Ex Parte Lipscomb et al

Board of Patent Appeals and Interferences

Oct 2, 2009

10617477 (B.P.A.I. Oct. 2, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte STEVEN ROY LIPSCOMB, JOHN MICHAEL CONTI,
and JAMES JOSEPH CUOMO
__________

Appeal 2009-004292
Application 10/617,477
Technology Center 3700
__________

Decided: October 2, 2009
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a poker
table. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appeal 2009-004292
Application 10/617,477

Statement of the Case
Background
“Various poker game tournaments are known to be televised. Because
of the various camera angles required and the effects of shadows,
improvements have been made to optimize televising of such game
tournaments” (Spec. 1 ¶ 0002).
The Claims
Claims 7, 22, and 31-40 are on appeal.1 We will focus on claims 7,
31, and 33, which are representative and read as follows:
7. A poker table comprising:
a tabletop defining an opaque, planar playing surface
having a plurality of player stations and a dealer station;
one or more supports for supporting the tabletop in a
horizontal position and at a predetermined height;
a translucent, planar light window, coplanar with the
plane of the playing surface;
a light source configured to project light continuously
upwardly through the light window; and
an arm rest extending substantially around the outer
periphery of the light window.

31. A poker table comprising:
a tabletop defining an opaque, planar playing surface
having a plurality of player stations and a dealer station;
one or more supports for supporting the tabletop in a
horizontal position and at a predetermined height;
an elongated light window extending around a
substantial portion of the periphery of the playing surface
and past the plurality of player stations; and

1 Claims 9 and 10 stand allowed.
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a light source configured to project light continuously
through the light window to the space above the playing
surface.

33. The poker table [as recited in claim 31, wherein the
light window is planar and coplanar with the playing
surface] further including an arm rest extending around the
outer periphery of the light window.

The prior art
The Examiner relies on the following prior art reference to show
unpatentability:
Flannery US 2001/0030393 A1 Oct. 18, 2001

The issue
The Examiner rejected claims 7 and 31-40 under 35 U.S.C. § 103(a)
as being obvious over Flannery (Ans. 3-4).
The Examiner finds that “Flannery teaches a table, an opaque
tabletop, a dealer, a plurality of player positions, a translucent planar
window with a light source” (Ans. 3). The Examiner finds it obvious to the
skilled artisan “to place the light source anywhere desired or expedient on
the table. Such would be considered a design issue and would present little
or no difficulty to one of ordinary skill” (Ans. 3).
Appellants contend that “[i]t would not have been obvious to have
modified Flannery's casino game so that the arm rest extends substantially
around the light window's outer periphery, because that would defeat the
entire purpose of the betting spaces 22” (App. Br. 5). Appellants contend
that “[t]he betting spaces need to be arranged in the center of the playing
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surface 14, away from the arm rest, so that the betting spaces can be reached
by the croupier and players” (App. Br. 5).
Appellants also contend that “[i]t would not have been obvious to
have modified Flannery's casino game to provide this feature of continuous
illumination, because that would defeat the entire purpose of the betting
spaces 22” (App. Br. 6).
In view of these conflicting positions, we frame the obviousness issue
before us as follows:
Have Appellants demonstrated that the Examiner erred in finding that
Flannery renders the claims obvious?
Findings of Fact (FF)
1. Flannery teaches “a casino table 12 having a felt playing
surface 14 as shown in FIGS. 1 and 2. A croupier 16 is positioned on one
side of the table 12 and one player 18 or more stand around the remaining
sides of the table 12” (Flannery 1 ¶ 0019).
2. Figure 1 of Flannery is reproduced below:
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“FIG. 1 is a perspective view of a betting table” (Flannery 1 ¶ 0011).
3. Flannery teaches, in Figure 1, that the table has supports which
hold the tabletop in a horizontal position at a predetermined height (see
Flannery, Fig. 1; FF 2).
4. Flannery teaches that in “the preferred embodiment, each
betting space 22 of the betting area 20 is formed on a sheet of translucent
material” (Flannery 2 ¶ 0023).
5. Flannery teaches that each betting space “has a light beneath the
playing surface to separately illuminate each betting space. A panel of
switches 47 is located near the croupier 16” (Flannery 2 ¶ 0023).
6. Flannery teaches that “[a]fter the house side combination is
selected, a switch is activated to illuminate the betting space containing the
house side combination as shown at 46 or to occlude the house side
combination in the event all of the betting spaces are illuminated as shown in
FIG. 3” (Flannery 2 ¶ 0023).
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7. Flannery teaches that “the shape and arrangement of the betting
areas 22 can be altered to change the type of bets made” (Flannery 2 ¶
0028).
8. Flannery teaches that “[a]s shown in FIG. 5, betting spaces 22
can be of varying shapes and arranged in various manners such as a pyramid
68” (Flannery 2 ¶ 0028).
9. The Specification teaches that “[a]n optional arm rest 46 may
be disposed around the playing area 22 of the game table 20” (Spec. 4 ¶
0018).
10. The Specification teaches that “[t]he arm rest 46 may be padded
and formed to have a width 48 (FIG. 3), for example, 4 inches” (Spec. 4 ¶
0018).
11. Figure 3 of the Specification is reproduced below:

“FIG. 3 is a perspective view of the game table” (Spec. 2 ¶ 0008).
12. Flannery’s figure 1 discloses a raised surface which is disposed
around the outer periphery of the playing area and which is structurally
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identical to the raised arm rest disclosed in Figure 3 of the Specification (see
FF 1, FF 7).
Principles of Law
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
The Supreme Court has recently emphasized that “the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Id. at 416. “If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.” Id. at 417.
Moreover, an “[e]xpress suggestion to substitute one equivalent for
another need not be present to render such substitution obvious.” In re Fout,
675 F.2d 297, 301 (CCPA 1982). As noted by the Court in KSR, “[a] person
of ordinary skill is also a person of ordinary creativity, not an automaton.”
550 U.S. at 421.
“[T]he PTO gives a disputed claim term its broadest reasonable
interpretation during patent prosecution.” In re Bigio, 381 F.3d 1320, 1324
(Fed. Cir. 2004). The court recognizes the fairness of reading claims broadly
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“before a patent is granted [since] the claims are readily amended as part of
the examination process.” Burlington Indus., Inc. v. Quigg, 822 F.2d 1581,
1583 (Fed. Cir. 1987). “Thus, a patent applicant has the opportunity and
responsibility to remove any ambiguity in claim term meaning by amending
the application.” Bigio, 381 F.3d at 1324. Applying the broadest reasonable
interpretation to claims also “’serves the public interest by reducing the
possibility that claims, finally allowed, will be given broader scope than is
justified.’” In re Am. Acad. Of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004).
Analysis
Claim 7
We begin by interpreting the claims. Claim 7 requires “a translucent,
planar light window” and an “an arm rest extending substantially around the
outer periphery of the light window” (Claim 7). The use of the preposition
“a” prior to “translucent, planar light window” indicates that the claim
simply requires the presence of one or more light windows. The only
specific requirements regarding the location of the windows on the table is
that the windows are “coplanar with the plane of the playing surface” (Claim
7). There are no requirements regarding the size, shape, or horizontal
location of the window in claim 7.
Claim 7 requires an arm rest which extends “substantially around the
outer periphery of the light window.” With this language, the claim
encompasses any arm rest which partially extends around the light window.
There is no requirement regarding the distance of the arm rest from the
window in claim 7.
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Having now interpreted claim 7, we address the prior art of Flannery.
Flannery teaches a supported tabletop with an opaque, planar playing surface
that has stations for players and a dealer, where the tabletop has coplanar
windows through which a light source is configured to project light (FF 1-6).
Flannery also teaches a raised surface around the table which is structurally
identical to the arm rest disclosed by Appellants and which extends
substantially around the entire outer periphery of the light window (FF 9-
12).
We are not persuaded by Appellants’ argument that in Flannery
“[t]hese betting spaces are arranged in the center of the playing surface 14,
and this contrasts with the light window of independent claim 7, which is
arranged so that the arm rest extends substantially around the light window’s
outer periphery” (App. Br. 5). While Appellants correctly characterize
Flannery’s table, claim 7 includes no limitation regarding the location of the
light window on the table other than the light window is “coplanar with the
plane of the playing surface” (see Claim 7). We decline to read a limitation
that the light window is not in the “center” of the table into the claims.
“[L]imitations are not to be read into the claims from the specification.” In
re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citing In re Zletz, 893
F.2d 319, 321 (Fed. Cir. 1989)).
The only specific requirement in claim 7 for the relationship of the
arm rest and light window is that the arm rest extend “substantially around
the outer periphery of the light window” (see Claim 7). In the table of
Flannery, the raised rim is shown in figure 1 to extend around the entire
table, necessarily extending around the entire periphery of the light window
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(FF 1, 2, 5). This raised rim is reasonably interpreted as satisfying the arm
rest limitation, including the requirement to extend around the “outer
periphery of the light window” (FF 9-12).
We are also not persuaded by Appellants’ argument that “[i]t would
not have been obvious to have modified Flannery's casino game to provide
this feature of continuous illumination, because that would defeat the entire
purpose of the betting spaces 22” (App. Br. 6). There is no reasonable
dispute that Flannery’s table comprises a light source which projects light
through the light window (FF 4-6).
