Appeal No. 2003-1341
Application No. 09/447,071
Finally, we observe that the examiner first made a factual
finding that table tennis can be, and historically has been,
played upon a wide variety of table sizes. The appellants have
not rebutted this factual finding; instead, they have only stated
that the references fail to show this feature. Further, where
patentability is said to be based upon particular chosen
dimensions or upon another variable recited in a claim, the
applicant must show that the chosen dimensions are critical. In
re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir.
1990).
Clearly, the setting of a table tennis table dimension1 is
an arbitrary rule making exercise and not critical. Selecting a
table wider than the standard width would have been obvious to
one of ordinary skill in the art at the time the invention was
made.2
We therefore affirm this rejection.
1 We question whether this limitation complies with 35 U.S.C. § 112, second
paragraph. Various dimensions may be permitted for table tennis, paddle
tennis, or Ping-PongŪ, depending on the league rules and whether free or
tournament play is underway. In the event further prosecution is undertaken
regarding this application, the appellants and the examiner should visit this
issue.
2 In the event of further prosecution, we direct the examiner to consider US
Patent 4,521,017, which discloses a table for table tennis of 6 feet in width
(abstract, line 11), and US Patent 3,717,343, which suggests tables which are
wider, longer and lower than table tennis tables (column 2, lines 49-50), up
to 12 feet wide (column 4, lines 25-26). The USA Table Tennis rules, rule
1.1, appear to specify a table of 5 feet in width. Copies of these references
are attached hereto.
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