Ex Parte Bernard et alDownload PDFPatent Trial and Appeal BoardOct 25, 201613401346 (P.T.A.B. Oct. 25, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/401,346 02/21/2012 Vernon Bernard 55136 7590 10/27/2016 BALLY GAMING INC 6601 S. BERMUDA ROAD LAS VEGAS, NV 89119 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 ATTORNEY DOCKET NO. CONFIRMATION NO. BALLY-2150 5830 EXAMINER DUFFY, DAVID W ART UNIT PAPER NUMBER 3716 NOTIFICATION DATE DELIVERY MODE 10/27/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): marv.hein@scientificgames.com debra.debello@scientificgames.com david.bremer@scientificgames.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VERNON BERNARD and KARL WUDKE Appeal2014-008144 Application 13/401,346 Technology Center 3700 Before MICHAEL L. HOELTER, JILL D. HILL, and ERIC C. JESCHKE, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Vernon Bernard and Karl Wudke ("Appellants") seek review under 35 U.S.C. § 134(a) of the Examiner's decision, as set forth in the Final Office Action dated September 6, 2013 ("Final Act."), rejecting claims 1, 3, 4, 9, 12, 13, and 15-19. 1 Claims 2, 8, and 14 have been canceled and claims 5-7, 10, and 11 have been withdrawn. Br. 2, 15, 16. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellants identify Bally Gaming, Inc. as the real party in interest. Br. 1. Appeal2014-008144 Application 13/401,346 BACKGROUND The disclosed subject matter "relates to displays, gaming devices including displays and methods where a video display is provided" and "[ m ]ore particularly ... to such displays and methods where the display has an interior opening to provide for the operation of a mechanical device or for viewing of another display." Spec. i-f 2. Claims 1, 13, 18, and 19 are independent. Claim 1 is reproduced below, with emphasis added: 1. A gaming device comprising: a cabinet; an electronic, video, first display device on said cabinet, said first display including two L- shaped liquid crystal sub-displays configured to be mated together to cooperatively define said first display having a rectangular opening there through, each sub-display including an mxn matrix of thin film transistor switching devices; a second display device on said cabinet having a component extending through said opening; and a controller to control said first and second displays to cooperate to display graphics in connection with a game. REJECTIONS 1. Claims 1, 3, 4, 9, 13 and 16 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hein (US 2007/0072668 Al, published Mar. 29, 2007), Luciano (US 7,335,101 Bl, issued Feb. 26, 2008), and Gagner (US 2010/0291993 Al, published Nov. 18, 2010). 2. Claims 1, 13, and 17 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Luciano and Gagner. 2 Appeal2014-008144 Application 13/401,346 3. Claims 12 and 15 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Luciano, Gagner, and Durham (US 2008/0004104 Al, published Jan. 3, 2008). 4. Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Luciano, Gagner, and Durham. 5. Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Luciano and Kun (US 4,535,341, issued Aug. 13, 1985). DISCUSSION Rejection I -The rejection of claims 1, 3, 4, 9, 13and16 under 35U.S.C.§103(a) based on Hein, Luciano, and Gagner Independent claim 1 recites, among other limitations, a "first display including two L-shaped liquid crystal sub-displays configured to be mated together to cooperatively define said first display having a rectangular opening there through." Br. 15 (Claims App.). To address claim 1 in this Rejection, the Examiner relied on Hein for various limitations, but stated that "Hein does not explicitly disclose the first display is made of L-shaped components that make a rectangular opening." Final Act. 5. The Examiner found, however, that "Luciano discloses a gaming machine where a display element is made of sub displays that may be assembled in L shapes to create and surround rectangular openings (fig 5)" and that"[ o ]ne of ordinary skill in the art would have recognized the advantages of assembling displays out of smaller, rectangular sub displays to allow for the creation of larger displays from commodity displays rather than expensive custom shaped displays." Id. According to the Examiner, it would have been obvious "to have modified Hein in view of Luciano to have made the first display made 3 Appeal2014-008144 Application 13/401,346 of sub displays that may be L-shaped in order to create large complex displays out of smaller, simpler and less expensive displays with rectangular openings." Id. at 6. Rejections based on obviousness must be supported by "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Here, the