Ex Parte Jimick

Patent Trial and Appeal Board

Jan 29, 2015

12506666 (P.T.A.B. Jan. 29, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DAVID M. JIMICK
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Appeal 2012-009601
Application 12/506,666
Technology Center 3700
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Before JOHN C. KERINS, STEFAN STAICOVICI, and
ANNETTE R. REIMERS, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
David M. Jimick (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting under 35 U.S.C. § 101: claims 1–6, 9, and 10
as directed to non-statutory subject matter; under 35 U.S.C. § 102(b): claims
7, 8, 11, and 12 as anticipated by Miller (US 4,801,147, issued Jan. 31,
1989); and under 35 U.S.C. § 103(a): claims 1–6, 9, and 10 as unpatentable
over Wester (US 5,340,114, issued Aug. 23, 1994) and Syed (US

1 According to Appellant, the real party in interest is the inventor,
David M. Jimick. Br. 3.
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2004/0065999 A1, published Apr. 8, 2004). We have jurisdiction under
35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE.

INVENTION
Appellant’s invention relates to “a game designed for competition
between two opposing players.” Spec. ¶ 1.
Claims 1 and 7 are independent. Claim 1 is illustrative of the claimed
invention and reads as follows:
1. A method of playing a game comprising:
establishing, on a physical game board, a playing field
marked with a two-dimensional array of spaces representing
allowable positions for markers, said allowable positions being
arranged in mutually perpendicular rows and columns, the field
having at least eight rows and at least five columns, the playing
field having first and second opposite ends to which the
columns are perpendicular;
setting up first and second groups of movable markers on
said playing field in a starting arrangement, the first group
being associated with a first player and the second group being
associated with a second, opposing, player, the markers of the
first group being distinguishable from the markers of the second
group, the markers of the first group being disposed in a pattern
consisting of a number of markers in successive allowable
positions in a first row closer to one of said opposite ends than
to the other, an identical number of markers in successive
allowable positions in a second row adjacent said first row, the
second row being closer than the first row to said other end of
the playing field, each marker in the first row being in the same
column as an adjacent marker in the second row, and additional
markers disposed in at least one V-shaped pattern, each V-
shaped pattern consisting of two oblique rows extending to the
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second row from an apex position spaced from the second row
by at least one unoccupied space, the second group being
disposed in a pattern that is a mirror image of the pattern of the
first group, each apex position marker of the second group
being in the same column as an apex position marker of the first
group, and said rows and V-shaped patterns of the first and
second groups of markers comprising substantially all of the
markers on the playing field;
wherein the first and second players, taking alternating
turns, move their own markers only in row-wise or column-
wise directions, in each turn, a player either passes, giving up a
turn, or selects a marker, and moves the same in one of three
categories of moves, the categories consisting of (a) moving the
marker to an adjacent unoccupied allowable space, ending the
turn, (b) jumping over an adjacent marker into an unoccupied
allowable space on the opposite side of said adjacent marker,
ending the turn, and (c) jumping over an adjacent marker into
an unoccupied allowable space on the opposite side of said
adjacent marker, and continuing to jump one or more adjacent
markers into unoccupied spaces on the opposite sides thereof;
wherein each player removes jumped markers from the
field if the jumped markers are associated with the other player;
and
wherein, at a mutually agreed upon time or under
mutually agreed-upon conditions, the player who has jumped
and removed the larger number of the opponent’s markers is
considered a winner.

