Ex Parte Panzica

Board of Patent Appeals and Interferences

Jan 12, 2009

11323669 (B.P.A.I. Jan. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CHARLIE PANZICA
__________

Appeal 2008-5394
Application 11/323,669
Technology Center 3700
__________

Decided: January 12, 2009
__________

Before TONI R. SCHEINER, ERIC GRIMES, and FRANCISCO C.
PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
convertible game table. The Examiner has rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
Appeal 2008-5394
Application 11/323,669

STATEMENT OF THE CASE
Claims 1-24 are pending and on appeal (App. Br. 2).1 Claims 1, 11,
and 17, the appealed independent claims, are representative and read as
follows:
1. A convertible game table comprising:
a table top having parallel and opposed first and second
planar game playing surfaces surrounded by a table top frame,
the first planar game playing surface configured for the game of
ping-pong, and the second planar game playing surface
configured for the game of pool, the first and second planar
game playing surfaces having a common rectangular shape with
aligned longitudinal edges and aligned end width edges;
a base having a rectangular base frame with parallel
longitudinal segments and parallel end width segments, the
frame substantially surrounding the frame of the table top, the
base further comprising a plurality of supports which elevate
the base frame;
the table top rotationally mounted upon the base frame by
pins which extend through the end width edges of the table top
frame and through the corresponding end width segments of the
base frame, the pins having a rotational shaft about which the
table top can be rotated and a keyed lock which prevents
rotation of the table top about the pins relative to the base
frame.

11. A convertible game table comprising:
a table top having parallel and opposed first and second
planar game playing surfaces surrounded by a table top frame,
the first planar game playing surface configured for the game of
ping-pong, and the second planar game playing surface
configured for the game of pool, the first and second planar
game playing surfaces having a common rectangular shape with
aligned longitudinal edges and aligned end width edges;

1 Appeal Brief filed October 10, 2006.
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a base having a rectangular base frame with parallel
longitudinal segments and parallel end width segments, the base
frame substantially surrounding the table top frame, the base
further comprising a plurality of supports which elevate the
base frame;
the table top fitted upon the base frame by contact of one
of the first or second game playing surfaces with the base
frame, and a grip at each end of the table top for gripping and
re-orienting a selected first or second game playing surface of
the table top relative to the base frame.

17. A convertible game table comprising:
a table top having parallel and opposed first and second
planar game playing surfaces surrounded by a table top frame,
the first planar game playing surface configured for the game of
ping-pong, and the second planar game playing surface
configured for the game of pool, the first and second planar
game playing surfaces having a common rectangular shape with
aligned longitudinal edges and aligned end width edges;
a base having supports for the table top and a foundation;
the table top rotationally mounted to the supports of the
base by pins which extend through the end width edges of the
table top frame and through the supports, the pins having a
rotational shaft about which the table top can be rotated and a
keyed lock which prevents rotation of the table top about the
pins relative to the base frame.

The Examiner applies the following documents in rejecting the
claims:
Tsai US 6,347,797 B1 Feb. 19, 2002
Tsai US 6,349,939 B1 Feb. 26, 2002

