Ex Parte Moody et al

Board of Patent Appeals and Interferences

Sep 12, 2002

09514860 (B.P.A.I. Sep. 12, 2002)

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for publication and is not binding precedent of the Board.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. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ERNEST W. MOODY and MICHAEL W. WOOD
____________
Appeal No. 2002-0949
Application No. 09/514,860
____________
ON BRIEF
____________
Before COHEN, ABRAMS and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-8,
which are all of the claims pending in this application.
BACKGROUND
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The appellants’ invention relates to electronic video poker games. Claim 1 is
illustrative of the invention and reads as follows:
1. A method of playing a card game comprising:
a) dealing a first hand comprising an initial five cards
all face up;
b) selecting none, one or more of the face up cards
from the first hand as cards to be held;
c) discarding from the first hand the cards that were
not selected to be held and replacing each of those cards
with a face up card;
d) determining the poker hand ranking of the resulting
cards of the first hand
e) redisplaying the initial five cards as a second hand;
f) selecting none, one or more of the face up cards of
the redisplayed cards as cards to be held;
g) discarding from the second hand the cards that
were not selected to be held and replacing each of those
cards with a face up card;
h) determining the poker hand ranking of the resulting
cards of the second hand.
The examiner relied upon the following prior art references in rejecting the
appealed claims:
Kadlic 5,816,915 Oct. 6, 1998
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Hachquet 6,050,568 Apr. 18, 2000
(filed Jun. 30, 1998)
The following rejections are before us for review.
Claims 1, 2, 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hachquet.
Claims 3, 4, 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hachquet in view of Kadlic.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellants regarding the above-noted rejections, we make reference to the answer
(Paper No. 10) for the examiner's complete reasoning in support of the rejections and to
the brief (Paper No. 9) for the appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants’ specification and claims, to the applied Hachquet and Kadlic patents,
and to the respective positions articulated by the appellants and the examiner. As a
consequence of our review, we make the determinations which follow.
Each of appellants’ independent claims 1 and 5 recites a method comprising
steps of dealing a first hand of initial cards, selecting cards to be held, discarding from
the first hand cards that were not selected to be held and replacing those cards,
determining the poker hand ranking of the resulting cards of the first hand, redisplaying
the initial cards as a second hand, selecting cards of the redisplayed cards to be held,
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1 We note that this interpretation is also consistent with appellants’ underlying disclosure
(specification, page 9, line 15, to page 12, line 25).
discarding and replacing cards not selected to be held and determining the poker
ranking of the resulting cards of the second hand. Appellants’ use of the terminology
“redisplaying the initial five [or pre-established number of] cards as a second hand”
makes it clear that the step of displaying and the first series of steps of selecting,
discarding and replacing and determining must occur prior to the step of “redisplaying”
and the second series of steps of selecting, discarding and replacing and determining.1
As clearly illustrated in Figure 1, Hachquet discloses a method of playing video
poker in which two identical five card hands 12, 14 are displayed simultaneously. Each
of the hands 12, 14 is then played, ranked and awarded individually (column 2, lines
36-37; column 3, lines 56-58).
While the examiner has rejected claims 1 and 5 under 35 U.S.C. § 103 as being
unpatentable over Hachquet, rather than under 35 U.S.C. § 102 as being anticipated by
Hachquet, thereby indicating that the examiner has recognized a difference between
Hachquet’s disclosed method and the claimed subject matter, the examiner has not
expressly identified any difference between Hachquet and the claimed subject matter,
proposed a modification to Hachquet to arrive at the claimed invention or explained the
motivation for such modification, as required for an obviousness determination under
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2 The required contents of a rejection under 35 U.S.C. § 103 are set forth in § 706.02(j) of the
Manual of Patent Examining Procedure (MPEP).
35 U.S.C. § 103.2 See Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459,
467 (1966). Instead, the examiner states that “[t]he playing of two hands at the same
time but independently is considered to be the same as playing both hands one at a
time” (answer, page 3). We do not agree. While the examiner may not be impressed
with this difference, it cannot reasonably be disputed that there is a difference between
displaying the two identical hands simultaneously for play, as taught by Hachquet, and
displaying and playing a first hand of cards and then subsequently redisplaying the
same cards as a second hand and playing the second hand, as called for in appellants’
claims 1 and 5.
Rejections based on 35 U.S.C. § 103 must rest on a factual basis. In making
such a rejection, the examiner has the initial duty of supplying the requisite factual basis
and may not, because of doubts that the invention is patentable, resort to speculation,
unfounded assumptions or hindsight reconstruction to supply deficiencies in the factual
basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert.
denied, 389 U.S. 1057 (1968).
Inasmuch as we find a difference between the method taught by Hachquet and
the method recited in each of claims 1 and 5 and the examiner has not offered any
explanation as to why it would have been obvious to one of ordinary skill in the art to
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modify the Hachquet method to arrive at the claimed method, we cannot sustain the
examiner’s rejection of independent claims 1 and 5, or claims 2 and 6 which depend
therefrom, as being unpatentable over Hachquet.
As for the examiner’s rejection of claims 3, 4, 7 and 8, which require the same
steps discussed supra with respect to claims 1 and 5, as being unpatentable over
Hachquet in view of Kadlic, Kadlic’s teaching of displaying four or more poker hands for
play on a video poker machine does nothing to cure the above-noted deficiency of
Hachquet. It follows that we also shall not sustain this rejection.
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CONCLUSION
To summarize, the decision of the examiner to reject claims 1-8 under 35 U.S.C.
§ 103 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JDB/ki
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Application No. 09/514,860
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