Ex Parte Moody

Board of Patent Appeals and Interferences

Dec 16, 2010

10888598 (B.P.A.I. Dec. 16, 2010)

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.
10/888,598 07/12/2004 Ernest W. Moody MOODY 42 7712
24258 7590 12/17/2010
JOHN EDWARD ROETHEL
769 Basque Way #200
Carson City, NV 89706
EXAMINER
HYLINSKI, STEVEN J
ART UNIT PAPER NUMBER
3717
MAIL DATE DELIVERY MODE
12/17/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ERNEST W. MOODY
____________

Appeal 2009-012550
Application 10/888,598
Technology Center 3700
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-012550
Application 10/888,598

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STATEMENT OF THE CASE
Ernest Moody (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner's decision rejecting claims 1-6 under § 103(a) as unpatentable in
view of Moody (US 6,517,074 B1, issued Feb. 11, 2003) and Marks (US
6,910,962 B2, issued Jun. 28, 2005). We have jurisdiction over this appeal
under 35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to video poker games in which the
winning poker combination is deleted from the hand and replaced with new
cards until the player does not have a winning hand. Spec. 1, ll. 1-4.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A method of playing a card game comprising:
a) displaying a first hand to a player;
b) allowing the player to hold none, one or more cards from
the first hand and discarding from the first hand the cards that
were not held;
c) providing in the first hand replacement cards for the cards
that were not held;
d) determining whether any winning card combinations exist
in the first hand;
e) removing only all of the winning card combinations from
the first hand;
f) displaying additional cards into the first hand to create
a second hand;
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Application 10/888,598

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g) allowing the player to hold none, one or more cards from
the second hand and discarding from the second hand the cards
that were not held;
h) providing in the second hand replacement cards for the
cards that were not held;
i) determining whether any winning card combinations exist
in the second hand.

THE ISSUE
Whether the combined teachings of Moody and Marks disclose
the steps of removing only all of the winning card combinations from the
first hand and displaying additional cards into the first hand to create a
second hand, as called for by steps e) and f) of independent claim 1.

SUMMARY OF DECISION
We AFFIRM.

OPINION
Appellant argues that it would not have been obvious to combine the
draw poker game disclosed in Moody with the slot machine game disclosed
in Marks, because they are from different technologies, that is, “Marks ‘962
is a slot machine game whereas Moody ‘074 is a draw poker game.” Br. 8.
This argument is not persuasive because Appellant appears to attack the
teachings of Moody and Marks individually, rather than the combination of
Moody and Marks. Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
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of prior art disclosures. See In re Merck & Co, 800 F.2d 1091, 1097 (Fed.
Cir. 1986).
Appellant further argues that the Examiner has failed to explain how
the “pay in advance” and the “redealing of the initial hands” steps of Moody
would work in the Examiner’s proposed combination of Moody and Marks.
Br. 8. Appellant’s arguments are not persuasive, because claim 1 does not
require a “pay in advance” step or a “redealing of the initial hands” step. As
stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369
(Fed. Cir. 1998), “the name of the game is the claim.” It is well established
that limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). As such, we
agree with the Examiner that Appellant “is arguing facts beyond the scope of
the claims” (Ans. 8), because, as noted supra, claim 1 does not require a pay
in advance step or a redealing of the initial hands step.
Lastly, with respect to Appellant’s argument that the Examiner’s
conclusion of obviousness is based on hindsight (Br. 9), it must be
recognized that any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning. But so long as it takes into
account only knowledge which was within the level of ordinary skill at the
time the claimed invention was made, and does not include knowledge
gleaned only from the applicant’s disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). In this case, we
agree with the Examiner that Moody does not disclose “removing only all of
the winning card combinations from the first hand, and displaying additional
cards into the first hand to create the second hand.” Ans. 4. However,
Moody discloses a poker gaming machine in which selected cards are held
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and non-selected cards are discarded and replaced. Id. at 3-4. See also,
Moody, col. 1, ll. 46-51. Marks discloses a gaming machine in which all of
the winning combinations from a first displayed group of symbols are
removed and replaced with additional gaming symbols. Ans. 4. See also,
Marks, col. 3, ll. 4-7 and 30-34 and figs. 3, steps 40, 42 and 44. Hence,
both Moody and Marks disclose removing and replacing certain gaming
elements, namely, cards in Moody and symbols in Marks.
We agree with the Examiner that “both slot machines and poker
games have ‘drawn symbols’ that are evaluated for winning symbol
combinations” and that “symbols are analogous to card indicia, symbol sets
are analogous to card hands, and wins are evaluated in terms of winning
poker combinations, i.e. winning symbol combinations.” Ans. 7. As such,
we find that modifying the game of Moody to remove only all of the
winning gaming element combinations from a first displayed group of
elements and to display additional gaming elements to form a second group
of elements, as taught by Marks, would not have been uniquely challenging
to a person of ordinary skill in the art, because it is no more than “the mere
application of a known technique to a piece of prior art ready for
improvement.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Hence, we agree with the Examiner that it would have been obvious for a
person of ordinary skill to modify Moody with the teachings of Marks “in
order to provide predictable results of extending play of the game until the
player can no longer form winning combinations, past when the game would
normally end, in order to amuse and excite the player by providing extra
playing time and awards.” Ans. 4.
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In conclusion, the rejection of claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Moody and Marks is sustained. With respect to claims 2-
6, Appellant does not present additional arguments. Br. 10. Accordingly,
the rejection of claims 2-6 is likewise sustained.

CONCLUSION
The combined teachings of Moody and Marks disclose the steps of
removing only all of the winning card combinations from the first hand and
displaying additional cards into the first hand to create a second hand, as
called for by steps e) and f) of independent claim 1.

DECISION
The Examiner’s decision to reject claims 1-6 under 35 U.S.C. § 103(a)
as being unpatentable over Moody and Marks is affirmed.

AFFIRMED

mls

JOHN EDWARD ROETHEL
769 BASQUE WAY #200
CARSON CITY, NV 89706