The following rejection is before us for review:
Claims 1-24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tsai ‘797 and Tsai ‘939 (Ans. 3-7).
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OBVIOUSNESS
ISSUE
The Examiner finds that Tsai ‘797 discloses a convertible game top
that meets the structural limitations of claim 1 directed to the table top, base,
and rotational mounting, and which “can include different combination[s] of
games i.e. billiards, hockey, football, bowling, shuffleboard, etc.” (Ans. 3).
The Examiner finds that Tsai ‘797 differs from claim 1 in that “Tsai ‘797
does not disclose expressly the combination of billiards and ping-pong”
(id.).
The Examiner cites Tsai ‘939 to meet that limitation, noting that Tsai
‘939 discloses combinations of table games that include ping pong (id. at 4).
Based on the references’ teachings, the Examiner concludes that “it would
have been obvious to incorporate the same for the combination game table
of Tsai ‘797” (id. at 4).
Appellant contends that the claims expressly require “the combination
of game tables for the otherwise incongruent games of billiards and ping
pong. No where does the cited prior art teach or suggest this combination,
much less teach or suggest the additional structural features which are
claimed in connection with this combination” (App. Br. 5).
Appellant further contends that, even when combined, the cited
references do not meet all of the structural limitations of the claims,
including the requirements that the ping pong table be rotationally mounted
to the frame, and have a common rectangular shape and aligned longitudinal
edges and aligned end width edges with the planar surface constituting the
pool table (id. at 6). Appellant further contends that, because each of the
embodiments of Tsai ‘797 includes a football game with “rotary rods . . .
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t[hat] protrude through the lateral walls of the game table, the first and
second planar game playing surface[s] are not (and could not possibly be)
‘surrounded by a table top frame’, as expressly defined by the claims on
appeal” (id. at 7). Appellant further contends that Tsai ‘797 does not
disclose or suggest the claimed pins that provide the claimed rotational
mounting, and that Tsai ‘939 fails to remedy this deficiency in Tsai ‘797
(id.).
Given the positions advanced by the Examiner and Appellant, the
issue with respect to this rejection is whether the Examiner erred in finding
that a person of ordinary skill in the art would have been prompted to
combine the disclosures of Tsai ‘797 and ‘939 to arrive at a game table
having the structure recited in the claims.
FINDINGS OF FACT (“FF”)
1. Each of claims 1 and 11 recites a convertible game table that has a
base with a rectangular base frame with parallel longitudinal segments and
parallel end width segments, and in which “the base frame substantially
surround[s] the table top frame.”
2. Appellant’s Figure 2, reproduced below, shows an example of an
embodiment that meets the limitation requiring the base frame to
substantially surround the table top frame:
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Appellant’s Figure 2 shows the convertible table deployed “as a ping-
pong playing surface, with a transversely mounted net 1240 upon posts
1241. The table top frame 121 [sic, 122] is mounted to the base frame 141
[sic, 145] by spindles or pins 133, 134 which are axially aligned at opposite
ends of the table 12 as shown” (Spec. 3).
3. Tsai ‘797 discloses “a game table which can be operated by way of
rotation to convert the game modes” (Tsai ‘797, col. 1, ll. 5-6). Tsai ‘797
discloses that the games can include a table football game, hockey, and
billiards (id. at Figures 6, 9, 10, and 11).
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4. Figure 5 of Tsai ‘797, reproduced below, shows the game table as it is
“converted to one using mode to another using mode” (Tsai ‘797, col. 1, l.
62):

Figure 5 shows game table 20, which includes “a table frame 30 and a
table body 40. The table body 40 is rotatably located on the table frame 30.
The top and bottom faces of the table body are respectively designed with
different game types which can be smoothly converted” (Tsai ‘797, col. 2, ll.
21-24).

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5. Figure 3 of Tsai ‘797 is reproduced below:

Figure 3 shows the mechanism of engagement between the table and
the frame. Specifically, the “two ends of the table body 40 are respectively
pivotally disposed at the transverse end boards 34 of the table frame 30 via
two pivot shafts 42, whereby the table body 30 is rotatably located on the
table frame 30” (Tsai ‘797, col. 2, ll. 37-41).
6. Figure 4 of Tsai ‘797 is reproduced below:
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Figure 4 shows the mechanism used by Tsai ‘797 at each of the four
corners to fix the rotating table in the proper position. Specifically:
As shown in FIG. 4, each locating member 70 is inserted on the
end board 34 and the end wall 41 of the table body via an
insertion pin-like fixing member 72. The locating member 70
has a socket 74 and a shaft seat 77. The socket 74 has an
insertion hole 75. One end of the locating member is formed
with an outward projecting annular section 76. The body of the
socket 74 is embedded in one side of the end wall 41 of the
table body with the annular section 76 protruding from the
outer end of the end wall 41. The shaft seat 77 is formed with
an axial shaft hole 78. The body of the shaft seat is embedded
in the end board 34 corresponding to a socket 74. The inner
end 771 of the shaft seat 77 slightly protrudes from the inner
end of the end board. The fixing member 72 is reciprocally
slidably passed through the shaft hole 78 of the shaft seat 77 to
engage with the shaft seat so that the sliding travel of the shaft
seat has a stopping point. The fixing member 72 is inserted in
the shaft hole 78.

