Ex Parte Hacker et al

Patent Trial and Appeal Board

Jun 12, 2013

11042857 (P.T.A.B. Jun. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRIAN J. HACKER, WAYNE R. WILCOXEN and
DAVID S. SMITH
____________

Appeal 2011- 005478
Application 11/042,857
Technology Center 3700
____________

Before EDWARD A. BROWN, LYNNE H. BROWNE and
RICHARD E. RICE, Administrative Patent Judges.

RICE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Brian J. Hacker, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 24-27, 30-34, 37, 38, 40-45, 48,
49, 51-56, 59 and 61-66. Claims 1-23, 28, 29, 35, 36, 39, 46, 47, 50, 57, 58
and 60 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
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CLAIMED SUBJECT MATTER
Claims 24, 30, 59 and 61 are independent. Claim 24, reproduced
below, is illustrative of the subject matter on appeal:
24. A method for playing a trading card
game between a first player and a second player,
the method comprising the steps of:
the first player playing one or more first
cards that influence the outcome of at least a
portion of the trading card game, each first card
being formed as only one section;
the first player providing a second card
having a first section and a second section that
moves relative to the first section, the second
section being movable between a first position
wherein the second section is substantially
unexposed to the players and a second position, the
second section including a first indicia that is
known only to the first player while the second
section is in the first position;
the first player positioning at least one of the
first cards and the second card in a first zone,
wherein the first zone is energized to varying
degrees depending on the number of cards
positioned within the first zone; and
the first player moving the second section to
the second position to expose the first indicia to
the second player to influence the outcome of at
least a portion of the trading card game.

REFERENCES RELIED ON BY THE EXAMINER
Levin US 5,318,306 Jun. 7, 1994
Baerenwald US 5,834,127 Nov. 10, 1998
Young US 6,058,640 May. 9, 2000
Sakamoto US 6,601,851 B1 Aug. 5, 2003
Tanaka US 2004/0036220 A1 Feb. 26, 2004

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THE REJECTIONS
(1) Claims 24-26, 37, 40-42, 48, 51-53, 62 and 63 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Tanaka, Levin and
admitted prior art.
(2) Claims 27 and 34 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tanaka, Levin, admitted prior art and Young.
(3) Claims 30, 31 and 66 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sakamoto, Levin and admitted prior art.
(4) Claims 32 and 33 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sakamoto, Levin, admitted prior art and Tanaka.
(5) Claims 38 and 49 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tanaka, Levin and admitted prior art.
(6) Claims 43-45, 54-56 and 59 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Tanaka, Levin, admitted prior art and
Baerenwald.
(7) Claim 61 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tanaka, Levin, admitted prior art and Young.
(8) Claims 64 and 65 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tanaka, Levin and admitted prior art.

ANALYSIS
Rejection (1) - Claims 24-26, 37, 40-42, 62 and 631
Claim 24 calls for a method for playing a trading card game between a
first player and a second player including, inter alia, (1) the first player

