Appeal No. 2004-1219 Page 2
Application No. 10/115,632
We have carefully considered the argument raised by the appellant in their request
for rehearing, however, that argument does not persuade us that our decision was in error
in any respect.
The argument raised by the appellant is that there is no suggestion, teaching or
motivation to combine the applied prior art so as to arrive at the playing of the conventional
game of craps on a slot machine absent the use of hindsight knowledge derived from the
appellant's own disclosure.2
Claim 1 on appeal reads as follows:
A slot machine gaming apparatus for play of the game of craps by a player,
comprising:
a single, free-standing housing containing
means for simulating play of the dice game of craps[3], and
means for tallying cumulative winning or positive outcomes of said
play according to a predetermined schedule and the rules of said game, and
means for displaying and paying out to said player the total winnings,
if any, accrued during said play.
2 The use of such hindsight knowledge to support an obviousness rejection under 35 U.S.C. § 103
is, of course, impermissible. See, for example, W. L. Gore and Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
3 The American HeritageŽ Dictionary of the English Language, Third Edition, 1992, defines "craps"
as "[a] gambling game played with two dice in which a first throw of 7 or 11 wins, a first throw of 2, 3, or 12
loses the bet, and a first throw of any other number (a point) must be repeated to win before a 7 is thrown,
which loses both the bet and the dice." This is the broadest reasonable meaning of the term "craps" as it
would be understood by one of ordinary skill in the art, taking into account the enlightenment afforded by
the written description contained in the appellant's specification. See In re Morris, 127 F.3d 1048, 1054,
44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed.
Cir. 1983).
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