STERN PINBALL, INC.

Patent Trials and Appeals Board

Dec 4, 2020

2020001198 (P.T.A.B. Dec. 4, 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.
13/796,261 03/12/2013 Andrew J. Pines 070669.21US1 9140
34018 7590 12/04/2020
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
EXAMINER
PINHEIRO, JASON PAUL
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
12/04/2020 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):
chiipmail@gtlaw.com
clairt@gtlaw.com
jarosikg@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREW J. PINES
____________

Appeal 2020-001198
Application 13/796,261
Technology Center 3700
____________

Before NINA L. MEDLOCK, CYNTHIA L. MURPHY, and
BRUCE T. WIEDER, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1, 2, and 9–11. An oral hearing was held in this
appeal on November 19, 2020. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed April 8, 2019) and Reply Brief (“Reply Br.,” filed December 2, 2019),
and the Examiner’s Answer (“Ans.,” mailed October 2, 2019), and Final
Office Action (“Final Act.,” mailed December 20, 2018). Appellant
identifies Stern Pinball, Inc. as the real party in interest (Appeal Br. 1).
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CLAIMED INVENTION
The claimed invention relates to “an improved tilt sensing system and
method for an amusement game device, such as a pinball machine”
(Spec. 1:23–24).
Claims 1 and 9, reproduced below, are the independent claims on
appeal, and representative of the claimed subject matter:
1. A method for controlling operation of a pinball machine,
comprising:
using an accelerometer positioned with a game cabinet of
the pinball machine to sense an inclination of the game cabinet;
and
causing play of the pinball machine to be inhibited in
whole or in part when the inclination of the game cabinet as
sensed by the accelerometer exceeds an inclination threshold that
was set relative to a reference idle position for the game cabinet.
9. A pinball machine, comprising:
a game cabinet;
game output devices supported by the game cabinet;
game input devices supporting by the game cabinet;
a processing device supported by the game cabinet for
controlling operations of the game output devices during play of
the pinball machine at least in part based upon signals received
from the game input devices; and
an accelerometer in communication with the processing
device, the accelerometer being used to sense an inclination of
the game cabinet and issue a signal to the processing device when
the inclination of the game cabinet as sensed by the
accelerometer exceeds an inclination threshold that was set
relative to a reference idle position for the game cabinet;
wherein the processing device further controls operations
of one or more of the game output devices and the game input
device using the signal from the accelerometer.
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REJECTION
Claims 1, 2, and 9–11 are rejected under 35 U.S.C. § 102(e) as
anticipated by Stellenberg (US 2013/0300058 A1, published Nov. 14, 2013).
BACKGROUND
This application was the subject of a previous proceeding before this
Board (Ex parte Pines, Appeal 2017-001404, 2018 WL 799029 (PTAB
Jan. 29, 2018)). In the earlier proceeding, Appellant argued, as it does now,
that Stellenberg cannot be relied on as a reference under 35 U.S.C. § 102(e)
because the inventor is entitled to an invention date at least before July 13,
2012, which the parties agree is the earlier filing date to which Stellenberg is
entitled.
During prosecution, and prior to the Board’s January 2018 decision
(“Decision”), Appellant submitted a Declaration under 37 C.F.R. § 1.131 of
the named inventor, Andrew Pines, on February 18, 2016 (the “2016 Rule
131 Declaration”) in an effort to overcome the rejection of then pending
claims 1, 2, 8–11, and 16 under 35 U.S.C. § 102(e) as anticipated by
Stellenberg. Mr. Pines states, in that declaration, that he conceived the
claimed invention before July 13, 2012, and that he worked diligently, from
before July 13, 2012 until March 12, 2013, to reduce the invention to
practice and finalize the application for patent. But, Appellant presented no
evidence, e.g., original exhibits of drawings or records, or photocopies
thereof, to support Mr. Pines’s averments.
Accordingly, the Examiner determined, and the Board agreed, that
Appellant failed to allege facts and present evidence sufficient to satisfy the
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requirements of Rule 131;2 as such, the 2016 Rule 131 Declaration was
ineffective to remove Stellenberg as a reference (Decision 4–7).
ANALYSIS
Appellant’s March 2018 Rule 131 Declaration
Following the Board’s January 2018 decision, in subsequent
prosecution, Appellant submitted a further Rule 131 Declaration dated
March 30, 2018 (the “Pines Decl.”), which Appellant maintains satisfies all
the requirements of Rule 131, and is sufficient to overcome the Stellenberg
reference (Appeal Br. 3–18). In this 2018 declaration, Mr. Pines states that
he invented the claimed subject matter before July 13, 2012, as evidenced by
an email, attached in an accompanying Appendix A (Pines Decl. ¶ 9). And
he declares that he worked diligently, from before July 13, 2012 until
March 12, 2013, to reduce the invention to practice and finalize the
application for patent, as evidenced by accompanying Attachments B
through F (Pines Decl. ¶¶ 10–20).

2 37 C.F.R. § 1.131 provides that a party, in certain circumstances, may
establish, by a showing of facts, invention prior to a reference applied in a
rejection and, thus, remove that reference as available prior art. See
37 C.F.R. § 1.131(a). The rule also provides that:
[t]he showing of facts for an oath or declaration under
paragraph (a) of this section shall be such, in character and
weight, as to establish reduction to practice prior to the
effective date of the reference, or conception of the invention
prior to the effective date of the reference coupled with due
diligence from prior to said date to a subsequent reduction to
practice or to the filing of the application. Original exhibits of
drawings or records, or photocopies thereof, must accompany
and form part of the affidavit or declaration or their absence
must be satisfactorily explained.
37 C.F.R. § 1.131(b) (emphasis added).
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The Examiner takes the position, as set forth in the Final Office
Action, that Appellant’s submitted evidence, i.e., the email attached as
Appendix A of the Pines Declaration, is “insufficient to establish a
conception of the invention prior to the effective date of the Stellenberg
reference” (Final Act. 5–6). The Examiner, thus, maintains that the claims
are properly rejected as anticipated by Stellenberg (id. at 2–5).
The document in question is an email from the named inventor,
Andrew Pines, to George Gomez at “sternpinball.com” (the “Pines email”).
In this email, Mr. Pines inquires of Mr. Gomez, “what would you think of
using an accelerometer in place of the plumb tilt?”;3 and states, “[i]t would
be a single chip added to the coin door board” (Pines Decl., Appendix A).
Mr. Pines opines “[i]t might be tricky to get the same feel [as with the plumb
tilt]”; but, he concludes, “it might be worth exploring at some point” (id.).
Appellant variously argues that the Pines email is sufficient for one of
ordinary skill in the art to understand that the inventor had possession of the
claimed invention (i.e., that the email “provides evidence of using an
accelerometer positioned within a game cabinet to sense an inclination of the
game cabinet as presently recited” (Appeal Br. 7); that “there is ample

