Ex Parte Ionescu

Board of Patent Appeals and Interferences

May 27, 2010

10389606 (B.P.A.I. May. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PANCU MIHAI IONESCU
____________

Appeal 2009-006349
Application 10/389,606
Technology Center 3700
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Decided: May 28, 2010
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Before: WILLIAM F. PATE, III, JENNIFER D. BAHR, and STEVEN D.A.
McCARTHY, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-006349
Application 10/389,606

2
STATEMENT OF THE CASE
Pancu Mihai Ionescu (Appellant) appeals under 35 U.S.C. § 134
(2002) from the Examiner's decision rejecting claims 1-6 and 18-20. Claims
7-17 have been canceled. We have jurisdiction over this appeal under 35
U.S.C. § 6 (2002).

The Invention
Appellant's claimed invention is directed to a puzzle game. Spec.,
para. 10.
Claim 1, reproduced below, is illustrative of the claimed invention.
1. A method of playing a combinatory game
using computer generated graphics representing a
game-set, comprising the steps of:
providing a first predetermined number of
equal game-items having a cube-like shape;
providing a collection of face-patterns;
reproducing said face-patterns on the faces
of said game-items;
arranging said game-items as an overall
parallelepiped game-structure comprising crossing
rows of aligned said game-items including zero to
a second predetermined number of empty-places
equal each to the cubic volume occupied by one
said game-item;
performing sequences of spinning
comprising each: selecting a spinning group of
said game-items in one of said crossing rows,
spinning said spinning group around its
longitudinal axis by 90 degrees and restoring the
initial shape of said game-structure; and
aiming to obtain predetermined face-pattern
combinations.
Appeal 2009-006349
Application 10/389,606

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The Rejections
The Examiner relies upon the following as evidence of
unpatentability:
Ta-Hsien US 5,312,113 May 17, 1994
Saltanov US 6,237,914 B1 May 29, 2001

The Examiner makes the following rejections:
Under 35 U.S.C. § 101:
(A) Claims 1-61 as directed to non-statutory subject matter2.
Under 35 U.S.C. § 112, second paragraph:
(B) Claim 18 as indefinite.
Under 35 U.S.C. § 103(a):
(C) Claims 1-5 and 18-20 as unpatentable over Saltanov and Ta-Hsien.
(D) Claim 6 as unpatentable over Saltanov, Ta-Hsien, and Official Notice.

1 The Examiner states that "[c]laims 2-11 and 14-19 are rejected … as being
directed to non-statutory subject matter" in a heading labeled "NEW
GROUND(S) OF REJECTION." Ans. 4. However, claims 7-11 and 14-
18 are not pending in this application, indicating that the listing on page 4 is
a typographical error. The Examiner rejects claims 1-6 in the "Grounds of
Rejection" section on page 5. We understand the Examiner's rejection
under § 101 to include claims 1-6, as recited in the rejection.
2 Appellant objects to the Examiner's Dec. 9, 2008 paper as an improper
Supplemental Answer under 37 C.F.R. § 41.43(a)(2) (2009) for adding a
new ground of rejection after the Examiner's Answer. Reply Br. 2 (All
references to the Reply Brief shall refer to the Reply Brief dated Jan. 27,
2009). However, the communication mailed Dec. 9, 2008 is a complete
Examiner's Answer, implicitly vacating the prior answer mailed Mar. 18,
2008, not a Supplemental Answer. Therefore, we will consider the new
ground of rejection filed on Dec. 9, 2008 in this appeal. Given our
disposition of the rejection below, Appellant is not prejudiced by our
consideration of the rejection.
Appeal 2009-006349
Application 10/389,606

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SUMMARY OF DECISION
We REVERSE.

ANALYSIS
Rejection A - Non-statutory subject matter
The Examiner rejected claims 1-6 as directed to non-statutory subject
matter, in relevant part because "claim [1] fails to provide a substantial tie to
another statutory class." Ans. 5-6. The Examiner states that a computer is
not recited in claim 1, and the preamble does not establish a substantial tie to
statutory subject matter. Ans. 6.
Issue
The first issue in this appeal is whether the "method of playing a
combinatory game using computer generated graphics" of claim 1 is directed
to statutory subject matter.
Analysis
Claim 1 recites a "method of playing a combinatory game using
computer generated graphics" (emphasis added). Thus, on its face, claim 1
specifies that the method is performed using a computer. The Examiner
states that the claim does not explicitly recite an "article or materials" (Ans.
6); however, the claim implicitly requires a computer in order to perform the
method of playing the game "using computer generated graphics." See Bell
Commc'ns Research, Inc. v. Vitalink Commc'ns Corp., 55 F.3d 615, 620
(Fed. Cir. 1995) ("a claim preamble has the import that the claim as a whole
suggests for it"). The Examiner further argues that the preamble does not
establish a "'substantial tie.'" However, "if the claim preamble is 'necessary
to give life, meaning, and vitality' to the claim, then the claim preamble
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Application 10/389,606

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should be construed as if in the balance of the claim." Pitney Bowes, Inc. v.
Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (citation
omitted). In claim 1, the preamble is necessary to understand the steps of
the method. In particular, the preamble limits the steps to those for playing a
combinatory game "using computer generated graphics," such that the
method is tied to a computer, which falls within one of the enumerated
statutory categories. Therefore, the Examiner has not demonstrated that
claims 1-6 are directed to non-statutory subject matter.
Conclusion
We do not sustain the Examiner's 35 U.S.C. § 101 rejection of claims
1-6.

