Ex Parte Coon et al

Patent Trials and Appeals Board

Jun 3, 2019

13750646 - (D) (P.T.A.B. Jun. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/750,646 01/25/2013 Liz Coon
147848 7590 06/03/2019
Joseph R. DeSantis - FFHSJ DC
801 17th Street, NW
Suite 600
Washington, DC 20006
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.
08262. 00314 1062
EXAMINER
MENDIRATTA, VISHU K
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
06/03/2019 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 LIZ COON, LYNN CIFKA, and JOHN DANIELS
Appeal2018-007249
Application 13/750,646
Technology Center 3700
Before MICHAEL L. HOELTER, WILLIAM A. CAPP, and
LEE L. STEPINA, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge CAPP
Opinion Dissenting-in-Part filed by Administrative Patent Judge HOELTER
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 23, 24, 27, 28, and 32--49. We have jurisdiction under 35
U.S.C. § 6(b ).
We AFFIRM.
Appeal2018-007249
Application 13/750,646
THE INVENTION
Appellants' invention is a board game. Spec. ,r 2. Claim 24,
reproduced below, is illustrative of the subject matter on appeal.
24. A method of playing a game, comprising:
providing a game board comprising a sinuous path between
homelessness and having a home comprising a series of playing
spaces, the playing spaces comprising: a homelessness end space
representing homelessness at one terminus of the path; a home end
space representing having a home at the opposite terminus of the
path; a starting space at a substantial midpoint of said path, such
that there are a substantially equivalent number of the playing
spaces between the starting space and the homelessness end space
as there are between the starting space and the home end space;
and gameplay spaces;
providing a game piece for showing a player's position on said
path;
providing a plurality of gameplay cards, the gameplay cards
comprising: opportunity cards that contain an indication of good
luck for the player in his goal of having a home and instructions
that cause the player to move his piece on the path towards the
home end space and away from the homelessness end space; and
challenge cards that contain an indication of bad luck for the
player in his goal of having a home and instructions that cause the
player to move his piece on the path towards the homelessness
end space and away from the home end space;
providing a plurality of credential cards that represent
credentials that are difficult for the homeless to obtain, and that a
player must collect to complete the game; the credential cards
comprising two or more of: an identification card; a Bridge/Food
Stamp Card; a Checking Account/Bank Account Card; a
Healthcare/Health Insurance Card; and a Degree/Certificate Card,
wherein:
the gameplay spaces comprise: spaces with no instructions;
first instruction spaces that instruct the player to move his piece in
a particular manner; second instruction spaces that instruct the
player how to collect a credential card; and third instruction
spaces that instruct the player to draw a gameplay card; and
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the sinuous path is sectioned according to stages on the
homelessness continuum, the method further comprising:
during a tum, the player uses a random number generating
device, moves the game piece a number of spaces determined by
the random number generating device, and, if the game piece
lands on one of the first, second, or third instruction spaces,
follows the instructions, wherein:
the game is complete for the player when the game piece is on
the home end space and the player has possession of the plurality
of credential cards.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Mock
Barratt
Bryant
Herman
Teal
US4,871,I77
us 5,813,671
us 6,142,473
US 2008/0277870 Al
US 2009/0045572 Al
Oct. 3, 1989
Sept. 29, 1998
Nov. 7, 2000
Nov. 13, 2008
Feb. 19,2009
The following rejections are before us for review:
1. Claims 24, 28, 32, 35, 37, 39, 41, 43, 45, 47, and 49 (hereinafter
sometimes the "Method Claims") are rejected under 35 U.S.C. § 101 as
directed to a judicial exception to patent eligible subject matter. 1
2. Claims 23, 24, 28, 33, 34, 36, 38, 40, 42, 44, 46, 47, and 48 are
rejected under 35 U.S.C. § I03(a) as being unpatentable over Herman.
3. Claims 27 and 28 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Herman and Barratt.
1 For purposes of convention, claims 23, 27, 33, 34, 36, 38, 40, 42, 44, 46,
and 48 shall hereinafter be referred to collectively as the "Apparatus
Claims."
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4. Claim 32 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Herman and Bryant.
5. Claims 24, 28, 32, 35, 39, 41, 45, 47, and 49 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Mock and Herman.
6. Claims 37 and 43 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mock, Herman, and Teal.
OPINION
Unpatentability Under 35 U.S.C. § 101
over the Method Claims
Claims 24, 28, 32, 35, 37, 39, 41, 43, 45, 47, and 49 are all method
claims and are argued as a group. Claims App., Appeal Br. 16-28. We
select claim 24 as representative. See 37 C.F.R. §4I.37(c)(l)(iv).
The Supreme Court has set forth "a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Alice
Corp. v. CLSBankint'l, 573 U.S. 208,217 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 72-73 (2012)).
According to the Supreme Court's Alice/Mayo framework, we must first
determine whether the claims at issue are directed to one of those concepts
(i.e., laws of nature, natural phenomena, and abstract ideas). Id. If so, 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.
