Appeal No. 2006-2057
Application No. 10/277,482
view of the teachings or suggestions of the inventor.@ Para-Ordnance Mfg. v. SGS
Importers Int=l, 73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir.
1995)(citing W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551,
1553, 220 USPQ 303, 311, 312-13 (Fed. Cir. 1983)). AIt is impermissible to use
the claimed invention as an instruction manual or >template= to piece together the
teachings of the prior art so that the claimed invention is rendered obvious.@ In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992)(citing In re
Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991)).
From all of the above, we find that the examiner has failed to establish a
prima facie case of obviousness of claim 1. Accordingly, we cannot sustain the
rejection of claim 1, or claims 2-14, 19 and 20, which depend from claim 1, under
35 U.S.C. § 103(a) as being unpatentable over Awada ('643) in view of Ornstein.
We turn next to independent claim 15. Appellant asserts that claim 15
recites "[p]aying the player a payout for winning or pushing on at least two
consecutively played game segments." It is asserted (brief, page 16) that “[a]long
with every other issue specifically raised above with respect to the patentability of
claims 1-14 (except for the issue of exactly six cards), these claims are patentable
for the same reasons as claim 1 above over Awada ‘643 in view of Ornstein.” At
the outset, we make reference to our findings regarding Awada ('643) and Ornstein
with respect to claim 1. Further, we note that in addition to not reciting that the
player receives a total of six cards, as is recited in claim 1, claim 15 does not recite
that the first two segments are played against the dealer hand and the third segment
is played against a paytable as recited in claim 1. Rather, claim 15 recites that
“[s]coring the segments whose rules of at least one of the game segments require
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