Appeal No. 2004-1251 Page 6
Application No. 09/972,658
would have suggested the use of a bar code as the “sensor” in Sity’s die. The mere fact
that the prior art could be so modified would not have made the modification obvious
unless the prior art suggested the desirability of the modification. See In re Mills, 916
F.2d 680, 682, 16 USPQ2d 1430, 1432 (Fed. Cir. 1990); In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). The types of sensors discussed by Sity
are sensors which are designed to transmit either a “0" or “1" signal depending on
whether the face in which the particular sensor is installed faces the playing surface or
is exposed to perform the function of indicating which die face faces upward. One of
ordinary skill in the art would not have readily envisaged bar code strips as being such
sensors and there is nothing in the teachings of Jenkins of the use of bar codes for
identifying brand and type of container on beverage containers in recycling systems
which would have suggested their use in Sity’s die. Thus, we, like appellant, reach the
conclusion that the examiner’s rejection of claims 1-3 and 5 stems from impermissible
hindsight reconstruction2 and cannot be sustained.
Claim 4 is directed to a method of providing a die with a verifiable identity to a
casino comprising, inter alia, the steps of manufacturing the die with a face connected
to a bar code strip. Finding nothing in Onzo which cures the above-noted deficiency in
2 Rejections based on 35 U.S.C. § 103 must rest on a factual basis. In making such a rejection,
the examiner has the initial duty of supplying the requisite factual basis and may not, because of doubts
that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction
to supply deficiencies in the factual basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178
(CCPA 1967), cert. denied, 389 U.S. 1057 (1968).
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