11368091 (B.P.A.I. Sep. 10, 2010)

Ex Parte Moody

Board of Patent Appeals and InterferencesSep 10, 2010

11368091 (B.P.A.I. Sep. 10, 2010)

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. 11/368,091 03/02/2006 Ernest W. Moody MOODY 44A 7745 24258 7590 09/10/2010 JOHN EDWARD ROETHEL 769 Basque Way #200 Carson City, NV 89706 EXAMINER LAYNO, BENJAMIN ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 09/10/2010 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 ERNEST W. MOODY ____________________ Appeal 2009-002976 Application 11/368,091 Technology Center 3700 ____________________ Before: WILLIAM F. PATE III, STEFAN STAICOVICI, and KEN B. BARRETT, Administrative Patent Judges. PATE III, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-002976 Application 11/368,091 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1- 6. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to a deck of fifty-three playing cards. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A deck of playing cards consisting essentially of a standard deck of fifty-two cards and a fifty-third card consisting of a duplicate of one of the cards of the standard deck of fifty-two cards. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Russell Crompton Savage US 957,105 US Des. 91,004 US 5,415,414 May 3, 1910 Nov. 7, 1933 May 16, 1995 REJECTIONS Claims 1, 2, 5, and 6 stand rejected under 35 U.S.C. § 102(b) as being anticipated by or under 35 U.S.C. § 103(a) as obvious over Russell. Ans. 3. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Russell and Crompton. Ans. 4. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Savage and Crompton. Ans. 5. Appeal 2009-002976 Application 11/368,091 3 OPINION We have carefully reviewed the rejections on appeal in light of the arguments of the Appellant and the Examiner. As a result of this review, we have determined that the applied prior art does not establish that the claims on appeal lack novelty, nor does the applied prior art establish the prima facie obviousness of the claimed subject matter. Therefore, the rejections on appeal are reversed. Our reasons follow. Our first consideration is the construction of the word “duplicate” as it appears in claim 1. Appellant has not defined “duplicate” in the Specification. Consequently, we will give the claim term its ordinary and customary meaning. A dictionary definition of the word, “duplicate” is “a copy exactly like an original.” RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE 607 (2d Unabridged ed. 1987). Therefore, we construe the term “duplicate” in claim 1 as a copy, exactly like the original. Turning to the rejection of claims 1 and 2 under 35 U.S.C. § 102 or § 103, we will not affirm this rejection. While we agree with the Examiner that the “substitute” card of Russell functions as a duplicate when the cards are used, it is not a duplicate card, since it is not a copy exactly like the original card. In fact, the substitute card has thereon a matrix of all card values and suits. With respect to claims 5 and 6, we will not sustain the rejection of this subject matter under either § 102 or § 103. While Russell shows a card that can substitute for a lost or damaged card of any suit, Russell does not disclose or teach any card having a suit that consists of all of the conventional suits at the same time. Thus, Russell does not anticipate or render obvious the subject matter of claims 5 and 6. Appeal 2009-002976 Application 11/368,091 4 We also will not sustain the rejection of claim 3 under § 103, inasmuch as the Examiner has not provided even a colorable explanation of why the subject matter of this claim would have been prima facie obvious. The Examiner merely states that Crompton teaches a new suit which is symbolized by a collection of the four existing suits. Then the Examiner states, “[i]n view of such teaching, [the subject matter of the claim] would have been obvious.” Ans. 4. As can be seen, the Examiner has failed to provide any articulated reasoning with rational underpinnings as to why the subject matter of claim 3 is prima facie obvious. The rejection of this claim cannot be sustained. Finally, we do not sustain the rejection of claim 4. The disclosure of Savage is clear that the so-called Padukee card has neither a suit nor a rank. See col. 1, l. 65 – col. 2, l. 1 and col. 3, ll. 4-7. Therefore the Padukee card can be neither an ace nor a fifth suit as claimed. We acknowledge that Crompton does disclose a fifth suit. However, Crompton’s disclosure is in the context of providing a whole rank of cards valued in the fifth suit. See Crompton, col. 2, l.1. Thus, neither disclosure provides a single extra card that can be an ace of a fifth suit. Therefore, the applied prior art does not establish the prima facie obviousness of claim 4. DECISION The Examiner’s rejection of claims 1, 2, 5 and 6 under 35 U.S.C. § 102(b) or § 103(a) is reversed. The Examiner’s rejection of claim 3 under 35 35 U.S.C. § 103 is reversed. The Examiner’s rejection of claim 4 under 35 35 U.S.C. § 103 is reversed. Appeal 2009-002976 Application 11/368,091 5 REVERSED nlk JOHN EDWARD ROETHEL 769 Basque Way #200 Carson City NV 89706