Ex Parte Shao

Board of Patent Appeals and Interferences

Jun 25, 2009

09973285 (B.P.A.I. Jun. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHIA MU SHAO
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Appeal 2009-002509
Application 09/973,285
Technology Center 3700
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Decided: 1June 25, 2009
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Before ERIC GRIMES, RICHARD M. LEBOVITZ, and
FRANCISCO C. PRATS, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as provided for 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 2009-002509
Application 09/973,285

This is a decision on appeal from the Patent Examiner’s rejections of
claims 1-6, 8-11, 14, and 15 as obvious over prior art. Jurisdiction for this
appeal is under 35 U.S.C. § 6(b). We reverse the rejections.

Statement of the Case
The claimed invention is an electronic dart game based on the
principle of electromagnetic induction (Spec. 1:4-5). The dartboard contains
inductance coils associated with each scoring sector (id. at 7: 9-20). Upon
entry of a magnetic dart into a scoring sector, an electrical signal is produced
in the inductance coil (id.). The coil is connected to a scoring means for
registering the score associated with dart entry (id. at 6).
Claims 1-11, 14, and 15 are pending. The Examiner rejected the
claims as follows:
Claims 1-6, 8-11, 14, and 15 under 35 U.S.C. § 103(a) as obvious in
view of Fuscone (UK Application GB 2,086,243 A, 12 May 1982) or
Fuscone and Gordon (U.S. Pat. No. 5,419,565, 30 May 1995) (Ans. 3 & 7);
and
Claim 7 under 35 U.S.C. § 103(a) as obvious in view of Fuscone and
Clark (U.S. Pat. No. 4,768,789, 6 Sep. 1988) or Fuscone, Gordon, and Clark
(Ans. 6 & 10).
Claims 1 and 7 are representative and read as follows:
1. An electronic dart game comprising:
a dart;
a dartboard, provided with
a frame, formed of a plurality of scoring areas by a plurality of radial
spiders and circumferential spider which are arranged crossly;
a main body receiving said dart, attached to said frame; and
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an electronic scoring means for displaying signals collected from said
scoring areas;
a plurality of coreless inductance coils with predetermined turns, provided
with said frame and connected to said electronic scoring means through
cables;
said dart is provided with a magnetic substance;
each of said coreless inductance coils is associated with a corresponding one
of said scoring areas and defines a scoring signal zone; and
a scoring signal is generated by said dart entering said scoring signal zone,
said signal is transmitted to said electronic scoring means.

7. An electronic dart game according to [claim 1 where the inductance
coils are provided with predetermined shape to be engaged with said scoring
areas and the cross-section of each turn of said coil matches and is smaller
than that of said scoring areas], wherein a plurality of said coreless coils
correspond to different scoring areas representing the same score, are wired
together before being connected to said electronic scoring means.

OBVIOUSNESS OVER FUSCONE OR FUSCONE AND GORDON
Statement of the Issue
The Examiner contends that Fuscone describes all the elements of the
electronic dart game of claim 1, but does not teach that the inductance coil is
“coreless” as recited in the claim. Rather, the Examiner found that
Fuscone’s dartboard comprises an inductance coil with a core made of iron.
However, the Examiner contends that it would have been obvious to persons
of ordinary skill in the art to have replaced Fuscone’s iron cored coil with a
coreless coil based on the teachings of Fuscone, alone, or in combination
with the Gordon patent.
Appellant contends that Fuscone, alone, or combined with Gordon,
would not have led persons of ordinary skill in the art to have eliminated the
iron core from Fuscone’s coil.
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Application 09/973,285

The main issue in this rejection is therefore as follows: Did Appellant
establish that the Examiner erred in concluding that it would have been
obvious to persons of ordinary skill in the art to have utilized a coreless
inductance coil in Fuscone’s dartboard?

