Aruze Corp. loses slot machine case at Board

The Board affirmed the Examiner in Ex parte Okada.

The abstract for the application in question, from published US 20080064473:

A slot machine of the present invention comprises: a symbol display device capable of variably displaying a plurality of symbols; an image display device; and a controller, the controller programmed to execute the processing of: (A) executing a game in which the plurality of symbols are variably displayed and then stop-displayed to the symbol display device after game media are BET in number equal to or less than a previously set maximum number of BETs, and game media are paid out in number according to the plurality of symbols stop-displayed or a combination thereof; (B) shifting a mode from a non-insurance mode to an insurance mode on condition that a predetermined number of game media is inserted; (C) counting the number of games played after shifting to the insurance mode, in the insurance mode; (D) paying out a predetermined number of game media when the number of games counted in the processing (C) reaches a specific number; (E) displaying to the image display device a specific payment image showing that a payment based on the number of games reaching the specific number is being processed during a period when game media are paid out in the processing (D).

From the Board decision in Appeal 2011-004252.

Appellant contends that because there is “no indication in Okada or Walker that this problem about payouts was a known problem in the gaming art . . . [i]t is improper to assume that the problem was known in determining whether Appellant’s providing of a specific payment image was an obvious solution to the problem.” Id. (citing In re Sponnoble, 405 F.2d 578, 585 (CCPA 1969)).

BUT

Appellant, however, has not presented evidence that one of ordinary skill in the art would not have recognized the true cause of the alleged problem or that there was any confusion or doubt at the time of invention as to the cause of player confusion, even assuming such confusion in fact existed. See In re Sponnoble, 405 F.2d 578, 586 (CCPA 1969) (indicating that appellant “discovered the cause of the moisture transmission to be the passage of moisture through, rather than around, the center plug” and that the “crux of the matter in this case is the discovery by appellant that passage through the center plug was a major cause of moisture transmission”); see also Cross Medical Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005) (noting that in Sponnoble, “those of ordinary skill in the art . . . recognized a moisture-transfer problem . . . [but] believed that moisture was transmitted around the plug . . . [whereas] Sponnoble discovered that moisture traveled through the plug”). Thus, Appellant has not presented sufficient evidence to persuade us that the facts of this case are analogous to those of In re Sponnoble.

Furthermore, we agree with the Examiner that the inquiry into whether an alleged invention would have been obvious to one of ordinary skill in the art at the time of invention is not limited “only to the problem the patentee was trying to solve.” Ans. 8 (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007)). Rather, “[u]nder the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR, 550 U.S. at 420.

Separately
As such the failure of one reference to disclose each and every element of the claims is inapposite where a second reference discloses the missing element(s). See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references”); see also In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (same); In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991) (“The test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art.”).

From footnote 1:

Appellant has not separately argued claims 2, 3, and 5-7. See App. Br. 6 (“Claim 1 is discussed as representative of the claims in this ground of rejection.”) Thus, claims 2, 3, and 5-7 stand or fall with claim 1 from which they depend. 37 C.F.R. § 41.37(c)(1)(vii) (2011); e.g., In re Lovin, 652 F.3d 1349, 1351 (Fed. Cir. 2011).