Ex Parte Vu

Patent Trial and Appeal Board

Dec 22, 2017

14692728 (P.T.A.B. Dec. 22, 2017)

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.
14/692,728 04/21/2015 Binh Bao Vu Vu-l 1259
32132 7590 12/27/2017
T AMORTF ^ ASSOPTATFS P C
EXAMINER
P.O. BOX 434 MENDIRATTA, VISHU K
YARDLEY, PA 19067
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
12/27/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
uspatlawl @ verizon.net
mail@uspatlaw.com
malamorte@verizon.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BINH BAO VU
Appeal 2017-003850
Application 14/692,728
Technology Center 3700
Before STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
3, 5, 7, 8, 10-12, and 14. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2017-003850
Application 14/692,728
CLAIMED SUBJECT MATTER
The claims are directed to an assembly for holding game pieces and a
flexible game mat. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A carrier assembly for holding a game that is played with
game elements on a game play field, said carrier assembly
comprising:
a cylindrical case having a length, a diameter, and a
exterior, wherein said cylindrical case defines a first internal
compartment and a second internal compartment, wherein said
first internal compartment and said second internal compartment
are sized to receive some of said game elements therein, said first
internal compartment having a first open top that enables direct
access to said first internal compartment through said exterior of
said cylindrical case, and said second internal compartment has
a second open top that enables direct access to said first internal
compartment through said exterior of said cylindrical case;
a first lid joined to said cylindrical case with a first hinged
connection, wherein said first lid selectively covers said first
open top and controls access to said first internal compartment;
a second lid joined to said cylindrical case with a second
hinged connection, wherein said second lid selectively covers
said second open top and controls access to said second internal
compartment;
a flexible mat having said game play field printed thereon,
wherein said flexible mat has a length long enough to enable said
flexible mat to wrap around said cylindrical case at least once,
therein covering both said first lid and said second lid, therein
preventing said first lid and said second from being opened; and
a detachable connector for connecting a section of said
flexible mat to said exterior of said cylindrical case.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
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Simons
Schultz
Nip
US 4,408,763 Oct. 11, 1983
US 6,203,017 B1 Mar. 20, 2001
US 2007/0235929 A1 Oct. 11, 2007
REJECTIONS
I. Claims 7, 11, 12, and 141 are rejected under 35 U.S.C.
§§ 102(a)l/(a)2 as anticipated by Schultz. Final Act. 2.
II. Claims 1-3, 5, 7, 8, and 11 are rejected under 35 U.S.C. § 103
as unpatentable over Schultz, Simons, and Nip. Final Act. 3.
III. Claims 7, 8, and 10 are rejected under 35 U.S.C. § 103 as
unpatentable over Schultz and Nip. Final Act. 6.
IV. Claims 11, 12, and 14 are rejected under 35 U.S.C. § 103 as
unpatentable over Schultz, Simons, and Nip. Final Act. 8.
OPINION
Rejection I; Claims 7, 11, 12, and 14
Claim 7
Claim 7 recites, in part, “wherein said flexible mat is wrapped around
said elongated case and covers said lid elements, therein preventing said lid
elements from being accessed until said flexible mat is removed from said
elongated case.”
Appellant argues that Schultz does not disclose a flexible mat that is
wrapped around an elongate case, because Schultz has “rigid panels that can
bend only along established fold lines,” and “does not ‘wrap’ around
anything. It merely folds from an open condition to a closed condition.” Br.
1 The Examiner withdrew the rejection of claims 1-3, 5, and 8 under
35 U.S.C. §§ 102(a)l/(a)2 as anticipated by Schultz. Ans. 2.
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11. According to Appellant, the Specification discloses that “the flexible
mat ‘is preferably made of neoprene or a similar synthetic foam rubber.’
The flexible mat has a thickness of at least 1/32 of an inch so as to lay flat
under the forces of its own weight.” Br. 9 (citing Spec. 6:17-21). Appellant
states that the plain meaning of “wrap” is “to cover (something) by winding
or folding a piece of material around its exterior.” Br. 9 (citing Merriam-
Webster dictionary) (emphasis omitted).
The Examiner responds that Schultz’s mat “flexes at 21, 22, 23, 24,
25, 27,” and wraps around case 50, because “portions 31, 32, 33 and 36 of
mat are fully covering the exterior of the case 50.” Ans. 12 (citing Schultz,
Figs. 1, 2).
Appellant’s arguments are not persuasive because although the
Specification discloses that “flexible mat 14 is preferably made of neoprene
or a similar synthetic foam rubber” (Spec. 6:17-18), the Specification also
contrasts hard game boards with flexible game boards and states that the
flexible game board “can be folded into a small[er] size” (Spec. 2:8-12).
Thus, we understand a neoprene or synthetic rubber game mat to be a
preferred embodiment (“preferably”) and the broadest reasonable
interpretation of a flexible mat consistent with the Specification includes a
game board that can be folded into a smaller size. This interpretation is also
consistent with Appellant’s definition of “wrap” (see Br. 9), which includes
covering by folding. Schultz discloses a flexible mat because Schultz
discloses that a “plurality of hinges join each adjacent segment to facilitate
the folding action of folding board 11.” Schultz 3:63-65. Schultz also
disclose that game board 10 (flexible mat) wraps around box 50 (container)
in that Figures 1 and 2 of Schultz show segments 30, 31, 32, and 33 of game
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board 10 folded around the exterior of box 50 so as to cover box 50.
Schultz, Figs. 1, 2; see also Ans. 13. Appellant does not apprise us of
Examiner error on this point.
Appellant also argues that claim 7 requires that “the flexible mat
prevents access to lid elements ‘until said flexible mat is removed,’” but that
Schultz’s panels “are never removed from” Shultz’s case. Br. 11.
According to Appellant, Shultz’s lids “are clearly accessible when the game
is unfolded.” Br. 11.
Appellant’s arguments are not persuasive because they are
inconsistent with the disclosed embodiment. Appellant’s Specification
discloses:
To play a game, the flexible mat 14 is unwound from the
cylindrical case 12 and the connectors 20, 22 are disengaged
from one another. The flexible mat 14 is laid flat with the
graphics of the game play field 18 facing upwardly. The lid
elements 36, 38 over the internal compartments 24, 26, 28 are
opened and the decks of cards 30, 31, 32 are removed. The decks
of cards 30, 31, 32 are then used to play a game on the flexible
mat 14.
Spec. 10:3-11. Appellant’s Figure 2 shows connectors 20 on the underside
of case 12, whereas lid element 36, 38 are on the top of the case. Thus,
before connectors 20 are disconnected from connectors 22 on mat 14, lid
elements 36, 38 are not covered by mat 14, and, therefore, are accessible for
opening when the flexible mat is unrolled from around the case, but has not
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yet been removed from the case. We reproduce below Appellant’s Figure 2,
which shows the relative location of each of the above noted elements.
Figure 2 is an exploded view of a carrier assembly.
Because Appellant’s lid elements 36, 38 are accessible for opening
when the flexible mat is unrolled from around the case, but has not yet been
removed from the case, we understand the limitation “wherein said flexible
mat is wrapped around said elongated case and covers said lid elements,
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therein preventing said lid elements from being accessed until said flexible
mat is removed from said elongated case,” to mean that the lid elements are
not accessible until the flexible mat is unwrapped, or unwound from around
the case so as to no longer prevent access to the lid elements. As such, claim
7 does not require “physical separation” as Appellant asserts (see Br. 11) by,
for example, disconnecting connectors 20 and 22, and, rather, requires
sufficient unwrapping so that the portion of the flexible mat previously
covering the lids no longer prevents access to the lids. Because the lids of
Schultz are “accessible when the game is unfolded” (see Br. 11; see also
Schultz, Fig. 3), Appellant does not apprise us of Examiner error.
Accordingly, for the foregoing reasons, we affirm the Examiner’s
rejection of claim 7.
Claims 11, 12, and 14
Claim 11 recites, in part, “connectors for selectively connecting a
section of said flexible mat to said cylindrical case.”
Appellant argues that Schultz does not disclose connectors for
connecting the flexible mat to the cylindrical case, and, indeed, “teaches
away from the matter being claimed by specifically stating that the
rectangular box (50) of the Schultz patent is adhesively attached to the game
board.” Br. 13 (citing Schultz 4:29-30).
In the Grounds of Rejection to be reviewed on Appeal section in the
Answer, the Examiner finds that Schultz’s adhesive is a connector. Ans. 3.
In the Response to Arguments section of the Answer, the Examiner makes
an additional finding that Schultz’s “hinged connections between the mat
and the case and can be treated as connectors.” Ans. 12.
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Appellant’s argument is persuasive because the Examiner has not
adequately established that Shultz’s adhesive attachment, or that Shultz’s
hinged connections, are connectors for selectively connecting a section of
said flexible mat to said cylindrical case, as recited in claim 11. Appellant’s
Specification discloses that “connectors 20, 22 are used to temporarily affix
the flexible mat 14 to the exterior of the cylindrical case 12,” and that
“connectors 20, 22 are of the type that enable the flexible mat 14 to be easily
and rapidly detached from the cylindrical case 12.” Spec. 7:1-11. A
broadest reasonable interpretation of the phrase “connectors for selectively
connecting” consistent with the Specification are elements that form a
temporary, detachable connection between the mat and the case. Schultz
discloses that “[bjoard game 10 further includes a generally rectangular box
50 having a bottom surface 51 secured to segment 30 along edge 29 thereof
by a conventional attachment such as adhesive attachment or the like.”
Schultz 4:28-31. By using adhesive, Schultz attaches the panel segment 30
(flexible mat) to box 50 (elongated case) in a manner that is permanent, and
not intended to be detachable. The Examiner does not point to any portion
of Schultz that suggests that the panel segment is detachable from the box.
Nor does the Examiner provide adequate technical reasoning to explain why
an adhesive attachment necessarily includes multiple connections that would
meet the recited “connectors” (plural).
As to the Examiner’s additional finding that Schultz’s hinges are
connectors, the Examiner does not point to any portion of Schultz that
discloses that the hinges are temporary, or detachable. In addition, Schultz’s
“hinges join each adjacent segment” of the game board to each other
(Schultz 3:63-64), and the Examiner does not explain adequately how
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Schultz’s hinges “selectively connect[] a section of said flexible mat to said
cylindrical case,” as required by claim 11.
Because the Examiner’s findings are not supported by a
preponderance of the evidence, we reverse the Examiner’s rejection of claim
11, and claims 12 and 14 depending from claim 11 under 35 U.S.C. §§
102(a)(l)/a(2).
Rejection II; Claims 1—3, 5, 7, 8, and 11
The Examiner finds that Schultz teaches most of the limitations of the
game carrier of claim 1, but that the case of Schultz is rectangular, not
cylindrical, and that Shultz’s case is not detachable from the flexible mat.
Final Act. 3-5. The Examiner relies on Simons for a cylindrical case and
finds that the shape of the case is a “personal preference” and that a
cylindrical case is an obvious variation that does not provide “new or
unexpected results” based on the “change in shape.” Final Act. 5. The
Examiner relies on Nip for detaching a case from a flexible mat and finds
that it would have been obvious to modify Schultz’s game mat to be
detachable from the game container in order to make the mat easier to use
for game playing. Final Act. 7.
