Ex Parte Nally et al

Board of Patent Appeals and Interferences

Jun 21, 2012

11034700 (B.P.A.I. Jun. 21, 2012)

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.
11/034,700 01/13/2005 Michael Nally 57471/05-007 3190
22206 7590 06/21/2012
FELLERS SNIDER BLANKENSHIP
BAILEY & TIPPENS
THE KENNEDY BUILDING
321 SOUTH BOSTON SUITE 800
TULSA, OK 74103-3318
EXAMINER
LEGESSE, NINI F
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
06/21/2012 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 MICHAEL NALLY and MARC DUBNER
____________________

Appeal 2010-004250
Application 11/034,700
Technology Center 3700
____________________

Before: LINDA E. HORNER, WILLIAM V. SAINDON, and
MICHAEL L. HOELTER, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-004250
Application 11/034,700
2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1, reproduced below with added emphasis, is illustrative of the
claimed subject matter.
1. An air hockey type gaming table comprising:
a game surface;
a wall surrounding said game surface for defining a
border of said game surface for maintaining a game piece on
said game surface, said wall having an inside surface in contact
with said game surface;
an electronic display mounted on an inside surface of
said wall; and
wherein said display is visible to participants during
gameplay.

REJECTIONS
I. Claims 1-20 are rejected 35 U.S.C. § 102(b) as anticipated by Robbins
(US 5,110,128, iss. May 5, 1992).
II. Claims 1-20 are rejected 35 U.S.C. § 103(a) as obvious over Zucchi (US
2003/0168801 A1, pub. Sept. 11, 2003) in view of Robbins.

OPINION
Rejection I – Anticipation by Robbins
The Examiner found that Robbins’ figure 1 discloses a gaming table
with a game surface 12, a wall (puck barrier 22, backboard 24, side panel
26) surrounding the game surface, wherein an electronic display 29 is
mounted on the inside of wall surface 24. Ans. 3.
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Application 11/034,700
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Appellants raise the issue of whether Robbins describes a “wall” as
required by independent claims 1 and 11. App. Br. 4-5. Notably,
Appellants argue that the wall in Robbins is exclusively puck barrier 22, not
backboard 24 or side panel 26. Id.
Appellants first argue that only puck barrier 22 is a wall because it
alone defines a border of the game surface. Reply Br. 2. However, the
Specification does not set forth a special definition of “border,” which
instead can simply be an edge; a “border” is not necessarily an entire
perimeter.1 Likewise, the claims do not require that the wall be of uniform
height. The backboard 24 and side panels 26, which the Examiner considers
part of the wall, share with puck barrier 22 in the function of providing a
border and maintaining the game piece on the game surface. See Robbins,
col. 2, ll. 48-52 (specifying 24 and 26 are “to catch flying pucks and to cause
them to fall back onto the playfield”). As such, the wall in Robbins (22, 24,
26) defines a border, maintains a game piece on the game surface, and is in
contact with the game surface.
Appellants also argue that Robbins labels puck barrier 22 and
backboard 24 separately and for this reason they are separate components.
App. Br. 4. However, Robbins does not indicate that the puck barrier 22 is a
wall and that the backboard 24 (or sides 26) are not a wall. A part can have
many subcomponents. As such, Robbins’ choice to label the puck barrier
and backboard separately is not persuasive that one of ordinary skill in the
art would not consider backboard 24 (or sides 26) as part of a wall as
claimed.

1 See, e.g., “border,” “an outer part or edge,” Webster’s Third New
International Dictionary (1993) (available at
http://lionreference.chadwyck.com) (last visited June 14, 2012).
Appeal 2010-004250
Application 11/034,700
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Accordingly, we sustain the Examiner’s anticipation rejection.

Rejection II – Obviousness over Zucchi and Robbins
The Examiner found that Zucchi teaches a game table with a playing
surface, side wall, and display members 31, 35. Ans. 4. The Examiner
notes that Zucchi teaches that the display can be mounted in “various
locations as desired for visibility with minimal distraction” but does not
explicitly teach a wall-mounted display. Id.; Zucchi, para. [0034]; see also
Zucchi, para. [0029] (“Preferably … the game status indicators are mounted
in the interior of the playing area”). The Examiner introduced the Robbins
reference to teach that wall-mounted displays are well-known in the art of
table games and concluded that providing a side-mounted display would
have been obvious to one having ordinary skill in the art so that the players
can easily monitor their scores. Ans. 4-5.
Appellants argue that the combination would not have been obvious
because “the respective devices teach different and unrelated devices, i.e.,
table with backboard mounted display vs. table having playing surface
mounted display, each of which present very different problems.” App. Br.
7. However, we note that both are directed to table games, specifically air
hockey. Robbins, col. 1, ll. 23-26 (“a … table game … for training in Air
Hockey”); Zucchi, para. [0025] (“table games such as … air hockey”).
Thus, they are in the same field of endeavor and analogous art.
Appellants also argue that neither reference teaches a display mounted
on a wall as claimed. App. Br. 7. Appellants appear to be arguing the
references in isolation, however. Zucchi suggests placing the display “in
various locations as desired for visibility,” and preferably, “in the interior of
the playing area.” Zucchi, paras. [0029], [0034]. This is a strong suggestion
Appeal 2010-004250
Application 11/034,700
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to locate the display in any visible location located along the inside of the
playing area (i.e., the borders within which the game is played). Robbins
merely shows one example of such a location (on a wall). Whether or not
the Robbins display is on a wall as claimed (as Appellants argue) would not
be dispositive because the Examiner’s proposed modification is to the
Zucchi table. See Ans. 4-5 (noting the Examiner does not propose to modify
Zucchi to include the backboard 24 of Robbins but rather finds Robbins
teaches a display on a sidewall). Thus, placing the display on Zucchi’s wall,
as taught by Robbins, would locate it somewhere along frame 28.
In light of the above, we are not apprised of error in the Examiner’s
obviousness rejection.

DECISION
I. We AFFIRM the rejection of claims 1-20 as anticipated by Robbins.
II. We AFFIRM the rejection of claims 1-20 as obvious over Zucchi and
Robbins.
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)(1)(iv).

AFFIRMED

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