Ex Parte Voden

Board of Patent Appeals and Interferences

Nov 4, 2009

10455666 (B.P.A.I. Nov. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JUSTIN L. VODEN
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Appeal 2009-006494
Application 10/455,666
Technology Center 3700
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Decided: November 4, 2009
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Before TERRY J. OWENS, MURRIEL E. CRAWFORD, and
BIBHU R. MOHANTY, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-13, 16-34 and 36-38. Claim 15 stands objected to as
dependent upon a rejected base claim but allowable if rewritten in
independent form, claims 14 and 35 have been canceled, and claims 39-45
stand withdrawn from consideration by the Examiner. In the Reply Brief
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(p. 2) the Appellant withdraws the appeal as to claim 28. We have
jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellant claims a rotary game table. Claim 1 is illustrative:
1. A rotary game table comprising:

a combination game table including a pool table
disposed on one side and an air powered hockey table
disposed on the other side thereof, said combination
game table including two end frame members and two
lengthwise frame members, a space being defined
between said pool table and said air powered hockey
table, at least one air opening being formed through at
least one of said frame members of said combination
game table, said at least one air opening communicating
with said space;

at least one air blower being retained within said
space;

two side support members;

at least one cross member being terminated by one
of said two side support members on each end thereof,
said combination game table being pivotally supported
on each end by one of said two side support members;
and

a pair of support latches being contained in at least
one of said two side support members, said pair of
support latches preventing said combination game table
from rotating.

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The References
Blaschke 2,174,613 Oct. 3, 1939
Weber 3,770,334 Nov. 6, 1973
Neuharth 4,305,581 Dec. 15, 1981
Tsai (Tsai ‘797) 6,347,797 B1 Feb. 19, 2002
Tsai (Tsai ‘ 939) 6,349,939 B1 Feb. 26, 2002
The Rejections
The claims stand rejected as follows: claims 34-38 under
35 U.S.C. § 35 U.S.C. § 112, first paragraph, written description
requirement; claims 29, 31 and 38 under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which the Appellant regards as the invention; claims 1, 3,
4, 17, 18 and 20-22 under 35 U.S.C. § 102(e) over Tsai ‘797 or under
35 U.S.C. § 103 over Tsai ‘797 in view of Tsai ‘939; claims 2 and 19 under
35 U.S.C. § 103 over Tsai ‘797 alone or in view of Tsai ‘939, further in view
Blaschke; claims 5 and 23 under 35 U.S.C. § 103 over Tsai ‘797 alone or in
view of Tsai ‘939, further in view of Weber; claims 6-8 and 24 under
35 U.S.C. § 103 over Tsai ‘797 in view of Weber; claim 9 under
35 U.S.C. § 103 over Tsai ‘797 in view of Weber and Blaschke; claims 10,
11, 13, 16, 25 and 26 under 35 U.S.C. § 103 over Tsai ‘797 in view of
Blaschke, alternatively also in view of Tsai ‘939; claims 12 and 27 under
35 U.S.C. § 103 over Tsai ‘797 in view of Blaschke, alternatively also in
view of Tsai ‘939, further in view of Weber; claims 28 and 30 under
35 U.S.C. § 103 over Tsai ‘797 in view of Neuharth; claim 29 under
35 U.S.C. § 103 over Tsai ‘797 in view of Neuharth and Blaschke; claim 31
under 35 U.S.C. § 103 over Tsai ‘797 in view of Neuharth, Blaschke and
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Weber; and claims 32, 33, 36 and 37 under 35 U.S.C. § 103 over Tsai ‘797
in view of Tsai ‘939.1,2
OPINION
We affirm the rejections of claims 34-38 under 35 U.S.C. § 112, first
paragraph, written description requirement, claims 29, 31 and 38 under
35 U.S.C. § 112, second paragraph, claim 28 under 35 U.S.C. § 103 over
Tsai ‘797 in view of Neuharth, and claims 32, 33, 36 and 37 under
35 U.S.C. § 103 over Tsai ‘797 in view of Tsai ‘939, and reverse the other
rejections.
Rejections of claims 34-38 under 35 U.S.C. § 112, first paragraph,
written description requirement, claims 29, 31 and 38 under
35 U.S.C. § 112, second paragraph, and claim 28 under
35 U.S.C. § 103 over Tsai ‘797 in view of Neuharth

