Ex Parte Pacey et alDownload PDFBoard of Patent Appeals and InterferencesFeb 12, 201210223519 (B.P.A.I. Feb. 12, 2012) 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. 10/223,519 08/19/2002 Larry J. Pacey 247079-000131USPT 9300 70243 7590 02/13/2012 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 02/13/2012 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 LARRY J. PACEY and WILLIAM R. WADLEIGH ____________ Appeal 2009-013420 Application 10/223,519 Technology Center 3700 ____________ Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and MICHAEL W. KIM, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL Appeal 2009-013420 Application 10/223,519 2 Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 35 to 61. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We will not sustain the Examiner’s rejection of claims 58 to 61 under 35 U.S.C. § 112, first paragraph. We do not agree with the Examiner that since the game is begun when the player places a wager, Appellants’ Specification does not disclose the limitation of “without player input” recited in claim 58. Claim 35 recites a first step “receiving a wager from a player” and a third step “portraying an array of symbols at respective positions in the array.” Claim 58 is dependent on claim 35, and recites “wherein the portraying the array of symbols includes placing symbols in the array without player input.” In our view, the phrase “without player input” in claim 58 relates to the portraying the array step, and is disclosed at page 4 of the Specification. Upon consideration of the evidence on this record and each of Appellants' contentions, we find that the preponderance of evidence on this record supports the Examiner's conclusion that the subject matter of Appellants’ claims 35 to 57 is unpatentable over the combination of Saffari and Marks. In this regard, we adopt the findings and reasoning of the Examiner in regard to Saffari and Marks. We also adopt the Examiner’s response to the Appellants’ arguments, as found on pages 16 to 17 of the Answer. We add, for emphasis only, that we agree with the Examiner that modifying Marks with enabled pay lines would change the Marks arrangement such that the same-symbol set arrangement would be along Appeal 2009-013420 Application 10/223,519 3 horizontal, vertical or diagonal pay lines, and would not destroy the concept of the Marks game. Upon consideration of the evidence on this record and each of Appellants’ contentions, we find that the preponderance of evidence on this record supports the Examiner’s conclusion that the subject matter of Appellants’ claims 35 to 61 is unpatentable over the combination of Marks in view of White. In this regard, we adopt the findings and reasoning of the Examiner in regard to Saffari and Marks. We also adopt the Examiner’s response to the Appellants’ arguments, as found on pages 10 to 15 of the Answer. We add, for emphasis only, that we agree with the Examiner that the Appellants’ argument that combining the teachings of Saffari and Marks would result in a much more complex game improperly relies on whether Marks can be bodily incorporated into Saffari. We must point out, however, that all of the features of the secondary reference need not be bodily incorporated into the primary reference and the artisan is not compelled to blindly follow the teaching of one prior art reference over the other without the exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1). AFFIRMED hh Copy with citationCopy as parenthetical citation