1 As claims 48 and 51-53 depend from claim 30, rather than claim 24, we
discuss these claims infra in connection with claim 30.
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playing one or more first cards formed as only one section; (2) the first
player providing a second card having a first section and a second section
that is movable relative to the first section; and (3) the first player
positioning at least one of the first cards and the second card in a first zone.
The Examiner finds that Tanaka discloses “the basic inventive
concept, substantially as claimed,” including a play mat or sheet with a
plurality of zones (11, 13, 15, 17, 19, 20) arranged in horizontal rows
including a first zone (19) and a second zone (11) into which cards can be
positioned. Ans. 4 (referencing Tanaka, para. [0033] and [0077]-[0082];
fig. 1). The Examiner finds that Levin discloses cards having a first section
and a second section that is movable relative to the first section. Ans. 4-5.
The Examiner concludes that
it would have been obvious to one of ordinary skill in the art
from the teaching of Levin to add cards that have a substantially
unexposed section to the game of Tanaka for the predictable
result of hiding information pertinent to the play of the game
from an opposing player so as to increase anticipation and
player excitement since the hidden information effects the
attributes of the given cards (column 2 lines 22-30).
Id. at 5.
Appellants argue that the references do not teach or suggest “the first
player positioning at least one of the first cards and the second card in a first
zone,” as claim 24 requires, because “the different types of cards in Tanaka
each have their own zone in which they are played, and they are not
positioned within the same zone” and, further, neither Tanaka nor Levin
“teaches or suggests the need or desire for having different card designs, i.e.
one section type cards versus two section type cards wherein the sections are
movable relative to each other, being utilized within any given card type, as
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all distinguishing characteristics of the individual cards within each type is
[sic] already provided one [sic] the cards as taught.” App. Br. 18-19; see
Reply Br. 6-7. The Examiner responds that “Levin discloses groups or sets
of cards that can include both hidden indicia cards (12a2-12a7) and regular
cards (12a1) . . . and as such it would have been obvious to make some of the
cards of a certain group of Tanaka include the hidden indicia.” Ans. 10
(referencing Levin, col. 3, l. 13 – col. 4, l. 18). Appellants correctly point
out, however, that “the actual construction of each of the cards 12a1-12a7 is
identical.” Reply Br. 6; see also Levin, col. 3, ll. 40-41 (“Each of the
playing pieces of the game 10 are of an identical construction.”), fig. 4.
We agree with Appellants that the Examiner has not provided
sufficient evidence or persuasive reasoning to establish that the combination
of Tanaka and Levin teaches or suggests “positioning at least one of the first
cards and the second card in a first zone,” as claim 24 requires. While the
Examiner’s conclusion of obviousness is based on the combination of
Tanaka, Levin and admitted prior art, the Examiner does not allege, let alone
show, that admitted prior art cures the aforementioned deficiency in Tanaka
and Levin.
We determine that the Examiner’s conclusion of obviousness is not
supported by adequate articulated reasoning with rational underpinning.
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (quoted in
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). We understand
that the Examiner equates Levin’s “regular cards (12a1)” and “hidden indicia
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cards (12a2-12a7)” with, respectively, the claimed first cards formed as only
one section and the claimed second card having a first section and a second
section that moves relative to the first section (see Ans. 10); however, the
Examiner’s finding lacks a sound factual basis because the construction of
the “regular cards” and “hidden indicia cards” is identical, as Appellants
argue (see Reply Br. 6; Levin, col. 3, ll. 40-41, fig. 4). Further, the
Examiner’s reasoning that it would have been obvious to make some (but
not all) of the cards of a certain group of Tanaka include the hidden indicia
based on the finding that Levin discloses groups or sets of cards that can
include both first cards and second cards demonstrates little more than that
each of the elements of the claimed subject matter was, independently,
known in the prior art. See KSR, 550 U.S. at 418 (“a patent composed of
several elements is not proved obvious merely by demonstrating that each of
its elements was, independently, known in the prior art”).
Accordingly, we do not sustain the rejection of claim 24, and claims
25, 26, 37, 40-42, 62 and 63 dependent therefrom, as being unpatentable
over Tanaka, Levin and admitted prior art.
Rejection (3) – Claims 30, 31 and 66
Claim 30 calls for a method for playing a trading card game between a
first player and a second player including, inter alia, (1) the first player
playing one or more first cards having only a first surface and a second
surface that do not move relative to one another; (2) the first player
providing a second card having a first surface, a second surface and a third
surface; (3) the first player positioning at least one of the first cards and the
second card in a first zone; (4) the first player utilizing the first zone as a
first line of defense; (5) the first player positioning at least one of the first
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cards and the second card in a second zone; and (6) the first player utilizing
the second zone as a second line of defense upon failure of the first line of
defense.
The Examiner finds that “Sakamoto discloses the basic inventive
concept, substantially as claimed,” including “position[ing] cards in a first
line of defense (410), a second line of defense (411) or a third line of
defense (409) by placing the cards in different zones . . . .” Ans. 6
(referencing Sakamoto, col. 2, ll. 33-35, fig. 4). The Examiner finds that
Levin discloses “a second set of cards with a first surface (16), a second
surface (14) and a selectively unexposed third surface (28).” Ans. 6-7
(referencing Levin, abstract, col. 8, ll. 15-42). The Examiner concludes that
it would have been obvious from the teaching of Levin to add cards that
have a substantially unexposed section to the game of Sakamoto, for
essentially the same reasons as discussed supra in connection with claim 24
and Tanaka. Ans. 7.
Appellants argue that “nothing in [Sakamoto] provides a teaching or
suggestion that the cards are set up on the battle board 408 as a first line of
