Ex Parte Froesel

Board of Patent Appeals and Interferences

Jul 30, 2009

10700226 (B.P.A.I. Jul. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DAVID WILLIAM FROESEL
__________

Appeal 2009-005061
Application 10/700,226
Technology Center 3700
__________

Decided:1 July 31, 2009
__________

Before TONI R. SCHEINER, LORA M. GREEN, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-005061
Application 10/700,226

This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 3, 5, 6, 8-12, and 14, all the claims pending. We have jurisdiction
under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The invention is directed to “a washer toss game . . . having goals or
boxes that are integrally formed, but which can be manipulated to furnish a
greater challenge to the participants” (Spec. 2).
Independent claim 14 is representative of the subject matter on appeal:
14. A washer toss game comprising an integrally molded polymer
box incorporating side walls, a base integrally molded with the side walls, an
upstanding centrally arranged sleeve, said sleeve being integrally formed
with the base, said sleeve having an opening therein sufficiently to
accommodate the insertion of a container therein during usage, a container
for inserting within the said sleeve, said container capable of being removed
from said polymer molded box, said centrally disposed container is formed
of metal, said polymer molded box is polygonally shaped, the polymer
molded box includes a series of integrally formed side walls, and the game
base, the diameter of each metal container is approximately greater than five
inches, and the diameter of the integrally formed central sleeve for the box is
slightly greater than the diameter of said container to accommodate its
insertion and removal therefrom, whereby upon participating in the game,
the user tosses a washer at the box in an effort to obtain their entrance
therein, and particularly into the centrally disposed metal container.

The Examiner relies on the following evidence:
Blume, Sr. US 4,392,653 Jul. 12, 1983
Geror US 5,882,010 Mar. 16, 1999
Bour US 5,909,877 Jun. 8, 1999

2
Appeal 2009-005061
Application 10/700,226

The Examiner rejected the claims as follows:
• Claims 3, 5, 6, 8, 12, and 14 under 35 U.S.C. § 103(a) as unpatentable
over Geror and Blume, Sr.2
• Claims 9-11 under 35 U.S.C. § 103(a) as unpatentable over Geror,
Blume, Sr., and Bour.

We affirm.
ISSUE
The dispositive issue in both rejections is the same: Has Appellant
demonstrated that the Examiner erred in concluding that a washer toss game
comprising an integrally molded polymer box and a centrally located
insertable metal container would have been obvious, given the disclosures of
Geror and Blume, Sr.?
FINDINGS OF FACT
FF1 Claim 14, the only independent claim, is directed to a washer
toss game comprising:
(1) a polymer box with integrally molded side walls, a base, and an
upstanding, centrally located sleeve with an opening capable of receiving a
container; and
(2) a metal container which can be removably inserted in the
upstanding centrally located sleeve.

FF2 The metal container can be “something akin to or similar to a
quart paint can” (Spec. 2-3).
FF3 Claim 9 depends indirectly from claim 14 and requires
reinforcing ribs in the base of the polymer box. Claim 10 depends from

2 The Examiner included claim 13 in this rejection, but according to
Appellant, claim 13 has been canceled (App. Br. 3).
3
Appeal 2009-005061
Application 10/700,226

claim 9 and requires that the base accommodate the “the insertion of a nail
therein to affix the polymer molded box to the ground during usage.”
Geror
FF4 Geror describes a washer toss game having a target component
“conveniently constructed as an integral, one piece plastic molding” (Geror,
col. 2, ll. 8-10).
FF5 While a thermoplastic target is preferred, Geror teaches that the
target may also be constructed of wood or metal (id. at col. 2, ll. 30-33).
FF6 Figures 1 and 2 of Geror, reproduced immediately below, show
top perspective and top plan views of Geror’s integrally molded target 10:

Figure 1 is a top perspective view of the target 10, while Figure 2 is a top
plan view of the target.
4
Appeal 2009-005061
Application 10/700,226

FF7 As illustrated in Geror’s Figures 1 and 2, “[t]he target has a
generally centered cup with a base and upstanding sidewalls. Perimeter
target sidewalls are spaced outward from the cup sidewalls. A tray portion
extends between the cup sidewalls and the perimeter target sidewalls” (id. at
col. 1, ll. 32-36).
FF8 Also as shown in Figure 2, “a set of four counter sunk holes
through the tray portion 20 may be optionally provided as anchors 36, for
use with flat head screws, nails, spikes, or other fasteners, depending upon
surface material to which the target 10 may be fastened” (Geror, col. 2, ll.
36-40).
Blume, Sr.
FF9 Blume, Sr. describes a washer toss game similar to Geror’s, but
with two separate components - a box assembly and an insertable tubular
member. The components of Blume, Sr.’s game are illustrated in Figure 1,
reproduced below:

