Ex Parte Trokan

Board of Patent Appeals and Interferences

Mar 14, 2008

10397793 (B.P.A.I. Mar. 14, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MARK TROKAN
__________

Appeal 2008-0107
Application 10/397,793
Technology Center 3700
__________

Decided: March 14, 2008
__________

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
non-alcoholic beer-pong game system. The Examiner has rejected the
claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.1

1 In this decision we consider only those arguments actually made by
Appellant. Arguments that Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2008-0107
Application 10/397,793

STATEMENT OF THE CASE
Claims 1-10 are pending and on appeal (App. Br. 5). Claim 1 is
representative of the appealed subject matter and reads as follows:
Claim 1: A non-alcoholic beer-pong game system for two or
more players, comprising:
a. a distinctly colored beer-pong ball having at least
one printed message thereon, said ball having a
stain resistant, transparent coating that
substantially covers and protects said printed
message from deterioration and also protects said
distinct coloration of said balls from alteration;
b. a plurality of cups arranged in pyramidal form on
opposing sides of a game table, each of said cups
being filled with a non-alcoholic beverage;
c. two sets of said beer-pong balls, each set
containing three balls bearing, respectively, a color
that is RED, ORANGE and YELLOW, and being
appointed for distribution to a first and second
team of players, respectively; and
d. a set of game rules, providing for at least one
player of a team to toss or bounce at least one of
said colored beer-pong balls across the length of
said game table in an attempt to land said colored
beer-pong ball within one of said cups, whereupon,
depending on the color of the ball, a successful
attempt requires a player of the opposing team
perform a first action, including (i) drinking
substantially the entire contents of one or more
cups, (ii) awarding from 0 to 2 or more prize
points to the team whose player successfully
tossed the ball, (iii) removing one or more cups,
whose contents have been consumed, from that
player's pyramid, and (iv) adding at least one cup
to the opposing team's pyramid, and to execute a
second action, as directed by a message printed on
said colored beer-pong ball.

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Application 10/397,793

The Examiner applies the following documents in rejecting the
claims:
Hogge US 6,806,347 B2 Oct. 19, 2004

National Beer Pong League - http://www.nbpl.net/rulesno.2

The Webtender - Drinking Games - http://www.webtender.com/
handbook/ga

Claims 1-10 stand rejected under 35 U.S.C. § 103(a) as being obvious
in view of “Existing Beer-Pong Games” (as evidenced by the National Beer
Pong League website and the Webtender website) and Hogge (Ans. 4-5).3
OBVIOUSNESS
ISSUE
The Examiner cites the National Beer Pong League (“NBPL”) website
as teaching that many variations of the Beer Pong game are known
throughout the U.S., and that “[i]n almost all versions the cups or containers
are placed on a table such as a pool or ping-pong table. The cups are
arranged in a pyramid form” (Ans. 4). The Examiner cites the NBPL
website as teaching that certain versions of the game use multiple balls, that
certain versions use colored balls, and that the “common ball used in these
types of games is a PING PONG ball which is . . . commonly provided with
some form of printed matter” (id. at 4-5).
Regarding the ball colors recited in claim 1, the Examiner contends
that “such is considered to be an obvious matter of choice, and many colors

