Ex Parte Rose

Board of Patent Appeals and Interferences

May 11, 2011

10341110 (B.P.A.I. May. 11, 2011)

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.
10/341,110 01/13/2003 Bradley A. Rose 247079-000156USPT 7389
70243 7590 05/11/2011
NIXON PEABODY LLP
300 S. Riverside Plaza
16th Floor
CHICAGO, IL 60606
EXAMINER
HARPER, TRAMAR YONG
ART UNIT PAPER NUMBER
3717
MAIL DATE DELIVERY MODE
05/11/2011 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 BRADLEY A. ROSE
____________________

Appeal 2009-009618
Application 10/341,110
Technology Center 3700
____________________

Before LINDA E. HORNER, MICHAEL W. O’NEILL, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-009618
Application 10/341,110

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STATEMENT OF THE CASE
Bradley A. Rose (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1-7, 10-16 and 18-26. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

THE INVENTION
Appellant’s claimed invention is directed to a gaming machine having
a pendulum based payout indicator (Spec. 2:5-6).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A gaming machine, comprising:
a central processing unit for operating the gaming
machine in response to a wager and for selecting a game
outcome from a plurality of possible game outcomes, the game
outcome being predetermined by the central processing unit;
and
a pendulum for indicating the game outcome selected by
the central processing unit, the pendulum having an oscillating
end that, in response to the selected game outcome and without
player contact, undergoes controlled travel along a known path
having a plurality of symbols disposed therealong and stopping
substantially proximate to one of the plurality of symbols that
corresponds to the selected game outcome, the controlled travel
including moving the pendulum from side to side and slowing
the oscillating end prior to stopping substantially proximate to
one of the plurality of symbols that corresponds to the selected
game outcome.

Appeal 2009-009618
Application 10/341,110

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THE REJECTION
The following rejection by the Examiner is before us for review:
Claims 1-7, 10-16 and 18-26 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Seelig (US 2004/0043811 A1, published Mar. 4,
2004) (hereinafter “Seelig ‘811”) in view of Gordon (US 2003/0064806 A1,
published Apr. 3, 2003) or Seelig (US 6,719,630 B1, issued Apr. 13, 2004)
(hereinafter “Seelig ‘630”).

ISSUE
The issue before us is whether the Examiner erred in concluding that
the combined teachings of Seelig ‘811, and Gordon or Seelig ‘630 would
have led a person having ordinary skill in the art to slowing the oscillating
end of a pendulum prior to stopping the pendulum, as called for in
independent claims 1, 11, 16 and 20 (App. Br. 8-9, 11-13).

ANALYSIS
Independent claims 1, 11, 16 and 20 call for, inter alia, slowing the
oscillating end of a pendulum prior to stopping the pendulum.
The Examiner provides multiple conclusions of obviousness, all based
on the finding that slowing the oscillating end of a pendulum prior to
stopping the pendulum would have been a matter of design choice (Ans. 8)
or a mere design consideration (Ans. 9-10). The Examiner proffers that a
person of ordinary skill would have expected the clock hands of Seelig ‘811
and Appellant’s invention to perform equally well and to perform the same
function (Ans. 8).
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Appellant contends (1) that Seelig ‘811 does not describe slowing the
oscillating end of a pendulum prior to stopping the pendulum (App. Br. 11),
(2) that a person having ordinary skill in the art would not expect clock
hands to move side-to-side and slow down (App. Br. 12), and (3) that neither
Gordon (App. Br. 12-13) nor Seelig ‘630 (App. Br. 13-14) cures the
deficiency in Seelig ‘811.
Appellant’s Specification describes a
pendulum 40 is driven back and forth by the motor
to simulate the oscillating motion of a pendulum, .
. . [t]he predetermined stopping point is randomly
determined by the CPU 30 . . . [, wherein t]he
motor may slow the oscillating of the pendulum
prior to stopping the pendulum to simulate the
pendulum naturally coming to rest and create a
sense of anticipation for the player.
(Spec. 7:22-29) (emphasis bolded).
Thus, Appellant’s Specification has provided a rationale for slowing
the oscillating motion of the pendulum prior to stopping the pendulum, that
is, to simulate the pendulum naturally coming to rest and to create a sense of
anticipation for the player.
Nonetheless, the Examiner concluded that slowing the oscillating end
of a pendulum prior to stopping the pendulum would have been a matter of
design choice (Ans. 8) or a mere design consideration (Ans. 9) based on the
rationale that a person of ordinary skill would have expected the clock hands
of Seelig ‘811 and Appellant’s invention to perform equally well and to
perform the same function (Ans. 8).
We agree with Appellant that a person having ordinary skill in the art
would expect clock hands to maintain a rotary motion, not move side-to-side
and slow down (App. Br. 12). See In re Gal, 980 F.2d 717, 719 (Fed. Cir.
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1992) (finding of obvious design choice precluded when claimed structure
and the function it performs are different from the prior art).
We find (1) that the gaming machines described by Seelig ‘811,
Gordon and Seelig ‘630 are silent as to whether they describe slowing the
oscillating end of a pendulum prior to stopping the pendulum; (2) that the
Examiner has not proffered any evidence or technical reasoning that the
gaming machines of Seelig ‘811, Gordon or Seelig ‘630 are inherently
capable of slowing the oscillating end of a pendulum prior to stopping the
pendulum; and (3) that the Examiner has not relied on Gordon or Seelig ‘630
for any teaching that would remedy the deficiency in Seelig ‘811, that is,
that Gordon or Seelig ‘630 describe slowing the oscillating end of a
pendulum prior to stopping the pendulum.
Thus, we conclude that the Examiner has not provided adequate
evidence to support the finding that slowing the oscillating end of a
pendulum prior to stopping the pendulum would have been a matter of
design choice or a mere design consideration.
Thus, we find that the Examiner’s conclusions of obviousness are
based upon an unsupported fact finding.
We conclude that a rationale based upon an unsupported fact finding
does not provide a sound basis for a conclusion of obviousness. KSR Int'l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.”) In re Warner, 379 F.2d 1011,
1017 (CCPA 1967) (“The legal conclusion of obviousness must be
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supported by facts. Where the legal conclusion is not supported by facts it
cannot stand.”)
We reverse the rejection of independent claims 1, 11, 16 and 20 and
dependent claims 2-7, 10, 12-15, 18, 19 and 21-26.

CONCLUSION
The Examiner has erred in concluding that the combined teachings of
Seelig ‘811, and Gordon or Seelig ‘630 would have led a person having
ordinary skill in the art to slowing the oscillating end of a pendulum prior to
stopping the pendulum, as called for in independent claims 1, 11, 16 and 20.

DECISION
The decision of the Examiner to reject claims 1-7, 10-16 and 18-26 is
reversed.

REVERSED

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