Ex Parte Moody

Board of Patent Appeals and Interferences

Dec 15, 2010

10888597 (B.P.A.I. Dec. 15, 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.
10/888,597 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

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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 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”.
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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).
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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
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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.
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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