Ex Parte Brunner

Patent Trial and Appeal Board

Jun 29, 2016

13227859 (P.T.A.B. Jun. 29, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/227,859 09/08/2011 Henry Brunner HBRU:1000 6355
34725 7590 06/29/2016
CHALKER FLORES, LLP
14951 North Dallas Parkway, Suite 400
DALLAS, TX 75254
EXAMINER
GRAHAM, MARK S
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
06/29/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HENRY BRUNNER
____________________

Appeal 2014-005375
Application 13/227,859
Technology Center 3700
____________________

Before LYNNE H. BROWNE, JILL D. HILL, and LISA M. GUIJT,
Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Henry Brunner (“Appellant”) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1, 2, 5, 6, 8, 9, 11, 12, and 14–16.1 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 Claims 3, 4, 7, 10, 13, and 17–19 have been canceled. Resp. to Notice of
Non-Compliant Appeal Br., Claims App.
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CLAIMED SUBJECT MATTER
Independent claims 1, 9, and 12 are pending. Independent claim 1,
reproduced below, illustrates the claimed subject matter.
1. A method of playing multiple ring toss games
using a single game system comprising
selecting to play a first ring toss game or a second ball
capture game using a single game system comprising 2 metal
rings, 4 stakes, 2 balls, and at least three sets of disc-type
throwing projectiles, wherein each set of the at least three sets
of disc-type throwing projectiles comprises at least 2 metal
discs, wherein the discs are optionally colored or marked with a
suitable indicia for identification;
wherein the first ring toss game comprises the steps of:
providing 2 metal rings,
securing each of the metal rings[, which] are held
in place on a surface by 2 stakes, wherein a first stake is
placed on a front inside portion of the ring and a second
stake is placed on a rear outside portion of the ring;
positioning one ball[, which] is placed at or about a
center of each of the metal rings, wherein the ball may
optionally be positioned on a top surface of a tee to be
placed at or about the center of the metal ring;
placing the 2 metal rings approximately 25 ft. from
each other;
allowing a first player to stand behind the metal
rings;
tossing at least one of the at least one disc[] in a
direction of the metal rings;
scoring points by one or any combination of the
following:
throwing the disc and knocking the ball out of the
ring to score 5 points;
throwing the disc and making it stay or lean inside
the ring to score 5 points;
throwing the disc and making it lean on the outside
of the ring or balance on the edge of the ring to score 3
points; and
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throwing the disc and having it land within 12” of
the edge of the ring or the measurement of the largest
player’s shoe to score 1 point;
summing up the points scored to arrive at an
accumulated score for each individual player, wherein an
individual player may score a maximum of 15 points by
throwing 2 discs into the ring while knocking the ball
simultaneously out of the ring; and
determining a winner of the first ring toss game by
accumulating 21 points; and

wherein the second ball capture game compris[es] the
steps of:
providing a play area;
providing a gaming kit2 comprising:
using at least one ball;
using at least one set of a disc-type throwing
projectiles, wherein each set of disc-type throwing
projectiles comprise 2 discs; and
throwing the ball within the play area, wherein the
ball is thrown by a first player participating in the game;
allowing the first player to throw a disc to capture
or get close to the ball;
allowing a second player to throw a disc to capture
or get close to the ball;
allowing any subsequent player to throw a disc to
capture or get close to the ball;
repeating the step of throwing a subsequent disc
until the attempt of the first player has been bested;
accumulating points [via] one or any combination
of the following:
throwing the disc and capturing the ball by being
or landing on top of the ball in any manner to score 21
points;
throwing the disc and hitting the ball to score 5
points; and

