Ex Parte Moody

Board of Patent Appeals and Interferences

Jul 21, 2004

09854156 (B.P.A.I. Jul. 21, 2004)

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is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ERNEST W. MOODY
____________
Appeal No. 2004-0361
Application No. 09/854,156
____________
ON BRIEF
____________
Before KIMLIN, PAK, and TIMM, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims 1-26 which are all the claims pending in the application. We
have jurisdiction over the appeal pursuant to 35 U.S.C. § 134.
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Application No. 09/854,156
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INTRODUCTION
The claims on appeal are directed to a method of playing a stud poker card game.
According to the specification, the invention relates primarily to electronic video stud poker
(specification, p. 1, ll. 1-2). The method of play allows the player to play multiple poker hands at
the same time (specification, p. 1, ll. 3-4). The player starts with two or more identical partial
hands and then each hand is completed by displaying additional cards so that each hand is a final
stud poker hand (specification, p. 1, ll. 4-7). The winnings are paid out based on the poker hand
rankings of the final hands (specification, p. 1, ll. 2-3).
Claim 14 is illustrative of the method on appeal:
14. A method of playing a stud poker card game in which a final hand has a
predetermined number of cards comprising:
a) the player selecting to play at least two hands;
b) a player making a wager which is allocated among the hands selected to be played
by the player;
c) dealing and displaying face up a number of partial hands of less than the
predetermined number of cards, the number of partial hands corresponding to the number of
hands selected to be played by the player, each partial hand having the same cards by suit and
rank;
d) dealing and displaying face up additional cards to each hand to complete
each hand so that each final hand has the predetermined number of cards;
e) determining the poker hand ranking of each final hand;
and
f) paying the player a pre-established amount based on the amount of the wager on
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each hand if the final hand comprises a predetermined poker hand ranking.
As evidence of unpatentability, the Examiner relies upon the following prior art
references:
Johnson 5,573,249 Nov. 12, 1996
Williams 6,132,311 Oct. 17, 2000
Kadlic 6,146,271 Nov. 14, 2000
Yoseloff 6,227,969 B1 May 8, 2001
The specific rejections are:
1. Claims 1, 4, 14, 21, and 26 rejected under 35 U.S.C. § 102(e) as being anticipated by
Williams;
2. Claims 2, 3, 5, 8-13, 15-17, 20, and 22 rejected under 35 U.S.C. § 103(a) as being
unpatentable over Williams in view of Johnson;
3. Claims 6, 7, 18, 19, 23, and 24 rejected under 35 U.S.C. § 103(a) as being unpatentable
over Williams in view of Yoseloff; and
4. Claim 25 rejected under 35 U.S.C. § 103(a) as being unpatentable over Williams in view
of Kadlic.
Because the Examiner has failed to establish a prima facie case of unpatentability, we
reverse.
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Application No. 09/854,156
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OPINION
All of the independent claims are rejected as anticipated over Williams. Anticipation
requires that each and every step of the claimed method be disclosed or inherently present in a
method described in the prior art. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429,
1431 (Fed. Cir. 1997). The Examiner has failed to point out a method described in Williams
which meets the requirements of anticipation.
First, we cannot agree with the Examiner that the word “stud” in the claims is non-
limiting. The word “stud” breathes life and meaning into the claim. The method is a method of
“stud poker” and these words serve to restrict the method to those poker games known in the art
as stud poker games. Stud poker is a category of poker not merely an intended use for the
method steps recited in the body of the claim as argued by the Examiner.
Reading the claims correctly to be limited to stud poker games, we cannot agree that
Williams anticipates the method of the claims. Both Williams and Appellant’s specification
discuss stud poker and draw poker as different categories of poker games and provide evidence
that stud poker was understood by those of ordinary skill in the art to be different from draw
poker (specification, p. 1, l. 16 to p. 2, l. 21 and Williams, col. 1, ll. 19-20). In draw poker, the
player is given the option to discard some cards in the initial hand and draw new cards to replace
them. There is no such discard and draw option in stud poker. The Examiner argues that
“Williams sets up the environment by indicating numerous stud poker games in the ‘Back ground
of invention’ [sic, ‘Background of the Invention’] in the disclosure.” But the fact that Williams
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1Kadlic uses “allocate” to refer to this type of division of the wager as well (col. 7, l. 58 to col. 8, l. 3).
describes several stud poker games in the Background of Invention does not establish
anticipation of the claimed stud poker game: The Examiner does not find that those games are
the same as that claimed. Nor does the mention of those games somehow transform the draw
poker game described elsewhere in Williams into a stud poker game. Using the disclosures of
different games in combination to cobble together a game meeting the limitations of the claims