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(Tsai ‘797, col. 3, ll. 33-50.)
7. Tsai ‘797 discloses “[m]any modifications of the [disclosed]
embodiments can be made without departing from the spirit of the present
invention. For example, the table body can be arranged with combination of
hockey game and billiards or combination of bowling and shuffleboard, etc.”
(Tsai 797, col. 5, ll. 50-54).
8. Tsai ‘939 discloses “a game table in which the table body is
replaceably overlaid on and connected with the table frame so as to provide
various kinds of games on the same game table” (Tsai ‘939, col. 1, ll. 7-10).
9. Tsai ‘939 discloses that its table can be configured “to provide
versatile games. Moreover, the table body is overlaid on the table body
without limitation of thickness of the table body. Therefore, various game
patterns can be designed on the table body such as the football, billiards with
ball ways and hockey with blowing air” (Tsai ‘939, col. 5, ll. 44-49).
10. Figure 13 of Tsai ‘939 is reproduced below:

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Figure 13 shows “shows a state in which two players play the table
tennis” (Tsai ‘939, col. 5, ll. 4-5). Thus, “[i]n use, the table board is
unfolded and horizontally placed on the game table 20 as shown in FIG. 13.
Then the two net supporting members 90 clamp the table board and the net
95 is fitted with the net supporting member for playing the table tennis”
(id. at col. 4, l. 66 through col. 5, l. 3). In contrast, “[w]hen not played, the
net 95 and the net supporting members 90 are removed from the table board
80 and the board sections 82 are folded about the folding lines 83” (id. at
col. 5, ll. 9-12).
PRINCIPLES OF LAW
“[W]hen the question is whether a patent claiming the combination of
elements of prior art is obvious” the relevant inquiry is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” KSR Int’l Co. v. Teleflex Inc., 127 Ct. 1727,
1740 (2007). Thus, “when a patent claims a structure already known in the
prior art that is altered by mere substitution of one element for another
known in the field, the combination must do more than yield a predictable
result.” Id.
“[O]bviousness requires a suggestion of all limitations in a claim.”
CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)
(citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)).
While emphasizing a flexible approach to the obviousness question,
the Supreme Court has nonetheless similarly noted:
[I]t can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention
does . . . because inventions in most, if not all, instances rely
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upon building blocks long since uncovered, and claimed
discoveries almost of necessity will be combinations of what, in
some sense, is already known.

