Benjamin Radford et al.

Patent Trials and Appeals Board

May 4, 2020

2019006003 (P.T.A.B. May. 4, 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.
15/694,549 09/01/2017 Benjamin Radford FANDF101 8291
158147 7590 05/04/2020
Aaron Ward
401 Sherrow Ave
Falls Church, VA 22046
EXAMINER
WONG, STEVEN B
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
05/04/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BENJAMIN RADFORD and CELESTIA NAOMI WARD
____________

Appeal 2019-006003
Application 15/694,549
Technology Center 3700
____________

Before JENNIFER D. BAHR, JOHN C. KERINS, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–20. 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(a).
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THE INVENTION
Appellant’s invention relates to puzzles. Spec. ¶ 1. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
l. A puzzle comprising:
a substrate; and
a plurality of element fragments dispersed over the substrate
and including a first set of element fragments corresponding to
a first solvable element, and a second set of element fragments
corresponding to a second solvable element;
wherein the first solvable element is solvable according to a
first fold configuration of the substrate to unify the first set of
element fragments, wherein the first fold configuration is
associated with a first difficulty level based on irregular folds
from various predetermined but seemingly arbitrary angles; and
wherein the second solvable element is solvable according
to a second fold configuration of the substrate, different than
the first fold configuration, to unify the second set of element
fragments, wherein the second fold configuration is associated
with a second difficulty level, greater than the first difficulty
level, based on irregular folds from various predetermined but
seemingly arbitrary angles different than those of the first
difficulty level.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Wiederseim US 698,603 Apr. 29, 1902
Edborg US 2,327,875 Aug. 24, 1943
Ketch US 5,282,749 Feb. 1, 1994
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The following rejections are before us for review:
1. Claims 1–18 are rejected under 35 U.S.C. § 112(b) as indefinite for
failing to particularly point out and distinctly claim the subject matter which
a joint inventor regards as the invention.
2. Claims 1 and 4–15 are rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Edborg.
3. Claims 1–3 and 18 are rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Ketch.
4. Claim 19 is rejected under 35 U.S.C. § 102(a)(1) as anticipated by
Wiederseim.
5. Claims 16 and 17 are rejected under 35 U.S.C. § 103 as being
unpatentable over either Edborg or Ketch.
6. Claim 20 is rejected under 35 U.S.C. § 103 as being unpatentable
over Wiederseim.
OPINION
Indefiniteness of Claims 1–18
Claims 1 and 18
The Examiner considers that Appellant’s recitation of “irregular
folds” renders the claim indefinite. Final Act. 2. “It is unclear what is
irregular about the folds to identify them as ‘irregular’.” Id. Furthermore,
the Examiner considers that it is unclear what there is about the folds that
make one level in the puzzle more difficult than another. Id.
Appellant asserts that the claims are not indefinite and that, generally,
Appellant has acted as its own lexicographer to define the invention in the
Specification. Appeal Br. 10. Appellant argues that a person of ordinary
skill in the art would be able to derive the appropriate meaning to be given
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the claim terms at issue given the context contained in the claims and
throughout the Specification and drawings. Id. at 12.
In response, the Examiner considers “irregular” to be a term of degree
and that the Specification fails to provide any standard for measuring such
degree. Ans. 9.
A claim is properly rejected as indefinite under 35 U.S.C. § 112
second paragraph if, after applying the broadest reasonable interpretation in
light of the specification, the metes and bounds of a claim are not clear
because the claim “contains words or phrases whose meaning is unclear.” In
re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014) (per curiam)
(approving, for pre-issuance claims, the standard from MPEP § 2173.05(e));
see also Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5
(PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing
indefiniteness approved by the Federal Circuit in Packard).
In the instant case, the disputed term “irregular folds” infers that there
is such a thing as a “regular” fold which is distinguishable from an “irregular
fold.” We agree with the Examiner that it is unclear, even after reviewing
the Specification, the drawings, and the surrounding claim language, how a
person of ordinary skill in the art would distinguish between “regular” and
“irregular” folds. Appellant’s Specification refers to “irregular folds from
various predetermined but seemingly arbitrary angles.” Spec. ¶ 23.
Likewise, Appellant contends that “[t]he claim language itself makes clear
the boundaries of the subject matter for which protection is sought, by
articulating which features of the folds are irregular, e.g., in a geometric
sense (non-regular/non-symmetric) based on angles of the folds.” Appeal
Br. 11. Appellant’s Specification, however, does not provide sufficient
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guidance from which a person having ordinary skill in the art would be able
to distinguish between fold angles that would give rise to a regular/
symmetric fold and those that would give rise to a non-regular/
non-symmetric fold. Further in that regard, we note that there is no claim
limitation that restricts the shape of the substrate. Thus, the substrate could
be circular, oval shaped, or any of an almost infinite variety of geometric
shapes. Without having a frame of reference, such as a defined shape of the
underlying substrate, it is impossible for us to determine whether folding the
substrate in any particular way would result in a fold that is “irregular” as
opposed to “regular.”
With respect to the “difficulty level” term at issue, we are not
convinced that such term also renders the claim indefinite. The Examiner’s
concern that users may differ as to whether one task is more or less difficult
lacks evidentiary support. Appellant’s Specification provides examples of
tasks with increased difficulty. Spec. ¶ 29 (multiple folds, nested solutions).
Furthermore, there are objective means to determine if one task is more
difficult than another. One means could be to measure the time it takes to
complete the task. Another means could be to measure the error rate in the
number of attempts to complete the task. To the extent that there may be
individual differences among members of the population, such differences
can be accounted for by selecting an appropriate sample size of potential
users and then computing a statistical average and variance.
In summary, we determine that claim 1 is rendered indefinite by the
“irregular fold” claim language, but not the difficulty level language. In
view of the foregoing, we sustain the Examiner’s Section 112 indefiniteness
rejection of claims 1 and 18.
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Claims 2–17
These claims depend, directly or indirectly, from claim from claim 1
and are indefinite at least by reason of their dependency from claim 1. Final
Act. 2. They fall with claim 1.
Anticipation of Claims 1 and 4–15
by Edborg
In traversing the Examiner’s anticipation rejection, Appellant argues
that Edborg’s triangular fold angles are not “irregular.” Appeal Br. 18.
Thus, the rejection turns on trying to read an indefinite claim term onto the
prior art. It is well settled that a claim cannot be both indefinite and
anticipated. Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332
(Fed. Cir. 2010); In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011)
(holding that the Board erred in affirming an anticipation rejection of
indefinite claims). Because we have concluded that claim 1 is indefinite, the
art rejection of claims 1 and 4–15 must fall because it is necessarily based on
a speculative assumption as to the meaning of the claims. In re Steele, 305
F.2d 859, 862 (CCPA 1962). Under the circumstances, therefore, we reverse
the Examiner’s Section 102 anticipation rejection of claims 1 and 4–15 over
Edborg.
Anticipation of Claims 1–3 and 18
by Ketch
We reverse the Examiner’s Section 102 anticipation rejection of
claims 1–3 and 18 over Ketch for the same reasons expressed above with
respect to the Section 102 anticipation grounds over Edborg.
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Anticipation of Claim 19
by Wiederseim
Claim 19 is an independent claim. Claims App. Claim 19 differs in
scope from claim 1 in that omits irregular folds and angles, but includes a
“distraction element.” Id. Claim 19 is also limited to a book format. Id.
In traversing the rejection, Appellant argues that Wiederseim fails to
disclose resolving two different elements in successive steps. Appeal Br. 26.
Appellant argues that Wiederseim solves two elements in one step. Id.
In response, the Examiner takes the position that claim 19 does not
require first and second fold configurations. Ans. 15. In other words, the
claim can be satisfied by resolving the puzzle in a single step.
In reply, Appellant reiterates that Wiederseim is solved in a single
step. Reply Br. 5. Consequently, according to Appellant, it is not possible
for solution of the first element to decrease the difficulty in the second
element. Id.
Wiederseim is directed to a book or pamphlet that is arranged to
present a plurality of pairs of illustrations. Wiederseim, Figs. 1–4; p. 1,
ll. 8–22. The left side of each pair consists of one half of an illustration,
such as one half of an animal (the head). Id. The right side of each pair
contains the corresponding matching half of such animal (the tail). Id. The
pages are folded and arranged in such a manner that a user can flip through
the pages on the left side of the pamphlet and flip through the pages on the
right side of the pamphlet until a corresponding matched pair of illustrations
depict a completed animal. Id. The name of the animal also appears above
the picture of the animal. Id. One half of the name appears on the left page
and the other half on the right page. Id. Thus, when the animal picture is
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completed by correctly matching the left and right halves of the picture, the
name of the animal is also completed. Id.
Until the corresponding left and right halves of a picture are correctly
matched, the pamphlet displays an incorrect half-picture and half-name. Id.
For example, in Figure 2, the pamphlet displays a half-picture and half-name
of a monkey on the left and an elephant on the right. Id. Fig. 2. If the user is
attempting to solve the puzzle for the elephant, the half-monkey name and
picture serves as a distraction element that introduces a distracting ambiguity
to solving the puzzle.
The dispute between Appellant and the Examiner boils down to
whether claim 19 requires the puzzle to be solved in two separate and
sequential steps as opposed to a single step. The Examiner’s position is that
the claim does not explicitly require two separate and sequential steps.
Under the Examiner’s approach, solving the second (name) element is less
difficult than solving the first (picture) element, because the difficulty level
of solving the name element is essentially zero once the picture element is
solved. Appellant does not argue that claim 19 explicitly recites two
separate and sequential steps. Appeal Br. 24–27. Instead, Appellant
essentially asks us to infer that the claim requires separate and sequential
steps so that the difficulty of the first step can be compared to the difficulty
of the second step.
Using a broad, but reasonable, construction of the claim language, we
agree with the Examiner that the limitations of claim 19 are satisfied by
Wiederseim. There are two solvable elements, namely a picture element and
a name element. Wiederseim, Figs. 1–4. There is little or no difficulty in
solving the name element once the picture element is solved. Rather than
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infer limitations of separate and sequential steps when the claim contains no
such explicit limitation, we think the better approach is for Appellant, in the
event of further prosecution of the claimed subject matter, to amend the
claim so that it explicitly claims what Appellant wants us to infer.
We sustain the Examiner’s Section 102 anticipation rejection of
claim 19.
Unpatentability of Claims 16 and 17
over Either Edborg or Ketch
Claims 16 and 17 depend, directly or indirectly, from claim 1. In
view of our determination that claim 1 is indefinite, we reverse the
Examiner’s art rejection of claims 16 and 17. Steele, 305 F.2d at 862.
Unpatentability of Claim 20
over Wiederseim
Claim 20 depends from claim 19 and adds the limitation:
wherein the plurality of substrates are removable from the
puzzle, and wherein the plurality of substrates are to form at
least one solvable aggregate element based on element
fragments dispersed among the plurality of substrates when the
plurality of substrates are arranged in a layout configuration.
Claims App. The Examiner concludes that it would have been obvious to a
person of ordinary skill in the art at the time the invention was made to make
the pages of Wiederseim removable from the book. Final Act. 5
(incorporating findings from February 2, 2018 Non Final Action 6).
In traversing the rejection, Appellant merely recites a plethora of
generic legal principles that apply to obviousness rejections, together with a
blanket statement that the claim elements are not met by the prior art.
Appeal Br. 27–28. Such does not rise to the level of a substantive argument
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for the patentability of claim 20. Cf. In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) (holding that the Board had reasonably interpreted 37 C.F.R. §
41.37(c)(1)(vii) as requiring “more substantive arguments in an appeal brief
than a mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art”).
Appellant fails to apprise us of error with respect to either the
Examiner’s findings of fact or legal conclusion of obviousness. We sustain
the Examiner’s Section 103 unpatentability rejection of claim 20 over
Wiederseim.
CONCLUSION
Claims
Rejected
§ Reference(s)/Bases Affirmed Reversed2
1-18 112 Indefiniteness 1-18
1, 4-15 102 Edborg 1, 4-15
1-3, 18 102 Ketch 1-3, 18
19 102 Wiederseim 19
16, 17 103 Edborg 16, 17
16, 17 103 Ketch 16, 17
20 103 Wiederseim 20
Overall
Outcome
1-20
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

2 The reversal of the art rejections in this case are pro forma reversals under
In re Steele, 305 F.2d 859, 862 (CCPA 1962) and should not be construed as
resolving any factual issues related to the substantive merits of the
rejections.