Ex Parte Pacey et al

Board of Patent Appeals and Interferences

Feb 12, 2012

10223519 (B.P.A.I. Feb. 12, 2012)

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

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