defense and a second line of defense that is utilized after the first line of
defense has failed,” as claim 30 requires. App. Br. 38; Reply Br. 13-14.
The Examiner responds that “the features upon which [Appellants] rel[y]
(i.e., the zones establish consecutive lines of defense used when any earlier
line of defense has failed) are not recited in the rejected claim(s).” Ans. 11-
12. The Examiner additionally states that “[t]he claims do not disclose that
the lines of defense cannot be used concurrently” and that “a backward
attack card could still be used upon failure of [a] forward attack card to
defeat the opposing player thereby meeting the limitations of the claim.” Id.
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at 12. Appellants disagree, arguing that the Examiner’s position ignores the
limitation of claim 30 that requires “utilizing the second zone as a second
line of defense upon failure of the first line of defense.” Reply Br. 13.
We agree with Appellants that the Examiner has not provided
evidence or persuasive reasoning to establish that Levin or Sakamoto
teaches or suggests the limitations “the first player utilizing the first zone as
a first line of defense” and “the first player utilizing the second zone as a
second line of defense upon failure of the first line of defense.” See id. at
13-14. While the Examiner’s conclusion of obviousness is based on the
combination of Sakamoto, Levin and admitted prior art, the Examiner does
not allege, let alone show, that admitted prior art cures the aforementioned
deficiency in Sakamoto and Levin.
The plain meaning of the limitations “the first player utilizing the first
zone as a first line of defense” and “the first player utilizing the second zone
as a second line of defense upon failure of the first line of defense” requires
use of the first zone as a first line of defense and failure of the first line of
defense, prior to utilizing the second zone as a second line of defense,
regardless of any other use of the two zones. The Examiner has not
adequately explained how using the two zones concurrently or using a
backward attack card upon the failure of a forward attack card to defeat the
opposing player necessarily satisfies the limitations. As such, the Examiner
has not provided reasoning with some rational underpinning to support the
conclusion that the subject matter of claim 30 would have been obvious.
Accordingly, we do not sustain the rejection of claim 30, and claims
31 and 66 dependent therefrom, under 35 U.S.C. § 103(a) as being
unpatentable over Sakamoto, Levin and admitted prior art. The Examiner
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does not appear to cite Tanaka for any teaching that might remedy the
teachings of Sakamoto, Levin and admitted prior art, and as such, we also do
not sustain the rejection of claims 48 and 51-53, which depend from
claim 30, as being unpatentable over Tanaka, Levin and admitted prior art.
See note 1 supra.
Rejections (2), (4), (5) and (8) – Claims 27, 32-34, 38, 49, 64 and 65
Claims 27, 38, 64 and 65 depend from claim 24. The Examiner does
not appear to cite Young for any teaching that might remedy the teachings of
Tanaka, Levin and admitted prior art. Accordingly, for the reasons
discussed supra in connection with claim 24, we do not sustain the rejection
of claim 27 as being unpatentable over Tanaka, Levin, admitted prior art and
Young or of claims 38, 64 and 65 as being unpatentable over Tanaka, Levin
and admitted prior art.
Claims 32-34 and 49 depend from claim 30. The Examiner does not
appear to cite Tanaka or Young for any teaching that might remedy the
teachings of Sakamoto, Levin and admitted prior art. Accordingly, for the
reasons discussed supra in connection with claim 30, we do not sustain the
rejection of claims 32 and 33 as being unpatentable over Sakamoto, Levin,
admitted prior art and Tanaka; of claim 34 as being unpatentable over
Tanaka, Levin, admitted prior art and Young; or of claim 49 as being
unpatentable over Tanaka, Levin and admitted prior art.
Rejection (6) – Claims 43-45, 54-56 and 59
Claims 43-45 depend from claim 24. The Examiner does not appear
to cite Baerenwald for any teaching that might remedy the teachings of
Tanaka, Levin and admitted prior art. Accordingly, for the reasons
discussed supra in connection with claim 24, we do not sustain the rejection
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of claims 43-45 as being unpatentable over Tanaka, Levin, admitted prior art
and Baerenwald.
Claims 54-56 depend from claim 30. The Examiner does not appear
to cite Baerenwald for any teaching that might remedy the teachings of
Sakamoto, Levin and admitted prior art. Accordingly, for the reasons
discussed supra in connection with claim 30, we do not sustain the rejection
of claims 54-56 as being unpatentable over Tanaka, Levin, admitted prior art
and Baerenwald.
Claim 59 calls for a method for playing a trading card game between a
first player and a second player including, inter alia, (1) the first player
playing one or more first cards having only a first surface and a second
surface that do not move relative to one another; (2) the first player
providing a second card having (i) a first surface, (ii) a second surface, (iii) a
selectively unexposed third surface having a first indicia and (iv) a fourth
surface that includes a second indicia that is known only to the first player
while the fourth surface is unexposed to the players; and (3) the first player
selectively moving the second card to expose the third surface to the second
player.
The Examiner rejects claim 59 over Tanaka, Levin and admitted prior
art, as applied in the earlier rejection of claim 24, and further in view of
Baerenwald. Ans. 8. In connection with the rejection of claim 24, the
Examiner notes that, “[i]n regard to the limitation of the indicia being known
only to a first player when the information is unexposed, . . . official notice
was taken in the final office action and [Appellants] failed to traverse [the]
examiner’s assertion and the feature is being taken to be admitted prior art as
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per MPEP 2144.03(C).” Id. The Examiner’s reference to having taken
official notice in the Final Office Action refers specifically to the following:
Official Notice is taken that it is well known in card games for a
player to look at their cards while keeping them unexposed to
an opposing player since such actions have been viewed by
millions who have watched participants in any Texas Hold ’em
tournament since the 80’s and as such one of ordinary skill in
the art would have found it obvious for a player of a card game
to view their cards while keeping them unexposed to the other
players in the game.

Final Office Action mailed Nov. 12, 2009 at 4, ll. 14-20.
In connection with claim 59, Appellants contend that the combination
of Tanaka, Levin and Official Notice does not disclose “a surface having an
indicia that is known only to the first player while the surface is unexposed
to the players.” App. Br. 44. Appellants additionally “incorporate the
arguments raised previously regarding the teachings of Levin in relation to
games such as Texas Hold ’em” and argue that Baerenwald does not remedy
the asserted deficiency. Id.
However, Appellants previously conceded that the admitted prior art
on which the Examiner relies in part to reject claim 59 does disclose card
games in which indicia on a card is known only to a first player when the
indicia on the card is unexposed to the players, as the Examiner found in
taking official notice. See App. Br. 21 (“Appellants concede that card games
do exist, e.g., Texas Hold ’em, where the players do look at the indicia
included on the cards before placing them in a position where the indicia is
not exposed to the opposing player(s).”); see also Amendment filed on
Jan. 7, 2008 at 11, ll. 1-2 (“it is known in the art of card games that one
player can privately look at a card prior to placing the card in an unexposed
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position”). Instead of disputing the Examiner’s finding based on official
notice, Appellants argue in connection with claim 24 that “there would be no
clear benefit to combining such a game with the teachings of Levin,” that
“Levin actually teaches away from this feature” and that “there is no
teaching or suggestion in Tanaka of utilizing a hidden indicia that is known
only to one player or that there would be any benefit to including such a
hidden indicia.” App. Br. 21. As such, the Examiner’s finding that admitted
prior art discloses “the limitation of the indicia being known only to a first
player when the information is unexposed” has a sound basis.
Appellants incorporated arguments, made in connection with claim
24, are not persuasive. See id. Appellants’ “no clear benefit” argument is
premised on Levin’s teaching that “[t]he challenging player can issue a
challenge even while possessing the lowest ranking card” and that “[i]f the
challenging player knew what was on the additional member 28 . . . then the
player would never challenge . . . as there would be no possible way to win
the battle.” Id. This argument is unpersuasive because the rejection as
articulated by the Examiner adds the disputed feature to Tanaka’s game, not
Levin’s game. See Ans. 5. Appellants’ argument that Levin “teaches away”
(App. Br. 21) is also unpersuasive, because Levin merely omits the disputed
feature. In order to “teach away” a reference must “criticize, discredit, or
otherwise discourage the solution claimed . . . .” In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004)); Para-Ordnance Manufacturing v. SGS
Importers International Inc., 73 F.3d 1085, 1090 (Fed Cir. 1995) (a warning
against use of an element, rather than omission of mention of the element, is
required to find teaching away). Appellants’ “no teaching or suggestion”
argument (App. Br. 21) also is not persuasive as it fails to address the
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Examiner’s articulation of the rejection, which relies on the teachings of all
the references, not solely Tanaka, for the reason as to why Appellants’
claimed invention would have been obvious. See also KSR Int’l. Co. v.
Teleflex Inc., 550 U.S. 398, 418-19 (2007) (rejecting the rigid requirement of
a teaching, suggestion or motivation to combine known elements in order to
show obviousness).
Accordingly, we sustain the rejection of claim 59 as being
unpatentable over Tanaka, Levin, admitted prior art and Baerenwald.
Rejection (7) – Claim 61
Claim 61 calls for a method for playing a trading card game between a
first player and a second player including, inter alia, (1) the first player
playing one of a plurality of first cards formed as only one section; (2) the
first player playing only one second card having a first section and a second
section that is slidable relative to the first section; and (3) the first player
moving the second section relative to the first section to expose to the
second player a first indicia on the second section, the first indicia being
known only to the first player while the second section is unexposed to the
players.
Appellants’ arguments in connection with claim 61 are similar to
Appellants’ arguments in connection with claim 59, discussed supra. App.
Br. 29-31. Appellants additionally argue that Young does not remedy the
asserted deficiency in Tanaka, Levin and admitted prior art with respect to
the limitation of the indicia being known only to a first player when the
information is unexposed. For the reasons discussed supra in connection
with claim 59, Appellants’ arguments are not persuasive.
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Accordingly, we sustain the rejection of claim 61 as being
unpatentable over Tanaka, Levin, admitted prior art and Young.

DECISION
We affirm the rejections of claims 59 and 61.
We reverse the rejections of claims 24-27, 30-34, 37, 38, 40-45, 48,
49, 51-56, and 62-66.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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