Ex Parte VodenDownload PDFBoard of Patent Appeals and InterferencesDec 11, 201010908842 (B.P.A.I. Dec. 11, 2010) Copy Citation 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. 10/908,842 05/27/2005 Justin L. Voden 028657-9002-US05 5842 23409 7590 12/13/2010 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 12/13/2010 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 2009-007967 Application 10/908,842 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 2009-007967 Application 10/908,842 2 STATEMENT OF THE CASE Justin L. Voden (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting: (1) claim 34 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement; (2) claims 7, 8, 10, 11, 13, and 14 under 35 U.S.C. § 103(a) as unpatentable over Tsai ’797 (U.S. Patent No. 6,347,797 B1, issued Feb. 19. 2002), Tsai ’939 (U.S. Patent No. 6,349,939 B1, issued Feb. 26, 2002), either Fedrick (U.S. Patent No. 3,815,078, issued Jun. 4, 1974) or Kovacik (U.S. Patent No. 6,170,775 B1, issued Jan. 9, 2001), and Smith, II (U.S. Patent No. 6,095,156, issued Aug. 1, 2000);2 (3) claims 21-27 under 35 U.S.C. § 103(a) as unpatentable over Tsai ’797, Tsai ’939,3 and Desormeaux (U.S. Patent No. 6,854,575 B1, issued Feb. 15, 2005); (4) claims 28-31 under 35 U.S.C. § 103(a) as unpatentable over Tsai ’797, Tsai ’939, and Foster (U.S. Patent No. 5,083,241, issued Jan. 21, 1992); and (5) claims 32-34 under 35 U.S.C. § 103(a) as unpatentable over Tsai ’797, Tsai ’939, Foster, and Desormeaux. Appellant cancelled claims 1-6, 9, 12, and 15-20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 2 We note that the Examiner’s statement of the rejection on page 3 of the Examiner’s Answer appears to apply to either one of Fedrick or Kovacik together with Smith, II against the claims. However, the body of the rejection on pages 3-5, and particularly on page 5, appears to apply Fedrick, Kovacik, or Smith, II alternatively as all three references are cited to teach that retractable power cords are old and well known in the art. 3 We note that although the Examiner included Tsai ’939 in the statement of the rejection on page 6 of the Examiner’s Answer, the body of the rejection on pages 6-7 of the Examiner’s Answer does not mention Tsai ’939 and therefore, Tsai ’939 does not appear to be applied in the rejection. Appeal 2009-007967 Application 10/908,842 3 The Invention The claims on appeal relate to a combination game table, a multi- game game table, and a rotatable game table, all of which have different games on opposing sides thereof. Claims 7, 21, and 28, reproduced below, are representative of the subject matter on appeal. 7. A combination game table comprising: a first game surface; a second game surface; a frame supporting the first game surface and the second game surface, and having a space therein; an electrical device disposed in the space of the frame; a plug positioned within the frame and electrically connected to the electrical device; and a cord reel connected between the plug and the electrical device wherein the cord reel is disposed in between the first game surface and the second game surface and the plug may be unspooled from the frame. 21. A multi-game game table comprising: a rotatable table having a first game formed on one side and another game formed on another side and having a cavity therebetween; a frame extending about the rotatable table; and a plug attached to the rotatable table and constructed to communicate power into the cavity of the rotatable table. 28. A rotatable game table comprising: a table having one game formed on a first side and an air hockey game formed on a second side; Appeal 2009-007967 Application 10/908,842 4 an air blower disposed between the one game and the air hockey game and having a discharge fluidly connected to the air hockey game; and a power cord passing through the table and electrically connected to the air blower. DISCUSSION Issues The determinative issues in this appeal are: (1) Did the Examiner err in finding that there is no support in the disclosure for the recitation of “wherein the plurality of prongs are configured to engage an external electrical cord, the external electrical cord having a first end engageable with a power supply and a second end engageable with the cavity and the plurality of prongs” as recited in claim 34? (2) Did the Examiner err in concluding that it would have been obvious to one of ordinary skill in the art to modify the game table of Tsai ’797 by the teachings of Tsai ‘939 and any one of Fedrick, Kovacik, and Smith, II, to include a plug positioned within the frame and a cord reel disposed between the first and second game surfaces as recited in claim 7? (3) Did the Examiner err in concluding that it would have been obvious to one of ordinary skill in the art to modify the game