Ex Parte Sciandra

Patent Trial and Appeal Board

Jun 11, 2018

14181091 (P.T.A.B. Jun. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/181,091 02/14/2014
24041 7590 06/13/2018
SIMPSON & SIMPSON, PLLC
5555 MAIN STREET
WILLIAMSVILLE, NY 14221-5406
FIRST NAMED INVENTOR
Charles C. Sciandra
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
KNJP103US 5063
EXAMINER
DAVISON, LAURAL
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
06/13/2018 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):
patentEFS@idealawyers.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES C. SCIANDRA
Appeal2017-009224
Application 14/181,091 1
Technology Center 3700
Before PHILIP J. HOFFMANN, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner's rejection of claims 21--40. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
According to Appellant, the invention relates "to disc throwing games
and targets for disc throwing games." Spec. ,r 1. Claims 21, 31, and 40 are
1 According to Appellant, "[t]he real party in interest is Charles C.
Sciandra. . . . The subject invention and patent application ha[ ve] been
assigned to Kan Jam, LLC." Br. 3.
Appeal2017-009224
Application 14/181,091
the independent claims on appeal. We reproduce claim 21, below, as
illustrative of the appealed claims.
21. A target for a disc throwing game, comprising:
a planar member including a first through-bore, a second
through-bore, a first edge, a second edge, a third edge, and a
fourth edge, wherein the fourth edge is arranged to support the
target;
a first wall having a first portion, a second portion, and a
third portion where the first portion extends upwardly from the
first edge, the second portion extends upwardly from the second
edge and the third portion extends upwardly from the third edge;
a second wall extending upwardly from the second
through-bore;
a first hollow receiving member extending upwardly from
the planar member proximate the first through-bore; and,
a first removable leg arranged to extend through the first
through-bore and within the first hollow receiving member to
support the target;
wherein the second through-bore is arranged to receive a
thrown disc and the first, second, and third wall portions, and the
second wall are arranged to deflect the thrown disc.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. claims 21-28, 31-35, 38, and 39 under 35 U.S.C. § 103(a) as
unpatentable over Huser et al. (US 4,243,229, iss. Jan. 6, 1981)
(hereinafter "Huser"), Gillet (US 827,626, iss. July 31, 1906),
and Swart (US 2,101,764, iss. Dec. 7, 1937);
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Application 14/181,091
II. claims 29 and 37 under 35 U.S.C. § 103(a) as unpatentable over
Huser, Gillet, Swart, and Kassouni (US 8,474,178 B2, iss.
July 2, 2013).
III. claims 30 and 36 under 35 U.S.C. § 103(a) as unpatentable over
Huser, Gillet, Swart, and Oberly (US 175,254, iss. Mar. 28,
1876); and
IV. claim 40 under 35 U.S.C. § 103(a) as unpatentable over Huser
and Swart.
ANALYSIS
Rejection I
Independent claim 21, and its dependent claims 22-28
With respect to the rejection of independent claim 21, Appellant
argues that the obviousness rejection based on Huser, Gillet, and Swart is in
error based on the following:
The Examiner [finds] that Gillet teaches [ the claimed first
wall that the Examiner finds is not taught by Huser,] and that it
would have been obvious to combine the walls of Gillet with the
game apparatus of Huser. Appellant respectfully disagrees. . ..
Gillet . . . was issued on July 31, 1906 [,] and . . . Huser . . . was
filed on January 22, 1979. Thus, ... Gillet ... had been available
to the public for at least seventy-three (73) years before the Huser
invention, however, Huser specifically decided to design the
game apparatus without side walls.
There is no teaching, suggestion, or motivation to combine
Huser with Gillet, to include sidewalls on the playing board for
the purpose of retaining the flying disc within the playing
surface. Therefore, the only teaching, suggestion, or motivation
to modify the game apparatus of Huser to include the sidewalls
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Application 14/181,091
of Gillet must have been derived from the present application[,
i.e., is based on impermissible hindsight].
Br. 20. Based on our review, Appellant does not persuade us that the
Examiner errs, however. This is because, first, "[t]he mere age of the
references is not persuasive of the unobviousness of the combination of their
teachings, absent evidence that, notwithstanding knowledge of the
references, the art tried and failed to solve the problem." In re Ethicon, Inc.,
844 F.3d 1344, 1352 (Fed. Cir. 2017) (quoting In re Wright, 569 F.2d 1124,
1127 (CCPA 1977)). Appellant does not present evidence of a long-felt
need or failure of others. Further, the Examiner provides a rational reason
for the proposed combination-"[ c ]lear motivation is provided by the
teaching of Gillett, [which] explicitly teaches that[,] in the art of disc tossing
games, it is advantageous to add side walls ... 'for preventing the [thrown
game pieces] from being tossed off of the game-board' (Gillett, pg. 1,
lines 75-79)." Answer 3. Thus, irrespective of the fact that Huser's game
apparatus does not disclose the claimed first wall, we agree with the
