Appeal No. 2002-1407
Application 09/157,995
Like appellant, we find no basis in the combined teachings
of Bally and Marsh for modifying the “Double or Nothing” gaming
device and method of Bally in the manner urged by the examiner.
In that regard, we share appellant’s view that the examiner is
using the hindsight benefit of appellant’s own disclosure to pick
and choose elements or concepts from the applied references, and
then selectively combine the chosen disparate elements or
concepts in an attempt to reconstruct appellant’s claimed subject
matter. However, as our court of review indicated in In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir.
1992), it is impermissible to use the claimed invention as an
instruction manual or "template" in attempting to piece together
isolated disclosures and teachings of the prior art so that the
claimed invention is rendered obvious.
While it appears that one of ordinary skill in the art could
modify a gaming device similar to that in Bally in the manner
posited by the examiner, we find no suggestion, reason or
incentive in the applied prior art itself for making any such
modification. In that regard, we observe that the mere fact that
some prior art reference (e.g., Bally) may be modified in the
manner urged by the examiner does not make such a modification
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