ANALYSIS
The Non-Statutory Subject Matter Rejection
The Examiner determined that the subject matter of claims 1–6, 9, and
10 does not pass the machine-or-transformation test and concluded that this
weighs against the claims being directed to statutory subject matter. See
Ans. 8–12. The Examiner considers that the steps of independent claim 1
“are abstract ideas because they simply instruct how business should be
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conducted.” Id. at 5. According to the Examiner, “no particular machine is
required to perform the claimed method steps, nor do the steps result in any
transformation of a particular article.” Id. Thus, although the Examiner
acknowledges that claim 1 includes “reciting a number of physical steps of
moving game pieces,” nonetheless, Appellant’s claim 1 is “a clear attempt to
claim an abstract idea in the form of a new set of rules for playing a board
game.” Id. Thus, the Examiner concludes that because “the claimed method
requires no machine implementation, requires no transformation of a
particular article and is seen as an attempt to receive patent protection for an
abstract idea in the form of [] new rules . . . the claimed method is not patent
eligible.” Id. at 5–6.
In contrast to the Examiner’s position, Appellant contends that
method claim 1 does pass the machine-or-transformation test. According to
Appellant, “[t]he ‘physical game board’ and the ‘first and second groups of
movable markers’ constitute a machine in the same sense that the
combination of components in any other physical apparatus constitutes a
machine.” Br. 17. Furthermore, Appellant contends that transformation
takes place as “a change or series of changes in the relative positions of the
movable markers on the board.” Id. at 20.
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1294 (2012).
According to the Supreme Court’s framework, we must first determine
whether the claims at issue are directed to one of those concepts (i.e., laws of
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nature, natural phenomena, and abstract ideas). Id. If so, we must secondly
“consider the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Id. The Supreme
Court characterizes the second step of the analysis as “a search for an
‘inventive concept’ — i.e., an element or combination of elements that is
‘sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself.’” Id.
The Examiner determined, and we agree, that the steps of independent
claim 1 “are abstract ideas because they simply instruct how business should
be conducted.” Ans. 5. This determination supports the Examiner’s
conclusion that, claim 1 is directed to patent-ineligible subject matter.
Following the framework set forth in Alice, we determine that independent
claim 1 is directed to instructions to players to apply the abstract rules of
playing a type of board game. Abstract intellectual concepts are not
patentable. Parker v. Flook, 437 U.S. 584, 589 (1978); Gottschalk v.
Benson, 409 U.S. 63, 67–68 (1972). Having determined that claim 1 is
directed to a patent-ineligible concept, we must secondly consider the
elements of claim 1 individually and as an ordered combination to determine
whether the additional elements of the claim transform the nature of the
claim into a patent-eligible application.
Method claim 1 includes two steps for playing a board game and a set
of rules to be followed by players when playing the board game. See App.
Br. 32–35, Claims App. The steps include: (1) establishing on a physical
game board a marked playing field of a two-dimensional array of spaces and
(2) setting up on the playing field, in a specific manner, first and second
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distinguishable groups of movable markers associated with first and second
players, respectively. See id. Although we appreciate the Examiner’s
position that the steps of claim 1 are not performed by a particular machine
and do not result in any transformation of a particular article, nonetheless,
according to Supreme Court precedents, the machine-or-transformation test
“is not the sole test for deciding whether an invention is a patent-eligible
‘process.’” Bilski v. Kappos, 130 S. Ct. 3218, 3227 (2010). In this case,
even though the “wherein” limitations of claim 1 describe an abstract idea,
i.e., rules, nonetheless, the “setting up” step of first and second
distinguishable groups of movable markers, in the claimed manner, “add[s] a
degree of particularity,” such as to “‘transform’ the claimed abstract idea
into [] patent-eligible [subject matter].” Alice at 2357 (quoting Mayo at
1298). In other words, the “setting up” step “‘transform[s] the nature of the
claim’ into [] patent-eligible [subject matter].” See id. at 2355. Claim 1 thus
includes “‘additional features,’” i.e., setting up of first and second
distinguishable groups of movable markers in the claimed manner, that
ensure the claim is “[‘]more than a drafting effort designed to monopolize
the [abstract idea].’” See id. at 2357.
Furthermore, while it is true that the method steps are carried out by a
human being, they are done so involving the game board and the game
pieces arranged in a specific manner as set forth in the claims. The
Examiner’s position that the claims are directed to nothing more than an
abstract idea, in effect, is inappropriately reading limitations out of the
claims.
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For these reasons, we do not sustain the Examiner’s decision rejecting
claims 1–6, 9, and 10 under 35 U.S.C. § 101 as being directed to patent
ineligible subject matter.

The Anticipation Rejection Based Upon Miller
The Examiner finds that “Miller teaches a game board with positions
and differentiable sets of game pieces for players.” Ans. 6 (citing Miller,
Figs. 4–6). The Examiner further finds that “[l]imitations of intended use
and rules for playing do not further limit the game structure.” Id.
Appellant argues that although Miller teaches a game board with
movable markers, Miller fails to teach “a game apparatus defined in terms of
a specific starting arrangement of markers.” Br. 27. Thus, according to
Appellant, “the apparatus claimed is the combination of playing field and
movable markers, with the markers in a defined configuration.” Id.
At the outset, we do not agree with the Examiner that, “arranging
game pieces on a game board in the beginning of the game only indicates
how a game [player] wants to play the game and does not add any further
structural features/limitations to the apparatus in claim.” See Ans. 12.
Rather, the use of the phrase “being disposed[2]” in claim 7 indicates a
required positional relationship between the claimed markers, that is, the
markers must be arranged in the claimed manner. As such, we agree with
Appellant that “[t]here is no such ‘intended use’ in these claims.” Br. 27.
We further agree with Appellant that “Miller’s arrangement of markers does