5
Appeal 2009-005061
Application 10/700,226

Figure 1 of Blume, Sr. shows a square shaped box assembly 10 with a
bottom wall, sidewall portions, a centrally located opening 24 and “a tubular
portion 26 extending upwardly therefrom . . . . The tubular portion 26
defines a target member having a chamber 28 therein for receiving and
holding playing pieces when tossed therein” (Blume, Sr., col. 1, l. 68 to col.
2, l. 4). “An insertable tubular receiving member 32, usually though not
necessarily taller than the side walls . . . [and] having a flange portion 34 . . .
is slidably positioned into telescopic engagement with the tubular target
member 26 incorporated within the box assembly” (id. at col. 2, ll. 19-24).
FF10 “The insertable receiving member 32 also includes a chamber
36 therein for receiving and holding playing pieces when tossed therein and
the overall height of the receiving member 32 determines the relative
difficulty of the game” (Blume, Sr., col. 2, ll. 25-29).
FF11 Blume, Sr. teaches that the box assemblies may be made of
lightweight, durable materials like plastic or wood, but does not discuss
fabrication of the insertable receiving member 32 (Blume, Sr., col. 2, ll. 5-9).
Bour
FF12 Bour describes a lightweight, rigid plastic panel for a tossing
game “composed of a lattice, honeycomb or like structure . . . formed by a
series of crisscrossing ribs” together with “[p]eripheral reinforcing ribs . . .
[and] a series of spaced, lateral reinforcing ribs” (Bour, col. 3, ll. 53-62).
PRINCIPLES OF LAW
“[A]pparatus claims cover what a device is, not what a device does.”
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990).
6
Appeal 2009-005061
Application 10/700,226

In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007), the
Supreme Court rejected a rigid application of a teaching-suggestion-
motivation test in the obviousness determination. The Court emphasized
that “the [obviousness] analysis need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” Id. at 418; see also id. at 421 (“A person of ordinary
skill is also a person of ordinary creativity, not an automaton.”). “[N]either
the particular motivation nor the avowed purpose of the patentee controls.
What matters is the objective reach of the claim.” Id. at 419.
Finally, an “[e]xpress suggestion to substitute one equivalent for
another need not be present to render such substitution obvious.” In re Fout,
675 F.2d 297, 301 (CCPA 1982).
ANALYSIS
Claims 3, 5, 6, 8, 12, and 14
The Examiner rejected claims 3, 5, 6, 8, 12, and 14 as unpatentable
over the combined teachings of Geror and Blume, Sr.
The Examiner concluded that it would have been obvious “to place an
insertable container within the upstanding sleeve of Geror in view of Blume
in order to alter the difficulty of the game” (Ans. 3), and moreover, that it
would have been obvious to use a metal insertable container because
“select[ing] a known material on the basis of its suitability for the intended
use [is] a matter of obvious design choice” (id.).
Appellant acknowledges that it is within the general skill of a worker
“to know that products can be made of different materials” (App. Br. 9), but
contends that, in this case, “the specific material used provides a greatly
7
Appeal 2009-005061
Application 10/700,226

enhanced result” (id.) “with respect to the audible aspects of this game” (id.
at 8). Appellant contends that “differentiation of sounds may be generated”
(id.) by inserting a metal container into the upstanding sleeve of the polymer
box, “so that from a distance away, where the player tosses the washer,
he/she can readily hear and determine when a bulls-eye has been met, or
when just peripheral points have been obtained” (id.).
Appellant’s argument is not persuasive. Appellant does not identify
an error in the Examiner’s conclusion that it would have been obvious to
place an insertable container, such as the tubular member taught by Blume,
Sr., into the upstanding sleeve of Geror’s molded box to vary the difficulty
of the game. Rather, Appellant’s position is that it would not have been
obvious to make the insert of metal and the box of polymer because nothing
in the prior art addresses the audible aspects of such a choice of materials.
However, Geror teaches that the targets can be made of polymer or metal
(FF5). When constructing the target with two components in order to vary
the difficulty of the game, a person of ordinary skill in the art, who is also a
person of ordinary creativity, would have had reason to make the base and
the insertable member from any of the conventional materials identified by
Geror, in any combination, since the listed materials were explicitly taught
as suitable for a washer toss game. Again, it is the objective reach of the
claims that matters, rather than Appellant’s purpose or motivation. See KSR,
550 U.S. at 419.
Claims 9-11
The Examiner also rejected claims 9-11 as unpatentable over the
combined teachings of Geror, Blume, Sr., and Bour.
8
Appeal 2009-005061
Application 10/700,226

The Examiner concluded that it would have been obvious “to provide
reinforcement ribs beneath the Geror box in view of Bour in order to make
the target lightweight, yet rigid” (Ans. 4).
Appellant contends that Geror’s molded box “is devoid of any
reinforcement” (App. Br. 9), as required by claims 9-11, and that Blume, Sr.
does not show any type of reinforcement structure either (id.).
This argument is not persuasive. The Examiner relies on Bour, not
Geror or Blume, Sr., as disclosing a lightweight plastic game structure
strengthened by reinforcing ribs (FF12), and Appellant has not pointed out
any error in the Examiner’s proposed combination of Bour with Geror and
Blume, Sr.
Finally, Appellant contends that Geror “does not show any means for
accepting a nail or other securing device . . . so that the device may be fixed
to the ground” (App. Br. 9) as required by claims 10 and 11.
This argument is not persuasive, as Geror explicitly teaches that the
target has four counter sunk holes for use with nails or other fasteners “to
facilitate affixing the target to a surface” (FF8).
CONCLUSIONS OF LAW
Appellant has not demonstrated that the Examiner erred in concluding
that a washer toss game comprising an integrally molded polymer box and a
centrally located insertable metal container would have been obvious, given the
disclosures of Geror and Blume, Sr.
9
Appeal 2009-005061
Application 10/700,226

SUMMARY
• The rejection of claims 3, 5, 6, 8, 12, and 14 under 35 U.S.C. § 103(a)
as unpatentable over Geror and Blume, Sr. is affirmed.
• The rejection of claims 9-11 under 35 U.S.C. § 103(a) as unpatentable
over Geror, Blume, Sr., and Bour is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).

AFFIRMED

cdc

PAUL M. DENK
SUITE 170
763 S. NEW BALLAS RD
SAINT LOUIS, MO 63141
10