Appeal No. 2002-0105 4
Application No. 09/398,891
claims, of dealing a first five card hand in a first poker format, and dealing a second five
card hand in a second poker format different from the first poker format. In this regard,
the examiner’s statement that “Moody shows a variety of poker formats in different
embodiments” (answer, page 3) does not provide a basis for sustaining the standing
rejection to the extent it is based on 35 U.S.C. § 102(b). This is so because alternate
embodiments of the same reference cannot be combined to support an anticipation
rejection under 35 U.S.C. § 102(b). In re Arkley, 455 F.2d 586, 587-88, 172 USPQ 524,
526 (CCPA 1972). Furthermore, the examiner’s statement that “Moody’s claim 3 is written
broad enough to encompass the teachings of different poker formats . . . . Based on the
scope of claim 3, Moody therefore would anticipate claims 1, 5 and 12” (answer, pages 3-
4) also does not provide a basis for sustaining the standing rejection to the extent it is
based on 35 U.S.C. § 102(b). The circumstance that a prior art claim may be broad
enough to read on a claimed invention does not require a conclusion of anticipation (or
obviousness) since a patent’s claims are not a technical description of the disclosed
invention. See In re Benno, 768 F.2d 1340, 1345-46, 226 USPQ 683, 686 (Fed. Cir.
1985) and In re Vamco Mach. & Tool, Inc., 752 F.2d 1564, 1577 n.5, 224 USPQ2d 617,
625 n.5 (Fed. Cir. 1985). Simply stated, the examiner has not pointed to anything in the
disclosure of Moody that supports a conclusion that the subject matter of the appealed
claims is anticipated by Moody.
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