Appeal No. 03-2051 Page 7
Application No. 09/127,183
There is nothing in the record which would support answering any of the above
questions in the affirmative, and thus there is no support for concluding that the prior art
structure is the equivalent under 35 U.S.C. § 112, sixth paragraph, of the structure
disclosed by the appellant in the specification.
For the reasons expressed above, the rejection of independent claim 23 as
being anticipated by McArthur cannot be sustained. Nor, it follows, can we sustain the
like rejection of claims 3-8, which depend from claim 23.
The Section 103 Rejection Of Claims 10-15, 24 and 25
Independent claim 24, dependent claims 10-15, and independent claim 25 stand
rejected as being obvious2 in view of the combined teachings of McArthur and Smith.
Claim 24 recites, inter alia, (1) “means for generating a reset pulse, delayed by an
enhanced payout interval, in response to said enhanced payout signal,” (2) “resetting
means for resetting said activity counter in response to said idle time signal and in
response to said reset pulse,” and (3) “indicating means for indicating the existence of
said enhanced payout interval to the player in response to said enhanced payout
signal.” As was the case with Claim 23, the examiner has failed to treat these
2The test for obviousness is what the combined teachings of the prior art would have suggested to
one of ordinary skill in the art. See, for example, In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). In establishing a prima facie case of obviousness, it is incumbent upon the examiner to
provide a reason why one of ordinary skill in the art would have been led to modify a prior art reference or
to combine reference teachings to arrive at the claimed invention. Ex parte Clapp, 227 USPQ 972, 973
(Bd. Pat. App. & Int. 1985). To this end, the requisite motivation must stem from some teaching,
suggestion, or inference in the prior art as a whole or from the knowledge generally available to one of
ordinary skill in the art and not from the appellant’s disclosure. Uniroyal, Inc. V. Rudkin-wiley Corp., 837
F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
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