Ex Parte Kaminkow et al

Board of Patent Appeals and Interferences

May 21, 2012

10120234 (B.P.A.I. May. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOSEPH E. KAMINKOW, NEIL D. FALCONER,
and JAMIE J. GOINS
____________________

Appeal 2010-004374
Application 10/120,234
Technology Center 3700
____________________

Before: PHILLIP J. KAUFFMAN, JAMES P. CALVE, and
BENJAMIN D. M. WOOD, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
40-43, 45, 47-50, and 52-54. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

THE INVENTION
Claims 53 and 54 are the independent claims on appeal. Independent
claim 53, reproduced below, is illustrative of the claimed subject matter:
53. A gaming machine which comprises:
a housing;
said housing have a non-moveable display panel;
said non-moveable display panel carrying a non-
moveable permanent image that remains non-moveable as
viewed by the player;
said non-moveable permanent image comprising an
iridescent ink or other iridescent coating that glows in the
presence of ultraviolet light;
a first source of ultraviolet light positioned to irradiate
said non-moveable permanent image, said first source
comprising ultraviolet light of a first frequency, with one
portion of said non-moveable permanent image being sensitive
to ultraviolet light at said first frequency;
a second source of ultraviolet light comprising ultraviolet
light of a different frequency from said first frequency, with
another portion of said non-moveable permanent image being
sensitive to ultraviolet light at said other frequency, to provide
different responses to ultraviolet irradiation by the respective
non-moveable permanent image portions; and
a controller for activating said ultraviolet light sources in
a predetermined manner correlating with one or more events
taking place in a particular game being played on said machine.

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REJECTIONS
Appellants seek review of the following rejections:
1. Claims 40-43, 45, 47-50, and 52-54 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.1
Ans. 3.
2. Claims 40-43, 45, 47-50, and 52-54 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.2
Ans. 4.
3. Claims 42, 45, 49, 52, 53, and 54 under 35 U.S.C. § 103(a) as
unpatentable over Kinoshita (JP 6-105943-A, pub. Apr. 19, 1994) and
Mineral Resources (Mineral Resources: Flourescence and Phosphorescence,
The Mineral and Gemstone Kingdom complete information guide). Ans. 5.
4. Claims 41, 43, 48, and 50 under 35 U.S.C. § 103(a) as unpatentable over
Kinoshita, Mineral Resources, and Rowe (US 2003/0013512 A1; pub. Jan.
16, 2003). Ans. 8.
5. Claims 40 and 47 under 35 U.S.C. § 103(a) as unpatentable over
Kinoshita, Mineral Resources, and Tsukahara (US 6,439,994 B2; iss. Aug.
27, 2002). Ans. 9.
6. Claims 53 and 54 under 35 U.S.C. § 103(a) as unpatentable over JP 11-
65502 (pub. Mar. 1999), Mineral Resources, and Watanabe (US 6,080,061;
iss. Jun 27, 2000). Ans. 10.

1 Though the Examiner lists claim 44 as subject to this ground of rejection,
claim 44 is cancelled. Ans. 3-4; App. Br. 1.
2 Though the Examiner lists claim 44 as subject to this ground of rejection,
claim 44 is cancelled. Ans. 4; App. Br. 1.
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ANALYSIS
Written Description and Indefiniteness3
Independent claims 53 and 54 are each directed to a gaming machine
that includes a housing having a “non-movable” display panel that carries a
“non-movable” permanent image that remains “non-movable” as viewed by
the player.
The Examiner rejected claims 40-43, 45, 47-50, and 52-54 for failure
to meet the written description requirement because Appellants’ original
disclosure fails to provide adequate support for the term “non-movable” as
recited in independent claims 53, and 54.4 Ans. 3-4. The Examiner also
rejected these claims as indefinite because the term “non-movable” is
unclear. Ans. 4. Specifically, the Examiner’s reason for both rejections is
that rotating back wheel 40 carries permanent images that move via
spinning, and because the panel (screen 14) may be a liquid crystal display,
which is capable of presenting movable images. Ans. 13. We evaluate the
Examiner’s rejection in light of Appellants’ disclosure.
The Specification does not provide a lexicographical definition for the
terms “permanent” or “transient.” These terms can refer to the persistence
of a thing with regard to time, or with regard to space.5

