Ex Parte Voden

Board of Patent Appeals and Interferences

Dec 13, 2010

11824369 (B.P.A.I. Dec. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/824,369 06/29/2007 Justin L. Voden 028657-9002-US07 4193
23409 7590 12/14/2010
MICHAEL BEST & FRIEDRICH LLP
100 E WISCONSIN AVENUE
Suite 3300
MILWAUKEE, WI 53202
EXAMINER
ARYANPOUR, MITRA
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
12/14/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JUSTIN L. VODEN
____________

Appeal 2010-006848
Application 11/824,369
Technology Center 3700
____________

Before JOHN C. KERINS, MICHAEL W. O’NEILL, and
FRED A. SILVERBERG, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown in the PTOL-90A cover letter attached to this decision.

Appeal 2010-006848
Application 11/824,369

STATEMENT OF THE CASE
Justin L. Voden (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting:
(1) claims 59-61 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement;
(2) claims 36, 37, 40, and 41 under 35 U.S.C. § 102(b) as
anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over Tsai ’564 (U.S. Patent No. 6,155,564, issued
Dec. 5, 2000);
(3) claims 38, 39, 42-44, 46, 47, and 66 under 35 U.S.C.
§ 103(a) as unpatentable over Tsai ’564 and Tsai ’939 (U.S.
Patent No. 6,349,939 B1, issued Feb. 26, 2002);
(4) claim 45 under 35 U.S.C. § 103(a) as unpatentable
over Tsai ’564, Tsai ’939, Tsai ’797 (U.S. Patent No. 6,347,797
B1, issued Feb. 19. 2002), and Oake (U.S. Patent No.
4,552,362, issued Nov. 12, 1985);
(5) claims 48-51 under 35 U.S.C. § 103(a) as
unpatentable over Tsai ’564, Tsai ’939, and Neuharth (U.S.
Patent No. 4,305,581, issued Dec. 15. 1981);
(6) claims 52-59 and 62-65 under 35 U.S.C. § 103(a) as
unpatentable over Tsai ’564 and Neuharth;
(7) claims 60 and 61 under 35 U.S.C. § 103(a) as
unpatentable over Tsai ’564, Neuharth, and Tsai ’939;
(8) claims 36, 37, and 40 on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claims
1-10 of U.S. Patent No. 6,764,409;
(9) claims 38, 39, 41-47, and 66 on the ground of
nonstatutory obviousness-type double patenting as unpatentable
over claims 1-10 of U.S. Patent No. 6,764,409 B1 and
Cartwright (U.S. Patent No. 6,109,607, issued Aug. 29, 2000);
(10) claims 48-51 on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claims
1-10 of U.S. Patent No. 6,764,409 B1, Cartwright, and
Neuharth;
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(11) claims 52-59 and 62-65 on the ground of
nonstatutory obviousness-type double patenting as unpatentable
over claims 1-10 of U.S. Patent No. 6,764,409 B1 and
Neuharth; and
(12) claims 60 and 61 on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claims
1-10 of U.S. Patent No. 6,764,409 B1, Neuharth, and
Cartwright.

Appellant cancelled claims 1-35 and 67. We have jurisdiction under 35
U.S.C. § 6(b). We REVERSE.
The Invention
The claims on appeal relate to a rotary game table, a multi-game game
table, and a game table all of which have different games on opposing sides.
Claims 36, 42, 52, and 66, reproduced below, are representative of the
subject matter on appeal.
36. A rotary game table comprising:
a combination game table having a first
game table formed on a first side and an air hockey
table formed on a second side and a space
therebetween;
a pair of supports attached at generally
opposite sides of the combination game table and
having a rotation point to allow rotation of the
combination game table relative to the pair of
supports; and
an air blower disposed in the space and
constructed to provide a flow of air to the air
hockey table.

42. A multi-game game table comprising:
a multi-game table having a first game
surface and an air hockey game surface on a side
generally opposite the first game surface;
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a frame having a plurality of side sections
extending about the multi-game table and having a
cavity between the first game surface and the air
hockey game surface; and
an air opening formed in at least one of the
side sections that is longer than another side
section.

52. A game table comprising:
a table having a first game formed on a first
side and a second game formed on a second side;
at least one support pivotally attached to the
table to allow rotation of the table between a first
generally horizontal position and a second
generally horizontal position;
a latch lever pivotally connected to the at
least one support; and
a support link connected to the latch lever
and constructed to operatively engage the table to
prevent rotation thereof.

