Appeal No. 2006-1772
Application No. 09/993,359
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See also In re Piasecki,
745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The examiner can satisfy
this burden by showing that some objective teaching in the prior art or knowledge
generally available to one of ordinary skill in the art suggests the claimed subject matter.
In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). An
obviousness analysis commences with a review and consideration of all the pertinent
evidence and arguments. “In reviewing the [E]xaminer’s decision on appeal, the Board
must necessarily weigh all of the evidence and arguments.” Oetiker, 977 F.2d at 1445,
24 USPQ2d at 1444). In addition, our reviewing court stated in In re Lee, 277 F.3d at
1343, 61 USPQ2d at 1433, that when making an obviousness rejection based on a
combination, “there must be some motivation, suggestion or teaching of the desirability
of making the specific combination that was made by Applicant” (quoting In re Dance,
160 F.3d 1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998)).
We do not find that the examiner has provided objective evidence to show that
one skilled in the art would have modified the combined teachings of Matsumoto
Edgeworth and Bunco to include a second paytable. Accordingly, we will not sustain the
examiner’s rejection of claims 110 and 111 35 U.S.C. § 103.
Rejection of claim 112.
Appellants argue, on page 12 of the brief, that claim 112 recites elimination from
play any match point, which is not matched on a toss and that this feature is not taught or
suggested by the prior art.
The examiner does not directly address this argument in the response to
arguments section of the answer. However, in the statement of the rejection, on page 5 of
the answer, the examiner states:
In Bunco, any match point that is not matched on a toss is eliminated. (If
the match point is 2 and the player fails to throw a 2, the "2" round is over and
that match point is eliminated.) The rules teach determining whether to continue
with a toss on a subsequent stage of play up to a preset maximum number of
stages (6) provided that at least one match point remains for each such subsequent
stage. If a player tosses a 1 in the 1 round, the 1 round continues until the player
tosses a set of dice that does not contain a 1. Then the player tries to match the
next match point (2). This continues through six rounds.
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