Ex Parte Allara et al

Patent Trial and Appeal Board

Sep 30, 2016

12779554 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121779,554 05/13/2010
27530 7590 10/04/2016
Nelson Mullins Riley & Scarborough LLP
IP Department
100 North Tryon Street
42nd Floor
Charlotte, NC 28202-4000
FIRST NAMED INVENTOR
Kara R. Allara
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
32668/09074 8757
EXAMINER
PIERCE, WILLIAM M
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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):
ip@nelsonmullins.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARA R. ALLARA, JEFFREY P. ALLARA, and
NICHOLE T. ANDRIGHETTI
Appeal2013-002442
Application 12/779,554
Technology Center 3700
Before STEFAN STAICOVICI, ANNETTE R. REIMERS, and
LISA M. GUIJT, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2013-002442
Application 12/779,554
STATEMENT OF THE CASE1
Kara R. Allara et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner's decision to reject claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION pursuant
to our authority under 37 C.F.R. § 41.50(b).
CLAIMED SUBJECT MATTER
The claimed subject matter relates to "a word forming game
apparatus and a method of play." Spec. para. 2; Fig. 1. Claims 1, 13, 18,
and 19 are independent.
recite:
Claims 1 and 19 are illustrative of the claimed subject matter and
1. A method of playing a word game comprising:
a. providing, to a group of two or more players, a word
game apparatus comprising a plurality of tiles displaying at least
one letter on a first side of each tile, wherein a second side of the
tile indicates whether the letter displayed on the first side of the
tile is a consonant or vowel;
b. placing each of the tiles letter-side down and
shuffling the tiles;
1 Appellants submitted an Amendment to the claims before filing an Appeal
Brief. See Amendment To The Claims Before Filing Of Appeal Brief 2--4
(filed July 16, 2012). The Examiner states that "[t]he examiner has entered
this amendment believing the form of the claims as presented therein are in
better form for this appeal. Such entry is made of record in the attached
Advisory Action." Ans. 3 (mailed Oct. 1, 2012); see also Advisory Act.
Summary Sheet (mailed Oct. 1, 2012). Accordingly, the claim set before us
for review is the one submitted with the Appeal Brief. See Appeal Br. Claims
App. (filed July 17, 2012).
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Application 12/779,554
c. selecting at least one consonant tile and at least one
vowel tile;
d. flipping the selected consonant and vowel tiles over
so that the letters are viewable by the players;
e. having each player write down as many words as
can be formed within a set timeframe;
f. scoring the game based upon the number or
difficulty of the words formed; and
g. continuing play by repeating steps (b) through (f)
until a predetermined score has been reached or a predetermined
number of rounds has been played.
19. A game apparatus comprising:
a. a plurality of tiles displaying at least one letter,
which is a consonant or a vowel, on one side of each tile;
b. a container for consonant tiles and a container for
vowel tiles, wherein the container indicate whether they contain
consonants or vowels;
c. a mechanism for selecting the number of tiles for
play;
d. a timing mechanism; and
e. a scoring mechanism.
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Application 12/779,554
REJECTIONS
I. Claims 1-17 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter.
II. Claim 1-17 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the invention.
III. Claims 18-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Joyce (US 1,528,060, iss. Mar. 3, 1925).
ANALYSIS
Rejection I2
The Examiner rejects claims 1-17 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. See Final Act. 2; see also Ans.
4-6, 8-11. The Examiner determines that "no particular machine is required
to perform the claimed method steps, nor do the steps result in any
transformation of a particular article," as such, the claims are directed to an
abstract idea. Ans. 4. According to the Examiner:
None of the steps are performed by a machine, but rather are
performed by a human being. Placing, flipping and writing down
words does not transform the tiles or die. They remain the same,
just arguably in a different location or position. Such does not
transform them to a different state or thing. As such, the step of
using the device or table does not impose a meaningful limit on
the claimed invention.
2 The Examiner determines that the claims "overlap two statutory classes"
(i.e., "an apparatus and a method"). See Final Act. 2; see also Ans. 4. We
disagree. In this case, the claims are directed to methods including a
"providing" step of an apparatus having the requisite structure. See Reply Br.
1; see also id. at 3--4; Rejection II infra.
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Ans. 4. The Examiner further determines that "[ s ]ince the claimed method
requires no machine implementation [and] requires no transformation of a
particular article [, it] is seen as an attempt to receive patent protection for an
abstract idea in the form of a new set of rules." Ans. 5.
