Appeal No. 2002-1022
Application 09/326,934
claims, and that the applied prior art makes no provision for
audio effects for the specific game or play conditions set forth
in those claims. We agree with appellants. Although it is
entirely possible that the programmable sound producing device of
Okuniewicz would be “capable of” producing sound effects for the
game or play conditions set forth in appellants’ claims on
appeal, there is absolutely no teaching, suggestion or incentive
in either Ishibashi or Okuniewicz to do so.
Accordingly, since neither of the applied references teaches
or suggests the specific sound functions set forth in appellants’
claims on appeal or the problem of increasing accessability of
the hearing impaired to reel casino wagering apparatus, it
follows that the examiner’s rejection of claims 9 through 14 and
21 under 35 U.S.C. § 103 as being unpatentable over Ishibashi in
view of Okuniewicz will not be sustained.
In that regard, the examiner is reminded that a rejection
based on § 103 must rest on a factual basis, with the facts being
interpreted without hindsight reconstruction of the invention
from the prior art. In making this evaluation, the examiner has
the initial duty of supplying the factual basis for the rejection
he advances. He may not, because he doubts that the invention is
patentable, resort to speculation, unfounded assumptions or
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