The Appellant does not challenge the rejections of claims 34-38 under
35 U.S.C. § 112, first paragraph, written description requirement, and
claims 29, 31 and 38 under 35 U.S.C. § 112, second paragraph (Br. 7). We
therefore summarily affirm those rejections. Also, because the Appellant
does not challenge the rejection of claim 28 under 35 U.S.C. § 103 over
Tsai ‘797 in view of Neuharth (Reply Br. 2), we summarily affirm that
rejection.

1 There is no rejection over prior art of claims 34 and 38.
2 Oake (4,552,362) is relied upon by the Examiner (Ans. 31) but is not
included in a statement of a rejection. Hence, that reference is not properly
before us. See In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970).
Accordingly, we have not considered that reference in reaching our decision.
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Rejection of claims 1, 3, 4, 17, 18 and 20-22 under
35 U.S.C. § 102(e) over Tsai ‘797
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that Tsai ‘797 discloses a rotary game table having at least
one air blower retained within a space between a pool table and an air
powered hockey table?
Findings of Fact
Tsai ‘797 discloses a rotary game table (abstract). “A blower 65 is
fixed at outer end of the end board 34 at the through hole 38 as shown in
FIGS. 2 and 8” (col. 3, ll. 28-29).
Analysis
The Examiner has the initial burden of establishing a prima facie case
of anticipation by pointing out where all of the claim limitations appear in a
single reference. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re
King, 801 F.2d 1324, 1327 (Fed. Cir. 1986).
The Examiner argues that “Tsai ‘797 shows the combination of
wind-guiding member [39], lip section (391) and air blower (65) are retained
in space (55)” (Ans. 7). The Examiner argues that “[r]eferring to Fig. 8 of
the Tsai ‘797 patent it can be seen the upper and lower partitions (46 and 52)
define an upper and lower plane which when extended outwardly the air
blower assembly (39, 391, and 65) is positioned within the plane of the
space (56)” (Ans. 7).
The Appellant argues that “[t]he [Tsai ‘797] mechanisms used to
guide air flow from the air blower 65 (i.e., wind-guiding member 39 and lip
section 391) to the interior space 45 cannot be logically interpreted as
forming part of the air blower 65, and there is no support for such an
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interpretation in Tsai ‘797 (Reply Br. 5). The Appellant argues that “[a]s
shown in Figs. 2 and 8 of Tsai ‘797, air blower 65 is not retained in
space 45, but rather is mounted externally on the game table 20” (Br. 8;
Reply Br. 4), and that “[a]s shown in FIG. 8 of Tsai ‘797, lip section 391
only extends up to opening 55 and does not extend into space 45” (Reply
Br. 5). The Appellant argues that “Appellant does not claim his blower is
between ‘planes’ defined by the table surfaces” (Reply Br. 5).
Tsai ‘797 does not describe wind guiding member 391 and lip
section 391 as being part of air blower 65 (col. 3, ll. 17-22). Moreover,
Tsai ‘797 shows that lip section 391, which is the closest of those three
components to ventilating opening 55, abuts end wall 41 which surrounds
opening 55, thereby covering the periphery of opening 55, but Tsai ‘797
indicates that no part of lip section 391 is within opening 55 (col. 3, ll. 19-
22; Fig. 8).
As for the Examiner’s argument that Tsai ‘797’s air blower 65, wind
guiding member 39 and lip section 391 are within the planes of lower
partitioning board 46 and upper partitioning board 52 (Ans. 7), the
Appellant’s claims require that the air blower is within a space between the
tables, not within planes extending from the tables.
Conclusion of Law
The Appellant has shown reversible error in the Examiner’s
determination that Tsai ‘797 discloses a rotary game table having at least
one air blower retained within a space between a pool table and an air
powered hockey table.

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Rejection of claims 1, 3, 4, 17, 18 and 20-22 under
35 U.S.C. § 103 over Tsai ‘797 in view of Tsai ‘939
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that Tsai ‘797 and Tsai ‘939 would have rendered prima facie
obvious, to one of ordinary skill in the art, a rotary game table having at least
one air blower retained within a space between a pool table and an air
powered hockey table?
Findings of Fact
Tsai ‘939 discloses a non-rotatable “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” (col. 1, ll. 7-10).
“A blower 57 is fixedly disposed in a short side of the table body 40. The
air flow is blown by the blower 57 to flow into the room 56” (col. 3, ll. 24-
26; Fig. 6).
Analysis
The Examiner argues (Ans. 7-8):
[Tsai ‘939’s] air blower 57 is flush with the outer surface of the frame,
an opening 56 has been formed in the side of the combination table in
order to securely hold the air blower and allow air to travel freely into
the space/opening 56; see figures 6 and 16; also see column 3,
lines 24-30). In view of Tsai ‘939 it would have been obvious to one
of ordinary skill in the art at the time the invention was made to have
provided an alternative known means for securing an air blower to
table frame of Tsai ‘797 in order to obtain predictable results.

The Appellant argues that Tsai ‘939 “does not teach or suggest that air
blower 57 is retained within room 56 or in any ‘space’ formed between
foosball game face A and hockey game face B” (Reply Br. 9), and that
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“were the table of Tsai ‘797 modified to include an air blower inserted into
opening 55 formed in end wall 41 and extending into space 45, as the
Examiner suggests, placement of such an air blower would result in a game
table that is no longer rotatable.” See id.
The Examiner has not established that one of ordinary skill in the art
would have substituted Tsai ‘939’s air blower for that of Tsai ‘797 merely
“in order to obtain predictable results” (Ans. 8), or that if such a substitution
were made and it resulted in the air blower being retained within a space
between the tables, the tables would be rotatable as desired by Tsai ‘797
(col. 1, ll. 40-41).
Conclusion of Law
The Appellant has shown reversible error in the Examiner’s
determination that Tsai ‘797 and Tsai ‘939 would have rendered prima facie
obvious, to one of ordinary skill in the art, a rotary game table having at least
one air blower retained within a space between a pool table and an air
powered hockey table.
Rejection under 35 U.S.C. § 103 of claims 2 and 19 under
35 U.S.C. § 103 over Tsai ‘797 alone or in view of
Tsai ‘939, further in view of Blaschke, and claims
10, 11, 13, 16, 25 and 26 over Tsai ‘797 in view of
Blaschke, alternatively also in view of Tsai ‘939
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, an air blower retained in a
slidable drawer?

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Findings of Fact
Blaschke discloses a game table having “a drawer 14 – (Figure 1) –
which is useful for holding other game devices, pencils, etc.” (p. 1, right
col., ll. 41-43).
Analysis
The Examiner argues that “[i]n view of Blaschke it would have been
obvious to one of ordinary skill in the art at the time the invention was made
to provide a slidable drawer for the modified Tsai ‘797 opening, the
motivation being to utilize the interior space for storage of game elements
i.e. air blower so the elements are easily accessible” (Ans. 18).
The Appellants argue that one of ordinary skill in the art would
recognize that an air blower is not the type of game accessory that is to be
removed from a drawer to play games, and that if a drawer were placed in
Tsai ‘797’s modified opening the table would not have the desired
rotatability (Br. 9-10; Reply Br. 11-12).
The Examiner has not provided evidence that one of ordinary skill in
the art would have desired to put an air blower in a slidable drawer to make
the air blower accessible, or that if a slidable drawer were placed in
Tsai ‘797’s opening as modified by the Examiner the drawer would permit
the desired rotation of the table (Tsai ‘797, col. 1, ll. 40-41).
Conclusion of Law
The Appellant has shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, an air blower retained in a
slidable drawer.

