Ex Parte Futrell et al

Patent Trial and Appeal Board

Aug 11, 2014

12136202 (P.T.A.B. Aug. 11, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/136,202 06/10/2008 Henley W. Futrell III 06.1005.01 5158
53189 7590 08/11/2014
Cooke Law Firm
2040 NORTH LOOP 336 WEST
SUITE 123
CONROE, TX 77304
EXAMINER
MENDIRATTA, VISHU K
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
08/11/2014 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 HENLEY W. FUTRELL III and
BOBBIE J. FUTRELL
____________________

Appeal 2012-000740
Application 12/136,202
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, CHARLES N. GREENHUT, and
JILL D. HILL, Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Henley W. Futrell III and Bobbie J. Futrell (Appellants) appeal under
35 U.S.C. § 134 from the Examiner’s decision rejecting claims 8–17 and 19.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

Appeal 2012-000740
Application 12/136,202

2
Claimed Subject Matter
Independent claim 8, reproduced below, illustrates the claimed subject
matter.
8. A method of playing a game comprising:
providing a game, the game comprising:
a game board, said game board having a first playing
path including a plurality of individually marked spaces,
including a starting space, disposed adjacent to each other to
form a continuous path in the form of a closed loop,
at least one additional playing path of individually
marked spaces, including a starting space, disposed adjacent to
each other to form at least one additional path in the form of a
closed loop,
the first playing path and at least one additional play path
being entirely separated from each other,
some of said spaces corresponding to a game event
indicative of a monetary event that may affects a net worth of a
player at the end of each round of play, by adding or subtracting
script money to or from the player,
each playing path defining a predetermined level of play
in terms of the level of monetary consequences for landing on a
given space,
a set of occupation cards for each level of play, the
occupation cards including job title information and a
designated salary,
the salary amounts increasing from one level of play to
the next,
a pad of paper sheets,
a plurality of player's indicator pieces,
a randomizer for indicating the number of spaces to be
moved by a player,
determining the order of play, having each player draw
an occupation card,
assigning a predetermined amount of script money to
each player at the beginning of each level of play,
each player operating the randomizing device and
moving the player indicator a corresponding number of spaces,
Appeal 2012-000740
Application 12/136,202

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upon landing on a space each player engaging in an
activity as determined by the space,
at the end of a turn determining the amount of script
money for each player ,which constitutes the net worth of each
player,
moving the player indicator pieces to the start space of
the path level corresponding to the net worth of a player, and
initiating a second round of play and determining the net
worth of each player after each round until a player exceeds a
predetermined net worth at which point the player is the winner
of the game.

REJECTION
Claims 8–17 and 19 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Ans. 4.1

OPINION
The Examiner finds that “[t]he claimed steps in playing a board game
are abstract ideas because they simply instruct how business should be
conducted. For example, they constitute rules that may be applied for
moving game pieces on a game surface selected from infinite number of
possible hypothetical ways game pieces may move.” Ans. 5, 8. The
Examiner reasons that, “[i]n playing a board game there is no concrete
(repeatable) result or tangible (real world) result,” such that the claimed
methods are abstract ideas. Id. The Examiner further finds that “[t]he
method as claimed involves random movement of game pieces to merely
change their locations on a game board surface based on hypothetical
instructions and abstract ideas.” Id. at 7–8.

1 The rejection of claims 8 and 19 under 35 U.S.C. § 112, second paragraph,
was withdrawn by the Examiner. Ans. 4.
Appeal 2012-000740
Application 12/136,202

4
Appellants’ claimed method, while perhaps “reciting a number of
physical steps,” is viewed by the Examiner “as an attempt to claim a set of
abstract ideas/rules for playing a board game.” Id. at 8.
Regarding the machine-or-transformation test, the Examiner states
that, “[i]n playing a board game the steps are performed by individual
human beings and not by a machine,” and “the steps do not demonstrate
transformation of a particular article, in that the game pieces remain as game
pieces, game cards remain game cards and the game surface remains a game
surface.” Id.
Appellants argue that the claims “include the step of providing a game
which includes a game board of a specific construction” including at least
two distinct playing paths of individually marked spaces forming a closed
loop, a set of occupation cards for each loop, a pad of paper, player indicator
pieces, and a randomizer. Br. 9.
Appellants then argue that the claimed method includes “each player
taking a single turn and executing the actions called for by the space. After
each player has had a turn, the net worth of each player is determined. The
player’s game piece is then moved to the playing path corresponding to a
predetermined level of net worth.” Id. At the beginning of each level of
play, “[p]layers are assigned an amount of script money,” and the “winner of
the game is determined when a player obtains a certain level of net worth.”
Id.
Appellants argue that the specific structure provided in the claims, and
the use thereof to determine a game winner, make the claimed method “a
specific method of playing a game that includes very specific structure” that
is not an abstract idea, does not preempt a principle or law of nature, and
Appeal 2012-000740
Application 12/136,202

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would only be infringed by individuals following the specific steps that
“include providing the specific game apparatus as claimed,” which ties the
method to the recited specific apparatus. Id.
The machine-or-transformation test provides “an investigative tool . . .
for determining whether some claimed inventions are processes under
§ 101,” asking whether a claimed process is (1) “tied to a particular machine
or apparatus, or (2) transforms a particular article into a different state or
thing.” Bilski v. Kappos, 130 S. Ct. 3218, 3225–27 (2010) (quoting In re
Bilski, 545 F. 3d 943, 954 (Fed. Cir. 2008) (en banc)).
The claims at issue require specific apparatus set forth therein (i.e., a
game board with at least two paths, occupation cards, a pad of paper, and
player indicator pieces) in order for the claimed method to be performed.
The Examiner fails to explain why the recitations pertaining to the game’s
structure fail to “meaningfully limit[] the execution of the steps.” See Ans. 6
(citing Federal Register notice entitled “Interim Guidance for Determining
Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos”
(Fed. Reg. Vol. 75, No. 143/Tuesday, July 27, 2010/Notices)). Accordingly,
we do not sustain the Examiner’s rejection of claims 8–17 and 19.
DECISION
We REVERSE the rejection of claims 8–17 and 19 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.

REVERSED

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