table of Tsai ’797 by the teachings of Desormeaux to include a plug attached to the rotatable table and constructed to communicate power into the cavity between the first game formed on one side and another game formed on another side as recited in claim 21? Appeal 2009-007967 Application 10/908,842 5 (4) Did the Examiner err in concluding that it would have been obvious to one of ordinary skill in the art to modify the game table of Tsai ’797 by the teachings of Tsai ‘939 and Foster to include a power cord passing through the table and electrically connected to the air blower as recited in claim 28? Analysis Claim 34 rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement Issue 1 Appellant contends that the rejection of claim 34 under 35 U.S.C. § 112, first paragraph, is improper since Figure 4b and Paragraph No. [0050] of the original disclosure clearly support the recitations of claim 34. Reply Br. 2. More particularly, Appellant contends that anyone with a minimal level of skill in the art would readily recognize from the disclosure of Paragraph No. [0050], namely, “[p]rongs 206 are configured to engage an electrical cord and communicate power from the electrical cord to cavity 31 of game table 10”, that the originally filed disclosure supports the recitations of claim 34. Id. The Examiner’s position is that “[t]he [A]pplication as filed does not provide support for an external electrical cord, wherein the external electrical cord [has] a first end engageable with a power supply and a second end engageable with the cavity and the plurality of prongs (lines 5-7).” Ans. 3. 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.’” Ariad Pharm., Appeal 2009-007967 Application 10/908,842 6 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)). “[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. Accordingly, adequate written description is a question of fact. We agree with Appellant that claim 34 is supported by the disclosure of the Drawings and the Specification. For instance, Figure 4b schematically illustrates prongs 206 within the cavity 204 and the Specification discloses prongs 206 are configured to engage “an electric cord.” Spec. [Para 50]. A person of ordinary skill in the art would be versed in what “electric cord” would be necessary to communicate power from a power source to the cavity containing the prongs 206. An example of such an electric cord would be a portable cordage, i.e., an electrical extension cord, having the proper terminating ends to match the prongs 206, the cavity 204, and the standard 120 volt wall outlet. Accordingly, after making an objective inquiry into the four corners of the Specification from the perspective of a person of ordinary skill in the art, we find that one of ordinary skill in the art viewing Figure 4b of the Drawings and reading Paragraph No. [0050] of the Specification would reasonably understand that the inventor had possession of the subject matter recited in claim 34 as of the filing date of the present Application. Appeal 2009-007967 Application 10/908,842 7 In view of the foregoing, we do not sustain the rejection of claim 34 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Claims 7, 8, 10, 11, 13, and 14 rejected under 35 U.S.C. § 103(a) as unpatentable over Tsai ’797, Tsai ’939, either Fedrick or Kovacik, and Smith, II Issue 2 Appellant stresses that claim 7 is not merely reciting a cord reel, but rather specifically calls for: a plug positioned within the frame of a combination game table and electrically connected to the electrical device, and a cord reel that is disposed in between the first game surface and the second game surface of the combination game table and between the plug and an electrical device. App. Br. 5-6. Appellant also contends that Tsai ’797, Tsai ’939, Fedrick, Kovacik, and Smith, II, fail to teach or suggest positioning a plug within a frame as recited in claim 7, and that the Examiner did not identify any suggestion or motivation for doing so. App. Br. 6. The Examiner’s position is that Tsai ’797 discloses the recitations of claim 7 substantially as claimed, except that Tsai ’797 fails to explicitly disclose that the electric device is disposed completely within the space between the game surfaces and a power cord including a cord reel positioned between a plug and the electrical device, wherein the cord reel and the plug are disposed between the game surfaces. Ans. 3-4. The Examiner posits that retractable cord reels are old and well known as is evidenced by the patents to Fedrick, Kovacik, and Smith, II. Ans. 4-5. The Examiner Appeal 2009-007967 Application 10/908,842 8 concludes that in view of the old and well known cord reels, it would have been obvious to one of ordinary skill in the art to have provided a retractable power cord with a plug, positioned