Appeal No. 2004-0361 Page 4
Application No. 09/854,156
OPINION
All of the independent claims are rejected as anticipated over Williams. Anticipation
requires that each and every step of the claimed method be disclosed or inherently present in a
method described in the prior art. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429,
1431 (Fed. Cir. 1997). The Examiner has failed to point out a method described in Williams
which meets the requirements of anticipation.
First, we cannot agree with the Examiner that the word “stud” in the claims is non-
limiting. The word “stud” breathes life and meaning into the claim. The method is a method of
“stud poker” and these words serve to restrict the method to those poker games known in the art
as stud poker games. Stud poker is a category of poker not merely an intended use for the
method steps recited in the body of the claim as argued by the Examiner.
Reading the claims correctly to be limited to stud poker games, we cannot agree that
Williams anticipates the method of the claims. Both Williams and Appellant’s specification
discuss stud poker and draw poker as different categories of poker games and provide evidence
that stud poker was understood by those of ordinary skill in the art to be different from draw
poker (specification, p. 1, l. 16 to p. 2, l. 21 and Williams, col. 1, ll. 19-20). In draw poker, the
player is given the option to discard some cards in the initial hand and draw new cards to replace
them. There is no such discard and draw option in stud poker. The Examiner argues that
“Williams sets up the environment by indicating numerous stud poker games in the ‘Back ground
of invention’ [sic, ‘Background of the Invention’] in the disclosure.” But the fact that Williams
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