Ex Parte Voden

Board of Patent Appeals and Interferences

Sep 20, 2007

10768512 (B.P.A.I. Sep. 20, 2007)

The opinion in support of the decision being entered 1
today is not binding precedent of the Board. 2
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UNITED STATES PATENT AND TRADEMARK OFFICE 5
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BEFORE THE BOARD OF PATENT APPEALS 8
AND INTERFERENCES 9
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Ex parte JUSTIN L. VODEN 12
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Appeal No. 2007-0779 15
Application No. 10/768,512 16
Technology Center 3700 17
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Decided: September 20, 2007 20
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Before WILLIAM, F. PATE, III, TERRY J. OWENS, and DAVID B. WALKER, 23
Administrative Patent Judges. 24
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OWENS, Administrative Patent Judge. 26
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DECISION ON APPEAL 29
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The Appellant appeals from a rejection of claims 1-16, which are all of the 31
pending claims. 32
THE INVENTION 33
The Appellant claims a rotary game table having a pool table on one side 34
and a table soccer game on the other side. Claim 1 is illustrative: 35
1. A rotary game table comprising: 36
Appeal 2007-0779
Application 10/768,512

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a combination game table including a pool table disposed on 1
one side and a table soccer game disposed on the other side thereof; 2
two side support members; 3
at least one cross member being terminated by one of said two 4
side support members one each end thereof, said combination game table 5
being pivotally supported on each end by one of said two side support 6
members; and 7
a pair of support latches being contained in at least one of said 8
two side support members, said pair of support latches preventing said 9
combination game table from rotating. 10
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THE REFERENCES 12
Zimmers US 3,866,913 Feb. 18, 1975 13
Padilla1 US 60/480,567 Jun. 20, 2003 14
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THE REJECTIONS 16
The claims stand rejected as follows: claims 1, 3-6, 8-10, 12 and 13 under 17
35 U.S.C. § 102(e) as anticipated by Padilla, claims 2, 7 and 14-16 under 18
35 U.S.C. § 103 as obvious over Padilla, and claim 11 under 35 U.S.C. § 103 as 19
obvious over Padilla in view of Zimmers. 20
OPINION 21
We affirm the aforementioned rejections. 22
The Appellant’s sole argument is that the Appellant has established priority 23
before Padilla’s effective date (Br. 4-11). The Appellant argues that the 24
Appellant’s parent application (10/455,666, filed Jun. 5, 2003) predates Padilla’s 25
June 20, 2003 filing date and discloses all of the presently claimed subject matter 26
except a table soccer game (Br. 6-8). To establish priority as to a table soccer 27

1 Padilla is the provisional application for US 2005/0049056 A1 (filed Jun. 21,
2004, issued Mar. 3, 2005).
Appeal 2007-0779
Application 10/768,512

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game the Appellant relies upon a Rule 131 Declaration by the inventor, Justin L. 1
Voden (submitted with the Appellant’s July 18, 2005 response). See id. 2
For the following reasons Voden’s Declaration is not sufficient to establish 3
priority. 4
First, the Declaration (exhibit A) shows conception only of a foosball game, 5
not a foosball (table soccer) game in combination with a pool table as required by 6
each of the Appellant’s claims. 7
Second, a showing of diligence must be supported by facts sufficient in 8
character and weight to establish diligence. See 37 C.F.R. § 1.131(b)(2000). The 9
Voden Declaration merely asserts that “from before June 20, 2003, to January 29, 10
2004, the filing date of the above-captioned invention, I diligently worked toward 11
reducing the above-captioned invention to practice and worked with patent counsel 12
in the preparation of a patent application for the claimed invention.” (Declaration, 13
p. 1, ¶ 5). The Declaration does not include the required showing of facts 14
supporting that assertion. 15
The Appellant, therefore, has not established priority as to Padilla. 16
Accordingly, we affirm the Examiner’s rejections. 17
DECISION 18
The rejections of claims 1, 3-6, 8-10, 12 and 13 under 35 U.S.C. § 102(e) 19
over Padilla, claims 2, 7 and 14-16 under 35 U.S.C. § 103 over Padilla, and claim 20
11 under 35 U.S.C. § 103 over Padilla in view of Zimmers are affirmed. 21
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Appeal 2007-0779
Application 10/768,512

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No time period for taking any subsequent action in connection with this 1
appeal may be extended under 37 C.F.R. § 1.136. 2
AFFIRMED 3
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ZIOLKOWSKI PATENT SOLUTIONS GROUP, SC (ZPS) 17
136 S WISCONSIN ST 18
PORT WASHINGTON, WI 53074 19