66. A multi-game game table comprising:
a multi-game table having a first game
surface and an air hockey game surface on a side
generally opposite the first game surface;
a frame having a plurality of side sections
extending about the multi-game table and having a
cavity between the first game surface and the air
hockey game surface; and
an air blower positioned inside the plurality
of side sections of the frame and within the cavity
between the first game surface and the air hockey
game surface; and
a plurality of air openings formed in at least
one of the side sections to allow free air flow
therein.

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OPINION
Issues
The determinative issues in this appeal are:
(1) Did the Examiner err in determining that the recitation of “an air
blower positioned between the first side and the second side of the table” in
claims 59-61 fails to comply with the written description requirement under
35 U.S.C. § 112, first paragraph, as not being supported by the originally
filed disclosure?
(2) Did the Examiner err either in finding the air blower 65 of Tsai
’564 to be within the space between the first game table and the air hockey
table or in concluding it would have been obvious to one of ordinary skill in
the art to rearrange the parts of Tsai ’564 to place the air blower 65 of Tsai
’564 within the space between the first game table and the air hockey table?
(3) Did the Examiner err in concluding that it would have been
obvious to one of ordinary skill in the art to modify the repositioning of the
air opening of Tsai ’564 by the teachings of Tsai ‘939 so as to be located in
one of the long and short sides of the frame as required by claims 42 and 66,
respectively?
(4) Did the Examiner err in concluding that it would have been
obvious to one of ordinary skill in the art to modify Tsai ’564 by the
teachings of Neuharth in order to include a latch lever pivotally connected to
the at least one support and a support link connected to the latch lever and
constructed to engage the table to prevent rotation thereof as recited in claim
52?
(5) Did the Examiner err in determining that claims 36-66 are
unpatentable over claims 1-10 of U.S. Patent No. 6,764,409 B1, either alone
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or in combination with one or more of Cartwright and Neuharth, based upon
the ground of nonstatutory obviousness-type double patenting?
Analysis
Issue 1
Appellant contends that the recitation of “an air blower positioned
between the first side and the second side of the table” in claims 59-61 is
supported by originally filed Figure 4 and page 6, lines 14-24, of the
originally filed specification since the air hockey playing surface can clearly
be considered one of the first and second sides. App. Br. 5. Appellant also
contends that it is not required for Appellant to specify the function of the
respective sides in order for the claim to comply with the written description
requirement and one of ordinary skill in the art would appreciate that the
original disclosure discloses the function of the first and second sides having
an air blower therebetween. App. Br. 5-6. Appellant also contends that the
Examiner mistakenly interpreted the Board of Patent Appeals and
Interference’s August 23, 2006 decision on appeal in parent U.S. Patent
Application Serial No. 10/455,666 (Appeal No. 2006-1747) because the
affirmance of the Examiner’s rejection of claims 34 and 38 in that appeal
was due to independent claim 32, on which both claims 34 and 38 directly
depended, specifically reciting a pool table and a gambling table disposed on
the sides of the combination game table and neither a pool table nor a
gambling table would require or could use an air blower. App. Br. 6 and
Reply Br. 3.
The Examiner’s position is that the originally filed disclosure of the
present application does not support an air blower positioned between first
and second sides of the table as recited in claim 59 because the originally
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filed disclosure only supports positioning an air blower between an air
hockey playing surface on one of the two sides, but not with tables having
other than an air hockey playing surface on one of the sides. Ans. 4. The
Examiner also posits that the Board’s decision on appeal in parent U.S.
Patent Application Serial No. 10/455,666 (Appeal No. 2006-1727) supports
the Examiner’s 35 U.S.C. § 112, first paragraph, rejection in the present
application because the Board affirmance of the 35 U.S.C. 112, first
paragraph, rejection of claims 34 and 38 means that an air blower can not be
recited in a combination game table unless an air powered hockey game is
specified as being on one side. Ans. 24.
The written description requirement found in the first paragraph of 35
U.S.C. § 1l2 is separate and distinct from the enablement requirement of that
provision. Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (citing Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562-63
(Fed. Cir. 1991)). The purpose of the written description requirement in 35
U.S.C. § 112, first paragraph, is to “‘clearly allow persons of ordinary skill
in the art to recognize that [the inventor] invented what is claimed.’” Id.
“[T]he test for sufficiency is whether the disclosure of the application relied
upon reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Id. This test
“requires an objective inquiry into the four corners of the specification from
the perspective of a person of ordinary skill in the art.” Id. The adequacy of
the Specification’s written description is a question of fact.
We agree with Appellant that the recitation of “an air blower
positioned between the first side and the second side of the table” in claim
59 is supported by the originally filed disclosure. We find that the
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disclosure of the present application reasonably conveys to those skilled in
the art that the inventor had possession of the claimed subject matter as of
the filing date. Appellant is allowed to recite the invention as broadly as
desired and the fact that Appellant does not specify that the first game on the
first side or the second game on the second side is an air powered hockey
game is not dispositive since the claims recite the open-ended “comprising”.
We agree that the Examiner has misinterpreted the Board’s affirmance of
claims 34 and 38 in related U.S. Patent Application Serial No. 10/455,666.
In that decision on appeal in the parent application, the Board’s holding was
that if both of the sides were specified to have games other than an air
hockey game, then there was no support for an air blower being disposed
within the cavity between the sides. However, the Board’s affirmance did
not require that an air powered hockey game had to be recited in order to
recite the air blower.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 59-61 under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement.
Issue 2
Appellant contends that Tsai ’564 fails to teach an air blower disposed
in the space between the first and second sides of the combination game
table. App. Br. 7 and Reply Br. 4. More particularly, Appellant contends
that in Tsai ’564, the air blower or fan 4 is disposed atop a playing surface or
soccer plate 34, not between the playing surfaces or soccer and hockey
plates 34 and 31. Id. In response to the Examiner’s new ground of rejection
set forth in the Examiner’s Answer on page 5, that it would have been
obvious to one of ordinary skill in the art to have placed the air blower of
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Tsai ’564 at any desired location because a rearrangement of parts involves
only routine skill in the art; Appellant contends that the Examiner has failed
to provide any motivation, either from the prior art itself or from common
knowledge in the art, to support the obviousness rationale regarding
