Ex Parte Cerpok

Patent Trial and Appeal Board

Nov 21, 2014

13082559 (P.T.A.B. Nov. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MICHAEL CERPOK
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Appeal 2012-010188
Application 13/082,559
Technology Center 3700
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Before STEFAN STAICOVICI, EDWARD A. BROWN, and
TIMOTHY J. GOODSON, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 15–21, which are the only pending claims.
Br. 3. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

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Claimed Subject Matter
The claimed subject matter is directed to a back-stop for a team sport.
Claims 15 and 20 are independent. Claim 15 is illustrative of the claimed
subject matter and reads:
15. A back-stop for a team sport comprising:
a generally flat, rectangularly shaped base with a lower
surface configured to be supported at ground level and an upper
surface, the base including a positioning element on the upper
surface for receiving a goal pin thereon;
a backboard attached to a rear edge of the base so as to
have a stored position in which the backboard lies flat on the
upper surface of the base and an operative or active position in
which the backboard extends upwardly from the rear edge of
base at approximately a 90°; and
a mechanism connected between the base and the
backboard to maintain the base and backboard in the operative
or active position.

Rejections
Appellant requests review of the following rejections:
Claims 15 and 20 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Stender (US 3,794,325, issued Feb. 26, 1974).
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stender.
Claims 17 and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stender and Carr (US 4,330,130, issued May 18, 1992).
Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stender, Carr, and Johnson (US 2,430,681, issued Nov.
11, 1947).

