Appeal No. 2006-1909 Page 5
Application No. 10/621,768
The issue to consider when determining whether a nonstatutory basis
exists for a double patenting rejection is whether any claim in the application
defines an invention that is merely an obvious variation of an invention
claimed in another patent.1 The analysis employed in an obviousness-type
double patenting determination parallels the guidelines for an obviousness
determination under 35 U.S.C. § 103(a). In re Braat, 937 F.2d 589, 593-94,
19 USPQ2d 1289, 1292-93 (Fed. Cir. 1991); see also In re Longi, 759 F.2d
887, 892 n. 4, 225 USPQ 645, 648 n.4 (Fed. Cir. 1985). As such, to
determine obviousness we consider the factors set forth in Graham v. John
Deere Co., 383 U.S. 1, 17 (1966), viz., (1) the scope and content of the prior
art; (2) the differences between the prior art and the claims at issue; and (3)
the level of ordinary skill in the art.2 In this case, the “prior art” being
considered is claims 1-24 of Moody in view of Gajor.
Claims 1-24 of Moody recite displaying an initial first hand of five
cards to a player. If the player’s initial five card hand contains a certain pre-
selected arrangement of cards, the player is given a bonus event, i.e., the
option of using a second pay table in place of the first pay table during the
first round of play (claim 1), awarding the player a second hand of five cards
(claim 16), or awarding the player bonus rounds of play (claim 22).
1 In this case, since the application at issue was filed later than the Moody patent, only a one-way
determination of obviousness is needed in resolving the issue of double patenting, i.e., whether
the invention defined in a claim in the application would have been an obvious variation of the
invention defined in a claim in the patent. M.P.E.P. § 804 (August 2001).
2 Although Graham also suggests analysis of secondary considerations such as commercial
success, long felt but unsolved needs, failure of others, etc., the appellant presented no such
evidence of secondary considerations for the Board’s consideration.
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