KSR, 127 S. Ct. at 1741 (emphasis added); see also id. at 1740-41 (requiring
a determination of “whether there was an apparent reason to combine the
known elements in the fashion claimed by the patent at issue”) (emphasis
added).
ANALYSIS
We agree with Appellant that the Examiner has not made a prima
facie case that the cited references would have suggested an apparatus
having all of the elements in claims 1 and 11 to a person of ordinary skill in
the art.
As noted above, each of claims 1 and 11 recites a convertible game
table that has a base with a rectangular base frame with parallel longitudinal
segments and parallel end width segments, and in which “the base frame
substantially surround[s] the table top frame” (FF 1). Appellant’s Figure 2
shows an example of an embodiment that meets the limitation requiring the
base frame to substantially surround the table top frame (FF 2).
In contrast, as Appellant points out (App. Br. 7), the table top frame of
Tsai ‘797 has protruding rotatable rods to allow for playing a table top
football game (see, e.g., Tsai ‘797, Figure 5 (FF 4)). In order to
accommodate the rods’ extension past the edge of the table, and allow the
table top to be rotatably converted between the football game and other
games, the base frame of Tsai ‘797’s table suspends the table top between
two parallel members at the ends of the table top, leaving the sides of the
table top exposed and unencumbered (id.).
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Thus, because the base of Tsai ‘797’s table only has two segments
which are adjacent or even close to the edges of the table top, we do not
agree with the Examiner that the base of Tsai ‘797’s table meets the
limitation in claims 1 and 11 requiring the base frame to “substantially
surround[] the table top frame.” Moreover, the Examiner has not pointed to,
nor do we see, any suggestion in either of the references for modifying the
base frame of Tsai ‘797’s table to yield the claimed configuration.
Because we agree with Appellant that the Examiner has not
adequately explained why the cited references teach all of the limitations in
claims 1 and 11, we reverse the Examiner’s obviousness rejection of claims
1 and 11, and their dependent claims 2-10 and 12-16.
Claim 17, however, does not require the base frame to substantially
surround the table, and therefore stands on a different footing. Because we
agree with the Examiner that one of ordinary skill viewing the cited
references would have been prompted to configure the rotatable table of Tsai
‘797 with a pool game on one side, and a ping pong table on the other side,
we agree with the Examiner that one of ordinary skill in the art would have
considered claim 17 obvious.
As noted above, combining prior art elements in accordance with their
established functions “must do more than yield a predictable result” in order
to be unobvious. KSR, 127 S. Ct. at 1740.
In the instant case, claim 17 recites the combination of two table top
games, pool and ping pong, known to be suitably combined using a
convertible table top (see Tsai ‘939 (FF 8-9)), with a rotatable table structure
known to allow conversion between two table top games (Tsai ‘797 (FF 3-
7)). Thus, because claim 17 recites a combination of these prior art elements
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according to their established functions, yielding no unpredictable result, we
do not agree with Appellant that the Examiner erred in finding claim 17
obvious over the cited references.
We note that the edges of the ping pong game of Tsai ‘939 do not
align with the edges of the other games (see FF 9). However, Tsai ‘797
discloses that, when deployed on a rotatably converting table, it is in fact
suitable for the edges of the different games to align, as recited in claim 17
(see FF 4). Moreover, we see nothing in claim 17 or the cited references
requiring both the pool and ping pong games to be regulation size, or any
other particular size. We therefore agree with the Examiner that one of
ordinary skill in the art configuring a rotatably converting table for pool and
ping pong would have considered it obvious to align the edges of the games
in the manner disclosed in Tsai ‘797.
We also note that the edges of the table frame of Tsai ‘797 have holes
to accommodate the rotating shafts of the table football game (see FF 4).
However, the portions of the table frame that are adjacent to the edges of the
playing surfaces are continuous, and therefore can be considered to surround
the playing surfaces. Moreover, we see no reason why one of ordinary skill
in the art configuring the table of Tsai ‘797 to convert between pool and
ping pong would include those holes. We therefore agree with the Examiner
that one of ordinary skill in the art configuring a rotatably converting table
for pool and ping pong in accordance with Tsai ‘797 would have considered
it obvious to have the frame surround both playing surfaces as recited in
claim 17.
Also, because Tsai ‘797 explicitly discloses that its table has “two
pivot shafts . . . , whereby the table body . . . is rotatably located on the table
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frame” (Tsai ‘797, col. 2, ll. 37-41 (FF 5)), we do not agree with Appellant
that the cited references fail to meet the limitation requiring the table top to
be rotationally mounted on pins. Because Tsai ‘797 discloses the use of an
insertable locking mechanism to fix the table in place (FF 6), we also do not
agree that the cited references fail to meet the limitation requiring fixation
using a keyed lock, as required by claim 17.
Therefore, because we agree with the Examiner that one of ordinary
skill in the art would have been prompted to assemble the elements recited in
claim 17 in the configuration claimed, we affirm the Examiner’s rejection of
claim 17 as being obvious over the cited references. Because they were not
argued separately, claims 18-24, which depend from claim 17, fall with
claim 17. 37 C.F.R. § 41.37(c)(1)(vii).
SUMMARY
We reverse the Examiner’s obviousness rejection of claims 1-16 over
Tsai ‘797 and Tsai ‘939. However, we affirm the Examiner’s obviousness
rejection of claims 17-24 over those references.

AFFIRMED-IN-PART
LP
JAMES C. SCOTT
19965 ROSLYN DRIVE
ROCKY RIVER OH 44116
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