Ex Parte Bernard et al

Patent Trial and Appeal Board

Oct 25, 2016

13401346 (P.T.A.B. Oct. 25, 2016)

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5-7, 10, and 11 have been withdrawn.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.
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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
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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
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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.
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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
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