Ex Parte Hay

Patent Trial and Appeal Board

Jan 19, 2018

13882606 (P.T.A.B. Jan. 19, 2018)

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.
13/882,606 04/30/2013 Martin Alexander Hay MAH002US 8763
24330 7590 01/19/2018
Martin A. Hay & CO.
White Cottage . 33 Castle Hill
Prestbury / Cheshire, SK10 4AS
UNITED KINGDOM
EXAMINER
PIERCE, WILLIAM M
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
01/19/2018 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 MARTIN ALEXANDER HAY
Appeal 2017-001758
Application 13/882,606
Technology Center 3700
Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and
PAUL J. KORNICZKY, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Martin Alexander Hay (“Appellant”) seeks our review under
35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1-9 and 23.
Final Office Action (December 28, 2015) (hereinafter “Final Act.”).1 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant is a registered patent agent and is representing himself in this
appeal. Final Act. 10; Appeal Brief 9 (June 13, 2016) (hereinafter “Appeal
Br.”).
Appeal 2017-001758
Application 13/882,606
CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to “a strategy game.”
Specification 1,1. 2 (filed April 30, 2013) (hereinafter “Spec.”). Claim 1 is
the sole independent claim on appeal and is reproduced below.
1. A method for one or more players to pursue a game
objective using a game apparatus, wherein:
(a) said game apparatus comprises:
at least two sets of first tokens, one for each player,
each set consisting of two kinds of first token (A) and (C)
each representing a function that in relation to the players
is the antisymmetric opposite of the other;
a set of second tokens (D) and (L) each representing
a function that in relation to the players is the symmetric
opposite of the other; and
a game field provided with a plurality of token
spaces;
(b) said game objective is for a player to achieve an
arrangement of one or more tokens in the token spaces of the
game field that represents a particular function; and
(c) said method comprises a sequence of steps in which
each player in turn identifies a first token (C) and a first token
(A) to be placed in (+) different token spaces so as to effect a
change in function (>) in each of these token spaces selected
from:
C + A > L; A + C>D;
L + C > C; L + A > A;
D + C > C; and D + A > A;
then moves to change the tokens in each token space
accordingly.
Appeal Br. 10 (Claims Appendix).
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Application 13/882,606
REJECTIONS
The Final Office Action includes the following rejections:
1. Claims 1-9 and 23 stand rejected under 35 U.S.C. § 101 as being
directed to patent ineligible subject matter.
2. Claims 1-9 and 23 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
LEGAL PRINCIPLES
The Patent Office has the initial burden to set forth a prima facie case
of unpatentability during examination of an application. In re Jung, 637
F.3d 1356, 1362 (Fed. Cir. 2011). “The Patent and Trademark Office
(‘PTO’) satisfies its initial burden of production by ‘adequately explaining]
the shortcomings it perceives so that the applicant is properly notified and
able to respond.’” Id. (quoting Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed.
Cir. 2007)). “[T]he PTO carries its procedural burden of establishing a
prima facie case when its rejection satisfies 35 U.S.C. § 132, in ‘notifying]
the applicant... [by] stating the reasons for [its] rejection, or objection or
requirement, together with such information and references as may be useful
in judging of the propriety of continuing the prosecution of [the]
application.’” Jung, 637 F.3d at 1362 (quoting 35 U.S.C. § 132).
Once an examiner establishes a prima facie case of unpatentability,
the burden shifts to the applicant to rebut it. Id. at 1365 (approving the
Board’s practice of requiring an applicant to identify the alleged error in the
examiner’s rejections) (citing Ex parte Frye, Appeal No. 2009-006013, slip
op. at 9-10, 2010 WL 889747 (BPAI Feb. 26, 2010) (precedential),
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available at https://www.uspto.gov/sites/default/files/ip/boards/bpai/
decisions/prec/fd09006013 .pdf).
Specifically, with regard to rejections based on indefiniteness, the
Federal Circuit explained:
[W]hen the USPTO has initially issued a well-grounded
rejection that identifies ways in which language in a claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear in
describing and defining the claimed invention, and thereafter
the applicant fails to provide a satisfactory response, the
USPTO can properly reject the claim as failing to meet the
statutory requirements of § 112(b). The satisfactory response by
the applicant can take the form of a modification of the
language identified as unclear, a separate definition of the
unclear language, or, in an appropriate case, a persuasive
explanation for the record of why the language at issue is not
actually unclear.
