Ex Parte Camaratta

Patent Trial and Appeal Board

Aug 22, 2018

14819777 (P.T.A.B. Aug. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/819,777 08/06/2015
24041 7590 08/24/2018
SIMPSON & SIMPSON, PLLC
5555 MAIN STREET
WILLIAMSVILLE, NY 14221-5406
FIRST NAMED INVENTOR
Frank A. Camaratta JR.
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CMTPlOlAUS 5799
EXAMINER
MENDIRATTA, VISHU K
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
08/24/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentEFS@idealawyers.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK A. CAMARA TT A JR.
Appeal 2018-001536
Application 14/819,777 1
Technology Center 3700
Before MICHAEL C. ASTORINO, BRUCE T. WIEDER, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the
Examiner's decision rejecting claims 1--4 and 7-13. 2 We have jurisdiction
over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 According to the Appellant, the real party of interest is the named
inventor. Br. 2.
2 The Appellant lists Application Serial Number 14/470,609 under the
Related Appeals and Interferences section of the Appeal Brief. Br. 3. This
related appeal has been assigned appeal number 2018-000970 and is being
decided concurrently with the present appeal.
Appeal 2018-001536
Application 14/819,777
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1, 11, and 13 are the independent claims on appeal. Claim 13,
reproduced below, is illustrative of the subject matter on appeal.
13. A method of weighting a chess piece, comprising the steps
of:
creating a first cavity in a base of said chess piece; and,
filling said first cavity with loose particles of metal thereby
forming a weighted chess piece.
Rejections
I. Claims 11-13 stand rejected under 35 U.S.C. § 102 al/a2 as
anticipated by Uvanni (US 3,863,930, issued Feb. 4, 1975).
II. Claims 1-3 and 7-10 stand rejected under 35 U.S.C. § 103 as
unpatentable over Gassies et al. (US 5,895,321, issued Apr. 20, 1999)
("Gassies") in view of Abe (US 2006/0160628 Al, published July 20, 2006),
and Janssen et al. (US 4,145,052, issued Mar. 20, 1979) ("Janssen") or, in
the alternative, Gassies in view of Abe and Uvanni.
III. Claim 4 stands rejected under 35 U.S.C. § 103 as unpatentable
over Gassies in view of Abe, Janssen, and Loritz (US 5,443,270, issued
Aug. 22, 1995), or, in the alternative, Gassies in view of Abe, Uvanni, and
Loritz. 3
IV. Claims 11 and 12 stand rejected under 35 U.S.C. § 103 as
unpatentable over Uvanni and Janssen.
3 The Examiner's failure to properly include as references Abe, Janssen, and
Uvanni for this ground of rejection appears to be a minor oversight. See
Non-Final Act. 5 (mailed Jan. 17, 2017).
2
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Application 14/819,777
ANALYSIS
Rejection I
Independent claim 11 and dependent claim 12
Independent claim 11 is directed to a method of weighting a set of
chess pieces including the steps of "weighting each piece of said subset of
white pieces with loose particles of metal of a first average particle size; and,
weighting each piece of said subset of black pieces with said loose particles
of metal but of a second average particle size." Br. 24 ( emphasis added).
The phrase "but of' in independent claim 11 requires the "first average
particle size" to be different than the "second average particle size."
The Appellant argued the foregoing claim limitation is not taught by
Uvanni. See id. at 9--10. The Appellant's argument is persuasive.
The Examiner found that Uvanni's chess piece 10, which has an
internal ballast receiving chamber 14 for selective introduction of ballast 21
(i.e., sand, BB shot, lead, or any combination thereof), corresponds to the
foregoing claim limitation. Non-Final Act. 2-3 (citing Uvanni, col. 2,
11. 13-22); see Uvanni, Figs. 1--4. The "Examiner takes the position that in
using different combination of fillers it is inherent to introduce different
grains in white/black pieces. Note that the limitation 'average size' is a
matter of opinion and Uvanni['s] material (21) can be treated as average
sizes." Non-Final Act. 2-3. Additionally, the Examiner found that Uvanni
teaches custom weighting of pieces. See Ans. 7-8 ( citing Uvanni, col. 1,
11. 7-13, col. 3, 11. 10-13).