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Rejections under 35 U.S.C. § 103 of claims 5 and 23
over Tsai ‘797 alone or in view of Tsai ‘939,
further in view of Weber, and claims 6-8
and 24 over Tsai ‘797 in view of Weber
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, at least one tubular pivot pin
extending outward from both ends of a combination game table, each of the
pins being pivotally supported by one of two side support members, an
electrical cord of an air blower being routed through one of the pins?
Findings of Fact
Weber discloses a worktable (39) that is tiltable by means of a
trunnion (40) received in a horizontal bore (41) in the table (col. 5, ll. 36-
41). Electrical wires pass through the hollow pivot represented by
trunnion 40 to protect them from excessive wear upon tilting of the table
(col. 5, ll. 46-48).
Analysis
The Examiner argues that “[i]n view of Weber it would have been
obvious to one of ordinary skill in the art at the time the invention was made
to have provided a hollow pivot pin or trunnion for the table assembly of
Tsai ‘797, the motivation being so the power cord from the electric device is
protected from excessive wear upon rotation of the combination game table,
hence obtain predictable results” (Ans. 12).
The Appellant argues that “there is no teaching or suggestion in
Tsai [‘797] of placing any electric device (i.e., an air blower) in the interior
of the table that would rotate with the table. As such, there is no need for a
power cord that is routed through a tubular pivot pin” (Br. 12).
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As discussed above, the Examiner has not established that one of
ordinary skill in the art would have placed Tsai ‘797’s blower (or any other
electric device) between the tables such that the blower rotates. Hence, the
Examiner has not established that one of ordinary skill in the art would have
desired to protect an electrical cord from excessive wear upon rotation of the
table.
Conclusion of Law
The Appellant has shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, at least one tubular pivot pin
extending outward from both ends of a combination game table, each of the
pins being pivotally supported by one of two side support members, an
electrical cord of an air blower being routed through one of the pins.
Rejections under 35 U.S.C. § 103 of claim 9 over Tsai ‘797
in view of Weber and Blaschke, and claims 12 and 27
over Tsai ‘797 in view of Blaschke, alternatively also
in view of Tsai ‘939, further in view of Weber
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, an air blower retained in a
slidable drawer and at least one tubular pivot pin extending outward from
both ends of a combination game table, each of the pins being pivotally
supported by one of two side support members, an electrical cord of an air
blower being routed through one of the pins?

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Analysis
The Examiner’s arguments are set forth above with respect to the
rejections involving Blaschke and Weber, and are not persuasive for the
reasons given regarding those rejections.
Conclusion of Law
The Appellant has shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, an air blower retained in a
slidable drawer and at least one tubular pivot pin extending outward from
both ends of a combination game table, each of the pins being pivotally
supported by one of two side support members, an electrical cord of an air
blower being routed through one of the pins.
Rejections under 35 U.S.C. § 103 of claim 29 over Tsai ‘797
in view of Neuharth and Blaschke, claim 30 over Tsai ‘797
in view of Neuharth, and claim 31 under 35 U.S.C. § 103
over Tsai ‘797 in view of Neuharth, Blaschke and Weber
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, a pair of support latches
contained in at least one of two side support members, each of the pair of
support latches including a latch lever, a support link, and a slack adjuster
extending from the support link?
Findings of Fact
Neuharth discloses, for keeping a pivotable playing table from
rotating, a pair of L-shaped brackets (34, 36), each having a short leg (34a
for bracket 34) and a long leg (34b for bracket 34) (col. 2, ll. 40-47). An
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adjustable screw (40) extends upwardly from each long leg and engages the
undersurface of the table to hold the table in a horizontal position (col. 2,
ll. 54-60).
Analysis
When addressing claim 28 and its dependent claim 30 together the
Examiner argues that Neuharth’s short leg 34a corresponds to the
Appellant’s latch lever, and Neuharth’s long leg 34b corresponds to the
Appellant’s support link (Ans. 24). When addressing claim 30 alone,
however, the Examiner relies upon Tsai ‘797’s insertion pin-like fixing
member (72) as corresponding to the Appellant’s support link (Ans. 25).
The Appellant argues that “the Examiner fails to indicate how the
mechanisms (i.e., ‘latches’) of Tsai ‘797 and Neuharth would be combinable
so as to teach or suggest that which is called for in the claim [30]” (Reply
Br. 15).
In the Appellant’s claim 30, “said support link” refers to the support
link in claim 28. The Examiner has not explained how the support link can
be both Neuharth’s long leg 34b and Tsai ‘797’s insertion pin-like fixing
member 72.
Conclusion of Law
The Appellant has shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, a pair of support latches
contained in at least one of two side support members, each of the pair of
support latches including a latch lever, a support link, and a slack adjuster
extending from the support link.