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ANALYSIS
Anticipation of claims 15 and 20 by Stender
Claim 15
Claim 15 recites a back-stop for a team sport comprising, inter alia, “a
generally flat, rectangularly shaped base with . . . an upper surface, the base
including a positioning element on the upper surface for receiving a goal pin
thereon.” Emphasis added.
The Examiner finds that Stender discloses base member 20 with upper
surface 21 and holes 24 formed on upper surface 21, “which may be
considered ‘positioning element(s)’ or in the alternative the areas between
the holes on the upper surface 21 may be considered ‘positioning
element(s)’.” Answer 4.
Appellant contends that Stender’s holes 24, or the areas between holes
24, do not correspond to the claimed “positioning element on the upper
surface.” Br. 8–9. Firstly, Appellant contends that the “areas between the
holes” in Stender is simply an upper surface and there is no positioning
element on the upper surface. Id. at 9. Secondly, Appellant contends that a
hole is not an element “on” an upper surface. Id. at 10. Appellant also
contends that a hole cannot receive a goal pin “thereon,” but at most, can
receive a goal pin “therethrough or therein.” Id. Appellant asserts that “a
hole is in an upper surface not on an upper surface.” Id.
Appellant’s contentions are not persuasive. Claim 15 recites the
location (“on the upper surface”) and the function (“for receiving a goal pin
thereon”) of the positioning element, but no particular structure of the
positioning element. Appellant’s Specification describes that “[t]he upper
surface of base 12 includes a positioning element 40.” Spec. 6, l. 24
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(emphasis added). As such, the Specification describes positioning element
40 as being part of the upper surface. The Specification also describes that
“[p]ositioning element 40 can simply be a spot provided to aid in properly
positioning a goal pin 50.” Id. at 8, ll. 2–3 (emphasis added). The
Specification does not define “spot.” We note that Figure 4 shows
positioning element 40 on base 12. The Specification does not describe the
structure of the illustrated positioning element 40. Consistent with the
Specification, we construe the recitation “for receiving a goal pin thereon” in
claim 15 to mean “for supporting a goal pin thereon.”
In response, the Examiner states that the areas between holes 24 in
Stender are “spots” on the upper surface. Answer 7. The Examiner also
states that these areas only need to be capable of being used as positioning
elements to meet the claim limitations. Id.
A dictionary definition of “spot” is “5 a: a particular place, area, or
part.” Merriam-Webster’s Collegiate Dictionary 1207 (11th ed. 2003).
Considering the claimed “positioning element” as a “spot,” and applying this
definition, the areas between holes 24 in Stender can be considered as
particular places, or particular areas. Accordingly, Appellant does not
apprise us of any error in the Examiner’s determination that the areas
between holes 24 in Stender meet the claim limitation of “a positioning
element on the upper surface for receiving a goal pin thereon.”
The Examiner determines that Stender’s holes 24 are positioned on
the upper surface 21 of the base. Answer 6. The Examiner states that
whether a goal pin may be positioned “thereon” is solely a function of the
goal pin’s diameter, and that a goal pin having a larger diameter than one of
the holes may be positioned on the hole. Id. at 7.
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Appellant’s contention that Stender’s holes 24 are not elements “on”
an upper surface is not persuasive. In this regard, Appellant does not direct
us to a definition of the term “on” in the Specification. A dictionary
definition of the term “on” is “1 b: — used as a function word to indicate
position in or in contact with an outer surface . . .
. . . .” Merriam-Webster’s Collegiate Dictionary 865 (11th ed. 2003)
(emphasis added). We understand that such “cut” would extend into, that is,
below the outer surface of the finger. Consistent with this definition,
Stender’s holes can be considered to be “on” the upper surface of base
member 20. Thus, Appellant does not apprise us of any error in the
Examiner’s determination that holes 24 in Stender meet the claim limitation
of a “positioning element.”
In view of the above, we sustain the rejection of claim 15 as
anticipated by Stender.
Appellant’s arguments for claim 20 are substantially the same as those
presented for claim 15. Br. 11–13. Accordingly, we also sustain the
rejection of claim 20 as anticipated by Stender.
Obviousness of claim 16 over Stender
Claim 16 depends from claim 15 and recites numerical dimensions for
the base and the backboard. The Examiner finds that Stender does not
disclose the claimed dimensions, but determines that absent a showing of
unexpected results, it would have been obvious to use the claimed
dimensions in fabricating Stender’s device depending on the playing
characteristics that are desired in the game. Answer 5.
Appellant contends that Stender does not teach or suggest that a
positioning element for a goal can or should be provided. Br. 13.
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This contention is not persuasive. First, claim 16 does not specify any
particular size or shape of the goal pin. Second, Appellant does not provide
any persuasive argument or evidence to show that the areas between holes
24 in Stender cannot “receiv[e] a goal pin thereon.” Third, the Examiner
determines that whether a goal pin may be positioned on (i.e., is capable of
being supported on) the upper surface in Stender depends on the goal pin’s
diameter. Answer 7. Appellant does not provide any persuasive argument
or evidence to show that, in Stender, a goal pin could not be supported on
the upper surface at the locations of one of holes 24. In this regard, claim 16
does not recite any limitation that precludes, for example, a goal pin from
being supported partially by areas between holes 24 while partially
overlying a hole 24.
Appellant acknowledges that no unexpected results can be shown for
the claimed dimensions. Br. 13. However, Appellant contends that the
claimed dimensions would never be used by Stender because its game uses
different playing characteristics. Id.
In response, the Examiner correctly states that Appellant does not
provide any evidence to support this contention. Answer 7.
Appellant also contends that Stender is non-analogous art. Br. 13. In
particular, Appellant contends that Stender is not reasonably pertinent to the
present invention. Id. at 13–15.
Appellant’s contention is not persuasive. The two separate tests for
determining whether a prior art reference is analogous are: (1) whether the
art is from the same field of endeavor, regardless of the problem addressed,
and, if not, (2) whether the reference is reasonably pertinent to the particular
problem with which the inventor is involved. In re Bigio, 381 F.3d 1320,
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1325 (Fed. Cir. 2004). Here, Appellant’s Specification states that the
invention “generally relates to a game or team sport, and equipment for
playing the game or team sport.” Spec. 1, ll. 14–15. Likewise, Stender’s
apparatus is directed to a game and equipment for playing the game. Claim
16 is directed to a back-stop for a team sport. Stender’s target assembly 11
includes base member 20 and backboard 20. Stender discloses that the
apparatus can be used for team games. See Stender, col. 3, l. 34. Appellant
does not respond persuasively to the Examiner’s finding that Stender’s
apparatus is a back-stop for a team game (Answer 7), as claimed. In
addition, one way to demonstrate that a reference is analogous under the
same field of endeavor prong is by showing that the reference describes
something that is structurally similar to that claimed. In re Bigio, 381 F.3d
at 1325–26. Appellant does not provide any persuasive argument that
Stenders’ apparatus is not structurally similar to the claimed back-stop.
In view of the above, we sustain the rejection of claim 16 as being
obvious over Stender.
Obviousness of claims 17 and 21 over Stender and Carr
Claims 17 and 21 depend from claims 15 and 20, respectively, and
recite limitations regarding the goal pin. The Examiner finds that Stender
does not disclose the claimed goal pin. Answer 5. The Examiner also finds
that Stender uses cups as targets for a “bowling type game.” Id. The
Examiner finds that Carr discloses the use of free-standing goal pins as
targets in such games. Id. The Examiner concludes that it would have been
obvious to use Carr’s goal pins instead of cups as the targets in Stender’s
game “to better simulate the effect of bowling pins being knocked over.”
Id.; see also id. at 7–8.
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Stender discloses that each hole 24 receives a cup-like receptacle 26.
See Stender, col. 2, ll. 6–10; Figs. 3–5. A launched projectile 13 is deflected
into one of the receptacles 26 by deflector plate 27. See id. at Abstract; Fig.
1.
Figure 1 of Carr depicts a bowling game in which flying saucer 23 is
used to knock down standing pins, such as pins 17 and 19, supported on a
base 11. We agree with the Examiner that Stender’s receptacles 26 can be
considered “targets.” However, we agree with Appellant that the Examiner
does not adequately explain how Stender discloses a “bowling game” (see
Br. 14), and thus, why one skilled in the art would look to Carr to modify
Stender’s receptacles 26. We also agree with Appellant that the Examiner
does not articulate an adequate reason with a rational underpinning why one
skilled in the art would substitute Stender’s receptacles 26 with Carr’s pins.
Stender’s receptacles 26 are configured to receive projectile 13 deflected by
deflector plate 27. See Stender, Fig. 1. The Examiner does not adequately
explain how Carr’s pins, which are configured to stand upright and be
knocked down by flying saucer 23, would provide a substitute for Stender’s
receptacles.
In view of the above, we do not sustain the rejection of claims 17 and
21 as being obvious over Stender and Carr.
Obviousness of claims 18 and 19 over Stender, Carr, and Johnson
Claims 18 and 19, which depend from claim 17, recite additional
limitations for the elongated pin. The Examiner’s application of Johnson for
the rejection of claims 18 and 19 (Answer 6) fails to cure the deficiencies of
the Examiner’s reliance on Stender and Carr for the rejection of claim 17.
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Thus, we do not sustain the rejection of claims 18 and 19 as being obvious
over Stender, Carr, and Johnson.

DECISION
We affirm the rejections of claims 15, 16, and 20, and reverse the
rejections of claims 17–19 and 21.
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-IN-PART

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