-75,
81, and 84-86.

REVERSED

Klh