Ex Parte Sciandra

Patent Trial and Appeal Board

Jun 29, 2018

14460742 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/460,742 08/15/2014
24041 7590 07/03/2018
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.
KNJP104US 5191
EXAMINER
PASSANITI, SEBASTIANO
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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
Appeal 2017-010111
Application 14/460,742
Technology Center 3700
Before DANIEL S. SONG, BRETT C. MARTIN, and
SEAN P. O'HANLON, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-010111
Application 14/460,742
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 11-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
THE INVENTION
Appellant's claims are directed "generally to tabletop games and,
more specifically, to tabletop games involving targets and at least one disc
which is arranged to be launched or slid through at least one opening in the
targets." Spec. i-f 1. Claim 11, reproduced below, is illustrative of the
claimed subject matter:
11. A tabletop disc game assembly arranged to be positioned
upright on a flat surface, comprising:
a first target, said first target comprising:
a first side edge;
a second side edge displaced from and substantially
parallel with said first side edge;
a fastening means operatively arranged to abut said first
side edge against said second side edge;
a top side edge connecting said first side edge and said
second side edge;
a bottom side edge displaced from and substantially
parallel with said top side edge, said bottom side edge including
a cut out;
a disc operatively arranged to be received within said first
target; and,
a flexible member arranged to direct said disc into said
first target; said flexible member being substantially planar.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
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Appeal 2017-010111
Application 14/460,742
Lindner
Petersen
Romero et al.
Nicoll
Fusco
us 265,836
us 2,261,448
us 4, 167 ,267
us 5,242,164
US 2012/0319354 Al
REJECTION
The Examiner made the following rejection:
Oct. 10, 1882
Nov. 4, 1941
Sept. 11, 1979
Sept. 7, 1993
Dec. 20, 2012
Claims 11-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fusco, Lindner, Nicoll, and Petersen or Romero. Ans. 2.
ANALYSIS
The Examiner relies on Fusco for teaching the claimed "target," but
notes that Fusco' s target fails to teach the claimed "cut out" at "said bottom
side edge" of said "target." Ans. 2-3. The Examiner then asserts that
"Lindner is cited to show that it is old in the art to form a target with an
open top and an open bottom and at least one cut out along a bottom side
edge (FIG. 1)." Ans. 3. The Examiner admits that Lindner actually teaches
an advertising device having nothing to do with being a target in a tabletop
game, but nonetheless asserts that it "may clearly operate as a target." Id.
While we agree that it is possible to use Lindner' s advertising device
as a target, there still must be some reason one of ordinary skill in the art
would look to a completely unrelated device, such as an advertising stand, in
order to make the proposed modification. The Examiner has provided none.
We agree with Appellant that "the only teaching, suggestion, or motivation
to modify the bucket of Fusco to include the cut out of Lindner must have
been derived from the present application." App. Br. 24. Accordingly, we
further agree with Appellant "that there can be no reason, other than
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Appeal 2017-010111
Application 14/460,742
impermissible hindsight, to combine the references together to create a
tabletop disc game assembly having an open top and a cut out arranged
proximate the bottom side." App. Br. 24. As such, we are persuaded that
the Examiner erred in combining Fusco with Lindner and the other
references disclosing games. Thus, we do not sustain the rejection.
DECISION
For the above reasons, we REVERSE the Examiner's decision to
reject claims 11-20.
REVERSED
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