Examiner has not provided adequate articulated reasoning to have modified Hein in view of Luciano such that the "first display" would include "two L-shaped liquid crystal sub-displays" as recited in claim 1. The reasoning provided by the Examiner-"to create large complex displays out of smaller, simpler and less expensive displays with rectangular openings" (Final Act. 6}-does not support the conclusion of obviousness because it does not show why a person of ordinary skill in the art at the time of the invention would have selected the specific shape recited: an L shape. The Examiner takes the position that "merely using two L shaped panel sections instead of four I or some combination of C and I shaped panels together, does not result in a patentable difference" because "the assembled display would appear the same to the user." Ans. 4. We determine, however, that this position does not provide adequate findings and reasoning regarding the limitation at issue to remedy the deficiencies discussed above. Thus, we do not sustain the rejection of claim 1, or the rejection of claims 3, 4, and 9, which depend from claim 1. Independent claim 13 recites, among other limitations, "first and second L-shaped liquid crystal video sub-displays arranged to define a substantially continuous first video display having an interior opening there 4 Appeal2014-008144 Application 13/401,346 through." Br. 16 (Claims App.) (emphasis added). For claim 13 (and claim 16, which depends from claim 13), the Examiner relies on the same findings and deficient reasoning discussed above. See Final Act. 5---6; Ans. 3--4. Thus, we also do not sustain the rejection of claims 13 and 16. Rejection 2-The rejection of claims 1, 13, and 17 under 35 U.S.C. § 103(a) based on Luciano and Gagner To address claim 1 in this Rejection, the Examiner relied on Luciano for various limitations, but stated that "Luciano does not explicitly disclose the sub-displays are L-shaped." Final Act. 7. The Examiner found, however, that "Luciano discloses the displays are rectangular or C shaped and may include other variations." Id. (citing Luciano, col. 4, 11. 58---65). The Examiner also "contend[ ed] that L-shaped panels would have been an obvious modification of rectangular panels as L shaped is just two rectangular panels together which Luciano already discloses (fig 5)." Id. Here, the Examiner has not provided adequate articulated reasoning to have modified Luciano so that the "first display" would include "two L- shaped liquid crystal sub-displays" as recited. See Kahn, 441 F .3d at 988. Instead, the Examiner concludes that arriving at the recited shape would have been an "obvious modification" based on its alleged simplicity. See Final Act. 7. Even assuming this to be correct, however, "[ s ]implicity is not inimical to patentability." In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). For these reasons, we do not sustain the rejection of claim 1. For claim 13 (and claim 17, which depends from claim 13), the Examiner relies on the same findings and deficient reasoning discussed above with regard to claim 1. Compare Final Act. 8-9 (claim 13), with id. at 6-7 (claim 1 ). Thus, we do not sustain the rejection of claims 13 and 17. 5 Appeal2014-008144 Application 13/401,346 Rejection 3 - The rejection of claims 12 and 15 under 35 U.S.C. § 103(a) Claim 12 depends from claim 1, and claim 15 depends from claim 13. Br. 16 (Claims App.). The Examiner's reliance on Durham does not remedy the deficiencies discussed above (see supra Rejection 2). Thus, for the same reasons discussed above, we do not sustain the rejection of claims 12 and 15. Rejections 4 and 5 - The rejection of claims 18and19 under 35 U.S.C. § 103(a) Independent claim 18 recites, among other limitations, "a pair of L- shaped, liquid crystal video sub-displays." Br. 17 (Claims App.). Independent claim 19 recites, among other limitations, "securing a pair of L- shaped video sub-display elements in a mated arrangement." Id. To address these limitations, the Examiner set forth the same findings and conclusions relied on to address the limitation at issue in claim 1 (see supra Rejection 2). Compare Final Act. 11-12 (claim 18), 12-13 (claim 19), with id. at 6-7 (claim 1). Moreover, the Examiner's reliance on Durham (Rejection 4) and Kun (Rejection 5) does not remedy the deficiencies discussed above. Thus, for the same reasons discussed above, we do not sustain the rejection of claims 18 and 19. DECISION We REVERSE the decision to reject claims 1, 3, 4, 9, 12, 13, and 15- 19 under 35 U.S.C. § 103(a). REVERSED 6 Copy with citationCopy as parenthetical citation