Appeal 2007-2174
Application 10/751,614
We find, in light of the claim construction above, that Rendleman
teaches all of the limitations of the chip of claim 21 when “the identification
differentiates the first class gaming chip from at least one other class of
gaming chips” is read as being a casino designation. In addition, Rendleman
teaches that the casino designation would allow casinos to use each other’s
chips, if so desired. Thus, even though the statement “when said first class
gaming chip and said at least one other class of gaming chips are
intermingled within said bet” in claim 21 is intended use and does not limit
the scope of the claim, the chips of Rendleman would meet that limitation
when being used to place a bet. Therefore, the rejection of claims 21, 23,
24, 26-28 and 30-40 is affirmed. See, e.g., MercExchange, L.L.C. v. eBay,
Inc., 410 F.3d 1323, 1330, 74 USPQ2d 1225, 1231 (Fed. Cir. 2005) (noting
that although the defendants invalidity arguments were limited to
obviousness, arguments as to anticipation were still preserved as
“anticipation is the epitome of obviousness”); In re McDaniel, 293 F.3d
1379, 1385, 63 USPQ2d 1462, 1466 (Fed. Cir. 2002) (noting that it is “well-
settled that ‘anticipation is the epitome of obviousness.’”).
Moreover, even if we were to consider the limitation of “the
identification differentiates the first class gaming chip from at least one other
class of gaming chips” as being limited to a promotion or side-bet, we
conclude that the combination of Rendleman and Busch renders claim 21
obvious.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: September 9, 2013