Ex Parte DESIMONE et al - Page 7



          Appeal No. 2001-1969                                                        
          Application No. 09/040,478                                                  

          Joker’s Wild” disclosure as providing a suggestion for modifying            
          the slot machine of Adams to thereby effect the claimed slot                
          machine and method of appellants’ respective claims 34 and 35.              
          While “The Joker’s Wild” game show required three rotating                  
          wheels, akin to the rotating symbol arrangement of a slot                   
          machine, clearly the game show is not a slot machine.  More                 
          significantly, however, is the circumstance that an appearing               
          Joker symbol(s) in the game show acts to either double or triple            
          a selected category’s value, or allow a player to win a game                
          automatically when three Joker’s appear.  Thus, the game show               
          teaching would not have suggested the selection of a random                 
          multiplier value when at least one of a plurality of symbols is a           
          bonus symbol.  As we see it, at best, the game show arrangement             
          would have offered one having ordinary skill in the art the                 
          option of a bonus symbol to double (appearance of one bonus                 
          symbol) or triple (appearance of two bonus symbols) a first award           
          value upon the appearance of one or two bonus symbols, as an                
          alternative to the Adams random multiplier arrangement lacking              
          bonus symbols.  For the preceding reasons, we conclude that, only           
          with appellants’ own teaching in mind, would one having ordinary            
          skill in the art have been able to achieve the claimed invention            
          on the basis of the applied prior art.  Thus, the obviousness               
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