Ex Parte HUMM

Patent Trial and Appeal Board

Nov 30, 2018

14867447 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/867,447 09/28/2015
4955 7590 12/04/2018
WARE, FRESSOLA, MAGUIRE & BARBER LLP
BRADFORD GREEN, BUILDING 5
755 MAIN STREET
MONROE, CT 06468
Mark HUMM
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
404-320.002-1 8403
EXAMINER
MENDIRATTA, VISHU K
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
12/04/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mail@warefressola.com
uspatents@warefressola.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK HUMM
Appeal2018-003202
Application 14/867 ,44 7
Technology Center 3700
Before STEVEN D.A. MCCARTHY, BRETT C. MARTIN, and
PAUL J. KORNICZKY, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-003202
Application 14/867,447
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1, 6-8, 10, 11, 13, 16, 17, and22-30. Claims2-5, 9, 12,
14, 15, and 18-21 were canceled during prosecution. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
THE INVENTION
Appellant's claims are directed "generally to a puzzle made up of
many component pieces and, in particular, to a puzzle in a cube form with
six faces having thereon six different patterns or images." Spec. 1, 11. 8-10.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A puzzle comprising:
a plurality of component pieces, each separable from
another, wherein each of said plurality of component pieces is
made up of one cube and having six square sides or made up of
more cubes joined together in a linear arrangement such that each
component piece has six sides, and each of the component pieces
made up of more cubes has two square sides and four regular
sides, wherein the sides of the component pieces are provided
with a plurality of component patterns, and when all of said
plurality of component pieces are assembled into one single
body, the single body has eight vertices, twelve edges and six
faces of equal area, and wherein all of said plurality of
component pieces are arranged to be assembled into the single
body in a plurality of correct combinations such that when all of
said plurality of component pieces are assembled into the single
body in one of the plurality of correct combinations, the
component patterns provided on the sides of at least some of said
plurality of component pieces are arranged to form a set of N
different combined patterns, each of the N different combined
patterns arranged to appear on a different one of six faces, N
being an integer greater than three but smaller than or equal to
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six, and each of the N different combined patterns is a
predetermined design, and when all of said plurality of
component pieces are assemble into the single body in a different
one of the plurality of correct combinations, the component
patterns provided on the sides of at least some of said plurality
of component pieces are arranged to form a different set of N
different combined patterns, wherein each of at least some of the
component pieces is made up of two or more cubes.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Besley
Wolf
Edwards
Fang
McCarty
Tenorio
Baum
us 3,065,970
us 3,672,681
us 5,823,533
US 2002/0167127 Al
US 2009/0289415 Al
US 2010/0038850 Al
US 2010/0264589 Al
REJECTIONS
The Examiner made the following rejections:
Nov. 27, 1962
June 27, 1972
Oct. 20, 1998
Nov. 14, 2002
Nov. 26, 2009
Feb. 18,2010
Oct. 21, 2010
Claims 1, 6-8, 10, 11, 13, 16, 17, and 22-30 stand rejected under 35
U.S.C. § 112, second paragraph, as being indefinite. Ans. 2.
Claim 1 stands rejected under 35 U.S.C. § I02(a)(l) or§ I02(a)(2) as
being anticipated by Wolf. Ans. 3.
Claims 1, 6-8, 10, 11, 13, 16, 22, 24, and 26-30 stand rejected under
35 U.S.C. § 103 as being unpatentable over Wolf, Baum, and Edwards or
McCarty. Id.
Claims 23, 25, and 27 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Wolf, Baum, Besley, and McCarty or Edwards. Ans. 6.
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Claim 17 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Wolf, Baum, McCarty or Edwards, and Fang or Tenario. Id.
ANALYSIS
Indefiniteness
According to the Examiner, the claims are "replete with indefinite
language," specifically such terms as "correct combination(s)," "component
pattern(s)," "combined patterns," and "pattern." Ans. 2. In response to
Appellant's arguments to the contrary, the Examiner reasons that, "while the
terms may have been defined in the specification[,] they are required to
stand on their own merit within the context of the claim and not be read into
the specification." Ans. 7. The Examiner here appears to confuse the rule
prohibiting improper narrowing of claim language by reading language from
the Specification into the claims with proper interpretation of claim language
in light of the Specification. The Examiner acknowledges that the claims are
properly explained in the Specification, but appears to have determined that
looking to those explanations amounts to an improper importation of claim
limitations from the Specification. Furthermore, the Examiner appears to
have no trouble ascertaining the scope of the claim language at issue in that
the prior art is properly applied to teach the intended meaning of the claim
terms at issue as gleaned from the Specification. Accordingly, we disagree
that these terms are indefinite and reverse the rejection.
Anticipation
Regarding anticipation, the Examiner rejects at least claim 1 over
Wolf alone, but does not point out where numerous limitations may be found
in Wolf, specifically the claimed patterns. The Examiner appears to focus
on the alternative claim language used to describe how the component pieces
