MICHELLE VALENCIA

Patent Trials and Appeals Board

Jun 2, 2020

2019006880 (P.T.A.B. Jun. 2, 2020)

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.
15/438,640 02/21/2017 MICHELLE D. VALENCIA 29943.07 2396
37833 7590 06/02/2020
Richard C. Litman
Nath, Goldberg & Meyer
112 S. West Street
Alexandria, VA 22314
EXAMINER
DAVISON, LAURA L
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
06/02/2020 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):
mbashah@nathlaw.com
uspto@4patent.com
uspto@nathlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHELLE D. VALENCIA

Appeal 2019-006880
Application 15/438,640
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, KENNETH G. SCHOPFER, and
AMEE A. SHAH, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 7 and 11. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as the
inventor, Michelle D. Valencia. Appeal Br. 3.
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STATEMENT OF THE CASE
Subject Matter on Appeal
The Appellant’s “invention relates to toys and games, and particularly
to a stomp and catch game including a stomp and catch board mounted on a
stabilizing base.” Spec. ¶ 1. The Specification explains that “[a] typical
stomp and catch board is a lever having one end configured for stomping
with the foot and the other end configured to launch a projectile, such as a
beanbag. A central fulcrum rests between the lower surface of the board and
a support surface, such as the ground, a floor, etc.” Id. ¶ 2.
Claims 7 and 11 are the independent claims on appeal. Claim 7,
reproduced below, is illustrative of the claimed subject matter.
7. A stomp and catch game, consisting of:
a planar base, the planar base consisting of an elongated
front portion having a first length and an opposed rear portion
having a second length shorter than the first length, opposed
planar upper and lower surfaces, the opposed rear portion
including a front area and a rear end, the elongated front portion
having a front end and a rear area that merges into the front area
of the rear portion, the elongated front portion has a first width
and the rear portion has a second width larger than the first
width to provide an area large enough to allow a user to stand,
the rear portion of the upper surface having a pair of visual
indicators disposed thereon to indicate where a user should
stand with either foot to hold the lower surface of the base
against a support surface;
a pivoting board having opposed upper and lower
surfaces and opposed first and second ends, wherein the first
end is located in a first length portion of the pivoting board and
the second end is located in a second length portion of the
pivoting board, the first end being configured for stomping on
with the user’s foot, the second end being configured for
releasably supporting and launching a target object in the air for
the user to attempt to catch, wherein each of the first and
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second ends have distinct indicia for indicating where a user
stomps and where a user places the target object, respectively,
further wherein the second length of the pivoting board is
greater than the first length of the pivoting board;
a fulcrum connector pivotally attaching the pivoting
board to the upper surface of the base, wherein the fulcrum
connector comprises:
a pair of hubs mounted on the upper surface of the
base at the front portion thereof, wherein the pair of hubs are
configured to support the lower surface of the pivoting board
thereon; and
an axle having a pair of opposed ends rotatably
mounted in the hubs, the pivoting board being fixed to the axle
for rotation therewith;
a first pad mounted on the upper surface of the base
adjacent the front area of the rear portion and spaced from the
pair of visual indicators, the first pad being located beneath the
first end of the pivoting board, such that the first end of the
pivoting board selectively contacts and rests on the first pad;
a second pad mounted on the upper surface of the base
adjacent the front end of the elongated front portion and
beneath the second end of the pivoting board, such that the
second end of the pivoting board selectively contacts and rests
on the second pad.

Rejections
Claims 7 and 11 are rejected under 35 U.S.C. § 112(b) as indefinite.
Claims 7 and 11 are rejected under 35 U.S.C. § 103 as unpatentable
over Welbourn (US 3,669,451, iss. June 13, 1972), Give a Flip coordination
game, (Mar. 31, 2014), https://funandfunction.com/give-a-flip.html
(hereinafter “Flip”), Jones (US 5,280,922, iss. Jan. 25, 1994), Carr
(US 4,813,665, iss. Mar. 21, 1989), and Nicot et al. (US 2,146,156, iss.
Feb. 7, 1939) (hereinafter “Nicot”).
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ANALYSIS
Indefinite
The Examiner rejects claims 7 and 11 as indefinite. Final Act. 2–3.
The Appellant does not present an argument for this rejection. See Appeal
Br. 10; Reply Br. 4; Ans. 3. Therefore, we summarily sustain the
Examiner’s rejection of claims 7 and 11 under 35 U.S.C. § 112(b) as
indefinite.

