Ex Parte Burch

Patent Trials and Appeals Board

May 23, 2019

15817299 - (D) (P.T.A.B. May. 23, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/817,299 11/20/2017
22508 7590 05/28/2019
Christopher C. Dremann
CHRISTOPHER C. DREMANN, P.C.
18 Mallard Court
Granite Falls, NC 28630
FIRST NAMED INVENTOR
Thomas B. Burch
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.
P65001/US/A 1456
EXAMINER
GRAHAM, MARKS
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
05/28/2019 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):
cdremann@ccdpc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS B. BURCH
Appeal2019-003101
Application 15/81 7,299
Technology Center 3700
Before CHARLES N. GREENHUT, JEREMY M. PLENZLER, and
MICHAEL L. WOODS, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
Decision rejecting claims 21-40. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM and designate NEW GROUNDS OF REJECTION in
accordance with 37 C.F.R. § 41.50(b).
Appeal2019-003101
Application 15/81 7,299
CLAIMED SUBJECT MATTER
Claims 21 and 33 are independent. Claims 22-32 depend from claim
21 and claims 34-40 depend from claim 33. Claim 21 is reproduced below.
21. A method of playing a golf putting game, comprising:
providing a plurality of holes for the golf putting game,
each hole having a corresponding putting green defining a
putting surface;
providing a plurality of putting cups on the putting surface
of the putting green with each putting cup being positioned at a
different location on the putting surface of the putting green, and
with each putting cup on the putting surface of the putting green
being assigned a different predetermined number of base points;
making at least one putting stroke to putt a putting ball into
one of the plurality of putting cups on the putting surface of the
putting green; and
calculating a player score for each hole from the number
of putting strokes made to putt the putting ball into the one of the
plurality of putting cups on the putting surface of the putting
green and the predetermined number of base points assigned to
the one of the plurality of putting cups on the putting surface of
the putting green.
REJECTIONS
1. Claims 21-25, 28-30, and 33-40 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Hall (US 3,434,720, issued March 25,
1969) and Fallow (US 2011/0201437 Al, published Aug. 18, 2011).
2. Claims 26 and 27 are rejected under 35 U.S.C. § 103 as being
unpatentable over Hall, Fallow, and Burkart (US 8,864,333 B2, issued Oct.
21, 2014).
3. Claims 31 and 32 are rejected under 35 U.S.C. § 103 as being
unpatentable over Hall, Fallow, and Jolliffe (US 2003/0125122 Al,
published July 3, 2003).
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Appeal2019-003101
Application 15/81 7,299
4. Claims 21-25, 28-30, and 33-40 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Wiltse (US 5,390,925, issued Feb. 21,
1995), Hall, and Fallow.
5. Claims 26 and 27 are rejected under 35 U.S.C. § 103 as being
unpatentable over Wiltse, Hall, Fallow, and Burkart.
6. Claims 31 and 32 are rejected under 35 U.S.C. § 103 as being
unpatentable over Wiltse, Hall, Fallow, and Jolliffe.
OPINION
The Examiner rejects claims 21-25, 28-30, and 33-40 based on the
combined teachings of Hall and Fallow and, additionally, based on
combining the teachings of Wiltse with those of Hall and Fallow. Final Act.
2-3, 4-5. Appellant does not dispute the majority of the Examiner's
findings or the Examiner's rationale for combining the teachings of the
various references. Rather, Appellant's contentions are based on whether
Hall teaches the "calculating" limitations recited in the claims. Appeal Br.
6-11.
Claim 21 recites "calculating a player score for each hole from the
number of putting strokes made ... and the predetermined number of base
points assigned to the one of the plurality of putting cups." Claim 33
similarly recites "calculating a player score for each hole based on the
predetermined number of base points assigned to the one of the plurality of
putting cups." Those "calculating" steps are capable of being performed in
the human mind (i.e., they are mental steps).
"Because claim limitations directed to mental steps may attempt to
capture informational content, they may ... lack[] patentable weight in an
obviousness analysis." Praxair Distribution, Inc. v. Mallinckrodt Hosp.
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Appeal2019-003101
Application 15/81 7,299
Prod. IP Ltd., 890 F.3d 1024, 1033 (Fed. Cir. 2018); accord In
re Lundberg, 197 F.2d 336,339 (CCPA 1952) (finding claim term
"'interpreting the cumulative information thus obtained,' involves a purely
mental step which can nowise lend patentability to the claims"); In
re Venner, 262 F.2d 91, 95 (CCPA 1958) (holding that "[p]atentability
cannot be predicated upon a mental step"). The "calculating" steps recited
in claims 21 and 33 are not entitled to patentable weight because they are a
mental process that are not used for anything further in the claims. The
content of the information (i.e., the calculation) in claims 21 and 33 does not
change the method recited in those claims. Rather, that information can
reside solely in the human mind. Therefore, although the Examiner has not
provided persuasive evidence or reasoning to demonstrate how Hall teaches
the specific calculation, we are ultimately not apprised of Examiner error in
rejecting the claims because the mere recitation of that calculation cannot
distinguish the claims from the prior art.
Appellant additionally disputes the Examiner's findings regarding
Hall's teachings related to the calculations recited in claims 22, 24, 34, and
36 (Appeal Br. 9), as well as those recited in claims 23, 25, 35, and 37 (id. at
10). Those contentions are unpersuasive for reasons similar to those set
forth above regarding claims 21 and 33 because, like claims 21 and 33, those
claims recite calculations that constitute mental processes.
Appellant does not argue claims 26, 27, 31, and 32 separately. Appeal
Br. 11.
To the extent our treatment of the "calculating" steps is considered as
changing the thrust of the rejection, we designate our affirmance of the
Examiner's decision to reject claims 21-40 as a new ground of rejection.
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Appeal2019-003101
Application 15/81 7,299
DECISION
We AFFIRM the Examiner's decision to reject claims 21-40.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 4 l.50(b ). Section 4 l.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new grounds of rejection to avoid termination of
the appeal as to the rejected claims:
( 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
proceeding will be remanded to the examiner.
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
AFFIRMED; 37 C.F.R. § 41.50(b)
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