2 An ordinary and customary meaning of the term “dispose” is “to
place, distribute or arrange esp. in an orderly way.” Merriam Webster’s
Collegiate Dictionary (10th Ed. 1997).
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not correspond to the [claimed] arrangement.” Id. Accordingly, for the
foregoing reasons, we likewise do not sustain the rejection of claims 7, 8, 11,
and 12 under 35 U.S.C. § 102(b) as anticipated by Miller.

The Obviousness rejection Based Upon Wester and Syed
The Examiner finds that Wester discloses the limitations of
independent claim 1, but “does not teach initial set up of game markers in
the formation as claimed.” Ans. 7 (citing Wester, Figs. 5–6). The Examiner
further finds that Syed teaches a method of playing a board game that
“allows players to select any suitable arrangement (0006) of choice for
initial setting of the game pieces.” Id. (citing Syed ¶ 6). The Examiner thus
concludes that it would have been obvious to a person of ordinary skill in the
art to arrange the game markers of Wester’s board game in the claimed V-
shaped arrangement to make the game both challenging and attractive
because “Syed teaches the concept of selecting any suitable arrangement as
an initial setting.” Id. at 7–8.
Appellant argues that although the claimed initial arrangement of the
game markers is possible in a prior art game, nonetheless, the probability
that a random arrangement of the game markers would result in the claimed
arrangement is so low that the starting arrangement could not have been
obvious. Br. 21–22.
In response, the Examiner considers Appellant’s argument “as
‘applicant’s admission’ and an affirmation of examiner[’]s motivation in the
obviousness reasoning in Syed even though in low probability.” Ans. 13.
At the outset, we do not agree with the Examiner that Appellant
admits that the claimed arrangement would have been obvious to a person of
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ordinary skill in the art. Rather, Appellant is taking the position, and we
agree, that although Wester’s game markers can be arranged in the claimed
manner, this does not mean that every arrangement is obvious to try, without
evidence or reasoning tending to demonstrate the obviousness of the
particularly claimed configuration. In other words, while the Examiner’s
position appears to be that any initial setup arrangement of Wester’s game
markers would have been obvious in view of Syed’s teaching, the Examiner
fails to make any finding as to the particular type of initial set-up
arrangement called for in the claim, namely, a V-shaped arrangement. We
thus find that the Examiner’s conclusion of obviousness is not supported by
facts, and thus, cannot stand. See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967). Moreover, the Examiner has not provided evidence or
reasoning to suggest that the possible approaches to solve the problem are
“known and finite” or that one of ordinary skill had “good reason to pursue
the known options within his or her technical grasp.” See Takeda Chem.
Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1359 (Fed. Cir. 2007)
(discussing the requirements of an “obvious to try”-type obviousness
rejection) (internal quotations and citation omitted).
Furthermore, we do not agree with the Examiner’s finding that, “it is
inherently possible for a player to arrange game pieces i[n] a certain way as
suggested in applicant’s claim 1.” Ans. 13 (emphasis added). “Inherency
. . . may not be established by probabilities or possibilities. The mere fact
that a certain thing may result from a given set of circumstances is not
sufficient.’” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (internal
quotations and citations omitted). The Examiner’s finding does not go far
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enough to show that the claimed V-shaped arrangement is necessarily
present in the gaming method of Wester as modified by Syed.
Accordingly, for the forgoing reasons, we also do not sustain the
rejection under 35 U.S.C. § 103(a) of claims 1–6, 9, and 10 as unpatentable
over Wester and Syed.

SUMMARY
We REVERSE the the Examiner’s decision to reject claims 1–6, 9,
and 10 as directed to non-statutory subject matter.
We REVERSE the Examiner’s decision to reject claims 7, 8, 11, and
12 as anticipated by Miller.
We REVERSE the Examiner’s decision to reject claims 1–6, 9, and
10 as unpatentable over Wester and Syed.

REVERSED

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