rearrangement of parts, referring to the Manual of Patent Examining
Procedure (MPEP) § 2144.04(VI)(C), entitled Rearrangement of Parts, and
Ex parte Chicago Rawhide Mfg. Co., 223 USPQ 351, 353 (BPAI 1984) cited
therein. Reply Br. 7. Appellant also contends that one of ordinary skill in
the art would not have been motivated to position the fan 4 of Tsai ’564
between the soccer and hockey plates 34, 31 because Tsai ’564 desired to
reduce the vertical thickness and the entire volume of the rotary table as
stated at column 1, lines 60-64 and column 2, lines 29-49. Reply Br. 7-8.
The Examiner’s position is that either Tsai ’564 anticipates claim 36
because its language does not require the air blower to be fully disposed in
the space, or else Tsai ’564 renders claim 36 obvious because one of
ordinary skill in the art would have placed the air blower of Tsai ’564 at any
desired location by a rearrangement of parts according to In re Japikse, 181
F.2d 1019 (CCPA 1950). Ans. 4-5.
Tsai ’564 discloses an air system structure of a rotary game table.
Title. The game table machine includes a game table base 1, a rotary game
table 2, and a game table plate 3. Col. 2, ll. 23-25. Different game tables are
provided on the top and bottom surfaces of the game table plate 3 including
a hockey table as shown in Figure 1 and a soccer table as shown in Figure 2.
Col. 2, ll. 25-28. In order to provide a supply of air to the hockey table, a
fan 4 is hidden in a goal frame 24 on top of one of the four corners of the
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soccer plate 34 to reduce the vertical thickness of the rotary game table 2.
Col. 2, ll. 42-46 and 65-66.
A proper finding of anticipation requires a showing that each element
or limitation in a claim is present in the cited reference, either explicitly or
inherently, and that the elements must be arranged in the same manner as in
the claim under review. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
Further, when determining whether a claim is obvious, an Examiner must
make “a searching comparison of the claimed invention – including all its
limitations – with the teachings of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995). Reliance solely on a per se rule of obviousness is
improper. Id. “Rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007).
We agree with Appellant that Tsai ’564 does not anticipate claim 36
because the air blower or fan 4 is not disposed in the space between the first
and second games on the first and second sides, respectively, of the rotary
game table 2.
We also agree with Appellant that Tsai ’564 does not render claim 36
obvious for the following reasons. First, we note that the Examiner finds
that if Tsai ’564 does not disclose the air blower as being disposed in the
space between the first game formed on the first side and the air hockey
table formed on the second side of the combination game table, then it
would have been obvious for one of ordinary skill in the art to have disposed
the air blower of Tsai ’564 at any desired location, presumably to include
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between the soccer and hockey plates 34 and 31, as this amounts to nothing
more than a rearrangement of parts requiring only routine skill in the art in
reliance on In re Japikse, 181 F.2d 1019 (CCPA 1950). This analysis
amounts to application of a per se rule of obviousness, namely, that parts of
a reference may always be rearranged as a general proposition in order to
negate any patentable distinction. However, the Examiner provided no
comparison between the facts of Japikse and the facts of the underlying
application to explain how the holding of Japikse applies to the claims on
appeal. As such, the Examiner’s 35 U.S.C. § 103(a) rejection does not rest
on a sound evidentiary basis because reliance on per se rules of obviousness
is legally incorrect. Thus, we find the Examiner’s statement as to
rearranging the location of the fan 4 of Tsai ’564 to be conclusory and we
are not persuaded of the obviousness of the subject matter of claim 36.
Second, we also agree with Appellant that Tsai ’564 does not make
claim 36 unpatentable because one of ordinary skill in the art would not find
it obvious to modify Tsai ’564 to dispose the air blower or fan 4 between the
soccer and hockey plates 34, 31, as this would increase the vertical thickness
of the rotary table and thus the cost thereof. Further, putting the air blower
or fan 4 between the soccer plate 34 and hockey plate 31 of Tsai ’564 would
not be a simple rearrangement of parts and would require a substantial
modification of the parts of the game table.
In view of the foregoing, we do not sustain the rejection of claims 36,
37, 40, and 41 under 35 U.S.C. § 102 as anticipated by or, in the alternative,
under 35 U.S.C. § 103(a) as obvious over Tsai ’564. Since the rejections of
dependent claims 38 and 39 are based upon the same erroneous findings and
purportedly obvious modifications of Tsai 564, we also do not sustain the
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rejection of claims 38 and 39 under 35 U.S.C. § 103(a) as unpatentable over
Tsai ’564 and Tsai ’939.
Issue 3
Independent Claim 42
Appellant contends neither Tsai ’564 nor Tsai ’939 discloses an air
opening formed in one of the longer side sections of the frame. App. Br. 10-
11 and Reply Br. 10. In response to the Examiner’s argument that Appellant
has not disclosed a particular advantage or purpose for disposing the air
opening on one of the longer side sections of the frame, Appellant contends
that it is not required that Appellant specify any advantage or purpose and as
such, the Examiner’s arguments suggesting that the placement of the air
opening on the longer side of the frame is simply an obvious matter of
design choice are insufficient. Reply Br. 10. Appellant also contends that it
would not have been obvious to one of ordinary skill in the art to have
provided an air opening in the longer side of the frame of Tsai ’564 because
such placement of the air opening could interfere with the positioning of the
moveable rods on the longer side of the frame used for the table soccer
games. App. Br. 11 and Reply Br. 10-11.
The Examiner’s position is that Tsai ’564 discloses the invention
substantially as claimed in claim 42 including an air opening 341, but Tsai
’564 does not disclose the air opening 341 is formed in at least one of the
frame’s side sections that is longer than another side section. Ans. 7. The
Examiner posits that Tsai ’939 discloses a game table having an air blower
57 located in an air opening formed in at least one of the side sections. Ans.
8. The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to have positioned the air blower of Tsai ’564 in one
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of the side sections of the frame as taught by Tsai ’939. Id. The Examiner
further concludes that although Tsai ’939 discloses placing an air blower in
one of the shorter side sections of the frame, it would have been an obvious
matter of design choice to have placed the air blower in one of the longer
side sections of the frame because placing an air opening in a longer side
would perform the same function of providing air intake to the air blower
located between the playing surfaces. Id.
Tsai ’564 has been discussed above.
Tsai ‘939 discloses a game table 20 including a table frame 30 and
lower and upper table bodies 40, 60. Fig. 2 and col. 2, ll. 37-38. The lower
and upper table bodies 40, 60 can be overlapped and placed upon the table
frame 30 or the table bodies 40 and 60 can be used separately. Figs. 2, 3, 6,
7, 10, and 12 and col. 2, ll. 40-42. The table body 40 has a peripheral frame
41, an air powered hockey game surface B on one side, and a football game
surface A on the other opposite side. Col. 2, ll. 64-66 and col. 3, ll. 31-32.
In order to switch from the air powered hockey game surface B to the