In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014).
As to the Board’s role in an appeal, the Board explained in Frye that it
reviews the appealed rejections “for error based upon the issues identified by
appellant, and in light of the arguments and evidence produced thereon.”
Frye, slip op. at 9. The Board cautioned that its review is limited to the
arguments of error presented on appeal:
Filing a Board appeal does not, unto itself, entitle an appellant
to de novo review of all aspects of a rejection. If an appellant
fails to present arguments on a particular issue — or, more
broadly, on a particular rejection — the Board will not, as a
general matter, unilaterally review those uncontested aspects of
the rejection. . . . Thus, the Board will generally not reach the
merits of any issues not contested by an appellant.
Id. at 10.
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ANALYSIS
Indefiniteness
We address the indefiniteness rejection first because it relates to all of
the claims and it necessarily implicates the question of the patent eligibility
of the claimed subject matter. The entire argument presented by Appellant
in the Appeal Brief contesting the second ground of rejection is reproduced
below:
The Examiner has raised numerous different rejections
under this heading, all of which arise because of the way he has
separately construed individual terms in the claims in isolation
from the overall inventive concept.
As in any patent claim, the terms used can, when taken
out of context, seem unclear, but this is why it is essential to
identify the invention being claimed before construing each
claim term.
The claims are drafted with mathematical clarity. They
define the invention in a way that both identifies it and
distinguishes it from the prior art. All claim terms are used
throughout the specification and claims in a way that is
consistent with the principle on which the invention works.
Appeal Br. 8—9.2
Appellant’s general assertion that the Examiner has “separately
construed individual terms in the claims in isolation from the overall
inventive concept” fails to identity any specific error in the Examiner’s
claim construction as to any particular claim term. Id. On pages 7 through 9
of the Final Action, the Examiner clearly quoted claim language in each of
2 We consider claims 1-9 and 23 to have been argued as a group. 37 C.F.R.
§ 41.37(c)(l)(iv) (2016).
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claims 1,3,4, 6, 8, 9, and 23 that the Examiner considered to render the
claims indefinite, and provided a clear and reasonable explanation of the
bases for indefiniteness of this claim language. The Examiner’s presentation
is a proper way to identify for an applicant the reason for an indefiniteness
rejection in a manner that allows an applicant to recognize and seek to
counter the grounds for rejection. See Jung, 637 F.3d at 1362 (quoting
Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 “is
violated when a rejection is so uninformative that it prevents the applicant
from recognizing and seeking to counter the grounds for rejection”)). The
Examiner’s approach does not amount to a construction of claim terms in
isolation.
Further, we have reviewed and agree with the Examiner’s
identification of the indefmiteness problems in the claims. The Examiner
provided well-grounded explanations of clarity problems with the claim
language and set forth a variety of ways in which the claim language is
imprecise or confusing, considering it in light of the written description.
Final Act. 8-9. As such, the Examiner met the PTO’s initial procedural
burden of establishing a prima face case of indefmiteness. Jung, 637 F.3d at
1362. The burden of production shifted to Appellant to provide a
“satisfactory response” in the form of either a modification of the language
identified as unclear, a separate definition of the unclear language, or, a
persuasive explanation for the record of why the language at issue is not
actually unclear. Packard, 751 F.3d at 1311.
Appellant did not, and could not on appeal, modify the claim language
identified as unclear. See 37 C.F.R. § 41.33 (providing limited conditions
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under which amendments to the claims can be made during appeal).
Appellant also did not provide a definition of the unclear language in his
Briefs. Rather, Appellant asserts generally that the language at issue is not
unclear when the claims are properly construed, and that, so construed, the
claims are drafted with “mathematical clarity.” Appeal Br. 9; see also Reply
Br. 2 (Appellant asserting that the claims “have a mathematically clear
construction of very broad scope”)
Appellant’s general assertion of “mathematical clarity” does not
identify specific errors in the Examiner’s interpretation of the claims that
would serve as the basis for our review on appeal. Specifically, Appellant’s
assertion of “mathematical clarity” is not responsive to the bases for the
rejection as articulated by the Examiner. For example, with respect to claim
1, the Examiner explained that the claim is unclear because: (1) the
representation of a token is a function of the interpretation of a feature in
accordance with rules for playing a game, and hence, one could not
determine the structure of a token that is antisymmetric or symmetric; (2) the
claim “fails to clearly recite the physical steps necessary to perform
[Appellant’s] process” and rather, “broadly outline[s] the objective of a
player[’]s turn to change a function in accordance with a list of
relationships;” and (3) “[i]t is not clear if the representations are made by the
structure of the token or merely an interpretation based upon the rules.”
