Ex Parte Grinold

Patent Trial and Appeal Board

Aug 29, 2016

13505462 (P.T.A.B. Aug. 29, 2016)

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.
13/505,462 05/02/2012 Itzhak Grinold 4605/17 2264
108796 7590 08/29/2016
The IP - Law Office of Guy Levi
820 Albermarle St.
Wyckoff, NJ 07481
EXAMINER
MENDIRATTA, VISHU K
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
08/29/2016 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 ITZHAK GRINOLD
____________________

Appeal 2014-008707
Application 13/505,4621
Technology Center 3700
____________________

Before JOHN C. KERINS, STEFAN STAICOVICI, and
LEE L. STEPINA, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Itzhak Grinold (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner’s final decision rejecting claims 1–9, 11, and 132. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).

1 According to Appellant, the real party in interest is the inventor,
Itzhak Grinold. Appeal Br. 3 (filed February 10, 2014).
2 Claims 10, 12, 14, and 15 are cancelled and claims 16–19 are
withdrawn from consideration. Id. at 5.
Appeal 2014-008707
Application 13/505,462

2
SUMMARY OF DECISION
We AFFIRM.

INVENTION
Appellant’s invention relates to “board games involving magnetic
play pieces to be attached to a cardboard to obtain a three dimensional
scenery.” Spec. 1, ll. 4–6.
Claim 1, the sole independent claim on appeal, is representative of the
claimed invention, and reads as follows:
1. A game comprising:
(a) at least one actively attractive cardboard;
(b) one or more folding borders dividing the attractive
cardboard to two or more mutually alignable portions, the one
or more folding borders enabling folding the attractive
cardboard and placing it on a substantially horizontal plane
such that at least one of the mutually alignable portions being
vertically disposed relative to the horizontal plane;
(c) a plurality of removable play pieces attractable to the
attractive cardboard;
(d) at least several removable play pieces of the plurality
of removable play pieces being attractable to at least one of the
removable play pieces;
(e) a booklet having a plurality of illustrated scenarios for
reproduction on the actively attractive cardboard, each
illustrated scenario illustrating a plurality of items included in a
plurality of respective removable play pieces; and
(f) the plurality of removable play pieces and the
attractive cardboard being adapted to allow reproduction of at
least one illustrated scenario on a vertically disposed portion of
the cardboard, the reproduction including placing at least three
play pieces on the vertically disposed portion without falling
downward despite gravitation, a first piece being placed on the
vertically disposed portion, a second play piece being placed on
Appeal 2014-008707
Application 13/505,462

3
the first play piece, and a third playing piece being placed on
the second play piece.

THE REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1–3, 5–9, and 11 under 35 U.S.C. §
103(a) as being unpatentable over Gowri (US 2010/0066017 A1, pub.
Mar. 18, 2010) and Ekberg (US 2005/0042584 A1, pub. Feb. 24,
2005).3
II. The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as being
unpatentable over Gowri, Ekberg, and Amos (US 3,952,133, iss. Apr.
20, 1976).4
III. The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as being
unpatentable over Gowri, Ekberg, and Burrows (US 6,217,405 B1,
iss. Apr. 17, 2001).

ANALYSIS
Claim 1 recites, in part, “(d) at least several removable play pieces of
the plurality of removable play pieces being attractable to at least one of the
removable play pieces.”

3 The Examiner also separately rejected claims 7–9 and 11 under 35
U.S.C. § 103(a) as being unpatentable over Gowri and Ekberg. See Final
Act. 4. Because each of claims 7–9 and 11 is rejected based on Gowri and
Ekberg in Rejection I, we do not separately address this additional rejection
of claims 7–9 and 11.
4 Because claim 4 depends from independent claim 1, we view the
Examiner’s omission of Ekberg in the heading of this rejection as a
typographical error.
Appeal 2014-008707
Application 13/505,462