football game surface A, table body 40 is manually lifted and flipped. Col.
3, ll. 37-42. An air blower 57 is fixedly disposed in a short side of the table
body 40 to produce an air flow into room 56 and upward out of fine vents 58
formed on bottom wall 54 in order to use the air hockey game surface B.
Col. 3, ll. 24-27.
We agree with Appellant that both Tsai ’564 and Tsai ’939 fail to
disclose an air opening on the longer side of the frame. We also agree with
Appellant that it would not have been obvious to one of ordinary skill in the
art to modify the air opening of Tsai ’564 to be located on the longer side of
the frame because disposing the air opening for the air blower on the longer
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side of the frame could possibly interfere with the placement of the
moveable rods of the table soccer game.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 42-44, 46, and 47 under 35 U.S.C. § 103(a) as unpatentable over
Tsai ’564 and Tsai ’939. Since the rejections of dependent claims 45 and
48-51 are based upon the same erroneous obviousness determinations, we
also do not sustain the rejection of claim 45 under 35 U.S.C. § 103(a) as
unpatentable over Tsai ’564, Tsai ’939, Tsai ’797, and Oake; and the
rejection of claims 48-51 under 35 U.S.C. § 103(a) as unpatentable over Tsai
’564, Tsai ’939, and Neuharth.
Independent Claim 66
Appellant contends that the Examiner’s finding of Tsai ’564 as
disclosing an air blower positioned within the cavity between the first game
surface and the air hockey game surface is incorrect because Tsai ’564
specifically teaches the air blower or fan 4 as being disposed atop a playing
surface or soccer plate 34. Appellant also contends that Tsai ’939 fails to
teach or suggest an air blower positioned inside the plurality of side sections
of the frame and within the cavity between the first game surface and the air
hockey game surface.
Tsai ’564 and Tsai ’939 have been discussed supra.
We agree with Appellant that neither Tsai ’564 nor Tsai ’939 disclose
an air blower within the cavity between the first game surface and the air
hockey game surface as recited in claim 66. More particularly, Figures 3
and 4 of Tsai ’564 clearly show that the air blower or fan 4 is on top of the
soccer plate 34 and not between the soccer and hockey plates or game
surfaces 34, 31. In addition, Figures 2-4, 6, 12, 13, and 16 of Tsai ’939
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clearly show that the air blower 57 is embedded in one of the shorter sides of
the frame 41 so as to be flush with the outer surface of the frame 14. Tsai
’939 does not clearly teach that the air blower 57 is within a cavity between
the first game surface and the air hockey game surface. Therefore, even if
Tsai ’564 was modified by the teachings of Tsai ’939, the combined
teachings of both references would not result in a rotary game table having
an air blower within a cavity between a first game surface and an air hockey
game surface as is recited in claim 66.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claim 66 under 35 U.S.C. § 103(a) as obvious over Tsai ’564 and Tsai
‘939.
Issue 4
Appellant contends Neuharth fails to teach or suggest that its latch
lever or short leg 34a is pivotally connected to the at least one support as is
recited in claim 52. App. Br. 15. Indeed, Appellant contends that the
bracket 34 of Neuharth is not pivotally retained in any way, but is instead
fixed in notch 37 when the bracket is in use to prevent rotation of the playing
surface assembly 10 and is removed and stored in pocket or seat 46 when
not in use. Id. In response to the Examiner’s statement in the Response to
Arguments section of the Examiner’s Answer that the latch lever and
support link are manually pivoted and retained, Appellant contends that
“[s]uch a strained interpretation is not supported by the reference” because
Figures 1 and 2 of Neuharth “clearly show that the alleged latch lever (short
leg 34a) and support link (34b) are not pivotally connected to ‘support
frame’ 24c in any sense whatsoever, but instead are simply removable.”
Reply Br. 17.
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The Examiner’s position is that Tsai ’564 discloses the invention of
claim 52 substantially as claimed, but that Tsai ’564 does not disclose a latch
lever pivotally connected to the at least one support and a support link
connected to the latch lever, which support link is constructed to operatively
engage the table to prevent rotation thereof. Ans. 14. The Examiner posits
that Neuharth discloses a game table having “a latch lever (short leg 34a)
pivotally connected (detachable fastener 38) to the at least one support frame
(24c) and a support link (long leg 34b) connected to a latch lever (34a) and
constructed to operatively engage the table to prevent rotation thereof.”
Ans. 14-15. The Examiner concludes that one of ordinary skill in the art
would have found it obvious to provide the latch lever and support link of
Neuharth to the game table of Tsai ’564 “to accommodate adjustments in the
position of the assembly so the assembly may have a truly horizontal
position extending between the supports. Ans. 15. In response to
Appellant’s arguments that Neuharth does not teach its latch lever or short
leg 34a to be pivotally connected to the at least one support or pedestal 24,
the Examiner posits that “[t]he latch lever and support link of Neuharth are
manually pivoted and retained, this can be clearly seen in [F]igures 1 and 2 .
. . .” Ans. 27.
Tsai ’564 has been discussed supra.
Neuharth discloses a billiards table pivotable from a horizontal
playing position to a vertical position for storage to take up less space. Col.
1, ll. 4-9. The billiards table includes a rectangular frame and playing
surface assembly 10 made up of a rectangular frame 12 and a rectangular
playing surface 14. Col. 1, l. 67 through col. 2, l. 2. The frame and playing
surface assembly 10 is supported above the ground by a pedestal means 20.
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Col. 2, ll. 11-13. The pedestal means 20 includes spaced pedestals 22, 24
each of which have spaced feet 22a, 22b and 24a, 24b, respectively, and a
central post 22c, 24c. Col. 2, ll. 14-20. Each of the pedestals 22, 24 is
provided with a bracket means in the form of a pair of L-shaped brackets 34,
36 used to support the table firmly in a horizontal position. Col. 2, ll. 40-45.
Each of the L-shaped brackets 34, 36 includes a short leg 34a, 36a,
respectively, and a long leg 34b, 36b, respectively. Col. 2, ll. 45-47. The
pedestals 22, 24 are notched at 37 to receive the short leg 34a, 36a and a
detachable fastener 38 is utilized to secure the bracket 34, 36 in place on the
post 22c, 24c of the pedestal 22, 24, respectively. Col. 2, ll. 47-52. Each of
the brackets 34, 36 is provided with an adjustable screw to engage the
undersurface of the frame 12 to accommodate adjustments in the position of
assembly 10 for truly horizontal positioning. Col. 2, ll. 53-60. Each
pedestal 22, 24 has a pocket or seat 46 for reception of the brackets 34, 36
when the table is to be moved to the vertical position. Col. 2, l. 64 through
col. 3, l. 3.
We agree with Appellant that the latch levers or short legs 34a, 36a of
the L-shaped brackets 34, 36, respectively, of Neuharth are not pivotally
connected to the supports or pedestal posts 22c, 24c. The Examiner’s
allegation that the latch levers or short legs 34a, 36a are manually pivoted
from the position shown in Figure 1 of Neuharth to the position shown in
Figure 2 of Neuharth is mere speculation and nowhere disclosed in the
disclosure of Neuharth.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claim 52-59 and 62-65 under 35 U.S.C. § 103(a) as obvious over Tsai
’564 and Neuharth. Since the rejections of dependent claims 53-65 are
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Application 11/824,369

based upon the same erroneous obviousness determinations as independent
claim 52, we also do not sustain the rejection of claims 60 and 61 under 35
U.S.C. § 103(a) as unpatentable over Tsai ’564, Neuharth, and Tsai ’939.
Issue 5
Appellant contends that the currently pending double patenting
rejections “do not fall under the requirements of a valid obviousness-type
double patenting rejection.” App. Br. 17 and Reply Br. 18. More
particularly, Appellant contends that “the Examiner made no effort to make
a claim-by-claim comparison of the claims of the present application with
those of U.S. Pat. [No.] 6,764,409.” App. Br. 19 and Reply Br. 20.
Appellant also contends that the Manual of Patent Examining Procedure
(MPEP), § 804(II)(B)(1) requires any obviousness-type double patenting
rejection to make clear: (A) the differences between the inventions defined
by the conflicting claims – a claim in the patent compared to a claim in the
application; and (B) the reasons why a person of ordinary skill in the art
would conclude that the invention defined in the claims at issue, is either
anticipated by or would have been an obvious variation of, the invention
defined in a claim in the patent. Id. Appellant also contends that “[t]he
Examiner has fallen well short of these requirements in making the double
patenting rejections” because “[n]owhere has the Examiner made a clear
claim-to-claim comparison between a claim in U.S. Pat. [No.] 6.764,409 and
a claim in the present application, or made clear any of the differences
therebetween.” Id. Further, Appellant contends that “the Examiner did not
set forth reasons why a person of ordinary skill in the art would conclude
that the invention defined in the claim at issue is anticipated by the invention
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Application 11/824,369