2 Our citations of the National Beer Pong League and Webtender websites
are to the printed versions of these documents of record in the case.
3 Examiner’s Answer mailed March 15, 2007.
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are available on the market including the claimed colors, orange, yellow and
red” (id. at 5). Regarding the balls’ transparent outer coating recited in
claim 1, the Examiner urges that “it would have been obvious to include[] a
protective coating such as the one taught by Hogge et al, the motivation
being to enhance the overall water vapor barrier (WVB) properties of the
game ball” (id.). The Examiner cites the Webtender website as evidence
that drinking games can be played with non-alcoholic beverages (id.). The
Examiner concludes that the claimed game system would have been obvious
to a person of ordinary skill in the art because Appellant “has merely
combined what is already old and well-known” (id.).
Appellant contends that the Examiner has not made out a prima facie
case of obviousness because the cited prior art does not disclose or suggest
every feature of the claimed game system, and because the cited prior art
does not provide motivation to modify the ping pong ball of the Existing
Beer Pong Games (see App. Br. 11-18).
The issue with respect to this rejection, therefore, is whether the
Examiner erred in concluding that Hogge, the NBPL website, and the
Webtender website would have rendered a beer pong game system having
the claimed elements obvious to a person of ordinary skill in the art.
PRINCIPLES OF LAW
Recently addressing the issue of obviousness, the Supreme Court
reaffirmed “the conclusion that when a patent ‘simply arranges old elements
with each performing the same function it had been known to perform’ and
yields no more than one would expect from such an arrangement, the
combination is obvious.” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1740 (2007) (quoting Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976)).
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The Court reasoned that a “patent for a combination which only unites old
elements with no change in their respective functions . . . obviously
withdraws what is already known into the field of its monopoly and
diminishes the resources available to skillful men.” Id. at 1739 (quoting
Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S.
147, 152 (1950)).
The Court emphasized that “[i]n determining whether the subject
matter of a patent claim is obvious, neither the particular motivation nor the
avowed purpose of the patentee controls. What matters is the objective
reach of the claim. If the claim extends to what is obvious, it is invalid
under § 103.” Id., at 1741-42. The Court also emphasized a flexible
approach to the obviousness question, stating that the analysis under 35
U.S.C. § 103 “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 1741. The Court noted that “[a] person of ordinary skill is .
. . a person of ordinary creativity, not an automaton.” Id. at 1742.
In In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004), our reviewing
court held that combining, in kit form, a known product and printed
instructions for using the product did not render the product patentable,
despite the fact that the instructions recited a novel and unobvious process.
The court explicitly reaffirmed the principle that, when “printed matter is not
functionally related to the substrate, the printed matter will not distinguish
the invention from the prior art in terms of patentability.” Id. (quoting In re
Gulack, 703 F.2d 1381, 1387 (Fed. Cir. 1983).
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FINDINGS OF FACT
1. Claim 1 recites a system which two or more players can use to play
beer pong. The system has the following items:
(a) two sets of three beer pong balls, with each set containing a red,
orange, and yellow ball, each ball having a printed message on it, and each
ball having a stain resistant transparent coating that protects the printed
message and coloration of the balls;
(b) a plurality of cups filled with a non-alcoholic beverage arranged in
a pyramid form on opposing sides of a game table; and
(c) a set of game rules governing the players’ actions.
2. The NBPL website discloses about fourteen beer pong games that can
be played without paddles. Under “Virginia Rules” the game uses a white
ping pong ball and a yellow “[m]oney ball.” Under “Cockeysville Rules”
the game uses “three balls, two whites and a multi-colored money ball.”
“Beirut-East Coast Style” beer pong also uses 3 ping pong balls.
3. Under Virginia Rules, party cups are filled about one third full with
beer and then “arrange[d] . . . in a pyramid . . ., 3 cups in the back, 2 in the
middle row, 1 in the front, all tightly pushed together. The cups are on
either end of [a] ping pong table.” Beirut-East Coast Style beer pong also