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
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Application 13/750,646
more than a patent upon the [ineligible concept] itself."' Id. (quoting Mayo,
566 U.S. at 72-73).
The PTO recently published revised guidance on the application of
Section 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) ("2019 Guidelines"). Under such guidelines, in
conducting step one of the Alice framework, we first look to whether the
claim recites:
(Prong 1) any judicial exceptions, including certain groupings of
abstract ideas; and
(Prong 2) additional elements that integrate the judicial exception
into a practical application.
In other words, under prong 1, we look to whether the claim recites an
abstract idea. Then, if it does, under prong 2, we look at the claim, as a
whole, and determine whether the claim is "directed to" the abstract idea or,
instead, is "directed to" a "practical application" of the abstract idea.
Section 1 OJ Analysis of Representative Claim 24
Prong 1
The 2019 Guidelines identify three key concepts as abstract ideas: (a)
mathematical concepts including "mathematical relationships, mathematical
formulas or equations, mathematical calculations"; (b) certain methods of
organizing human activity, such as "fundamental economic principles or
practices," "commercial or legal interactions," and "managing personal
behavior or relationships or interactions between people"; and ( c) mental
processes including "observation, evaluation, judgment, [and] opinion."
The Examiner determines that the Method Claims are directed to an
abstract idea. Final Action 2. More particularly, the Examiner finds that
claim 24 entails generating random information, moving game pieces, and
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collecting/earning cards. Id. The Examiner further finds that instructions to
follow game rules, managing the playing of a board game, and allowing
players to collect/exchange goods constitutes a method of organizing human
activity, which is a type of abstract idea and a judicially recognized
exception to patent eligible subject matter. Id. at 2-3.
Appellants argue that the Method Claims are not directed to an
abstract idea, in general, or to a method of organizing human activity, in
particular. Appeal Br. 19. Instead, according to Appellants, the claims are
directed to using a particularly described game apparatus in a particular way.
Id.
In response, the Examiner explains that the Method Claims require
steps of generating random information, moving game pieces, and
collecting/earning game cards. Ans. 18. The Examiner states that such
activity is considered to be a judicially recognized exception to patent
eligible subject matter. Id. at 18-19. According to the Examiner, the "steps
[ of] generating random information, moving game pieces, collecting/ earning
game cards are directed to a set of instructions and following a set of rules
for playing a game and considered as abstract rules." Id. at 19.
In reply, Appellants reiterate that the Method Claims are not a
"method of organizing human activity" but, instead, are directed to using a
particularly described game apparatus in a particular way. Reply Br. 4.
Claim 24 recites:
• providing a game board with a path and spaces that contain
instructions;
• providing a game piece (for showing a position on the board);
• providing gameplay cards that represent good or bad luck;
• providing "credential cards" that must be collected;
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• using a random number generating device;
• moving a game piece in accordance with the number generator;
• following instructions on the game spaces;
• completing the game by reaching an end space and possessing
credential cards.
Claims App., claim 24.
Appellants' invention is a board game, which is played by humans.
The game proceeds by players first obtaining the game instrumentalities, i.e.,
the four "providing' steps. 2 The players then set-up the game board, game
pieces, and game cards in accordance with rules and instructions. The
players take turns rolling the dice or using some other number generating
device. The players move their respective game pieces along the game
board path to spaces thereon in accordance with the number indicated by the
dice or other number generating device. During the course of the game,
players obtain one or more "credential cards." Also during the course of the
game, players encounter and respond to gameplay cards that represent good
or bad luck. All of the foregoing activities of the human players proceed in
an organized fashion and in accordance with game rules and associated
instructions. In short, the human activity that takes place in playing the
game is not random, rather, it is "organized" by the various rules and
2 Contrary to the position taken by the Dissent, we view the four "providing"
limitations as requiring little more than removing the game instrumentalities
from a container such as is commonly furnished with well-known parlor
games such as MONOPOLY or LIFE. We view such "providing" as merely
incidental to playing a game. The preamble of claim 1, "[a] method of
playing a game," is instructive here. The Dissent' s "what with" position is
an argument that was not even raised by Appellants. Rather, Appellants
argue that the claims are directed to "using" a particularly described game
apparatus in a particular way. Appeal Br. 19.
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instructions for playing the game. With the foregoing in mind, we fail to see
any distinction between the Examiner's characterization of the game as a
method of organizing human activity and Appellants' characterization of
"using a particularly described game apparatus in a particular way."
Although Appellants' characterization might perhaps be narrower in scope,
it, nevertheless, falls within the category of methods of organizing human
activity, which constitutes an abstract idea under our 2019 Guidelines. See
In re Marco Guldenaar Holding B. V., 911 F.3d 1157, 1160 (2018)
( explaining that where the Patent Office further articulates a more refined
characterization of the abstract idea ( e.g., "rules for playing games"), there is
no error in also observing that the claimed abstract idea is one type of a
method of organizing human activity).
The Examiner's determination that Appellants' game recites a method
of organizing human activity is consistent with the Federal Circuit's decision
in Planet Bingo, LLC v. VKGS LLC, 576 Fed.Appx. 1005, 1008 (Fed. Cir.