defined in a claim in the patent as mandated by MPEP § 804 (II)(B)(1).”
App. Br. 19.
The Examiner’s position is that all of claims 36-66 are rejected on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1-10 of U.S. Patent No. 6,764,409, either alone or
in view of one or more of Cartwright and Neuharth. The Examiner posits
that although the conflicting claims are not identical, they are not patentably
distinct from each other.
The judicial doctrine of obviousness-type double patenting precludes
an applicant from extending the term of protection for a patented invention
by claiming an obvious variant of the patented invention in a subsequent
patent application. See In re Longi, 759 F.2d 889, 892 (Fed. Cir. 1985).
Generally, an obviousness-type double
patenting analysis entails two steps. First, as a
matter of law, a court construes the claim in the
earlier patent and the claim in the later patent and
determines the differences. Second, the court
determines whether the differences in subject
matter between the two claims render the claims
patentably distinct. A later claim that is not
patentably distinct from an earlier claim in a
commonly owned patent is invalid for obvious-
type double patenting.

Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 968 (Fed. Cir. 2001)
(internal citations and footnote omitted). If a claim in a patent application is
generic to the subject matter of a claim in a co-owned issued patent, the
claim in the patent application is subject to rejection for obviousness-type
double patenting unless a terminal disclaimer is filed. See In re Goodman,
11 F.3d 1046, 1053 (Fed. Cir. 1993).
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Application 11/824,369

