Ex parte JACOBS

Board of Patent Appeals and Interferences

Jul 29, 1998

08441493 (B.P.A.I. Jul. 29, 1998)

Application for patent filed May 15, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ROBERT JACOBS
_____________
Appeal No. 97-2886
Application 08/441,4931
______________
ON BRIEF
_______________
Before MEISTER, GARRIS and FRANKFORT, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 and 3 through 20, all of the claims
remaining in the application. Claim 2 has been canceled.
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Application 08/441,493
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Appellant's invention relates to an apparatus and method for
playing an anagram-type word game in a computer game and/or t.v.
game show format. Claims 1, 9, 12, 15 and 16 are representative
of the subject matter on appeal and a copy of those claims may be
found in the Appendix to appellant's brief.
The sole prior art reference of record listed by the
examiner (answer, pages 2-3) as relied upon in the rejection of
the claims under appeal is:
Cunningham et al. (Cunningham) 5,041,992 Aug. 20, 1991
As stated by the examiner on page 3 of his answer, claims 1
and 3 through 20 stand rejected under 35 U.S.C. § 103 "as being
unpatentable over Cunningham."
It is, however, immediately apparent from the examiner's
somewhat meager explanation of the rejection on page 3 of the
answer (addressing only claim 1 on appeal) that he is in fact
relying upon certain admitted prior art set forth in appellant's
specification regarding a known anagram-type game called
REVELATION™ and also on other known prior art the examiner
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Application 08/441,493
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describes as "'drag' modes known on computer interfaces," along
with the teachings of the Cunningham patent, in formulating the
35 U.S.C. § 103 rejection of appellant's claims on appeal.
Moreover, as noted by appellant in the reply brief (Paper No. 9),
the examiner in his "Response to Argument" section of the answer
(pages 4-10) also relies upon other prior art, such as the "file
Manager" applications in Windows, highlighting features in
Windows applications, Solitaire in Windows applications, and the
t.v. game shows "Jeopardy" and "Wheel of Fortune."
Rather than reiterate the examiner's understanding of the
above-noted rejection and the conflicting viewpoints advanced by
the examiner and appellant regarding the rejection, we make
reference to the examiner's answer (Paper No. 8, mailed June 10,
1996) for the examiner's reasoning in support of the rejection,
and to appellant's brief (Paper No. 7, filed May 14, 1996) and
reply brief (Paper No. 9, filed July 30, 1996) for appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claims, to
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the applied prior art, and to the respective positions
articulated by appellant and the examiner. As a consequence of
our review, we have made the determinations which follow.
Turning first to the examiner's rejection of independent
claim 1 under 35 U.S.C. § 103, we note that this claim requires,
inter alia, that each of the characters of the unsolved
arrangement of the one or more anagrams in the unsolved area of
the game board have "a path defined by a predetermined plurality
of points from said character's initial position to said
character's final position" in the solution area of the game
board, and that the apparatus include "character moving means for
moving each of said characters along its respective path... in
response to selection of said character." As explained in the
paragraph bridging pages 4 and 5 of the specification, this
aspect of appellant's invention contributes to easy visualization
of the progress of the puzzle from the time the puzzle is
originally presented until the time the puzzle is completely
solved and distinguishes appellant's game from the known previous
version of REVELATION™ wherein the letters/characters of the
anagrams apparently just disappeared from their initial position
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in the unsolved area of the game board and reappeared in their
final position in the solution area of the game board. See
Figures 4, 5 and 8 through 12 of the application drawings for a
showing of the respective paths (136, 140, 142, 144).
To address this difference between the known previous
version of the anagram game REVELATION™ and appellant's claimed
apparatus, the examiner urges that the recited movement of
characters is "considered to be old and well known to the 'drag'
modes known on computer interfaces" (answer, page 3). In
addition, the examiner points to the teaching in Cunningham of
arcade games (col. 1, line 13) and the teaching at column 1, line
38, of Cunningham, and concludes that
To have provided computer outlines in "a path of
predetermined plurality of points" with a "means for
moving" as required by claim 1 would have been obvious
to provide a more easily understood interface.
On page 5 of the answer, the examiner also points to the
"File Manager" applications in Windows, urging that "[i]cons of
the files can be directly 'dragged' from on [sic, one] disk drive
to another along a path of a predetermined plurality of points"
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and that clearly, this "drag" feature on computer interfaces
"is used so that one can follow an icon from a source to a
destination (or a letter from a source to a destination as in
the instant invention)."
Like appellant, we find nothing in the teachings of
Cunningham referred to by the examiner, or in the "drag" mode of
known computer interfaces relied upon by the examiner, which
would have led one of ordinary skill in the art to modify the
previously known version of the anagram game REVELATION™
described in appellant's specification so as to arrive at the
particular apparatus set forth in appellant's claim 1 on appeal.
Neither Cunningham, nor the known "drag" modes we are aware of,
provide any teaching or suggestion of 1) moving characters of an
anagram-type game along "a path defined by a predetermined
plurality of points from said character's initial position to
said character's final position" or 2) a "character moving means
for moving each of said characters along its respective path...
in response to selection of said character," as defined in
appellant's claim 1. In contrast with the examiner's
characterization of the "drag" mode used in the "File Manager"
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application in Windows, we agree with appellant that movement of
an icon using the "drag" mode in the "File Manager" application
is not along "a path defined by a predetermined plurality of
points..." as in appellant's claim 1 on appeal, but instead
allows the selected icon to be "dragged" by the user along any
path he/she chooses.
Moreover, we do not see how Cunningham in any way “clearly
teach [sic] and bridges any gap between the game of Revelations
[sic] and known computer display manipulations,” as urged by the
examiner on page 8 of the answer. Even if one would have gleaned
from Cunningham that arcade games played on a computer are known
to use “drag” features, as the examiner believes, we do not see
how this fact alone, or in combination with the “drag” mode in
the “File Manager” application of Windows, would have led one of
ordinary skill in the art to modify the previously know version
of the game of REVELATION™ in the manner urged by the examiner so
as to arrive at the particular apparatus set forth in appellant’s
claim 1 on appeal. Again, we note that there is no teaching or
suggestion in the applied prior art of moving a character of an
anagram from its initial position in the unsolved area of the
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game board to said character’s final position in the solution
area of the game board along a predefined path of the type set
forth in appellant’s claim 1.
For the above reasons, the examiner's rejection of
appellant's independent claim 1 under 35 U.S.C. § 103 will not be
sustained. The examiner's rejection under 35 USC § 103 of claims
3 through 8, which depend from claim 1, will likewise not be
sustained. In this regard, we note particularly that the
examiner's interpretation of the "substantially identical"
portions of the paths in appellant's claim 3 on appeal (answer,
pages 5-6) is clearly not a "reasonable" interpretation of the
claim requirements given appellant's disclosure (specification,
pages 4-5) regarding such "substantially identical" path
portions. In this regard, we note that it is well settled that,
during the prosecution of a patent application, claims are to be
given their broadest reasonable interpretation consistent with
the specification. See, In re Sneed, 710 F.2d 1544, 218 USPQ 385
(Fed. Cir. 1983); In re Tanaka, 551 F.2d 855, 193 USPQ 138 (CCPA
1977).
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Looking next at independent claim 9 on appeal, we note that
this claim defines an apparatus for playing an anagram-type game,
wherein the apparatus includes, inter alia, "character moving
means" for moving each of said characters from its respective
initial position to its respective final position, and
outline means for displaying on [sic, an] outline of
each of said characters in its initial position after
said character is moved from its initial position,
whereby said outline can be viewed together with
adjacent characters or outlines in said unsolved area."
On pages 4-6 of the specification, appellant again emphasizes
that these aspects of the invention assist the viewer in studying
and concentrating on the unsolved anagram, thereby making it
easier for the viewer and players to play and follow the game and
therefore necessarily adds considerable enjoyment.
On page 6 of the answer, the examiner has indicated that an
outline like that required in appellant's claim 9 is "considered
old to computer manipulations" and that applying such a known
outline to a game of REVELATION™ would have been obvious to mark
the location of the source of an image after it has been
translated to its destination. Like appellant, we find the
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examiner's bare assertion in this regard to be without any
factual underpinnings in the applied prior art and not otherwise
explained with any reasonable degree of specificity. It is by
now well settled that a rejection based on § 103 must rest on a
factual basis, with the facts being interpreted without hindsight
reconstruction of the invention from the prior art. In making
this evaluation, the examiner has the initial duty of supplying
the factual basis for the rejection he advances. He may not,
because he doubts that the invention is patentable, resort to
speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in the factual basis. See In re Warner, 379
F.2d 1011, 154 USPQ 173 (CCPA 1967). Absent the required factual
basis on the examiner's part, we refuse to sustain the rejection
of appellant's claim 9 under 35 U.S.C. § 103. It follows that
the examiner's rejection of claims 10 and 11, which depend from
claim 9, will also not be sustained.
Independent claim 12 on appeal defines an apparatus for
playing an anagram-type game, wherein the apparatus includes,
inter alia, "character moving means" for moving each of said
characters from its respective initial position to its respective
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final position, and "indicator means for directing the attention
of players of said game to a selected one of said unsolved areas
before a player guesses the solution of the anagram in said
unsolved area." Page 6, lines 19-25, of appellant's specification
discusses the indicator means and notes that in the disclosed
anagram game such indicator means allows everyone to focus their
attention on the area of the game board where movement of
characters will take place in the then immediate future.
In rejecting claim 12 under 35 U.S.C. § 103, the examiner
has urged (answer, page 6) that highlighting features are old to
direct image manipulations. In this regard, the examiner
suggests that we note any Windows application where an icon is
highlighted upon being selected prior to any manipulation. While
it is certainly true that highlighting features in computer
systems of the type referred to by the examiner are known, we are
of the opinion that the proposed combination of such known
highlighting features with the previously known anagram game of
REVELATION™ in the particular manner now posited by the examiner
so as to arrive at the apparatus required in appellant’s claim 12
on appeal is based on impermissible hindsight derived from
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appellant’s own disclosure and not from any fair teaching or
suggestion found in the applied prior art itself.