3 As Mr. Pines explains in the declaration, and as also described in the
Specification, to prevent abuse of amusement game devices of the type
having a cabinet, which houses a playfield assembly including a playing
field or playfield which may be inclined, e.g., pinball machines, device
manufacturers have developed tilt prevention mechanisms that terminate
play of the game if the amusement game device is tilted beyond
predetermined limits (Pines Decl. ¶ 7; see also Spec. 1:4–16). In the art of
pinball machines, these tilt prevention mechanisms have conventionally
included a mechanical plumb tilt designed to stop play when the pinball
machine is inclined or shoved beyond a predetermined threshold (Pines
Decl. ¶ 7; see also Spec. 1:16–21).
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evidence that the noted ‘coin door board’ is part of an amusement game
cabinet, and more specifically is part of a pinball machine as claimed” (id.);
that “there is ample evidence that the email is directed specifically towards a
pinball machine as claimed” (id. at 15); and that “because the functionality
of a plumb tilt mechanism was known to one of ordinary skill in the art, . . .
there is sufficient evidence in the email to indicate that the inventor
possessed the requisite functionality of the accelerometer” and “sufficient
evidence to demonstrate that the invention was to be used on a pinball
machine” (id. at 16)).
To remove a patent (or, in this case, a patent publication) as a prior art
reference, the record must establish either (1) a conception and reduction to
practice before the filing date of the patent or (2) a conception before the
filing date of the patent combined with diligence and reduction to practice
after that date. See Taurus IP, LLC v. DaimlerChrysler Corp., 726 F.3d
1306, 1323 (Fed. Cir. 2013). “Reasonable diligence must be shown
throughout the entire critical period, which begins just prior to the
competing reference’s effective date and ends on the date of the invention’s
reduction to practice.” Perfect Surgical Techniques, Inc. v. Olympus Am.,
Inc., 841 F.3d 1004, 1007 (Fed. Cir. 2016). And “[a]n inventor’s testimony
regarding his reasonable diligence must be corroborated by evidence.” Id.
Here, assuming, without deciding, that the Pines email is sufficient to
establish conception, we are not persuaded that the evidence and arguments
before us are sufficient to establish diligence from just prior to July 13, 2012
to Appellant’s constructive reduction to practice, i.e., the filing of the present
application on March 12, 2013.
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Mr. Pines alleges that he conceived the claimed invention prior to
July 13, 2012 and that he worked diligently, from before that date until
March 12, 2013, to reduce the invention to practice and finalize the
application for patent. But, the earliest date after July 13, 2012, for which
Appellant provides any evidence, is February 25, 2013 (see Pines Decl. ¶ 11
(referring to a copy of a final printed circuit board design document
(Attachment B) dated February 25, 2013) — i.e., a period of over seven (7)
months, for which Appellant provides no corroborating evidence of diligent
reduction to practice.
An applicant must account for the entire period during which
diligence is required by either affirmative acts or sufficient excuse for
inactivity. See Gould v. Schawlow, 363 F.2d 908, 918 (CCPA 1966); see
also Griffith v. Kanamaru, 816 F.2d 624, 626 (Fed. Cir. 1987). And
although constant effort is not required, there must be some record evidence
to explain the delay or inactivity. In re Nelson, 420 F.2d 1079, 1081 (CCPA
1970) (finding an insufficient showing of reasonable diligence where some
two months elapsed between the date of the applicable reference and the
date of applicant’s first document naming the specific compound to be used
in the antidepressant pharmaceutical composition, for which a patent was
sought, and where there was no reason in the record to explain the delay).
Here, the only evidence directly related to actions that may have taken
place during the period from July 13, 2012 to February 25, 2013 is
Mr. Pines’s statement in the Declaration that “[f]rom the date I conceived of
the idea of using an accelerometer in a cabinet of a pinball machine . . .,
I worked diligently to research and design a Printed Circuit Board (“PCB”)
to embody my invention.” Pines Decl. ¶ 10. But, that statement in the
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absence of underlying evidence, amounts to a mere pleading and is
insufficient to establish diligence. Cf. In re Harry, 333 F.2d 920, 922
(CCPA 1964) (“This is not proof or ‘showing of facts’ but mere pleading. It
asserts that facts exist but does not tell what they are or when they occurred.
The Patent Office must have such facts . . . to judge . . . whether there was
diligence.”).
Appellant argues that it has provided sufficient evidence to
demonstrate that Mr. Pines diligently worked, from “prior to July 13, 2012,
until the receipt of a fully functional test PCB, . . . to reduce the invention to
practice,” and asserts that there is “no evidence that a design and
construction of a single chip PCB accelerometer would take any less time
than the engineer on this project took” (Reply Br. 4). Yet, although we
might surmise that Mr. Pines probably was diligent, mere surmise cannot
take the place of proof. See Ireland v. Smith, 97 F.2d 95, 100 (CCPA 1938)
(“We may surmise that appellant was probably diligent in the matter on
May 6, 1930, and immediately prior thereto, and that such diligence
continued until May 31, 1930, his filing date; but mere surmise cannot take
the place of proof, and there is no proof in the record of such diligence.”).
On this record, even assuming the evidence before us is sufficient to
show conception before July 13, 2012, we are not persuaded that Appellant
has provided sufficient evidence to establish the reasonable diligence for the
duration of the critical period (i.e., from prior to July 13, 2012 to March 12,
2013) necessary to antedate the Stellenberg reference.
Appellant’s Additional Argument
Appellant additionally argues that Stellenberg cannot be relied on as a
reference because Stellenberg is not entitled to a filing date earlier than
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July 2, 2013, which is after the March 12, 2013 filing date of the present
application (Appeal Br. 19–22). Citing the Federal Circuit’s holding in
Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375
(Fed. Cir. 2015), Appellant, thus, maintains that the Examiner erred in
affording Stellenberg the benefit of the July 13, 2012 filing date of U.S.
Provisional Patent Application No. 61/741,126 because “the written
description of [the provisional application] does not support at least one
claim[ ] of [the Stellenberg publication]” (id. at 20).
Central to the dispute between Appellant and the Examiner is whether
the Federal Circuit’s holding in Dynamic Drinkware applies to both issued
patents and published patent applications or only to issued patents.
However, even assuming, without deciding, that Dynamic Drinkware applies
to published patent applications, we agree with the Examiner that the
provisional application provides written description support for at least
claim 17 of the Stellenberg reference (see Ans. 7).4
For the reasons set forth above, we are not persuaded that the
Examiner erred in determining that Appellant’s Rule 131 Declaration is
insufficient to remove Stellenberg as available § 102(e) prior art. And

4 Claim 17 reads:
17. A non-transitory computer-readable storage medium having
instructions stored thereon that, upon execution by a processor within a
pinball machine, cause the pinball machine to:
periodically or continuously receive leveling information
detected by one or more accelerometers during a pinball game; and
perform at least one of:
discourage the player from applying force to the pinball
machine in response to the leveling information meeting a value;
or
encourage a player to apply force to the pinball machine.
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Appellant has presented no argument that Stellenberg fails to disclose one or
more elements of claims 1, 2, and 9–11. Therefore, we sustain the
Examiner’s rejection of claims 1, 2, and 9–11 under 35 U.S.C. § 102(e).
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 9–11 102(e) Stellenberg 1, 2, 9–11
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED