Ex Parte Gannon

Board of Patent Appeals and Interferences

Jun 18, 2009

10436200 (B.P.A.I. Jun. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL EDWARD GANNON
____________

Appeal 2009-001484
Application 10/436,200
Technology Center 3700
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Decided:1 June 18, 2009
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Before TONI R. SCHEINER, DONALD E. ADAMS, and ERIC GRIMES,
Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-001484
Application 10/436,200

This appeal under 35 U.S.C. § 134 involves claims 34, 37-45, 47, 48,
50, and 51, the only claims pending in this application. We have jurisdiction
under 35 U.S.C. § 6(b).

STATEMENT OF THE CASE
The claims are directed to a method for playing a game (claims 34,
37-44, and 50) and a system for playing a game (claims 45, 47, 48, and 51).
Claim 34 is illustrative:
34. A method for playing a game, comprising:
providing a flat horizontal playing surface for at least one player to
toss round balls by hand while standing behind a specified line at one end of
a flat horizontal playing surface, the at least one player tossing the balls with
a goal of having the balls land in one of two flat horizontal scoring zones on
the opposite end of the flat horizontal playing surface, the flat horizontal
scoring zones each comprising at least two flat horizontal sections and a
backstop at the end of the flat horizontal playing surface, wherein the flat
horizontal scoring zone does not include any attached containers, wherein
the flat horizontal playing surface can be rolled up and stored, and wherein
side rails are not utilized to secure the flat horizontal playing surface;
allowing the at least one player to designate at least two different
point amounts corresponding to the at least two flat horizontal sections of
the flat horizontal scoring zone, the at least two different point amounts
comprising positive and/or negative numbers;
allowing the at least one player to designate a winning point amount
corresponding to the number of points required to win the game; and
allowing the at least one player to continue to toss the balls until at
least one player reaches the designated winning point amount;
wherein whichever scoring zone the majority of a ball is on at the end
of the game determines a point value for each ball.

The Examiner relies on the following evidence:
Vogelsang US 336,179 Feb. 16, 1886
Stites US 5,556,095 Sep. 17, 1996

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Application 10/436,200

The rejections presented by the Examiner are as follows:
1. Claims 34, 37, 39-45, 47, 48, 50, and 51 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Vogelsang.
2. Claim 38 stands rejected under 35 U.S.C § 103(a) as unpatentable over
the combination of Vogelsang and Stites.
We reverse.

Anticipation:
ISSUE

Does Vogelsang teach a round ball?

FINDINGS OF FACT
FF 1. Vogelsang teaches a game that utilizes game pieces (“sliding
blocks”) that are “flat and smooth on the bottom, and preferably rounded on
the tops” (Vogelsang 1: 102 and 2: 1-3). For clarity, we reproduce
Vogelsang’s figure 6 below:

“Fig. 6 is a sectional elevation of one of the sliding blocks” (Vogelsang 1:
49-50).
FF 2. Vogelsang teaches that in “playing the game the sliding blocks . . .
are placed on a given line in one figure . . ., and pushed with the cue . . . so
as to lodge in one of the squares in the other figure” (Vogelsang 2:14-17).
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Appeal 2009-001484
Application 10/436,200

FF 3. The Examiner does not dispute Appellant’s contention that “a semi-
spherical block is by definition not a ball, as a ball is ‘a spherical or almost
spherical object or body’ (see the definition in The American Heritage
Dictionary, Office Edition, 4th Edition)” (App. Br. 4).
FF 4. The Examiner does not dispute Appellant’s contention that the term
“‘round’ is defined as ‘spherical, ball-shaped’” or that the term “‘spherical’
is defined as ‘a 3-D surface, all points of which are equidistant from a fixed
point. (See The American Heritage Dictionary, Office Edition, 4th Edition
for all these definitions)” (Reply Br. 4).

PRINCIPLES OF LAW
Because the hallmark of anticipation is prior invention, the
prior art reference – in order to anticipate under 35 U.S.C. §
102 – must not only disclose all elements of the claim within
the four corners of the document, but must also disclose those
elements “arranged as in the claim.” Connell v. Sears, Roebuck
& Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983).

Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).

ANALYSIS
Claim 34 is drawn to a method for playing a game that requires, inter
alia, at least one player to toss round balls by hand. The only other
independent claim on this record, claim 45, is drawn to a system for playing
a game and requires, inter alia, round balls to toss by hand.
The Examiner finds that “the claim[s] as presented do[ ] not require
the ball[s] to be completely round” (Ans. 6). Based on this interpretation of
the term “round balls,” the Examiner concludes that “Vogelsang clearly
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Application 10/436,200

shows a round ball (please refer to figure 6, which shows the projectile has
rounded tops, also see page 1, column 1 [sic], lines 1-3)” (id.). We are not
persuaded.
Appellant’s claims require a round ball that is tossed by a player not a
sliding block with a rounded top that is pushed with a cue (FF 1-2). The
Examiner offers no persuasive evidence to rebut Appellant’s definitions of
the terms “ball,” “round,” or “spherical” (FF 3-4) which are inconsistent
with the Examiner’s interpretation of Vogelsang’s sliding blocks as a round
ball.

CONCLUSION OF LAW
Vogelsang fails to teach a round ball.
The rejection of claims 34, 37, 39-45, 47, 48, 50, and 51 under 35
U.S.C. § 102(b) as being anticipated by Vogelsang is reversed.

Obviousness:
ISSUE
Does Stites make up for Vogelsang’s failure to teach a round ball?

FINDINGS OF FACT
FF 5. Stites teaches “a board for the game of shuffle-board” (Stites, col. 1,
ll. 7-8).
FF 6. Stites teaches that “[t]he game is played with eight disk like pucks”
(Stites, col. 1, ll. 16-17).
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Appeal 2009-001484
Application 10/436,200

PRINCIPLES OF LAW
Obviousness requires a suggestion of all the elements in a claim
(CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003))
and “a reason that would have prompted a person of ordinary skill in the
relevant field to combine the elements in the way the claimed new invention
does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).

ANALYSIS
As Appellant explains, “claim 38 depends on [c]laim 34, and . . .
Stites does not overcome the deficiencies of Vogelsang with respect to
[c]laim 34 or [c]laim 38” (App. Br. 7-8). We agree.
Rather than teaching a round ball as is required by all of Appellant’s
claims, Stites teaches the use of “disk like pucks” (FF 6).

CONCLUSION OF LAW
Stites fails to make up for Vogelsang’s failure to teach a round ball.
The rejection of claim 38 under 35 U.S.C § 103(a) as unpatentable
over the combination of Vogelsang and Stites is reversed.

REVERSED

cdc

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