Ex Parte Burnstein

Patent Trial and Appeal Board

Aug 30, 2013

12254937 (P.T.A.B. Aug. 30, 2013)

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.
12/254,937 10/21/2008 Tracey E. Burnstein 36363-9 2434
7590 08/30/2013
DICKINSON WRIGHT PLLC
SUITE 2000
38525 WOODWARD AVENUE
BLOOMFIELD HILLS, MI 48304-5092
EXAMINER
MENDIRATTA, VISHU K
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
08/30/2013 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 TRACEY E. BURNSTEIN
____________

Appeal 2011-011326
Application 12/254,937
Technology Center 3700
____________

Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and
ADAM V. FLOYD, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-011326
Application 12/254,937

2
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1 and 2 under 35 U.S.C. § 103(a) as
unpatentable over Browning (US 3,267,590, issued Aug. 23, 1966), Hall
(US 2,575,269, issued Nov. 13, 1951), and Lee (US 5,190,298, issued Mar.
2, 1993).1 We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claims on appeal, is representative of
the subject matter on appeal, and is reproduced below.
1. A gaming apparatus comprising a game board and a
plurality of pin members[]comprising mathematical symbols,
said game board being made of an elastomeric material and
having a plurality of openings, said openings being smaller than
the diameter of the largest diameter of said pin members,
wherein said pin members are removably held in place in said
openings, a portion of said plurality of pin members being
thermochromic or photocromic such that a correct response can
be selectively revealed.

OPINION
Claim 1
At the outset, we note that the Examiner’s prima facie case of
obviousness, pertaining to the rejection of claim 1, is provided at pages 3-4
of the Answer. See also Ans. 5-6.

1 Although the objections to the Specification and claims 1 and 2 are
petitionable matters and are generally not addressed by the Board, we
acknowledge that the Examiner has withdrawn the objections to the
Specification and claims 1 and 2. Ans. 3.
Appeal 2011-011326
Application 12/254,937

3
The Appellant contends that the Examiner’s rejection has been
clouded by impermissible hindsight and that a prima facie case of non-
obviousness has not been established. Br. 6. The Appellant supports these
contentions by: first, asserting that Browning was patented in 1966, Hall
was patented in 1951, and Lee was patented in 1993, and that not one of
those references includes two of the three claimed limitations, i.e.,
“mathematical symbol game, elastomeric board, and photochromic pieces to
selectively reveal the answers”; and second, asserting that “that there has
been a constant demand over the last 60 years for educational games and yet
none have brought to the table the unique benefits of the claimed invention.”
See id. The Appellant’s contentions are not persuasive.
As for the Appellant’s first assertion, it is well established that the
mere age of the references is not persuasive of the unobviousness of the
combination of their teachings, absent evidence that, notwithstanding
knowledge of the references, the art tried and failed to solve the problem.
In re Wright, 569 F.2d 1124, 1127 (CCPA 1977). Absent a showing of
long-felt need or the failure of others, the mere passage of time without the
claimed invention is not evidence of nonobviousness. Iron Grip Barbell
Company, Inc. v. USA Sports, Inc., 392 F.3d 1317, 1324-25 (Fed. Cir. 2004).
The Appellant does not provide sufficient evidence to outweigh the evidence
of obviousness. Additionally, the number of references applied is not
relevant to the propriety of the combination of references. In re Gorman,
933 F.2d 982, 986 (Fed. Cir. 1991). As for the Appellant’s second assertion,
the assertion lacks objective evidence and as such, is insufficient. See In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Hence, the Appellant does not
cogently explain error in the Examiner’s conclusion of obviousness.
Appeal 2011-011326
Application 12/254,937

4
Thus, the rejection of claim 1 as unpatentable over Browning, Hall,
and Lee is sustained.

Claim 2
The Appellant states that “[c]laim 2 will be allowed to rise and fall
upon the allowability of claim 1.” Br. 6. Accordingly, for the same reasons
we have sustained the rejection of claim 1, we likewise sustain the rejection
of claim 2 as unpatentable over Browning, Hall, and Lee.

DECISION
We AFFIRM the rejection of claims 1 and 2.
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

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