3 Rejections 1 and 2, supra.
4 Claims 40-43 and 45 depend from claim 53. Claims 47-50 and 52 depend
from claim 54.
5 “Permanent: continuing or designed to continue or last indefinitely without
change; abiding, enduring, lasting; persistent. Opposed to temporary.” adj.,
def. A.1.a. “Permanent: fixed or motionless,” adj., def. A.1.b. “Transient:
passing by or away with time; not durable or permanent; temporary,
transitory,” adj., def. A.1.a. “Transient: passing through a place without
staying in it, or staying only for a short time,” adj., A.4. OXFORD ENGLISH
DICTIONARY (1989), available at http://www.OED.com.
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The ordinary, customary meaning of “permanent” or “transient” is
consistent with the Specification, which describes that the gaming machine
10 comprises a housing 12 and a display panel (screen 14) carried in the
housing. Spec. 1, para. 1; 3, para. 6. The Specification describes that screen
14 includes permanent indicia 30, such as numbered spider web 36, and
transient indicia, such as symbols 47, which are “carried by a rotating back
wheel 40, or by TV image technology or the like, in a changeable manner so
that the number rotate through the segments 466.” Spec. 4, para. 1.7
It appears that the Examiner’s rejections are based upon the
misinterpretation that the permanent images are carried by rotating back
wheel 40 or TV image technology. Such is not the case. Rotating back
wheel 40 and the TV image technologies are behind screen 14, and carry the
transient indicia (symbols 47) that are displayed within the segments 46
formed by spider web 36 (a type of permanent indicia 30). Spec. 4, para. 1;
fig. 2. In other words, screen 14 carries permanent (fixed or motionless)
indicia such as spider web 36, and behind but visible through screen 14 are
transient (movable) indicia carried by rotating back wheel 40 or TV image
technologies. Contra. Ans. 13; see also App. Br. 4-6. A person of ordinary
skill in the art would recognize that because transient symbols 47 “rotate
through” the segments 46 formed by the permanent indicia of numbered
spider web 36 on screen 14, the transient indicia (symbols 47) are movable
while the permanent indicia (spider web 36) are non-movable.

6 Segments 46 are formed by spider web 36, an example of permanent
indicia 30.
7 Paragraph numbers refer to the sequence of full paragraphs on the
identified page.
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In light of this, the Specification conveys with reasonable clarity to
those skilled in the art that, as of the filing date sought, applicant was in
possession of the invention as now claimed, and the written description
requirement has been satisfied.8 See Vas-Cath, Inc. v. Mahurkar, 935 F.2d
1555, 1563-64 (Fed. Cir. 1991). Further, a person of ordinary skill in the art
would understand what is claimed when independent claims 53 and 54 are
read in light of the Specification. See Orthokinetics, Inc. v. Safety Travel
Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). See
also In re Hammack, 427 F.2d 1378, 1382 (CCPA 1970) (“the essence of
[the] requirement [under 35 U.S.C. § 112, second paragraph] is that the
language of the claims must make it clear what subject matter they
encompass.”).
As such, we cannot sustain the rejection of independent claims 53 and
54 and their dependent claims 40-43, 45, 47-50, and 52.