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may be a single cube or multiple cubes joined together to show that "[t]he
examiner has the burden of searching the puzzle of only one of the two
options." Ans. 8. While this may be true regarding the alternative language,
the Examiner must still show where the remaining limitations are taught in
Wolf, which has not been done. Additionally, the last line of claim 1
requires at least some of the pieces be made from two or more cubes. As
such, the claims, in addition to the alternative language stated above, also
require multiple cube component pieces. Wolf fails to describe multiple
cube component pieces having the square and rectangular sides recited in
claim 1. Accordingly, we do not sustain the anticipation rejections.
Obviousness
As to obviousness, we are not persuaded that the Examiner erred in
the various proposed combinations. First, regarding Baum, Appellant
asserts that Wolf and Baum cannot be combined. Reply Br. 11. Appellant's
arguments essentially amount to bodily incorporation by pointing out how if
some cubes of Wolf are replaced by some components from Baum, the
players would be unable to use the replacement pieces to form building
groups, thus defeating the purpose of the games of Wolf. Reply Br. 11-12.
Ultimately, both Wolf and Baum teach puzzles that may be
constructed from component pieces. The Examiner's suggested
modification merely applies the teaching of specific shapes 20, 22, and 24 in
Baum and utilizes those shapes to form the larger cube from a more basic
group of components for younger players, thus simplifying the puzzle.
Because Wolf's components are all made by joining single cubes together to
form larger pieces, the Examiner's modification simply limits the shapes
formed by Wolfs pieces to those that are similar to shapes 20, 22, and 24 of
Baum. The game can still be played according to Wolfs rules and only
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using Wolfs pieces, but simply limiting the overall number of shapes to less
complex ones as taught in Baum. Accordingly, the purpose of Wolfs game
is not defeated, it is merely simplified according to the teachings in Baum.
As to McCarty and Edwards, each of these references clearly teaches
component patterns assembled together to form overall patterns on three or
more sides of the larger cube. See e.g., McCarty, Fig. 6 and Edwards, col. 1,
11. 56-62. As the Examiner also points out, Edwards teaches patterns hidden
within the cube assemblage, thereby demonstrating that there are different
sets of images capable of being formed such that some are on the face while
others are hidden in certain configurations, thus satisfying the claimed
different sets.
Appellant also attacks McCarty and Edwards for not teaching the
multiple cube pieces (Reply Br. 13), but as noted above, this element is
correctly found in Baum ( as well as Wolf), not McCarty and Edwards.
Appellant's further argument regarding McCarty and Edwards merely
restates the claim language and asserts that the elements restated are not
found. See, e.g., Reply Br. 13. Appellants do not meaningfully explain why
the variously recited elements are not met by the Examiner's combination.
Merely reciting the language of the claims and asserting that the prior
art reference or combination does not disclose or teach each claim limitation
is insufficient. See 37 C.F.R. § 4I.37(c)(vii) ("A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim."); see also In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably interpreted
Rule 41.37 to require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
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corresponding elements were not found in the prior art."). Accordingly, we
sustain the Examiner's rejection of claim 1 as obvious.
Regarding several dependent claims, Appellant likewise merely states
the claim language and asserts that the Examiner has not explained how the
references teach such limitations. See Reply Br. 13-15. As above, this does
not meaningfully explain where the Examiner erred in rejecting the claims,
especially considering the Examiner specifically addresses each of these
claims in the Response to Arguments. Ans. 10. Accordingly, we sustain the
Examiner's rejection of claims 6-8, 10, 11, 13, 16, 22, and 24.
As to claims 23, 25, and 27, Appellant again argues against the
inclusion of Besley for not teaching what the Examiner already asserts is
taught in both Baum and Wolf, namely the single cube and/or multiple cube
component configurations. As to the size of the assembled body being six
cubes along the edge, the Examiner correctly finds that Besley teaches that
the cube may be five or more and that the exact size is within the skill of one
of ordinary skill in the art. Ans. 10-11. The Examiner also finds that "[ o ]ne
of ordinary skill in [the] art at the time the invention was made would have
suggested a final cube assembly of any suitable desired number of cubes
including as indicated by Besley," with these limitation merely being a
matter of choice. Ans. 11. We agree.
Regarding claim 17, Appellant does not challenge the Examiner's
finding that both Fang and Tenario teach magnetic attachment, but merely
relies on claim 17's dependency for allowability. Reply Br. 16. Having
found claim 1 properly rejected we are not persuaded of error in the
Examiner's rejection.
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DECISION
For the above reasons, we REVERSE the Examiner's indefiniteness
and anticipation rejections and AFFIRM the Examiner's decision to reject
claims 1, 6-8, 10, 11, 13, 16, 17, 22-30 as obvious.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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