2020001501 (P.T.A.B. Jul. 1, 2020)

Stephen Shoemaker

Patent Trials and Appeals BoardJul 1, 2020

2020001501 (P.T.A.B. Jul. 1, 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. 16/352,532 03/13/2019 Stephen P. Shoemaker JR. SHOES-98543 3050 24201 7590 07/01/2020 FULWIDER PATTON LLP HOWARD HUGHES CENTER 6100 CENTER DRIVE, SUITE 1200 LOS ANGELES, CA 90045 EXAMINER GRAHAM, MARK S ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 07/01/2020 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): docketla@fulpat.com eOfficeAction2@fulpat.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEPHEN P. SHOEMAKER, JR. Appeal 2020-001501 Application 16/352,532 Technology Center 3700 Before CHARLES N. GREENHUT, BRETT C. MARTIN, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–4. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Stephen P. Shoemaker, Jr. Appeal Br. 2. Appeal 2020-001501 Application 16/352,532 2 CLAIMED SUBJECT MATTER The claims are directed to “an arcade game with a crane mechanism that uses a suction device to capture and extract aluminum cans of beverages or other canned items.” Spec. ¶ 2. Claim 1, the sole independent claim reproduced below, is illustrative of the claimed subject matter: 1. An arcade game, comprising: a housing; a vacuum pick-up device including a circular suction cup having a suction cup diameter; player controls for maneuvering the vacuum pick-up device; a plurality of aluminum cans of beverage, inverted and arranged on a playing surface, the inverted aluminum cans having a bottom surface comprising an annular protruding rim and a circular smooth face having a diameter larger than the suction cup diameter; wherein the player controls allows a player to maneuver the vacuum pick-up device over a selected one of the inverted aluminum cans so as to locate the pick-up device to place the suction cup on the aluminum can's circular smooth face and extract the aluminum can from the playing surface. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Chirnomas Shoemaker (“Shoemaker, Jr. ’881”) Shoemaker (“Shoemaker, Jr. ’167”) US 6,547,096 B1 US 6,598,881 B1 US 8,070,167 B1 Apr. 15, 2003 July 29, 2003 Dec. 6, 2011 Appeal 2020-001501 Application 16/352,532 3 REJECTIONS Claim 1 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Shoemaker, Jr. ’167 and Shoemaker, Jr. ’881. Final Act. 2. Claims 2–4 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Shoemaker, Jr. ’167, Shoemaker, Jr. ’881, and Chirnomas. Final Act. 3. OPINION Obviousness In rejecting claim 1, the Examiner states that Shoemaker, Jr. ’167 teaches all aspects of the claim except for the use of aluminum beverage cans as a prize. Final Act. 2. The Examiner then notes that Shoemaker ’881 teaches that it was known to use food stuffs as a prize. Id. The Examiner points out that he “took official notice that aluminum cans containing a beverage and having an annular protruding rim and a circular smooth face at their bottom are a commonly known food stuff.” Id. Appellant argues that “the Examiner has provided no evidence (intrinsic or extrinsic) to support” the position that the prior art teaches using aluminum cans in the vending machines at issue. Reply Br. 2–3. We agree with Appellant that “[t]he jump from food stuff to aluminum cans here is too large a chasm to be considered ‘obvious’ without some teaching, suggestion, or hint in the prior art that this would be possible.” Appeal Br. 5. The fact that a claimed species or subgenus is encompassed by a prior art genus is generally not sufficient by itself to establish a prima facie case of obviousness. In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1994), see also MPEP 2144.08. Appellant is correct that “there are thousands of foodstuffs Appeal 2020-001501 Application 16/352,532 4 that could not be picked up with the crane of the original patent” and the general teaching of picking up foodstuffs packaged in bags, as shown in the prior art of record, would not reasonably lead one of skill in the art to select aluminum cans for picking up, let alone inverted cans as claimed. Reply Br. 2. Accordingly, we do not sustain the Examiner’s rejection. CONCLUSION The Examiner’s rejections are REVERSED. More specifically, DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 103 Shoemaker, Jr. ’167, Shoemaker, Jr. ’881 1 2–4 103 Shoemaker, Jr. ’167, Shoemaker, Jr. ’881, Chirnomas 2–4 Overall Outcome: 1–4 REVERSED