Appeal No. 03-2051 Page 4
Application No. 09/127,183
The Section 102 Rejection of Claims 3-8 and 23
Claims 3-8 and 23 stand rejected under 35 U.S.C. §102(b) as being anticipated1
by McArthur. On page 4 of the Answer, the examiner has explained why, in his view,
claim 23 is anticipated by McArthur. However, claim 23 contains means-plus-function
limitations which must be evaluated in the context of the sixth paragraph of 35 U.S.C.
§112 and, in order to meet a means-plus-function limitation, the prior art must perform
the identical function recited in the means limitation and perform that function using the
structure disclosed in the appellant’s specification or an equivalent structure. See
Valmont Indus. Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 1042, 25 USPQ2d 1451, 1454
(Fed. Cir 1993). The examiner’s rejection does not provide such an analysis.
In this regard, independent claim 23 recites (1) “means for generating an
enhanced payout signal at the end of an activity interval . . . ,” (2) “means for causing
the machine to provide an enhanced payout to the player . . . ,” and (3) “indicating
means for indicating the existence of an enhanced payout to the player . . . .” In the
description of the preferred embodiments of the invention which is set forth in the
1The guidance provided by our reviewing court with regard to the matter of anticipation is as follows:
Anticipation is established only when a single prior art reference discloses, either expressly or under the
principles of inherency, each and every element of the claimed invention. See, e.g., In re Paulsen, 30
F.3d 1475, 1480-1481, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994) and In re Spada, 911 F.2d 705, 708, 15
USPQ2d 1655, 1657 (Fed. Cir. 1990). Additionally, anticipation by a prior art reference does not require
either the inventive concept of the claimed subject matter or recognition of inherent properties that may be
possessed by the reference. See Verdegaal Brothers Inc. v. Union Oil Co. of California, 814 F.2d 628,
633, 2 USPQ2d 1051, 1054 (Fed. Cir. 1987). Nor does it require that the reference teach what the
applicant is claiming, but only that the claim on appeal “read on” something disclosed in the reference, i.e.,
all limitations of the claim are found in the reference. See Kalman v. Kimberly-Clark Corp., 713 F.2d 760,
772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
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