Ex Parte HONG

Patent Trial and Appeal Board

Nov 27, 2018

14611798 (P.T.A.B. Nov. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/611,798 02/02/2015
78198 7590
Studebaker & Brackett PC
8255 Greensboro Drive
Suite 300
Tysons, VA 22102
11/29/2018
FIRST NAMED INVENTOR
Sang Uk HONG
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.
600100-000007 9858
EXAMINER
VANDERVEEN, JEFFREYS
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
11/29/2018 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):
info@sbpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANG UK HONG
Appeal 2018-005180
Application 14/611, 798
Technology Center 3700
Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and
BRUCE T. WIEDER, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner's rejection of claims 1, 2, 4--11, 14, and 17-22. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
According to Appellant, the "disclosure relates to a dart game device
interworking with an external device." Spec., 2. Claims 1, 19, and 20 are
1 According to Appellant, the "real party [in] interest is Hong International
Corporation." Appeal Br. 2.
Appeal 2018-005180
Application 14/611,798
the independent claims on appeal. Below, we reproduce claim 1 as
representative of the appealed claims.
1. A dart game device for interworking with at least
one external device, the dart game device comprising:
a dart target having a plurality of point regions;
a sensing unit configured to sense a hit to the dart target
by a dart;
a light source unit configured to output light in a light
pattern, wherein the light pattern depends on an occurrence of an
event;
a sound source unit configured to output sound in a sound
pattern, wherein the sound pattern depends on the occurrence of
the event; and
a communication unit configured to
communicate with the external device, and
control the external device, in response to the
occurrence of the event, to output light in the light pattern,
or to output sound in the sound pattern,
wherein the dart game device further comprising:
two side walls disposed on and extended along both
sides of the dart game device; and
at least one additional structure selected from the
group consisting of a plate structure laid under a player of
the dart game device, a behind structure disposed behind
the player, and a roof structure roofing the player,
wherein each of two side walls and the at least one
additional structure of the dart game device comprises at least
one of an additional light source unit and an additional sound
source unit,
wherein the external device is an external dart game device
compnsmg:
two side walls disposed on and extended along both
sides of the external dart game device; and
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Appeal 2018-005180
Application 14/611,798
at least one additional structure selected from the
group consisting a plate structure laid under an external
player of the external dart game device, a behind structure
disposed behind the external player, and a roof structure
roofing the external player,
wherein each of the two side walls and the at least one
structure of the external dart game device comprises at least one
of an external light source unit and an external sound source unit,
and
wherein, when the event is the hit to the dart target by the
dart, in the case where the dart hits a predetermined region of the
dart target of the dart game device, the communication unit is
further configured to:
control the external device to output light or sound
in a predetermined pattern, and
control the additional sound source unit and the
external sound source unit to output sound in a
predetermined pattern, and
control the additional light source unit and the
external light source unit to output sound in a
predetermined pattern.
REJECTION AND PRIOR ART
The Examiner rejects the claims as follows:
I. Claims 19 and 20 under 35 U.S.C. § I03(a) as unpatentable
over Noda et al. (US 8,162,731 B2, iss. Apr. 24, 2012)
("Noda") and Lamberti et al. (US 2003/0160390 Al, pub.
Aug. 28, 2003) ("Lamberti"); and
II. Claims 1, 2, 4--11, 14, 17, 18, 21, and 22 under 35 U.S.C.
§ I03(a) as unpatentable over Noda, Grubek (US 5,156,643, iss.
Oct. 20, 1992), and Lamberti.
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Appeal 2018-005180
Application 14/611,798
ANALYSIS
Rejection I
Independent claim 19 recites, in relevant part,
a plurality of dart game devices ... each ... comprising:
a communication unit configured to
communicate with at least one further dart game
device ... , and
control the at least one further dart game device, in
response to the occurrence of the event, to output light in
the light pattern, or to output sound in the sound pattern.
Appeal Br., Claims App. (Claim 19). More specifically, the claim recites
that a dart game device's communication unit is "configured to" control
either a light or sound pattern for another dart game device. It is well settled
that when a claim recites that an element is "configured to" perform a
particular function, the specific element in the prior art on which the
Examiner relies to disclose the claimed element must be not only capable of
performing the claimed function but also must be designed specifically to
accomplish the function claimed. See, e.g., Aspex Eyewear, Inc. v. Marchan
Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012) (indicating that
"configured to" is construed more narrowly than "capable of," and equating
"configured to" with "designed ... to accomplish the specified [function],
not simply that [ the element] can be made to serve that [function].").
The Examiner relies on Noda's column 5, lines 39--45, to describe a
game machine GM2 that controls either a light or sound pattern for another
dart game device. See Answer 3, 24. This portion of Noda states, in its
entirety, the following:
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Appeal 2018-005180
Application 14/611,798
The server SV inputs and outputs various information to
and from the game machines GMl to GMn connected to the
network and controls a game when necessary. Players (not
shown) of the game machines GMl to GMn perform operation
and inputting by means of a control unit 1000 included in the
game machines GMl to GMn for executing the game on the
game machines GMl to GMn.
Noda 5, 11. 39-45. We agree with Appellant that this portion of Noda does
not disclose a dart game device's communication unit that is configured to
control either a light or sound pattern for another dart game device. Appeal
Br. 14--16.
Further, to the extent that the Examiner's rejection is based on a
finding that Noda "clearly discloses a control unit and a communication unit
which can control other game machines and other external units which are
not specifically game machines" (Answer 26, emphasis added), such is
conjecture on the part of the Examiner. Further, for the reasons discussed
above, the Examiner must support adequately a finding that Noda discloses a
dart game device's communication unit that is designed to control either a
light or sound pattern for another dart game device, not just that a
communication unit that is capable, for example by being programmed, to
control either a light or sound pattern for another dart game device.
Thus, based on the foregoing, we do not sustain the Examiner's
obviousness rejection of claim 19. Inasmuch as independent claim 20
includes a similar recitation, and is rejected based on a similar rationale as
claim 19, we also do not sustain claim 2 0' s rejection.
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Appeal 2018-005180
Application 14/611,798
Rejection II
Independent claim 1 includes a similar recitation as claim 19,
discussed above. Further, the Examiner similarly relies on Noda to disclose
the claimed communication unit. See, e.g., Answer 27. Thus, we do not
sustain the Examiner's obviousness rejection of claim 1, or of claims 2, 4--
11, 14, 17, 18, 21, and 22 depending from independent claim 1.
DECISION
We REVERSE the Examiner's obviousness rejections of claims 1, 2,
4--11, 14, and 17-22.
REVERSE
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