Appellants argue the claims as a group, and we select claim 1 as
representative. Appeal Br. 5-9. Claims 2-17 stand or fall with claim 1. See
37 C.F.R. § 41.37(c)(l)(iv). Appellants contend that, "[t]he present
invention is not directed to an abstract set of instructions for playing a game
that has no physical components[;] ... the method [of the subject invention]
cannot be considered abstract in nature because it requires the manipulation
of physical components." Appeal Br. 7. Specifically, Appellants contend:
The method steps of the invention DO result in a transformation
of a particular article. In fact, the first step of the method
involves placing each of the tiles letter-side down and then
shuffling the tiles. This step, in and of itself, involves the
transformation of a particular article. Namely, the tiles are turned
in a certain manner and then moved about to mix them us. This
is a transformation (moving/mixing) of matter (tiles). The third
step of the method involves flipping at least one consonant and
vowel tile over. Again, this is a transformation (flipping) of
matter (tiles). After writing words and scoring the round, the
above steps are repeated, again transforming the same matter
(tiles) by moving, mixing, and flipping them.
Id. at 8; see also Reply Br. 1-3.
The Examiner applied the Office's Interim Guidance, which discusses
Bilski v. Kappas, 130 S.Ct. 3218 (2010) and patent-ineligible subject matter.
See Ans. 5; see also id. at 9-10; Reply Br. 3. However, the Interim
Guidance was developed before the Supreme Court issued its decision in
Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S.Ct. 2347 (2014) further
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explaining the law in this area. Despite this intervening precedent, we
affirm the Examiner's rejection of claims 1-17 under 35 U.S.C § 101. In
affirming the Examiner's rejection, we apply the decision in Alice, as set
forth below.
The claims in Alice were directed to a "method of exchanging
obligations as between parties." Alice, 134 S.Ct. at 2353. According to the
Supreme Court's framework, we must first determine whether the claims at
issue are directed to a category of non-statutory subject matter (i.e., laws of
nature, natural phenomena, and abstract ideas). Id. If not, the claims satisfy
§ 101. Id. If the claims are directed to an abstract idea, we must secondly
"consider the elements of each claim both individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Id. at 2355. The
Supreme Court characterizes the second step of the analysis as "a search for
an 'inventive concept'-i.e., an element or combination of elements that is
'sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself.'" Id. Present examination
guidelines issued in the wake of Alice have implemented the two-step Alice
framework for examination of applications. 3
Addressing Part 1, the present guidelines provide examples of abstract
ideas referenced in Alice with one example being "a method of organizing
human activity." Alice, 134 S.Ct. at 2356. Although the Alice court was
concerned with instructions of how to hedge risk, the present claims are
3 See Preliminary Examination Instructions in view of the Supreme Court
Decision in Alice Corp. v. CLS Bank Int'!, 134 S.Ct. 2347 (2014)
(Memorandum to the Examining Corps) (June 25, 2014); see also July 2015
Update on Subject Matter Eligibility, 80 Fed. Reg. 45429 (July 30, 2015).
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directed to instructions of how to play a word game. We are not aware that
Appellants' limitations are likewise directed to anything other than a method
of organizing a human activity. Based on this, we conclude that the claims
are indeed directed to an abstract idea as per Alice, and as such, we must
proceed to Part 2 as instructed to determine whether the abstract idea has
been applied in an eligible manner.
Part 2 seeks to ascertain whether there are other limitations in the
claim that show a patent-eligible application of the abstract idea, e.g., more
than a mere instruction to apply the abstract idea. In this regard, Alice
provides guidance as to whether "significantly more" is recited by providing
such examples as whether the claimed improvement is to another technology
or field. Another possibility for a showing of "significantly more" is
whether the claim recites meaningful limitations beyond generally linking
the abstract idea to a particular environment. We are instructed that if there
are no meaningful limitations in the claim, then the claim should be rejected
under Section 101. Appellants primarily address the applicability of the
machine-or-transformation test and the Examiner's "overly narrow
interpretation and application of the test." See Appeal Br. 6-9; see also
Reply Br. 1-3.4 As such, Appellants contend that "the [subject] invention
involves manipulating various physical components (tiles) to accomplish an
end result. ... Thus, the method cannot be considered abstract in nature
because it requires the manipulation of physical components." Appeal Br. 7.
However, Appellants do not to point to any meaningful features of the
4 Both Appellants and the Examiner understand that "[t]he machine-or-
transformation test is not the sole test for deciding whether an invention is a
patent-eligible 'process."' Bilski, 130 S.Ct. at 3227; Appeal Br. 6-9; Reply
Br. 1-3; Ans. 8-11.
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claims, and we do not find a generic expression of a challenging word game
to be persuasive of an exception under Part 2. An instruction to apply an
abstract idea using some unspecified, generic equipment (in this case, tiles)
"is not 'enough' to transform the abstract idea into a patent-eligible
invention." See Alice, 134 S. Ct. at 2351 (citing Mayo, 132 S. Ct. at 1297).