2 It is unclear how a gaming kit, or the provision thereof, can comprising
“using” a ball and a set of projectiles.
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throwing the disc and landing within 6 inches of
the ball to score 5 points;
throwing the disc and landing within 12 inches of
the ball to score 3 points;
throwing the disc and landing within 24 inches of
the ball to score 1 point; and
summing up the points scored to arrive at an
accumulated score for each individual player, wherein 10
points are deducted from the score of a player if the ball
is on top of any part of the disc; and
determining a winner of the second ball capture
game by selecting the first player to accumulate 21
points.
Resp. to Notice of Non-Compliant Appeal Br., Claims App. 
REJECTIONS
I. Claims 1, 2, 5, 6, and 8 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Michelet (US 6,899,336 B2; iss. May 31, 2005),
Fairbanks (US 6,923,448 B2; iss. Aug. 2, 2005), Ernst (US 970,901; iss.
Sept. 20, 1910), Bible (US 5,060,955; iss. Oct. 29, 1991), and Chodosh (US
2003/0184013 A1; pub. Oct. 2, 2003). Final Act 2.
II. Claims 9 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Menendez (US 2006/0066055 A1; Mar. 30, 2006). Final
Act. 7.
III. Claims 12 and 14–16 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Bible and Chodosh. Final Act. 7.