Appellant argues that Schultz does not disclose 1) “a flexible mat that
wraps around a cylindrical container,” 2) “a cylindrical container with two
internal compartments that have separate hinged lids,” and 3) “connectors
for attaching the ends of the flexible mat to the exterior of the cylindrical
container” (Br. 14), and teaches away from detachable connectors by using
an adhesive attachment (Br. 10). Appellant asserts that Simons and Nip do
not overcome these deficiencies, because Simons’ “cylindrical container
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does not have two separate internal compartments that are accessed through
separate lids,” and because Nip does not “disclose a cylindrical container
with multiple interior compartments and hinged lids, where the wrapping of
the flexible mat around the cylindrical container prevents the hinged lids
from being accessed.” Br. 15.
The Examiner responds that Schultz teaches a case (50) with two
compartments (55) having hinged lids (52, 56) for holding game articles, and
a mat that flexes and wraps around the case (50). Ans. 12-13 (citing
Schultz, Figs.l, 2 (“the portions 31, 32, 33 and 36 of mat are fully covering
the exterior of the case 50”)). The Examiner states that because Schultz
discloses these features, Simons and Nip need not show them as well. See
Ans. 13.
We do not agree with Appellant’s arguments because they amount to
attacking the references individually rather than the Examiner’s proposed
combination. With respect to Appellant’s argument that Schultz does not
disclose a flexible mat that wraps around a (cylindrical) container, for the
reasons discussed supra in Rejection I, Appellant’s arguments on this point
are unavailing. Although Schultz’s case is not cylindrical, Simons’ case is
(see Br. 14-15) and Appellant does not provide evidence or argument that
making Schultz’s case cylindrical would have been beyond the abilities of
one of ordinary skill in the art. Indeed, Appellant’s Specification discloses
that “a cylindrical case is preferred,” but that “other oblong and polygonal
shapes can also be used.” Spec. 7:14-16. In addition, Schultz discloses that
“box 50 is divided into two interior cavities such as interior cavity 55.
Correspondingly, box 50 defines a pair of lids 52 and 56 joined to the
remainder of box 50 by respective hinges 53 and 57.” Schultz 5:25-29, Fig.
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3; see also Final Act. 4. We agree with the Examiner that “[ajrticles can be
stored in cylindrical containers in the same manner [as] in a rectangular
container.” Ans. 10. Appellant does not provide persuasive arguments to
the contrary, and, thus, does not show that the Examiner erred in finding that
the combined teachings of Schultz and Simons suggest a flexible mat that
wraps around a cylindrical container, and a cylindrical container with two
internal compartments that have separate hinged lids.
Notwithstanding that Schultz’s game board is flexible, as discussed
supra, the Examiner also relies on Nip for disclosing a flexible game mat
wrapped around a case “for storing in a smaller space” (see Final Act. 5),
and Appellant does explain adequately why the combined teachings of
Schultz and Nip do not suggest a flexible mat as the Examiner finds.
Furthermore, with respect to Appellant’s argument that Schultz
teaches away from using detachable connectors by having the case
adhesively attached to the game board, Appellant does not point to any
disclosure of Schultz that criticizes, discredits, or otherwise discourages
detachable connectors, and this argument is unpersuasive. See In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004). “[M]ere disclosure of alternative
designs does not teach away.” Fulton, 391 F.3d at 1201. Appellant does not
provide persuasive arguments that Nips’ closing element 34, 36, 60, and 62
are not connectors for attaching the ends of the flexible mat to the exterior of
a container, and, thus, does not show that the Examiner erred in finding that
the combined teachings of Schultz and Nip suggest a detachable connector.
Accordingly, we affirm the Examiner’s rejection of claim 1 as
unpatentable over Schultz, Simons, and Nip. Appellant does not separately
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argue claims 2, 3, and 5, which depend from claim 1, and we also affirm the
rejection of these claims for the same reasons.
