Ex Parte Lind et al

Board of Patent Appeals and Interferences

Mar 23, 2009

10869159 (B.P.A.I. Mar. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CLIFTON LIND
and
JEFFERSON C. LIND,
Appellants
____________________

Appeal 2008-4925
Application 10/869,159
Technology Center 3700
____________________

Decided: March 24, 20091
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Before CAROL A. SPIEGEL, ERIC GRIMES, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

SPIEGEL, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of our decision entered September 10,
2008 ("Decision"), in which we affirmed the rejection of claims 1-19 under
35 U.S.C. § 103(a) over an opinion issued by the National Indian Gaming

1 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 date).
Appeal 2008-4925
Application 10/869,159

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Commission ("NIGC") re: Sierra Design Group "Mystery Bingo" Game
Classification Opinion ("SDG:MB").
The request for consideration has been considered, but is DENIED
with respect to making any modifications in the decision.
I. Summary of the Original Decision
The subject matter on appeal involves a method for conducting bingo
games wherein at least two sets of bingo numbers must be drawn to produce
a game-ending bingo pattern and wherein the number of bingo numbers
drawn in the first set varies from one bingo game to the next (Decision 2-3).
We found that SDG:MB disclosed a Mystery Bingo game having a game-
ending straight line (horizontal, vertical, or diagonal) pattern of five bingo
numbers on the bingo card; and, wherein a player may also win a
progressive prize by obtaining a four-corner pattern (Decision 4-5, FF2 3).
We found that the first set of bingo numbers in the Mystery Bingo game
contained four numbers and the next set of bingo numbers contained the
bingo numbers necessary to allow a potential bingo in that game, based on
the number of cards in play (Decision 5, FF 4). We found that, according to
NIGC, the tension built up over the course of successive bingo number
draws is central to the game of bingo and that there must be at least two sets
of bingo numbers drawn before a player can win the game or any interim or
consolation game to have a contest element (Decision 6, FF 7). We found
that NIGC concluded that the Mystery Bingo game would satisfy Indian
Gaming Regulations "by providing multiple ball draws . . . and releasing
numbers in at least two sets" and noted that "[p]articipation by players is . . .
encouraged by . . . successive ball releases" (Decision 6, FF 8-9).