2014) (explaining that claims reciting methods and systems for managing a
game of Bingo is similar to the organizing of human activity in Alice).
Similarly, the Federal Circuit recently characterized rules for playing a dice
game on a customized game board as a method of organizing human
activity. Guldenaar, 911 F.3d at 1160.
In view of the foregoing discussion, we determine that claim 24 falls
within the ambit of a method of organizing human activity and thus recites
an abstract idea.
Prong 2
The Federal Circuit cautions us not to "overly abstract" claims when
performing the Mayo/Alice analysis. Natural Alternatives Intl., Inc. v.
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Creative Compounds, LLC, 918 F.3d 1338, 1350 (Fed. Cir. 2019).
Consequently, under Prong 2 of the 2019 Guidelines, we do not assume that
such claims are directed to patent ineligible subject matter because "[a]t
some level, 'all inventions ... embody, use, reflect, rest upon, or apply laws
of nature, natural phenomena, or abstract ideas."' In re TL! Commc 'ns LLC
Patent Litig., 823 F.3d 607,611 (Fed. Cir. 2016) quoting Alice (quoting
Mayo). Instead, "the claims are considered in their entirety to ascertain
whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016). If the claims are not directed to an abstract idea, the
inquiry ends. 2019 Guidelines. If the claims are "directed to" an abstract
idea, then the inquiry proceeds to the second step of the Alice framework.
Id.
Consequently, we consider whether the claimed game includes
additional elements that integrate the judicial exception into a practical
application. A claim that integrates a judicial exception into a practical
application will apply, rely on, or use the judicial exception in a manner that
imposes a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception.
2019 Guidelines.
Appellants argue that claim 24 is not directed to an abstract idea,
analogizing the instant case to McRO, supra. Appeal Br. 27. Appellants
also analogize the instant case to that of DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014). Id. In response, the Examiner
reiterates that the claim just entails generating random information, moving
game pieces, and collecting/earning game cards. Ans. 19. As such,
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according to the Examiner, claim 24 is merely directed to a set of
instructions and following a set of rules for playing a game, which is an
abstract idea. Ans. 19.
We find Appellants' attempt to analogize a board game to the subject
matter of McRO and DDR Holdings unpersuasive. The courts determined
that McRO and DDR Holdings were not "directed to" an abstract idea,
because the claims were drawn to technological improvements. In contrast,
claim 24 is about playing a board game. Claims App. Except for the
possibility of using an electronic random number generator instead of dice,
the entire process is manual. Playing the game includes rolling dice or
utilizing some other random number generator. Id. The game also includes
a game board with a path that is subdivided into sequential spaces. Id.
Players manually move physical game pieces along a physical game board
path and following various instructions thereon that encompass, among other
things, collecting "credential cards" and drawing gameplay cards that
represent good or bad luck. Id. The information printed on the board and
cards is manually read by human players. Essentially, the game is similar to
almost every board game that simulates some aspect of human life, namely:
(1) follows a predefined, sequential path in accordance with probabilities
established by random number generation; and (2) generates rewards based
on the probabilistic outcomes of events that are identified by game spaces
and associated game cards.
The fact that Appellants play their game with particularized
information printed on the game board, game play cards, and "credential
cards" does not contribute to the patentability of the claimed subject matter.
In a substantially similar game case, our reviewing court assigned no
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patentable weight to indicia printed on game instrumentalities. Guldenaar,
911 F .3d at 1161. The Guldenaar court reasoned that:
Id.
The markings on Appellant's dice, however, constitute printed
matter, as pointed out by the Board, and this court has generally
found printed matter to fall outside the scope of§ 101. See
AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1064 (Fed. Cir.
2010). "Claim limitations directed to the content of
information and lacking a requisite functional relationship are
not entitled to patentable weight because such information is
not patent eligible subject matter under 35 U.S.C. § 101."
Praxair Distrib., Inc. v. Mallinckrodt Hosp. Prod. IP Ltd., 890
F.3d 1024, 1032 (Fed. Cir. 2018). Each die's marking or lack
of marking communicates information to participants indicating
whether the player has won or lost a wager, similar to the
markings on a typical die or a deck of cards. Accordingly, the
recited claim limitations are directed to information.
Additionally, the printed indicia on each die are not
functionally related to the substrate of the dice.
Here, the printed matter on the game board, gameplay cards, and
credential cards is merely incidental to playing the game in accordance with
the claimed method. The Federal Circuit considered a nearly identical
situation in Guldenaar and concluded that the dice game recited therein is
directed to an abstract idea. The Guldenaar court stated:
In re Smith, 815 F.3d 816 (Fed. Cir. 2016), is highly instructive
in this case. In Smith, we concluded that the claimed "method
of conducting a wagering game" using a deck of playing cards
was drawn to an abstract idea. We likened the claimed method
to the method of exchanging financial obligations at issue in
Alice and the method of hedging risk at issue in Bilski. Id.
at 819. We agreed with the Board's reasoning that "[a]
wagering game is, effectively, a method of exchanging and
resolving financial obligations based on probabilities created
during the distribution of the cards." Id. at 818-19.