Appellants provide no reason or evidence which suggests that the
lights of Flannery cannot be left on indefinitely (or at least until the light
bulbs burn out), but simply rely upon the intended use of Flannery relative to
the intended use of their invention. We therefore agree with the Examiner
that the word “continuously” in claim 7 “merely teaches that the light stays
on all the time and is a function of the light source and its’ intended use”
(Ans. 4). See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is
well settled that the recitation of a new intended use for an old product does
not make a claim to that old product patentable.”)
We also are not persuaded by Appellants’ argument that “the
Examiner has failed to point out why persons skilled in the art would have
chosen to modify Flannery’s game table to include a built-in lighting system
of the kind being claimed” (App. Br. 6). We note that while Flannery does
not clearly indicate whether the lights are integrated into the table, Flannery
does clearly teach that the light switches are integrated into the table (FF 5).
Given Flannery’s express teaching to use a light source under the table to
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illuminate a light window and the teaching to integrate the light switches
into the table, we find that it would have been obvious to the creative person
of ordinary skill to also integrate the light source into the table. See KSR,
550 U.S. at 417 (“If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.”)
Claim 31
Claim 31 differs from claim 7 in one respect, in that claim 31 requires
“an elongated light window extending around a substantial portion of the
periphery of the playing surface and past the plurality of player stations”
(Claim 31). Appellants argue that “[i]t would not have been obvious to
have modified Flannery's casino game so that the light window extends
around a substantial portion of the periphery of the playing surface and past
the plurality of player stations, because that would defeat the entire purpose
of the betting spaces 22” (App. Br. 7).
We are not persuaded by Appellants’ argument for two reasons. First,
claim 31 does not impose any specific requirements on how close to the
periphery the light windows must extend nor does claim 31 include how
large a portion of the periphery over which the light windows must extend.
Consequently, applying the broadest reasonable interpretation of claim 31,
we find that the light windows of Flannery are reasonably found to extend
around a substantial portion of the periphery of the playing surface (see FF
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2). That is, the light windows of Flannery extend towards the periphery and
make up a “substantial”2 portion of the periphery.
Second, we agree with the Examiner that “[i]t would have been
obvious to one of ordinary skill in the art at the time the invention was made
to place the light source anywhere desired or expedient on the table” (Ans.
3). That is, the ordinary artisan would have been able to place the betting
areas of Flannery in any location on the table that is desired (FF 1-3). As
Flannery expressly notes that “the shape and arrangement of the betting
areas 22 can be altered to change the type of bets made” (Flannery 2 ¶ 0028;
FF 7). Flannery also teaches that “[a]s shown in FIG. 5, betting spaces 22
can be of varying shapes and arranged in various manners such as a pyramid
68” (Flannery 2 ¶ 0028; FF 8). We agree with the Examiner that it would
have been obvious to the creative person of ordinary skill to modify the table
with “an elongated light window extending around a substantial portion of
the periphery of the playing surface.” See KSR, 550 U.S. at 417 (“If a
person of ordinary skill can implement a predictable variation, § 103 likely
bars its patentability.”)
Claim 33
As we discussed above regarding claim 7, we are not persuaded by
Appellants’ argument that “it would not have been obvious to have modified
Flannery's casino game so that the arm rest extends around the light
window's outer periphery, because that would defeat the entire purpose of

2 See http://dictionary.reference.com/browse/substantial
(“Substantial” is defined as “of ample or considerable amount,
quantity, size, etc.”)
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the betting spaces 22” (App. Br. 10). In the table of Flannery, the raised rim
is shown in figure 1 to extend around the entire table, necessarily extending
around the entire periphery of the light window (FF 1, 2, 5). This raised rim
is reasonably interpreted as satisfying the arm rest limitation, including the
requirement to extend around the “outer periphery of the light window” (FF
9-12).
Conclusion of Law
Appellants have not demonstrated that the Examiner erred in finding
that Flannery renders the claims obvious.
SUMMARY
In summary, we affirm the rejection of claims 7, 31, and 33 under 35
U.S.C. § 103(a) as being obvious over Flannery. Pursuant to 37 C.F.R. §
41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 22, 32 and 34-
40, as these claims were not argued separately.
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)(2006).
AFFIRMED

cdc

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