We agree with Appellant that the Examiner has failed to establish that
any of claims 36-66 are unpatentable on the ground of nonstatutory
obviousness-type double patenting. With respect to the Examiner’s
nonstatutory obviousness-type double patenting rejections of claims 38, 39,
41, and 45-47 (Ans. 19-20), claims 48-51 (Ans. 20-22), claims 52-57, 64,
and 65 (Ans. 22-23), and claims 60 and 61 (Ans. 24), the Examiner fails to
indicate with specificity which claim in the patent each of the claims in the
present application is being compared to. This is a fatal flaw.
With respect to the Examiner’s nonstatutory obviousness-type double
patenting rejections of claims 36, 37, and 40 (Ans. 18-19), claims 42, 43, 44,
and 66 (Ans. 20), and claims 58, 59, 62, and 63 (Ans. 23), the Examiner has
specified which claim of U.S. Patent No. 6,764,409 each of the claims of the
present application is being compared to. However, with respect to the
rejection of each of claims 36, 37, 40, 42-44, and 66, the Examiner has failed
to explain why the differences between these claims and the cited claims in
the patent would have been obvious. Claims 36, 37, 40, 42-44 and 66 all
recite a space or cavity, whereas the claims of U.S. Patent No. 6,764,409 do
not recite a space or cavity. As such, the Examiner appears to be
maintaining either that the space is inherent in the claims of the patent or
that it would have been obvious to modify the apparatus claimed in the
patent to have a space or cavity. The Examiner has made no findings as to
inherency, and has presented no reason supported by a rational underpinning
for any such modification. Further, the Examiner has failed to explain why
claims 36, 37, 40, 42-44 and 66 would have been obvious over the claims of
U.S. Patent No. 6,764,409, in light of the recitation in the cited patent claims
of structural elements not present in these application claims (i.e., is the
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Appeal 2010-006848
Application 11/824,369

