Ex Parte MoodyDownload PDFBoard of Patent Appeals and InterferencesDec 15, 201010888597 (B.P.A.I. Dec. 15, 2010) Copy Citation 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. 10/888,597 07/12/2004 Ernest W. Moody MOODY 45 7719 24258 7590 12/16/2010 JOHN EDWARD ROETHEL 769 Basque Way #200 Carson City, NV 89706 EXAMINER HYLINSKI, STEVEN J ART UNIT PAPER NUMBER 3717 MAIL DATE DELIVERY MODE 12/16/2010 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 2009-009275 Application 10/888,597 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 2009-009275 Application 10/888,597 2 STATEMENT OF THE CASE Ernest Moody (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-6 under 35 U.S.C. § 103(a) as unpatentable in view of Wichinsky (US 6,129,357, issued Oct. 10, 2000) and Singer (US 6,371,851 B1, issued Apr. 16, 2002). 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 card combination is deleted from the hand and replaced with new cards until the player does not have a winning hand. Spec. 1, ll. 6-9. Claim 1, the sole independent claim, is representative of the claimed invention and reads as follows: 1. A method of playing a card game using a deck of playing cards comprising: a) displaying at least a first complete stud poker Hand “A” and at least a first complete stud poker Hand “B”; b) determining whether any winning card combinations occur in the first complete stud poker Hand “A”; c) determining whether any winning card combinations occur in the first complete stud poker Hand “B”; d) removing any winning card combinations from the first complete stud poker Hand “A” and providing replacement cards for the removed cards to comprise a second complete stud poker Hand “A”; e) removing any winning card combinations from the first complete stud poker Hand “B” and providing replacement cards for the removed cards to comprise a second complete stud poker Hand “B”; f) determining whether any winning card combinations occur in the second complete stud poker Hand “A”; g) determining whether any winning card combinations occur in the second complete stud poker Hand “B”. Appeal 2009-009275 Application 10/888,597 3 THE ISSUE Whether the combined teachings of Wichinsky and Singer disclose removing winning card combinations and adding new cards for the removed cards, as called for by steps d) through g) of independent claim 1. SUMMARY OF DECISION We AFFIRM. OPINION Appellant argues that the Examiner has failed to establish a prima facie case of obviousness based on the combined teachings of Wichinsky and Singer. Br. 7. Specifically, Appellant argues that Singer “is a single hand game and has no disclosure of how this game could be applied to a multiple hand game.” Br. 7. More specifically, Appellant argues that it would not have been obvious to a person of ordinary skill in the art to combine the multiple hand game of Wichinsky with the single hand game of Singer. Br. 8. We find Appellant’s argument unpersuasive because Appellant appears to attack the teachings of Wichinsky and Singer individually, rather than the combination of Wichinsky and Singer. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co, 800 F.2d 1091, 1097 (Fed. Cir. 1986). Moreover, obviousness does not require that all of the features of the secondary reference be bodily incorporated into the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appeal 2009-009275 Application 10/888,597 4 At the outset, the Examiner found, and we agree, that Wichinsky discloses a poker game that can be applied to one or multiple hands, wherein a separate deck of cards is used for each hand. Ans. 7. See also, Wichinsky, Abstract and col. 3, ll. 32-35. We further agree with the Examiner that Wichinsky discloses all the features of independent claim 1 with the exception of removing winning card combinations and adding new cards for the removed cards. Ans. 3-4. However, the Examiner found that Singer discloses a poker game including the steps of removing winning card combinations (payable subset) from the poker hand, providing replacement cards for the removed cards to comprise a second poker hand and determining whether any winning card combinations occur in the second poker hand. Ans. 4. See also, Singer, col. 7, ll. 18-19 and 46-48, and fig. 1, steps 3 and 9. Hence, Appellant’s claimed method is nothing more than Wichinsky’s poker game including Singer’s steps of removing winning card combinations from the poker hand, providing replacement cards for the removed cards to comprise a second poker hand and determining whether any winning card combinations occur in the second poker hand. Ans. 4. See also, Singer, col. 7, ll. 18-19 and 46-48, and fig. 1, steps 3 and 9. As such, modifying the poker game of Wichinsky to include the steps of removing winning card combinations from the poker hand, providing replacement cards for the removed cards to comprise a second poker hand and determining whether any winning card combinations occur in the second poker hand using the poker game of Singer 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 Appeal 2009-009275 Application 10/888,597 5 prior art ready for the improvement.” KSR Int'l. Co. v. Teleflex lnc., 550 U.S. 398, 417 (2007). After all, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. The modification appears to be the product not of innovation but of ordinary skill and common sense. Such a combination strikes us as nothing more than the predictable use of prior elements according to their established functions. An improvement that is nothing more than the predictable use of prior art elements according to their established functions is likely to be obvious. Id. Moreover, Appellant has not alleged, much less shown, that the modification of Wichinsky’s poker game to provide the steps of Singer’s poker game would have been beyond the skill of a person of ordinary skill in the art. Lastly, we agree with the Examiner that it would have been obvious for a person of ordinary skill in the art to modify the poker game of Wichinsky by removing winning card combinations and adding new cards for the removed cards as taught by Singer in order to allow “the more advanced player the increased challenge of having to follow multiple unique poker games at the same time.” Ans. 9. In conclusion, the rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Wichinsky and Singer is sustained. With respect to claims 2-6, Appellant does not present additional arguments. Br. 8. Accordingly, the rejection of claims 2-6 is likewise sustained. CONCLUSION The combined teachings of Wichinsky and Singer disclose removing winning card combinations and adding new cards for the removed cards, as called for by steps d) through g) of independent claim 1. Appeal 2009-009275 Application 10/888,597 6 DECISION The Examiner’s decision to reject claims 1-6 under 35 U.S.C. § 103(a) as being unpatentable over Wichinsky and Singer is affirmed. AFFIRMED mls JOHN EDWARD ROETHEL 769 BASQUE WAY #200 CARSON CITY, NV 89706 Copy with citationCopy as parenthetical citation