Final Act. 8. Thus, the Examiner stated that “[h]ere one can neither
determine the structure of any apparatus intended to be used with [the
claimed] method nor the physical steps applicant is seeking to exclude others
from practicing.” Id.
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Appellant’s general assertion as to “mathematical clarity” does not
directly respond to these explanations of the rejection provided by the
Examiner or identify an error in the Examiner’s reasoning. We decline to
review the entirety of the Examiner’s indefmiteness rejection de novo
without some identification of an alleged error in the rejection. See Frye,
slip op. at 9-10.
Because the Examiner has set forth a prima facie case of
indefmiteness of the claims, and Appellant fails to provide a satisfactory
response, we sustain the rejection of claims 1-9 and 23 as failing to meet the
statutory requirements of 35 U.S.C. § 112, second paragraph.
35 U.S.C. § 101 Rejection
As explained below, Appellant has failed to identify any error in the
first ground of rejection for our review on appeal. As such, we summarily
sustain3 the rejection of the claims under 35 U.S.C. § 101.
The entirety of the argument presented by Appellant in the Appeal
Brief contesting the first ground of rejection is reproduced below:
The Examiner has rejected the claims under 35 USC 101,
and has cited numerous cases accompanied by a very long
discussion about their alleged relevance. 1 would like to avoid
asking the Board of Appeal to trawl through all of the
Examiner's detailed objections and my detailed replies, ft will
take forever!
3 Because we have determined that the Examiner set forth an adequate basis
for the indefmiteness of all of the claims, we do not review the substance of
the rejections of these claims under 35 U.S.C. § 101, as to do so would
require speculation as to the scope of the claims. See In re Steele, 305 F.2d
859, 862-63 (CCPA 1962).
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Application 13/882,606
What I think needs to be done is for the invention to be
identified and distinguished from the prior art. In other words,
the specification and claims need to be construed.
The invention is a system that works on a new
principled41 Once this is understood, it is clear that the case law
cited by the Examiner actually supports the patentability of the
claims.
Appeal Br. 8.4 5 Rather than identifying an error in the Examiner’s first
ground of rejection, Appellant requests that the Board refrain from
reviewing the Examiner’s rejection, and instead, invites the Board to read
the Specification and construe the claims. The Examiner already has
performed this exercise and has stated on the record in a sufficiently
informative and clear manner, the basis for the rejection under 35 U.S.C.
§ 101. Final Act. 2-7, 12-13. As such, the Examiner has met the PTO’s
initial procedural burden of establishing a prima facie case. Jung, 637 F.3d
at 1362. The burden of production shifted to Appellant to rebut it, and
Appellant has not met this burden. The Board declines to reach the merits of
issues not contested by Appellant. Frye, slip op. at 10. Accordingly, we
summarily sustain the rejection of claims 1-9 and 23 under 35 U.S.C. § 101.
4 Subsequent to the filing of the Appeal Brief, Appellant filed a statement
admitting that an earlier patent (US 4,286,330, issued August 25, 1981 to
Isaacson) discloses the Appellant’s principle “of coding and processing
information about relationships in four states.” Response to Examiner’s
Miscellaneous Communication - Request for Reconsideration at 3 (October
6, 2016); see also Reply Br. 5 (admitting that the tetracoding disclosure in
the prior art patent can be mapped to the four relationship states described in
Appellant’s Specification). This admission calls into question Appellant’s
assertion that the claimed invention works on a “new principle.”
5 Wq consider claims 1-9 and 23 to have been argued as a group. 37 C.F.R.
§ 41.37(c)(l)(iv) (2016).
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DECISION
The decision of the Examiner rejecting claims 1-9 and 23 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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