4
The Examiner finds that Gowri discloses a plurality of magnetically
attractable removable play pieces 28, 29 that are attractable to at least one
removable play piece. Final Act. 2 (citing Gowri, paras. 36, 37; Fig. 1).
Appellant asserts that Gowri’s “Fig. l fails to disclose attraction
between game pieces 29” and that “Gowri teaches away of attraction
between game pieces 29 in the framework of a game,” because “game pieces
29 are not thin flat elements, as shown in Fig. 1, and they have magnets 31
in their lower part, they are not adapted to attract each another such as to be
disposed one game piece on another.” Br. 10–11 (citing Gowri, para. 44).
We do not find Appellant’s arguments to be persuasive because
Appellant does not adequately explain why the Examiner’s interpretation of
Gowri’s activity boards 28 as the recited play pieces is not reasonable. See
Final Act. 2. Gowri discloses a plurality of different activity boards 28 that
are magnetic and are used with magnetic activity pieces 29 as part of playing
a game. Gowri, paras. 40, 43, and 44; see also Final Act. 2. As such, Gowri
discloses activity game pieces 29 magnetically disposed on activity boards
28. Appellant does not point to any definition in the Specification or
provide any other explanation as to why the recited play pieces would
exclude Gowri’s activity boards 28. Moreover, Gowri discloses that the
magnetic attraction is sufficiently strong that “the components of the device,
when engaged upon the planar surface of the case, are prevented from
dislodging or moving.” Id., para 14. Although we appreciate that there
might be a stronger magnetic attraction between thin flat elements,
Appellant does not adequately explain why a magnetic attraction that
prevents dislodging or moving would not allow stacking of one piece on
another.
Appeal 2014-008707
Application 13/505,462

5
Furthermore, Appellant does not point to any passage in Gowri that
“criticize[s], discredit[s] or otherwise discourage[s]” a magnetic attraction
between game pieces, and as such, Gowri does not teach away from such a
configuration. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Moreover, we note that paragraph 44 of Gowri, to which Appellant alludes
in the Appeal Brief (see Br. 11), discusses playing a game of checkers and
an artisan must be presumed to know something about the art apart from
what the references disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA
1962). In this case, a person of ordinary skill in the art would readily
understand that the game of checkers requires the capability of stacking two
game pieces to form a “King” checker.
Claim 1 also recites, in part, “(e) a booklet having a plurality of
illustrated scenarios for reproduction on the actively attractive cardboard,
each illustrated scenario illustrating a plurality of items included in a
plurality of respective removable play pieces.”
The Examiner finds that Gowri discloses an actively magnetically
attractive cardboard 13 and a plurality of removable play pieces 28, 29, but
does not disclose a booklet having a plurality of illustrated scenarios for
reproduction on the actively attractive cardboard. Final Act. 2 (citing
Gowri, paras. 7, 36, and 37; Fig. 1). The Examiner relies on Ekberg as
teaching “a game comprising a story scenario book (22).” Id. The Examiner
concludes that a person of ordinary skill in the art would have provided
Ekberg’s “scenario booklet to make the game playing [of Gowri]
educational and attractive to users.” Id. According to the Examiner, the use
of the term “illustrated” is an ‘intended use limitation[]” and the difference
Appeal 2014-008707
Application 13/505,462

6
between Ekberg’s booklet and the recited booklet is “only in [the] printed
matter on the booklet.” Final Act. 2.
Appellant argues that Ekberg discloses a story “described in a text
and/or separated object images,” and that Ekberg has “no illustrated scenario
having several items mutually interacting with one another.” Br. 11 (citing
Ekberg, para. 5; Figs. 1 and 2) (emphasis added). Appellant further asserts
that the recited booklet is printed matter that has a functional relationship
with the product because element “(e) limits the booklet of scenarios by
‘each illustrated scenario illustrating a plurality of items included in a
plurality of respective removable play pieces.’” Id. at 12. Appellant thus
argues that “there is close connection between the plurality of the game
pieces and the scenarios in the booklet, and the coordination of these two
features is far from being obvious and necessitates an inventive step.” Id.
We are not persuaded by Appellant’s position because regardless of
whether there is a functional relationship between the printed matter and the
booklet of Ekberg, we treat element (e) as a positive limitation that is
satisfied by the combined teachings of the references. Specifically, Ekberg
discloses a book 22 having first markings 26 that include “small illustrations
or icons that correspond to very similar larger illustrations” denoted by
second markings 42 on a set of cards 34. Ekberg, paras. 19, 21. As the story
in Ekberg’s booklet is read by a player, markings 26 will be encountered and
will prompt the reader to place card 34 having corresponding marking 42 on
board 12. Id. para. 24. As such, the player reproduces illustrations 26 on
board 12 using cards 34 having illustrations 42. Therefore, there is as much
correlation between the book and the board game of Ekberg as there is in
Appellant’s game.
Appeal 2014-008707
Application 13/505,462

7
Appellant’s contention that, in claim 1, there are several pieces
illustrated that interact together in a single illustration is sufficient to
structurally define over Ekberg, is not well taken. The Examiner concluded
that “[i]n order to convey a desired message it would have been obvious to
print any suitable indicia, symbol, character, words, sentences or any other
matter on the booklet.” Final Act. 3. Consistent with that conclusion and
based on the disclosure of Gowri, if the book of Ekberg were to depict a
game of checkers (see Br. 11, citing to paragraph 44 of Gowri), the
illustrated scenario in a booklet in the game of Gowri, as modified by
Ekberg, would look like Gowri’s Figure 1, which includes a plurality of
items 28, 29 and a plurality of removable play pieces 28, 29 that interact
with one another, for example, in a game of checkers. In view of this, we
are not persuaded of Examiner error.
Claim 1 further recites, in part, reproducing at least one illustrated
scenario by “a first piece being placed on the vertically disposed portion, a
second play piece being placed on the first play piece, and a third playing
piece being placed on the second play piece.”
The Examiner’s position is that the “Gowri game surface is fully
capable of demonstrating limitations ‘placing at least three pieces on the
vertically disposed portion without falling despite gravitation.’” Ans. 6.
The Examiner concludes that “Gowri teaches a magnetic surface (12) and
magnetic pieces (29, 45, 46, 47) that are clearly capable of being attracted
singly or in stacked position, in that they will be functionally disposed
without falling.” Id.
Appeal 2014-008707
Application 13/505,462

8
Appellant asserts that the Examiner “fails to cite a teaching by either
Gowri or Eckberg” of “at least three play pieces on the vertically disposed
portion without falling downward despite gravitation.” Br. 11.
We are not persuaded by Appellant’s position because as the
Examiner correctly finds, Gowri’s activity board 28 is magnetically placed
on (cardboard) surface 12, and then magnetic activity pieces 29 are placed
upon activity board 28. See Ans. 6; see also Gowri, Figure 1. Although we
appreciate that Gowri fails to explicitly disclose stacking activity pieces 29,
nonetheless, Gowri discloses a game of checkers in paragraph 44, to which
Appellant alludes (see Br. 11), and thus, a person of ordinary skill in the art
would have readily known that checkers (activity pieces 29) are placed on
top of each other in order to crown a checker to make it a King checker.
Hence, as Gowri’s activity board 28 and activity pieces 29 magnetically
interact with each other, in a game of checkers, they are adapted to have at
least three play pieces (one activity board 28 and two activity pieces 29)
disposed vertically without falling due to the effect of gravitation, as called
for by claim 1.
Accordingly, for the foregoing reasons, we sustain the rejection under
35 USC § 103(a) of claim 1 as being unpatentable over Gowri and Ekberg.
Appellant does not present any arguments with respect to the rejection
of claims 2–9, 11, and 13. See Br. 9–12. Therefore, we likewise sustain the
rejections under 35 USC § 103(a) of claims 2, 3, 5–9, and 11 as being
unpatentable over Gowri and Ekberg; of claim 4 as being unpatentable over
Gowri, Ekberg, and Amos; and of claim 13 as being unpatentable over
Gowri, Ekberg, and Burrows. See In re Berger, 279 F.3d 975, 984– 985
(Fed. Cir. 2002).
Appeal 2014-008707
Application 13/505,462

9

DECISION
The decision of the Examiner to reject claims 1–9, 11, and 13 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)(1)(iv).

AFFIRMED