Claims 42, 45, 49, 52, 53, and 54 over Kinoshita and Mineral Resources
Consistent with the claim construction applied to the rejections under
35 U.S.C. § 112, the Examiner found that the images on Kinoshita’s reels,
which spin and then stop, correspond to a non-movable permanent image as
claimed. Ans. 5, 14.
As the Examiner’s finding concedes, the indicia on Kinoshita’s reels
rotate, and thus the indicia on Kinoshita’s reels are not fixed or motionless

8 While the term “non-movable” is not contained in the Specification, such
absence is not dispositive of a failure to satisfy the written description
requirement. See Spec. passim; App. Br. 4; see also In re Wright, 866 F.2d
422, 425 (Fed. Cir. 1989) (The claimed subject matter need not be described
in haec verba in the original specification in order to satisfy the description
requirement).
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and do not correspond to a non-movable permanent image as called for in
independent claims 53 and 54. See Ans. 5, 14; App. Br. 7-8; see also
Kinoshita para. [0011]-[0012], figs. 2-4. The Examiner does not rely upon
Mineral Resources to correct this deficiency of Kinoshita. As such, we
cannot sustain the rejection of claims 53 and 54 or their respective
dependent claims 42, 45, 49, and 52.

Claims 41, 43, 48, 50 over Kinoshita, Mineral Resources, and Rowe
Claims 41 and 43 depend from independent claim 53, and claims 48
and 50 depend from independent claim 54. Claims 41 and 48 add that the
display panel comprises a glass partition, and claims 43 and 50 add that the
display panel comprises a liquid crystal display (LCD) screen.
The Examiner found that Kinoshita fails to disclose a display panel
that comprises a glass partition or an LCD screen. Ans. 8, 15-16. The
Examiner found that Rowe discloses a liquid crystal display screen and a
variety of display apparatuses, and concluded that it would have been
obvious “to use either a video screen or LCD as the display panel” for
Kinoshita’s gaming machine. Id.
The rejection does not explain the integration of Rowe’s video screen
or LCD with regard to Kinoshita’s reels having indicia. If the rejection
intends to rely upon the indicia of Kinoshita’s reels as corresponding to the
claimed non-movable permanent image, such finding is in error for the
reasons explained in the analysis of the rejection of claims 53 and 54, supra.
If this rejection intends to incorporate Kinoshita’s reels to be represented as
virtual reels with indicia upon a video screen or LCD, as taught by Rowe,
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those virtual reels presumably simulate rotation of the reels so that these
indicia also are not a non-movable permanent image as claimed.
Accordingly, we cannot sustain the rejection of claims 41, 43, 48, and
50.

Claims 40 and 47 over Kinoshita, Mineral Resources, and Tsukahara
Claim 40 depends from claim 53 and claim 47 depends from claim 54.
As in the rejection of claims 53 and 54, the Examiner relies upon Kinoshita
as disclosing non-movable permanent indicia as claimed. Ans. 9. For the
reasons explained in the analysis of claims 53 and 54, supra, that finding is
in error. The Examiner does not rely upon the other references to correct
this deficiency in Kinoshita. Ans. 9. As such, we cannot sustain the
rejection of claims 40 and 47.