on a reel for the modified game table of Tsai ’797 in view of Tsai ’939 “so the power cord can be quickly and conveniently stored away when not in use.” Ans. 5. Tsai ’797 discloses a game table 20 which includes a table body 40 rotatable on a table frame 30. See Fig. 5 to 6 and 10 to 11 and col. 2, ll. 19- 22. The table body 40 has top and bottom faces which can have different game surfaces thereon such as a table football surface A, a table hockey surface B, and a billiards surface D. See Figs. 2, 6, and 11, col. 2, ll. 22-24 and ll. 50-51, and col. 4, l. 53. When the top or bottom face of the table body 40 has a table hockey surface, the table frame 30 has an air blower 65 mounted thereon to provide air to the table body 40 through a wind guiding member 39 for playing the table hockey game. See Figs. 6 and 8, col. 3, ll. 10-22 and 28-29, and col. 4, ll. 21-40. Power is provided to air blower 65 by an electrical cord which hangs off of the air blower 65. See Fig. 8. Neither the air blower 65 nor its electrical cord is positioned within a space between the game surfaces. See Fig. 8. Tsai ’939 discloses a game table 20 which includes a table frame 30 and two table bodies 40, 60. Col. 2, ll. 37-38. Each of the table bodies 40, 60 can be used alone by being laid over top of and engaging the table frame 30 or used together by being overlapped with each other with the bottommost one of the table bodies 40, 60 engaging the table frame 30. See Figs. 2-4, 6, 7, 10 and 12 and col. 2, ll. 38-44. Table body 40 has a football game face A on one side and a hockey game face B on the other side. See Figs. 3 and 6 and col. 2, ll. 64-66. An air blower 57 is fixedly disposed in a Appeal 2009-007967 Application 10/908,842 9 short side of the table body 40 for use with the hockey game face B. Col. 3, ll. 24-25. The air blower 57 is not in a space between the football game face A and the hockey game face B. See Fig. 3. Fedrick, Kovacik, and Smith, II all disclose retractable power cords. More particularly, Fedrick discloses a retractable extension cord unit including a housing 10 within which an electrical extension cord 12 can be retractably stored. Abstract and col. 2, ll. 8-18. Kovacik discloses an automatically retracting electrical extension cord reel assembly 10 including a cord reel housing 11 retractably storing an extension cord 15 wound on a spool (not shown) having an axle 20. See Figs. 1-2 and col. 2, ll. 30-32 and 45-53. Smith, II discloses a beauty utility cart storage apparatus 10 having a cabinet 20 housing a plurality of storage spools 72 retractably holding lengths of electrical cord 76. See Fig. 3, col. 2, ll. 57-60, and col. 3, ll. 40- 49. As noted by Appellant, claim 7 calls for a plug positioned within the frame and a cord reel disposed between the first and second game surfaces and connected between the plug and the electrical device. Although Fedrick, Kovacik, and Smith, II all teach cord reels, they do not teach the positioning of the cord reel between first and second game surfaces. Thus, even if one of ordinary skill in the art were to combine Tsai ’797 with Tsai ’939 with any one of the retractable cord reels in Fedrick, Kovacik, and Smith, II, the resulting game table would not have had a cord reel positioned within the frame, disposed between the first and second game surfaces, and connected between the plug and the electrical device as recited in claim 7 because the Tsai ’797 and Tsai ’939 tables have no need for power between the game Appeal 2009-007967 Application 10/908,842 10 surfaces since their electrical devices are disposed on the side frame and not the space between the game surfaces. In view of the foregoing, we do not sustain the rejection of claims 7, 8, 10, 11, 13, and 14 under 35 U.S.C. § 103(a) as unpatentable over Tsai ’797, Tsai ’939, either Fedrick or Kovacik, and Smith, II. Claims 21-27 rejected under 35 U.S.C. § 103(a) as unpatentable over Tsai ’797, Tsai ’939, and Desormeaux Issue 3 Appellant contends that there would be no reason to provide power into the cavity of Tsai ’797 because the air blower 65 is located external to the rotatable table body 40 and the air blower 57 of Tsai ’939 is fixedly mounted at the very end of the game table. App. Br. 7. Appellant also contends that even though Desormeaux teaches a retractable power cord and plug, there would be no reason to provide such a plug to communicate power into a cavity of the game table of the combination of Tsai ’797 and Tsai ’939 because there is no electrical device or air blower located in the cavity of either game table of Tsai ’797 or Tsai ’939. Id. Thus, Appellant also contends that the Examiner uses improper hindsight and the teachings of the present invention to combine Tsai ’797, Tsai ’939, and Desormeaux because the teaching of a plug attached to a rotatable table and constructed to communicate power into a cavity of the rotatable table as called for in claim 21 is entirely absent from Tsai ’797, Tsai ’939, and Desormeaux and is only taught by the present Specification. App. Br. 7-8. The Examiner’s position is that Tsai ’797 teaches a multi-game game table substantially as claimed in claim 21, except that Tsai ’797 does not disclose a plug being attached to the rotatable table and constructed to Appeal 2009-007967 Application 10/908,842 11 communicate power into the cavity of the rotatable table. Ans. 6. The Examiner posits the Desormeaux discloses a universal cord winder including a mounting plate 30 and a power cord (extension 13), wherein the power cord is attached to a plug (male cord end 3) and is retractably received on a reel (spindle 4). Ans. 6-7. The Examiner concludes that in view of Desormeax, it would have been obvious to one of ordinary skill in the art to have provided a plug attachable to the table in order to communicate power to the air blower. Ans. 7. Tsai ’797 and Tsai ’939 have been discussed supra. Desormeaux discloses a universal license plate cord winder including a housing 2 having a spindle 4 therein around which a receptacle cord 10 is retractably wound. See Figs. 1-2 and col. 3, ll. 29-34. An end of the cord 10 extends through a cord-to-housing connecting member 14 and has a receptacle cord outlet 12 attached thereto. See Fig. 2 and col. 3, ll. 44-45. The universal license plate cord winder is mountable between any North- American style license plate bracket and a license plate in order to provide a convenient extension cord for powering components such as an engine block heater, interior heaters, battery warmers, battery chargers, etc. Co1. 1, ll. 6- 10 and 22-26 and col. 3, ll. 11-14. The Federal Circuit has stated that “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, 418 (2007). It is improper to base a conclusion of obviousness upon facts gleaned only through hindsight. “To draw on hindsight knowledge of the Appeal 2009-007967 Application 10/908,842 12 patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction— an illogical and inappropriate process by which to determine patentability.” Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983)). We agree with Appellant that the Examiner uses improper hindsight and the teachings of the present invention to either combine Tsai ’797 and Desormeax or Tsai ’797, Tsai ’939, and Desormeax. We see no reason, and the Examiner has failed to articulate a reason with rational underpinning, as to why one of ordinary skill in the art would combine the universal license plate cord winder of Desormeax with either the game table of Tsai ’797 alone or the game table of the combined Tsai ’797 and Tsai ’939. Moreover, even if one of ordinary skill in the art would have had reason to combine Desormeax with either Tsai ’797 alone or with Tsai ’797 and Tsai ’939, we find that either combination would not have led to the multi-game game table as recited in claim 21 because the Tsai references demonstrate no need for power communicated to the cavity of the game table since the blowers are on the side of the game table and readily accessible for power from the outside. There is no need for a plug to communicate power into the cavity of the game table. In view of the foregoing, we do not sustain the Examiner’s rejection of claims 7, 8, 10, 11, 13, and 14 under 35 U.S.C. § 103(a) as unpatentable over either Tsai ‘797 and Desormeaux, or Tsai ’797, Tsai ’939, and Desormeaux. Appeal 2009-007967 Application 10/908,842 13 Claims 28-31 rejected under 35 U.S.C. § 103(a) as unpatentable over Tsai ’797, Tsai ’939, and Foster Issue 4 Appellant contends that even if Tsai ’797 is modified by Tsai ’939 to position the air blower flush with the end of the short side of the table, there is still no reason why one of ordinary skill in the art would have been motivated to pass a power cord through the table because doing so would have been unnecessary in order to provide an electrical connection to the air blower. App. Br. 8. Appellant also contends that since Tsai ’939 does not even disclose the existence of a power cord, one of ordinary skill in the art would be left to surmise where the power cord would be if Tsai ’797 were modified to move the air blower to the short side of the frame of the game table as taught by Tsai ’939. App. Br. 9. Appellant also contends that neither Tsai ’797 nor Tsai ’939 discloses that its air blower is disposed between the one game on the first side of the table and the air hockey game formed on the second side of the table as specifically called for in claim 28. App. Br. 9-10. The Examiner’s position is that Tsai ’797 discloses the game table of claim 28 substantially as claimed, except that Tsai ’797 fails to