The Examiner does not adequately support the finding that Uvanni
discloses each piece of a subset of white pieces with loose particles of metal
of a first average particle size and each piece of a subset of black pieces with
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Application 14/819,777
loose particles of metal but of a second average particle size. First, we note
that the claimed term "average particle size" references a structural
limitation. Second, we do not understand the Examiner's comment that
average size, or more pertinently, average particle size, is a matter of
opinion. Third, we fail to ascertain how Uvanni's disclosure, including
"custom-weighting," necessarily corresponds to each piece of a subset of
white pieces with loose particles of metal of a first average particle size and
each piece of a subset of black pieces with loose particles of metal of a
second average particle size, where the first average particle size and the
second average particle size are different. As such, the Examiner's finding
that Uvanni teaches the weighting steps of method claim 11 is inadequately
supported.
Thus, we do not sustain the Examiner's rejection of claims 11 and 12
as anticipated by Uvanni.
Independent claim 13
The Appellant argued Uvanni's ballast 21 (i.e., sand, BB shot, lead, or
any combination thereof) does not correspond to "loose particles of metal."
Br. 12. The Appellant's argument is based on Uvanni's ballast 21 not being
a "particle." The Appellant's argument is not persuasive.
At the outset, we note that the Specification does not provide an
explicit definition of the term "particle"; or, more particularly, use the term
"particle." Notably, the requirements of claim 13 make it apparent that the
claimed "particle" must be sized such that a plurality of loose particles may
fit into a cavity in the base of a chess piece. See id. at 24. Additionally, we
note that the Appellant offered dictionary definitions of the term "particle"
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Application 14/819,777
as "'a minute quantity or fragment' or 'a relatively small or the smallest
discrete portion or amount of something. "'4 Id. at 10 ( citing Particle
Definition MERRIAM-WEBSTER.COM, https://www.merriam-
webster.com/dictionary/particle (last visited June 1, 2017)). We understand
these definitions to be within the broadest reasonable interpretation of the
claimed term in light of the Specification as it would be interpreted by one
of ordinary skill in the art. See also In re Am. Acad. of Sci. Tech. Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004).
Uvanni's ballast 21 fits the broadest reasonable interpretation of the
claimed term "particle." See Uvanni, Fig. 4. Uvanni's chess piece 10 has an
internal ballast receiving chamber 14 for selective introduction of ballast 21,
e.g., BB shot. And, ballast 21 is "a minute quantity or fragment" and/or "a
relatively small or the smallest discrete portion or amount of something,"
and as such, corresponds to the term "particle," as required by independent
claim 13 . 5
We also note that the Specification does refer to a "powder," "grain
size," and "granule," but as discussed above, does not refer to a "particle,"
specifically. See, e.g., Spec. ,r 36. As such, the Appellant's reference to the
Specification's description of materials 40w and 40b as having average
4 The Appellant also refers to an example associated with a definition of the
term "particle," i.e., "molecule, atom, proton, electron, photon." Br. 10.
This example was provided with a definition of the term "particle" as "any
of the basic units of matter and energy." Particle Definition 3, MERRIAM-
WEBSTER.COM, https://www.merriam-webster.com/dictionary/particle
(last visited June 1, 2017).
5 No pending claims depend from independent claim 13.
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particle sizes of 18 microns and 50 microns, respectively, is not persuasive. 6
See Br. 10-11, 12. The Specification does refer to material 40w as a
tungsten powder having an average grain size of about 18 microns, and
material 40b as a crystalline tungsten powder having an average grain size of
about 50 microns. See Spec. ,r,r 32, 36. However, the issue is not whether
Uvanni's ballast 21 may be considered a particle included in a "powder," but
whether ballast 21 is a "particle."
The Appellant asserted, "[i]t is well known that BB shot have average
diameters ranging from 4.3 to 4.4 mm" and "4.3 millimeters is equivalent to
4,300 microns, or 86 times the size of the largest particles (50 microns;
material 40b) used in the instant application." Br. 11. The Appellant's
assertion is not persuasive. The Specification provides, as a preferred
example, material 40b as a "crystalline tungsten powder having an average
grain size of 50.0 microns." Spec. ,r 36. This is distinct from the "loose
particles of metal," as recited in claim 13. See also SuperGuide Corp. v.
DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) ("Though
understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim."); E-Pass Techs., Inc. v. 3Com
Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) (Limitations not explicit or
inherent in the language of a claim cannot be imported from the
specification.).
The Appellant asserted that Uvanni "teaches use of large metallic
objects, large enough to interfere with near field communications." Br. 12.
6 "[T]he subscript '8 ' is used to refer to black chess pieces and the subscript
'w' is used to refer to white chess pieces." Spec. ,r 29.
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The Appellant's assertion is not persuasive. Among other things,
independent claim 13 does not include a sensor for communicating with a
chess board using near field communications. As such, whether or not
particles would interfere with near field communications does not disqualify
Uvanni's ballast 21 as a particle. Stated differently, the Appellant does not
provide a clear disavowal of scope of the term "particle" such that a
"particle" must not interfere with near field communications. See Thorner v.
Sony Comp. Entm 't Am., LLC, 669 F.3d 1362, 1365---66 (Fed. Cir. 2012);
Epistar Corp. v. Int'! Trade Comm'n, 566 F.3d 1321, 1335 (Fed. Cir. 2009)
(holding that even a direct criticism of a particular technique did not rise to
the level of clear disavowal).
Thus, we sustain the Examiner's rejection of claim 13 as anticipated
byUvanni.
Re} ections II & III
The Examiner rejected independent claim 1 by combining the
teachings of Gassies in view of the teachings of Abe and Jans sen or,
alternatively, Gassies in view of the teachings of Abe and Uvanni. Non-
Final Act. 3-5. For each rejection, the Examiner relied on Gassies to teach a
weighted piece (gambling chip) 10 having a first cavity filled with particles
of metal. Id. More specifically, the Examiner found that the peripheral
annular region ("groove") where plastic seal 14 is injected corresponds to
the first cavity. See id.; Gassies, col. 4, 11. 10-18; Fig. 2. In this regard, the
Examiner appears to be pointing to the groove at the edge 35 of gambling
chip 10 near peripheral region 16 lying between two-half discs 11 and 12.
Notably, the two half discs 11, 12 are formed by injection molding, then
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plastic seal 14 is formed by injection molding, which fills the groove with a
polymer having a metal powder as a weighting filler. See Gassies, col. 4,
1. 64---col. 5, 1. 33.
The Examiner does not appear to rely on Gassies to teach "loose
particles of metal" as claimed. See Br. 14. Although the Examiner found
"filling said first cavity ... with loose particles of metal thereby forming a
weighted game piece" (Non-Final Act. 3), the finding is inadequately
supported and the Examiner relied on the teachings of either Jans sen or
Uvanni to cure this deficiency. See id. at 3-5. Indeed, Gassies teaches
metal powder incorporated into the polymer that forms seal 14; as such, the
metal powder is not loose. To remedy this deficiency, the Examiner turned
to a teaching in Janssen (tungsten powder 36) or alternatively, Uvanni
(ballast 21). See id.; Ans. 6-7; Uvanni, col. 1, 11. 9-13, col. 2, 11. 20-22,
Fig. 4; Janssen, col. 2, 1. 64---col. 3, 1. 13, Fig. 1. 7 Thereafter, the Examiner
concluded:
In order to provide proper weight to a game piece/token/chip it
would have been obvious to fill the cavity with loose particles of
high gravity metal including tungsten. One of ordinary skill[] in
art ... would have suggested filling the cavity of a game piece
with loose particles of high gravity metal including tungsten to
introduce a required/measured amount of weight into a game
piece.
Non-Final Act. 4--5.
Among other things, the foregoing conclusion lacks sufficient detail
for one to have a reasonable grasp of the resulting structure of the
Examiner's proposed combination of reference teachings. More
7 The Examiner does not rely on Abe to teach "loose particles of metal" as
claimed. See Non-Final Act. 4.
