Ex Parte HillDownload PDFBoard of Patent Appeals and InterferencesNov 5, 200811160024 (B.P.A.I. Nov. 5, 2008) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte DIANE S. HILL __________ Appeal 2008-5238 Application 11/160,024 Technology Center 3700 __________ Decided: November 5, 2008 __________ Before ERIC GRIMES, RICHARD M. LEBOVITZ, and FRANCISCO C. PRATS, Administrative Patent Judges. PRATS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a board game apparatus and methods of playing a board game. The Examiner has rejected the claims as anticipated and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2008-5238 Application 11/160,024 STATEMENT OF THE CASE Claims 1-3, 5-14, and 16-22 stand finally rejected and are on appeal (App. Br. 3).1 Claim 1 is representative and reads as follows: 1. A game board apparatus, comprising: a board comprising a grid of multiple rows and multiple columns of playing spaces in a fixed area; a set of individual game pieces, wherein each individual game piece comprises at least a first predetermined characteristic and a second predetermined characteristic such that none of the individual game pieces comprise an identical first predetermined characteristic and an identical second predetermined characteristic as any other of the individual game pieces of the set, the first predetermined characteristic and the second predetermined characteristic are not of a same group, and the number of individual game pieces in the set is equal to a number of playing spaces on the board; each of the individual game pieces is positioned on the board such that each of the individual game pieces singly occupies a related playing space; and individual game pieces are positioned, exchanged with other individual game pieces positioned on the board, or a combination thereof, until one or more predetermined winning configurations of game piece arrangements are evident on the board. The Examiner applies the following documents in rejecting the claims: Werner US 854,547 May 21, 1907 McMahon US 1,550,552 Aug. 18, 1925 The following rejections are before us for review: 1 Appeal Brief filed August 21, 2007. 2 Appeal 2008-5238 Application 11/160,024 Claims 1-3, 5-14, and 16-22 stand rejected under 35 U.S.C. § 102(b) as being anticipated by McMahon (Ans. 3).2 Claims 1-3, 5-14, and 16-22 stand rejected under 35 U.S.C. § 103(a) as being obvious over Werner in view of McMahon (id. at 3-4). ANTICIPATION ISSUE The Examiner cites McMahon as disclosing a game board having all of the claimed limitations, including “a first set of game pieces with each piece having a first predetermined characteristic (outer color), a second characteristic (inner color) and the number of game pieces in each set being equal to a number of game spaces” (Ans. 3). The Examiner contends that McMahon teaches the “limitations of . . . game pieces having a first and second characteristics from a different group of colors, a first group being outer colors (orange, pink, brown, green) and a second group being inner colors (white, blue, yellow, gray)” (id.). Appellant contends that independent claims 1 and 12 require the game pieces to “include two predetermined characteristics, a first and second, and each of the first predetermined characteristic and the second predetermined characteristic of each game piece are to be selected from a different group, i.e., color, shape, size, or printed symbol” (App. Br. 11). Therefore, Appellant argues, “if the first predetermined characteristic of a game piece in the present invention is color, the second predetermined characteristic cannot be color. Instead, the second predetermined characteristic is to be chosen as shape, size, or printed symbol” (id.). Thus, Appellant contends, 2 The Examiner’s rejection statements include claim 15 (Ans. 3). However, claim 15 has been canceled (see App. Br. 5). 3 Appeal 2008-5238 Application 11/160,024 “[a]s the game pieces in McMahon only use colors for both the primary distinguishing characteristic and the secondary distinguishing characteristic, the primary distinguishing characteristic and the secondary distinguishing characteristic of McMahon are of the same ‘group’” (id.). Furthermore, Appellant argues, “according to claim 1, all the individual game pieces are positioned on the board prior to the start of the game at which point individual game pieces are exchanged with one another's position on the game board” (id. at 13). In contrast, Appellant contends, “[t]he game play taught by McMahon does not include placing the all the game pieces on a game board and exchanging the game pieces position with one another as claimed in the present invention” (id.). Appellant does not argue any of the claims subject to this ground of rejection separately. We select claim 1 as representative of the rejected claims. See 37 C.F.R. § 41.37(c)(1)(vii). The issue with respect to this rejection, then, is whether the Examiner erred in finding that McMahon meets all of the limitations in claim 1, in particular, the limitation requiring the game pieces to have two sets of predetermined characteristics, in which “the first predetermined characteristic and the second predetermined characteristic are not of a same group,” and the limitations requiring the pieces to be placed on the board in a specific configuration. FINDINGS OF FACT 1. McMahon discloses a puzzle game comprising a board and game pieces, which in a preferred embodiment “includes sixteen chips or pieces made from eight colors, two colors being placed on each chip (McMahon, p. 1, ll. 83-86; see also Figure 1). Figure 1 of McMahon, reproduced below, 4 Appeal 2008-5238 Application 11/160,024 “is a plan view of the puzzle board, with the puzzle pieces in their position when the puzzle is solved . . .” (id. at p. 1, ll. 26-28): Figure 1 shows board 5 “having a checkered surface 6 forming rest places for game pieces, which rest places are aligned in two directions . . . . The particular form of board shown is of square form in plan and embodies four rows of rest places with four rest places in each row” (McMahon, p. 1, ll. 32-39). 2. McMahon discloses that the puzzle pieces “correspond[] in number to the number of rest places on the surface of the board and embody[] a plurality of groups of pieces, respectively designated by the characters ‘A’, ‘B’, ‘C’, and ‘D’” (McMahon, p. 1, ll. 40-45). 5 Appeal 2008-5238 Application 11/160,024 3. McMahon discloses that the “pieces of each group have a similar primary distinguishing characteristic 7, but the primary distinguishing characteristic of one group is different from that of each of the other groups” (McMahon, p. 1, ll. 53-57; see also Figure 1). Thus, in the preferred embodiment, “the primary distinguishing characteristic of one group consists of a border of green, another group having brown as its primary distinguishing characteristic, still another employing pink, and still another employing orange” (id. at p. 1, ll. 59-64). 4. McMahon discloses that a “secondary distinguishing characteristic is also provided on each game piece, as at 8, and as shown these secondary distinguishing characteristics are preferably in the nature of colored centers provided on the game pieces” (McMahon, p. 1, ll. 65-70; see also Figure 1). Thus, for example, with respect to group “A”, “the secondary characteristics preferably embody colored centers on the game pieces, respectively white, yellow, blue and gray” (id. at p. 1, ll. 78-82). 5. McMahon discloses that, because of the mixture of different border and center colors, “no two of the game pieces of each groups are alike, and that each secondary distinguishing characteristic of the pieces of one group are similar to the secondary characteristic of one piece of each of the other groups” (McMahon, p. 1, ll. 72-77). 6. McMahon discloses that “[t]he object of the puzzle is to so arrange the game pieces [so] that there will be no two colors alike in any row, crosswise or lengthwise, as shown in Figure 1” (McMahon, p. 1, ll. 90-93). Thus, the objective can be attained by putting the game pieces “on the board at any point desired, or by placing the pieces at random upon all the rest places except one and then sliding the chips from one square to another without 6 Appeal 2008-5238 Application 11/160,024 raising them from the board until they are in position as shown in Figure 1” (id. at p. 1, ll. 94-100). PRINCIPLES OF LAW “To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). During examination, the PTO must interpret terms in a claim using “the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). However, “while ‘the specification [should be used] to interpret the meaning of a claim,’ courts must not ‘import[ ] limitations from the specification into the claim.’ . . . [I]t is improper to ‘confin[e] the claims to th[e] embodiments’ found in the specification . . . .” In re Trans Texas Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007) (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005), citations omitted, bracketed text in internal quotes in original); see also Sjolund v. Musland, 847 F.2d 1573, 1581 (Fed. Cir. 1988) (“[W]hile it is true that claims are to be interpreted in light of the specification and with a view to ascertaining the invention, it does not follow that limitations from the specification may be read into the claims.”); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification . . . when [it] expressly disclaim[s] the broader definition.”). 7 Appeal 2008-5238 Application 11/160,024 ANALYSIS We do not agree with Appellant that the Examiner erred in finding that McMahon meets all of the limitations of claim 1. Specifically, we agree with the Examiner that McMahon meets the limitation requiring a board with multiple rows and multiple columns of playing spaces in a fixed area (see FF 1). McMahon also discloses that, because of the mixture of different border and center colors of its game pieces, “no two of the game pieces of each groups are alike” (McMahon, p. 1, ll. 72-73 (FF 5)). Thus, as seen in Figure 1 (FF 1) none of the game pieces has the same combination of border and center colors. We therefore also agree with the Examiner that McMahon meets the limitation in claim 1 requiring the set of individual game pieces to be configured such that “each individual game piece comprises at least a first predetermined characteristic and a second predetermined characteristic such that none of the individual game pieces comprise an identical first predetermined characteristic and an identical second predetermined characteristic as any other of the individual game pieces of the set.” McMahon also meets the limitation requiring the number of game pieces to equal the number of spaces on the board (see FF 2). As to the disputed limitations, McMahon discloses that its game pieces are identified by two predetermined characteristics -- the border color of the game pieces and the center color of the game pieces (FF 1 and 3-5). None of the colors used to identify the first predetermined characteristic -- green, brown, pink, and orange (FF 3) -- is in the same group of colors used to identify the second predetermined characteristic -- white, yellow, blue, and gray (FF 4). Because the first predetermined characteristic of the game 8 Appeal 2008-5238 Application 11/160,024 pieces in McMahon’s game is identified by a group of colors that is entirely different from the group of colors that identifies the second predetermined characteristic of the game pieces, we agree with the Examiner that McMahon meets the limitation in claim 1 requiring the game pieces to have “at least a first predetermined characteristic and a second predetermined characteristic such that . . . the first predetermined characteristic and the second predetermined characteristic are not of a same group.” Appellant argues that “McMahon only teaches that the game pieces have two distinguishing characteristics; both of which are only identified as being color, that is, of the same group” (App. Br. 12). Thus, Appellant argues “McMahon fails to describe each and every aspect of the presently claimed invention in which the game pieces include first and second predetermined characteristics which are to be selected from a different group, i.e., color, shape, size, or printed symbol” (id. at 13). Appellant’s arguments do not persuade us of error. While a claim must be given its broadest reasonable interpretation consistent with the Specification, Morris, 127 F.3d at 1054, it is improper to read limitations into the claims from the Specification. See Trans Texas Holdings Corp., 498 F.3d at 1299; see also Sjolund, 847 F.2d at 1581; Bigio, 381 F.3d at 1325. By its terms, claim 1 does not require the second predetermined characteristic to be something other than color when the first predetermined characteristic is color. Rather, claim 1 only requires the game pieces to have “at least a first predetermined characteristic and a second predetermined characteristic such that . . . the first predetermined characteristic and the second predetermined characteristic are not of a same group.” 9 Appeal 2008-5238 Application 11/160,024 Thus, we agree with the Examiner that one of ordinary skill in the art giving claim 1 its broadest reasonable interpretation would have viewed claim 1 as encompassing game pieces with two different predetermined characteristics in which the characteristics are not in the same group. Because the colors identifying the first predetermined characteristic -- green, brown, pink, and orange (FF 3) -- are not in the same group of colors used to identify the second predetermined characteristic -- white, yellow, blue, and gray (FF 4) -- we agree with the Examiner that McMahon meets the limitation at issue. Appellant’s arguments also do not persuade us that the Examiner erred in finding that McMahon meets the limitations in claim 1 directed to the placement of the game pieces. Regarding placement of the game pieces, claim 1 recites: each of the individual game pieces is positioned on the board such that each of the individual game pieces singly occupies a related playing space; and individual game pieces are positioned, exchanged with other individual game pieces positioned on the board, or a combination thereof, until one or more predetermined winning configurations of game piece arrangements are evident on the board. McMahon discloses that the puzzle pieces “correspond[] in number to the number of rest places on the surface of the board” (McMahon, p. 1, ll. 40-42), and in Figure 1 discloses that when pieces are placed in the puzzle’s solved position, each piece singly occupies a playing space (FF 1; see also FF 6). We therefore agree with the Examiner that McMahon meets the limitation requiring each of the individual game pieces to be “positioned on 10 Appeal 2008-5238 Application 11/160,024 the board such that each of the individual game pieces singly occupies a related playing space.” Appellant argues that, “according to claim 1, all the individual game pieces are positioned on the board prior to the start of the game at which point individual game pieces are exchanged with one another's position on the game board” (App. Br. 13). We are not persuaded by this argument, nor do we agree with Appellant’s statement. The last-recited limitation in claim 1 is directed to how the game is to be played, rather than any specific structural property. Claim 1, however, is directed to an apparatus, and not a process of playing a game. Thus, claim 1 does not require performing any process steps, much less performing the actions in the last two paragraphs in the recited order. Even assuming for argument’s sake, however, that the last paragraph of claim 1 limits the structure to one capable of functioning as claimed, we do not agree with Appellant that McMahon fails to meet this limitation. Specifically, McMahon explicitly discloses that the game pieces are to be placed “on the board at any point desired, or by placing the pieces at random upon all the rest places except one and then sliding the chips from one square to another without raising them from the board until they are in position as shown in Figure 1” (McMahon, p. 1, ll. 94-100 (FF 6)). We therefore agree with the Examiner that McMahon meets the limitation requiring the “individual game pieces [to be] positioned, exchanged with other individual game pieces positioned on the board, or a combination thereof, until one or more predetermined winning configurations of game piece arrangements are evident on the board.” 11 Appeal 2008-5238 Application 11/160,024 Because we agree with the Examiner that McMahon meets all of the limitations of claim 1, we affirm the Examiner’s rejection of claim 1 as anticipated by McMahon. Because they were not argued separately from claim 1, we also affirm the Examiner’s rejection of claims 2, 3, 5-14, and 16-22 over McMahon. See 37 C.F.R. § 41.37(c)(1)(vii). OBVIOUSNESS ISSUE Claims 1-3, 5-14, and 16-22 stand rejected under 35 U.S.C. § 103(a) as being obvious over Werner in view of McMahon (Ans. 3-4). The Examiner cites Werner as teaching a set of game pieces with each piece having “a first predetermined characteristic (shapes), a second characteristic (color) and the number of game pieces in each set being equal to a number of game spaces. Werner also teaches each game piece having a third characteristic (numerals). Werner also teaches arranging game pieces on spaces to form designs” (id. at 3). The Examiner concedes that “Werner does not teach a game board with spaces in rows and columns” and cites McMahon to meet that limitation (id. at 4). The Examiner finds that “[w]hereas experienced players can arrange game pieces in a predetermined fixed number of rows and columns without using a board others such as younger players find it difficult placing game pieces in a proper arrangement” (id.). Therefore, the Examiner contends, to “make placement of puzzle pieces in a predetermined rows and column arrangement, it would have been obvious to provide a game board outlining cells in rows and columns. McMahon solves the problem in Werner by providing a game board of rows and columns for easy placement of game pieces” (id.). The Examiner concludes that “[o]ne of ordinary skill in art at 12 Appeal 2008-5238 Application 11/160,024 the time the invention was made would have suggested providing a game board with rows and columns for placing game pieces” (id.). Appellant contends that the Examiner’s conclusion of obviousness is erroneous because, contrary to claim 1, Werner uses playing cards rather than game pieces, and because Werner uses at least three characteristics (App. Br. 15). Thus, Appellant contends: Werner fails to teach or suggest the presently claimed invention having “a set of individual game pieces, wherein each individual game piece comprises at least a first predetermined characteristic and a second predetermined characteristic such that none of the individual game pieces comprise an identical first predetermined characteristic and an identical second predetermined characteristic as any other of the individual game pieces of the set, the first predetermined characteristic and the second predetermined characteristic are not of a same group, and the number of individual game pieces in the set is equal to a number of playing spaces on the board.” (Id. at 15-16.) Appellant contends that “McMahon fails to remedy the deficiencies of Warner” (id. at 16). Appellant does not argue any of the claims subject to this ground of rejection separately. We select claim 1 as representative of the rejected claims. See 37 C.F.R. § 41.37(c)(1)(vii). The issue with respect to this rejection, then, is whether the Examiner made a prima facie case that one of ordinary skill would have considered claim 1 obvious in view of Werner and McMahon. FINDINGS OF FACT 7. Werner discloses a puzzle in the form of “cards for playing solitaire” (Werner, ll. 9-10). Specifically, the puzzle is 13 Appeal 2008-5238 Application 11/160,024 [A] deck of playing cards and consists of a number of cards, numbered consecutively and arranged in sets or suits, each set being formed by a number of cards, and each card being provided with a colored design, preferably a geometrical figure, the designs and their colors in a set being different, and the colors of the same designs in the several sets being different. (Id. at ll. 22-31.) 8. Werner discloses that to solve the puzzle all the cards in the deck must be arranged in horizontal and vertical rows such that “each row contains the same number of cards, that the aggregate amount of the numerals in each horizontal, vertical and diagonal row is the same, and that the same design and the same color do not appear more than once in the same row horizontally, vertically or diagonally” (Werner, ll. 35-41). 9. The drawing in Werner, reproduced below, shows an embodiment in which the deck consists of sixteen cards arranged to solve the puzzle (see Werner, ll. 61-70): 14 Appeal 2008-5238 Application 11/160,024 The drawing shows: [T]he deck of playing cards consist[ing] of sixteen cards, numbered consecutively from 1 to 16, and divided in sets or suits, each set being formed of four cards, of which one is provided on its face with the conventional figure of a star, another contains the figure of a square, another that of a cross, and the fourth the figure of a circle. (Werner, ll. 42-50.) 