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OPINION
Rejection I
Regarding independent claim 1, the Examiner finds, inter alia, that
Michelet’s “points may be scored in various fashions,” and determines that
“[t]he amount of points awarded for any given landing position would
obviously have been up to the ordinarily skilled artisan depending on the
pace of the game desired to reach a winning total.” Final Act. 3 (citing
Michelet, col. 4, last para.). In response, Appellant argues that none of the
references cited by the Examiner teach “throwing the disc and knocking the
ball out of the ring to score points,” and that the Examiner has failed to
provide an articulated reasoning with rational underpinning to support the
legal conclusion of obviousness. Br. 17–18.
Claim 1 recites several limitations directed to scoring, including
“throwing the disc and knocking the ball out of the ring to score 5 points.”
Resp. to Notice of Non-Compliant Appeal Br., Claims App. Michelet
discloses scoring by “landing [a missile] on the rim of the bowl; landing [the
missile] inside the bowl; and . . . knocking the cap off [of the bottle].”
Michelet, col. 4, ll. 61–65; see Final Act. 3. Michelet is silent, however,
regarding scoring points by knocking the cap out of the bowl, and the
Examiner’s articulated reason does not sufficiently explain why a person of
ordinary skill would have modified Michelet’s scoring to include points for
landing the cap outside of the bowl. Varying an amount of points awarded
to achieve a desired game pace (Final Act. 3) simply does not account for
awarding points for landing a cap outside of the bowl. As such, the
Examiner has not provided an adequate reason with rational underpinning
regarding why it would have been obvious to modify Michelet to result in
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the claimed scoring by knocking a target from a ring or bowl. See KSR Int'l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We therefore do not sustain
the Examiner’s rejection of claim 1 and claims 2, 5, 6, and 8, depending
therefrom.
Rejection II
Appellant argues claims 9 and 11 as a group. Br. 20. We select
independent claim 9 as representative. See 37 C.F.R.
§ 41.37(c)(1)(iv)(2015). Claim 11 stands or falls with claim 9.
Appellant argues that the combination of Michelet, Ernst, Fairbanks,
Bible, and Chodosh does not teach every limitation of the claimed invention,
and that “there is no expectation of success or motivation to combine the
references suggested and the addition of Menendez (alone or in
combination) does not cure these deficiencies.” Br. 20. Appellant’s
argument is not persuasive because it is not germane to the rejection of claim
9, which is based only upon Menendez. See Final Act. 7. Appellant does
not explain why the Examiner erred in rejecting claim 9 over Menendez.
For this reason, we sustain the rejection of claims 9 and 11.
Rejection III
Appellant argues claims 12 and 14–16 as a group. Br. 20–21. We
select independent claim 12 as representative. See 37 C.F.R.
§ 41.37(c)(1)(iv). Claims 14–16 stand or fall with claim 12.
Claim 12 is directed only to the “second ball capture game” recited in
claim 1. Accordingly, claim 12 was rejected as unpatentable over only Bible
and Chodosh, whereas claim 1 was rejected as unpatentable over Michelet,
Fairbanks, Ernst, Bible and Chodosh.
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The Examiner finds that Bible discloses the claimed tossing game
except for using a tossed ball as the target object. Final Act. 7–8. The
Examiner also finds that Chodosh discloses using a tossed ball as the target
object, and concludes that “[i]t would have been obvious to have substituted
a ball for Bible’s target cup because substitution of one known element for
another would have yielded predictable results . . . .” Id. at 8 (citing. KSR
Int’l. Co. v. Teleflex, Inc., 550 U.S. 398 (2007)). The Examiner further finds
that Bible teaches that “it is known to cancel out or deduct points when one
game object is on top of another” and concludes that it would have been
obvious “to have applied such a scoring rule with the Bible/Chodosh game
object as well to add interest to the game.” Id. at 8 (citing Bible, col. 4, ll.
24–26).
Appellant argues that “[f]or at least the reasons stated above, the
combination of Michelet [], Ernst [], Fairbanks [], Bible, and Chodosh does
not teach every limitation of the claimed invention; there is no expectation
of success or motivation to combine the references as suggested.” Br. 21.
We understand “the reasons set forth the above” to refer to the arguments
provided for claim 1 (see Br. 17–19). However, claim 12 does not include
many of the limitations of claim 1 (see Resp. to Notice of Non-Compliant
Appeal Br., Claim App.), and the Examiner’s rejection of claim 12 is
different than that for claim 1 (see Final Act. 2–4, 7–8).
The Examiner correctly notes that, regarding claim 12, “no argument
specific to the rejection has been offered.” Ans. 8. Appellant does not point
to any specific limitation of claim 12 that is allegedly not taught by the prior
art references. Absent such articulated arguments, we are not persuaded that
the Examiner has erred.
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Further, Appellant has not explained why the Examiner’s proposed
reasoning (Final Act. 8) is in error. Regarding Appellant’s argument that
“the only guidance [for the Examiner’s proposed combination] comes from
the current invention” (see Br. 19 (addressing claim 1)), we note that the
Examiner’s reasoning differs significantly between the rejection of claim 1
and the rejection of claim 12. The Examiner’s proffered reasoning in
rejecting claim 1 includes that it would have been obvious to: (1) “use[] as
many sets [of throwing discs] as desired depending on the number of
players;” (2) “substitute[] a ball for Michelet’s disc because substitution of
one known element for another would have yielded predictable results;” (3) 
[use metal] to form Michelet’s game elements . . . depending on what was
most readily available or cost effective;” (4) use stakes (as taught by
Fairbanks) to secure Michelet’s ring toss game to the ground; (5) use a
25-foot spacing “in such games as disclosed by Fairbanks . . . depending on
the skill level of the players;” and (6) alter the scoring of Michelet’s game
“depending on the length of the game desired.” Ans. 3–4.
In rejecting claim 12, the Examiner only concludes that it would have
been obvious to: (1) “substitute[] a ball for Bible’s target cup because
substitution of one known element for another would have yielded
predictable results;” and (2) “cancel out or deduct scored points when one
game object is on top of another in the Bible/Chodosh game “to add interest
to the game.” Appellant’s argument against the Examiner’s findings and
reasoning set forth in rejecting claim 1, therefore, is not on-point or
persuasive regarding the Examiner’s findings and reasoning set forth
regarding claim 12. For these reasons, we sustain the rejection of claim 12
and 14–16.
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DECISION
We REVERSE the rejection of claims 1, 2, 5, 6, and 8 under
35 U.S.C. § 103(a) as unpatentable over Michelet, Ernst, Fairbanks, Bible,
and Chodosh.
We AFFIRM the rejection of claims 9 and 11 under 35 U.S.C.
§ 103(a) as unpatentable over Menendez.
We AFFIRM the rejection of claim 12 and 14–16 under 35 U.S.C.
§ 103(a) as unpatentable over Bible and Chodosh.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART