Appeal No. 2006-1747
Application No. 10/455,666
2 3 4 5
invention.1, , , ,
OPINION
We reverse the rejection of claims 1-5 and 17-23, and affirm
the rejection of claims 34 and 38.
Claims 1-5 and 17-23
The examiner argues that “[t]he application as filed does
1 The examiner does not argue that the appellant’s disclosure would have
failed to enable one of ordinary skill in the art to make and use the claimed
invention. Hence, we consider the examiner’s rejection to be under the
35 U.S.C. § 112, first paragraph, written description requirement.
2 The examiner omits claim 38 from the statement of the rejection (answer,
page 3). However, the examiner’s reliance upon the comments regarding
claim 34 (answer, page 4) indicates that the examiner intends for the argument
set forth regarding claim 34 to be applied to the same issue in claim 38.
3 The examiner does not formally reject claims 19 and 38 under
35 U.S.C. § 112, second paragraph, but argues that those claims are indefinite
(answer, pages 4-5). Regarding claim 19 the examiner argues: “The drawer has
only one space there are no compartments. Therefore, to claim ‘a space of a
drawer’ would not only introduce new matter, but also render the claim
indefinite” (answer, page 4). Claim l9, which requires “an air blower being
retained in a drawer, said drawer being slidably retained in said combination
game table” does not recite “a space of a drawer”. Thus, it is the examiner’s
argument, rather than claim 19, that is unclear. As for claim 38, the
examiner argues that it is unclear why an electrical cord has been provided
with a combination gambling and billiards table (answer, pages 4-5). The
relevant inquiry under 35 U.S.C. § 112, second paragraph, is whether the claim
language, as it would have been interpreted by one of ordinary skill in the
art in light of the appellant’s specification, sets out and circumscribes a
particular area with a reasonable degree of precision and particularity. See
In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). There is no
requirement that the claims include an explanation as to why the claims
include the recited elements.
4 The examiner objects under 35 U.S.C. § 132 to an amendment filed September
13, 2004 as introducing new matter to the disclosure (answer, page 5). The
alleged new matter, i.e., deletion of the requirement that the pool table is
full sized and changing “at least one spring pin” to “a respective spring
pin”, does not pertain to an issue before us on appeal. Consequently, the
objection is a petitionable issue to be decided by the group director, rather
than an appealable issue to be decided by the board. See Manual of Patent
th
Examining Procedure § 1002.02(c)(3)(c), 8 ed., rev. 2, May 2004.
5 The examiner argues that “[i]f indeed one is to interpret that a drawer is
the space or cavity as appellant appears to be suggesting, then it is noted
that the claims could be rejected over the prior art of record, namely
Kavka ‘127 [US D247,127] and Tsai ‘797 [US 6,347,797]” (supplemental answer,
page 2). Kavka does not disclose an air blower, and Tsai’s air blower (65) is
mounted at the end of a combination table rather than in a space or cavity
between the two tables.
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