Ex Parte Marcilio

Board of Patent Appeals and Interferences

Mar 28, 2007

10102192 (B.P.A.I. Mar. 28, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FERNANDO MAURO MARCILIO
____________

Appeal 2006-2056
Application 10/102,192
Technology Center 3700
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Decided: March 28, 2007
____________

Before WILLIAM F. PATE, III, TERRY J. OWENS, and JENNIFER D.
BAHR, Administrative Patent Judges.

PATE, III, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 3, 6, and 12-20.
The rejection of claims 1-11 based on prior art was withdrawn by the
Examiner in the Answer.
The claimed invention is directed to a method of playing a card game
and equipment used for playing the game. Claim 12 reproduced below is
further indicative of the claimed subject matter:
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12. Equipment for use in playing a card game comprising:

only one deck of cards; and

said at least one deck of cards having fours [sic, four]
suits only with cards numbered 2 to 10 in each suit and with an ace in
each suit.

The references of record relied upon by the Examiner as evidence of
anticipation and obviousness are:
Webb US 5,685,774 Nov. 11, 1997
Adams US 5,743,798 Apr. 28, 1998
Baerlocher US 6,435,970 B1 Aug. 20, 2002

Claim 1 stands rejected under 35 U.S.C. § 112, first paragraph, as
based on a disclosure which does not provide written description support for
the claimed subject matter.
Claims 3 and 6 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
Claims 12-14 and 16 stand rejected under 35 U.S.C. § 102 as
anticipated by Webb.
Claims 17-19 stand rejected under 35 U.S.C. § 103 as unpatentable
over Webb in view of Adams.
Claim 15 stands rejected under 35 U.S.C. § 103 as unpatentable over
Webb in view of Baerlocher.
Claim 20 stands rejected under 35 U.S.C. § 103 as unpatentable over
Adams in view of Baerlocher.
ISSUES
The following issues are before us on appeal. First, whether claim 1
is based on a Specification that does not provide written description support
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for the claimed subject matter. Further, whether claims 3 and 6 are
indefinite under the purview of 35 U.S.C. § 112, second paragraph. Third,
whether claims 12-14 and 16 are properly rejected as lacking novelty over
Webb, and, finally, whether claims 15 and 17-20 are unpatentable under §
103.
FINDINGS OF FACT
Appellant’s Specification clearly discloses that in order to be eligible
for an add on prize, the player must have made an add on bet and the player
must receive an ace in his or her hand. While the second act of receiving an
ace in the hand is not discretionary on the part of the player, placing the bet
is discretionary. Therefore, it is our view that the language of the claim does
not preclude the second condition—receiving an ace. Accordingly, we do
not sustain the rejection of claim 1 under § 112, first paragraph.
Pertaining to the Webb patent, Webb discloses a method of playing a
card game using a regular 52 card, four suit deck. Webb shows a gaming
table for playing the card game with a position for the dealer on the straight
side and a curved side having positions for up to 7 players. Each player has
a play area with an ante area 18, bet or play area 20, and a pairs plus or
insurance bet area at 16.
Adams shows a roulette game table which has a totem or standard 36
with a jackpot sign 38 and speakers thereon. The standard has a set of
colored lights 1-7 which indicate which players have placed a jackpot wager
and are thus eligible to participate in the jackpot. The jackpot value is also
shown on the jackpot sign 38.
Baerlocher shows a roulette gaming apparatus which discloses
controls for the dealer, buttons 48-60, which the dealer uses to enable spin
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stop buttons 32a-44a at the player positions. This button, when pressed by
the dealer, enables an individual player’s button so that the player may
perform a randomizing event that is part of the game.
PRINCIPLES OF LAW
“Whether a specification complies with the written description
requirement of [35 U.S.C. § 112, first paragraph], is a question of fact.”
Regents of Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566, 43
USPQ2d 1398, 1404 (Fed. Cir. 1997), cert. denied, 523 U.S. 1089
(1998)(citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d
1111, 1116 (Fed. Cir. 1991)). “To fulfill the written description
requirement, a patent specification must describe an invention and do so in
sufficient detail that one skilled in the art can clearly conclude that ‘the
inventor invented the claimed invention.’” Id. citing Lockwood v. American
Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (1997) and In re
Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989)
(“[T]he description must clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed.”) With regard to the
second paragraph requirement for "‘particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention,’" it
has been stated that the "essence of that requirement is that the language of
the claims must make it clear what subject matter they encompass." In re
Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA 1970). This
has been frequently stated in a shortened form as a requirement that the
claims set forth the "metes and bounds" of their coverage. See, merely for
example, In re Venezia, 530 F.2d 956, 958, 189 USPQ 149, 151 (CCPA
1976); In re Goffe, 526 F.2d 1393, 1397, 188 USPQ 131, 135 (CCPA 1975);
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In re Watson, 517 F.2d 465, 477, 186 USPQ 11, 20 (CCPA 1975); In re
Knowlton, 481 F.2d 1357, 1366, 178 USPQ 486, 492 (CCPA 1973). This
requirement has usually been viewed from the perspective of a potential
infringer, "so that they may more readily and accurately determine the
boundaries of protection involved and evaluate the possibility of
infringement and dominance." Hammack, 427 F.2d at 1382, 166 USPQ at
208.
“A claimed invention is unpatentable if the differences between it
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 pertinent art.” In re Kahn, 441 F.3d 977, 985, 78
USPQ2d 1329, 1334-35 (Fed. Cir. 2006) citing 35 U.S.C. § 103(a) (2000);
Graham v. John Deere Co., 383 U.S. 1, 13-14, 148 USPQ 459, 467 (1966).
“The ultimate determination of whether an invention would have been