Principles of Law
“Only a reasonable expectation of success, not absolute predictability,
is necessary for a conclusion of obviousness.” In re Longi, 759 F.2d 887,
897 (Fed. Cir. 1985).
“Although predictability is a touchstone of obviousness, the
‘predictable result’ discussed in KSR refers not only to the expectation that
prior art elements are capable of being physically combined, but also that the
combination would have worked for its intended purpose. KSR Int’l Co. v.
Teleflex Inc., 127 S. Ct. 1727, 1739-40 (2007).” Depuy Spine, Inc v.
Medtronic Sofamor Danek, Inc. (Fed. Cir. 2008-1240, -1253, -1401,
Decided June 1, 2009).
Findings of Fact (FF)
The Fuscone application
1. Fuscone describes a “system for sensing and identifying the segment of
an area upon which targeting shots with any kind of projectile are directed.”
(1:4-7). A “dartboard” is listed as a “primary example.” (Id. at 1:21.)
2. According to Fuscone, a sensor assembly is attached to the rear surface of
a dartboard (1:122 to 2:8). The assembly comprises sensor coils placed into
section areas which correspond to the scoring sectors of a standard dartboard
(id.).
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3. Each sensor coil comprises an inductor core 3 made of iron around which
is placed a coil 4 (1:127-128). The core is riveted to the rear of the dart
board (id. at 1:125-128).
4. Figure 8, reproduced below, shows a portion of the rear sensor assembly.

Figure 8 shows a sensor assembly affixed to the back of a dartboard.
5. When a magnetic dart impacts the dartboard, it produces a voltage change
in the sensor coil (2:20-82).
6. A circuit attached to the sensor assembly identifies the location of the
largest signal, allowing the dart to be electronically scored (2:35-82).
7. Fuscone states that to “increase the input difference signals”, the “effect
of the magnetic field of the projectile in the wanted sector can be increased
by making this sector . . . magnetically conductive” (4:20-24).
8. To accomplish this, Fuscone describes making the board “magnetically
permeable” (4:25-26).
9. Fuscone explains:
The board consists of two plates, 12a and 12b, which are
bonded together. The target board 12a has recesses 8, 9, 10, 11
. . . ; into these recesses a ferrite semi-hard rubber or the like
substance is placed. . . The reinforcement board 12b has holes
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allowing the prolonged cores 3 of the coils 4 to protrude and to
touch the magnetic rubber fillings.
(4:27-38; Fig. 8.)

The Gordon patent
10. Gordon teaches a device for measuring the point of impact of a missile,
such as a sports projectile, on a target (Abstract).
11. The device can comprise three planes within a target mat, where the first
plane contains a series of strip magnets 18 arranged with the same magnetic
polarity and “close enough to one another to create a substantially uniform
magnetic field” (col. 3, l. 66 to col. 4, l. 5).
12. The mat further comprises second and third planes comprising
conductors 22 and wires 16, respectively, which in turn are attached to
terminals (col. 4, l. 9-20).
13. According to Gordon, the operating principle is:
such that when the missile impacts the target and the force of
impact deflects the foam mat, the wire[s] . . . deflect. The
deflection of such wires in the field created by magnets 18,
causes a small but discernible voltage to be created on the wires
22 and 16, and in turn on the terminals . . . . The amount of the
signal depends on the speed of the wire moving through the
field, the magnitude of the field, and the field gradient.
(Col. 4, ll. 21-29.)
14. Gordon teaches that the magnetic strips 18 may be replaced by “electro
magnets with coils of wire” and the “coils may be air wound or, to achieve a
higher field, wound around a ferromagnetic core” (col. 4, l. 60 to col. 5, l. 3).