Although Appellant lists independent claims 7 and 11 under separate
headings, Appellant repeats the arguments addressed above for claim 1. See
Br. 17-19. For the same reasons discussed above for claim 1, we affirm the
Examiner’s rejection of claims 7 and 11. Appellant does not separately
argue claim 8, which depends from claim 7, and, thus, claim 8 falls with
claim 7.
Rejection III; Claims 7, 8, and 10
Appellant argues that claim 7 defines over Schultz and Nip based on
the same arguments used in Rejection II, namely, because Schultz does not
disclose 1) “a flexible mat that wraps around a cylindrical container,” 2) “a
cylindrical container with two internal compartments that have separate
hinged lids” and 3) “connectors for attaching the ends of the flexible mat to
the exterior of the cylindrical container,” and that Nip does not overcome the
deficiencies of Schultz. Br. 20-21.
Notwithstanding that claim 7 does not require a cylindrical container,
each of Appellant’s arguments is addressed above in Rejection II, and are
not persuasive. For the same reasons, discussed above, we affirm the
Examiner’s rejection of claim 7 as unpatentable over Schultz and Nip.
Appellant does not separately argue claims 8 and 10, which depend from
claim 7, and we also affirm the rejection of these claims for the same
reasons.
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Rejection IV; Claims 11, 12, and 14
Appellant argues that that the Examiner selectively chooses various
elements from the “references and joins them together without a proper
showing of motivation.” Br. 22. According to Appellant, it is unreasonable
to “take the rectangular box that is glued to the panels of the Schultz patent
and connect it to the flexible mat of the Simons patent using the connectors
of the Nip publication.” Br. 22. Appellant concludes that the Examiner’s
rejection is based on hindsight because “none of the cited prior art shows the
structure of the game assembly being claimed,” and the Examiner combines
the references “without any showing of motivation and without even
addressing all of the features being claimed.” Br. 22-23.
The Examiner responds that there is motivation to combine the
references, because “[t]he art area recognizes flexible game articles
including game mats being wrapped around for storing in a smaller space
and for easy operation.” Ans. 13. According to the Examiner, the art also
suggests “modifying the game to include a detachable game mat for ease in
playing.” Ans. 14.
The Examiner’s reasoning for the proposed modification does not rely
on impermissible hindsight; rather, it is supported by rational underpinnings
found in the prior art. Appellant does not contest that the Examiner’s
proposed modification to Schultz (making a cylindrical case as taught by
Simons, Figs. 7, 8) would provide variation and accommodate articles of
choice. See Ans. 10. Nor does Appellant contest the Examiner’s position
that “shapes are a choice of personal preference and no new or unexpected
result is expected from change in shape.” Ans. 10. As noted above,
Appellant’s Specification discloses that “a cylindrical case is preferred,” but
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that “other oblong and polygonal shapes can also be used.” Spec. 7:14-16.
The Examiner’s reasoning for further modifying the combination of Schultz
and Simons based on the teachings of Nip so that the game board can be
removed from the case, “for easy use of the game mat” (Ans. 11) is
supported by rational underpinnings. See Nip, Fig. 5. Therein, Nip removes
the case so that the entire game board is accessible for use to make play
easier. See Ans. 14.
The Examiner’s rejection of claim 11 is affirmed. Appellant makes
no separate arguments for dependent claims 12 and 14. Br. 22-23.
Accordingly, these claims fall with claim 11.
DECISION
The Examiner’s rejection of claims 7, 11, 12, and 14 as anticipated by
Schultz is affirmed as to claim 7, and is reversed as to claims 11, 12, and 14.
The Examiner’s rejection of claims 1-3, 5, 7, 8, and 11 as
unpatentable over Schultz, Simons, and Nip is affirmed.
The Examiner’s rejection of claims 7, 8, and 10 as unpatentable over
Schultz and Nip is affirmed.
The Examiner’s rejection of claims 11, 12, and 14 as unpatentable
over Schultz, Simons, and Nip is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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