Ex Parte Voden

Board of Patent Appeals and Interferences

Aug 23, 2006

10455666 (B.P.A.I. Aug. 23, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JUSTIN L. VODEN
__________

Appeal No. 2006-1747
Application No. 10/455,666
___________

HEARD: JULY 13, 2006
___________

Before FRANKFORT, OWENS and CRAWFORD, Administrative Patent
Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal is from a rejection of claims 1-5, 17-23, 34 and
38. Claims 6-13, 15, 16, 24-33, 36 and 37 have been indicated
allowable. Claims 14 and 35 have been canceled. Claims 39-45
have been withdrawn from consideration by the examiner.
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Application No. 10/455,666

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THE INVENTION
The appellant claims a rotary game table having on opposite
sides thereof two of the following: a pool table, an air powered
hockey table, and a gaming 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 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.

THE REJECTION
Claims 1-5, 17-23, 34 and 38 stand rejected under
35 U.S.C. § 112, first paragraph, as containing subject matter
which was not described in the specification in such a way as to
enable one of ordinary skill in the art to make and/or use the
Appeal No. 2006-1747
Application No. 10/455,666

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invention.1, , , ,2 3 4 5
OPINION
We reverse the rejection of claims 1-5 and 17-23, and affirm
the rejection of claims 34 and 38.
Claims 1-5 and 17-23
The examiner argues that “[t]he application as filed does

1 The examiner does not argue that the appellant’s disclosure would have
failed to enable one of ordinary skill in the art to make and use the claimed
invention. Hence, we consider the examiner’s rejection to be under the
35 U.S.C. § 112, first paragraph, written description requirement.
2 The examiner omits claim 38 from the statement of the rejection (answer,
page 3). However, the examiner’s reliance upon the comments regarding
claim 34 (answer, page 4) indicates that the examiner intends for the argument
set forth regarding claim 34 to be applied to the same issue in claim 38.
3 The examiner does not formally reject claims 19 and 38 under
35 U.S.C. § 112, second paragraph, but argues that those claims are indefinite
(answer, pages 4-5). Regarding claim 19 the examiner argues: “The drawer has
only one space there are no compartments. Therefore, to claim ‘a space of a
drawer’ would not only introduce new matter, but also render the claim
indefinite” (answer, page 4). Claim l9, which requires “an air blower being
retained in a drawer, said drawer being slidably retained in said combination
game table” does not recite “a space of a drawer”. Thus, it is the examiner’s
argument, rather than claim 19, that is unclear. As for claim 38, the
examiner argues that it is unclear why an electrical cord has been provided
with a combination gambling and billiards table (answer, pages 4-5). The
relevant inquiry under 35 U.S.C. § 112, second paragraph, is whether the claim
language, as it would have been interpreted by one of ordinary skill in the
art in light of the appellant’s specification, sets out and circumscribes a
particular area with a reasonable degree of precision and particularity. See
In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). There is no
requirement that the claims include an explanation as to why the claims
include the recited elements.
4 The examiner objects under 35 U.S.C. § 132 to an amendment filed September
13, 2004 as introducing new matter to the disclosure (answer, page 5). The
alleged new matter, i.e., deletion of the requirement that the pool table is
full sized and changing “at least one spring pin” to “a respective spring
pin”, does not pertain to an issue before us on appeal. Consequently, the
objection is a petitionable issue to be decided by the group director, rather
than an appealable issue to be decided by the board. See Manual of Patent
Examining Procedure § 1002.02(c)(3)(c), 8th ed., rev. 2, May 2004.
5 The examiner argues that “[i]f indeed one is to interpret that a drawer is
the space or cavity as appellant appears to be suggesting, then it is noted
that the claims could be rejected over the prior art of record, namely
Kavka ‘127 [US D247,127] and Tsai ‘797 [US 6,347,797]” (supplemental answer,
page 2). Kavka does not disclose an air blower, and Tsai’s air blower (65) is
mounted at the end of a combination table rather than in a space or cavity
between the two tables.
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Application No. 10/455,666

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not provide support for the newly added limitation ‘at least one
air blower being retained within said space’ as in claim 1, or
[‘]with a cavity formed therebetween, the cavity constructed to
receive a blower motor therein’ as in claim 17” (answer, page 3).
The examiner acknowledges that “[t]he specification provides
support for an air blower retained in a sliding drawer between
the pool [table] and air powered hockey table between the cavity
surface”. See id. Thus, the examiner’s argument is that the
appellant’s specification requires that the air blower must be in
a drawer in the space or cavity between the pool table and the
air powered hockey table.
The examiner’s argument is not persuasive even if it is
correct. The reason is that, as pointed out by the appellant
(reply brief, page 5), the drawer fits in a space or cavity
between the pool table and the air powered hockey table, and the
drawer has a space or cavity within it. Hence, the air blower in
the drawer is within a space or cavity between the pool table and
the air powered hockey table.

We therefore reverse the rejection of claims 1-5 and 17-23.
Claims 34 and 38
Independent claim 32 requires a combination game table
having a pool table on one side and a gambling table on the other
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side. Claims 34 and 38 depend from claim 32 and require an air
blower.6
The examiner argues that “the application as filed does not
provide support for an air blower retained in a drawer in a
combination game table wherein the combination table is a pool
table and a gambling table” (answer, page 3).
The appellant argues (brief, page 11) that the specification
states that “[t]he combination game table 136 may be substituted
for the combination game table 10 in any of the preferred
embodiments 1-4” (page 16). Combination game table 10 has a pool
table on one side and an air powered hockey table on the other
side (specification, page 8), and combination game table 136 has
a gambling table on one side and either a pool table or an air
hockey table on the other side (specification, pages 16-17). The
specification does not disclose an air blower with a combination
pool table and gambling table.

The appellant argues that the disclosure that combination
game table 136 preferably has a pool table opposite the gambling
table but may have another game surface such as an air hockey
surface (specification, page 17) “clearly discloses a combination

6 In the event of further prosecution the examiner and the appellant should
address on the record whether there is adequate antecedent basis for “said air
blower” in claim 38.
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game table having a gambling table and an air hockey table and
that the combination game table 136 can include a pool table and
gambling table that is convertible to an air hockey surface”
(brief, page 11). The specification discloses that a pool table
or an air hockey table can be opposite the gambling table, but
does not disclose that the pool table is convertible to an air
hockey table.
The appellant argues that “[a]s clearly stated in the
Specification, any table of the multiple embodiments could be
adapted or modified to play games that require an airflow if an
air blower were included during manufacture as disclosed” (brief,
page 11). The appellant does not point out the relied upon
disclosure in the specification, and none is apparent.
For the above reasons we are not convinced of reversible
error in the examiner’s rejection of claims 34 and 38.

DECISION
The rejection of claims 1-5, 17-23, 34 and 38 under
35 U.S.C. § 112, first paragraph, as containing subject matter
which was not described in the specification in such a way as to
enable one of ordinary skill in the art to make and/or use the
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Application No. 10/455,666

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invention, is reversed as to claims 1-5 and 17-23, and affirmed
as to claims 34 and 38.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(vii).
AFFIRMED-IN-PART

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
) BOARD OF PATENT
) APPEALS
) AND
TERRY J. OWENS ) INTERFERENCES
Administrative Patent Judge )
)
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )

Appeal No. 2006-1747
Application No. 10/455,666

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