11283263 (B.P.A.I. May. 22, 2012)

Ex Parte Strum

Board of Patent Appeals and InterferencesMay 22, 2012

11283263 (B.P.A.I. May. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/283,263 11/18/2005 Gary Strum STRM-0001 6081 95280 7590 05/23/2012 Johnson, Marcou & Isaacs, LLC 317A E. Liberty Street Savannah, GA 31401 EXAMINER MENDIRATTA, VISHU K ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 05/23/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte GARY STRUM ________________ Appeal 2010-005396 Application 11/283,263 Technology Center 3700 ________________ Before JENNIFER D. BAHR, LINDA E. HORNER and STEVEN D.A. McCARTHY, Administrative Patent Judges. McCARTHY, Administrative Patent Judge. DECISION ON APPEAL The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s 1 decision finally rejecting claims 1-27. The Examiner rejects claims 1-3, 8-2 11, 14-16, 22, 23, 26 and 27 under 35 U.S.C. § 102(b) as being anticipated 3 by Gazelle (US 2,722,425, issued Nov. 1, 1955) or, in the alternative, under 4 35 U.S.C. § 103(a) as being unpatentable over Gazelle and Frank (US 5 1,024,194, issued Apr. 23, 1912). The Examiner additionally6 1 The Appellant is the real party in interest. Appeal 2010-005396 Application 11/283,263 2 rejects claims 4, 5, 17-19 and 24-27 under § 103(a) as being unpatentable 1 over Gazelle and Frank, alone or in view of Eplett (US 4,696,476, issued 2 Sep. 29, 1987); and claims 6, 7, 12, 13, 20 and 21 under § 103(a) as being 3 unpatentable over Gazelle, alone or in combination with Frank. An oral 4 hearing was held on May 10, 2012. We have jurisdiction under 35 U.S.C. 5 § 6(b). 6 We REVERSE. 7 Claims 1, 11 and 19 are independent claims. Claim 1 is illustrative of 8 the claims on appeal: 9 1. A game board, comprising: 10 a first quarter panel, a second quarter panel, 11 a third quarter panel, and a fourth quarter panel, 12 each of the quarter panels comprising 13 a top surface, 14 an underside of the top surface, and 15 four side walls disposed along a 16 perimeter of the underside of the top surface, 17 the four side walls together comprising a 18 bottom surface of the respective quarter 19 panel, and the four side walls together with 20 the underside of the top surface defining a 21 compartment below the top surface of the 22 respective quarter panel; 23 a top joint that couples the top surface of the 24 first quarter panel to the top surface of the second 25 quarter panel; 26 a first bottom joint that couples the bottom 27 surface of the first quarter panel to the bottom 28 surface of the third quarter panel; and 29 Appeal 2010-005396 Application 11/283,263 3 a second bottom joint that couples the 1 bottom surface of the second quarter panel to the 2 bottom surface of the fourth quarter panel. 3 Claims 1, 11 and 19 each recite a game board including quarter 4 panels. Each quarter panel recited in claim 1 and claim 11 includes four side 5 walls which together with the underside of the top surface define a 6 compartment below the top surface of the respective quarter panel. Each 7 quarter panel recited in claim 19 includes four side walls which together 8 with a second surface define a compartment below the playing surface 9 component of the respective quarter panel. 10 The Appellant does not appear to define the term “compartment” in 11 the Specification. The ordinary usage of the term “compartment” is 12 sufficiently broad to include either a subdivision of a plane surface or a 13 subdivision of a three-dimensional space. (WEBSTER’S THIRD NEW 14 INT’L DICTIONARY (G&C Merriam Co. 1971)(“compartment,” defs. 1 15 and 3.) Claim 1 itself objectively indicates that the term “compartment” as 16 used in the claims refers to a subdivision of a three-dimensional space 17 defined by four side walls and an underside of a top surface. 18 Gazelle describes a backgammon game including a backgammon 19 board. Gazelle describes the backgammon board as “divided into four 20 compartments, i.e., the two inner compartments 17 and 20, and the two outer 21 compartments 18 and 19, it being contemplated that there be a player on 22 opposite sides of said board.” (Gazelle, col. 1, ll. 69-72.) 23 The Examiner has not shown that Gazelle expressly or inherently 24 describes the backgammon board as having compartments each defined by 25 four side walls together with another surface. The Appellant correctly points 26 out that Figures 1-3 of Gazelle do not unambiguously show a board having 27 Appeal 2010-005396 Application 11/283,263 4 walled compartments as opposed to flat panels decorated with flat labels. 1 (See App. Br. 12.) The term “compartments” as used by Gazelle appears to 2 refer to subdivisions of the planar upper surface of the board and not to 3 subdivisions of three-dimensional space. (See App. Br. 11.) Indeed, 4 Gazelle’s provision of a carrying case to store both the board itself as well as 5 the backgammon “men” which indicate position on the board during a game 6 suggests that the board itself lacks structure for storing small components 7 such as the “men.” (See Reply Br. 7-8; see also Gazelle, col. 3, ll. 42-49.) 8 Since Gazelle fails to describe a game board including each limitation of 9 claim 1, claim 11 or claim 19, we do not sustain the rejection of claims 1-3, 10 8-11, 14-16, 22, 23, 26 and 27 under § 102(b) as being anticipated by 11 Gazelle. Since the Examiner has not articulated any reasoning which might 12 explain why one of ordinary skill in the art might have had reason to modify 13 Gazelle to remedy this deficiency, we do not sustain the rejection of claims 14 6, 7, 12, 13, 20 and 21 under § 103(a) as being unpatentable over Gazelle. 15 The Examiner appears to cite Frank as teaching a game board 16 including hinges placed near folds in the game board to facilitate folding. 17 (See Ans. 5.) The Examiner does not adequately explain how the teachings 18 of Frank might remedy the deficiencies in the teachings of Gazelle with 19 respect to the subject matter of claims 1, 11 and 19. We do not sustain the 20 rejection of claims 1-3, 8-11, 14-16, 22, 23, 26 and 27 under § 103(a) as 21 being unpatentable over Gazelle and Frank. Neither do we sustain the 22 rejection of claims 6, 7, 12, 13, 20 and 21 under § 103(a) as unpatentable 23 over Gazelle in combination with Frank 24 The Examiner appears to cite Eplett as teaching a latch for a game 25 board. (See Ans. 6.) The Examiner does not adequately explain how the 26 Appeal 2010-005396 Application 11/283,263 5 teachings of Eplett might remedy the deficiencies in the teachings of Gazelle 1 alone, or the combined teachings of Gazelle and Frank, with respect to the 2 subject matter of claims 1, 11 and 19. We do not sustain the rejection of 3 claims 4, 5, 17-19 and 24-27 under § 103(a) as being unpatentable over 4 either the combined teachings of Gazelle and Frank or the combined 5 teachings of Gazelle, Frank and Eplett. 6 7 DECISION 8 We REVERSE the Examiner’s decision rejecting claims 1-27. 9 10 REVERSED 11 12 13 mls 14