disclose the electric cord from its air blower as passing through the table. Ans. 7. The Examiner posits that Foster discloses a combination portable light and table 10 having a power cord 24 wound around a cord retractor 24 within the interior of the table and the plug portion of the power cord 24 on the exterior of the table. Id. The Examiner also posits that Tsai ’939 discloses a game table having the air blower 57 disposed in the shorter side of the frame so as to be flush with the outer surface. Ans. 8. The Examiner concludes that in Appeal 2009-007967 Application 10/908,842 14 view of Foster and Tsai ’939, it would have been obvious to one of ordinary skill in the art to have provided a power cord passing through the table and electrically connected to the air blower in order to provide power to the electrical device or air blower in a compact and out-of-the-way manner. Id. Tsai ’797 and Tsai ’939 have been discussed supra. Foster discloses a portable light and table 10 including a pivotable light panel 12 and work/storage table 14 having a table surface 16 above a storage area 18. See Figs. 1-3 and col. 2, ll. 10-15. A manual cord retractor 26 is housed inside of the storage area 18 and has an electrical extension cord 24 wound therearound. See Fig. 1 and col. 2, l. 16. An end of the electrical extension cord 24 has a plug which is located outside of the storage area 18. See Fig. 1. We agree with Appellant that the Examiner has failed to provide an articulated reason with a rational underpinning as to why one of ordinary skill in the art would be motivated to combine the portable light and table of Foster with the game tables of Tsai ’797 and Tsai ’939. Since neither Tsai ’797 nor Tsai ’939 teach an air blower within a cavity between one game on the first side of the table and an air hockey game on the second side of the table, there would not be any reason to modify the game table of Tsai ’797 as modified by Tsai ’939 to have the electric cord passing through the table of Foster because there would be no electrical device or air blower in the space between the game surfaces for which a power cord would need to be passed through the table. In view of the foregoing, we do not sustain the Examiner’s rejection of claims 28-31 under 35 U.S.C. § 103(a) as unpatentable over Tsai ’797, Tsai ’939, and Foster. Since the rejection of claims 32-34 is based on the Appeal 2009-007967 Application 10/908,842 15 same erroneous obviousness determinations as employed in the rejection of independent claim 28, we also do not sustain the rejection of claims 32-34 under 35 U.S.C. § 103(a) as unpatentable over Tsai ‘797, Tsai ‘939, Foster, and Desormeaux. CONCLUSIONS The Examiner erred in finding that there is no support in the disclosure for the recitation of “wherein the plurality of prongs are configured to engage an external electrical cord, the external electrical cord having a first end engageable with a power supply and a second end engageable with the cavity and the plurality of prongs” as is recited in claim 34. The Examiner erred in concluding that it would have been obvious to one of ordinary skill in the art to modify the game table of Tsai ’797 by the teachings of Tsai ‘939 and any one of Fedrick, Kovacik, and Smith, II to include a plug positioned within the frame and a cord reel disposed between the first and second game surfaces as is recited in claim 7. The Examiner erred in concluding that it would have been obvious to one of ordinary skill in the art to modify the game table of Tsai ’797 by the teachings of Desormeaux to include a plug attached to the rotatable table and constructed to communicate power into the cavity between the first game formed on one side and another game formed on another side, as is recited in claim 21. The Examiner erred in concluding that it would have been obvious to one of ordinary skill in the art to modify the game table of Tsai ’797 by the teachings of Tsai ‘939 and Foster to include a power cord passing through Appeal 2009-007967 Application 10/908,842 16 the table and electrically connected to the air blower as is recited in claim 28. DECISION We reverse the Examiner’s rejections of: claim 34 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement; claims 7, 8, 10, 11, 13, and 14 under 35 U.S.C. § 103(a) as unpatentable over Tsai ‘797, Tsai ‘939, either Fedrick or Kovacik, and Smith, II; claims 21-27 under 35 U.S.C. § 103(a) as unpatentable over Tsai ‘797 and Desormeaux; claims 28-31 under 35 U.S.C. § 103(a) as unpatentable over Tsai ‘797, Tsai ‘939, and Foster; and claims 32-34 under 35 U.S.C. § 103(a) as unpatentable over Tsai ‘797, Tsai ‘939, Foster, and Desormeaux. REVERSED Klh MICHAEL, BEST & FRIEDRICH, LLP 100 E. WISCONSIN AVENUE SUITE 3300 MILWAUKEE, WI 53202 Copy with citationCopy as parenthetical citation