Appeal 2007-2174
Application 10/751,614
of the ways in which a patent’s subject matter can be proved obvious is by
noting that there existed at the time of the invention a known problem for
which there was an obvious solution encompassed by the patent’s claims.”)
Appellants’ arguments in the Appeal Brief and the Reply Brief have
been considered, but are not deemed to be persuasive, especially in view of
the claim construction set forth above.
More specifically, Appellants argue that “the inclusion of the encoded
electronic device is minimized in the Rendleman . . . disclosure as a part of
the invention,” thus “clearly negat[ing] the existence of any suggestion or
motivation for its use as a reference against the claims on appeal.” (Br. 13.)
Rendleman teaches that the “invention will be described herein
includes the electronic device [i.e., the transponder], though it is understood
it may be omitted.” (Col. 2, ll. 59-61.) It is unclear how that can be seen as
minimizing the use of a transponder in Rendleman. Moreover, the teachings
of a reference are not limited to the specific examples disclosed therein. In
re Mills, 470 F.2d 649, 651, 176 USPQ 196, 198 (CCPA 1972); In re
Chapman, 357 F.2d 418, 424, 148 USPQ 711, 716 (CCPA 1966) (“A
reference can be used for all it realistically teaches and is not limited to
disclosures in its specific illustrative examples.”).
Appellants argue that there is no teaching in Busch as to a single
betting location where an intermingled bet may be made (Br. 13). Thus,
Appellants conclude Busch “teaches away from the present invention and
thus cannot provide the missing teaching of Rendleman . . . .” (Id. at 14.)
Claim 21 is drawn to a single gaming chip, and the apparatus of
claims 27 and 28 merely require two gaming chips. Claim 21, as discussed
above, recites “when said first class gaming chip and said at least one other
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