Ex parte WEINBERGER - Page 5




          Appeal No. 97-4173                                                          
          Application 08/575,963                                                      



                    symbols in the pay-off line do not match                          
                    there is no payout, when the pay-off line                         
                    has certain symbols, such as: three                               
                    cherries, the payout is a small amount and                        
                    when the pay-off line has other symbols,                          
                    such as: JACKPOT, the payout amount is                            
                    quite large.  If there was not a variable                         
                    payout, they would not be called gaming                           
                    machines.  “[I]n considering the disclosure                       
                    of a reference, it is proper to take into                         
                    account not only specific teachings of the                        
                    reference but also the inferences which one                       
                    skilled in the art would reasonably be                            
                    expected to draw therefrom.”  In re Preda,                        
                    401 F.2d 825, 159 USPQ 342, 344 (CCPA                             
                    1968).  One of ordinary skill in the art                          
                    would be expected to infer the normal                             
                    operation of gaming machines when presented                       
                    with the gaming machines disclosed in                             
                    [Fukuda] and Wilhelm '048.  It would follow                       
                    then, that various combinations of symbols                        
                    on the reels of the gaming machines of                            
                    [Fukuda] or Wilhelm '048 would result in                          
                    prizes of different values and therefore                          
                    corresponding coupons of different values.                        
                                                                                     





                    The penultimate paragraph of claim 1 recites, inter               
          alia:                                                                       
                    each said reel being divided into a                               
                    plurality of separate segments, a coupon                          
                    value located within each said segment with                       
                                          5                                           





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Last modified: November 3, 2007