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specifically, we are unclear how the rejection modified Gassies' gambling
chip 10 to include the loose metal particles as taught by Janssen or,
alternatively, Uvanni. Assuming the Examiner's reasoning would include
the loose metal without seal 14, the loose metal would simply fall out of the
periphery of gambling chip 10. It is possible that the Examiner intended to
include loose material in the cavity at the edge 35 of gambling chip 10 near
peripheral region 16 lying between two-half discs 11 and 12, and then seal
the cavity in a manner befitting Gassies' gambling chip 10. However, the
Examiner did not provide these details on the record. Alternatively, it is
possible the Examiner sought to replace the weighting filler in the polymer
that forms Gassies' seal 14 with a tungsten powder, as taught by Janssen, or
ballast 21 (e.g., sand, BB shot, or lead), as taught by Uvanni. However,
once the loose metal is incorporated into the polymer that forms seal 14 the
metal would cease to be loose.
In view of the foregoing, we determine that the Examiner's rejection
lacks articulated reasoning with rational underpinning. See also Br. 13, 15,
18. Thus, we do not sustain the Examiner's rejection of claims 1-3 and 7-
10 as unpatentable over Gassies in view of Abe and Janssen, or in the
alternative, Gassies in view of Abe and Uvanni.
The remaining rejections based on Gassies in view of Abe and
Janssen or, alternatively, Uvanni, in combination with Loritz appears to rely
on the same inadequately supported reasoning as discussed above. These
rejections are not cured by additional findings and/or reasoning associated
therewith. See Non-Final Act. 5. As such, we do not sustain the Examiner's
rejections of claim 4 as unpatentable over Gassies in view of Abe, Janssen,
and Loritz, or in the alternative, Gassies in view of Abe, Uvanni, and Loritz.
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Rejection IV
As discussed above, the Examiner's finding that the steps of method
claim 11 are taught by Uvanni is inadequately supported. The Examiner
relied on Janssen to teach loose particles of different sizes. Non-Final
Act. 6. The Examiner found Janssen teaches a desire to weight game pieces
differently. Id. Thereafter, the Examiner appeared to offer various
conclusions, which ostensibly result in the claimed subject matter. See id. at
6-7.
However, we are unclear how and why the Examiner modified
Uvanni's chess pieces to result in the claimed subject matter, i.e., each piece
of the subset of white chess pieces having loose particles of metal of a first
average particle size and each piece of the subset of black chess pieces
having loose particles of metal of a second average particle size, where the
first average particle size and second average particle size are different. See
Br. 19. Additionally, the Examiner suggested the use of "powdered metals
of different grains in black and white pieces" lacks criticality. See Final
Act. 6. However, the Specification runs counter to that position.
It is a further object of the present invention to provide a
method of weighting a set of white and black pieces with a metal
powder, using a different grain size for the black pieces than for
the white pieces to compensate for the difference in density
between the white and black woods used for the respective
pieces, such that the total weight of the black pieces will be
approximately the same as the total weight of the white pieces.
Spec. ,r 23; see id. ,r 36.
Thus, we do not sustain the Examiner's rejection of claims 11 and 12
as unpatentable over Uvanni and Janssen.
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DECISION
We AFFIRM the Examiner's decision rejecting claim 13 under
35 U.S.C. § 102 al/a2 as anticipated by Uvanni (Rejection I).
We REVERSE the Examiner's decision rejecting: claims 11 and 12
under 35 U.S.C. § 102 al/a2 as anticipated by Uvanni (Rejection I);
claims 1-3 and 7-10 under 35 U.S.C. § 103 as unpatentable over Gassies in
view of Abe and Janssen, or, in the alternative, Gassies in view of Abe and
Uvanni (Rejection II); claim 4 under 35 U.S.C. § 103 as unpatentable over
Gassies in view of Abe, Janssen, and Loritz, or, in the alternative, Gassies in
view of Abe, Uvanni, and Loritz (Rejection III); and claims 11 and 12 under
35 U.S.C. § 103 as unpatentable over Uvanni and Janssen (Rejection IV).
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)(l )(iv).
AFFIRMED-IN-PART
11