Examiner that the use of Gillet's wall on Huser's game apparatus is obvious.
See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007) ("The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.").
Appellant argues that the rejection of claim 21 is erroneous for similar
reasons with respect to the claimed second wall. See Br. 21-22. Based on
our review, Appellant does not persuade us that the Examiner errs, however.
This is because the Examiner provides a rational reason for the proposed
combination-
[ c ]lear motivation is provided by the teaching of Gillett, [which]
explicitly teaches that in the art of disc tossing games, it is
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Appeal2017-009224
Application 14/181,091
advantageous to add a second wall as claimed, "which makes it
more difficult for the player to cause a [thrown game piece] to
pass through the aperture portions, which are provided with the
guards" ([Gillett] pg. 1, lines 95-101).
Answer 4. Thus, irrespective of the fact that Huser's game apparatus does
not disclose the claimed second wall, we agree with the Examiner that the
use of Gillet's wall on Huser's game apparatus is obvious. See KSR, 550
U.S. at 416.
Appellant also argues that the rejection of claim 21 is erroneous for
similar reasons with respect to the claimed hollow receiving member. More
specifically, Appellant argues that the obviousness rejection is in error based
on the following:
Swart ... was issued on December 7, 1937[,] and .. .
Huser ... was filed on January 22, 1979. Thus, ... Swart .. .
had been available to the public for at least forty-two ( 42) years
before the Huser invention, however, Huser specifically decided
to design the game apparatus without a hollow receiving member
extending upwardly from the playing surface. Additionally,
Swart does not disclose, anywhere in the patent, throwing a disc
from a specified distance onto the playing surface. In fact, Swart
does not disclose throwing any projectile from a specified
distance onto the playing surface. The game disclosed in Swart
instead discloses a game most similar to foosball, wherein a ball
stays within the playing surface at all times and is moved using
a system of levers.
There is no teaching, suggestion, or motivation to combine
Huser with Swart, to include the hollow receiving member on the
target for the purpose of receiving the leg and acting as an
obstacle on the playing surface (potentially forcing the flying
disc off of the playing surface). Therefore, the only teaching,
suggestion, or motivation to modify the game apparatus of Huser
to include the hollow receiving member of Swart must have been
derived from the present application.
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Application 14/181,091
Br. 22-23. Based on our review, Appellant does not persuade us that the
Examiner errs, however. This is because, as discussed above, the age of
references is not persuasive of unobvious, and the Examiner provides a
rational reason for the proposed combination-to provide an arrangement
that "support[s] the planar member [(i.e., playing board)] when in use[,]
and ... allow[ s] the supporting leg to be removed for storage." Answer 7.
Further, claim 21 does not recite that "the hollow receiving member ...
act[ s] as an obstacle on the playing surface (potentially forcing the flying
disc off of the playing surface)." Br. 23. Therefore, it is not necessary for
the prior art to serve the same purpose as that disclosed in Appellant's
Specification in order to support the conclusion that the claimed subject
matter would have been obvious. See In re Linter, 458 F.2d 1013, 1016
(CCPA 1972); see also KSR, 550 U.S. at 419 ("[N]either the particular
motivation nor the avowed purpose of [Appellant's disclosure] controls" in
an obviousness analysis.)
Thus, based on the foregoing, Appellant does not persuade us that the
Examiner errs in rejecting claim 21. Therefore, we sustain claim 21 's
rejection, as well as the rejection of claims 22-28 that depend from claim 21
and which Appellant does not argue separately.
Independent claim 31, and its dependent claims 32-35, 38,
and 39
Although Appellant appears to argue independent claim 31 separately,
Appellant's arguments are substantively the same as those set forth above
for claim 21. See Br. 36-39. Thus, we sustain the rejection of independent
claim 31, and its dependent claims 32-35, 38, and 39 for which Appellant
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Application 14/181,091
does not submit additional arguments, for reasons similar to those set forth
above for claim 21.
Rejections II and III
Appellant does not argue that the Examiner errs in rejecting dependent
claims 29, 30, 36, and 37. Thus, inasmuch as we sustain the rejections of
independent claim 21 and 31, from which these dependent claims depend,
we also sustain the rejections of claims 29, 30, 36, and 37.
Rejection IV
Although Appellant appears to argue independent claim 40 separately,
Appellant's arguments are substantively the same as those set forth above
for claim 21. See Br. 48-51. Thus, we sustain the rejection of independent
claim 40 for reasons similar to those set forth above for claim 21.
DECISION
We AFFIRM the Examiner's obviousness rejections of claims 21--40.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a)(l )(iv).
AFFIRMED
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