uses cups filled with beer placed in a pyramid form on a ping pong table.
4. Each game provides a specific set of rules governing the players’
actions. In general, the object of the games is to toss a ping pong ball into a
beer-containing cup on the opponents’ side of the table, thereby requiring
the opponent to drink the contents of the cup (see, e.g., “Long Island Style . .
. [w]hen a ball lands in a cup, one player from that side must chug that
cup”).
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5. Ping pong balls are “commonly provided with some form of printed
matter” (Ans. 5; see also App. Br. 15 (“[I]t is well known that PING PONG
balls have a dull finish, with printed messages thereon . . . .”)).
6. Hogge discloses “a golf ball comprising a thin water vapor barrier
(‘WVB’) layer” (Hogge, col. 4, ll. 10-11). “To prevent or minimize the
penetration of water vapor into the core of the golf ball, a thin WVB layer
may be disposed anywhere between the core and the cover, preferably
immediately around the core” (id. at col. 5, ll. 11-14). Hogge discloses that
the reason for including the WVB in golf balls is to prevent the damaging
effects caused by water vapor entering the balls under conditions of high
humidity and elevated temperature (id. at col. 1, ll. 28-41).
7. Hogge discloses that the “thin WVB layer [has] at least one layer that
is formed from poly-para-xylylene and its derivatives (‘parylenes’)” (Hogge,
col. 2, ll. 16-18). Hogge discloses that “[a]lternatively, the thin WVB layer
comprising at least one parylene-based layer may have one or more
non-parylene layers to further enhance the overall performance of the thin
WVB layer. . . . Suitable WVB materials for the one or more non-parylene
layers include . . . polytetrafluoroethylene . . . SiOx . . .” (id. at col. 7, ll. 5-
18).
8. The Webtender website discloses that “drinking games” should be
played by those of legal drinking age when using beer or drinks, “but anyone
can play these games with non-alcoholic beverages as well.” The
Webtender site lists “Beer Pong” among such drinking games.
ANALYSIS
We agree with the Examiner that the cited prior art would have
rendered a beer pong game system having the claimed elements obvious to a
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person of ordinary skill in the art. Specifically, because a person of ordinary
skill in the beer pong art would have considered red, orange, and yellow
balls to be useful in the multi-colored, multi- or three-ball games disclosed
on the NBPL website (see Findings of Fact (“FF”) 2, above), we agree with
the Examiner that a person of ordinary skill playing beer pong with
pyramidally arranged beer-containing cups on a ping pong table (see FF 3)
would have considered it obvious to include the two claimed sets of balls in
a beer pong system. A person of ordinary skill in the art would also have
reasoned from the Webtender website (see FF 8) that the cups would have
suitably contained non-alcoholic beverages.
Because the balls spend a significant amount of time in the beverage
contained in the cups (see FF 4), we also agree with the Examiner that a
person of ordinary skill in the art would have been prompted to provide the
balls with a water resistant transparent coating made of a material like that
disclosed by Hogge (see FF 6), to ensure that the coloring (see FF 2) and
printed message (see FF 5) would not be removed from the balls. A person
of ordinary skill in the art playing beer pong would also have recognized,
and appreciated, that a water resistant coating would ensure that the
beverage’s flavor would be maintained because it would prevent the
beverage from being contaminated with the coloring and printing materials.
We note that the rules disclosed in the NBPL website appear to be
different than those recited in claim 1. However, because the balls and cups
as claimed can be used to play beer pong regardless of the actual content of
the rules, the rules recited in claim 1 are not functionally related to the balls
and cups. The rules in claim 1 are therefore analogous to the printed
directions in In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004), and thus
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“will not distinguish the invention from the prior art in terms of
patentability.” Id. (quoting In re Gulack, 703 F.2d 1381, 1387 (Fed. Cir.
1983).
Therefore, because a person of ordinary skill viewing the cited prior
art would have been prompted to assemble a beer pong game system having
the claimed set of playing balls and pyramidally arranged cups, along with a
set of rules, we agree with the Examiner that the claimed game system
would have been prima facie obvious to a person of ordinary skill in the art.
Appellant argues that the Examiner has failed to set forth a prima
facie case of obviousness because the cited prior art does not disclose or
suggest the limitation requiring the game system’s balls to have “a stain