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Analysis
The issue in this appeal turns on the question of whether the Examiner
provided sufficient evidence to establish that a coreless coil would have been
reasonably expected to perform the same function as the iron cored coil in
Fuscone’s dartboard.
For the rejection over Fuscone, alone, the Examiner found
the purpose of providing the iron core in the inductor is to
concentrate the effect of any magnetic field within the center of
the induction coil (within the iron cores). However, as is well
known by one of ordinary skill in the art, an inductor in its
simplest form is a conductive wire formed in the shape of a
loop or coil, and will create the magnetic field inside the coil
without the presence of the core. Therefore, the inclusion of
iron cores in the inductors disclosed by Fuscone is not
necessary, as the inductor would still perform the necessary
function of creating a magnetic field within the center of the
induction coil with or without the iron core, albeit the magnetic
field would not have been as concentrated as had the iron core
been in place.
(Ans. 4.)
Based on this finding, the Examiner reasoned that the ordinary skilled
worker “would have been motivated to remove the core from the induction
coil for any application that requires a small amount of inductance as in said
dartboard to reduce the weight of the apparatus and lower manufacturing
costs” (id. at 5). The Examiner also asserted that replacing an iron cored
induction coil with a coreless coil was “a matter of design choice” (id.).
The Examiner’s reasoning is not supported by the evidence. The only
induction coil taught by Fuscone is one which contains an iron core 3 (FF3).
Fuscone stated that the signal produced by the magnetic dart upon impact
could be increased by adding to the dartboard plate magnetic rubber fillings
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which are placed in contact with the iron core 3 (FF7-9). Thus, Fuscone
teaches increasing signal strength by adding a magnetic rubber cap to the
top of the induction coil’s iron core.
The Examiner admitted that the coil without an iron core would
experience a less “concentrate[d] effect” from the magnetic dart (Ans. 4),
but provided no evidence that it would still be capable of detecting the
impact of a magnetic dart in the context of Fuscone’s sensor assembly.
Fuscone explicitly teaches that its goal is to identify the location of the
source of the largest signal in order to determine which sector is impacted by
the dart (2:34-40). This is accomplished with a circuit and an inductance
coil with an iron core (id.). Given that Fuscone describes boosting signal
strength of the coil by adding a magnetic rubber cap, we are not persuaded
that persons of ordinary skill in the art would have sought to decrease the
signal strength by eliminating the iron core and that the reduced signal
would have been reasonably expected to work. Although absolute
predictability is unnecessary to establish obviousness, there still must be a
reasonable expectation of success. In re Longi, 759 F.2d at 896.
In addition, the Examiner stated
it would have been obvious to one of ordinary skill in the art at
the time of the invention to remove the iron core of the
inductance coils disclosed by Fuscone and simply increase the
number of turns in the coreless coil to create a magnetic field of
equivalent strength to that of an inductance coil containing an
iron core.
(Ans. 12.)
This argument is also not persuasive. Even assuming that increasing
the number of turns in a coreless coil would increase its magnetic strength,
there is no evidence that the additional coils were a suitable alternative in
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Fuscone’s device, or that they would permit the coreless coil to achieve the
same effect desired by Fuscone as an iron cored coil. In fact, since Gordon
teaches that a higher field is achieved with a cored coil than with the
coreless or “air wound” coil (FF14), the evidence points to the opposite
conclusion.
In sum, the Examiner has not provided sufficient evidence that
combination of Fuscone with a coreless coil would work for its intended
purpose.
The rejection over Fuscone was buttressed by the Gordon patent in a
new ground of rejection set forth in the Answer (Ans. 7). The Examiner
found that it would have been obvious to include coreless inductance coils in
Fuscone’s dartboard, “instead of inductance coils containing iron cores”
because Gordon teaches that coils with or without a ferromagnetic core
could be utilized in its sports target system (id. at 8-9).
Gordon’s system appears to operate on a different principle than does
Fuscone’s dartboard. According to Gordon, a missile impacts the target,
causing a deflection in the magnetic field produced by the electromagnetic
coils (FF13-14; Reply Br. 3). Fuscone, on the other hand, does not attribute
its signal identification to magnetic field deflection, but rather describes it as
a consequence of a voltage change in a sensor coil produced by a magnetic
dart (FF5-7). Therefore, we are not persuaded that Gordon would have
reasonably suggested to persons of ordinary skill in the art substituting a
coreless inductance coil in Fuscone’s dartboard.

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OBVIOUSNESS OVER CLARK
Claim 7 stands rejected under 35 U.S.C. § 103(a) as obvious over
Fuscone and Clark, or Fuscone, Gordon, and Clark (Ans. 6 & 10).
Claim 7 indirectly depends on claim 1 and recites that “a plurality of
said coreless coils correspond to different scoring areas representing the
same score, are wired together before being connected to said electronic
scoring means.” The Examiner cited Clark for its teaching of connecting
inputs having the same signal into the same input line (Ans. 7). This
teaching does not remedy the deficiency described above for Fuscone or
Fuscone in combination with Gordon.

CONCLUSION OF LAW
Appellant established that the Examiner erred in concluding that it
would have been obvious to persons of ordinary skill in the art to have
eliminated the iron core from the inductance coil in Fuscone’s dart board.

SUMMARY
The obviousness rejections of claims 1-11, 14, and 15 are reversed.

REVERSED
Ssc:
MICHAEL S. GZYBOWSKI
BUTZEL LONG
350 SOUTH MAIN STREET
SUITE 300
ANN ARBOR, MI 48104
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