Claims 53 and 54 over JP 11-65502, Mineral Resources, and Watanabe
The Examiner found that JP 11-65502 discloses a gaming machine as
called for in claims 53 and 54, except: 1) a second source of ultraviolet light
of a different frequency from the first frequency, and 2) “a controller for
activating said activating light sources in a predetermined manner
correlating with one or more events taking place in a particular game being
played on said machine.” Ans. 10-11. The Examiner found that Mineral
Resources discloses the use of ultraviolet lamps of different wavelengths to
fluoresce minerals. Ans. 11. The Examiner concluded that it would have
been obvious to modify the gaming machine of JP 11-65502 to include a
second source of ultraviolet light of a different frequency from the first
frequency to provide gaming players with images of various brightness and
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hue to excite players and attract them to play the game. Ans. 11, 17-18. The
Examiner found that Watanabe discloses a light source control unit for
activating said light sources in a predetermined manner correlating with
events taking place in a particular game being played. Ans. 11-12. The
Examiner concluded that it would have been obvious to further modify the
gaming machine of JP 11-65502 to control the lights to correlate with events
taking place in the game, as taught by Watanabe, to provide an attractive
display to game players. Ans. 12.
Appellants argue that, “Mineral Resources is from a field having
nothing at all to do with gaming machines.” App. Br. 8; see also Reply Br.
5-6. A reference may be analogous art because it is in the same field of
endeavor or because it is reasonably pertinent to the problem with which
Appellants were concerned. In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir.
2006). Just as an inventor considering a hinge and latch mechanism for
portable computers would naturally look to references employing other
“housings, hinges, latches, springs, etc.,” so a person of ordinary skill in the
art considering the fluorescence of indicia under ultraviolet light would
consider a reference describing how minerals fluoresce in different
wavelengths of light, as disclosed by Mineral Resources. See Spec. 1, para.
3; Ans. 15; Mineral Resources p. 1, para. 2; In re ICON Health & Fitness,
Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007).
Appellants argue that there “is no suggestion in Mineral Resources” to
make the proposed modification. App. Br. 11; reply Br. 5-6. The Supreme
Court has rejected the rigid requirement of a teaching, suggestion, or
motivation to combine known elements in order to show obviousness. See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner
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concluded that in light of Mineral Resources, a person of ordinary skill in
the art would have modified the gaming machine of JP 11-65502 to provide
gaming players with images of various brightness and hue to excite players
and attract them to play the game. Ans. 11, 17-18. Appellants’ argument is
also unpersuasive because it fails to address this rationale.
Appellants argue that, “[n]ot only does the Mineral Resources
reference not teach two separate UV sources but in addition there is no
teaching of using one UV source for one portion of a non-moveable
permanent image and a different UV source at a different frequency for use
on a separate portion of a non-moveable permanent image.” Reply Br. 6.
First, this argument mischaracterizes the reference. Mineral
Resources discloses that: ultraviolet wavelengths can be longwave or
shortwave, some minerals flouresce different colors in different
wavelengths, and there are ultraviolet lamps for producing both longwave
and shortwave ultraviolet light. Mineral Resources, p. 1, para. 2. Further,
Appellants’ argument is an individual attack on the references in that the
rejection relies upon combining the permanent image of JP 11-65502 with
ultraviolet light of different wavelengths as taught by Mineral Resources. In
re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) citing In re Keller,
642 F.2d 413, 425 (CCPA 1981) (one cannot show nonobviousness by
attacking references individually where the rejections are based on
combinations of references).
Appellants argue that Watanabe uses fluorescent lamp light sources
and does not teach two ultraviolet lights that are different frequencies, and
that Watanabe also does not teach indicia portions which glow in the
presence of the ultraviolet light at frequencies that are different from each
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other. App. Br. 12. This argument is unpersuasive because it fails to
address the rejection as articulated by the Examiner in that the rejection does
not rely upon Watanabe for such disclosures. Rather, the rejection relies
upon Watanabe for the disclosure of a controller for activating the light
sources to correlate with game events as called for in claims 53 and 54. See
Ans. 11-12.
Accordingly, we sustain the rejection of claims 53 and 54 as
unpatentable over JP 11-65502, Mineral Resources, and Watanabe.

DECISION
We reverse the Examiner’s decision to reject claims 40-43, 45, 47-50,
and 52-54 under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement.
We reverse the Examiner’s decision to reject claims 40-43, 45, 47-50,
and 52-54 under 35 U.S.C. 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the subject matter which
applicant regards as the invention.
We reverse the Examiner’s decision to reject claims 42, 45, 49, 52,
53, and 54 under 35 U.S.C. § 103(a) as unpatentable over Kinoshita and
Mineral Resources.
We reverse the Examiner’s decision to reject claims 41, 43, 48, and 50
under 35 U.S.C. § 103(a) as unpatentable over Kinoshita, Mineral
Resources, and Rowe.
We reverse the Examiner’s decision to reject claims 40 and 47 under
35 U.S.C. § 103(a) as unpatentable over Kinoshita, Mineral Resources, and
Tsukahara.
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We affirm the Examiner’s decision to reject claims 53 and 54 under
35 U.S.C. § 103(a) as unpatentable over JP 11-65502, Mineral Resources,
and Watanabe.
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)(iv).

AFFIRMED-IN-PART

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