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Guldenaar, 911 F.3d at 1160.
Id.
Here, Appellant's claimed "method of playing a dice game,"
including placing wagers on whether certain die faces will
appear face up, is, as with the claimed invention in Smith,
directed to a method of conducting a wagering game, with the
probabilities based on dice rather than on cards. Given the
strong similarities to the ineligible claims in Smith, Appellant's
claims likewise are drawn to an abstract idea.
Finally, the prospect that claim 24 includes several limitations
directed to "providing" various physical game instrumentalities does not
save the claim from being directed to an abstract idea. Claims App. The
claim at issue in Guldenaar similarly had limitations directed to "providing"
game instrumentalities (dice). Id. at 1158. Nevertheless, the court held that
mere recital of physical steps does not remove a claim from the abstract idea
category.
Appellant also argues that his claimed method of playing a dice
game cannot be an abstract idea because it recites a physical
game with physical steps. See, e.g., Appellant Op. Br. at 13.
We disagree, because the abstract idea exception does not tum
solely on whether the claimed invention comprises physical
versus mental steps.
Id. at 1161. Given the similarity between Guldenaar and the instant case,
we determine that Appellants' wagering dice game fails to integrate the
judicial exception into a practical application and, therefore, is directed to an
abstract idea.
Step 2
Turning to step two of the Alice/Mayo framework, the Examiner
considers whether the claims contain an inventive concept sufficient to
transform the abstract idea into patent eligible subject matter. Final
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Action 4. The Examiner considers game board spaces, cards, game pieces,
and random selection devices such as dice to be conventional, well
understood, and routine activities previously known in the pertinent industry.
Id. The Examiner further finds that the steps of collecting, rolling, moving,
and receiving are performed by humans and not machine implemented.
Id.
Claimed method, while arguably reciting a number of physical
steps of generating random information, moving game pieces,
and collecting cards are viewed here as an attempt to claim a set
of abstract ideas/rules for playing a board game. Viewed as a
whole the additional items game pieces, game path with landing
spaces, cards, and random selection devices do not provide
meaningful limitations to transform the abstract idea into a
patent eligible application of the abstract idea such that the
claims amount to significantly more than the abstract idea itself.
Appellants argue that the rejected claims contain an inventive concept
because they use a particular physical device and include limitations beyond
what is conventional. Appeal Br. 20. For example, Appellants recite
elements such as "credential" and "question" cards used in conjunction with
other game elements as constituting an inventive concept. Id. at 20-21.
Appellants emphasize that the Examiner fails to address elements that
distinguish the rejected claims from the prior art. Id. at 22. Appellants
assert that courts find that games with "new" components do comply with
the patent eligible subject matter requirements of Section 101. Id. at 22-26
( citing cases).
In response, the Examiner cites In re Smith, 815 F.3d 816 (Fed. Cir.
2016) as a recent example of case authority that stands for the proposition
that rules for conducting a game based on probabilities recite an abstract
idea. Ans. 20. The Examiner notes that in the Smith case, using "physical
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cards" is insufficient to transform an abstract idea into patentable subject
matter.
In reply, Appellants argue that their "credential cards" are not
conventional. Reply Br. 6. Appellants argue that claims similar to the
instant claims are consistently allowed by the Board. Id. at 9. Appellants
rely on dicta from the Smith case as indicating that games that use new or
original game instrumentalities may survive step two of the Alice analysis.
Id.
Appellants also argue that their game does not preempt categories of
game play because the claimed are directed to specific processes using
specific components, such as credential and question cards and related
gameplay. Appeal Br. 16, 23, 26, 27, Reply Br. 9 (citing DDR Holdings,
773 F.3d at 1258). Appellants' effort to leverage the preemption language
from DDR Holdings is not persuasive. The Federal Circuit addressed and
disposed of this concern adversely to Appellants in Guldenaar:
"Abstract ideas, including a set of rules for a game, may be
patent-eligible if [the claims] contain an 'inventive concept'
sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Smith, 815 F .3d at 819 ( quoting Alice,
573 U.S. at 221 ). Preemption is the underlying concern behind
the abstract idea exception, but, at the same time, the Supreme
Court has made clear that merely appending conventional steps
to an abstract idea is not enough for patent eligibility. Mayo,
566 U.S. at 81 .... The claims here recite the steps of placing
a wager, rolling the dice, and paying a payout amount if at least
one wagered outcome occurs-none of which Appellant on
appeal disputes is conventional, either alone or in combination.
. . . Just as the claimed steps of shuffling and dealing playing
cards fell short in Smith, and recitation of computer
implementation fell short in Alice, the claimed activities here
are purely conventional and are insufficient to recite an
inventive concept.
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Guldenaar, 911 F.3d at 1161; see also Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) ("Where a patent's
claims are deemed only to disclose patent ineligible subject matter under the
Mayo framework, as they are in this case, preemption concerns are fully
addressed and made moot").