10. Werner discloses: Now four different colors are employed for coloring the said designs, say one red, another green, another blue and 15 Appeal 2008-5238 Application 11/160,024 another yellow, that is, the four stars are colored differently, that is, one red, another blue, another green and the fourth yellow; and in a like manner the four crosses, the four squares and the four circles are colored red, green, blue and yellow, so that the color is not repeated in the same geometrical figures. (Werner, ll. 51-60.) PRINCIPLES OF LAW In proceedings before the Patent and Trademark Office, the Examiner bears the burden of establishing a prima facie case of obviousness based upon the prior art. “[The Examiner] can satisfy this burden only by showing some objective teaching in the prior art or that knowledge generally available to one of ordinary skill in the art would lead that individual to combine the relevant teachings of the references.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992) (citations omitted, bracketed material in original). Thus, as the Supreme Court has pointed out, “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.” KSR Int' l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007). While holding that some rationale must be supplied for a conclusion of obviousness, in KSR the Court nonetheless rejected a “rigid approach” to the obviousness question, and instead emphasized that “[t]hroughout this Court’s engagement with the question of obviousness, our cases have set forth an expansive and flexible approach . . . .” Id. at 1739. The Court also rejected the use of “rigid and mandatory formulas” as being “incompatible with our precedents.” Id. at 1741; see also 1742-43 (“Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.”). 16 Appeal 2008-5238 Application 11/160,024 The Court thus reasoned that the analysis under 35 U.S.C. § 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 1741. The Court further advised that “[a] person of ordinary skill is . . . a person of ordinary creativity, not an automaton.” Id. at 1742. Regarding hindsight reasoning, the Court stated that “[a] factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning. Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.” Id. at 1742- 1743 (citations omitted). ANALYSIS We do not agree with Appellants that the Examiner failed to make a prima facie case that one of ordinary skill in the art would have considered claim 1 obvious in view of Werner and McMahon. Rather, we agree with the Examiner that one of ordinary skill in the art practicing Werner’s puzzle game, being a person of ordinary creativity and common sense, see KSR, 127 S. Ct. at 1742-43, would have reasonably inferred that it would be desirable to include with the puzzle a board having playing spaces to aid in arranging the cards in the configuration disclosed by Werner as solving the puzzle (see FF 9). Because we agree with the Examiner that a person of ordinary skill in the art would have been prompted to add a board, such as that disclosed by McMahon, to aid in playing Werner’s game, we also agree that the Examiner has made a prima facie case of obviousness with respect to claim 1. 17 Appeal 2008-5238 Application 11/160,024 Appellant’s arguments do not persuade us of error. We note that Werner’s game uses playing cards (see FF 7). However, it is well settled that claims are to be given their broadest reasonable construction consistent with the Specification. Morris, 127 F.3d at 1054. We do not agree with Appellant that it is unreasonable to interpret the recitation “game piece” in claim 1 as encompassing the playing cards of Werner since the cards are single “pieces” utilized to play a “game.” Nor do we agree that Werner fails to meet the limitations in claim 1 regarding the game pieces. Specifically, Werner discloses that, in its embodiment using a sixteen card deck, a first predetermined characteristic, shape (FF 9), is placed on each card, and a second predetermined characteristic, color (FF 10), is also placed on each card. Moreover, because the sixteen-card deck uses four different shapes along with four different colors, Werner discloses that no card has the same combination of shape and color on it (see FF 9, 10). Thus, we agree with the Examiner that Werner meets claim 1’s limitations that the individual game pieces comprise “at least a first predetermined characteristic and a second predetermined characteristic such that none of the individual game pieces comprise an identical first predetermined characteristic and an identical second predetermined characteristic as any other of the individual game pieces of the set.” Also, because Werner uses predetermined characteristics that include color and shape (FF 9, 10), we agree with the Examiner that Werner meets claim 1’s limitation requiring the first predetermined characteristic and the second predetermined characteristic to be “not of a same group.” 18 Appeal 2008-5238 Application 11/160,024 Because we agree with the Examiner that one of ordinary skill would have considered the game apparatus recited in claim 1 obvious in view of Werner and McMahon, we affirm the Examiner’s obviousness rejection of that claim over those references. Because they were not argued separately from claim 1, we also affirm the Examiner’s rejection of claims 2, 3, 5-14, and 16-22 over Werner and McMahon. See 37 C.F.R. § 41.37(c)(1)(vii). SUMMARY We affirm the Examiner’s rejection of claims 1-3, 5-14, and 16-22 under 35 U.S.C. § 102(b) as being anticipated by McMahon. We affirm the Examiner’s rejection of claims 1-3, 5-14, and 16-22 under 35 U.S.C. § 103(a) as being obvious over Werner in view of McMahon. AFFIRMED cdc LAFKAS PATENT LLC PO Box 43289 CINCINNATI OH 45243-0289 19 Copy with citationCopy as parenthetical citation