Ex Parte Snow - Page 12



           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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