Ex Parte Butler

Board of Patent Appeals and Interferences

Jul 13, 2005

10227755 (B.P.A.I. Jul. 13, 2005)

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for publication and is not binding precedent of the Board.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 KEITH A. BUTLER, II
____________
Appeal No. 2005-1266
Application No. 10/227,755
____________
ON BRIEF
____________
Before MCQUADE, NASE, and BAHR, Administrative Patent Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Keith A. Butler, II appeals from the final rejection of
claims 1 through 8 and 11, all of the claims pending in the
application.
THE INVENTION
The invention relates to “a board game for teaching the
biblical and natural principles of personal financial wealth”
(specification, page 1). Representative claims 1 and 11 read as
follows:
Claim 1. A board game comprising:
a plurality of playing pieces, each playing piece being
representative of a different player;
a supply of simulated money;
at least one die for randomly determining the movement of
said playing pieces;
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a game board divided into first, second and third sections,
each section having defined spaces indicating an instruction to
be executed by the player, each player being required to advance
sequentially through said first and second sections and to be on
the third section to be eligible to win said game;
a plurality of consequence cards labeled to match spaces on
said board, said cards to be randomly drawn by a player which
provide instructions to be followed by the player; and
a plurality of stewardship cards, each player utilizing a
stewardship card to record their relative position during the
game;
whereby the first player who completes their stewardship
card is declared the winner.
Claim 11. A method of playing a board game comprising:
providing a game board divided into first, second and third
sections, each section having defined spaces indicating an
instruction to be executed by the player;
providing a plurality of playing pieces, each playing piece
being representative of a different player;
providing a supply of simulated money;
providing a plurality of stewardship cards for each player;
rolling at least one die to randomly determine the movement
of said playing pieces;
moving said playing pieces sequentially through
said first and second sections and then to said third section to
be eligible to win said game;
drawing one of a plurality of consequence cards labeled to
match spaces on said game board, said consequence cards providing
instructions to be followed by the players;
collecting or dispensing said simulated money according to
instructions on said consequence cards and said game board; and
utilizing a stewardship card to record the relative position
of the players during the game such that the first player who
completes their stewardship card is declared the winner.
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THE PRIOR ART
The references relied on by the examiner to support the
final rejection are:
Smith 5,071,133 Dec. 10, 1991
Rosi 6,425,582 Jul. 30, 2002
THE REJECTIONS
Claims 1 through 8 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Smith.
Claim 11 stands rejected under 35 U.S.C. § 102(e) as being
anticipated by Rosi.
Attention is directed to the main and reply briefs (filed
March 17, 2004 and July 30, 2004) and the final rejection and
answer (mailed December 29, 2003 and June 16, 2004) for the
respective positions of the appellant and the examiner regarding
the merits of these rejections.
DISCUSSION
I. The 35 U.S.C. § 102(b) rejection of claims 1 through 8 as
being anticipated by Smith
The appellant, stating that “[c]laims 1-8 and 11 stand or
fall together” (reply brief, page 2), does not separately argue
the patentability of any of these claims apart from the others.
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Hence, claims 2 through 8 shall stand or fall with representative
claim 1 (see In re Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091
(Fed. Cir. 1991); In re Wood, 582 F.2d 638, 642, 199 USPQ 137,
140 (CCPA 1978)).
Smith discloses a board game designed to teach biblical
principles. The game includes a game board 10, a plurality of
playing pieces 90 each representative of a different player, a
supply of simulated money (see the Abstract; and column 1, lines
26 through 30), at least one die 85 for randomly determining the
movement of the playing pieces, a plurality of consequence cards
in the form of “sin,” “providence,” “blessing” and “reward” cards
50, 55, 60 and 65 which are labeled to match spaces on the board
and randomly drawn by a player to provide instructions to be
followed by the player, and a plurality of stewardship cards in
the form of asset and end of life tally sheets (see column 5,
line 63, through column 6, line 17) for recording the relative
positions of the players during the game. The board 10 (see
Figure 1C) includes first, second and third sections respectively
embodied by an outer octagonal section, an inner branch section
extending between spaces 30 through 35 and a further inner branch
section extending between spaces 35 through 45. Each of these
sections has defined spaces indicating an instruction to be
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executed by a player, and each player must advance sequentially
through the first and second sections and be on the third section
to be eligible to win the game (see column 6, line 23, through
column 10, line 24).
Anticipation is established only when a single prior art
reference discloses, expressly or under principles of inherency,
each and every element of a claimed invention. RCA Corp. v.
Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir. 1984). It is not necessary that the
reference teach what the subject application teaches, but only
that the claim read on something disclosed in the reference,
i.e., that all of the limitations in the claim be found in or
fully met by the reference. Kalman v. Kimberly Clark Corp., 713
F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied,
465 U.S. 1026 (1984).
The appellant (see pages 4 through 14 in the main brief and
pages 4 through 6 in the reply brief) contends that the rejection
based on Smith is unsound because Smith does not disclose (1) a
supply of simulated money, (2) a game board divided into first,
second and third sections with each player being required to
advance sequentially through these sections to be eligible to