In the Answer, the Examiner points out, correctly, that appending
purely conventional steps to an abstract idea does not supply a sufficiently
inventive concept. Ans. 20. The Examiner considers rolling dice, moving
game pieces around a board, and reading and reacting to information on
game cards to be a purely conventional activity. Id. We agree. We view
Appellants' game steps as no less conventional than the dice game that the
Federal Circuit found ineligible in Guldenaar.
We find Appellants argument that the particularized content of the
game board, game cards, and credential cards entail an inventive concept
unpersuasive. Appellants confuse the additional elements that purportedly
involve an inventive concept (the content of printed matter on game cards)
with the abstract idea itself. However, for purposes of a Section 101
analysis, we may assume that the techniques claimed are "[g]roundbreaking,
innovative, or even brilliant," but that is not enough for eligibility. Ass 'n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591; accord
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352 (Fed. Cir. 2014). Nor is
it enough for subject-matter eligibility that claimed techniques be novel and
nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 102
and 103. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 89-90 (2012); Synopsys, Inc. v. Mentor Graphics Corp., 839
F .3d 1138, 1151 (Fed. Cir. 2016) ("[A] claim for a new abstract idea is still
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an abstract idea. The search for a § 101 inventive concept is thus distinct
from demonstrating§ 102 novelty."); Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (same for
obviousness) (Symantec). The claims here are ineligible because their
purported innovation is an innovation in ineligible subject matter. Their
subject is nothing but a group of rules and instructions for playing a game.
No matter how much Appellants' game differs from other board games, the
difference lies entirely in the realm of abstract ideas, with no cognizable
advance in the nonabstract application realm. Moreover, the inventive
concept that Appellants rely on lies almost entirely in the content of printed
matter that is not entitled to patentable weight for purposes of a Section 101
analysis. Guldenaar, 911 F.3d at 1161.
The basic concept of playing a board game by rolling dice, moving
game pieces around a game board, and reacting to game cards dates back
well over a century to time honored games such as MONOPOLY and LIFE.
Well known board games, such as MONOPOLY and LIFE, establish that
selecting random numbers with dice ( or spinners, etc.), moving pieces
around a game board, and reacting to information printed on game cards
amount to well-understood, routine, conventional activities previously
known to the industry. Alice, 573 U.S. at 225.
The recited elements of claim 24, considered individually and as an
ordered combination, do not constitute an "inventive concept" that
transforms the claim into patent-eligible subject matter. On this record, we
affirm the Examiner's Section 101 rejection of claim 24, as well as
claims 28, 32, 35, 37, 39, 41, 43, 45, 47, and 49, which fall with claim 24.
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Unpatentability of
Claims 23, 33, 34, 36, 38, 40, 42, 44, 46, and 48
over Herman
Claims 23 and 40
Claims 23 and 40 are independent apparatus claims that are argued
together. Claims App., Appeal Br. 28-33. We select claim 23 as
representative. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Herman discloses the invention substantially
as claimed except for per se home and homeless end spaces. Final
Action 5-6. The Examiner notes that Herman depicts a structure labeled
"H" at one end space and depicts an apple at the opposite end space. Id.
at 7. 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 print any
suitable letter, numeral, word, picture or indicia to represent a desired theme.
Id. The Examiner considers claim limitations directed to game rules and
instructions to fall under the printed matter doctrine. Id. at 6.
Appellants argue that their game includes two different types or
categories of cards, namely: (1) cards with written instructions; and (2)
cards that must be collected. Appeal Br. 29. Appellants argue that the two
types of cards do not just differ in what is printed on them, but are also
different in form and function. Id. More particularly, Appellants argue that
Herman fails to disclose "credential cards." Id.
[T]he difference between Herman's instruction cards and the
recited "credential cards" is more than simply a difference
between what specific instructions are printed on a card. While
the opportunity and challenge cards of the pending claims and
the instruction cards 40 of Herman provide similar functionality
to the respective games, the claimed "credential cards" are quite
different. They do not provide instructions, but rather provide a
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new and unobvious functional relationship with the substrate
not taught or suggested by Herman - a set of credentials that
must be collected to complete the game.
Id. at 31.
In response, the Examiner states that, in an apparatus claim, the rules
for playing do not limit the apparatus. Ans. 21. "An apparatus claim is
defined by its structure and not by how a user might want to use it for any
intended purpose." Id. Specifically in reference to Appellants' "'credential
cards,' the Examiner takes the position ... [such] limitations ... have no
physical ties to the substrate [and, therefore,] printed matter [on the
credential cards does] not patentably distinguish the invention from the prior
art." Id. (citing In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983).
In reply, Appellants reassert that the credential cards have a functional
relationship with the underlying substrate. Reply Br. 10-14.
Herman discloses a board game. Herman, Abstract. The game
includes a game board (10), game pieces (50), and theme related game
cards (40). Id. ,r 12. To play, each participant places their game piece at a
starting area (14) that is located at the mid-point of a game path printed on
the game board. Id. Play proceeds along the path in either direction from
the mid-point starting area (14) toward end-points representing wellness (18)
or sickness (20). Id. Movement of a game piece along the path is
determined by number indicia on the game cards. Id.
The physical appearance of Herman's game differs from Appellants'
game with regard to the graphical/ ornamental design of the game board and
game pieces and the content of the printed matter on the game cards. We
agree with the Examiner that it would have been obvious to modify the
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graphical/ornamental design of the game board and game pieces in
accordance with any suitable game theme.
In terms of the game cards component of the game, we consider
separately Appellants' arguments that: ( 1) Appellants use two types of game
cards instead of Herman's single type of card; and (2) that the printed matter
on the cards does not fall under the printed matter doctrine because it is
allegedly functionally related to the underlying substrate. With respect to
the first argument, both Herman and Appellants recite structure in the form
of "cards." Appellants' argument that their game includes two different
kinds of cards is not a structural distinction, rather it is simply an
arbitrary/abstract matter that the game provides differing instructions and
rules depending on what is printed on each card. 3
With respect to the second argument, whether the printed matter
doctrine applies has recently been decided adversely to Appellants' position.
Guldenaar, 911 F.3d at 1161 (explaining that claim limitations directed to
printed indicia information on game instrumentalities are not functionally
related to the substrate of the dice).
In view of the foregoing discussion, we determine that the Examiner's
findings of fact are supported by a preponderance of the evidence and that
the Examiner's legal conclusion of unpatentability is well-founded.
Accordingly, we sustain the Examiner's unpatentability rejection of
claims 23 and 40 over Herman.
3 For purposes of our analysis, it is patentably inconsequential to us whether
Appellants' two different types of cards may be distinguished from one
another by size, thickness, and/or stiffness of card stock, or color.
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Claims 36 and 42
These claims depend, directly or indirectly, from claim 23 and are
argued together. Claims App. Appeal Br. 33-34. We select claim 36 as
representative. Claim 36 adds the limitation: "wherein the gameplay cards
further comprise a plurality of question cards that contain questions for the
player to answer; the questions on the question cards do not affect the
player's position on the sinuous path; and the questions relate to aspects of
homelessness." Appellants argue that the printed matter doctrine does not
apply to this limitation. Appeal Br. 34--34. For reasons previously
discussed, we disagree. Guldenaar, 911 F .3d at 1161.
We sustain the Examiner's unpatentability rejection of claims 36
and 42 over Herman.
Claim 48
Claim 48 depends from claim 40 and adds the limitation: "wherein:
the plurality of credential cards comprises each of: an identification card; a
Bridge/ Food Stamp Card; a Checking Account/ Bank Account Card; a
Healthcare/ Health Insurance Card; and a Degree/ Certificate Card." Claims
App. The sole argument raised by Appellants is a renewal of their
previously discussed argument regarding the printed matter content on the
credential cards. For reasons previously discussed, we sustain the
Examiner's unpatentability rejection of claim 48. Guldenaar, 911 F.3d
at 1161.
Claims 33, 34, 38, 44, and 46
The claims depend from either claim 23 and are not separately argued
apart from what we previously considered and found unpersuasive with
respect to claim 23. Claims App., Appeal Br. 34--35. We sustain the
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Examiner's unpatentability rejection of claims 33, 34, 38, 44, and 46 over
Herman.
Unpatentability of Claim 27
over Herman and Barratt
Claim 27 depends from claim 23 and is not separately argued apart
from what we previously considered and found unpersuasive with respect to
claim 23. Claims App., Appeal Br. 35. We sustain the Examiner's
unpatentability rejection of claim 27 over Herman and Barratt.
Unpatentability of Claims 24, 28, 32, 35, 39, 41, 45, 47, and 49
over Mock and Herman
Claims 24 and 41
Claims 24 and 41 are independent method claims. Claims App.,
Appeal Br. 37-39. The Examiner finds that Mock discloses the invention
substantially as claimed except for the game path being sinuous and the start
space being at the midpoint of the game board, for which the Examiner
relies on Herman. Final Action 13-15. Relying on the printed matter
doctrine, the Examiner assigns no patentable weight to the printed matter on
Appellants' game board and cards. Id. 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 modify Mock with the teachings of Herman to
achieve the claimed invention. Id. at 15.
Appellants argue that Mock and Herman fail to disclose "credential
cards" as claimed. Appeal Br. 37. In particular, Appellants argue that
Mock's stock certificates are not credential cards. Id. at 38. Appellants
argue that the event(s) of completion of Mock's game differ from that of the
instantly claimed game. Id.
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Id.
Mock does not teach any necessary gamepiece position for
game completion. Nor does Mock teach or suggest that any
particular stock certificates should be collected, or that those
particular stock certificates that must be collected are the "same
for each player," as is recited in claim 41. Rather, Mack's stock
certificates reflect company ownership shares and therefore
cannot be the same for each player as the ownership is, by its
nature, zero-sum.
In response, the Examiner states that Mock teaches that a game is
complete when a victor's game piece is on a home end space and when the
victor has collected a plurality of cards. Ans. 23. In regard to the cards'
content, the Examiner reiterates that the printed matter on game cards falls
under the printed matter doctrine. Id. ( citing case authorities).
In reply, Appellants reiterate that Mock's stock certificates are not
"credential cards." Reply Br. 20. Appellants also reiterate that Mock teaches
a different method of concluding the game. Id. at 21. With respect to the
printed matter doctrine, Appellants argue that their credential cards have a
distinct interrelationship with the underlying game, which entitles the
printed matter to patentable weight. Id. at 22 ( citing In re Gulack, 703 F .2d
1381, 1385 (Fed. Cir. 1983).
The Examiner's position on the printed matter doctrine is correct. As
previously discussed in connection with Section 101 rejection, the Federal
Circuit treats information printed on game instrumentalities under the
printed matter doctrine such that the printed information is not entitled to
patentable weight. Guldenaar, 911 F.3d at 1161. In Guldenaar, the Federal
Circuit distinguished printed matter on gaming instrumentalities from cases
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such as In re Gulack, 4 where digits were printed on a band in such a manner
that the digits exploited the endless nature of the band and the particular
sequence of digits was critical to the invention disclosed in the claims. In
Guldenaar, the Board affirmed Examiner rejections based on Section 101
and 103 grounds. Ex Parte Guldenaar, Case No. 2015-003656, 2017
WL 2797662 (PTAB, June 20, 2017). The Board's decision relied on the
printed matter doctrine in affirming the Section 103 rejection, but not the
Section 101 rejection. In the subsequent appeal to Federal Circuit, the court
did not reach the 103 rejection, but relied on the printed matter doctrine in
affirming the Section 101 rejection. Guldenaar, 911 F.3d at 1161.; see also
Praxair, 890 F.3d at 1032 (explaining that although the rationale underlying
the printed matter doctrine lies in subject matter eligibility, its application
has been in analyzing other patentability requirements, including novelty
under Section 102 and nonobviousness under Section 103).
Thus, having determined that the printed matter on the "credential
cards" is not entitled to patentable weight under Guldenaar, we tum to
Appellants remaining arguments. With respect to completing Mock's game,
we agree with Appellants that Mock does not disclose a "home end space"
per se and, therefore, does not complete the game by arriving at a "home end
space." The Examiner's citation to column 14 of Mock does not provide
evidentiary support for the Examiner's finding of fact. Ans. 23
Thus, the Examiner's findings of fact are not supported by a
preponderance of the evidence. Consequently, we do not sustain the
4 In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). The Guldenaar court
similarly relied on In re Miller, 418 F.2d 1392 (CCPA 1969).
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rejection of either claim 24 or 41, each of which have "home end space"
limitations.
Claims 28, 32, 35, 39, 45, 47, and 49
These claims depend from claim either claim 24 or 41. Claims App.
The Examiner's rejection of these claims suffers from the same infirmity
that was identified above with respect to claims 24 and 41. Thus, for
essentially the same reason expressed above in connection with claims 24
and 41, we do not sustain the rejection of claims 28, 32, 35, 39, 45, 47,
and 49.
Unpatentability of Claims 24, 28, and 47
over Herman
For reasons previously discussed in connection with the Examiner's
unpatentability rejection of these same claims over Mock and Herman, we
agree with Appellants that Herman does not teach that a player's
accomplishment (such as arriving at a home end space) ends the game. See
Appeal Br. 34. Thus, we do not sustain the Examiner's unpatentability
rejection of claims 24, 28, and 4 7 over Herman.
Unpatentability of Claim 28
over Herman and Barratt
Claim 28 depends from claim 24 and adds the limitation: "wherein
the playing spaces are shaped and positioned so that adjacent spaces do not
touch." Claims App. The Examiner finds, and Appellants do not dispute,
that Barratt discloses this limitation. Final Action 12-13, Appeal Br. 35. In
traversing the rejection, Appellants argue patentability based solely on
arguments advanced with respect to claim 24. Appeal Br. 35. For
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essentially the same reason expressed above in connection with claim 24, we
do not sustain the rejection of claim 28. 5
Unpatentability of Claim 32
over Herman and Bryant
Claim 32 depends from claim 24 and adds the limitation: "wherein a
particular second instruction space comprises instructions for the player to
collect a particular first credential card if the player obtains a particular
number on the random number generating device, and instructions for the
player's tum to end if the player does not obtain the particular number."
Claims App. The Examiner finds, and Appellants do not dispute, that
Bryant discloses rolling a number to collect a card. Final Action 13, Appeal
Br. 35. However, Bryant does not cure the deficiency noted above with
respect to the unpatentability of claim 24 over Herman. Thus, for essentially
the same reason expressed above in connection with claim 24, we do not
sustain the rejection of claim 32.
5 Barratt arguably cures the deficiency noted above with respect to Mock
and Herman not disclosing an end space. See Barratt, col. 5, 1. 16-17 ("The
object of the game is for a player to move his/her game piece 20 across the
finish with the most fun points"). However, the Examiner failed to rely on
Barratt as satisfying the end space limitation in the rejection. Final
Action 10-11. Furthermore, the Examiner arguably could have cured the
deficiency that we noted above in connection with the rejection of claims 24,
28, 32, 35, 39, 41, 45, 47, and 49 over Mock and Herman by combining such
references with Barratt. The Board enters a new ground of rejection at its
discretion, and no inference should be drawn from a failure to exercise that
discretion here with respect to Barratt' s finish. 3 7 C.F .R. § 41. 50(b ).
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Unpatentability of Claims 3 7 and 43
over Mock, Herman and Teal
These claims depend, directly or indirectly, from claim 24. Claims
App. Claims 37 and 43 each respectively adds the limitation: "wherein the
gameplay cards further comprise a plurality of question cards that contain
questions for the player to answer; the questions on the question cards do not
affect the player's position on the sinuous path; and the questions relate to
aspects of homelessness." Id. The Examiner's rejection of these claims
suffers from the same infirmity that was identified above with respect to
claim 24, which infirmity is not cured by any findings by the Examiner
based on Teal. Thus, for essentially the same reason expressed above in
connection with unpatentability rejection of claim 24, we do not sustain the
unpatentability rejection of claims 37 and 43.
DECISION
The decision of the Examiner to reject claims 24, 28, 32, 35, 37, 39,
41, 43, 45, 47, and 49 under 35 U.S.C. § 101 as directed to a judicial
exception to patent eligible subject matter is AFFIRMED.
The decision of the Examiner to reject claims 23, 33, 34, 36, 38, 40,
42, 44, 46, and 48 as unpatentable under 35 U.S.C. § 103 over Herman is
AFFIRMED.
The decision of the Examiner to reject claim 27 as unpatentable under
35 U.S.C. § 103 over Herman and Barratt is AFFIRMED.
The decision of the Examiner to reject claims 24, 28, and 47 as
unpatentable under 35 U.S.C. § 103 over Herman is REVERSED.
The decision of the Examiner to reject claims 24, 28, 32, 35, 39, 41,
45, 47, and 49 as unpatentable under 35 U.S.C. § 103 over Mock and
Herman is REVERSED.
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The decision of the Examiner to reject claim 28 as unpatentable under
35 U.S.C. § 103 over Herman and Barratt is REVERSED.
The decision of the Examiner to reject claim 32 as unpatentable under
35 U.S.C. § 103 over Herman and Bryant is REVERSED.
The decision of the Examiner to reject claims 37 and 43 as
unpatentable under 35 U.S.C. § 103 over Mock, Herman and Teal is
REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
27
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LIZ COON, LYNN CIFKA, and JOHN DANIELS
Appeal2018-007249
Application 13/750,646
Technology Center 3700
Before MICHAEL L. HOELTER, WILLIAM A. CAPP, and
LEE L. STEPINA, Administrative Patent Judges.
HOELTER, Administrative Patent Judge, dissenting-in-part.
I respectfully dissent, but only with respect to the majority's decision
that claims 24, 28, 32, 35, 37, 39, 41, 43, 45, 47, and 49 (i.e., the Method
Claims) fall within the ambit of a method of organizing human activity. To
be clear, I would reach a different conclusion at the end of Prong 1. In
effect, I am persuaded by Appellants' arguments that the Method Claims do
not run afoul of 35 U.S.C. § 101.
As expressed above, the Examiner characterizes the Method Claims as
requiring the steps of generating random information, moving game pieces,
and collecting/earning game cards. However, we have been cautioned by
our reviewing court to not "overly abstract" the claims when performing the
Mayo/Alice analysis; but that is exactly what the Examiner appears to have
done.
Appeal2018-007249
Application 13/750,646
It is not disputed that claim 24 recites multiple steps of "providing"
certain apparatus (i.e., a game board (having a certain arrangement), a game
piece, gameplay cards, credential cards, and a number generating device).
Although providing such might be conventional and/or obvious (an inquiry
for another day), the provision of such structure is simply that, providing
structure. It is not understood how the steps of providing physical structure
for subsequent use can, instead, be depicted as a rule of, or the management
of, game play, without relying on an "overly abstract" characterization of
these steps. 6
Of particular note is the majority's reference to Guldenaar, whose
pertinent claim recited the steps of providing marked die, placing a wager,
rolling the die, and paying a payout. These claims were determined to be
directed to rules for playing a dice game. Judge Mayer's concurring opinion
in Guldenaar analogized these claims to other "how to" claims that
addressed human action. 7 I would agree that claims addressing "how to" do
an activity require further attention, but the present claims under appeal are
not "how to" claims. They are, instead, more properly described as being
"what with" claims.
6 To be fair, claim 1 also includes two limitations directed to what is to be
accomplished during a tum, and concluding the game. However, in my
opinion, these two limitations pale in comparison to the provision of the
above cited structure.
7 "[I]deas about how to improve or influence human thought and behavior
fail to pass section 101 muster. This is why claims telling people how to
mitigate settlement risk, Alice, ... how to hedge against risk in consumer
transaction, Bilski, ... or how to play a game of cards, In re Smith, ... are
directed to non-statutory subject matter." Guldenaar 911 F.3d at 1165.
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Thus, because I view the present claims differently, and because, if
the claims are not directed to an abstract idea, the subject matter eligibility
inquiry ends, I respectfully dissent from the majorities' 35 U.S.C. § 101
analysis.
3