Ex Parte Bertrand

Board of Patent Appeals and Interferences

May 26, 2004

09956195 (B.P.A.I. May. 26, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte LESKER L. BERTRAND
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Appeal No. 2004-1218
Application No. 09/956,195
____________
ON BRIEF
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Before PAK, WALTZ, and DELMENDO, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the primary examiner’s
final rejection of claims 1 through 9 and 11, which are the only
claims remaining in this application. We have jurisdiction under
35 U.S.C. § 134.
According to appellant, the invention is directed to a tray
for holding game pieces which have indicia on one side, where the
tray includes an elongate generally rectangular base having a
reflective surface, mounted in association with an elongate
transparent easel portion overlying the reflective base at such
Appeal No. 2004-1218
Application No. 09/956,195
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an angle that the indicia on the game pieces can be viewed in
reflection, without requiring a player to lift or manipulate the
game piece (Brief, pages 2-3). Appellant states that the claims
stand together as a single group (Brief, page 3). Therefore,
pursuant to the provisions of 37 CFR § 1.192(c)(7)(2000), we select
claim 1 from this grouping of claims and decide the ground of
rejection in this appeal on the basis of this claim alone.
Representative independent claim 1 is reproduced below:
1. A tray for holding game pieces having indicia on only
side thereof, said tray comprising:
an elongate generally rectangular base portion having a
reflective surface;
an elongate transparent easel portion; and
assembly means for temporarily mounting said elongate
transparent easel portion at an acute angle along and overlying one
edge of said elongate generally rectangular base portion such that
indicia on a lower surface of each game piece mounted on said
elongate transparent easel portion is visible in reflection within
said elongate generally rectangular base portion when said elongate
transparent easel portion is so mounted and wherein said tray may
be collapsed and packaged in a flat container when disassembled.
The examiner has relied upon the following references as
evidence of obviousness:
Chapman 898,833 Sep. 15, 1908
Morse 4,146,229 Mar. 27, 1979
Conville 6,244,598 Jun. 12, 2001
Appeal No. 2004-1218
Application No. 09/956,195
1The examiner has not presented any analysis of the
“assembly means” as a “means plus function” under 35 U.S.C.
§ 112, ¶6 (see Paper Nos. 4 and 6 as well as the Answer). See
Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1318, 50 USPQ2d
1161, 1166 (Fed. Cir. 1999). However, appellant has not
presented any argument that Morse fails to disclose or suggest
this claimed limitation (see the Brief and Reply Brief in their
entirety).
3
The claims on appeal stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Morse, for the reasons set forth in the final
Office action dated Nov. 1, 2002 (Paper No. 6), with evidentiary
support from Chapman and Conville (Answer, page 3). We affirm this
rejection essentially for the reasons stated in the final Office
action, the Answer, and those reasons set forth below.
OPINION
The examiner finds that Morse discloses a card viewer having a
rectangular reflective surface 3 with a transparent plastic top
wall 16, corresponding to the claimed easel portion, mounted at an
acute angle (30°) with respect to the reflective surface (Answer,
page 3, citing the final Office action (Paper No. 6), which itself
refers to the first Office action of Paper No. 4). The examiner
recognizes that Morse does not explicitly disclose that his card
holder is collapsible or may be disassembled (Paper No. 6, page
2).1 However, the examiner concludes that it would have been
obvious to one of ordinary skill in this art to disassemble the
Appeal No. 2004-1218
Application No. 09/956,195
4
card viewer of Morse or make it collapsible “since it has generally
been recognized that to make components separable involves only
routine skill in the art” and “it is well-known that items or
elements stored in a flat container are more easily transported”
(Answer, page 4; Paper No. 6, page 2). The examiner cites Conville
and Chapman as “evidentiary support” for this conclusion, finding
that Conville discloses that it was well-known in the gaming art
that games can be disassembled and packaged in flat containers for
shipping while Chapman discloses that even games with a mirror can
be disassembled for packing into flat boxes for shipping (Answer,
page 4).
Appellant’s sole argument is that, despite appellant’s
challenge to the examiner’s factual assertion, the examiner has
failed to provide documentary evidence in support of this factual
assertion that it only requires routine skill in the art or it is
well known to make optical devices collapsible or disassembled
(Brief, pages 4-5). This argument is not persuasive since the
examiner has presented “documentary evidence” in the form of
Chapman and Conville to support the factual assertion presented in
the final Office action of Paper No. 6 (Answer, page 4). Chapman
teaches that a game containing a “secured” mirror 14 may be
disassembled and packed within a box (page 1, ll. 69-81). Conville
Appeal No. 2004-1218
Application No. 09/956,195
2Appellant strongly disputes the examiner’s citation of
Conville and Chapman for the first time in the Answer, without
denominating the rejection as a new ground of rejection or
reopening prosecution (Reply Brief, page 2; see the Answer,
paragraph bridging pages 4-5). However, this issue is
petitionable and not before us on appeal. See 37 CFR §
1.191(c)(2000); Manual of Patent Examining Procedure, §§§
1002.02(d), 1208.01, and 2144.03, 8th ed., Aug. 2001.
5
teaches that it is advantageous for a game to be “folded”
(collapsible or disassembled) into a flat, very low profile
shipping or storage orientation for efficient bulk shipping and
storage (col. 2, ll. 55-61; col. 3, ll. 43-49). Therefore we
determine that the examiner has presented sufficient evidence to
support the disputed assertion.2
We additionally note that the limitation “wherein said tray
may be collapsed and packaged in a flat container when
disassembled” (emphasis added) as recited in claim 1 on appeal only
requires a capability of the tray to be collapsed or disassembled
but does not positively state that such action has occurred. See
In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32
(Fed. Cir. 1997); In re Casey, 370 F.2d 576, 579-80, 152 USPQ 235,
238 (CCPA 1967). Appellants have not provided any reasoning or
evidence establishing that the card viewer of Morse was not capable
of being collapsed or disassembled.
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For the foregoing reasons and those set forth in the Answer,
we determine that the examiner has established a prima facie case
of obviousness in view of the reference evidence. Based on the
totality of the record, including due consideration of appellants’
arguments, we determine that the preponderance of evidence weighs
most heavily in favor of obviousness within the meaning of section
103(a). Accordingly, the rejection of claims 1-9 and 11 under 35
U.S.C. § 103(a) over Morse in view of Chapman and Conville is
affirmed.
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Application No. 09/956,195
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No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
TAW/jrg
Appeal No. 2004-1218
Application No. 09/956,195
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