Rejection B - Indefiniteness
The Examiner concluded that claim 18 was indefinite because "a
computer system of a known type" fails to point out and distinctly claim the
subject matter Appellant regards as the invention. Ans. 6-7. Appellant
argues that "of a known type" is recited to show that the computer system is
a state of the art device. Appeal Br. 11; Reply Br. 9. In particular,
Appellant argues that the limitation "of a known type" is an additional
limitation to the "computer system," limiting the "computer system" to state
of the art members. Reply Br. 9.
Issue
The second issue in this appeal is whether claim 18, reciting a game
utilizing "an electronic display of a computer system of a known type" is
indefinite for failing to particularly point out and distinctly claim the subject
matter Appellant regards as the invention.
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Application 10/389,606

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Analysis
Appellant's argument is essentially that "of a known type" limits the
"computer system" to those known in the art. It is well established that the
meanings of claim terms are interpreted based on the level of ordinary skill
in the art at the time of the invention. See, e.g., Phillips v. AWH Corp., 415
F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). It is not improper to explicitly
limit a "claim term to technologies that were 'conventional' at the time of the
invention"; such limitations do not inherently render a claim incapable of
interpretation by those of skill in the art. See SuperGuide Corp. v. DirectTV
Enters., Inc., 358 F.3d 870, 879 (Fed. Cir. 2004) (citing Kopykake Enters.,
Inc. v. Lucks Co., 264 F.3d 1377, 1383-84 (Fed. Cir. 2001) (holding that ink
jet printing on foodstuffs was not covered by a claim term at issue because
the claim term was explicitly limited to "conventional printing processes"
and, after an analysis of the art, it was determined that ink jet printing on
foodstuffs was not known to be conventional at the time of invention)).
Appellant is explicitly limiting the "computer system" in claim 18 to be
those computer systems "of a known type," that is, those computer systems
conventionally known in the art at the time of invention. The limitation "of
a known type" does not render the claim indefinite.
Conclusion
We do not sustain the Examiner's rejection of claim 18 under 35
U.S.C. § 112, second paragraph, as indefinite for failing to particularly point
out and distinctly claim the subject matter that Appellant regards as the
invention.
Appeal 2009-006349
Application 10/389,606

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Rejection C - Obviousness in view of Saltanov and Ta-Hsien
The Examiner found that Saltanov describes each limitation of the
method in claims 1 and 18, with the exception that Saltanov does not spin
groups of game items at the same time. Ans. 7-8. The Examiner found that
Ta-Hsien describes spinning a line of game items simultaneously. Ans. 8.
Therefore, the Examiner concluded that it would have been obvious to one
of ordinary skill in the art to employ the spinning operation taught in Ta-
Hsien in the game of Saltanov in order to increase the player's control over
the game items. Id. Appellant argues, in relevant part, that Ta-Hsien's
rotation is not the same motion as claimed. Appeal Br. 15. In particular,
Appellant argues that Ta-Hsien describes a Rubik's cube type motion around
an external axis. Appeal Br. 15-16.
Issue
The third issue in this appeal is whether the Examiner has
demonstrated that the combined teachings of Saltanov and Ta-Hsien render
obvious a game and a method of playing a game comprising steps of
"selecting a spinning group of . . . game-items in one of said crossing rows"
and spinning the spinning group around its "longitudinal axis" or "row axis,"
as recited in claims 1 and 18.
Findings of Fact
We find that Ta-Hsien describes a computer game with a depiction of
a cube formed of divisions (g), making a 9x9 grid of divisions (g) on each
cube face. Col. 1, ll. 58-64, fig. 1. We find that Ta-Hsien describes as a
valid move a "SINGLE LINE ROTATE," wherein the positions of three
lines or columns are displaced. Col. 2, ll. 9-15. In particular, we find that
the single line rotation is rotation of three rows or columns of divisions 90
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degrees around an axis running through the center of the cube. See figures
7-8, noting a Rubik's cube like rotation of the bottom three rows of
divisions, such that the divisions on the front face in figure 7 move to the
right face in figure 8, the divisions on the left face move to the front face,
and so on. Thus, we find that any single line rotation in Ta-Hsien involves
three columns or rows of divisions on at least four faces of the cube,
defining a 9x9x3 group of divisions spinning perpendicularly around a
central point of a plane defined by the 9x9 portion of the 9x9x3 group of
divisions.
Analysis
The spinning group in Ta-Hsien alluded to by the Examiner does not
satisfy the limitation of claims 1 and 18 requiring "selecting a spinning
group of said game-items in one of said crossing rows" because the group
identified by the Examiner is not "one of said crossing rows," but rather
several crossing rows forming a 9x9x3 group of divisions, rather than a
9x1x1 row of divisions. Thus, the Examiner has not established how the
teachings of Saltanov and Ta-Hsien render obvious a game and a method of
playing a game with steps of "selecting a spinning group of . . . game-items
in one of [a group of] crossing rows" and spinning the spinning group
around its "longitudinal axis" or "row axis," as recited in claims 1 and 18.
As such, the Examiner's rejection of claims 1 and 18 does not discharge the
initial burden of supplying the requisite factual basis to establish a prima
facie case of obviousness. See In re Warner, 379 F.2d 1011, 1017 (CCPA
1967).
Appeal 2009-006349
Application 10/389,606

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Conclusion
We do not sustain the Examiner's obviousness rejection of claims 1
and 18 or of claims 2-5, 19, and 20, which depend therefrom.

Rejection D - Obviousness in view of Saltanov, Ta-Hsien, and Official
Notice
The Examiner's rejection of claim 6 as obvious in view of Saltanov,
Ta-Hsien, and Official Notice does not cure the underlying deficiency of the
rejection of claim 1, from which claim 6 depends. Therefore, we do not
sustain the Examiner's obviousness rejection of claim 6.

DECISION
We reverse the Examiner's decision as to claims 1-6 and 18-20.

REVERSED

hh

PANCU MIHAI IONESCU
1841 HOWE LANE
MAPLE GLEN, PA 19002-2941