Appeal No. 2003-0097
Application 09/360,969
plurality of game terminals having a display that allows the
players to choose a sub-set of indicia from a set of indicia and
display the sub-set of indicia, or the corresponding limitations
in independent claim 18 requiring the steps of allowing selection
of a sub-set of indicia from a set of indica on one of the player
terminals and displaying a player selected sub-set of indicia on
one of the player terminals. The examiner’s position that “these
limitations are inherent from Soltesz et al.’s system wherein
bingo cards record being kept electronically in the system”
(answer, page 6) is nothing more than idle conjecture having no
factual support in the fair teachings of the reference.
Thus, Soltesz does not disclose, expressly or under
principles of inherency, each and every element of the invention
set forth in independent claims 1, 14 and 18. Accordingly, we
shall not sustain the standing 35 U.S.C. § 102(e) rejection of
claims 1, 14 and 18, and dependent claims 2, 7, 10, 11, 13, 16,
17 and 20, as being anticipated by Soltesz.
III. The 35 U.S.C. § 103(a) rejection
In addition to not teaching subject matter meeting the
foregoing limitations in independent claims 1, 14 and 18, Soltesz
would not have suggested same to one of ordinary skill in the
art. Therefore, we shall not sustain the standing 35 U.S.C.
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