Thus, none of the recited steps viewed "both individually and 'as an ordered
combination,"' transform the nature of the claim into patent-eligible subject
matter. See Alice, 134 S.Ct. at 2355 (quoting Mayo, 132 S.Ct. at 1297,
1298).
In Alice, the Supreme Court determined that Alice's claims to
methods were ineligible because "the claims at issue amount to 'nothing
significantly more' than an instruction to apply the abstract idea of
intermediated settlement using some unspecified, generic computer." Alice,
134 S.Ct. at 2360 (citation omitted). This holding in Alice is analogous to
the present matter in that Appellants are seeking patent protection for word
game instructions, such as providing a plurality of tiles, placing and
shuffling the tiles, flipping the tiles, each player evaluating the tiles for word
formation, scoring the game based on the number or difficulty of words
formed, and continuing play based on a predetermined score or number of
rounds of play. We are of the opinion that, as in Alice, "nothing
significantly more" is claimed by Appellants. Nor do Appellants
persuasively indicate how such claimed steps render these instructions or
rules anything other than an abstract idea as found by the Examiner. Ans. 5,
10-11; Appeal Br. 6-9; Reply Br. 1-3. As such, Appellants do not convince
us that the Examiner erred in using the machine-or-transformation test as
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simply one factor in determining whether the claims are directed to patent-
eligible subject matter.
Accordingly, and based on the analysis above, we are not persuaded
the Examiner's rejection of method claims 1-1 7 as being ineligible subject
matter is improper. However, we are instructed that "[ m ]ere reliance by the
Board on the same type of rejection or the same prior art references relied
upon by the [E]xaminer, alone, is insufficient to avoid a new ground of
rejection where it propounds new facts and rationales to advance a rejection-
none of which were previously raised by the [E]xaminer." In re Stepan Co.,
660 F.3d 1341, 1345 (Fed. Cir. 2011) (citation omitted). Accordingly, we
enter a new ground of rejection under 35 U.S.C. § 101 with respect to claims
1-17 as being directed to ineligible subject matter, and we enter this new
ground of rejection in order to afford Appellants a fair opportunity to
respond.
Rejection II
The Examiner rejects claims 1-17 under 35 U.S.C. § 112 second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
See Final Act. 2; see also Ans. 6, 11-12. The Examiner determines that
"[t]he instant claims are constructed 'providing' the structure of an apparatus
while additionally reciting 'steps' to a process rendering the scope of the
claim unclear." Ans. 11-12. According to the Examiner, "it is not clear if
one practicing the steps with [sic] while providing a different apparatus or
using the apparatus in a different way would or would not be infringing upon
the claim." Id. at 12.
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In this case, if one is practicing the steps of the claimed method with a
different apparatus that meets the structural features of the claimed
apparatus, then the claimed method would be infringed; whereas, if one is
practicing the steps of the claimed method with a different apparatus that
does not meet the structural features of the claimed apparatus, then the
claimed method would not be infringed. Further, if one is using the claimed
apparatus in a different way (via a different method), then the claimed
method would not be infringed. We agree with Appellants that the claims
are directed to methods including an apparatus having the requisite structure
and that the claims "do[] not have any ambiguity as to [their] scope." Reply
Br. 3--4.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of claims 1-17 for indefiniteness.
Rejection III
The Examiner finds:
Claims 18-20 lists a combination of elements of which
only the cards are shown in Joyce. The use of containers, dice,
timers, score sheets and holding trays in games are old and well
known game elements to provide in combination. As such to
have included containers to help store the cards of Joyce, dice to
select player order, timers to limit the amount of time a player
has to complete a task, score sheets to record events of the game
and trays as a matter of convenience to hold game pieces would
have been an obvious combination to one of ordinary skill in the
art. The fact that [Appellants have] recognized another advantage
which would flow naturally from following the suggestion of the
prior art cannot be the basis for patentability when the differences
would otherwise be obvious. See Ex parte Obiaya, 227 USPQ
58, 60 (Bd. Pat. App. & Inter. 1985).
Final Act. 3; see also Ans. 6.
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Appellants argue the claims as a group, and we select claim 19 as
representative. Appeal Br. 9-11. Claims 18 and 20 stand or fall with claim
19. See 37 C.F.R. § 41.37(c)(l)(iv). Appellants contend "although the
Examiner fails to point it out, the cards of Joyce must also be exchanged for
tiles in order to satisfy the claim limitations." Appeal Br. 10. However, as
pointed out by the Examiner in the Answer, "[ s ]uch a modification is not
necessary for Joyce to read on the claimed invention since [under] the
broadest reasonable interpretation of a 'tile' is met by the cards of Joyce.