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win, and (3) a plurality of stewardship cards with each player
utilizing a card to record his or her relative position during
the game whereby the first player to complete a card is declared
the winner. Given the fair teachings of Smith and the actual
scope of representative claim 1, however, the appellant’s
position is not persuasive.
To begin with, Smith’s disclosure of “play money” (Abstract)
which is credited to the players (see, for example, column 1,
lines 26 through 30) responds fully to the limitation in claim 1
calling broadly for a supply of simulated money. Notwithstanding
the appellant’s implication to the contrary (see, for example,
pages 6, 13 and 14 in the main brief), claim 1 does not require
the supply of simulated money to be in the form of paper.
Furthermore, and as pointed out above, Smith’s game board 10
comprises first, second and third sections whereby each player
must advance sequentially through the first and second sections
and be on the third section to be eligible to win the game as
recited in claim 1.
Finally, and as also pointed out above, Smith’s asset and
end of life tally sheets in effect constitute stewardship cards
for recording the relative positions of the players during
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the game. Although Smith does not teach that the first player to
complete a card is declared the winner as recited in claim 1, the
corresponding language in the claim amounts to a functional
limitation which sets forth the manner in which the stewardship
cards are intended to be used. It is well settled that the
recitation of a new intended use for an old product does not make
a claim to that old product patentable. In re Schreiber, 128
F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). In other
words, the manner or method in which a device is to be utilized
is not germane to the issue of patentability of the device
itself. In re Casey, 370 F.2d 576, 580, 152 USPQ 235, 238 (CCPA
1967). In the present case, the appellant has not cogently
explained, and it is not apparent, why Smith’s “stewardship”
cards are not inherently capable of the use specified in claim 1.
In light of the forgoing, the appellant’s argument that the
subject matter recited in claim 1 distinguishes over that
disclosed by Smith is unconvincing. Therefore, we shall sustain
the standing 35 U.S.C. § 102(b) rejection of claim 1, and claims
2 through 8 which stand or fall therewith, as being anticipated
by Smith.
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II. The 35 U.S.C. § 102(e) rejection of claim 11 as being
anticipated by Rosi
Rosi discloses a board game having a gangster motif. The
following passage from the reference fairly summarizes the game:
Yet another object of the present invention is to
provide a new gangster board game which includes a game
board [10] having a plurality of playing spaces [11a,
11b] arranged in a pair of [square] paths including an
inner location path [12] and an outer sidewalk path
[13]. The playing spaces forming the inner location
path are designated location playing spaces and the
playing spaces forming the outer sidewalk path are
designated sidewalk playing spaces. Each of the
location playing spaces is assigned a unique game
location and having indicia indicating the unique game
location of the respective location playing spaces.
Each of the sidewalk playing spaces being having unique
playing instructions displayed therein. Each player is
assigned a playing piece [15] and corresponding police
record sheet [16] to each player, a sum of the play
money [17], a contract card [21] and a contract
recording sheet [22]. A plurality of sequential player
turns are performed comprising rolling a die [18],
moving the playing piece of the player a number of
sidewalk playing spaces corresponding to the value
rolled on the normal die, performing the instructions
displayed on the sidewalk space on which the playing
piece terminates its move on, performing the
instructions of the steps of the contact card of the
player, and recording completion of the performed
instructions of the steps of the contract card of the
player. The first player to complete performance of
all of the instructions of all of the steps of their
contract card is declared the winner [column 3, lines
30 through 54].
Rosi also teaches that in attempting to complete a contract
card, “[t]he contracts will have you moving all over the board in
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order to achieve your goal. It is up to your discretion how to
move your man around and in which direction [column 7, lines 31
through 34].
Claim 11 recites a method of playing a board game
comprising, inter alia, the steps of (1) providing a game board
divided into first, second and third sections and (2) moving
playing pieces sequentially through the first and second sections
and then to the third section to be eligible to win the game.
The examiner’s finding that “each side of the [Rosi] board is
being interpreted as a section of the path” (final rejection,
page 2) is reasonable on its face. Consequently, Rosi does meet
the first of the above noted steps in claim 11. The examiner’s
additional determination that “[t]he continuous circling [i.e.,
square] configuration [of Rosi’s path] clearly demonstrates the
[claimed] sequential movement of playing pieces” (answer, page 4)
is not well taken. As indicated above, Rosi indicates that it is
within each player’s discretion how and in which direction to
move his or her playing piece around the board. This disclosure
does not embody a fair teaching of a step of moving playing
pieces sequentially through first and second sections and then to
a third section to be eligible to win the game as set forth in
claim 11.
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Thus, as applied by the examiner, Rosi does not disclose,
either expressly or inherently, each and every element of the
method recited in claim 11. Accordingly, we shall not sustain
the standing 35 U.S.C. § 102(e) rejection of claim 11 as being
anticipated by Rosi.
SUMMARY
The decision of the examiner to reject claims 1 through 8
and 11 is affirmed with respect to claims 1 through 8 and
reversed with respect to claim 11.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JOHN P. MCQUADE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JPM/kis
Appeal No. 2005-1266
Application No. 10/227,755
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