2 Finding of Fact ("FF").
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We noted that the Examiner concluded that there were only a finite
number of modifications possible to place the Mystery Bingo game in
compliance with Indian Gaming Regulations, i.e., (1) to eliminate the free
space, (2) to draw a constant number of bingo numbers less than four on the
first draw, and (3) to draw a variable number of bingo numbers less than
four for the first draw (Decision 7).
In our analysis, we found that there were a finite number of identified,
predictable solutions that a person of ordinary skill had good reason to
pursue in order to ensure that at least two sets of bingo numbers were drawn
before a player could win the bingo game or any interim or consolation
prize, e.g., a four-corner match (Decision 10). We found that just replacing
the free space on a bingo card with a number would not ensure at least two
sets of bingo numbers must be drawn before a player could win an interim or
consolation prize (id.). We found that it was within ordinary skill in the art
to vary the number of bingo numbers drawn in the first set of a Mystery
Bingo game, e.g., based on the cards in play, to ensure that at least two sets
of bingo numbers must be drawn before a player can win the bingo game or
any consolation or interim game (id.). We, therefore, agreed with the
Examiner that it would have been obvious to modify the Mystery Bingo
game by replacing the constant number of four bingo numbers drawn in the
first draw with a variable number of bingo numbers to ensure at least two
draws of bingo numbers before a player could win the bingo game or any
consolation or interim game to satisfy NIGC (id.).
In response to Appellants' arguments, we stated:
Appellants' argument that the suggestion to modify
the SDG:MB reference must be apparent from the
reference itself is not persuasive for two reasons.
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First, as made clear by the KSR court, rigidly
relying on what is written in the prior art unduly
confines the use of the knowledge and creativity of
an ordinarily skilled artisan. Second, while the
SDG:MB reference did not expressly mandate
what modification(s) to make to ensure at least two
bingo number draws before winning, the reference
clearly stated the SDG:MB system needed to be
modified to ensure at least two bingo number
draws before winning the bingo game or any
consolation or interim game (see e.g., FF 5-7).
Appellants' argument that the number of
predictable, identifiable obvious-to-try
modifications to ensure at least two bingo draws
before winning the bingo game or any consolation
or interim game is not as finite as asserted by the
Examiner is also unpersuasive. Appellants have
not explained why an ordinarily skilled artisan
would have identified changing the design of a
standard bingo card as an obvious-to-try
modification, e.g., as a modification that would
heighten an ordinary bingo player's interest and
enjoyment in the game. [Decision 10-11.]
II. The Request for Rehearing
Appellants contend that the obvious-to-try analysis set forth in KSR
Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742 (2007) "requires the use of
identified, known solutions" (Req. Reh'g 6). Appellants argue that there are
only two ways a solution can be identified or known, i.e., either it must be
identified or known in the prior art or it could be "officially noticed" as well-
known in the art (Req. Reh'g 4-8). In Appellants' words, "because there is
no evidence that the variable dividing point was an identified, known
solution, then the rejection using the variable dividing point as an identified
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solution in the KSR obvious-to-try test does not stand up to scrutiny, and
must be reversed"(Req. Reh'g. 8).
III. Issue
Thus, the issue before us is whether the "obvious-to-try" analysis set
forth in KSR requires the relied upon prior art to identify the limitation of a
claim which solves a known problem as a known solution to the problem.
IV. Analysis
In KSR, the Court stated that
[w]hen there is a design need or market pressure to
solve a problem and there are a finite number of
identified, predictable solutions, a person of
ordinary skill in the art has good reason to pursue
the known options within his or her technical
grasp. If this leads to the anticipated success, it is
likely the product not of innovation but of ordinary
skill and common sense. KSR, 127 S.Ct. at 1742.
According to the Court, rigid rules that deny recourse to common sense are
neither necessary under, nor consistent with, the Court's case law. Id.
Here, the "problem" facing those of ordinary skill in the art is how to
maintain a competitive element in multi-card bingo games. As suggested by
NIGC in its SDG:MB opinion, the specific problem is how to build up
tension over the course of successive bingo number draws before a player
can win the game or any interim or consolation prize. A solution identified
by NIGC is to require that at least two sets of bingo numbers be drawn
before a player can produce a winning pattern.
A standard bingo card is a five-by-by matrix of numbered squares
having a "free spot" or "wild bingo number" in the center square. If a set of
four bingo numbers is drawn, it is possible to produce a game-ending pattern
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of five bingo numbers in a straight line (horizontal, vertical or diagonal) on a
first draw because the player is actually being given five numbers (i.e., the
four drawn numbers plus the center square). SDG:MB explicitly suggests
reducing the number of bingo numbers the player is given so the player
cannot produce a game-ending pattern after the first draw – remove the "free
spot," i.e., the player's wild bingo number. However, if a consolation or
interim prize can be won by producing a four-corner pattern, a player can
still win a prize on the first draw of four bingo numbers whether or not the
"free spot" is removed because it is in the center of the bingo card and, by
definition, not a "free corner." To remove this possibility of an early, first
draw four-corner winning pattern, SDG:MB fairly suggests drawing less
than four bingo numbers in the first set. In other words, SDG:MB identifies
a predictable solution to the problem of maintaining the competitive element
and tension of bingo – draw less than the number of bingo numbers required
to win in the first draw. Since a standard bingo game may or may not
include a consolation or interim prize in addition to the game-ending bingo
prize, SDG:MB fairly suggests varying the number of bingo numbers drawn
in the first draw by drawing, for example, three, two, or one number(s)
depending on the patterns designated for consolation or interim prizes, to
prevent producing a prize-winning pattern on the first draw. Thus, SDG:MB
expressly discloses one solution to prolonging the tension of a bingo game
and implicitly suggests its predictable variations, especially where a bingo
game includes interim winning patterns, e.g., four corners, in addition to the
game-ending five in a line bingo pattern – draw fewer bingo numbers than
necessary to win in the first set of bingo numbers given to the players.
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A rigid requirement of relying on only what is written in a prior art
reference would, as the Supreme Court noted, unduly confine the knowledge
and creativity within the ordinary grasp of an ordinarily skilled artisan.
KSR, 127 S.Ct. at 1742. Therefore, requiring a reference to identify a
predictable variation of a disclosed solution in an obvious-to-try analysis as
set forth in KSR is akin to requiring application of the rigid teaching-
suggestion-motivation test rejected by the same Court in KSR in an
obviousness analysis, id. at 1741, as well as other case law. See e.g., In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976) (The question under 35 U.S.C.
§ 103 is not merely what the references teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made.)
We are mindful that it remains necessary to show "some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness," but such reasoning "need not seek out precise teachings
directed to the specific subject matter of the challenged claim." See KSR,
127 S.Ct. at 1741 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
V. Conclusion
The "obvious-to-try" analysis set forth in KSR does not require the
relied upon prior art to identify the limitation of a claim which solves a
known problem as a known solution to the problem.
VI. Order
Accordingly, based on the foregoing and for the reasons given, it is
ORDERED that the request for rehearing has been considered, but is
DENIED with respect to making any modifications to the original decision,
and
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Application 10/869,159

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FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a).
REHEARING DENIED

MAT

Russell D. Culbertson, Esq.
THE CULBERTSON GROUP, P.C.
1114 Lost Creek Blvd.
Suite 420
Austin, TX 78746