In this regard, we consider that the examiner has used
appellant’s own disclosure and the claimed invention itself as a
blueprint for piecing together elements in the prior art so as to
defeat patentability of the apparatus defined in appellant’s
claim 12. Moving a mouse indicator arrow to an icon and clicking
on the icon to highlight the selected icon prior to activation
thereof, as suggested by the examiner, is far different than the
operation of the indicator means disclosed by appellant and as
required in claim 12 on appeal. The indicator means of claim 12
is provided for directing the attention of players and viewers of
an anagram game to “a selected one of said unsolved areas” before
a player guesses the solution of the anagram in said unsolved
area. By contrast, the highlighting feature alluded to by the
examiner where an icon is highlighted by a user, is the result of
the user already being focussed on a particular icon of interest
and then moving the mouse arrow to the desired icon which is
thereafter highlighted by the user so that it can be subsequently
activated by the user.
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Since, as noted above, we consider that the examiner’s
combination of the prior art in this instance is motivated solely
by impermissible hindsight, it follows that we will not sustain
the examiner’s rejection of appellant’s claim 12 under 35 U.S.C.
§ 103. For the same reason, we will also not sustain the
examiner’s rejection of dependent claims 13 and 14 under 35
U.S.C. § 103.
Independent claim 15 on appeal is directed to an apparatus
for playing an anagram game, wherein the apparatus includes,
inter alia, "character moving means" for moving each of said
characters from its respective initial position to its respective
final position, and “random selection means for randomly
selecting one of said final positions into which a predetermined
one of said characters is to be moved by said character moving
means." The “character moving means”is described in the paragraph
bridging pages 4 and 5 of appellant’s specification, while the
“random selection means” is described in the paragraph bridging
pages 7 and 8 of the specification. On page 7 of his answer, the
examiner has taken the position that claim 15 on appeal presents
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limitations that “are considered old to game show formats in
general.” More specifically, the examiner is of the view that
randomly assigning point or dollar values to solution
areas in a game show where that point or dollar value
is awarded upon correct actions by a player are old to
game show formats themselves. Jeopardy has its random
"Daily Double" square that is randomly assigned.
Like appellant, we find no teaching or suggestion in the
applied prior art for the specific form of “character moving
means” or “random selection means” disclosed and claimed by
appellant in claim 15 on appeal. In contrast with the examiner’s
assertions, we are not aware that the “Daily Double” square on
the t.v. game show Jeopardy is “randomly assigned,” and even if
it were, we see no suggestion or incentive in such a teaching for
modifying the previously known anagram game of REVELATION™ in a
manner so as to result in the particular apparatus defined in
appellant’s claim 15 on appeal. The function and manner of use
of the “Daily Double” square on Jeopardy is entirely different
from the “random selection means” disclosed by appellant and
defined in appellant’s claim 15 on appeal, and is clearly not the
equivalent thereof. For this reason, we will not sustain the
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examiner’s rejection of appellant’s independent claim 15 under 35
U.S.C. § 103.
The last of appellant’s independent claims for our
consideration on appeal is method claim 16. This claim sets
forth a method for playing an anagram-type game, which method
includes, inter alia, the steps of “randomly selecting one of
said anagrams” and “moving the characters of said selected
anagram... in response to the solution of said anagram being
guessed by said player.” The step of “moving the characters of
said selected anagram” is described in the paragraph bridging
pages 4 and 5 of appellant’s specification, while the step of
“randomly selecting one of said anagrams” is described in the
paragraph bridging pages 7 and 8 of the specification. After
considering the examiner’s position as set forth on page 7 of the
answer, we, like appellant, find no teaching or suggestion in the
applied prior art concerning the last two recited steps of claim
16 on appeal.
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In contrast with the examiner’s assertions, we are not aware
that the typical format of the previously known REVELATION™ game
included the specific step of randomly selecting one of the
anagrams as required in appellant’s claim 16 on appeal, or that
such prior game involved the particular step of “moving the
characters of said selected anagram” as set forth in appellant’s
claim 16. In this regard, we note that neither appellant nor the
examiner has clearly defined exactly what apparatus and method
steps were involved in playing the previously known version of
the REVELATION™ game, as compared to appellant’s improved version
thereof, and that consequently any understanding of that prior
art game involves a degree of speculation which we find
unacceptable. Given the lack of an adequate factual basis to
support the examiner’s conclusion of obviousness with regard to
claim 16 on appeal, especially the last two steps thereof, we
will not sustain the rejection of this claim under 35 U.S.C.
§ 103. We will likewise not sustain the rejection of claims 17
through 20, which depend from independent claim 16, under 35
U.S.C. § 103.
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As should be apparent from the foregoing, the decision of
the examiner rejecting claims 1 and 3 through 20 of the present
application under 35 U.S.C. § 103 is reversed.
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Appeal No. 97-2886
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