resistant, transparent coating that substantially covers and protects said
printed message from deterioration and also protects said distinct coloration
of said balls from alteration” (see App. Br. 11-13). Appellant argues that
Hogge fails to suggest such a coating because Hogge’s water vapor barrier
(WVB) is not sufficiently durable for beer pong play, and because Hogge
uses its water resistant coating inside a golf ball rather than as an outer
coating for protecting printed messages on a ping pong ball’s surface (see id.
at 14-15; see also Reply Br. 3-5, 8-10).
We are not persuaded by this argument. As noted above, in
emphasizing a flexible approach to the obviousness question the Supreme
Court recently advised that the analysis under 35 U.S.C. § 103 “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.” KSR Int'l Co.
v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007). The Court also advised that
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“[a] person of ordinary skill is . . . a person of ordinary creativity, not an
automaton.” Id. at 1742.
We agree with the Examiner that one of ordinary skill in the art, being
a person of ordinary creativity and common sense, and also being aware that
beer pong balls spend a significant amount of time in liquids during play
(see FF 4), would have been prompted to provide beer pong balls with a
water resistant coating of sufficient durability to ensure that the message
printed on the balls (see FF 5), or the coloration on the balls (see FF 2), did
not become dislodged from the balls by the liquid.
We note that Hogge’s WVB coating is used between the core and
cover of a golf ball (FF 6), rather than as an outer coating. However, given
Hogge’s disclosure that its WVB protects a game ball from damage by
moisture, a person of ordinary creativity and common sense playing beer
pong would have reasoned that, given the beer pong balls’ frequent
encounters with liquids, it would be desirable to protect the beer pong balls
with an outer coating made of a material impervious to moisture, such as the
WVB materials described by Hogge. Moreover, because Hogge teaches that
its WVB materials can include polytetrafluoroethylene or silicon (Hogge,
col. 7, ll. 5-18), we do not agree with Appellant’s argument (Reply Br. 6, 10-
11) that the Examiner has failed to show that Hogge suggests using those
materials in a protective coating for beer pong balls.
Appellant argues that the USA Table Tennis Association has
specific rules for the balls’ shape, size, weight, color, and finish (matte), and
that a person of ordinary skill would therefore not have been motivated to
provide a different coating to a ping pong ball (App. Br. 15, 17-18; Reply
Br. 7).
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We are not persuaded by this argument. Appellant does not point to,
nor do we see, any evidence suggesting that a person of ordinary skill
playing beer pong according to the rules set out on the NBPL website would
have required, or even considered it important, that the balls meet the
specifications of conventional table tennis. Rather, as discussed above, one
of ordinary skill in the beer pong art, recognizing the usefulness of colored
balls (FF 2) having printed messages on them (FF 5), and also recognizing
that beer pong balls spend a significant amount of time in contact with
moisture (FF 4), would have reasoned that a water resistant coating would
have been useful in ensuring that the coloring and printing materials did not
get transferred into the all-important beverage.
Appellant argues that the claimed coating provides the advantages of
protecting the balls’ colorations as well as facilitating maintenance of the
balls’ bouncing properties during their service lives (App. Br. 16).
This argument does not persuade us that the Examiner’s conclusion of
obviousness is erroneous. We note that evidence of unexpected results may
rebut an examiner’s prima facie case of obviousness. See In re Rouffet, 149
F.3d 1350, 1355 (Fed. Cir. 1998); see also KSR, 127 S. Ct. at 1740 (“The
fact that the elements worked together in an unexpected and fruitful manner
supported the conclusion that Adams’s design was not obvious to those
skilled in the art.”) (discussing United States v. Adams, 383 U.S. 39 (1966)).
However, “[m]ere improvement in properties does not always suffice
to show unexpected results. . . . [W]hen an applicant demonstrates
substantially improved results . . . and states that the results were
unexpected, this should suffice to establish unexpected results in the absence
of evidence to the contrary.” In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995).
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Thus, in our view, a person of ordinary skill in the beer pong art
would have expected that a water resistant coating would protect a beer pong
