Ex Parte Bull

Board of Patent Appeals and Interferences

Mar 13, 2007

09931817 (B.P.A.I. Mar. 13, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEPHEN M. BULL
____________

Appeal 2007-0472
Application 09/931,817
Technology Center 3700
____________

Decided: March 13, 2007
____________

Before HUBERT C. LORIN, ANITA PELLMAN GROSS, and ANTON W.
FETTING, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The appeal is from a decision of the Examiner rejecting claims 25-28
over the prior art1. 35 U.S.C. § 134 (2002). We have jurisdiction under
35 U.S.C. § 6 (b) (2002).
We AFFIRM.

1 Claims 1-24 and 29-39 are subject to restriction and have been withdrawn
from consideration.
Appeal 2007-0472
Application 09/931,817

2

Appellant, in the Brief2, argues the claims as a group. Pursuant to the
rules, the Board selects representative claim 25 to decide the appeal.
37 CFR § 41.37(c)(1)(vii) (2005).
Claim 25 reads as follows:
25. A method of providing a game that creates awareness of
at least one sponsor, the method comprising:

defining a plurality of game spaces, each game space including
an advertising object and a clue involving the advertising object,
wherein solving the clue includes interacting with the advertising
object, thereby creating awareness of a sponsor of the advertising
object; and

after solving the clue, directing a player to proceed from one
game space to a next game space including a next advertising object.

ISSUES
The issue on appeal is whether Appellant has shown that the
Examiner erred in concluding that a prima facie case of anticipation and/or
obviousness is made by Sporgis’ disclosure of a treasure hunt type game run
from a website having advertisements played on a web-enabled wireless
communication device receiving solvable clues.

2 Our decision will make reference to Appellant’s Appeal Brief (“Br.,” filed
1 September 2006), the Examiner’s Answer (“Answer,” mailed 25
September 2006) and to the Reply Brief (“Reply Br.,” filed 10 October
2006).

Appeal 2007-0472
Application 09/931,817

3
FINDINGS OF FACT
The following findings of fact (FF) are believed to be supported by at
least a preponderance of the evidence. To the extent any finding is a
conclusion of law, it may be treated as such.
1. The invention claimed is drawn to a method of playing a game
involving game spaces, advertising objects, and clues. Solving a clue
includes interacting with the advertising object and once solved directs the
player to proceed to the next game space and corresponding advertising
object.
2. The Examiner finally rejected claims 25-28 as being unpatentable
under 35 U.S.C. § 102(e) or 103(a) over Sporgis (Answer 3).
3. U.S. Patent 6,320,495 (“Sporgis”) issued on 20 November 2001 on an
application filed on 24 March 2000 and therefore qualifies as prior art under
35 U.S.C. § 102(e).3
4. The Examiner has made a limitation-by-limitation analysis of the
claims. (Answer 4-5).
5. The Examiner finds that “either Sporgis inherently has at least one
advertising object in each game space (i.e., as a clue), or it would have been
obvious to one of ordinary skill in the art at the time of the invention to have
modified Sporgis to have at least one advertising object in each game space
in order to carry out the suggestion that commercial sponsors may support
the game in exchange for advertising rights.” (Answer 4).
6. Appellant makes one rebuttal argument to the Examiner’s prima facie
case:

3 Appellant does not challenge Sporgis’ qualifications as prior art.
Appeal 2007-0472
Application 09/931,817

4
“Appellant respectfully submits that Sporgis fails to disclose or
suggest a game that creates awareness of a sponsor by interacting with
an advertising object of the sponsor to solve a clue.”

(Br. 5-6).

7. Appellant finds, as we do, that Sporgis (col. 5, ll. 45-47) describes
giving players clues which (when solved) direct them to locate various
items. (Br. 5).
8. Sporgis (col. 2, ll. 28-35) also indicates that the
use of a web enabled wireless communications device allows the
internet and world wide web to be used as the medium to transmit
clues to players and receive their positions. It also allows players to
utilize the resources of the web to solve clues …. The web is also
ideal for providing advertising space to game sponsors and others.

9. Appellant finds, as we do, that Sporgis (col. 3, ll. 21-23) discloses that
commercial sponsors can support a game in exchange for affiliation with the
game and advertising rights. (Br. 6).
10. Appellant finds, as we do, that Sporgis (col. 3, ll. 52-55) discloses that
advertisements can be placed on the website. (Br. 6).
11. The Specification does not provide a definition for the phrase
“advertising object” in the claims inconsistent with the plain meaning of the
words. When plainly read, “advertising object” means a thing that
communicates an advertisement and therefore has a scope encompassing
websites containing advertisements. Moreover, the Specification (inter alia,
paragraphs 0024, 0029, 0049, and 0050) describes embodiments where
players solve clues by accessing websites on web enabled communication
devices and the websites providing clues include advertisements.
Appeal 2007-0472
Application 09/931,817

5
PRINCIPLES OF LAW

1. “The prima facie case is a procedural tool of patent examination,
allocating the burdens of going forward as between examiner and applicant.
In re Spada, 911 F.2d 705, 707 n.3, 15 USPQ2d 1655, 1657 n.3 (Fed. Cir.
1990). The term “prima facie case” refers only to the initial examination
step. In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA
1976). As discussed in In re Piasecki, the examiner bears the initial burden,
on review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability. If that burden is met, the burden of coming forward
with evidence or argument shifts to the applicant.” In re Oetiker, 977 F.2d
1443, 1444, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).

2. Claims are given the broadest reasonable construction consistent with
the specification. In re Morris, 127 F.3d 1048, 44 USPQ2d 1023 (Fed. Cir.
1997).

ANALYSIS
The Examiner has made a limitation-by-limitation analysis of the
claims. Based on the analysis, the Examiner finds that Sporgis anticipates or
renders obvious the claimed subject matter. FF 5. The burden now shifts to
Appellant to come forward with evidence or argument showing error in
Examiner’s determination.
Appellant contends that Sporgis fails to disclose or suggest a game
that creates awareness of a sponsor by interacting with an advertising object
of the sponsor to solve a clue. FF 6. The evidence does not support
Appellant’s contention.
Sporgis describes a treasure hunt type game whereby clues are
communicated to the players of the game through a website displayed on
web enabled communication devices. FF 8. Sporgis also discloses that the
website may include advertisements. FF 8-10. Accordingly, Sporgis
Appeal 2007-0472
Application 09/931,817

6
describes a treasure hunt type game whereby clues are communicated to the
players of the game through a website having advertisements. In playing
such a game, solving a clue necessarily involves interacting with the
advertising website.
Turning to the claim, it describes a game featuring “an advertising
object and a clue involving the advertising object, wherein solving the clue
includes interacting with the advertising object.” When given its broadest
reasonable construction consistent with the Specification (FF 11), the phrase
“an advertising object” encompasses a website with advertisements.
Therefore, in calling for “an advertising object and a clue involving the
advertising object, wherein solving the clue includes interacting with the
advertising object,” the claim encompasses a game featuring an advertising
website and a clue involving the advertising website wherein solving the
clue involves interacting with the advertising website.
Because the claim encompasses a game featuring an advertising
website and a clue involving the advertising website wherein solving the
clue involves interacting with the advertising website, it reads on the Sporgis
method, i.e., a treasure hunt type game whereby clues are communicated to
the players of the game through a website having advertisements wherein
solving a clue necessarily involves interacting with the advertising website.
As to that part of the contention which argues that Sporgis fails to
disclose or suggest a game that creates awareness of a sponsor, since we
have found that Sporgis discloses and/or suggests the step in the claims that
creates the awareness of a sponsor, i.e., the step of interacting with an
advertising object, we furthermore find Sporgis discloses and/or suggests the
result of that step, i.e., creating awareness of a sponsor.
Appeal 2007-0472
Application 09/931,817

7
CONCLUSION OF LAW
On the record before us, the Examiner’s evidence and rationale is
sufficient to make out a prima facie cases of anticipation and obviousness
under 35 U.S.C. §§ 102(e) and 103. On the record before us and for the
foregoing reasons, Appellant has not shown that the Examiner erred in
concluding that prima facie cases of anticipation and obviousness are made
by Sporgis’ disclosure of a treasure hunt type game run from a website
having advertisements played on a web-enabled wireless communication
device receiving solvable clues.
Comment: The Specification is replete with references to goods and
services by their respective trade names or trademarks. The Examiner
should keep in mind that when a specification refers to goods and services
by their respective trade names or trademarks, a generic description must be
inserted in place of, or in addition to, a trade name or trademark. The
Manual of Patent Examining Procedure (MPEP) § 608.01(v) (2006)
provides guidelines by which the Specification may be amended to provide
the necessary generic description while avoiding questions of new matter.
See also In re Metcalfe, 410 F.2d 1378, 1382, 161 USPQ 789, 792 (CCPA
1969).
Appeal 2007-0472
Application 09/931,817

8
DECISION
The Examiner’s rejection of claims 25-28 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 CFR
§ 1.136(a)(1)(iv) (2006).
AFFIRMED

hh

BEVER HOFFMAN & HARMS, LLP
TRI-VALLEY OFFICE
1432 CONCANNON BLVD., BLDG. G
LIVERMORE, CA 94550