Most broadly any thin flat playing piece, such as a card is considered a
'tile'." Ans. 12-13. Appellants do not apprise us of Examiner error.
Appellants contend that "[t]here is no evidence that the elements
suggested by the Examiner to be known in the art actually were even known
in the art in 1925." Reply Br. 5. Appellants further contend that "if Joyce
were modified as suggested by the Examiner, the intended function of the
Joyce invention would be destroyed." Appeal Br. 10; see also Reply Br. 5-
7. In particular, Appellants contend:
[T]he Examiner suggests that Joyce's card game could be
modified to include containers, dice, timers, score sheets, and
holding trays because those elements are alleged to be common
game elements. However, the addition of these elements would
be useless in the invention of Joyce. For example, there would
be no need to provide a container for the vowel cards and a
container for the consonant cards, as they are playing cards and
not tiles. Placing playing cards into a container would serve no
purpose in the invention of Joyce. Similarly, there is no need for
a set of dice in the game of Joyce because play passes in rotation.
Col. 1, lines 52-53. There is no need in Joyce for a numerical
selection of any type according to the game play. Further, there
is no need for a timer in the game of Joyce, as the players are
eliminated as they fail to solve their problems correctly. Col. 2,
lines 54-56. For the same reason (players in Joyce are eliminated
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as they fail to solve their problems correctly), there would be no
purpose for a score card of any type. Lastly, there is no need in
Joyce for a holding tray because, again, the game in Joyce
involves playing cards and not tiles.
Appeal Br. 10-11; see also Reply Br. 5-7.
We are not apprised of error based on the identified differences in the
relied-upon prior art because Appellants have not persuasively shown that
these differences undermine the factual findings or reasoning relied on to
support the conclusion of obviousness. See Final Act. 3--4; see also Ans. 7,
13-14. In particular, Appellants have not provided any persuasive evidence
or argument sufficient to show that the proposed improvements would have
been more than a predictable use of the prior art elements according to their
established functions. "The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007). "If a person of ordinary skill can implement a predictable variation,
§ 103 likely bars its patentability." Id. at 417.
In this case, we agree with the Examiner that the proposed
modifications (1) "would not destroy the cards of Joyce such that they are no
longer usable to play games. Instead they would still be clearly operable to
play card games as intended"; and (2) would expectedly allow an individual
to play games having "the ability to more easily store the game pieces,
generate random results such as which player is to proceed first, limit the
time a player has for a tum, more easily record the score of the game, and
more easily hold his game pieces." Ans. 13; see also Final Act. 3--4.
Appellants contend "the Examiner fails to provide any support for the
structural modifications to the game in Joyce" and "the Examiner has failed
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to provide any basis for adding six new elements to the game in Joyce that is
only disclosed as having one element." Reply Br. 6. We disagree.
In both the Final Rejection and the Answer, the Examiner provides
reasons with rational underpinnings for why a skilled artisan would make the
proposed structural modifications to Joyce. See Final Act. 3--4 ("[O]ne
clearly looking to limit the amount of time a player had to complete a tum or
being able to record a score would surely consider combining a timing
mechanism or a scoring mechanism with the indicia bearing game pieces of
Joyce" and "to make it more convenient to handle or store such game pieces,
one skilled in the art would surely consider the use of a container."); see also
Ans. 7, 13-14. See KSR, 550 U.S. at 421 ("A person of ordinary skill is also
a person of ordinary creativity, not an automaton.").
Further, the Examiner's proposed modifications to Joyce do not
appear to be uniquely challenging, and Appellants have not explained with
any specificity why a person of ordinary skill in the art would not have had
an expectation of success in making the proposed modifications. See In re
O'Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988) (noting that all that is required
is a reasonable expectation of success, not absolute predictability of
success).
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of claim 19 as unpatentable over Joyce. We further sustain the
Examiner's rejection of claims 18 and 20, which fall with claim 19.
DECISION
We REVERSE the Examiner's decision to reject claims 1-17 under
35 U.S.C. § 112 second paragraph, for indefiniteness.
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We AFFIRM the Examiner's decision to reject claims 18-20 under 35
U.S.C. § 103(a) as unpatentable over Joyce.
We AFFIRM the Examiner's decision to reject claims 1-17 under 35
U.S.C. § 101 as being directed to ineligible subject matter, but this
affirmance is designated as a New Ground of Rejection in under 37 C.F.R.
§ 41.50(b). This New Ground of Rejection is entered because it relies on
reasons different from and/or additional to those stated by the Examiner and
also to provide Appellants a fair opportunity to respond.
Further, 37 C.F.R. § 41.50(b) provides that, "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 41.50(b) also provides that Appellants must, WITHIN
TWO MONTHS, exercise one of the following options:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek
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review under 35 U.S.C. §§ 141or145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)
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