Examiner invoking Goodman to say that a claim in the patent application is
generic to the subject matter of a claim in the co-owned issued patent, or is
the Examiner modifying to eliminate the structure of the patent not recited in
the claims of the present application and if so, is there a reason with a
rational underpinning for doing so?). Finally, with respect to the rejection of
each of claims 58, 59, 62, and 63, the Examiner has modified the claims of
the patent by Neuharth in order to provide a latch lever pivotally connected
to the at least one support, but, as discussed in Issue 4 supra, we find that
Neuharth’s latch lever or short leg 34a is not pivotally connected to the at
least one support.
In view of the foregoing, we do not sustain the Examiner’s
nonstatutory obviousness-type double patenting rejections of: claims 36, 37,
and 40 as unpatentable over claims 1-10 of U.S. Patent No. 6,764,409;
claims 38, 39, 41-47, and 66 as unpatentable over claims 1-10 of U.S. Patent
No. 6,764,409 and Cartwright; claims 48-51 as unpatentable over claims 1-
10 of U.S. Patent No. 6,764,409, Cartwright, and Neuharth; claims 52-29
and 62-65 as unpatentable over claims 1-10 of U.S. Patent No. 6,764,409
and Neuharth; and claims 60 and 61 as unpatentable over claims 1-10 of
U.S. Patent No. 6,764,409, Neuharth, and Cartwright.

CONCLUSIONS
The Examiner erred in: determining that the recitation of “an air
blower positioned between the first side and the second side of the table” in
claims 59-61 fails to comply with the written description requirement under
35 U.S.C. § 112, first paragraph, as not being supported by the originally
filed disclosure; interpreting the air blower 65 of Tsai ’564 to be within the
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Application 11/824,369

space between the first game table and the air hockey table or concluding
that it would have been obvious to one of ordinary skill in the art to
rearrange the parts of Tsai ’564 to place the air blower 65 of Tsai ’564
within the space between the first game table and the air hockey table;
concluding that it would have been obvious to one of ordinary skill in the art
to modify the repositioning of the air opening of Tsai ’564 by the teachings
of Tsai ‘939 so as to be located in one of the long and short sides of the
frame as required by claims 42 and 66, respectively; concluding that it
would have been obvious to one of ordinary skill in the art to modify Tsai
’564 by the teachings of Neuharth in order to include a latch lever pivotally
connected to the at least one support and a support link connected to the
latch lever and constructed to engage the table to prevent rotation thereof as
recited in claim 52; determining that claims 36-66 are unpatentable over
claims 1-10 of U.S. Patent No. 6,764,409 B1, either alone or in combination
with one or more of Cartwright and Neuharth, based upon the ground of
nonstatutory obviousness-type double patenting.

DECISION
We reverse the Examiner’s rejection of: (1) claims 59-61 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement; (2) claims 36, 37, 40, and 41 under 35 U.S.C.
§ 102(b) as anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over Tsai ’564; (3) claims 38, 39, 42-44, 46, 47, and 66 under
35 U.S.C. § 103(a) as unpatentable over Tsai ’564 and Tsai ’939; (4) claim
45 under 35 U.S.C. § 103(a) as unpatentable over Tsai ’564, Tsai ’939, Tsai
’797, and Oake; (5) claims 48-51 under 35 U.S.C. § 103(a) as unpatentable
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Appeal 2010-006848
Application 11/824,369

over Tsai ’564, Tsai ’939, and Neuharth; (6) claims 52-59 and 62-65 under
35 U.S.C. § 103(a) as unpatentable over Tsai ’564 and Neuharth; (7) claims
60 and 61 under 35 U.S.C. § 103(a) as unpatentable over Tsai ’564,
Neuharth, and Tsai ’939; (8) claims 36, 37, and 40 on the ground of
nonstatutory obviousness-type double patenting as unpatentable over claims
1-10 of U.S. Patent No. 6,764,409; (9) claims 38, 39, 41-47, and 66 on the
ground of nonstatutory obviousness-type double patenting as unpatentable
over claims 1-10 of U.S. Patent No. 6,764,409 and Cartwright; (10) claims
48-51 on the ground of nonstatutory obviousness-type double patenting as
unpatentable over claims 1-10 of U.S. Patent No. 6,764,409, Cartwright, and
Neuharth; (11) claims 52-29 and 62-65 on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claims 1-10 of U.S.
Patent No. 6,764,409 and Neuharth; and (12) claims 60 and 61 on the
ground of nonstatutory obviousness-type double patenting as unpatentable
over claims 1-10 of U.S. Patent No. 6,764,409, Neuharth, and Cartwright.

REVERSED

Klh

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