would require picking and choosing between the different described games in a manner more
appropriate to an obviousness rejection than to an anticipation rejection. In order to anticipate,
the reference must clearly and unequivocally disclose the claimed invention or direct those
skilled in the art to the invention without any need for picking, choosing, and combining various
disclosures not directly related to each other by the teachings of the cited reference. In re Arkley,
455 F.2d 586, 587, 172 USPQ 524, 526 (CCPA 1972).
As a second matter, all the claims further require allocation of the wager among the
multiple hands and the Examiner has failed to explain how Williams’ “one wager for all hands”
is the same as the claimed “wager which is allocated among the hands.” Such an explanation is
required in this case because the two wagering processes appear to be different. The
specification indicates that to allocate a wager among the hands means to divide it so only a
portion applies to each hand. This appears to be an accepted meaning in the art as evidenced by
Kadlic.1 The specification provides an example of wager allocation in which the player has
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selected three hands to play and makes a wager of fifteen credits. As explained in the
specification, the computer allocates five credits to each hand (specification, p. 10, ll. 9-13). In
the method of Williams, the wager is not “allocated among the hands” but is applied in full to
each hand. In the example of the specification, each of the three hands would have fifteen credits
applied to it if the process of Williams were followed. There is a difference between the
Williams method and that of the claims which is unaccounted for by the Examiner and we cannot
say that the Examiner has adequately supported the conclusion that “both have the same
meaning.”
Lastly, all of the claims require the dealing and displaying of multiple partial hands, each
partial hand having the same cards and the Examiner has not established that Williams both deals
and displays the required multiple hands. Williams deals and displays only one community
partial hand. While the community cards are common to each of the final hands in practice, only
one set of community cards is dealt and displayed. While, in concept, the result is the same to
the player, the specific dealing and displaying requirements of the claims are not met by
Williams. There is not the identity required by anticipation.
We find that the Examiner has failed to establish anticipation by Williams with respect to
the subject matter of claims 1, 4, 14, 21, and 26. Williams is relied upon in the obviousness
rejections in the same capacity as in the anticipation rejection and the Examiner fails to provide
findings as to why the “differences” discussed above would have been obvious to one of ordinary
skill in the art at the time of the invention. Specifically, the rejections lack any findings of
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reasons, suggestions, or motivations to make the modifications based on knowledge within the
skill of the art at the time of the invention. We conclude that the Examiner has failed to establish
a prima facie case of obviousness with respect to each of the obviousness rejections.
OTHER ISSUES
We note that we are not granting Appellant a patent, we are simply reversing rejections.
See In re Arkley, 455 F.2d 586, 589, 172 USPQ 524, 527 (CCPA 1972). It may well be that there
is a proper basis for rejecting the claims; however, the Examiner has not made it here. Id.
Specifically, we bring Kadlic to the attention of the Examiner and Appellant. This
reference had been combined with Williams to reject claim 25. Kadlic was only applied for its
teaching of allowing a player to select cards for partial hands. But there is other evidence within
Kadlic, not relied upon by the Examiner, which calls into question the patentability of the
independent claims and possibly other claims.
Kadlic describes a method of playing a poker card game. While the reference focuses on
draw poker, it indicates that the game can be applied to any variation of draw poker or stud poker
(col. 5, ll. 66-67). One variation of play is of particular interest, the variation called Pick 144
(col. 7, l. 57 to col. 9, l. 23). See, for instance, the discussion of wager allocation for step b) (col.
7, l. 57 to col. 8, l. 3), hand selection for step a) (col. 8, ll. 3-7), the selection and duplication of
the partial hand for claim step c) (col. 8, ll. 30-34), and the sequence of dealing and displaying
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the partial and final hands for step d) (col. 9, ll. 15-23). Kadlic describes the payout method of
steps e) and f) in column 5, lines 34-37.
Upon return of this application to the jurisdiction of the Examiner, Kadlic should be
examined for its impact on the patentability of the claims, either alone or in combination with
other prior art.

CONCLUSION
To summarize, the decision of the Examiner to reject claims 1, 4, 14, 21, and 26 under
35 U.S.C. § 102(e) and claims 2, 3, 5-13, 15-20, and 22-25 under 35 U.S.C. § 103(a) is reversed.
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No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a).
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CATHERINE TIMM )
Administrative Patent Judge )
CT/jrg
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JOHN EDWARD ROETHEL
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