ball from the damage that can result from the repeated dunkings a beer pong
ball must endure. Therefore, on the current record, the advantages conferred
by the water resistant coating do not appear to constitute an unexpected
result which would overcome the Examiner’s prima facie case of
obviousness.
Appellant argues that the Examiner has failed to establish that the
cited prior art renders the claimed game system obvious because the
Examiner has not shown that the cited prior art teaches or suggests a set of
rules requiring the actions set forth in claims 1 and 7-10, or suggests the
messages recited in claims 5 and 6 (App. Br. 16-17; see also Reply Br. 17-
18).
We are not persuaded by these arguments. Because the balls and cups
recited in the claims can be used to play beer pong even in the absence of the
claimed rules and printed messages on the balls, we do not agree with
Appellant that the claimed rules and printed messages are functionally
related to the claimed balls and cups.
As noted above, when printed matter in a claim is not functionally
related to the structural elements of the claim, the printed matter does not
have any patentable weight. See In re Ngai 367 F.3d 1336, 1339 (Fed. Cir.
2004). Thus, because they do not carry any patentable weight, the claimed
rules and printed messages cannot render the claimed game system
unobvious over the cited references.
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Appellant argues that the Examiner’s rejection is improperly based on
a hindsight reconstruction based on Appellant’s own disclosure (Reply. Br.
10-14). We are not persuaded by this argument.
As the Supreme Court recently pointed out, “a patent composed of
several elements is not proved obvious merely by demonstrating that each of
its elements was, independently, known in the prior art.” KSR Int'l Co. v.
Teleflex Inc., 127 S. Ct. 1727, 1741 (2007). Rather, the Court reasoned, “it
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 upon building blocks long since uncovered, and claimed
discoveries almost of necessity will be combinations of what, in some sense,
is already known.” Id.
Regarding hindsight reasoning, the Court specifically noted that “[a]
factfinder should be aware, of course, of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning.
Rigid preventative rules that deny factfinders recourse to common sense,
however, are neither necessary under our case law nor consistent with it.”
Id. at 1742-43 (citations omitted).
Thus, in recognizing the importance in the obviousness analysis of
identifying a reason for practicing a claimed invention, the Court
nonetheless emphasized a flexible common sense-based approach to the
issue, ultimately reaffirming “the conclusion that when a patent ‘simply
arranges old elements with each performing the same function it had been
known to perform’ and yields no more than one would expect from such an
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arrangement, the combination is obvious.” Id. at 1740 (quoting Sakraida v.
AG Pro, Inc., 425 U.S. 273, 282 (1976)).
In the instant case, as discussed above, we agree with the Examiner
that, in view of the NBPL website’s disclosure of beer pong games that use
multiple balls of different colors (FF 2), a person of ordinary skill in the beer
pong art would have considered two sets of three balls colored red, orange,
and yellow, to be useful in beer pong games having cups arranged in
pyramid form on a ping pong table. A person of ordinary skill in the beer
pong art, recognizing the usefulness of colored balls (FF 2) having printed
messages on them (FF 5), and also recognizing that beer pong balls spend a
significant amount of time in contact with moisture (FF 4), would have
reasoned that a transparent water resistant coating would have been useful in
ensuring that the coloring and printing materials did not get transferred into
the beverage. A person of ordinary skill in the art would also have
recognized from the prior art that the game was suitably provided with a set
of rules (FF 4), and suitably played with non-alcoholic beverages (FF 8).
Given the prior art’s disclosure of the usefulness of the claimed
elements in a beer pong system, we agree with the Examiner that a person of
ordinary skill would have considered the claimed game system prima facie
obvious. Because the Examiner’s conclusion is based solely on the
disclosures from the prior art, we do not agree with Appellant’s hindsight
argument. Moreover, we see no evidence that the claimed elements function
unexpectedly.
We therefore affirm the Examiner’s obviousness rejection of claims
1-10 as obvious in view of the National Beer Pong League website, the
Webtender website, and Hogge.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a).

AFFIRMED

ERNEST D. BUFF
ERNEST D. BUFF AND ASSOCIATES, LLC.
231 SOMERVILLE ROAD
BEDMINSTER NJ 07921

lp

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