Ex Parte Voden

Board of Patent Appeals and Interferences

Dec 11, 2010

10908842 (B.P.A.I. Dec. 11, 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.
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.

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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;
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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?
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(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.,
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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.
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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
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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
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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
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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
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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
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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.

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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
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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
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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
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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

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