obvious is a legal conclusion based on underlying findings of fact.” Id.
(citing In re Dembiczak, 175 F.3d 994, 998, 50 USPQ2d 1614, 1616 (Fed.
Cir. 1999)).
Nonfunctional descriptive material cannot render nonobvious an
invention that is otherwise obvious over the prior art. In re Gulack, 703 F.2d
1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983)(when descriptive material
is not functionally related to the substrate, the descriptive material will not
distinguish the invention from the prior art in terms of patentability). Our
reviewing court and its predecessor have frequently cautioned the “Patent
and Trademark Office (PTO) must consider all claim limitations when
determining patentability of an invention over the prior art.” In re Lowry, 32
F.3d 1579, 1582-83, 32 USPQ2d 1031, 1034 (Fed. Cir. 1994) quoting In re
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Gulack 703 F.2d 1381, 1384-85, 217 USPQ 401, 403-04 (Fed. Cir. 1983).
Furthermore, the Federal Circuit has cautioned against a liberal use of a
printed matter rejection. Id., 32 F.3d at 1582-83, 32 USPQ2d at 1034.
Nonetheless, we recognize in the instant case the classic printed matter
situation in which Appellant is advancing patentability based on the content
of the labels of the invention. These printed matter cases “dealt with claims
defining as the invention certain novel arrangements of printed lines or
characters, useful and intelligible only to the human mind.” Id. quoting In re
Bernhart, 417 F.2d 1395, 1399, 163 USPQ 611, 615 (CCPA 1969).
Accordingly, although we will not disregard any claim limitations and will
assess the claimed invention as a whole, we will follow the Federal Circuit’s
guidance as in the Gulack decision and will “not give [any] patentable
weight to printed matter absent a new and unobvious functional relationship
between the printed matter and the substrate.” Id. (Emphasis supplied).
CONCLUSIONS OF LAW
As noted above, it was our finding that claim 1 is not based on a
Specification that lacks descriptive written support. With respect to the
second paragraph rejection of claims 3 and 6, the steps in claims 3 and 6 that
are pointed to by the Examiner presumably are performed by the dealer. In
our view, these claims are not vague, indistinct, or unclear in this respect.
Turning to the rejection of claim 12 as lacking novelty, we are in
agreement with the Examiner that the standard card deck of Webb is a single
deck and it has 4 suits only, that is hearts, clubs, spades, and diamonds. We
are in further agreement with the Examiner that a normal deck has cards
numbered 2-10 and an ace. We see nothing in the claims that precludes the
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presence of the face cards. Accordingly, we agree with the Examiner that
Webb anticipates claims 12 and 13.
With respect to claims 14, 15, and 16 it is our finding that these claims
differ from the subject matter of Webb only to the extent that the printed
matter of Appellant is different from the printed matter shown in Webb. As
noted above, the jurisprudence recognizes that a mere change in printed
matter will not render unpatentable subject matter patentable. For example,
the fact that Webb calls his bet area the play area can in no way serve to
render the subject matter of claim 14 patentable over Webb. Accordingly,
while we reverse the § 102 rejection of claims 14 and 16, we will enter a
new rejection under § 103 of this subject matter of claims 14-16,
hereinbelow. We include claim 15 in the new rejection, inasmuch as the
thrust of the rejection has been changed. Consequently, we reverse the
standing 35 U.S.C. § 103 rejection of claim 15, in favor of the new rejection.
We affirm the rejection of claim 17 as unpatentable over Webb in
view of Adams, inasmuch as Adams shows an electronic totem pole, and the
Examiner has articulated a motivation for placing this totem pole on the
gaming table of Webb. We reverse the rejection of claim 18 as unpatentable
over Webb in view of Adams. We find no teaching in the prior art of
displaying Appellant’s so-called super ace. Likewise, with respect to claim
20, although Baerlocher discloses dealer activated individual buttons for the
players, Baerlocher makes no reference to a button for selecting a super ace.
Therefore, the rejections of claims 18 and 20 are reversed.
With respect to claim 19, we are in agreement with the Examiner that
Adams discloses an electronic control device to help the dealer and players
keep track of the numerous transactions at real time speed of the game. It
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would have been obvious to use such an electronic table control in the game
of Webb.
REJECTION UNDER 37 C.F.R. § 41.50(b)
As noted above, claims 14, 15, and 16 are rejected under 35 U.S.C. §
103 as unpatentable over Webb. The subject matter claimed differs from that
disclosed in Webb merely as to printed matter on the play table.
ORDER
The rejections of claims 1, 3, and 6 under § 112 are reversed.
The rejection of claims 12 and 13 under 35 U.S.C. § 102 as
anticipated by Webb is affirmed.
The rejection of claims 14 and 16 as anticipated by Webb is reversed.
The rejection of claim 15 under 35 U.S.C. § 103 as unpatentable over
Webb in view of Baerlocher is reversed.
The rejection of claim 17 under 35 U.S.C. § 103 as unpatentable over
Webb in view of Adams is affirmed.
The rejection of claim 19 under 35 U.S.C. § 103 as unpatentable over
Webb in view of Adams is also affirmed.
The rejections of claims 18 and 20 under 35 U.S.C. § 103 are
reversed.
A new rejection of claims 14-16 has been entered pursuant to our
authority under 37 C.F.R. § 41.50(b).
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
"Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
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§ 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 Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds 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. . . .

Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
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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). See 37 CFR
§ 1.136(a)(1)(iv) (2006).
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

hh

Barry L. Kelmachter
BACHMAN & LaPOINTE, P.C.
Suite 1201
900 Chapel Street
New Haven, CT 06510-2802