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Rejection of claims 32, 33, 36 and 37 under 35 U.S.C. § 103
over Tsai ‘797 in view of Tsai ‘939
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, a rotary game table comprising a
gambling table including a gambling pocket and at least one gambling insert,
the gambling pocket being sized to receive the at least one gambling insert?
Findings of Fact
Tsai ‘939 discloses three panels (66, 66’, 66”), the faces of which are
printed with games such as checkers, backgammon, shuffleboard and
bowling (col. 3, ll. 57-60). “When playing a game, a certain panel 66 is
placed on the table face for playing the game” (col. 3, ll. 60-61).
Analysis
The Appellant argues that Tsai ‘939 does not disclose a gambling
insert, i.e., the games disclosed by Tsai ‘939 are not gambling games
(Br. 13; Reply Br. 17).
In making an obviousness determination one “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., 550 U.S. 398, 418 (2007).
Although Tsai ‘939’s disclosed games are sport games (col. 1, l. 48),
Tsai ‘939 broadly discloses that the invention relates to a game table (col. 1,
l. 6). In view of that disclosure one of ordinary skill in the art, through no
more than ordinary creativity, would have appreciated that the game table
would be suitable for games generally including gambling games. See KSR,
550 U.S. at 418.
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The Appellant argues that the Appellant’s claim 32 requires a
gambling pocket sized to receive a gambling insert (Reply Br. 17).
Tsai ‘939’s peripheral frame 61 which receives panels 66 (Fig. 2)
reasonably can be considered a pocket sized to receive the panels. Through
no more than ordinary creativity, one of ordinary skill in the art who wished
to retain panels 66 in place in Tsai ‘797’s table when it is rotated would have
provided a device for doing so. See KSR, 550 U.S. at 418.
Conclusion of Law
The Appellant has not shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, a rotary game table comprising a
gambling table including a gambling pocket and at least one gambling insert,
the gambling pocket being sized to receive the at least one gambling insert.
DECISION/ORDER
The rejections of claims 1, 3, 4, 17, 18 and 20-22 under
35 U.S.C. § 102(e) over Tsai ‘797 or under 35 U.S.C. § 103 over Tsai ‘797
in view of Tsai ‘939, claims 2 and 19 under 35 U.S.C. § 103 over Tsai ‘797
alone or in view of Tsai ‘939, further in view Blaschke, claims 5 and 23
under 35 U.S.C. § 103 over Tsai ‘797 alone or in view of Tsai ‘939, further
in view of Weber, claims 6-8 and 24 under 35 U.S.C. § 103 over Tsai ‘797
in view of Weber, claim 9 under 35 U.S.C. § 103 over Tsai ‘797 in view of
Weber and Blaschke, claims 10, 11, 13, 16, 25 and 26 under 35 U.S.C. § 103
over Tsai ‘797 in view of Blaschke, alternatively also in view of Tsai ‘939,
claims 12 and 27 under 35 U.S.C. § 103 over Tsai ‘797 in view of Blaschke,
alternatively also in view of Tsai ‘939, further in view of Weber, claim 30
under 35 U.S.C. § 103 over Tsai ‘797 in view of Neuharth; claim 29 under
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35 U.S.C. § 103 over Tsai ‘797 in view of Neuharth and Blaschke, and
claim 31 under 35 U.S.C. § 103 over Tsai ‘797 in view of Neuharth,
Blaschke and Weber are reversed.
The rejections of claims 34-38 under 35 U.S.C. § 35 U.S.C. § 112,
first paragraph, written description requirement, claims 29, 31 and 38 under
35 U.S.C. § 112, second paragraph, claim 28 under 35 U.S.C. § 103 over
Tsai ‘797 in view of Neuharth, and claims 32, 33, 36 and 37 under
35 U.S.C. § 103 over Tsai ‘797 in view of Tsai ‘939 are affirmed.
It is ordered that the Examiner’s decision is affirmed-in-part.
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).

AFFIRMED-IN-PART

kmm

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