Obviousness
The Appellant argues that the Examiner’s reliance on the teachings of
Jones to further modify Welbourn’s catapult game in view of Flip’s
teachings is based on impermissible hindsight reasoning. See Reply Br. 7–8.
The Appellant’s argument is persuasive.
The Examiner finds that Welbourn’s catapult game includes base
member 10 and lever member 20, and that these elements correspond with
the claimed “planar base” and “pivoting board,” respectively. Final
Act. 3–4. The Examiner also finds that Welbourn’s planar base has an
elongated front portion with a first width and an opposed rear portion with a
second width, but the rear portion lacks a “second width [that] is larger than
the [elongated front portion’s] first width to provide an area large enough to
allow a user to stand.” Id. at 4.
To remedy this deficiency, the Examiner relies on Flip’s game to
teach “that it is advantageous to use the pivoting board . . . on a supporting
surface . . . on which a user stands, so that the target object can be launched
from the pivoting board . . . by stomping with the user’s foot to improve
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hand-foot coordination.” Id. at 4–5. The Examiner also relies on Jones’
self-stabilizing apparatus for training a user to kick a soccer ball to teach:
when using a foot-operated game apparatus on a supporting
surface, Jones teaches that it is advantageous to stabilize the
apparatus on the supporting surface by providing a planar base
. . . with a rear portion providing an area large enough to allow
a user to stand . . . , so that the apparatus can be stabilized by
the weight of the user.
Id. at 5 (citing Jones col. 1, ll. 62–64, Figs. 1, 2). Then, the Examiner
determines:
it would have been obvious to one of ordinary skill in the art
. . . to modify the invention of Welbourn by enlarging the rear
portion of the planar base to provide an area large enough to
allow a user to stand, as taught by Jones, such that the second
width is wider than the first width, in order to stabilize the
game on a supporting surface . . . so that the pivoting board can
be stomped on with the user’s foot, as taught by . . . Flip, to
improve hand-foot coordination.
Id. (emphasis added) (citing Jones col. 1, ll. 62–64; Flip 1).
However, Welbourn’s catapult game “is adapted to stably rest upon a
suitable horizontal underlying planar surface” by use of base member plate
portion 11. Welbourn, col. 1, ll. 57–66; see also Ans. 5. The stability is
specific for a catapult game. See Welbourn, col. 1, ll. 7–11, col. 2, ll. 33–35;
Figs. 1–2. And, whether Welbourn’s catapult game is hit with impact
implement 100 (e.g., a mallet) or stomped on by a user’s foot –– like that of
Flip’s game –– the game is used in a similar manner. So, it is unclear why
Welbourn’s device, which is adapted to stably rest upon a suitable horizontal
underlying planar surface, needs to be stable, as it is already stable.
The Examiner explains that “one of ordinary skill in the art would
have been motivated to combine the teaching of Welbourn and Jones in view
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of the teaching of . . . Flip, to yield the predictable result of stabilizing the
base for launching the projectile by means of the user’s foot.” Ans. 7. Also,
“Flip has been cited as evidence that it is known in the art to use a catapult
amusement device of the kind taught by Welbourn on the floor to be struck
by a user’s foot.” Id. at 5. Therefore, it appears that the basis for the
Examiner’s modification is that once Welbourn’s catapult game is placed on
the floor and rearward-portion 20R of lever member 20 is stomped on by a
user, stability is an issue. However, the Examiner does not use evidence or
technical reasoning to explain why Welbourn’s catapult game, which is
adapted to be stable when struck by an impact implement while the game is
situated on a suitable horizontal underlying planar substrate “S,” is not
adapted to be stable when used in a similar manner, i.e., while stomped on
by a user’s foot and the game is situated on the floor. Put simply, the
Examiner fails to adequately explain on the record why Welbourn’s catapult
game is lacking in stability when used by a specific implement (i.e., foot)
and location (i.e., floor) such that the self-stabilizing structure as taught by
Jones provides a remedy. See Reply Br. 7–8. Further, it is notable that
Welbourn’s catapult game and Jones’ self-stabilizing apparatus for training a
user to kick a soccer ball are different in structure and function.
The Examiner also relies on a design choice rationale and teachings
from Carr and Nicot to cure other deficiencies of Welbourn with respect to
the claimed subject matter. See Final Act. 5–7. The additional findings and
rationales directed to these other deficiencies do not cure the inadequately
supported reasoning for modifying Welbourn’s catapult game as discussed
above.
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Thus, we do not sustain the Examiner’s rejection of claims 7 and 11
under 35 U.S.C. § 103 as unpatentable over Welbourn, Flip, Jones, Carr, and
Nicot.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
7, 11 112(b) Indefinite 7, 11
7, 11 103(a) Welbourn, Flip, Jones,
Carr, Nicot

7, 11
Overall
Outcome
7, 11

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED