Frank Camaratta

Patent Trials and Appeals Board

Dec 2, 2020

2020003452 (P.T.A.B. Dec. 2, 2020)

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.
14/819,777 08/06/2015 Frank A. Camaratta JR. CMTP101AUS 5799
24041 7590 12/02/2020
SIMPSON & SIMPSON, PLLC
5555 MAIN STREET
WILLIAMSVILLE, NY 14221-5406
EXAMINER
MENDIRATTA, VISHU K
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
12/02/2020 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 FRANK A. CAMARATTA JR.

Appeal 2020-003452
Application 14/819,777
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, BRUCE T. WIEDER, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 13 and 14. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as “The
House of Staunton, Inc.” Appeal Br. 2.
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STATEMENT OF THE CASE
The application before us was the subject of a previous decision,
Appeal 2018-001536 (PTAB Aug. 24, 2018).

Claimed Subject Matter
Claim 13, the sole independent claim, is representative of the subject
matter on appeal and is reproduced below.
13. A method of weighting a wood chess piece, comprising
the steps of:
creating a first cavity in a base of said wood chess piece;
and,
filling said first cavity with metal powder thereby
forming a weighted chess piece.

References
The prior art relied upon by the Examiner is:
Name Reference Date
Uvanni US 3,863,930 Feb. 4, 1975
Tsai US 4,887,822 Dec. 19, 1989
Ritter US 5,421,582 June 6, 1995
Duke US 5,690,334 Nov. 25, 1997
Fenn US 6,277,041 B1 Aug. 21, 2001

Rejection
Claims 13 and 14 are rejected under 35 U.S.C. § 103 as unpatentable
over Uvanni in view of anyone of Ritter or Duke and anyone of Tsai or
Fenn.

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ANALYSIS
The Examiner finds that Uvanni teaches a method of weighting a
chess piece, including the steps of creating cavity 18 in a base of the chess
piece and filling cavity with ballast thereby forming a weighted chess piece.
Final Act. 2. The Examiner finds that Uvanni fails to teach (1) a chess piece
being wood and (2) its ballast being metal powder. Id. at 2, 3.
The Examiner relies on the teachings of Ritter or Duke to teach that
wood is a suitable material for a chess piece. Id. at 2 (citing Ritter col. 5,
ll. 52–55, Duke col. 9, ll. 3–8). The Examiner determines that it would have
been obvious to one of ordinary skill in the art to modify the material of
Uvanni’s chess piece to be wood because, as taught by each of Ritter and
Duke, wood is known in the art as suitable material for a chess piece. Id.
at 2–3.
The Examiner relies on the teachings of Tsai or Fenn to teach that
metal powder is a suitable material for ballast in an amusement article/piece.
Id. at 3 (citing Tsai col. 3, ll. 17–19, Fenn col. 5, ll. 14–17). The Examiner
determines that it would have been obvious to one of ordinary skill in the art
to modify the ballast material of Uvanni’s chess piece to be metal powder
because, as taught by each of Tsai and Fenn, metal powder is known in the
art as suitable material for adjusting the weight of an amusement
article/piece, such as a chess piece. Id.
The Appellant argues that the Examiner’s rejection relies on
impermissible hindsight. Appeal Br. 7. In support of this argument, the
Appellant points out that “Tsai and Fenn relate solely to darts – Tsai to
outdoor lawn darts, and Fenn to traditional darts.” Id. The Appellant
contends that because “[t]here is absolutely no teaching, suggestion or
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motivation within the four comers of either the Tsai or Fenn patent that
methods of weighting darts should be used to weight wood chess pieces” the
Examiner’s rationale for modifying Uvanni’s ballast material for a metal
powder, as taught by each of Tsai and Fenn, relies on impermissible
hindsight. See id. at 6–7. The Appellant’s argument is not persuasive of
Examiner error.
At the outset, we note that the Appellant acknowledges that the
Supreme Court, in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), set
forth different rationales upon which obviousness rejections may be
supported. Appeal Br. 5. In doing so, the Supreme Court stated that:
Helpful insights, however, need not become rigid and
mandatory formulas; and when it is so applied, the TSM [(i.e.,
teaching, suggestion, or motivation)] test is incompatible with
our precedents. . . . There is no necessary inconsistency
between the idea underlying the TSM test and the Graham
analysis. But when a court transforms the general principle into
a rigid rule that limits the obviousness inquiry, as the Court of
Appeals did here, it errs.
KSR, 550 U.S. at 419. The key to supporting any rejection under 35 U.S.C.
§ 103 is the clear articulation of the reason(s) why the claimed invention
would have been obvious. As the Appellant acknowledges, “rejections on
obviousness . . . [require] some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” Appeal Br. 6;
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR,
550 U.S. at 418).
As discussed above, the Examiner determines that it would have been
obvious to one of ordinary skill in the art to modify the ballast material of
Uvanni’s chess piece to be metal powder because, as taught by each of Tsai
and Fenn, metal powder is known in the art as suitable material for adjusting
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the weight of an amusement article/piece, such as a chess piece. For the
following reasons, the Examiner’s determination includes the required
articulated reasoning with rational underpinning to support the legal
conclusion of obviousness.
First, the object of Uvanni’s method of weighting a chess piece is for
providing a chess piece which can be easily custom weighted to an
individual user’s specifications. Uvanni, col. 1, ll. 3–6, 14–17, col. 3, 10–
13. And, Uvanni discloses that the size of the cavity in the chess piece and
choice of ballast brings the weight of the chess piece to a user’s desired
specifications. See id. at col. 2, ll. 15–22; Ans. 4–5.
Second, Uvanni describes that its ballast “can consist of sand, BB
shot, lead, or any combination thereof.” Id. at col. 2, ll. 21–22 (emphasis
added); see Final Act. 2. Importantly, Uvanni’s description that the ballast
“can consist of” the identified materials leaves the possibility open for other
types of ballast material. As a result, Uvanni does not exclude the use of
metal powder as a ballast material.
Third, Tsai describes that its weighted material may include “metal
powder, pellets, sand, or the like.” Tsai col. 3, ll. 17–19. Tsai’s use of
pellets and sand as a weighted material is similar to Uvanni’s use of BB shot
and sand as ballast. We determine that one of ordinary skill in the art would
understand from this that metal powder is a material known in the art to be a
suitable replacement for pellets, BB shot, sand, and other like materials. See
also Final Act. 3 (“Examiner also takes the position that use of metal for
weight is already known for weighting articles for their high density and
specific gravity and using less amount for that reason”), 4 (“Examiner takes
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the position that use of metal/tungsten powder is commonly known and used
in the amusement area for having large specific gravity/density.”).
Fourth, the purpose of using a ballast material in an article is to
increase stability of the article by using a material to add weight. For
example, Tsai teaches the use of weighting material 28 to restore a lawn dart
(i.e., an amusement article/piece) to a vertical state immediately from any
oblique position when the head member of the dart is touching the ground.
See, e.g., Tsai col. 3, ll. 22–30. In this regard, we determine that one of
ordinary skill in the art would recognize that a weighted material that
stabilizes a lawn dart in a vertical state after touching the ground and a
weighted material that stabilizes a chess piece in a vertical state after
touching a surface are alike in function.
The Appellant argues that Tsai and Fenn are non-analogous art.
Appeal Br. 8–9. The Appellant acknowledges that two separate tests define
the scope of analogous prior art: (1) whether the art is from the same field of
endeavor, regardless of the problem addressed and, (2) if the reference is not
within the field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved. See id. at 8; In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986);
see also In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). The Examiner
finds that Tsai and Fenn are analogous prior art references by relying on the
second test. Ans. 6; see In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004)
(citing In re GPAC, Inc., 57 F.3d 1573, 1577 (Fed. Cir. 1995)) (explaining
“[t]he identification of analogous prior art is a factual question.”).
Specifically, the Examiner finds that Tsai and Fenn are analogous prior art
references because they are “reasonably pertinent to solving the problem of
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method of weighting game pieces” and “used for amusement purposes in the
art area of games.” Ans. 6 (emphasis omitted). This finding implies that the
Examiner views the particular problem with which the inventor is involved
as weighting game/amusement pieces. See id. The Appellant argues:
Tsai and Fenn relate to the weighting of darts. The purpose of
weighting darts is to address aerodynamics as the dart flies
through the air. The present invention addresses a completely
different problem to be solved, the cracking of wood chess
pieces weighted by metal. This fact also shows the huge
differences between the Tsai and Fenn patents and the present
invention. The weighting of darts is about aerodynamics, not to
prevent the cracking of wood chess pieces, thus, the Tsai and
Fenn patents cannot be considered analogous art.
Appeal Br. 9. The Appellant’s contention is not persuasive of Examiner
error.
We note that “[a] reference is reasonably pertinent if, even though it
may be in a different field from that of the inventor’s endeavor, it is one
which, because of the matter with which it deals, logically would have
commended itself to an inventor’s attention in considering his problem.”
In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). The Appellant argues that
the field of endeavor is “designing playing pieces for a board game,
especially classical playing pieces for wood chess sets.” Appeal Br. 8. We
agree. However, whether Tsai and Fenn are for “designing playing pieces
for a board game, especially classical playing pieces for wood chess sets” is
not dispositive of the reasonable pertinence issue. Rather, Tsai and Fenn are
reasonably pertinent if, each, because of the matter with which they deal,
logically would have commended itself to an inventor’s attention in
considering his problem. See Clay, 966 F.2d at 659.
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A problem that the Appellant’s invention addresses, as described in
the Specification, is weighting chess pieces. Indeed, the Specification
describes “[a] long-felt problem associated with the manufacture of
chessmen has to do with weighting them, and with problems that weighting
causes. Chess players like to play with ‘heavy’ pieces. It is common, then,
for both plastic and wood pieces to be weighted.” Spec. ¶ 11. The
Appellant further specifies problems that weighting causes, including:
cracking of wooden chess pieces (see id. ¶ 12–14); traditionally, wooden
black chess pieces are made of denser wood than wooden white chess pieces
leading to an undesirable weight difference between black and white
counterpart pieces that is not cured by adding an equal unitary weight to
each piece (see id. ¶ 15); and weighting chess pieces so that the weighting
material does not interfere with communications between sensors in chess
pieces and a sensory chess board (see id. ¶¶ 17–18). However, these more
specific problems identified in the Specification fail to fully represent the
problem the inventor addresses, i.e., weighting chess pieces.
We agree with the Examiner’s finding that darts are game/amusement
pieces. Ans. 6. We note that Tsai’s and Fenn’s darts are hand-held and used
in combination with a target, e.g., a target board. See Tsai col. 1, ll. 11–15,
col. 2, ll. 19–22; Fenn, col. 1, ll. 13–17, col. 5, ll. 62–63, Fig. 2 (showing a
prior art steel tip dart received in a sisal scoreboard). And, each of Tsai and
Fenn teach one of ordinary skill in the art how to add weight to a dart, and
therefore, a game/amusement piece. See Ans. 6. More specifically, Tsai
teaches filling a hollow cavity (i.e., enclosed chamber 26) of a lawn dart
with weighted material 28, such as metal powder, pellets, sand, or the like
(Tsai col. 3, ll. 13–19, Fig. 2) and Fenn teaches embodiments where a
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hollow cavity of a dart is packed with weight powder, e.g., tungsten powder
51 (Fenn col. 5, ll. 14–17; col. 7, ll. 44–47, col. 9, ll. 6–10, 27–32, Figs. 5,
12, 13).
Therefore, we find that a problem addressed by each of Tsai and Fenn,
namely how to weight game/amusement pieces, also compares favorably to
the problem addressed by the Appellant/inventor, namely how to weight
chess pieces. See supra. For example, the problem addressed by Fenn can
be ascertained from its purpose, which concerns providing a user with the
ability to adjust the weight of a dart to their preference. Fenn, Title, Abstract
(“The parts of the dart may be provided in a kit form to allow a player to
adjust the dart weight, balance, and characteristics to his preference.”),
col. 4, ll. 9–15, 18–19. Fenn’s solution, is pertinent as well, as it includes
embodiments where a hollow cavity of the dart is packed with weight
powder, e.g., tungsten powder 51. Id. at col. 5, ll. 14–17; col. 7, ll. 44–47,
col. 9, ll. 6–10, 27–32, Figs. 5, 12, 13. Therefore, we find that a person of
ordinary skill would reasonably have consulted Fenn and applied its
teachings in seeking a solution to the problem of weighting chess pieces.
See also Heidelberger Druckmaschinen AG v. Hantscho Com. Prods., Inc.,
21 F.3d 1068, 1071 (Fed. Cir. 1994).
Further, we find that the purpose of weighting darts is not limited to
aerodynamics, but may concern a user’s preferences in handling the dart in
their hand (supra) and stability of the dart after its flight (see Tsai col. 3,
ll. 24–30). As for the latter purpose, Tsai describes “[i]t is an object of the
present invention to provide a lawn dart which has an overall light weight
with all its weight concentrated at its head member.” Tsai col. 2, ll. 11–14.
Tsai also describes that the benefit of the concentrating weight in the head
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member of the dart “enables the head member 16 to be able to restore to
vertical state immediately from any oblique position when the head member
16 is at the end of the trajectory and touching the ground.” Tsai col. 3,
ll. 26–30 (emphasis omitted). Here, Tsai teaches the solution for
accomplishing the object of its invention, i.e., filling a hollow cavity (i.e.,
enclosed chamber 26) with weighted material 28, such as metal powder,
pellets, sand, or the like. Id. at col. 3, ll. 13–19, Fig. 2. We find that a
person of ordinary skill would reasonably have consulted Tsai and applied
its teachings in seeking a solution to the problem of weighting chess pieces.
In view of the foregoing, we agree with the Examiner’s finding that
Tsai and Fenn are reasonably pertinent to the particular problem with which
the inventor is involved because of the matter with which they deal logically
would have commended itself to an inventor’s attention in considering his
problem.
Lastly, the Appellant argues that Ritter, Duke, Fenn, and Tsai do not
address “the problem of cracking when weighting the chess pieces with
metal.” Appeal Br. 9–10. The Appellant’s argument is not persuasive of
Examiner error. The Examiner need not show that one of ordinary skill in
the art would have combined the teachings of the cited prior art references
for precisely the same reasons disclosed by the Appellant so long as the
Examiner articulates reasoning with some rational underpinning sufficient to
support the conclusion of obviousness. See KSR, 550 U.S. at 418. As
discussed above, the Examiner adequately articulates and supports the
required reasoning.
Thus, we sustain the Examiner’s rejection of claim 13 and claim 14,
which depends therefrom.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
13, 14 103 Uvanni, Ritter, Tsai 13, 14

13, 14 103 Uvanni, Ritter, Fenn 13, 14
13, 14 103 Uvanni, Duke, Tsai 13, 14
13, 14 103 Uvanni, Duke, Fenn 13, 14
Overall
Outcome
13, 14

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).

AFFIRMED