Appeal No. 2001-1225 Page 7
Application No. 09/019,693
With regard to the requirement for a plurality of balls, we first focus on the fact that
claim 1 is directed to a game and not to a method for playing a game. This being the
case, from our perspective, one of ordinary skill in the art would have found it obvious to
furnish more than one ball with the modified Seede game to provide the advantage of
allowing the game to continue if the ball in play leaves the playing surface, or is damaged
or lost (In re Sovish, supra). The prior art teachings relied upon need not disclose the
same advantage that the appellant alleges, for all that is required is that there is a
reasonable suggestion to combine the references (see In re Kronig, 539 F.2d 1300,1304,
190 USPQ 425, 427-28 (CCPA 1976) and Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat.
App. & Int. 1985)). We view Sterlicchi, Schwartz, Chou and Laciste as merely being
evidence that it was known at the time of the appellant’s invention to provide more than one
projectile for use in a table game.
For the reasons set forth above, it is our conclusion that the combined teachings of
the applied references establish a prima facie case of obviousness with regard to the
subject matter recited in claim 1. This being the case, we shall sustain the rejection of
claim 1 and of claims 2, 3, 8 and 9, which the appellant has chosen to group therewith. In
arriving at this conclusion, we have carefully considered the various arguments in rebuttal
presented by the appellant. However, they have not convinced us that the rejection of
these claims should not stand. Our position with regard to each of the arguments should
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